Former NFL Pros’ State Right of Publicity Claims Preempted by Copyright Act

John Frederick Dryer, Elvin Lamont Bethea, and Edward Alvin are former National Football League (NFL) players who participated in a class action against the NFL.  The former players sued the NFL, claiming right of publicity and Lanham Act (trademark) violations by the NFL for showing the players in films about significant moments in NFL history.  NFL Films sells consumers copies of the films and licenses the films for public display to Warner Home Video, Hulu, ESPN and others.  The other class action participants settled with the NFL, but Dryer, Bethea and Alvin did not.

The district court granted the NFL’s motions for summary judgment on the players’ right of publicity and Lanham Act claims.  The Eight Circuit affirmed the district court’s ruling.

The Copyright Act Preempts the Players’ Right of Publicity Claims

Federal copyright law preempts all legal or equitable rights that are equivalent to the exclusive copyright rights.  17 U.S.C. §301(a).  Preemption is determined by examining 1) whether the work as issue is copyrightable subject matter and 2) whether the right created by state law is equivalent to any of the exclusive copyright rights.  Federal copyright law preempts state law when the answer to both of these questions is “yes.”

The players argued that their performance during games were not eligible for copyright protection. 

This argument lacks merit. Although courts have recognized that the initial performance of a game is an ‘athletic event’ outside the subject matter of copyright, the Copyright Act specifically includes within its purview fixed recordings of such live performances, 17 U.S.C. § 101. Indeed, the same decision that the appellants cite to support excluding live sporting events from copyright law recognized that the Copyright Act was amended in 1976 specifically to insure that simultaneously-recorded transmissions of live performances and sporting events would meet the Act’s requirement that the original work of authorship be ‘fixed in any tangible medium of expression.’  The appellants do not argue that NFL Films lacked permission to record appellants’ live performances in NFL games. Nor do they dispute that the NFL maintains an enforceable copyright in the footage that NFL Films gathered during those games. Because the appellants do not challenge the NFL’s use of their likenesses or identities in any context other than the publication of that game footage, we hold that the appellants’ right-of-publicity claims challenge a ‘work within the subject matter of copyright.’

(Opinion pdf page 5).

The Eight Circuit ruled that the state law right of publicity the players sought to enforce was equivalent to the copyright owner’s right of distribution. 

When a right-of-publicity suit challenges the expressive, noncommercial use of a copyrighted work, that suit seeks to subordinate the copyright holder’s right to exploit the value of that work to the plaintiff’s interest in controlling the work’s dissemination.  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.  If a performer in a copyrighted recording later objects to the reproduction or performance of that recording in an expressive, non-advertising use, then the claim is one of copyright infringement, not of infringement of the right of publicity. Such a suit asserts rights equivalent to exclusive rights within the general scope of copyright and is preempted by copyright law.

(Opinion pdf page 6).

The players also argued that the NFL films represent commercial speech that states have an interest in regulating, making the players’ claims fall outside the scope of copyright.  The Eight Circuit ruled that the NFL films are expressive speech, not commercial speech. 

The films tell stories of past contests featuring NFL teams and players, and they reference the league as part of those historical events rather than as a present-day product.  Because the films represent speech of independent value and public interest rather than advertisements for a specific product, the NFL’s economic motivations alone cannot convert these productions into commercial speech.

(Opinion pdf page 7).

The NFL Films Are Not a False Endorsement Under the Lanham Act.

The Lanham Act prohibits “false representations concerning the origin, association, or endorsement of goods or services through the wrongful use of another’s distinctive mark, name, trade dress, or other device.”  Section 43(a)(1)(A), 15 U.S.C. § 1125. 

The Eight Circuit ruled that because the players did not provide evidence of misleading or false statements contained in the films regarding the players’ current endorsement of the NFL, the players’ Lanham Act false endorsement claim fails as a matter of law.

This case is Dryer v. The National Football League, No. 14-3428, Eight Circuit Court of Appeals.

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