Dryer v. National Football League, No. 09-2182 (D. Minn. Oct. 10, 2014)
There are two alternatives when it comes to the right of publicity, it seems to me. Either we will limp along with a special rule for video games despite the Supreme Court’s holding in Brown, or the Court will have to take a right of publicity case and explain what it meant in Zacchini. Given the Court’s tendency to use the First Amendment like Lochner, I’m not confident I’d be happy with the outcome of the latter, but I still think a national rule would be a much better idea than what we have now.
The three plaintiffs are retired football players who opted out of the NFL’s global settlement of former players’ claims. They alleged that the NFL’s use of video footage of them playing football violated their publicity rights, confused consumers about endorsement under the Lanham Act, and unjustly enriched the NFL. (The unjust unrichment claims fall with the rest and I won’t discuss them.)
Footage of games in which Dryer played for the Giants and the Rams appears in 47 different NFL Films productions. Thirty-two NFL Films productions include game footage in which plaintiff Bethea appears as a player for the Oilers, and 91 include footage from games in which plaintiff White played for the Vikings and the Chargers. Dryer and White lived in California at litigation time; Bethea lived in Texas.
“NFL Films productions are essentially compilations of clips of game footage into theme-based programs describing a football game or series of games and the players on the field.” But they’re more than just highlight reels; they’re artistic. They don’t use the TV broadcast cameras, but rather NFL Films-dedicated cameras whose operators choose how to best tell the story of the game. Most of the films at issue described a single game or season in a 20- to 30-minute narrative including music, narration, and clips in real time and slow motion. Some included interviews with players, including the three plaintiffs, who all participated in interviews after they retired. Each knew that the interview would be incorporated into NFL Films productions, and at least sometimes they signed waivers. Plaintiffs didn’t challenge the use of these interviews, but rather the use of the video footage of them playing football.
Although plaintiffs challenged 155 separate films, the court focused on representative samples (though they weren’t representative in that they were the ones in which footage including each plaintiff made up the highest percentage of total run time). For Dryer, a 24- minute production, “Game of the Week 1969 Week #1 Vikings vs. Giants” featured Dryer playing in 10% of its run time. “Using game footage and dramatic narration and music, the production showcases pivotal plays in a game between the Minnesota Vikings, one of the NFL’s most powerful teams at that time, and the New York Giants, who were welcoming a new coach after a poor showing in the 1968 season.” Dryer’s name wasn’t mentioned until more than 5 minutes in and was spoken only twice; you’d already have to know that he wore number 89 to identify him in the footage. “Most of his appearances in the production are fleeting, for mere seconds or fractions of seconds at a time, and are accompanied by narration discussing other players involved in the featured play. The production never focuses only on Dryer or his image; rather, he is always shown with his teammates in the context of a football play.”
Bethea’s story was basically similar, though he was featured for about one minute, with the narrator summing up: “Without any doubt, he is the best.” Many of his teammates received a similar one-minute treatment of their individual performances. For White, the clips with the highest percentage of footage featuring him were short (2 minutes or under). Otherwise his story was similar, except that he also appeared in a 10-second interview clip filmed after the game, identified by name and position on screen.
Previously, the court found that plaintiffs stated a claim for violation of the right of publicity (etc.), but after discovery was over—and after the dismissal of the class claims—the court found that matters had changed. Its job was to balance plaintiffs’ “rights to profit from their own likenesses” with the NFL’s free speech rights. The court determined that the proper starting point was to determine whether the NFL films were commercial or noncommercial speech. Plaintiffs didn’t dispute that, if the films were noncommercial, their claims failed (interesting, given Zacchini, and also not entirely how the analysis proceeds).
Whether speech is commercial is a question of law. There’s no bright line, but key considerations include (1) whether the speech is an advertisement, (2) whether it refers to a specific product, and (3) the speaker’s economic motivation for the speech. None alone makes speech commercial, and not all three are necessary, but the combination is good evidence of commerciality.
Advertising: Plaintiffs argued that NFL admitted that its films were advertising by equating them to a $350 million or larger ad budget in two Powerpoints. “But the fact that NFL Films productions generate substantial goodwill for the NFL is not itself dispositive of the issue whether the productions themselves are advertising.” Still, speech need not explicitly propose a commercial transaction to be advertising. These films didn’t offer to sell anything or encourage viewers to buy anything, but they still enhanced the NFL’s brand. An ad can be commercial speech if it is just brand advertising. See Jordan v. Jewel.
But, while the brand-enhancement theory was attractive, it didn’t work in this context. While brand enhancement can be an element of advertising, brand enhancement alone isn’t enough to render a film advertising. This wasn’t like the ad in Jordan, which was an ad bought by the defendant appearing in a sports magazine and which was “easily distinguishable from the magazine’s editorial content.” Here, by contrast, the films don’t appear in other media as paid spots—they are the content. The NFL doesn’t pay TV networks to broadcast the films; the networks pay the NFL for the rights, and other advertisers pay to have their ads inserted.
Nor did the films “exploit players’ images for the singular purpose of brand enhancement or other commercial gain.” Instead, they tell a story about a game, a team, or even a player: they’re “a history lesson of NFL football.” And the only way to tell such stories is by showing footage of the game—“the players, the coaches, the referees, and even the fans.” The NFL was drawing benefit not from the likenesses of individual players but from “the drama of the game itself, something that the NFL is certainly entitled to do.” There was no way to visually retell these stories without the use of footage of NFL players playing. Thus, the use was not for commercial advantage, but “because the game cannot be described visually any other way.”
Despite brand enhancement, then, these films weren’t ads. Comment: This has to be the case if the New York Times is not to be a commercial speaker when it publishes its most important stories: Publishing the Pentagon Papers and portions of the Wikileaks documents, or Judith Miller’s Iraq reporting, undoubtedly was extremely important to the NYT’s brand, for good or ill. The NYT certainly takes into account the question of “what kind of stories do we publish as part of our mission to be the paper of record?” when it makes decisions at that level. That’s branding, among other things.
Product reference: Plaintiffs argued that the productions referred to the NFL as a product, as in Facenda v. NFL Films, Inc., 542 F.3d 1007 (3d Cir. 2008). But that involved a film the court determined to be an infomercial for a different creative work: it referenced an NFL videogame with a countdown clock until the game’s release, and it was broadcast only in the few days before the release, like a film trailer. Here, the films didn’t promote a product separate from themselves. And there was no other way to tell the story of NFL games and players without footage.
Economic motivation: Of course there was an economic motive, but that wasn’t dispositive in the absence of the other elements. Publishing expressive works for profit doesn’t take them out of full First Amendment protection. “This is not commercial speech; it is capitalism.”
Because the films were fully protected speech, plaintiffs’ claims failed.
The court proceeded, however, to do the more ad hoc balancing in other right of publicity cases, then an analysis of the relevant states’ rights of publicity, many of which incorporate at least some First Amendment-protective limits on their initial definitions. For balancing, the court focused on previous athlete right of publicity cases not involving video games, for obvious reasons: C.B.C. Distrib. & Mktg., Inc. v. Major League Baseball Advanced Media, L.P., 505 F.3d 818 (8th Cir. 2007) (fantasy baseball); CBS Interactive Inc. v. Nat’l Football League Players Ass’n, Inc., 259 F.R.D. 398 (D. Minn. 2009) (fantasy football with images); and Gionfriddo v. Major League Baseball, 114 Cal. Rptr. 2d 307 (Cal. Ct. App. 2001) (video clips of former players playing). All three cases found that the free speech interests of the respective speakers outweighed the athletes’ publicity rights, with Gionfriddo holding that it was permissible to use images of players playing to advertise the game of baseball; the line would be drawn if MLB tried to use the players’ images to sell an unrelated product.
The court previously denied a motion to dismiss based on these cases on the theory that the data and images in those cases were all in the “public domain,” unlike the NFL video footage, which the NFL protects vigorously. But plaintiffs, having had a chance to develop the record, didn’t show that the uses of which they complained were truly different from the uses in those cases. Specifically, plaintiffs didn’t explain how the NFL’s copyrights stripped protection from its films. (Note: this distinction was always nonsense on the facts as well as the law. CBS and Gionfriddo obviously involved footage/pictures still in copyright, even if those copyrights were not owned by the leagues at issue. Separately, I can’t imagine the Supreme Court distinguishing between an authorized use of copyrighted works and a use of public domain works for purposes of First Amendment protection of the use.)
Reviewing the films, it was clear that the challenged uses were akin to the use of footage in sports news broadcasts. Thus, balancing the news-like uses against the players’ publicity rights, the players’ economic interests weren’t strong and were outweighed by the public interest inf ree dissemination of information about sports history. After all, the right of publicity exists to provide incentives, and the players were already paid for their participation.
Anyway, even if the films were commercial speech, the plaintiffs failed on the merits of their claims. The court initially declined to apply New Jersey law just because NFL Films was headquartered there.
California has expansive statutory and common-law rights of publicity; Texas has only the common law; Minnesota has a common-law right that doesn’t require a commercial purpose or a pecuniary benefit (and is therefore super duper unconstitutional, but no worries!); and New York has only the statutory right, which requires written permission for advertising uses.
The NFL argued that each state recognized an exception for newsworthiness. E.g., Texas actually defines the right to be for uses that aren’t newsworthy or incidental. California excludes from its common-law protection the publication of matters in the public interest, and the statute exempts uses “in connection with any news, public affairs, or sports broadcast or account.” Newsworthiness is often determined as a matter of law.
California: it was clear that the films were “a means for obtaining information about real-world football games,” and are therefore “publishing or reporting factual data” within the meaning of the California newsworthiness defenses. The use of music, narration, and camera angles might “dramatize” the games, but they still conveyed true information about real-world games. This was of public interest and related to news—factual reports about pro athletes’ performance are of great interest to the public.
Texas: Texas newsworthiness is likewise broad “and extends beyond subjects of political or public affairs to all matters of the kind customarily regarded as ‘news’ and all matters giving information to the public for purposes of education, amusement or enlightenment, where the public may reasonably be expected to have a legitimate interest in what is published.” Plaintiffs argued that the defense was limited to uses that are “legitimately necessary,” but that didn’t matter, because using plaintiffs’ images was “the only way for the NFL to visually inform the public about historical football games. Thus, that use is ‘legitimately necessary’ to provide the public with a visual record of the NFL’s past.”
Minnesota: Plaintiffs argued that Minnesota didn’t recognize a newsworthiness defense, but the NFL argued that state courts applied a public-interest exception to similar privacy-related claims, and that the Minnesota Supreme Court’s reliance on the Restatement to formulate privacy claims meant that the Restatement news exceptions to the right of publicity ought to apply. Given that newsworthiness is a First Amendment-related privilege, the court found it credible that Minnesota courts would apply it to publicity claims.
New York: New York also limits its statutory right to non-newsworthy publications, and the newsworthiness exception “should be liberally applied.” The right is only triggered when there’s no real relationship between the plaintiff’s image and its use, or where the use is an ad in disguise. That wasn’t so here.
Separately, the NFL argued that plaintiffs explicitly or implicitly consented to the NFL’s use of game footage. While that doesn’t matter in New York, which requires writtenconsent, the other states make lack of consent an element of a claim; consent wouldn’t bar the claims but would prevent plaintiffs from recovering pre-suit damages. The record showed that the plaintiffs all knew that NFL Films “regularly captured game footage and used that game footage in subsequent productions.” Plus, each plaintiff voluntarily appeared in these films by giving interviews to NFL Films; though they didn’t challenge the use of the interviews, it was apparent that they consented to the use of the game footage too. For example, Dryer testified that he “never thought [the NFL was] wrong” in showing game footage in NFL Films productions, and believed that NFL Films had the right to show game footage, including images of him playing football: “It’s their company.” Bethea “just was glad to be interviewed.”
The court then put on suspenders that are more likely to be snapped then the belt to be unbuckled: it found copyright preemption under §301. (This should really be conflict preemption; courts’ insistence on using §301 has been the source of much incoherence.) Section 301 applies if (1) the disputed work is within the subject matter of copyright; and (2) the state-law-created right is equivalent to any of the exclusive rights within the general scope of the Act.
On the motion to dismiss, the court had ruled that plaintiffs plausibly alleged that the “work” at issue was their identities, and thus there was no preemption. But the full record didn’t show that. Instead, the “works” plaintiffs challenged were films featuring game footage of them playing football. Plaintiffs argued that athletic events aren’t copyrightable, making their appearances not within the subject matter of copyright. But the works here weren’t the games, but rather video recordings of games, which are beyond peradventure within the subject matter of copyright. Their likenesses can’t be detached from the copyrighted performances contained in the films.
In addition, the court took account of two intervening decisions on the issue of whether the right of publicity was equivalent to any exclusive copyright right. Ray v. ESPN, Inc., No. 13-1179, 2014 WL 2766187 (W.D. Mo. Apr. 8, 2014); Somerson v. McMahon, 956 F. Supp. 2d 1345 (N.D. Ga. 2012). Both cases involved pro wrestlers challenging the rebroadcast of their wrestling performances; both cases found preemption. A performance that’s fixed with the permission of the performer is copyrightable; later objection to the republication of that performance in a non-advertising use is a matter for copyright law, not the right of publicity. “In other words, a claim for a violation of the right to publicity against a copyrighted work will lie only if that work is used for advertising, not in an expressive work.”
Comment: This comes straight from McCarthy, and while I applaud the result I abhor the reasoning. (1) For copyright purposes, the athletes here weren’t performers/authors because the game itself wasn’t copyrightable; the authors were the ones making decisions about the footage, not about the plays; the court here even quotes language from the legislative history to that effect. The players consented to appear, but even under Garcia they’re probably not authors. (2) Where does that “non-advertising” limit come from? Certainly not from the work or from the copyright right, which is not limited to non-advertising uses. Drawing the line at advertising is conflict preemption reasoning and has nothing to do with §301. More on this in a forthcoming article.
Given that the films weren’t ads and the recordings were made with plaintiffs’ permission, the claims were preempted. Plaintiffs didn’t argue that the NFL couldn’t use the original game broadcast by showing it in full if it so chose. Instead, they argued that use in a new work violated the right of publicity. But the new work was likewise covered by copyright law. Plaintiffs’ likenesses couldn’t be detached from the copyrighted performance, which the NFL had the right to exploit in expressive works. (Also, since when is an ad not an expressive work? Poor conceptualization tends to build upon itself.)
Finally, §43(a) false endorsement: In the Eighth Circuit, the Lanham Act only applies to commercial speech, so we’re done here. The court declined to adopt Rogers v. Grimaldi. But it did say that, even if the films were commercial speech, there was nothing false or misleading in them: they showed plaintiffs playing football. “This use of game footage as game footage cannot, as a matter of law, cause confusion or mistake or deceive anyone as to Plaintiffs’ affiliation with the NFL.” They were affiliated with the NFL. Dryer was even filmed at the time of production of one film wearing his Giants jersey. “If Dryer was truly concerned about creating an impression that he endorses the NFL, he would not have agreed to be filmed wearing NFL trademarks in 2006, a mere three years before the filing of this lawsuit.”
And furthermore, the court found laches. Nearly all of the films at issue were made years or even decades before plaintiffs sued. A delay of more than six years raises a presumption of laches. Plaintiffs didn’t provide evidence excusing their delay. The fact that, until approached by counsel, they didn’t know they might have a claim was irrelevant—ignorance of the law was no excuse. The NFL didn’t need to show prejudice given the length of delay, but it did so: “Bethea’s deposition alone illustrates the harm the long delay caused to witnesses’ memories. Bethea testified that he could not remember details of an interview he gave to NFL Films in 2007. That memories of events stretching back to the late 1960s would similarly be affected seems self-evident.” Plaintiffs argued that the NFL’s intentional infringement precluded equitable defenses like laches. But the NFL was merely exploiting its copyrights, and “correctly cautioned others that the use of game footage for other purposes might impinge players’ publicity rights because commercial use of player identities is not within either the NFL’s copyright or the First Amendment.”