Likelihood of confusion found too heavy to weigh at summary judgment stage

In Facenda v NFL Films Inc (Case 07-3269, September 9 2008), the US Court of Appeals for the Third Circuit has vacated an award of summary judgment based on a Lanham Act claim in favour of the estate of a legendary American football announcer. The court held that it was inappropriate to weigh the likelihood of confusion factors, which are largely fact dependent, at the summary judgment stage. 

John Facenda, who died in 1984, narrated several films recounting historic National Football League (NFL) games. In 2005 the NFL used clips from Facenda’s voiceovers in a television promotion of a computer game called Madden NFL 06. Facenda’s estate sued, alleging that the voiceovers constituted a false endorsement under the Lanham Act and was a violation of Pennsylvania's right of publicity statute. The district court granted summary judgment on both counts. The NFL appealed.

The Third Circuit rejected the NLF's free speech argument, finding that the promotional TV show was an infomercial, not artistic expression protected under the Second Circuit's decision in Rogers v Grimaldi (875 F2d 994 (1989)).

The Third Circuit also rejected the NFL’s contention that a claim of false endorsement must be supported by evidence of actual confusion on the part of consumers. In addition, the court rejected the argument that a release clause in Facenda’s contract insulated the NFL from any right of publicity claim, holding that, under Facenda’s NFL contract, the use of his voice was limited to uses that did not “constitute an endorsement of any product or service”.

Nevertheless, applying the likelihood of confusion factors to false endorsement cases, the court concluded that:

  • there remained outstanding issues of material fact that precluded summary judgment on Facenda’s Lanham Act claim; and 
  • the factors to be adjudicated were essentially questions of fact best left to the ultimate fact finder (ie, not appropriate for summary determination).

However, the court affirmed the award of summary judgment on the Pennsylvania right of publicity claim inasmuch as there was no dispute that:

  • Facenda’s voice was used;
  • there was no consent for the use; and 
  • the use was for a commercial purpose. 

In doing so, the Third Circuit rejected the NFL’s pre-emption argument because the state statute which required a showing that the work in question was a commercial work was not an element of any copyright cause of action.

Paul Devinsky, McDermott Will & Emery, Washington

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