Antitrust Law Daily Wrap Up, ADVERTISING—8th Cir.: After further review, ruling on preemption of players’ claims against NFL stands, (Feb 26, 2016)

By Thomas Long, J.D.

Publicity rights claims by three retired players against the National Football League over video footage featuring the players were preempted by the Copyright Act, the U.S. Court of Appeals in St. Louis has decided (Dryer v. The National Football League, February 26, 2016, Gruender, R.). In addition, the players’ Lanham Act false endorsement claims failed because the footage distributed by the NFL did not contain misleading or false statements regarding the players’ current relationship with the NFL. A decision of the federal district court in St. Paul, Minnesota, was affirmed.

Former NFL players John Frederick Dryer, Elvin Lamont Bethea, and Edward Alvin White participated in a putative class-action lawsuit in which 23 former players sued the NFL, claiming that films produced by NFL-affiliate NFL Films violated the players’ rights under the right-of-publicity laws of various states as well as their rights under Section 43(a) of the Lanham Act. The films at issue described significant games, seasons, and players in the NFL’s history and consisted of game footage and interviews with players, coaches, and other individuals involved in the sport. The NFL sold copies of the films to consumers, licensed the right to display the films to various distributors, and broadcast some of the films on its television network and website.

Twenty plaintiffs settled with the NFL, and that settlement was approved by the court. Dryer, Bethea, and White, however, opted out of the settlement and decided to pursue their individual right-of-publicity and Lanham Act claims. The district court granted the NFL’s motion for summary judgment; Dryer, Bethea, and White appealed.

Publicity rights—preemption by Copyright Act. The district court found that Section 301(a) of the Copyright Act preempted the players’ publicity rights claims because those claims challenged works in which the NFL held valid copyrights and because the claims asserted rights identical to those protected by copyright law. The appellate court agreed.

The players contended that their performances in football games during their NFL careers constituted part of their identities, rather than “fixed” works eligible for copyright protection. This argument was without merit, in the Eighth Circuit’s view. The Copyright Act specifically included within its coverage fixed recordings of live sporting events. The players did not argue that NFL Films lacked permission to record their performances in NFL games and did not dispute that the NFL held an enforceable copyright in the footage. Because the players did not challenge the NFL’s use of their likenesses or identities in any context other than the publication of game footage to which the NFL held valid copyrights, the publicity rights claims challenged works within the subject matter of copyright.

The publicity rights claims did not seek to serve any purpose unrelated to the aims of copyright law, the court said. The players argued that their claims were outside the scope of copyright law because the films were commercial speech that states had a legitimate interest in regulating. According to the players, the films amounted to advertisements for “NFL-branded football,” a specific product that the films promoted for the NFL’s economic benefit. The appellate court disagreed and affirmed the district court’s conclusion that the films were expressive in nature, rather than commercial speech. The films did not propose a commercial transaction; they told stories of games from the NFL’s past and referenced the league in a historical context rather than as a present-day product. The NFL did not pay media outlets to play the films; on the contrary, consumers paid to view the films. Accordingly, the court held, the Copyright Act preempted the publicity rights claims.

Lanham Act false endorsement. Dryer, Bethea, and White argued that there was a genuine issue of material fact as to whether the films falsely represented that they currently endorsed or associated themselves with the NFL and that by producing, distributing, and displaying the films, the NFL violated the “false endorsement” provision of Section 43(a) of the Lanham Act. However, the court said, there was no allegation that the films included false or misleading statements regarding the players’ current relationship with the NFL. The players did not argue that the footage depicted anything other than their actual performances in past NFL games. They identified no statements in the films’ commentary that might mislead viewers as to their relationship with or feelings toward the league. Therefore, the Lanham Act false endorsement claim failed as a matter of law.

The case is No. 14-3428.

Attorneys: Michael Vincent Ciresi (Ciresi Conlin LLP) and Aaron R. Fahrenkrog (Robins Kaplan LLP) for John Frederick Dryer. Paul D. Clement (Bancroft PLLC) and Daniel Joseph Connolly (Faegre Baker Daniels) for National Football League.

Companies: National Football League

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