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
`
`
`
`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
`
`
`
`(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
`
`2
`
`
`
`
`
`OPINION OF THE COURT
`
`
`Table of Contents
`
`.
`.
`.
`.
`.
`
`.
`.
`.
`.
`.
`
`.
`.
`.
`.
`.
`
`.
`
`.
`
`.
`.
`.
`.
`.
`.
`.
`.
`.
`.
`.
`.
`.
`.
`.
`.
`.
`.
`.
`.
`Facts .
`.
`.
`.
`.
`.
`.
`.
`.
`.
`.
`.
`.
`.
`Procedural History.
`.
`.
`.
`.
`.
`.
`.
`.
`.
`.
`.
`.
`.
`Jurisdiction . .
`.
`.
`.
`.
`.
`.
`.
`.
`.
`.
`.
`.
`.
`.
`.
`Standard of Review. .
`False Endorsement Under the Lanham Act. .
`A.
`The Legal Standard for Likelihood of
`Confusion in False Endorsement Claim
`Brought Under § 43(a) of the Lanham Act.
`1.
`First Amendment Limits on the
`.
`.
`.
`Lanham Act.
`.
`.
`.
`.
`.
`.
`.
`.
`.
`Tailoring the Lapp Factors to False
`Endorsement Claims. .
`.
`.
`.
`.
`.
`.
`.
`Distinguishing Between Subsections
`of Section 43(a)(1). .
`.
`.
`.
`.
`.
`.
`.
`.
`Application to the Estate’s Claim. .
`.
`.
`.
`.
`1.
`The Standard Release Contract..
`.
`.
`2.
`Genuine Issues of Material
`.
`.
`.
`Fact Remain.
`.
`.
`.
`.
`.
`.
`.
`Unauthorized Use of Name or Likeness Under
`.
`.
`Pennsylvania Law. .
`.
`.
`.
`.
`.
`.
`.
`.
`.
`.
`.
`.
`.
`.
`A.
`The NFL’s Copyright in the Sound Clips. .
`B.
`Express Preemption. .
`.
`.
`.
`.
`.
`.
`.
`.
`.
`.
`.
`1.
`Equivalent to an Exclusive Right?. .
`2.
`Copyrightable Subject Matter?..
`.
`.
`
`I.
`II.
`III.
`VI.
`V.
`
`VI.
`
`2.
`
`3.
`
`B.
`
`3
`
`. 5
`.
`. 8
`.
`. 8
`.
`. 9
`.
`. 11
`
`. 13
`
`. 14
`
`. 22
`
`. 28
`. 33
`. 34
`
`. 35
`
`. 40
`. 42
`. 43
`. 44
`. 46
`
`
`
`Conflict Preemption. .
`C.
`VII. Conclusion.
`.
`.
`.
`.
`.
`.
`.
`.
`.
`
`.
`.
`
`.
`.
`
`.
`.
`
`.
`.
`
`.
`.
`
`.
`.
`
`.
`.
`
`.
`.
`
`.
`.
`
`.
`.
`
`.
`.
`
`. 47
`. 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 cable-
`television 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
`
`4
`
`
`
`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
`
`5
`
`
`
`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).
`
` 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
`
`
`
`The program used sound recordings, taken from earlier
`NFL Films’ productions, of three sentences read 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.
`
`7
`
`
`
`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 false-
`endorsement 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
`
` 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
`
`
`
`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
`
`9
`
`
`
` Sandoz Pharms. Corp. v.
`injunction.
`preliminary
`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.
`
`10
`
`
`
`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 o n ,
`c o n n e c t i o n , o r
`association of such
`person with another
`
`11
`
`
`
`person, or as to the
`origin, sponsorship,
`or approval of his or
`her goods, services,
`o r
`c o m m 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
`
` 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
`
`
`
`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. Frito-
`Lay, 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-
`
`13
`
`
`
`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
`
`its production constitutes
`that
`The NFL argues
`informational expression, artistic expression, or both, and is thus
`protected by the First Amendment. It asks our Court to adopt
`
` 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
`
`
`
`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
`
`15
`
`
`
`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
`
` 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
`
`
`
`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
`
`17
`
`
`
`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
`
`18
`
`
`
`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-hour-
`long “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
`
` 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
`
`
`
`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
`
`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
`
`
`
`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,
`
`21
`
`
`
`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).
`
`false
`just
`than
`Section 43(a)(1)(A) covers more
`endorsement claims. In fact, false endorsement claims are rare
`enough that our Court has not previously announced the legal
`
`22
`
`
`
`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 ten-
`factor 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 non-
`competing 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;
`
`23
`
`
`
`(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
`
`24
`
`
`
`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 false-
`endorsement 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
`
`25
`
`
`
`defendant’s product is int
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
