Athletes' right of publicity in game performances and sports broadcasting.
Osborne, Barbara
At the intersection of personal branding and capitalism is the legal concept of a right of publicity. Since the Supreme Court first recognized this right in Zacchini v. Scripps-Howard Broadcasting Company in 1977, it is commonly assumed that individuals have a legal interest in protecting their name, image, and likeness from unauthorized commercial use. However, it is important to note there is no common law or statutory right of publicity on the federal level--this is a matter determined by state law. The common law right of publicity (based on decisions of the various state courts) is rooted in both tort and property law; statutory protection also varies tremendously across states. The legal theory underlying the right of publicity is to "provide incentives to encourage a person's productive activities and to protect consumers from misleading advertising" (C.B.C. Distribution & Marketing, Inc. v. Major League Baseball Advanced Media, L.P., 2007, p. 824).
A recently decided case, Dryer v. National Football League (2016), addresses right of publicity claims of former professional football players in archival television footage of live game performances. Television and media rights are one of the largest sources of revenue in the sport industry. The Dryer case is important as it provides clarity and instruction for media and sport marketing professionals (as well as athletes) relative to the right of publicity for sports broadcasts and explains the federal laws that preempt those claimed rights.
Background and District Court Decision
John "Fred" Dryer, Elvin Bethea, and Edward "Ed" White were former National Football League players from the 1960s, 1970, and 1980s who filed a class action lawsuit in 2009 against the NFL claiming use of their names, images, and likenesses in products produced by NFL Films violated their right of publicity under various state laws (Dryer v. NFL Complaint, 2009). NFL Films produces documentaries commemorating significant players, coaches, games, and seasons in NFL history. The plaintiffs were all former players whose athletic performances were recorded while the original game was broadcast; those recorded performances were archived and later used in NFL Films documentaries. Although the plaintiffs also appeared in cameo interviews within the documentaries, only the use of their likenesses in the vintage game footage was contested (Dryer v. NFL, 2016). Twenty of those players settled their claims with the NFL, which created a fund to benefit former players and a licensing agency to assist former players in monetizing their name, image, and likeness (Dryer v. NFL, 2016). Dryer, Bethea, and White opted out of the settlement to pursue their individual right of publicity claims.
The task of the U.S. District Court in Minnesota was to balance the players' rights to profit from the use of their images against the NFL's right to produce expressive speech (documentary films) and/or utilize their copyrights in the original game broadcasts. The NFL first argued its use of past game footage in their films was protected by the First Amendment as expressive speech. While the district court acknowledged there was no established formula for resolving this type of complaint, the First Amendment defense hinged on whether the NFL's use of game footage was commercial or non-commercial speech. Applying the threepart test established in the Porous Media Corporation v. Pall Corporation (1999) case, the district court analyzed whether the use of game footage was an advertisement, whether it referred to a specific product, and the NFL's economic motivation. While acknowledging the plaintiffs' argument that consumers watching the documentaries may be more motivated to watch NFL games, the district court concluded the films are historical documentaries, not advertisements nor messages to promote specific products or services. The films themselves were determined to be a product, and while they were produced for profit, the district court emphasized capitalism does not prevent this form of creative expression from protection by the First Amendment (Dryer v. NFL, 2014).
The district court ruled in favor of the NFL, deciding the films were protected by the First Amendment because they are expressive, non-commercial speech. It also held the Copyright Act of 1976 (hereinafter "Copyright Act") preempted the players' state law right of publicity claims. The players (plaintiffs) appealed and the Court of Appeals for the Eighth Circuit affirmed the decision of the district court relative to the Copyright Act (Dryer v. NFL, 2016). The next section addresses the Court of Appeals' decision and the application and analysis of the Copyright Act.
Court of Appeals Decision
The Eighth Circuit analysis on appeal focused specifically on preemption of the players' right of publicity claims by the Copyright Act. The Copyright Act defines the subject matter of copyright as "original works of authorship fixed in any tangible medium of expression ... from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device" (17 U.S.C. [section] 102[a], 1976). Original works of authorship include literature, music, dramatic and choreographic works, pictures, sculptures, graphics, architecture, and sound and audiovisual recordings (Copyright Act, 17 U.S.C. [section]102[a], 1976).
Dryer, Bethea, and White argued their athletic performances in football games are their identities subject to protection under the right of publicity. The Eighth Circuit acknowledged live athletic events by their very nature are not copyrightable. This win for the players was short-lived, as the court noted the Copyright Act was amended in 1976 to specifically include recorded transmissions of live events, including sporting events. Furthermore, the Copyright Act preempts any state right of publicity claim if it is "equivalent to the exclusive rights within the general scope of copyright" (Copyright Act, [section]301[a], 1976).
The Eighth Circuit next examined whether the players' state law right of publicity claims were in fact equivalent to any of the exclusive rights protected by the Copyright Act. The court found that both the NFL Films' documentaries and the previously fixed recordings of live athletics events used in the documentaries are protected under the Copyright Act. Furthermore, because the NFL holds the exclusive rights to both the documentaries (through NFL Films) and the vintage game footage, the players' claims that they have the right to control the use of their likenesses from the game footage is the equivalent of the exclusive rights of the copyright holder. Therefore, the Eighth Circuit held the Copyright Act preempts any state right of publicity claim (Dryer v. NFL, 2016).
The Eighth Circuit was then required to examine a specific exception within preemption doctrine: a right of publicity claim could possibly be valid if a copyrighted work is used as commercial speech. Utilizing the same three-part Porous Media Corporation v. Pall Corporation (1999) test, the Eighth Circuit confirmed the analysis of the district court. Finding the films were expressive speech of "independent value and public interest" and not advertisements for a specific product, the NFL's profit motivation to produce the films was not enough to classify them as commercial speech (Dryer v. NFL, 2016, p. 944). Because the NFL's copyrights preempted the players' right of publicity claims, the Eighth Circuit did not find it necessary to explore any of the alternative rationales provided by the district court.
Dryer's Influence on Pending Cases
In hindsight, Dryer, Bethea, and White would have been better off participating in the class action settlement, but the Dryer decision is instructive regarding the limits of right of publicity relative to the use of name, image, and likeness in sporting event broadcasts and the reuse of those game clips in other creative works. Athletes have made similar claims in other lawsuits, and the Dryer case has already been influential in those decisions.
In the In re NCAA Student-Athlete Name & Likeness Licensing Litigation (2014), the plaintiffs asserted NCAA rules prohibiting student-athletes from profiting from the use of their name, image, and likeness in football and basketball game broadcasts violated the Sherman Act. California federal district court Judge Wilken relied on a Minnesota district court motion for judgment on the pleadings decision from the Dryer (2010) case to determine that student-athletes may have a right of publicity relative to live game broadcasts. It must be noted this was an antitrust case, and the dicta in Judge Wilken's decision acknowledges the court did not analyze the viability of the plaintiff's right of publicity claims, merely whether those rights "could give rise to a market for group licensing" (In re NCAA Student-Athlete Name and Likeness Litigation, 2014, p. 1140, n.6). Unfortunately, reliance on a district court opinion on a pre-trial motion was ill-fated, as the Dryer case ultimately concluded that any right of publicity claim is preempted by the Copyright Act (Dryer v. NFL, 2016) and the Ninth Circuit Court of Appeals overturned the broadcast rights part of the decision (O'Bannon v. National Collegiate Athletic Association, 2015).
Marshall v. ESPN, Inc. (2015) also cited the Dryer decision. Javon Marshall filed a class action lawsuit against ESPN, various other broadcasting companies and networks, several NCAA Division I athletics conferences, and the conferences' media rights holders claiming the defendants unfairly profited from the use of student-athletes' names, images, and likenesses in football and basketball game broadcasts. The state of Tennessee recognizes both a common law and a statutory right of publicity (Marshall v. ESPN Inc., 2015). Finding no right of publicity for participants in sporting events under the common law, the district court was consistent with "virtually all courts in jurisdictions that have decided the matter" including Dryer (Marshall v. ESPN Inc., 2015, p.7). The statutory right of publicity claims also failed, as Tennessee law is limited to unauthorized use of name, image, or likeness in advertising, and expressly exempts use of "name, photograph, or likeness" in a sports broadcast (Marshall v. ESPN Inc., 2015, p. 25).
Implications for Sport Marketers
Although judicial interpretations of the right of publicity vary tremendously because of dependence on state common and/or statutory law, the Dryer case provides guidance relative to the use of athletes' names, images, and likenesses in commercial broadcasts and reuse of those broadcasts. It is now likely any right of publicity interests players might have in their athletic performances will be preempted by the rights of the copyright holder for the recorded transmission under the Copyright Act. Broadcast and media rights holders are not only allowed, but encouraged, to creatively utilize those rights in producing new products, which further achieves the goals of the Copyright Act. Creating brand awareness or enhancing brand image through new creative works is also likely allowed, but copyright holders should be cautioned that use of those same recordings in advertisements, infomercials, or other commercial speech is not protected. Sport marketers seeking to use recorded game footage in advertisements or promotions must always seek permission of the copyright holder, but may also need to seek permission from those athletes whose images are featured and potentially compensate them for use of their right of publicity in commercial speech. Finally, athletes seeking compensation for use of their name, image, and likeness while playing may be better served negotiating contractual rights prior to performance, as professional athletes do, than spending time and money litigating these claims.
References
C.B.C. Distribution & Marketing, Inc. v. Major League Baseball Advanced Media, L.P., 505 F.3d 818 (8th Cir. 2007).
Copyright Act of 1976, 17 U.S.C.S. [section] 102(a); [section] 301(a) (1976).
Dryer v. NFL Complaint, Case 0:09-cv-02182-PAM-AJB, filed Aug. 20, 2009.
Dryer v. NFL, Civil No. 09-2182 (PAM/FLN), Memorandum and Order filed Oct. 10, 2014.
Dryer v. NFL, 814 F.3d 938 (8th Cir. 2016).
In re NCAA Student-Athlete Name & Likeness Licensing Litigation, 37 F. Supp. 3d 1126 (D. Cal., 2014).
Joseph Burstyn, Inc. v. Wilson, 343 U.S. 495, 501 (1952). National Basketball Association v. Motorola, Inc., 105 F.3d 841, 846 (2d Cir. 1997).
O'Bannon v. National Collegiate Athletic Association, 802 F.3d 1049 (9th Cir. 2015).
Porous Media Corp. v. Pall Corp., 173 F.3d 1109 (8th Cir. 1999).
Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562 (1977).
DISCLAIMER: Inquiries regarding this column may be directed to column co-editors John Grady at jgrady@mailbox.sc.edu or Anita Moorman at amm@louisville.edu
The materials in this column have been prepared for informational and educational purposes only, and should in no way be considered legal advice. Readers should not act or reply upon these materials without first consulting an attorney. By providing these materials it is not the intent of the author or editor to enter into an attorney-client relationship with the reader. This is not a solicitation for business. If you choose to contact the author or editor through email, please do not provide any confidential information.
Barbara Osborne, JD, is a licensed attorney and associate professor in the Department of Exercise and Sport Science, with a joint appointment in the School of Law, at the University of North Carolina at Chapel Hill.
