Intellectual Property Law

Third Circuit: False endorsement claims use modified likelihood of confusion analysis

By McKee, Voorhees & Sease, P.L.C.

In a recent decision, the Third Circuit vacated a district court's grant of summary judgment to the plaintiff in a § 43(a) false endorsement case, but affirmed the plaintiff's summary judgment win as to the state law right of publicity claims.  The dispute revolved around the National Football League's use of John Facenda's voice in a production regarding the making of the video game Madden NFL 06.  Many football fans remember Mr. Facenda's voice from NFL Films productions from the 1960s up to his death in 1984; he is sometimes referred to as "The Voice of God."   The district court granted summary judgment to Mr. Facenda's estate on both claims.

The Third Circuit affirmed the summary judgment on the right of publicity claim, but vacated it on the false endorsement claim.  On the right of publicity claim, the Third Circuit agreed with the district court that copyright law did not preempt state right of publicity law in this case.  This was because Mr. Facenda's voice was used in a commercial context, rather than an "expressive" context.  Interestingly, the court cited with approval discussion of the district court's opinion on this subject from a leading copyright treatise, Nimmer on Copyright.

On the issue of false endorsement, the Third Circuit agreed with the bulk of the district court's analysis, but vacated the summary judgment on the basis of issues of disputed fact.  In so doing, the court adopted a modified version of the Ninth Circuit's test in false endorsement cases, as the appropriate factors were a matter of first impression for the Third Circuit.  Interestingly, the court observed that "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."  This is in contrast to a recent Federal Circuit decision, where the court decided an appeal where the parties did make such a stipulation before the district court.

More detail of Facenda v. N.F.L. Films, Inc. after the jump.

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Full post as published by FileWrapper on September 29, 2008 (boomark / email).