“Voice of God” Sacks NFL – Play Under Review by Third Circuit

By: Daniel S. Strick

    
     John Facenda, Sr. (deceased) was the narrator of NFL Films’ game footage and highlight reels.  Facenda’s voice is immediately recognizable by all football fans and sports fans.  His voice has been described as legendary and he has been referred to as the “voice of God”.  In 2005 NFL Films created a twenty-two (22) minute production called “The Making of Madden NFL 2006” (“video”) about the Electronic Arts video game Madden NFL 2006.  The video used thirteen (13) seconds of Facenda’s recorded voice.  The remaining portions of the video is comprised of endorsements of the game by NFL players and interviews with the game’s creators describing efforts to make the video game look real.

            As a result of the use of Facenda’s voice in the video, his estate filed suit in the United States District Court for the Eastern District of Pennsylvania against NFL Films, Inc., The National Football League and N.F.L. Properties, LLC (collectively “NFL”) for invasion of privacy,[1] unauthorized use of name or likeness under 42 Pa.C.S. §8316, and false endorsement under Section 43(a) of the Lanham Act, 15 U.S.C. §1125(a).  Facenda v. N.F.L. Films, Inc., 488 F.Supp.2d 491 (E.D.Pa. 2007).  

I.          Unauthorized Use of Name or Likeness

            Pursuant to 42 Pa.C.S. §8316(a), “Any natural person whose name or likeness has commercial value and is used for any commercial or advertising purpose without the written consent of such natural person or the written consent of any of the parties authorized (by the statute) may bring an action to enjoin such unauthorized use and to recover damages for any loss or injury sustained.”  The statute specifically includes “voice” in the definition of name or likeness.  In the one other published case interpreting this statute, the court denied recovery on the basis the commercial value in the plaintiff’s name was not supported by evidence. 

            Pursuant to a written agreement between Facenda and the NFL, the NFL could reuse recorded sequences of Facenda’s voice so long as it did not edit the sequences into something which made up, formed, or composed an act of endorsement of a product or service by Facenda.  In cross motions for summary judgment, the plaintiff argued the NFL used Facenda’s voice specifically because it had commercial value, was recognizable by the target audience as authoritative and the video was created solely to market the video game.  The NFL argued the video was a documentary and not a commercial or promotional product.  Despite the NFL denying during discovery the video was made to promote the sale of the video game, the court found the video was made to promote sale of the video game. 

            Evidence supporting the court’s finding was the fact evidence the NFL financially benefited from all sales of the video game, internal emails with the subject line reading “Facenda voice in Madden '06 promo”, and no one in the video had a negative thing to say about the game.

            Finding the video was not documentary or journalistic, the court held the video was commercial in nature.  It was undisputed Facenda’s voice was well known and had commercial value especially amongst the video’s target group.  Plaintiff’s expert testified at deposition viewers would probably believe there was an affiliation between Facenda and the video game.  The court concluded Facenda’s appearance, albeit brief, in the video added commercial value to the video.

            Accordingly, the court found Facenda established all of the elements of a claim under the Pennsylvania statute.  Specifically, (a) a natural person whose name or likeness has commercial value; (b) the use of the name or likeness for a commercial purpose; and (c) the absence of written consent by the natural person or his estate.

II.        Lanham Act

            The relevant portion of the Lanham Act states:

Any person who, on or in connection with any goods or services, or any container of goods, uses in commerce any work, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, which–

(A)       is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial 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)(A).  In order to prevail, Facenda had to prove a likelihood of confusion, mistake or deception as to his affiliation with the Madden '06 video game.  In the Third Circuit, the likelihood of confusion is analyzed through a multiple factor analysis first established in Interpace Cor. v. Lapp, Inc., 721 F.2d 460 (3d Cir. 1983).  In a subsequent case, the Third Circuit identified ten (10) different factors, none of which are outcome determinative, to be weighed and balanced against one another depending on the facts of the given case.  Kos Pharmaceuticals, Inc. v. Andrex Corp., 369 F.3d 700, 709 (3d Cir. 2004).  The court found based on the plain language of the statute, evidence of actual confusion is not essential for a claim under this section of the Lanham Act. 

            In applying the multifactor test, the District Court found several factors favoring Facenda.  Specifically, the court found Facenda has a high level of recognition amongst the segment of society to whom the video game was marketed; there was a clear link between Facenda and the video game; the similarity between Facenda’s voice and the voice used; NFL’s intent in selecting Facenda’s voice for the video; and NFL’s agreement with the video game maker to receive a portion of the profits from the game’s sales.  The only factor favoring the NFL was the lack of evidence of actual confusion.  In finding for Facenda, the District Court found direct evidence of consumer confusion is difficult to find because many instances are unreported.  Accordingly the trial court granted Facenda’s motion for summary judgment finding entitlement to recovery under the Lanham Act. 

III.       Pending Appeal

            NFL’s motion for certification for interlocutory appeal was granted.  NFL is raising two (2) issues on appeal: (1) whether the Lanham Act requires actual evidence of consumer confusion and (2) whether the video had a commercial purpose.

            Argument for the NFL’s appeal was held on June 6, 2008.  Based on questions posed to the lawyers at oral argument, it appears the Third Circuit may reverse the summary judgment ruling in Facenda’s favor.  The panel intimated questions of material fact existed as to whether the video was an advertisement and whether Facenda endorsed the product.  The panel suggested these were close questions which should be resolved by a jury and not by a motion for summary judgment. 

            On September 9, 2008 the Third Circuit issued a 60 page opinion finding the NFL violated Pennsylvania’s right of publicity statute.  The Third Circuit also found the trial judge erred when finding the NFL violated the Lanham Act.  A fully discussion of the Third Circuit’s ruling will be discussed in our next issue.

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