Eighth Circuit Tosses NFL Players’ Lawsuit

By Jennifer E. Rothman
February 26, 2016

Today, the United States Court of Appeals for the Eighth Circuit affirmed a district court’s summary judgment against NFL players in Dryer v. NFL.  The underlying lawsuit involved objections by players to the use of their names and likenesses in NFL game footage and additional interviews in NFL-produced historical documentaries about “significant games, seasons, and players in NFL’s history.”  Initially the suit was filed as a class-action, but twenty of the players who sued settled with the NFL, while three plaintiffs, including John Frederick Dryer, continued on with the suit.  Their complaint alleged violations of both their rights of publicity and of the Lanham Act for false endorsement. 

The district court decided the case on a number of grounds, including that the right of publicity claims were preempted by federal copyright law.  The Eighth Circuit does not robustly analyze the preemption issues, but affirms the rejection of the right of publicity claims on this basis.

The court relies on Section 301 of the Copyright Act to hold the right of publicity claims preempted by copyright law. The court asks the traditional, if problematic, questions for copyright preemption.  Specifically, (1) whether the work at issue is within the subject matter of copyright; and (2) whether the state law creates a right equivalent to an exclusive right provided under copyright law. 

With regard to the first question, the court concludes that the works at issue are within the scope of copyright law. Instead of asking, as some courts have, whether the identities of the players are independently copyrightable, the court considers whether the underlying works that were used and re-edited to produce the new films are copyrightable subject matter.  It rightly concludes that they are.  

Although athletic events are not copyrightable in and of themselves, the court correctly notes that when sporting events are filmed and fixed the footage and the captured performances are within the subject matter of copyright.

The court notes that the players had agreed to the filming of their performances in the games.  Whether consent is relevant to copyright preemption is uncertain.  When identity-holders have consented to uses they usually lose on preemption grounds; whereas, when there is a lack of consent, identity-holders often prevail.  However, the question of consent is more properly one for the prima facie case of a right of publicity violation. If there is consent, there cannot be a successful right of publicity claim.  These issues of consent often arise when the underlying use was consensual, but subsequent uses were not. 

Copyright preemption should be appropriate when the subsequent use is one that is lawfully permitted under copyright law unless a contract otherwise limits the scope of these rights.  Unfortunately, the Eighth Circuit did not take the opportunity to so conclude.

The Eighth Circuit does nothing to address the morass of Section 301 preemption, and instead seems to add a confusing suggestion that the right of publicity is preempted whenever it is asserted outside the context of commercial speech. When considering the second question for preemption and whether the right of publicity here gave rights equivalent to those under copyright law, the court went on a problematic tangent.  The court suggests that the right of publicity when applied to expressive works would be preempted, but in the context of commercial speech would not be.  Although the court does not expressly say so, it seems to be hanging its hat on the “extra element” approach which suggests that the right of publicity should not be preempted if some additional piece beyond mere exercise of a copyright is required for the violation.  Here the court suggests that uses in commercial advertising provide such an extra element. 

It is not clear how far the court would take this.  Does this mean that advertisements for NFL films cannot use footage of the players?  Or would the court protect these advertisements as related to expressive works?  What about t-shirts or posters that promote specific players using captured stills from the underlying copyrighted works? These are not commercial speech, but are made for commercial advantage, much like the NFL films at issue in the case.  The Eighth Circuit opens this Pandora’s Box, a box that the litigants in Maloney v. T3 Media should be very interested in and one that is likely to cause more problems down the road. 

This commercial speech analysis seems better suited to consideration of a First Amendment defense, than to copyright preemption. The commercial speech issue arose during oral arguments in this context, rather than the copyright preemption one.

The real crux of the preemption question is that the NFL had the copyright to the underlying game footage that was used, the plaintiffs had agreed to appear in that footage, and the NFL was simply repackaging that material into a new format. Whether the derivative works appear in advertising for the NFL or in an actual documentary film seems to have little to do with whether the use should be preempted. 

Because of its holding on copyright preemption, the Eighth Circuit avoids wading into First Amendment territory and the question of whether there is a free speech right to use the players’ identities in expressive works that realistically depict historical games and teams. The Third and Ninth Circuit decisions in Hart .v Electronic Arts, Keller v. Electronic Arts, and Davis v. Electronic Arts, suggest that such uses are not protected by the First Amendment, at least in the context of video games.  Copyright preemption was not an available defense in those cases, and the Eighth Circuit, which previously held the use of athletes’ names and statistics protected by the First Amendment, in C.B.C. Distrib. & Mktg. , Inc. v. MLB Advanced Media, L.P. , 505 F.3d 818 (8th Cir. 2007), was no doubt grateful to avoid having to decide that issue here.

The Eighth Circuit also affirmed the district court’s holding that there was no evidence of likely confusion as to the specific endorsement by the players of the films at issue.  

Dryer v. NFL Films, No. 14-3428 (Feb. 26, 2016)

For a more in-depth perspective on why the current text and interpretation of Section 301 is untenable, see Jennifer E. Rothman, Copyright Preemption and the Right of Publicity.