NFL Films and the Estate of John Facenda recently settled a lawsuit involving NFL Films’ use of Mr. Facenda’s voice in a short film to promote a video game. The settlement came after the US Court of Appeals for the Third Circuit affirmed that certain state right of publicity laws may not be preempted by the Copyright Act and that an individual’s voice may not be divorced from his or her persona.

John Facenda garnered much national attention and was known to many football fans as the “Voice of God” for lending his distinctive voice to movies and videos produced by NFL Films. Prior to his death in 1984, Mr. Facenda signed a standard release that allowed NFL Films to continue to use his voice in perpetuity and in whatever manner NFL Films saw fit so long as such use did not constitute an endorsement of any good or service. In 2005, NFL Films produced a 22-minute short film titled “The Making of Madden NFL ‘06” about the soon to be released annual update of the video game. NFL Films incorporated recordings of Mr. Facenda’s voice into this film for a total of 13 seconds. Mr. Facenda’s estate subsequently filed suit in the US District Court for the Eastern District of Pennsylvania alleging that such use constituted false endorsement under the federal Lanham Act and a violation of the Pennsylvania right of publicity statute (42 PA. Cons. Stat. Ann. § 8316).

The district court ruled that the film was an advertisement and, as such, the use of Mr. Facenda’s voice, however briefly, constituted false endorsement under the Lanham Act and a violation of his right of publicity under Pennsylvania law. On appeal, the Court of Appeals vacated the grant of summary judgment as to the Lanham Act claim, but affirmed the lower court ruling as to the right of publicity claim holding that federal copyright laws did not preempt the Pennsylvania state right of publicity statute and that a voice cannot be separated from an individual’s persona. Thus, the court essentially found that John Facenda’s voice could be protected by publicity rights because even if a recording of someone’s voice is protected by copyright that would not necessarily expunge or eliminate the underlying publicity right contained in the voice.

When coming to this decision, the court first examined the Pennsylvania right of publicity statute. Under this statute, an individual is granted an exclusive right to his or her name and likeness and the courts have held that this right includes the individual’s voice. This right is enjoyed post-mortem in Pennsylvania for a period of 30 years after the death of the individual. The statute also affords an individual or his or her estate the right to sue for injunction and damages if the name or likeness is used for any commercial or advertising purposes.

In its appeal, NFL Films relied heavily on claims based on copyright law. Specifically, NFL Films argued that it owned the copyright in the voice recording, had the right to exploit and make derivative works of the voice recording, and that the federal copyright laws preempted the state right of publicity claim. In its ruling, the Third Circuit stated that while the Copyright Act has a preemption provision such provision is not meant to limit any rights under state law that are outside the subject matter of copyright law. The court explained that for the preemption provision to apply there must be a showing of an exclusive right in the work and that the work is within the subject matter of copyright. In this case, the Third Circuit held that the Copyright Act did not preempt the Estate’s claim since the claim, as a publicity claim, relied on an element not equivalent to any exclusive rights granted to federal copyright holders. Further, the appellate court ruled that Mr. Facenda’s voice was not subject to copyright protection because it is impossible to divorce the voice from the persona and that a persona is not protectable under copyright law because it is not a writing of an author with the meaning of copyright laws.

The Third Circuit warned, however, that state laws must not be used to upset the delicate balance that exists between copyrights and right of publicity by courts construing state laws too broadly. Here, the Pennsylvania right of publicity statute is specifically focused on the commercial-advertising context and is not targeted towards the entire palate of creative works. This ruling indicates that an individual’s voice may be protected by publicity rights in some instances. This should come as good news for musicians, voice artists, and their estates. Nevertheless, it is always best to ensure contractual protections are in place.

For more information on this case, or any other case involving the right of publicity, please contact Anthony V. Lupo or Sarah L. Bruno.