Antitrust Law Daily Wrap Up, ADVERTISING—D. Minn.: NFL sacks retired pro-football players’ publicity rights, false ad claims, (Oct 14, 2014)

By Greg Hammond, J.D.

Three retired National Football League (NFL) players’ publicity rights, false advertising, and unjust enrichment claims were ejected Friday by the federal district court in St. Paul. The court ruled that video footage of the three players was fully protected non-commercial speech under the First Amendment, and the balance between the players’ publicity rights and the constitutional protection of the complained of uses tipped decidedly in favor of the NFL (Dryer v. National Football League, October 10, 2014, Magnuson, P.).

Background. In August 2009, a group of 23 former professional football players brought a class action, alleging that the NFL earned substantial revenue by making promotional films and selling products featuring the names, images, and likenesses of retired players without their authorization. Specifically, the original complaint alleged that the NFL Films website used the names of over 450 retired players to advertise and sell videos promoting the NFL, and that the NFL Network broadcasts hundreds of hours of these films each year. According to the players, the NFL’s conduct violated the former players’ rights of publicity and other state laws.

In November 2013, the court granted final approval of settlement of the publicity rights claims, praising the settlement as “a boon to those thousands upon thousands of former NFL players who can now reap the collective benefit of a large financial payout to a fund organized solely for their benefit, overseen by their comrades-in-arms.” However, three former players—including John Frederick Dryer, Elvin Lamont Bethea, and Edward Alvin White—opted out of the settlement class and chose to pursue their individual claims. The NFL moved for summary judgment, and the three retired players moved for partial summary judgment on several of the NFL’s affirmative defenses.

First Amendment protection. The first issue the court was required to determine was whether the protection due to the NFL Films productions, under the First Amendment, is outweighed by the players’ interest in their own publicity rights. In deciding this balancing test, the court considered two approaches: (1) whether the challenged work is commercial or non-commercial speech, and (2) whether the complained of use supersedes the asserted right of publicity.

Under its analysis, the court concluded that the NFL Films productions were not commercial speech, reasoning that the productions are not advertisements and do not promote a product separate from the productions themselves. Rather, “the productions exist in their own right—they are the stories of the NFL,” the court stated. “[T]here is no other way for the NFL to tell the story of its games and its players without the use of game footage, use which necessarily includes the images of NFL players.” Although the NFL has an economic motivation for the films, such motivation—by itself—cannot establish that the productions are commercial speech.

The court also determined that the balance between the players’ publicity rights and the constitutional protection due the uses tips in favor of the NFL, because: (1) the challenged uses of the three players’ likenesses in game footage are analogous to use of such footage on sports news broadcasts, newspapers, and magazines; (2) the players were paid for their participation in the football games; and (3) there is no danger that consumers would falsely believe that the players were engaged in an activity other than playing football.

Publicity rights. Next, the court considered whether the players pointed to genuine issues of fact to establish their publicity-rights claims under New Jersey, California, Texas, Minnesota, and New York law. Preliminarily, the court found that New Jersey law was inapplicable, as there was no evidence supporting assertions that various factors weighed in favor of the state’s publicity-rights law. The remaining state law claims were insufficient as well, because the productions met the newsworthy events or matters of public interest exception in each state, and the three plaintiffs explicitly or impliedly consented to the NFL’s use of the game footage.

Copyright. Additionally, the court found that section 301 of the Copyright Act preempts the state publicity-rights claims. Specifically, it noted that the Copyright Act preempts a state claim 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. In this case, it was undisputed that the NFL holds a valid and enforceable copyright in the game footage used in the productions. In addition, the plaintiffs’ performances on the football field were determined part of the copyrighted material, and their likenesses could therefore not be detached from the copyrighted performances contained in the productions.

Lanham Act false advertising. Finally, the players’ false endorsement claims under section 43(a) of the Lanham Act failed as a matter of law, as the NFL’s use of their images was not commercial speech. However, even if the productions were deemed commercial speech, the court noted that the plaintiffs could not demonstrate that the use of their likenesses was in any way false or misleading. Lastly, the court concluded that the Lanham claims were barred by the doctrine of laches, and that the players failed to provide any evidence excusing their delay in asserting their claims.

The case number is 09-2182 (PAM/FLN).

Attorneys: Aaron R. Fahrenkrog (Robins Kaplan Miller & Ciresi LLP) for John Frederick Dryer. Michael Schaper (Debevoise & Plimpton, LLP) for National Football League.

Companies: National Football League

Cases: Advertising MinnesotaNews