2008 Decisions

Opinions of the United

States Court of Appeals

for the Third Circuit

9-9-2008

Facenda v. NFL Films Inc

Precedential or Non-Precedential: Precedential

Docket No. 07-3269

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Recommended Citation

"Facenda v. NFL Films Inc" (2008). 2008 Decisions. Paper 449.

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PRECEDENTIAL

UNITED STATES COURT OF APPEALS

FOR THE THIRD CIRCUIT

 

No. 07-3269

 

JOHN FACENDA, JR., Executor

of The Estate of John Facenda

v.

N.F.L. FILMS, INC.; THE NATIONAL FOOTBALL

LEAGUE;

N.F.L. PROPERTIES, LLC,

Appellants

 

Appeal from the United States District Court

for the Eastern District of Pennsylvania

(D.C. Civil Action No. 06-cv-03128)

Magistrate Judge: Honorable Jacob P. Hart

 

Argued June 6, 2008

Before: AMBRO, CHAGARES and COWEN, Circuit Judges
2

(Opinion filed: September 9, 2008)

Bruce P. Keller, Esquire (Argued)

S. Zev Parnass, Esquire

Debevoise & Plimpton

919 Third Avenue

New York, NY 10022-0000

Robert N. Spinelli, Esquire

Catherine N. Jasons, Esquire

Kelley Jasons McGowan Spinelli & Hanna

50 South 16th Street 

Two Liberty Place, Suite 1900

Philadelphia, PA 19102-0000

Counsel for Appellants

Tracy P. Hunt, Esquire

110 North State Street

P.O. Box 99

Newtown, PA 18940-0000

Paul L. Lauricella, Esquire (Argued)

The Beasley Firm

1125 Walnut Street

Philadelphia, PA 19107-0000

Counsel for Appellee
3

 

OPINION OF THE COURT

 

Table of Contents

I. Facts . ......................... 5

II. Procedural History. . . . . . . . . . . . . . . . . . . 8

III. Jurisdiction . ...................... 8

VI. Standard of Review. . . . . . . . . . . . . . . . . . . 9

V. False Endorsement Under the Lanham Act. . . . . . 11

A. The Legal Standard for Likelihood of

Confusion in False Endorsement Claim

Brought Under § 43(a) of the Lanham Act. . 13

1. First Amendment Limits on the

Lanham Act. ............. 14

2. Tailoring the Lapp Factors to False 

Endorsement Claims. . . . . . . . . . 22

3. Distinguishing Between Subsections 

of Section 43(a)(1). . . . . . . . . . . 28

B. Application to the Estate’s Claim. . . . . . . 33

1. The Standard Release Contract.. . . . 34

2. Genuine Issues of Material 

Fact Remain. ............. 35

VI. Unauthorized Use of Name or Likeness Under

Pennsylvania Law. .................. 40

A. The NFL’s Copyright in the Sound Clips. . . 42

B. Express Preemption. . . . . . . . . . . . . . 43

1. Equivalent to an Exclusive Right?. . . 44

2. Copyrightable Subject Matter?. . . . . 46
4

C. Conflict Preemption. . . . . . . . . . . . . . 47

VII. Conclusion. ..................... 59

AMBRO, Circuit Judge

John Facenda, a Philadelphia broadcasting legend,

provided his voice to many productions of NFL Films, Inc.

before his death in 1984. These well-known productions

recounted tales of the National Football League with filmed

highlights, background music, and Facenda’s commanding

narration. More than two decades after Facenda’s death, NFL

Films used small portions of his voice-over work in a cabletelevision production about the football video game “Madden

NFL 06.” That production, entitled “The Making of Madden

NFL 06,” sparked this controversy.

Facenda’s Estate (“the Estate”) sued NFL Films, the

National Football League, and NFL Properties (which we refer

to collectively, where appropriate, as “the NFL”) in the United

States District Court for the Eastern District of Pennsylvania.

The Estate claims that the program’s use of Facenda’s voice

falsely suggested that Facenda endorsed the video game,

violating the federal Lanham Act, which deals with trademarks

and related theories of intellectual property. The Estate also

claims that the program was an unauthorized use of Facenda’s

name or likeness in violation of Pennsylvania’s “right of

publicity” statute. In its defense the NFL argued, among other

things, that its copyrights in the original NFL Films productions
5

that Facenda narrated gave it the exclusive right to use portions

of those productions’ soundtracks as it saw fit, including in the

television piece at issue.

We must resolve this clash between parties claiming

different types of intellectual property. Although we agree with

much of the Court’s trademark analysis, for the reasons that

follow we vacate the Court’s grant of summary judgment for the

Estate and remand for trial on the Lanham Act claim. We

affirm, however, the District Court’s grant of summary

judgment to the Estate on the Pennsylvania right-of-publicity

claim.

I. Facts

Facenda won national acclaim for his NFL Films work.

His Estate credits that fame to the special qualities of his voice.

In various depositions, several representatives for NFL Films

described Facenda’s deep baritone voice as “distinctive,”

“recognizable,” “legendary,” and as known by many football

fans as “the Voice of God.” As recently as 1999, NFL Films

released works branded as featuring “the Legendary Voice of

John Facenda.”

For decades, Facenda worked on a session-by-session

basis under an oral agreement, receiving a per-program fee. But

shortly before he died from cancer in 1984, Facenda signed a

“standard release” contract stating that NFL Films enjoys “the
 With the consent of the parties, Magistrate Judge Jacob P. 1

Hart exercised jurisdiction as the District Court in this case

pursuant to 28 U.S.C. § 636(c).

6

unequivocal rights to use the audio and visual film sequences

recorded of me, or any part of them . . . in perpetuity and by

whatever media or manner NFL Films . . . sees fit, provided,

however, such use does not constitute an endorsement of any

product or service.”

In 2005, NFL Films produced “The Making of Madden

NFL 06” about the soon-to-be released annual update of the

video game that simulates NFL games. This production is 22

minutes long and was shown on the NFL Network eight times

in a three-day span leading up to the release of the video game

to retail stores. It featured interviews with NFL players, the

game’s producers, and others. It also included several

sequences comparing the video game’s virtual environment with

the actual NFL environment, extolling the realism of everything

from the stadiums to the game play. The end of the program

featured a countdown to the video game’s release.

The District Court found that not a single critical 1

observation was made in this video regarding Madden NFL 06;

all the commentary was positive. Other media, outside of the

NFL Network, also covered the release of the game and

addressed similar topics (albeit with the inclusion of the

occasional criticism or recitation of the game's perceived faults).
7

The program used sound recordings, taken from earlier

NFL Films’ productions, of three sentencesread by Facenda: (1)

“Pro Football, the game for the ear and the eye,” (2) “This sport

is more than spectacle, it is a game for all seasons,” and (3) “X’s

and O’s on the blackboard are translated into aggression on the

field.” These excerpts from his NFL Films work total 13

seconds of the program. In its opening brief to our Court, the

NFL admits that these excerpts were chosen “to underscore the

degree to which the video game authentically recreates the NFL

experience.”

The producers of the program used the excerpts in a

slightly altered form. The sound waves in the original recording

of Facenda’s voice were digitally filtered to sound more like the

synthesized speech one might hear from a computer. (NFL

Films President Steve Sabol described the results of this

aesthetic choice by the show’s producers as “awful.”)

The NFL has an agreement with EA Sports, the makers

of Madden NFL 06, which provides the NFL with royalty

revenue in return for the use of the NFL’s intellectual property.

Various e-mail messages in the record suggest that NFL Films

sought to create the television program as a promotion for

Madden NFL 06, describing it as the “Madden Promo” or as

“the Advertisements” in actors’ release forms. But in their

depositions, many NFL Films executives testified that the

program was a documentary and denied that it was a commercial

or that it was motivated by promotional considerations.
 The Estate’s complaint also included a claim for invasion 2

of privacy under Pennsylvania common law. The Estate

effectively abandoned this claim at the summary judgment stage,

possibly because, as the District Court stated, Pennsylvania’s

right-of-publicity statute subsumed the common-law tort of

invasion of privacy. The District Court entered summary

judgment for the NFL on this claim and the Estate did not

appeal.

8

II. Procedural History

Facenda’s Estate initially sued the NFL for false

endorsement under § 43(a) of the Lanham Act, 15 U.S.C.

§ 1125(a), and for unauthorized use of name or likeness (known

as the “right of publicity”) under 42 Pa. Cons. Stat. Ann.

§ 8316. The District Court split the case into a liability phase 2

and a damages phase. After discovery in the liability phase, the

parties cross-moved for summary judgment and agreed at a

hearing that the District Court could resolve the liability issues

on the evidence already before it. The District Court granted the

Estate’s motion for summary judgment on both the falseendorsement claim and the right-of-publicity claim. Facenda v.

NFL Films, Inc., 488 F. Supp. 2d 491, 514 (E.D. Pa. 2007).

III. Jurisdiction

The District Court had jurisdiction under 15 U.S.C.

§ 1121 because of the Estate’s Lanham Act claims. It exercised
9

supplemental jurisdiction over the state-law claims under 28

U.S.C. § 1367.

Because our Court has not yet issued an opinion

interpreting the Lanham Act in the context of a

false-endorsement claim, and because the District Court

perceived a conflict between our caselaw (on the general

interpretation of § 43(a)(1)(A) of the Lanham Act) and a single

district-court case from the Eastern District of Pennsylvania

(which dealt with the specific issue of false endorsement), the

District Court certified the issue for interlocutory appeal.

Facenda v. NFL Films, Inc., No. 06-3128, 2007 WL 1575409,

at *2–3 (E.D. Pa. May 24, 2007). It also certified whether

copyright law preempts the Estate’s state-law right-of-publicity

claim because the caselaw (across all federal courts of appeals)

does not reflect a “consistent line of reasoning.” Id. at *3. We

granted the petition for interlocutory appeal and have

jurisdiction under 28 U.S.C. § 1292(b).

IV. Standard of Review

We review the District Court's legal conclusions de novo,

reading all facts in the light most favorable to the party that did

not move for summary judgment—the Estate. Lucent Info.

Mgmt., Inc. v. Lucent Techs., Inc., 186 F.3d 311, 315 (3d Cir.

1999). The Estate argues that we review the District Court’s

“factual findings” under a “clearly erroneous” standard. But, to

support this proposition, the Estate cites a case reviewing a
10

preliminary injunction. Sandoz Pharms. Corp. v.

Richardson-Vicks, Inc., 902 F.2d 222, 226 (3d Cir. 1990). We

recently explained the important distinction between the

standards of review for a preliminary injunction and summary

judgment. Doeblers’ Pa. Hybrids, Inc. v. Doebler, 442 F.3d

812, 820 (3d Cir. 2006).

“Failure to strictly observe the principles governing

summary judgment becomes particularly significant in a

trademark or tradename action, where summary judgments are

the exception.” Country Floors, Inc. v. P'ship Composed of

Gepner & Ford, 930 F.2d 1056, 1062-63 (3d Cir. 1991). On a

summary judgment motion, the District Court must not find

facts. See Doeblers’, 442 F.3d at 820 (“A District Court should

not weigh the evidence and determine the truth itself, but should

instead determine whether there is a genuine issue for trial.”).

Rather, it should identify undisputed facts and resolve the

remaining disputed facts in favor of the non-movant. For

example, “[c]redibility determinations that underlie findings of

fact are appropriate to a bench verdict,” but “[t]hey are

inappropriate to the legal conclusions necessary to a ruling on

summary judgment.” Country Floors, 930 F.2d at 1062. When

considering the District Court’s grant of summary judgment to

the Estate on a particular claim, “the sole question before [our]

Court is whether plaintiff met its burden of demonstrating that

it was entitled to judgment as a matter of law.” Doeblers’, 442

F.3d at 820.
11

V. False Endorsement Under the Lanham Act

The Estate alleges that the use of sound samples of

Facenda’s voice in “The Making of Madden NFL 06” falsely

implied that the Estate had agreed to endorse the video game

that is the production’s subject. This false endorsement, they

argue, violates § 43(a)(1)(A) of the Lanham Act. This provision

reads as follows:

(1) Any person who, on or in

connection with any goods or

services, or any container for

goods, uses in commerce any word,

term, name, symbol, or device, or

any combination thereof, or any

false designation of origin, false or

misleading description of fact, or

false or misleading representation

of fact, which—

(A) is likely to cause

confusion, or to

cause mistake, or to

deceive as to the

a f f i l i a t i on,

connec t i o n , or

association of such

person with another
 The phrase “another person” in § 43(a)(1)(A) indicates that 3

“Congress selected language broad enough to encompass a

claim by a deceased celebrity’s [e]state or by any celebrity’s

assignee.” Cairns v. Franklin Mint Co., 24 F. Supp. 2d 1013,

1032 (C.D. Cal. 1998) (explaining that Princess Diana’s estate

had stated a cognizable claim for false endorsement under

§ 43(a)(1)(A) against a manufacturer of jewelry,

commemorative plates, sculptures, and dolls featuring the

Princess’s likeness).

12

person, or as to the

origin, sponsorship,

or approval of his or

her goods, services,

o r comm e r c i a l

activities by another

person . . .

shall be liable in a civil action by

any person who believes that he or

she is or is likely to be damaged by

such act.

15 U.S.C. § 1125(a)(1). To prove a violation of § 43(a)(1)(A) 3

in a false endorsement case, a plaintiff must show that: (1) its

mark is legally protectable; (2) it owns the mark; and (3) the

defendant’s use of the mark to identify its goods or services is

likely to create confusion concerning the plaintiff’s sponsorship
13

or approval of those goods or services. See Commerce Nat’l

Ins. Servs., Inc. v. Commerce Ins. Agency, Inc., 214 F.3d 432,

437 (3d Cir. 2000) (listing the three prongs of a § 43(a) claim).

The NFL does not deny that courts broadly interpret the

terms “name, symbol, or device” in § 43(a)(1) to include other

indicia of identity, such as a person’s voice. See Waits v. FritoLay, Inc., 978 F.2d 1093, 1106–07 (9th Cir. 1992) (holding that

§ 43(a) claims based on voice are cognizable). Nor does the

NFL deny that Facenda’s voice is distinctive and generally

protectable as an unregistered mark. Thus, the Estate has

satisfied the first prong of a § 43(a) claim. The NFL also

declines to contest the second prong—that the mark is owned by

the Estate.

Our case thus focuses on the third prong: whether the

NFL’s use of Facenda’s voice was “likely to cause confusion”

among consumers by suggesting that Facenda’s Estate has an

“affiliation, connection, or association” with EA Sports’s video

game implying that the Estate “sponsor[s]” or “approve[s] of”

that product. 15 U.S.C. § 1125(a)(1)(A).

A. The Legal Standard for Likelihood of Confusion in False

Endorsement Claims Brought Under § 43(a) of the Lanham

Act

The NFL contends that the District Court applied the

wrong legal standard under § 43(a)(1) to the Estate’s false-
Subsection 43(a)(1)(B) prohibits the use of another person’s 4

mark that, “in commercial advertising or promotion,

misrepresents the nature, characteristics, qualities, or geographic

origin of his or her or another person's goods, services, or

commercial activities.” 15 U.S.C. § 1125(a)(1)(B).

14

endorsement claim. It also argues that our Constitution’s First

Amendment right to free speech prohibited application of the

Lanham Act to its television production in this case. Because

the NFL’s First Amendment defense presents a threshold issue

that would affect how we apply trademark law in this case, we

address that argument first. Ultimately rejecting the First

Amendment defense, we outline the multi-factor test courts use

to evaluate the likelihood of consumer confusion when faced

with a false-endorsement claim under § 43(a)(1)(A). Finally, we

respond to the NFL’s various disagreements with the District

Court’s analysis. The NFL’s primary argument is that the legal

standards under § 43(a)(1)(A) and § 43(a)(1)(B) do not differ

4

from each other, which implies that the Estate was required to

bring evidence of actual confusion to prove a likelihood of

confusion. We reject that argument and thus adopt a trademark

analysis similar to the District Court’s.

1. First Amendment Limits on the Lanham Act

The NFL argues that its production constitutes

informational expression, artistic expression, or both, and is thus

protected by the First Amendment. It asks our Court to adopt
15

the balancing test of the Second Circuit Court of Appeals’

decision in Rogers v. Grimaldi, which weighs “the public

interest in avoiding consumer confusion” against “the public

interest in free expression.” 875 F.2d 994, 999 (2d Cir. 1989).

In that case, the dancer and actress Ginger Rogers sued the

producers and distributors of “Ginger and Fred,” a film about a

pair of Italian dancers nicknamed for Rogers and Fred Astaire.

The court rejected Rogers’s false-endorsement claim. Under the

Rogers test, the proper balance between trademark law and free

expression “will normally not support application of the

[Lanham] Act unless the title [1] has no artistic relevance to the

underlying work whatsoever, or . . . [2] the title explicitly

misleads as to the source or the content of the work.” Id.

Because the film’s title (1) had an “ironic” and “ambiguous”

meaning related to its subject, id. at 1001, and (2) did not

directly state that it depicted Rogers, free-speech concerns

outweighed survey evidence that “some members of the public

would draw the incorrect inference that Rogers had some

involvement with the film,” id.

The analysis of Rogers has been adopted by three other

Courts of Appeals. See Parks v. LaFace Records, 329 F.3d 437,

451–52 (6th Cir. 2003) (applying Rogers to a song title); Mattel,

Inc. v. MCA Records, Inc., 296 F.3d 894, 902 (9th Cir. 2002)

(same); Sugar Busters LLC v. Brennan, 177 F.3d 258, 269 & n.7

(5th Cir. 1999) (adopting Rogers in a case concerning a book

title). Soon after announcing the Rogers test, the Second Circuit

stated that the test is “generally applicable to Lanham Act claims
 Nor did it certify the First Amendment question for 5

interlocutory appeal. We may, however, address any issue

implicit in the District Court’s order granting summary

judgment to the Estate on liability. See NVE, Inc. v. Dep’t of

Health & Human Servs., 436 F.3d 182, 196 (3d Cir. 2006).

16

against works of artistic expression, a category that includes

parody.” Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ’g

Group, 886 F.2d 490, 495 (2d Cir. 1989) (applying Rogers to a

parody book cover). But we have identified only one federal

appellate case other than Cliffs Notes that applies the Rogers test

to something other than the title of a creative work. See ETW

Corp. v. Jireh Publ’g, Inc., 332 F.3d 915, 936–37 (6th Cir.

2003) (applying Rogers to a commemorative sports painting of

Tiger Woods’s victory at the Masters golf tournament in 1997).

But see id. at 943–49 (Clay, J., dissenting) (declining to endorse

the application of Rogers in that case and arguing that the

majority had applied Rogers in a faulty fashion).

The NFL asks us also to adopt Rogers and apply it to the

use of “The Making of Madden NFL 06.” Before considering

whether either prong of the Rogers test applies, however, we

must decide whether the television production is a “work[] of

artistic expression,” Cliffs Notes, 886 F.2d at 495, as understood

in the context of construing the Lanham Act narrowly to avoid

a conflict with the First Amendment, see Rogers, 875 F.2d at

998. Although the District Court did not address the NFL’s

First Amendment defense in its opinion, the categorization of 5
17

speech is a question of law that we must resolve through

independent review of the program. See Connick v. Myers, 461

U.S. 138, 148 n.7, 150 n.10 (1983) (“[W]e are compelled to

examine for ourselves the statements in issue and the

circumstances under which they are made to see whether . . .

they . . . are of a character which the principles of the First

Amendment . . . protect. ” (quotation marks omitted)).

The NFL posits that its program, taken as a whole, is a

work of artistic expression, and that the producers’ use of the

particular sound clips at issue in this case represented an artistic

choice. In the NFL’s view, the strong association between

Facenda’s voice and the NFL means that the use of his voice

conveyed the message that Madden NFL 06 provides an

accurate rendering of NFL game play. By applying digital

sound effects to make the voice sound computerized and adding

a metallic echo, the program’s producers aimed to connect the

NFL’s history (symbolized by Facenda’s voice, which narrated

much of that history) to a modern video game (symbolized by

digital filtering of the voice). The NFL contends that it had the

right to choose how to convey those messages, even if it meant

using portions of recordings of Facenda’s voice.

The NFL argues additionally that its program cannot be

mere commercial speech—which is defined as “speech that does

no more than propose a commercial transaction,” United States

v. United Foods, Inc., 533 U.S. 405, 409 (2001), and is not as

protected as artistic expression, id.—because it contains
18

information that also appeared in news accounts of the release of

Madden NFL 06. This informational material includes

descriptions of the video game’s realism, explanations of the

game’s features, and reports of gamers’ and NFL players’

enthusiasm for the new version. In this sense, the NFL argues,

its program functions as a documentary explaining how the video

game was made and depicting the phenomenon of the game’s

popularity.

The NFL also argues that, even if the program has

promotional aspects (a point which it concedes only for the sake

of argument), they are “inextricably intertwined” with the artistic

and informational elements, meaning that we must treat the

program as “fully protected speech.” Riley v. Nat’l Fed’n of the

Blind of N.C., Inc., 487 U.S. 781, 796, 798 (1988) (applying

“exacting First Amendment scrutiny” to a state regulation of

charitable solicitation materials); see In re Orthopedic Bone

Screw Prods. Liab. Litig., 193 F.3d 781, 793 (3d Cir. 1999)

(stating that Riley applies where “speech consists of ‘complex

mixtures of commercial and noncommercial elements’ ” (quoting

Bolger v. Youngs Drug Prods. Corp., 463 U.S. 60, 81 (1983)

(Stevens, J., concurring))).

The Estate contends that the program is commercial

speech, and we agree. Our Court has “three factors to consider

in deciding whether speech is commercial: (1) is the speech an

advertisement; (2) does the speech refer to a specific product or

service; and (3) does the speaker have an economic motivation
 Jon Albert Levy, an expert witness for the Estate, described 6

the program as “not quite an infomercial” because “[t]here’s no

800 number on it. There’s not a call to action on it.” He

therefore described the program as a “documercial,” apparently

meaning that it had characteristics of a documentary in addition

to characteristics of a traditional television advertisement. Yet

those observations do not contradict his conclusion that the

program is “a hundred percent promotional.” The production

uses informational and documentary techniques for the purpose

19

for the speech.” U.S. Healthcare, Inc. v. Blue Cross of Greater

Phila., 898 F.2d 914, 933 (3d Cir. 1990) (citing Bolger, 463 U.S.

at 66–67). “An affirmative answer to all three questions provides

‘strong support’ for the conclusion that the speech is

commercial.” Id. (quoting Bolger, 463 U.S. at 67). This inquiry

involves making “a ‘ “commonsense distinction between speech

proposing a commercial transaction . . . and other varieties of

speech.” ’ ” Orthopedic Bone Screw, 193 F.3d at 792 (quoting

Bolger, 463 U.S. at 65 (quoting Ohralik v. Ohio State Bar Ass’n,

436 U.S. 447, 455–56 (1978))).

The first factor presents a novel issue, because the

program is not a traditional 30- or 60-second television

advertisement. But ultimately the question is not close. The

Estate’s comparison of the program to a late-night, half-hourlong “infomercial” is apt. Like an infomercial, the program

focuses on one product, explaining both how it works and the

source of its innovations, all in a positive tone. While it does not 6
of promoting the video game, and thus proposes a commercial

transaction.

 The exact amount of royalties that EA Sports paid to the 7

NFL in consideration for the exclusive right to use NFL

trademarks and marketing support was redacted from the record.

But NFL licensing manager Timothy Langley testified that “the

more copies [of Madden NFL 06] that are sold, the more money

we would make.”

20

advertise the game’s price, the program did feature a clock at its

ending that displayed the number of days until the video game’s

release for sale. Furthermore, the program was only broadcast

eight times in a three-day span immediately before the release of

the video game to retail stores—much like an advertisement for

an upcoming film. The second factor is easily satisfied because

the program’s sole subject is Madden NFL 06. The show does

not refer to other video games—excepting previous years’

versions of “Madden,” which the program portrays as antiquated.

The third factor is satisfied by NFL’s licensing agreement with

EA Sports, which gives the NFL a direct financial interest in

sales of the video game. Moreover, the video game’s general 7

promotion of NFL-branded football provides an additional

indirect financial motivation. In this context, we deem “The

Making of Madden NFL 06” to be commercial speech.

Although we err on the side of fully protecting speech

when confronted with works near the line dividing commercial

and noncommercial speech, we do not view “The Making of
21

Madden NFL 06” as close to that boundary. Unlike the film title

in Rogers, the books in Cliffs Notes, or the painting in ETW, the

work accused of trademark infringement in our case aims to

promote another creative work, the video game. Even if Rogers

should apply beyond titles (an extension undertaken, to our

knowledge, in only the two cases mentioned above), we decline

to apply it here in a context with that additional degree of

separation. Moreover, the artistic and informational messages

that the NFL contends the program conveys amount to mere

praise for the product, attesting to its realism and popularity. As

the District Court noted, “no one in The Making of Madden had

a negative thing to say about the game,” 488 F. Supp. 2d at 500,

unlike news accounts that mentioned various criticisms. This

belies any argument that the program has a documentary purpose.

Because we hold that “The Making of Madden NFL 06”

is commercial speech rather than artistic expression, we need not

reach the issue whether our Court will adopt the Rogers test. We

acknowledge that commercial speech does receive some First

Amendment protection. See, e.g., United Foods, Inc., 533 U.S.

at 409; Central Hudson Gas & Elec. Corp. v. Pub. Serv. Comm’n

of N.Y., 447 U.S. 557, 561 (1980). Yet the Lanham Act

customarily avoids violating the First Amendment, in part by

enforcing a trademark only when consumers are likely to be

misled or confused by the alleged infringer’s use. See id. at 563

(“[T]here can be no constitutional objection to the suppression of

commercial messages that do not accurately inform the public

about lawful activity.”); see also 6 J. Thomas McCarthy,
22

McCarthy on Trademarks and Unfair Competition § 31:142, at

31-229 (4th ed. 1996 & Supp. 2008) (describing the low level of

First Amendment protection for misleading speech); Alex

Kozinski, Trademarks Unplugged, 68 N.Y.U. L. Rev. 960, 973

(1993) (“So long as trademark law limits itself to its traditional

role of avoiding confusion in the marketplace, there's little

likelihood that free expression will be hindered.”). Thus, we

reject the NFL’s First Amendment defense and proceed to

analyze the Estate’s false-endorsement claim under trademark

law without overlaying the balancing test of Rogers.

2. Tailoring the Lapp Factors to False Endorsement

Claims

The Estate claims that the NFL violated § 43(a)(1)(A) of

the Lanham Act by falsely implying that Facenda (or, as here, his

successor in interest) had endorsed Madden NFL 06. This claim

is considered a trademark claim because Facenda’s voice is a

distinctive mark, the Estate owns the mark, and “The Making of

Madden NFL 06” allegedly creates a likelihood of confusion that

Facenda’s Estate has an “affiliation, connection, or association”

with the Madden NFL 06 video game implying that the Estate

“sponsor[s]” or “approve[s] of” that game. 15 U.S.C.

§ 1125(a)(1)(A).

Section 43(a)(1)(A) covers more than just false

endorsement claims. In fact, false endorsement claims are rare

enough that our Court has not previously announced the legal
23

standard that applies to them. A more typical claim under

§ 43(a)(1)(A) involves one company accusing another company

of using the first company’s unregistered mark. We therefore

must determine whether the District Court analyzed the Estate’s

Lanham Act claim under a standard suitably tailored to the false

endorsement context.

Our Court evaluates § 43(a)(1)(A) claims under the tenfactor test outlined in Interpace Corp. v. Lapp, Inc., 721 F.2d

460, 463 (3d Cir. 1983) (quoting Scott Paper Co. v. Scott’s

Liquid Gold, Inc., 589 F.2d 1225, 1229 (3d Cir. 1978), abrogated

on other grounds by Pullman-Standard v. Swint, 456 U.S. 273,

287 (1982). We subsequently adapted Lapp slightly to

accommodate cases involving either directly competing or noncompeting goods. Applying Lapp, we consider the following ten

factors:

(1) the degree of similarity between

the owner’s mark and the alleged

infringing mark;

(2) the strength of the owner’s mark;

(3) the price of the goods and other

factors indicative of the care and

attention expected of consumers

when making a purchase;
24

(4) the length of time the defendant

has used the mark without evidence

of actual confusion arising;

(5) the intent of the defendant in

adopting the mark;

(6) the evidence of actual confusion;

(7) whether the goods, competing or

not competing, are marketed through

the same channels of trade and

advertised through the same media;

(8) the extent to which the targets of

the parties’ sales efforts are the

same;

(9) the relationship of the goods in

the minds of consumers, whether

because of the near-identity of the

products, the similarity of function,

or other factors; [and]

(10) other facts suggesting that the

consuming public might expect the

prior owner to manufacture both

products, or expect the prior owner
25

to manufacture a product in the

defendant’s market, or expect that

the prior owner is likely to expand

into the defendant’s market.

A & H Sportswear, Inc. v. Victoria’s Secret Stores, Inc., 237 F.3d

198, 215 (3d Cir. 2000).

The Lapp factors allow courts to compare the marks of

two competing or non-competing goods. But this makes Lapp an

uncomfortable fit in a false-endorsement case like this one. This

case presents the question whether the NFL used the Estate’s

mark (i.e., Facenda’s voice) in a way that falsely implied that the

Estate endorsed a video game. Rather than protecting its mark

with respect to a particular product, the Estate seeks to reserve

the exclusive right to grant or deny permission to those who wish

to use Facenda’s voice to promote unspecified products in the

future.

To address this disconnect between Lapp and falseendorsement claims, the District Court concluded that under

§ 43(a)(1)(A) the traditional Lapp factors apply in a modified

form specifically crafted for false-endorsement cases by the

Ninth Circuit Court of Appeals:

1. the level of recognition that the

plaintiff has among the segment of

the society for whom the
26

defendant’s product is intended;

2. the relatedness of the fame or

success of the plaintiff to the

defendant’s product;

3. the similarity of the likeness used

by the defendant to the actual

plaintiff;

4. evidence of actual confusion;

5. marketing channels used;

6. likely degree of purchaser care;

7. defendant’s intent [in] selecting

the plaintiff; and

8. likelihood of expansion of the

product lines.

Although these are all factors that

are appropriate for consideration in

determining the likelihood of

confusion, they are not necessarily

of equal importance, nor do they

necessarily apply to every case.
27

Downing v. Abercrombie & Fitch, 265 F.3d 994, 1007–08 (9th

Cir. 2001).

The District Court reasoned that each of the Downing

factors corresponds to one or more of the Lapp factors. Facenda,

488 F. Supp. 2d at 510 n.6. The Court linked Downing factor 1

to Lapp factors 2 and 8, Downing factor 2 to Lapp factor 9,

Downing factor 3 to Lapp factor 1, Downing factor 4 to Lapp

factor 6 (a nearly exact correspondence), Downing factor 7 to

Lapp factor 5 (also an especially close correspondence), and

Downing factor 8 to Lapp factor 10. Id. The only Lapp factor

left unmatched is the fourth, which we address below.

We substantially agree with the District Court’s approach

to tailoring the Lapp factors in the manner of Downing. We

augment the list set out above by noting that Downing factor 5 is

analogous to Lapp factor 7, and that Downing factor 6 relates to

Lapp factor 3. Also, we modify the fourth factor of Downing by

adding the words “and the length of time the defendant employed

the allegedly infringing work before any evidence of actual

confusion arose.” This accounts for the fourth Lapp factor,

which has no corresponding factor in Downing. Otherwise, we

hold that the Downing factors retain the substance of Lapp while

appropriately tailoring the language to false endorsement claims.

Cf. Century 21 Real Estate Corp. v. Lendingtree, Inc., 425 F.3d

211, 224–26 (3d Cir. 2005) (tailoring the Lapp factors for

“nominative use” cases, in which the alleged infringer refers to

a competitor’s product in discussing its own product); A & H
28

Sportswear, 237 F.3d at 207 (“Although all of the factors can be

useful, the Lanham Act does not require that [the Lapp factors]

be followed precisely so long as the relevant comparisons

suggested by the test are made.”).

In adopting our slightly modified version of Downing,

affirming the District Court’s approach in large part, we

emphasize that this formulation of the Lapp factors applies only

to false endorsement claims. This holding—seeking only to

uphold the substance of Lapp as the set of factors for courts to

consider when evaluating likelihood of confusion—does not

critique any of our Court’s prior precedent in the area of

trademark infringement.

3. Distinguishing Between Subsections of Section

43(a)(1)

Under the slightly modified Downing test, evidence of

actual confusion among consumers about whether Facenda’s

Estate had agreed to endorse Madden NFL 06 is one factor to

consider among eight. A common way of providing such

evidence of actual confusion is to conduct a survey, but the

Estate did not conduct one. The District Court held that the lack

of survey evidence (or even anecdotal evidence of actual

confusion) was “not fatal.” Facenda, 488 F. Supp. 2d at 512.

Even though the actual-confusion factor can be important, survey

evidence is expensive and difficult to obtain, leading some courts

not to penalize plaintiffs for failing to obtain it. Id. at 512–13.
29

Moreover, evidence of actual confusion was especially difficult

to obtain in this case because the program aired on NFL Network

(a cable network, we note, to which many households do not

have access) only eight times. See id. at 513. Weighing all the

Downing factors, the District Court held that a likelihood of

confusion did exist about whether Facenda’s Estate agreed to

endorse Madden NFL 06. Id.

The NFL strenuously objects to the District Court’s choice

of legal standard under § 43(a)(1)(A) as well as its legal

conclusion about whether evidence of actual confusion was

required. It argues that subsections (a)(1)(A) and (a)(1)(B) have

the same standard, which distinguishes impliedly false

endorsements from expressly false endorsements. It also

contends that claims of impliedly false endorsement like the

Estate’s—as opposed to, for example, an expressly false

endorsement consisting of sound clips of Facenda’s voice

digitally stitched together to say “I think you should buy Madden

NFL 06”—must be proven with evidence that the program

actually confused consumers. At the very least, the NFL argues,

the District Court should have required evidence that consumers

actually received the implied message. (The NFL distinguishes

receipt of a false message from belief in that falsehood.)

We reject the NFL’s arguments about the proper legal

standard. The Lapp factors apply, modified for false

endorsement cases as described above, and no single factor is

dispositive. Our Court has made the difference in the standards
30

under (a)(1)(A) and (a)(1)(B) explicit:

Some actions brought under the

Lanham Act require proof of actual

confusion and others do not. In an

action brought under sections 32 and

43(a) of the Lanham Act for

trademark infringement, 15 U.S.C.

§§ 1114(1) and 1125(a)(1)(A),

plaintiff need not provide proof of

actual confusion; he need only show

likelihood of confusion. In an

action brought under another part of

section 43(a) of the Lanham Act for

false advertising, 15 U.S.C.

§ 1125(a)(1)(B), plaintiff need not

prove the challenged advertising

misled the public if he can show it

was literally false. However, if his

claim is not that the advertising was

false but that it was misleading, he

must prove the public was actually

misled or confused by it.

Fisons Horticulture, Inc. v. Vigoro Indus., Inc., 30 F.3d 466, 472

n.8 (3d Cir. 1994) (citations omitted). For claims brought under

subsection (a)(1)(A), only a likelihood of confusion is required.

The distinction between impliedly false and expressly false
31

statements that the NFL urges us to apply comes from the

jurisprudence under subsection (a)(1)(B). We decline the NFL’s

invitation to muddle the two separate bodies of law that have

developed under the separate subsections of § 43(a).

The statutory text of the two subsections differs; only

subsection (a)(1)(A) includes the phrase “likely to cause

confusion.” 15 U.S.C. § 1125(a)(1)(A); see Facenda, 488 F.

Supp. 2d at 507–08. The case law also differs; our Court has

long applied the Lapp factors in (a)(1)(A) cases but not in

(a)(1)(B) cases. See Facenda, 488 F. Supp. 2d at 508–09. The

leading treatise on trademark law explains that plaintiffs could

bring false endorsement claims under either (a)(1)(A) or

(a)(1)(B). 5 McCarthy on Trademarks § 28.15, at 28-20 (“Both

prongs of the post-1989 version of § 43(a) would seem to be

implicated in false endorsement cases.”). But that does not mean

that plaintiffs must bring claims under both subsections. Nor

does it mean that the elements of (a)(1)(A) claims and (a)(1)(B)

claims are the same, as the NFL alleges. In fact, (a)(1)(A)

requires only a likelihood of confusion whereas claims of

impliedly false statements under (a)(1)(B) require showing actual

confusion or misleading statements.

The NFL cites a number of cases for the proposition that

we must require evidence of actual confusion by (or, at a

minimum, actual receipt of) the false-endorsement message. All

but one of these cases were decided under subsection (a)(1)(B),

the false advertising prong of § 43(a). See Novartis Consumer
32

Health, Inc. v. Johnson & Johnson–Merck Consumer Pharms.

Co., 290 F.3d 578, 586 (3d Cir. 2002) (quoting § 43(a)(1)(B) and

describing the legal standard for false advertising claims);

Warner-Lambert Co. v. Breathasure, Inc., 204 F.3d 87, 91–92

(3d Cir. 2000) (same); Johnson & Johnson–Merck Consumer

Pharms. Co. v. Rhone-Poulenc Rorer Pharms., Inc., 19 F.3d 125,

129 & n.6 (3d Cir. 1994) (same); Sandoz, 902 F.2d at 227

(quoting only § 43(a), not specifying which subsection, but

describing the § 43(a) claim as one for false advertising); U.S.

Healthcare, 898 F.2d at 921–23 (quoting § 43(a) and both

subsections’ predecessors but citing and discussing falseadvertising cases).

Only a single opinion from a district court both cites

subsection (a)(1)(A) and requires evidence of actual confusion.

Seale v. Gramercy Pictures, 964 F. Supp. 918 (E.D. Pa. 1997).

That case analyzed a false endorsement claim under subsection

(a)(1)(B), the false advertising prong of § 43(a)(1). Yet, when

quoting the statutory language at the outset of its analysis, the

Court quoted the language of subsection (a)(1)(A) but stated

immediately thereafter the standard for “[a] claim for false

advertising under the Lanham Act.” Id. at 930 (emphasis added).

As we read that case, the District Court in Seale erred (likely

inadvertently) by quoting the language of subsection (a)(1)(A)

rather than (a)(1)(B) as it apparently intended. But that small

passage in Seale forced the District Court here to resolve the

apparent conflict between Seale and our Court’s precedent,

including Fisons. It reviewed several cases in both the (a)(1)(A)
 But as noted below (infra Section VI.C) an earlier decision 8

in the Seale case, 949 F. Supp. 331 (E.D. Pa. 1996), proves

especially useful in another context in sparking a framework for

analyzing whether federal copyright law preempts a state-based

right-of-publicity claim.

33

line and the (a)(1)(B) line before deciding, correctly, that Fisons

was the correct statement of the law. Facenda, 488 F. Supp. 2d

at 505–10. The oversight in Seale also led the NFL to spend

much of its opening brief to our Court attempting to blur the

distinction between (a)(1)(A) and (a)(1)(B).

We thus reject the NFL’s challenge to the legal standard

applied by the District Court. We adhere to the language in

Fisons summarizing the difference between the subsections and

view the contrary language in Seale, which regardless is not 8

binding on our Court, as an oversight in a case that otherwise

dealt with false advertising.

B. Application to the Estate’s Claim

With the legal standard under § 43(a)(1)(A) settled, we

turn to the application of that standard to the facts of the Estate’s

claim. First, we briefly explain the limited significance of the

standard release contract between Facenda and NFL Films,

signed shortly before his death. Second, we evaluate whether

summary judgment for the Estate on its Lanham-Act falseendorsement claim was appropriate.
 On appeal, the NFL does not emphasize its argument that 9

the release provides a defense. But it continues to dispute the

District Court’s characterization of the production as

commercial in its briefing to our Court. Because the District

Court relied on that characterization to reject the defense, we

deem the NFL not to have waived this defense. This does not

prejudice the Estate, because nothing turns on the standard

release contract, as we explain in this Section.

34

1. The Standard Release Contract

A threshold inquiry is whether the “standard release”

contract that Facenda signed serves as a “complete defense” to

the Estate’s claims, as the NFL argued in the District Court. The

contract states that the NFL can use its recordings featuring

Facenda’s voice as it sees fit, “provided, however, such use does

not constitute an endorsement of any product or service.” The

District Court rejected the NFL’s defense. It concluded that “The

Making of Madden NFL 06” is “commercial in nature”—i.e., that

it constitutes an endorsement of the video game—and does not

fall within the terms of the contract. Id. at 501.9

In interpreting the language of the contract, we would not

focus on whether the program as a whole constitutes an

endorsement. Instead, we would ask whether the use of

Facenda’s voice within the program constitutes an endorsement.

Viewed in this light, the District Court’s rationale does not

support rejecting the defense. Yet we agree with the Court’s
35

conclusion that the contract does not bar the Estate’s falseendorsement claim.

In the contract, Facenda waived his rights with regard to

any uses that were not endorsements. But if the Estate succeeds

in proving the elements of its false-endorsement claim, such a

finding by the District Court will demonstrate that the NFL’s use

of Facenda’s voice was an endorsement, falling outside the

contract’s waiver clause. On the other hand, if the Estate’s falseendorsement claim were to fail, meaning that the use was not an

endorsement, the contract’s waiver would apply to that claim.

Thus, what falls inside the Lanham Act’s prohibitions defines

what is outside the contract’s waiver. This renders further

analysis of the contract as an independent defense moot. The

significance of the contract is that Facenda did not waive the

right to bring a claim under the Lanham Act for false

endorsement.

2. Genuine Issues of Material Fact Remain

Applying the eight Downing factors, the District Court

concluded that six factors favored the Estate, while only one

factor, evidence of actual confusion, favored the NFL. 488 F.

Supp. 2d at 510–513. (It held that the sixth factor, likely degree

of purchaser care, did not apply. Id. at 513.) On balance, the

Court concluded that “The Making of Madden NFL 06” was

likely to confuse consumers as to whether the Estate sponsored

or approved of the video game. Id. Although the NFL barely
36

addressed the issue in its briefing to our Court, under our de novo

standard of review on a grant of summary judgment, we must

examine whether the District Court properly awarded summary

judgment to the Estate.

The parties told the District Court that no more evidence

was necessary to decide their cross-motions for summary

judgment. Id. at 499 (“[B]oth parties agreed that they had no

need of further discovery, and that the Court could resolve all the

liability issues on the evidence already before it.”). But “the

mere fact that both parties seek summary judgment does not

constitute a waiver of a full trial or the right to have the case

presented to a jury.” 10A Charles Alan Wright, Arthur R. Miller

& Mary Kay Kane, Federal Practice and Procedure § 2720 (3d

ed. 1998), at 330–31 (citing Rains v. Cascade Indus., Inc., 402

F.2d 241, 245 (3d Cir. 1968)). Although it might seem to serve

principles of judicial economy, parties may not stipulate to

forgoing a trial when genuine issues of material fact remain that

prevent either side from succeeding on a motion for summary

judgment.

Genuine disputes over material facts do exist in our case.

For example, the NFL denies that it had the intent to profit

unjustly from its use of Facenda’s voice in the program. NFL

Films executives testified in depositions, for instance, that they

thought they had the right to use the sound clips they did—as

long as the program was not a commercial. See Facenda, 488 F.

Supp. 2d at 499. The NFL Films producers did not see the
37

production as a violation of the standard release contract because

of how they perceived its documentary-like aspects. Although

we concluded in Section V.A.1 above that the program is

commercial speech for First Amendment purposes, that legal

conclusion does not dictate the result of a factual inquiry into the

NFL’s intent.

The District Court appears to have disbelieved the NFL

Films executives’ testimony regarding intent. A dim view of

deposition testimony that contradicts internal e-mails (that

testimony including statements like “The whole show is a

‘making of’ show[,] so all it does it promotes [M]adden,” id. at

497) may have ample justification. But the NFL has a plausible

point that the District Court was rejecting contrary evidence and

making a credibility judgment, which is disallowed when ruling

on a summary judgment motion. See Country Floors, 930 F.2d

at 1062; cf. 10B Wright, Miller & Kane, Federal Practice and

Procedure § 2730 (suggesting that summary judgment is often

inappropriate when a state of mind, such as intent or knowledge,

is an element of a claim).

Another issue of disputed fact is whether any consumers

actually received the message that Facenda endorsed Madden

NFL 06. This falls under the fourth factor of Downing, evidence

of actual confusion. The Estate introduced no consumer survey

evidence and no anecdotal evidence. Facenda, 488 F. Supp. 2d

at 498. But the Estate did produce an expert witness on the issue

of consumer confusion—Jon Albert Levy, who “testified that
38

viewers would ‘probably’ believe, mistakenly, that there was an

affiliation between Mr. Facenda and the Madden game.” Id.

Levy’s expertise centers on providing celebrities and music to

appear in advertisements and pricing those appearances.

Although he admitted having no experience with consumer

surveys, he also testified that he must judge whether an

appearance requires permission to determine the price owed to

the celebrity or musical artist (i.e., whether that price should be

greater than zero). The District Court stated that this Downing

factor overwhelmingly favored the NFL. Id. at 512. But that

conclusion was the result of weighing competing evidence,

which the summary judgment standard forbids.

The larger question here is whether the overall weighing

of the Downing factors is a question of law or one of fact. “The

Lanham Act’s ‘likelihood of confusion’ standard is

predominantly factual in nature. Thus, summary judgment is

inappropriate when a jury could reasonably conclude that there

is a likelihood of confusion.” Downing, 265 F.3d at 1008

(internal citation omitted). The presence of genuine disputes

over some of the Downing factors suggests that this

fact-intensive inquiry should have been handled at trial.

We follow Downing in holding that likelihood of

confusion is a question of fact. See, e.g., A&H Sportswear, Inc.

v. Victoria’s Secret Stores, Inc., 166 F.3d 191, 194 (3d Cir.

1999); Dranoff-Perlstein Assocs. v. Sklar, 967 F.2d 852, 862 (3d

Cir. 1992). Thus, we vacate the District Court’s grant of
 We note here that while the District Court was correct in 10

applying the Downing factors to the Estate’s Lanham Act claim,

it applied two of those factors—the fifth and eighth—in a

manner that it is inconsistent with how those factors have been

applied in prior cases.

First, the Court stated that the fifth factor, marketing

channels used, favors the Estate because the program appeared

on the NFL Network, the channel “most likely to attract viewers

who would recognize John Facenda’s voice as being associated

with football.” Facenda, 488 F. Supp. 2d at 512. Yet the usual

fifth-factor analysis does not ask about audience recognition

(which is the domain of the first Downing factor—level of

recognition in the targeted market segment), inquiring instead

about whether the defendant used marketing channels in which

the plaintiff’s endorsements are likely to appear. See White v.

Samsung Elecs. Am., Inc., 971 F.2d 1395, 1400 (9th Cir. 1992)

(focusing on the extent to which products the plaintiff actually

endorsed were marketed through the same channels and media

in which the defendant’s alleged unauthorized use of the

plaintiff’s likeness occurred).

Second, the eighth Downing factor, expansion of product

39

summary judgment for the Estate and remand this issue for trial.

On remand, the District Court should apply Downing (adding the

fourth Lapp factor to its consideration of the fourth Downing

factor as described above, see Section V.A.2 supra) to determine

whether the NFL’s program was likely to cause confusion among

consumers regarding the Estate’s sponsorship or approval of

Madden NFL 06.10
lines, does not focus on future opportunities for the defendant to

use the plaintiff’s image, as the District Court implied. See

Facenda, 488 F. Supp. 2d at 512 (the eighth Downing factor

favors Facenda because the NFL’s ongoing marketing

agreement with EA Sports means “the question of NFL’s right

to use Facenda’s recordings is likely to arise in the future”).

Rather, the eighth factor concerns whether (a) the plaintiff plans

to endorse a product that competes with a defendant’s existing

product or (b) the defendant plans to launch a new product that

competes with a product the plaintiff already endorses. See

Wendt v. Host Int’l, Inc., 125 F.3d 806, 814 (9th Cir. 1997)

(applying the eighth Downing factor to consider the potential

that the plaintiff may in the future endorse goods similar to those

defendant had been marketing using plaintiff’s likeness).

40

VI. Unauthorized Use of Name or Likeness Under

Pennsylvania Law

Pennsylvania law grants individuals the exclusive right to

their name and likeness, which includes voice. 42 Pa. Cons. Stat.

Ann. § 8316. “Any natural person whose name or likeness has

commercial value and is used for any commercial or advertising

purpose” without consent may sue for an injunction and

damages. Id. § 8316(a). A deceased person’s estate may bring

such an action, id. § 8316(b)(3), although the right only lasts until

thirty years after the person’s death, id. § 8316(c).

The District Court held that the NFL violated this statute
 The NFL did not raise a First Amendment defense to the 11

Estate’s right-of-publicity claim, thereby waiving that defense.

Thus, we need not engage in a First Amendment analysis with

respect to this claim, though we note that freedom of expression

issues arise in the right-of-publicity context analogous to those

discussed above. See supra Section V.A.1. 

41

with its use of Facenda’s voice because (a) his voice’s

commercial value was not disputed, (b) the NFL used his voice

for a commercial purpose, and (c) the standard release Facenda

signed did not consent to the use of his voice in endorsements.

Facenda, 488 F. Supp. 2d at 502. The NFL argued that its use of

Facenda’s voice was merely “incidental.” See 2 J. Thomas

McCarthy, The Rights of Publicity and Privacy § 7:20, at 42 (2d

ed. 2000 & Supp. 2008). The District Court rejected this defense

because the NFL stated a specific purpose for using the three

sound clips of Facenda’s voice: “enhanc[ing] the parallel

between Madden NFL [06] and NFL football.” Facenda, 488 F.

Supp. 2d at 503. The NFL does not pursue its incidental-orfleeting-use defense on appeal and we thus deem that argument

to be waived.

We agree that the NFL has violated § 8316 on its face for

precisely the reasons provided by the District Court, and we see

no disputed issues of material fact on that question. On appeal,

the NFL instead focuses on another argument it raised in the

District Court—that copyright law preempts the Estate’s

right-of-publicity claim.11
42

A. The NFL’s Copyright in the Sound Clips

A threshold issue for the NFL’s preemption defense is

whether the NFL has a valid copyright in the sound recordings of

Facenda’s voice. The NFL notes that it excerpted the sound clips

at issue from copyrighted productions of NFL Films. Moreover,

the sound clips represent Facenda’s readings of copyrighted NFL

scripts, making the clips “derivative works” (of the scripts) in

which a distinct copyright exists. See 17 U.S.C. § 106(2)

(granting copyright holders the exclusive right to prepare

derivative works); id. § 102(a)(7) (allowing copyrights in sound

recordings, which are separate and distinct from the copyrights

in musical compositions of § 102(a)(2)). Either way, the NFL

had the copyright in the sound clips.

By using the sound clips of Facenda’s voice in “The

Making of Madden NFL 06,” the NFL was exercising its

exclusive right to make derivative works of those sound clips

under § 106(2). In effect, it was “sampling” itself, making a

collage, taking a small piece of an old work and using it in a new

work—as when a hip-hop group samples the drum part from

James Brown’s “Funky Drummer.” It is well-established that

copyrights extend to samples, even brief samples. See, e.g.,

Grand Upright Music Ltd. v. Warner Bros. Records, Inc., 780 F.

Supp. 182, 183 (S.D.N.Y. 1991). For instance, no third party to

this case may use those recordings unless a limitation on or

exception to the NFL’s § 106 rights applies, such as the fair use

doctrine of 17 U.S.C. § 107. See Campbell v. Acuff-Rose Music,
43

Inc., 510 U.S. 569, 571–72, 579–80 (1994) (holding a parody of

Roy Orbison’s “Oh, Pretty Woman” may be a fair use). Thus, the

NFL is correct that copyright law, taken in isolation, gives it the

exclusive right (absent a limitation or exception) to use the sound

recordings of Facenda’s voice in the way that it did.

The question for us is how the NFL’s (federal) copyright

relates to Facenda’s (state-law) right of publicity. Does the statelaw right of publicity exist irrespective of the federal copyright?

Put another way, does federal copyright law preempt the right of

publicity claim under Pennsylvania law?

B. Express Preemption

The Copyright Code has an express preemption provision,

which provides that

all legal or equitable rights that [1]

are equivalent to any of the

exclusive rights within the general

scope of copyright as specified by

section 106 in [2] works of

authorship that are fixed in a

tangible medium of expression and

come within the subject matter of

copyright as specified by sections

102 and 103 . . . are governed

exclusively by this title.
44

17 U.S.C. § 301(a). In other words, for a state-law claim to be

preempted by copyright law, it must protect (1) an exclusive right

in (2) a work within copyright’s subject matter. The same

section of the Copyright Code goes on to explain that this

provision is not meant to “annul[] or limit[]” any rights in works

outside the subject matter of copyright under state law. Id. §

301(b)(1). Nor does it limit any intellectual property rights from

other federal statutes, which is why there is no question of

preemption regarding the Estate’s Lanham Act claim. See id.

§ 301(d).

1. Equivalent to an Exclusive Right?

The Estate’s claim seeks to block the NFL from exercising

its exclusive rights under 17 U.S.C. § 106 to reproduce,

distribute, perform, and make derivative works from sound

recordings in which it owns the copyrights. In that sense, it could

be thought “equivalent” to a copyright holder’s exclusive rights.

17 U.S.C. § 301(a), (b)(3); cf. Harper & Row, Publishers, Inc. v.

Nation Enters., 723 F.2d 195, 201 (2d Cir. 1983), rev’d on other

grounds, 471 U.S. 539 (1985) (“If there is a qualitative difference

between the asserted right [a claim for tortious interference with

contract] and the exclusive right under the Act of preparing

derivative works based on the copyrighted work, we are unable

to discern it. In both cases, it is the act of unauthorized

publication which causes the violation.”).

Under the first prong of express copyright preemption
45

analysis, some courts have looked to the elements of a state-law

cause of action. The presence of an “additional element”

required to state a cause of action under state law, beyond what

a copyright-infringement claim would require, renders the statelaw cause of action not equivalent to a copyright. See Dielsi v.

Falk, 916 F. Supp. 985, 991–93 (C.D. Cal. 1996).

Pennsylvania’s right-of-publicity statute requires a

showing of commercial value, defined as a “[v]aluable interest in

a natural person’s name or likeness that is developed through the

investment of time, effort and money.” 42 Pa. Cons. Stat. Ann.

§ 8316(e). The requirement under the statute that Facenda’s

voice have “commercial value,” id. § 8316(a), provides an

additional element beyond what a copyright-infringement claim

requires, see 1 Nimmer on Copyright § 1.01[B][1][c], at 1-29 to

-30 (“Invasion of privacy may sometimes occur by acts of

reproduction, distribution, performance, or display, but inasmuch

as the essence of the tort does not lie in such acts, pre-emption

should not apply. The same may be said of the right of

publicity.”); accord 2 McCarthy, Rights of Publicity and Privacy

§ 11:50, at 785. Because the Estate’s right-of-publicity claim

relied on an element not equivalent to any of the exclusive rights

granted to federal copyright holders, we hold that the first prong

of § 301(a) is not satisfied here.
 This is so even though Facenda’s voice is protectable as a 12

trademark. See supra Section V.

46

2. Copyrightable Subject Matter?

Looking to the second prong of 17 U.S.C. § 301(a), does

Facenda’s voice fall under the subject matter of copyright? The

Court of Appeals for the Ninth Circuit has stated, in the context

of vocal imitations, that “[a] voice is not copyrightable. The

sounds are not ‘fixed.’ What is put forward as protectible [sic]

here is more personal than any work of authorship.” Midler v.

Ford Motor Co., 849 F.2d 460, 462 (9th Cir. 1988). One can fix

Facenda’s voice in a tangible medium by recording it, but one

cannot divorce his distinctive voice itself from the Facenda

identity (or persona). See 1 Nimmer on Copyright

§ 1.01[B][1][c], at 1-30 (“The ‘work’ that is the subject of the

right of publicity is the persona, i.e., the name and likeness of a

celebrity or other individual. A persona can hardly be said to

constitute a ‘writing’ of an ‘author’ within the meaning of the

Copyright Clause of the Constitution.”); 2 McCarthy, Rights of

Publicity and Privacy § 11:53, at 802 (“The sound in plaintiff’s

recording is merely an indicium by which the listening public can

identify plaintiff's persona and identity.”). We hold that

Facenda’s voice is outside the subject matter of copyright.12

Thus, the second prong of § 301(a) is not satisfied.

* * * * *
47

We conclude thus that copyright’s express preemption

provision, 17 U.S.C. § 301(a), does not bar the Estate’s right-ofpublicity claim. Thus, we affirm the holding of the District Court

to this effect.

C. Conflict Preemption

Our analysis, however, does not stop there. We also

consider whether federal copyright law impliedly preempts the

Estate’s right-of-publicity claim.

The analysis works as follows. Copyright law does not

expressly preempt the right of publicity because an individual’s

identity or persona is outside the subject matter of copyright.

See, e.g., Waits, 978 F.2d at 1100; Midler, 849 F.2d at 462. Yet

in some situations, including this case, the right of publicity

clashes with the exploitation of a defendant’s copyright. Unlike

the plaintiffs in cases involving vocal imitations, see, e.g.,

Midler, 849 F.2d at 460, Facenda collaborated with the NFL to

create the copyrighted sound recordings at issue. In our view,

this gives the NFL a stronger preemption defense than the vocalimitation defendants, for example. Where a defendant in a rightof-publicity claim obtained a copyright in a work featuring the

plaintiff, courts must separate legitimate exploitations of what

Congress intended to be a copyright holder’s exclusive rights

from particular uses that infringe the right of publicity.

Otherwise, few copyright holders would be safe from suits by

performers who agreed to appear in the holders’ works. See 2
48

McCarthy, Rights of Publicity and Privacy § 11:55, at 817

(“[W]hen another reproduces a recorded performance in an

expressive, non-advertising medium, this should not be the

concern of right of publicity law.”).

Conflict preemption is a particular species of implied

preemption that “renders state law ‘without effect’ when, without

‘express congressional command,’ state law conflicts with

federal law.” Pa. Employees Benefit Trust Fund v. Zeneca Inc.,

499 F.3d 239, 247 (3d Cir. 2007) (citing Cipollone v. Liggett

Group, Inc., 505 U.S. 504, 516 (1992)). As one copyright

treatise puts it:

Therefore, even apart from Section

301, the general proposition pertains

in copyright law, as elsewhere, that

a state law is invalid that “stands as

an obstacle to the accomplishment

of the full purposes and objectives

of Congress.” Such “conflict

pre-emption” equally pertains when

compliance with both federal and

state mandates is a physical

impossibility.

1 Nimmer on Copyright § 1.01[B][3][a], at 1-77. The Estate’s

claim, if successful, will constrain the NFL’s ability to exercise

its full array of exclusive rights under the Copyright Code. Yet
49

federal copyrights are not absolute.

Courts have found conflict preemption where state laws

interfere with federal copyright law’s goal of leaving some

works, or uses of works, in the public domain. See id.

§ 1.01[B][1][c], at 1-33 (citing Brown v. Ames, 201 F.3d 654,

660–61 (5th Cir. 2000)). For example, these concerns might

arise with respect to state laws offering protection for

“sound-alike” sound recordings, which copyright does not

protect. See id. § 1.01[B][3][b][i], at 1-82 to -83 (discussing

Midler, 849 F.2d at 460); see also Vault Corp. v. Quaid Software

Ltd., 847 F.2d 255, 269–70 (5th Cir. 1988) (holding that a

Louisiana state law permitting a software producer to prohibit

disassembly of its computer program conflicted with rights

Congress left to software purchasers [under what is now 17

U.S.C. § 117(a) of the federal Copyright Code] and was therefore

unenforceable).

Our case presents a different kind of potential conflict.

Here we are concerned with the conflict between copyright law

and the right of publicity. When does the right of individuals to

avoid commercial exploitation of their identities interfere with

the rights of copyright owners to exploit their works? In

addition, we must confront the role of the standard release

contract. Does a contract acknowledging a right-of-publicity for

defendant’s copyright in a work containing a plaintiff’s identity

mean that the defendant may use that work in any way it sees fit?
 The cases that Nimmer uses to develop this framework are, 13

for the most part, ones in which the court analyzed the

preemption issue under the express-preemption test set out in 17

U.S.C. § 301(a). Nonetheless, Nimmer persuasively argues that

“courts confronting the interface of rights of publicity with

copyrighted works” deal with an issue “rooted more in conflict

pre-emption and the Supremacy Clause of the U.S. Constitution

than in express pre-emption and Section 301.” 1 Nimmer on

Copyright § 1.01[B][3][b][iv][I], at 1-882(15). Thus, we will

treat the framework he develops as one that applies to analysis

for either of these preemption contexts.

The cases Nimmer places in this category of commercial 14

or advertising uses are Midler, 849 F.2d at 460 (voice imitation

in advertisement); Waits v. Frito-Lay, Inc., 978 F.2d at 1093

(same); White v. Samsung Electronics America, Inc., 971 F.2d

at 1395 (robot with game show hostess’s likeness used in

advertisement); Wendt, 125 F.3d at 806 (robots with actors’

likenesses used to market an airport restaurant); Toney v.

L’Oreal U.S.A., Inc., 406 F.3d 905 (7th Cir. 2005) (model’s

likeness on product packaging); Downing, 265 F.3d at 994

50

David Nimmer has proposed a two-part framework for

handling cases at the intersection of copyright, the right of

publicity, and contract. First, we look to how the copyrighted 13

work featuring the plaintiff’s identity is used. Surveying the case

law, Nimmer finds that when defendants use the work “for the

purposes of trade,” such as in an advertisement, plaintiffs’ rightof-publicity claims have not been held to be preempted. See 1

Nimmer on Copyright § 1.01[B][3][b][iv][I], at 1-88.2(9)–(11).14
(surfer’s images, including T-shirts, in catalog); Seifer v. PHE,

Inc., 196 F. Supp. 2d 622 (S.D. Ohio 2002) (performer’s

likeness in promotional materials for video); Comedy III

Productions, Inc. v. Gary Saderup, Inc., 106 Cal. Rptr. 2d 126

(2001) (actors’ images on T-shirts); and—most importantly—the

District Court’s opinion in our case.

 Nimmer puts into the category of expressive uses Fleet v. 15

CBS, Inc., 58 Cal. Rptr. 2d 645 (Cal. Ct. App. 1996)

(distributing a movie in which the plaintiff acted); Laws v. Sony

Music Entertainment, Inc., 448 F.3d 1134 (9th Cir. 2006)

(licensing of a song by non-plaintiffs that included another

portion of a song in which the plaintiff sang); Hoffman v.

Capital Cities/ABC, Inc., 255 F.3d 1180 (9th Cir. 2001)

(publishing a digitized image of an actor in a movie); Astaire v.

Best Film & Video Corp., 136 F.3d 1208 (9th Cir. 1997) (using

public domain footage of an actor in a new video); Polydoros v.

Twentieth Century Fox Film Corp., 79 Cal. Rptr. 2d 207 (Cal.

Ct. App. 1998) (using high school classmate’s name in a film);

and Ahn v. Midway Mfg. Co., 965 F. Supp. 1134 (N.D. Ill. 1997)

(using images of individuals in a video game).

51

On the other hand, when defendants’ uses constitute “expressive

works,” right-of-publicity claims have been preempted. See id.

§ 1.01[B][3][b][iv][I], at 1-88.2(11). The rationale is that state 15

law has a role in regulating practices of trade, including

advertising. But limiting the way that material can be used in

expressive works extends beyond the purview of state law and

into the domain of copyright law.
52

Seale v. Gramercy Pictures was Nimmer’s inspiration for

this framework, and illustrates the distinction he draws. 949 F.

Supp. 331 (E.D. Pa. 1996). Seale’s right-of-publicity claim for

use of his likeness to make a “docudrama” about the Black

Panthers failed as a matter of law. Id. at 337–38. Nimmer

contends that this claim should have been preempted because it

targeted an expressive work. See 1 Nimmer on Copyright

§ 1.01[B][3][b][iv][I], at 1-88.2(12). On the other hand, Seale’s

claim based on the use of his image to sell compact discs (on

which he did not perform) went to trial, Seale, 949 F. Supp. at 337

(although the defendants ultimately prevailed, Seale, 964 F. Supp.

at 931). Nimmer suggests that this claim should not have been

preempted even though it proved unsuccessful. See 1 Nimmer on

Copyright § 1.01[B][3][b][iv][I], at 1-88.2(12) to -88.2(13).

The NFL used the sound recordings of Facenda’s voice in

a television production promoting the video game Madden NFL

06. This kind of use, in what amounts to a 22-minute promotional

piece akin to advertising, does not count as an expressive work.

Following the case law, this suggests that conflict preemption is

inappropriate in our case.

The second part of Nimmer’s framework addresses the way

that contracts affect the preemption analysis. Nimmer proposes

that courts should examine the purpose of the use to which the

plaintiff initially consented when signing over the copyright in a

contract. He argues that the proper question in cases involving

advertising and a contract between the plaintiff and the
53

defendant—such as our case—is whether the plaintiff

“collaborated in the creation of a copyrighted advertising

product.” 1 Nimmer on Copyright § 1.01[B][3][b][iv][II], at

1-88.2(20). If the plaintiff did collaborate in that fashion, then the

party holding the copyright is in a very strong position to contend

that allowing the plaintiff to assert a right of publicity against use

of its likeness in advertising would interfere with the rights it

acquired. If, on the other hand, the plaintiff did not collaborate

specifically in the creation of advertising content, then the

plaintiff is in a strong position to assert continuing control over

the use of his image. 

Three cases, along with the District Court’s opinion in our

case, provide the most important background case law for the

second part of Nimmer’s analysis. Fleet v. CBS, Inc. involved a

right-of-publicity claim by actors seeking to prevent a moviedistribution company from distributing a film in which they

appeared. 58 Cal. Rptr. 2d 645, 646–47 (Cal. Ct. App. 1996).

The actors had contracted away their rights in the film, but had not

received compensation. They apparently hoped to obtain leverage

in seeking payment by enjoining distribution of the film. The

California Court of Appeal held that the actors’ claim was

preempted, stating that “a party who does not hold the copyright

in a performance captured on film cannot prevent the one who

does from exploiting it by resort to state law.” Id. at 652–53.

The Ninth Circuit Court of Appeals in Laws v. Sony Music

Entertainment, Inc., evaluated singer Debra Laws’s claims that
54

Sony had violated her right of publicity by using a sample of one

of her recordings in a song by Jennifer Lopez and LL Cool J. 448

F.3d at 1135–36. A third party, Elektra Asylum Records, owned

the copyright in the original sound recording that featured Laws.

Elektra granted Sony a license to use the sample in the J. Lo–LL

Cool J song. Laws’s recording contract with Elektra gave Elektra

the right to grant licenses, subject to contractual conditions. In

that context, whether Laws authorized the sample license was a

contract issue between Laws and Elektra. But Laws sued Sony,

the end user of the sample. See id. at 1143 (“To the extent that

Laws has enforceable, contractual rights regarding the use of

Elektra’s copyright, her remedy may lie in a breach of contract

claim against Elektra for licensing [her song] ‘Very Special’

without her authorization.”). Even though Laws might have been

able to state a contract claim against Elektra, her right-of-publicity

claim against Sony was preempted by § 301(a).

In Toney v. L’Oreal U.S.A., Inc., the plaintiff, a model,

sued L’Oreal for the unauthorized use of her image on product

packaging. 406 F.3d at 907. The plaintiff had a contract with

L’Oreal’s corporate predecessor to use her image in that way, but

it had expired. The Court of Appeals for the Seventh Circuit held

that the plaintiff’s claim was not preempted. Id. at 911. “There

is no ‘work of authorship’ at issue in Toney’s right of publicity

claim. A person’s likeness—her persona—is not authored and it

is not fixed. The fact that an image of the person might be fixed

in a copyrightable photograph does not change this.” Id. at 910.

Thus, the second express-preemption requirement of § 301(a)
55

(that the state law at issue purports to protect something that falls

within the subject matter of copyright) was not met, and

accordingly Toney’s claim was not preempted.

To illustrate this second part of his framework, Nimmer

puts the fact situations in Fleet, Laws, and Toney on one side, and

the fact situation of our case (which he uses as his main counterexample, based on the District Court’s opinion) on the other:

Fleet acted in a movie; for that

reason, he could not complain when

that very movie was later exploited,

by being broadcast on television.

Laws sang for a recording; for that

reason, she could not complain when

that very recording was later

exploited, by being used as

background for Jennifer Lopez.

Toney posed for the packaging of

“Ultra Sheen Supreme.” Parallel

reasoning indicates that she should

not be able to complain about

subsequent exploitation of that very

work. The defendants in that case, in

short, did not “appropriate[] the

commercial value of a [Toney]’s

identity by using [it] without

consent.” Far from it—they simply
56

did exactly what she agreed to. In

that regard, they stand poles apart

from the NFL, when it took

anchorman Facenda ’s sports

commentary and transmuted it into

part of a pitch for a computer game.

1 Nimmer on Copyright § 1.01[B][3][b][iv][II], at 1-88.2(18).

Thus, with regard to Toney’s claim, Nimmer answers the question

“Did she collaborate in the production of a copyrighted

advertising product?” in the affirmative. He argues that her case

should have been an exception to the usual rule that right-ofpublicity claims for uses in advertisements would not be

preempted (and thus the Seventh Circuit erred). But in our case,

Nimmer suggests that preemption is not appropriate. Facenda

consented to participation in films documenting NFL games, not

an advertisement for a football video game. The release form

Facenda signed did not implicitly waive his right to publicity, the

core of which is the right not to have one’s identity used in

advertisements. See, e.g., 1 McCarthy, Rights of Publicity and

Privacy § 1:3, at 3. In fact, the release specifically preserved that

right by carving out endorsements.

The NFL argues that Facenda’s only remedy should lie in

contract. While we agree that Facenda could state a claim for

breach of contract, we believe that he also retained his tort-derived

remedy for violation of Pennsylvania’s right-of-publicity statute.

Parties may waive tort remedies via contract. It follows that they
57

may also preserve them. Cf. 1 Nimmer on Copyright

§ 1.01[B][3][b][iv][II], at 1-88.2(16) (discussing the relationship

between “copyright, contract, and the right of publicity”). While

performing artists should have the burden of reserving publicity

rights when contracting away any rights under copyright law they

might have, we hold that Facenda successfully bore that burden

here and preserved his state-law right-to-publicity claim.

Despite our holding, we emphasize that courts must

circumscribe the right of publicity so that musicians, actors, and

other voice artists do not get a right that extends beyond

commercial advertisements to other works of artistic expression.

If courts failed to do so, then every record contract or movie

contract would no longer suffice to authorize record companies and

movie studios to distribute their works. In addition to copyrights,

entertainment companies would need additional licenses for artists’

rights of publicity in every case.

Thus, we believe that Laws was rightly decided—Debra

Laws sought to enforce a right that she had contracted away. We

do not intend to express any disagreement with the Ninth Circuit

Court of Appeals by distinguishing the facts of our case from those

of Laws. Our case simply presents a different scenario than Laws.

Just as Facenda did not, in the standard release contract, waive the

right to bring a false-endorsement claim, see supra Section V.B.1,

he did not grant the NFL the right to use his voice in a promotional

television program. This contrasts with the situation in Laws.

Debra Laws’s voice was not used in an endorsement, but in a work
 Having one’s voice used as a sample in someone else’s 16

song may implicate a musician’s identity. But listeners are

probably less likely to assume that the sampled musician

vouches for or approves of a new creative work that samples her

work than consumers are likely to assume that an individual’s

presence in an advertisement reflects an active choice to endorse

a product. 

58

of artistic expression.

In the endorsement context, an individual’s identity and

credibility are put directly on point. Advertisements are special 16

in the way they implicate an individual’s identity. Precisely what

Pennsylvania’s right of publicity is meant to protect is a citizen’s

prerogative not to have his or her name, likeness, voice, or identity

used in a commercial advertisement, whether that citizen is a

celebrity or not.

In our case, we have no precedent to hold that the right of

publicity in an individual’s voice is analogous to the public

domain. In this void, we believe state-law protection of an

individual’s voice will not upset copyright law’s balance as long as

the state law is not construed too broadly. Pennsylvania’s § 8316

focuses solely on the commercial-advertising context. It is targeted

at endorsements, not the full universe of creative works. The

Estate’s claim lies at the heart of the statute’s focus. For these

reasons, the state-law right of publicity does not conflict with

federal copyright law in this case.
59

* * * * *

We hold that neither express nor implied conflict

preemption bars the Estate’s right-of-publicity claim under

Pennsylvania law. We affirm the District Court’s grant of

summary judgment to the Estate on that claim.

VII. Conclusion

This case presents dueling intellectual property rights of

differing kinds. The NFL seeksto exploit its copyrighted films and

scripts, yet the Estate has asserted both a trademark and a right of

publicity in John Facenda’s famous voice. In this sense, the

Estate’s guarding of its intellectual property rights has constrained

the NFL’s enjoyment of its intellectual property rights. In another

clash of rights of a different variety, the NFL asserted a First

Amendment defense against the Estate’s false-endorsement claim.

As a general matter, the District Court should have considered

whether enforcement of the Estate’s intellectual property rights

under the Lanham Act overly constrained the NFL’s right to free

speech, though here we hold the NFL’s First Amendment defense

to trademark infringement fails.

We agree with the District Court that Downing usefully

implements the well-known Lapp factors, so long as the fourth

Downing factor is modified so that the substance of each of the ten

Lapp factors is covered with an analogous factor.
60

Because § 43(a) of the Lanham Act protects the Estate’s

mark (Facenda’s voice) only to the extent that consumers are likely

to be confused by the NFL’s use—a factual issue, we vacate the

grant of summary judgment and remand to the District Court for

trial on that claim.

As for Pennsylvania’s right-of-publicity statute, it protects

Facenda’s voice in a way that does not conflict with federal

copyright law. We thus hold that the Estate’s right-of-publicity

claim was not preempted.