Cases of Note--Copyright v. Right-to-Publicity
Cases of Note--Copyright v. Right-to-Publicity
Bruce Strauch Th e Citadel 0 1 2
0 1 2
Bryan M. Carson 0 1 2
0 Jack Montgomery Western Kentucky University , USA
1 Western Kentucky University , USA
2 Bruce Strauch , The Citadel
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Cases of Note — Copyright v. Right-to-Publicity
J O H N D RY E R , E LV I N B E T H E A ,
EDWARD WHITE V. THE NATIONAL
FOOTBALL LEAGUE. UNITED STATES
COURT OF APPEALS FOR THE EIGHTH
CIRCUIT. 814 F.3d 938; 122016 U.S. App.
We’ve come a long way from the days when
pro baseball players gave up their image for
$125 a season and the Leagues made millions
off trading cards.
And yes, I had to look it up. The 8th Circuit
is Arkansas, Iowa, Missouri, Nebraska, North
and South Dakota.
NFL Films does films of significant games,
seasons and players in the NFL history. Our
players were in the NFL in the 1960s, 70s, and
80s. They are in the game footage and gave
interviews after retirement.
They sued under the right-of-publicity of
a variety of states and for unjust enrichment.
There were more than just the three named
in the suit. The others settled after the NFL
created a fund for the benefit of all players.
Our named three did not settle, and on
appeal the issue was their individual
right-of-publicity and Lanham Act claims for use of their
NFL won summary judgment in the district
court on the right-of-publicity claim. The
Copyright Act preempted the claim because
NFL had a copyright in the film. The court also
held the film to be expressive, non-commercial
speech protected by the 1st Amendment. Plus,
under the state laws, the films were newsworthy
and protected by the public interest.
NFL won summary judgment on the
Lanham Act claim as it applies only to commercial
speech. There was no possibility of confusion
To determine Copyright Law
preemption, the court asks (1) is the work subject
to copyright, and (2) is the state law created
right-to-publicity equivalent to any of the
exclusive rights under Copyright. Nat’l Car
Rental Sys., Inc. v. Comput. Assocs. Int’l, Inc.,
991 F.2d 426, 428 (8th Cir. 1993).
Somewhat fatuously, players tried to argue
the issue (1) saying a film was not an “original
work of authorship fixed in any tangible
medium …” 17 U.S.C. § 102(a).
Against the Grain / June 2016
True, the initial game is an “athletic event”
outside copyright subject matter. Nat’l
Basketball ass’n v. Motorola, Inc., 105 F.3d 841, 846
(2d Cir. 1997). But a recording of the game
is squarely within the Act. Indeed the 1976
amendment was made specifically to insure
recorded transmissions of games would meet
the fixed in tangible medium requirement. Id.
I didn’t know that.
As to (2), the purpose of Copyright is to
“supply the economic incentive to create and
disseminate ideas.” Harper & Row
Publishers, Inc. v. Nation Enters, 471 U.S. 539, 558
(1985). The right-of-publicity rationale is
“the desire to provide incentives to encourage
a person’s productive activities and to protect
consumers from misleading advertising.”
C.B.C. Distribution & Mktg., Inc. v. Major
League Baseball Advanced Media, L.P., 505
F.3d 818, 824 (8th Cir. 2008).
You have to read those several times.
Players are seeking to limit — through
their right-of-publicity — the use of material
in an expressive work. This puts the issue over
Players argued that the
films are advertisements for
“NFL-branded football,” a
product promoted for NFL’s
economic benefit. Three
factors determine whether speech
is commercial rather than
expressive: “(i) whether the
communication is an
advertisement, (ii) whether it refers to a
specific product or service, and
(iii) whether the speaker has an
economic motivation for the
The films fail to propose a commercial
transaction and thus are not advertisements.
Nowhere do they encourage consumers to buy
a product or service. They tell the history of
past contests. Consumer demand for the films
proves they exist as “products” in their own
right. People consume the films by buying
them or subscribing to ESPN.
The economic motivation (iii) of the NFL
does not convert the other two elements into
commercial speech. Cf. Joseph Burstyn, Inc.
v. Wilson, 343 U.S. 495, 501 (1952).
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.” Am. Ass’n
of Orthodontists v. Yellow Book USA, Inc.,
434 F.3d 1100, 1103 (8th Cir. 2006).
Players claimed there was an issue of
material fact as to the films falsely representing
that they endorsed or currently associated
themselves with the NFL. And yet they had
nary an example of the
films saying that.
The films show them
playing. The NFL is
shown in a positive
light, but nothing shows
Indeed they were
interviewed in the films and
asked to express their
opinions. They agreed
to the interviews.