Thursday, October 16, 2014

likely confusion is irreparable after eBay

CFE Racing Products, Inc. v. BMF Wheels, Inc., 2 F. Supp. 3d 1029 (E.D. Mich. 2014)

The jury found trademark infringement but no damages and no intentional infringement.  What should happen with requested injunctive relief?  Here, the court finds irreparable harm due to likely confusion, while citing eBay.  OK, then.

BMF used BMF Wheels as its mark for aluminum wheels for trucks and SUVs, and registered BMF Wheels as a word mark for same.  CFE has a senior registered word mark for BMF on auto cylinder heads and clothing, and senior rights in an unregistered logo for black block letters that are slanted to the right, outlined in white and red on a black field. 


BMF learned of CFE’s BMF brand in 2008, when business associates told him that another company was “ripping off” his logo.  CFE’s president learned of BMF Wheels in 2011 when a friend saw a truck with BMF wheels at a race in California; the truck’s owner spoke to a racer CFE sponsored and told him, upon noticing the “BMF” logo on Panela’s car, that he had wheels made by the same company.  (The chance of this coincidence is probably reduced by the colloquial meaning of “BMF,” the utility of the red-white-black color scheme in macho automotive endeavors, and the common use of tilting letters to convey an impression of speed.  The result, however unintentional, was great similarity.)  No vendor features both parties’ products, but BMF Wheels are sometimes sold or advertised in the same places as cylinder heads by other makers.  

After eBay, what constitutes irreparable harm when a jury has found no damages?  The court acknowledged that the jury found that the likely confusion didn’t lead to monetary loss, and thus CFE didn’t suffer “a loss of goodwill or injury to its general business reputation, or need to spend money on the cost of future corrective advertising.” But that didn’t mean there was no injury.  “The plaintiff produced evidence that the confusion deprived it of the right to control its own business reputation. The value of a company’s reputation cannot be measured in damages; only an order to cease the infringing conduct can remedy that harm. The plaintiff has shown both irreparable harm and an inadequate remedy at law.”

RT: Of course, this reasoning functions identically to supposedly discarded presumptions of irreparable harm and of inadequate remedy at law.  It is not “evidence”; it is syllogism.  One could investigate the idea of “reputation” more closely.  Are there kinds of likely confusion that don’t deprive the trademark owner of control over its reputation, even assuming that's always irreparable harm?  Yes: exactly the kinds of “confusion” trademark scholars have been decrying for years—initial interest confusion, permission/authorization confusion, a lot of association confusion: Irrelevant confusion.  There are other things to be said about control over reputation (like: nobody wholly controls their own reputation; truthful comparative advertising can change a product’s reputation, suggesting that reputation in itself isn’t what we’re protecting, etc.) but even casual examination should show that this rationale can’t justify finding irreparable harm in every case that the doctrine allows a finding of likely confusion.

The court then dealt with the scope of the resulting injunction.  Since the infringement wasn’t willful and didn’t result in financial harm, and the parties weren’t direct competitors, the court entered a limited  injunction.  Among other things, it barred BMF from using confusing logos; from using “BMF” except in the phrase “BMF Wheels” and then accompanied by a disclaimer of affiliation with BMF cylinder heads, CFE Racing, or any of CFE’s product lines; barred BMF from using the letters “BMF” on any product except wheels and rims; and barred BMF from using any websites, domain names, or social media that contain the letters “BMF” within the domain name or website address unless the letters were included in the phrase “BMF Wheels” and accompanied by the disclaimer. 

The court declined to cancel BMF’s registration for BMF Wheels.  Though the court said the registration had to be “limited,” its order appeared rather to limit BMF’s use of its registered mark to avoid the style, font and colors used by CFE, and to prevent its use except in connection with car wheels and rims, accompanied by a disclaimer.

Without intentional infringement, there was no basis for an attorney’s fee award under the Lanham Act, and the relevant state law required a plaintiff to “suffer[] loss” in order to get fees; the jury’s damages finding prevented that too.

Wednesday, October 15, 2014

The highs are too high: overdraft claims against HSBC continue in part

In re HSBC Bank, USA, N.A., Debit Card Overdraft Fee Litig., 1 F.Supp.3d 34 (E.D.N.Y. 2014)

This case involves more of the charming practice of low-to-high charge posting, causing consumers to rack up numerous $35 overdraft charges in a single day for using their debit cards, often to make small purchases.  Plaintiffs alleged that HSBC failed to clearly disclose posting order and then aggregated several days’ worth of charges at once, didn’t advise consumers that they could opt out or alert them that a charge would result in an overdraft, and failed to post deposits in a timely manner, resulting in additional overdraft fees.  Multiple cases were centralized as multidistrict litigation, resulting in a consolidated class action complaint.

HSBC argued preemption by federal banking law and regulations and the court rejected its claim.  The feds allow high-to-low posting, but that doesn’t mean that misleading conduct in relation to such ordering is exempt from state regulation, as the relevant federal agency has specifically stated with respect to California’s UCL.  However, “inasmuch as the Plaintiffs seek to impose liability on HSBC for the bank’s failure to sufficiently disclose its posting method, that argument is preempted.”

The court then found that the plaintiffs could only allege claims under a state’s consumer protection law if a named plaintiff had a sufficient connection to that state.  That left only the laws of California and New York. The court commented that adding new named plaintiffs from different states to this case would be difficult in light of the discrepancies between the states’ laws.

While the breach of contract claims failed for want of a specific breached term and conversion claims failed because the money at issue was the bank’s once deposited, the claims for breach of the covenant of good faith and fair dealing survived.  New York §349 deceptive business practices claims were dismissed because plaintiffs didn’t identify overdraft fees charged within the three-year limitations period.

Rule 9(b) applied to the California statutory claims that depended on fraudulent conduct.  The CLRA claims went because money isn’t a “good” or “service” under the CLRA, as required.  However, plaintiffs stated a claim under the FAL by alleging that consumers wouldn’t understand HSBC’s statements about choosing the order in which to post transactions to mean that HSBC would hold transactions made over several days and then post them from high-to-low. Instead, “a reasonable consumer would expect to be able to accurately track his or her own expenditures to avoid overdraft charges. The Plaintiffs adequately allege that this is nearly impossible given HSBC’s overdraft and posting policies.”  Likewise with the “fraudulent” prong of the UCL.

There’s an open question about what a consumer, as opposed to a competitor, alleging “unfairness” under the UCL must show—that the harm to the victim outweighs the utility of the defendant’s conduct, or that there’s violation of public policy as declared by specific constitutional, statutory, or regulatory provisions. Either way, plaintiffs stated a claim.  Whether $35 was an insubstantial injury was a factual question; the court wouldn’t let a corporation escape liability just by spreading its unfairness out sufficiently over members of the public. And violation of the duty to act in good faith would violate public policy. Unlawfulness UCL claims therefore also survived.

Tuesday, October 14, 2014

Pleading standards for false advertising

Cocona, Inc. v. Singtex Industrial Co., 2014 WL 5072730, Civil Action 14-cv-01593 (D. Colo. Oct. 9, 2014)

Cocona created a process to use coconut particles in fabric, which is used for outdoor gear, to enhance odor control, moisture absorption, and UV protection. Singtex formerly made that fabric for Cocona, but then went into business selling a competing product made from coffee rather than coconut. Cocona sued for breach of contract, trade secret theft, unfair competition, and interference with contract.  I won’t discuss the contract/trade secret claims, which survive the motion to dismiss, or the interference with contract claim, which goes because Cocona doesn’t identify specific contracts lost.

Cocona alleged that Singtex misrepresented the traits of S.Café and misrepresentated comparisons to Cocona’s product, claiming that S.Café provided odor absorption, ultraviolet protection, and moisture control and that S.Café could perform in a manner comparable to Cocona’s products despite its knowledge that S.Café didn’t have the same qualities.

Singtex argued that these allegations had to satisfy Rule 9(b), and that the alleged claims were merely puffery. Courts are split on applying Rule 9(b) to Lanham Act false advertising claims; some say yes because of the similarity to common law fraud, while others say no because, unlike the common law, the Lanham Act requires no scienter.  But the leading Ninth Circuit case, Vess v. Ciba–Geigy Corp. USA, 317 F.3d 1097 (9th Cir. 2003), holds that Rule 9(b) can apply to either all of a claim or part of it, under three circumstances: (1) if fraud is an element of the claim; (2) if fraud isn’t an element, but the plaintiff nonetheless “allege[s] a unified course of fraudulent conduct and rel[ies] entirely on that course of conduct as the basis of a claim,” Rule 9(b) applies to “the pleading of that claim as a whole”;  (3) if the plaintiff alleges some fraudulent and some nonfraudulent conduct that isn’t a unified course of conduct, only the allegations of fraud are subject to Rule 9(b).  Thus, the court concluded, Rule 9(b) applies to Lanham Act false advertising claims only insofar as the factual averments allege intentional or knowing misrepresentations.

Thus, the court found, Rule 9(b) applied to one of Cocona’s theories, its false comparison claim, because Cocona alleged that Singtex knew that its products didn’t have performance equivalent to Cocona’s products when it claimed otherwise.  But Cocona’s second theory involved only misleading statements about Singtex’s own products, and it didn’t allege knowledge in the narrative portion of the complaint. The factual allegations underlying this theory of recovery didn’t sound in fraud, so Rule 9(b) didn’t apply (even though there were general allegations about willfulness at the end of the complaint going to Cocona’s claim for relief).  Comment: The Ninth Circuit approach has never struck me as sensible, since scienter is never a required element even if it’s alleged and so the plaintiff can win without proving anything about the defendant’s state of mind, but I’m not a civil procedure expert.

Cocona failed to plead the allegedly false comparisons with particularity.  While it alleged that “Singtex has expressly compared S.Café products to Cocona’s proprietary yarn fabrics” and that “[u]pon information and belief, Singtex informed Cocona’s customers that the S.Café products provide the same performance qualities as Cocona’s proprietary products,” sporadic conversations aren’t commercial advertising or promotion. Even if the conversations reached enough of the market to constitute advertising, Cocona didn’t allege the “who, what, when, where and how of the alleged” falsehoods.

Cocona’s claims based on Singtex’s allegedly misleading representations about its own products’ qualities did suffice under Rule 8(a). It identified specific statements on Singtex’s website, which was unquestionably advertising or promotion, and alleged that they were false or misleading.  It alleged lost sales, too.  That was enough for plausibility.

Singtex argued that the challenged claims were mere puffery.  But the challenged ads were statements of fact: according to the complaint, Singtex claimed that S.Café “utilizes coffee grounds’ natural ability to adsorb odors for a comfortable wearing experience. It also provides UV protection, and is very fast drying.” It allegedly relies on the spaces created within a green coffee bean as it expands during the roasting process for these “high performance” features. Likewise, the website claimed: “[w]ith our coffee ground permanently imbedded in the fiber, the particles work hard with controlling and absorbing odors. The trapped odors are then released with the [sic] your next wash-and-dry cycle of your S.Café clothing.”  And for UV protection, the website said, “[w]ith S.Café fabric coffee particles in the fabric, these particles actually refract and diffuse the sun’s rays. This provides for a natural UV protection throughout all the S.Café fabric collection.”

These were specific factual statements. Though they didn’t explicitly provide any frame of reference, Cocona alleged that the statements could be measured by comparing Singtex’s performance against “a traditional polyester fiber that has not been treated with chemicals.”  That sufficed to state a claim.

NFL Films protected by First Amendment against players' right of publicity claims

Dryer v. National Football League, No. 09-2182 (D. Minn. Oct. 10, 2014)

There are two alternatives when it comes to the right of publicity, it seems to me.  Either we will limp along with a special rule for video games despite the Supreme Court’s holding in Brown, or the Court will have to take a right of publicity case and explain what it meant in Zacchini.  Given the Court’s tendency to use the First Amendment like Lochner, I’m not confident I’d be happy with the outcome of the latter, but I still think a national rule would be a much better idea than what we have now.

The three plaintiffs are retired football players who opted out of the NFL’s global settlement of former players’ claims.  They alleged that the NFL’s use of video footage of them playing football violated their publicity rights, confused consumers about endorsement under the Lanham Act, and unjustly enriched the NFL. (The unjust unrichment claims fall with the rest and I won’t discuss them.)

Footage of games in which Dryer played for the Giants and the Rams appears in 47 different NFL Films productions. Thirty-two NFL Films productions include game footage in which plaintiff Bethea appears as a player for the Oilers, and 91 include footage from games in which plaintiff White played for the Vikings and the Chargers. Dryer and White lived in California at litigation time; Bethea lived in Texas.

“NFL Films productions are essentially compilations of clips of game footage into theme-based programs describing a football game or series of games and the players on the field.”  But they’re more than just highlight reels; they’re artistic.  They don’t use the TV broadcast cameras, but rather NFL Films-dedicated cameras whose operators choose how to best tell the story of the game.  Most of the films at issue described a single game or season in a 20- to 30-minute narrative including music, narration, and clips in real time and slow motion.  Some included interviews with players, including the three plaintiffs, who all participated in interviews after they retired.  Each knew that the interview would be incorporated into NFL Films productions, and at least sometimes they signed waivers.  Plaintiffs didn’t challenge the use of these interviews, but rather the use of the video footage of them playing football. 

Although plaintiffs challenged 155 separate films, the court focused on representative samples (though they weren’t representative in that they were the ones in which footage including each plaintiff made up the highest percentage of total run time).  For Dryer, a 24- minute production, “Game of the Week 1969 Week #1 Vikings vs. Giants” featured Dryer playing in 10% of its run time.  “Using game footage and dramatic narration and music, the production showcases pivotal plays in a game between the Minnesota Vikings, one of the NFL’s most powerful teams at that time, and the New York Giants, who were welcoming a new coach after a poor showing in the 1968 season.”  Dryer’s name wasn’t mentioned until more than 5 minutes in and was spoken only twice; you’d already have to know that he wore number 89 to identify him in the footage. “Most of his appearances in the production are fleeting, for mere seconds or fractions of seconds at a time, and are accompanied by narration discussing other players involved in the featured play. The production never focuses only on Dryer or his image; rather, he is always shown with his teammates in the context of a football play.” 

Bethea’s story was basically similar, though he was featured for about one minute, with the narrator summing up: “Without any doubt, he is the best.” Many of his teammates received a similar one-minute treatment of their individual performances.  For White, the clips with the highest percentage of footage featuring him were short (2 minutes or under).  Otherwise his story was similar, except that he also appeared in a 10-second interview clip filmed after the game, identified by name and position on screen.

Previously, the court found that plaintiffs stated a claim for violation of the right of publicity (etc.), but after discovery was over—and after the dismissal of the class claims—the court found that matters had changed.  Its job was to balance plaintiffs’ “rights to profit from their own likenesses” with the NFL’s free speech rights.  The court determined that the proper starting point was to determine whether the NFL films were commercial or noncommercial speech.  Plaintiffs didn’t dispute that, if the films were noncommercial, their claims failed (interesting, given Zacchini, and also not entirely how the analysis proceeds).

Whether speech is commercial is a question of law. There’s no bright line, but key considerations include (1) whether the speech is an advertisement, (2) whether it refers to a specific product, and (3) the speaker’s economic motivation for the speech.  None alone makes speech commercial, and not all three are necessary, but the combination is good evidence of commerciality. 

Advertising: Plaintiffs argued that NFL admitted that its films were advertising by equating them to a $350 million or larger ad budget in two Powerpoints.  “But the fact that NFL Films productions generate substantial goodwill for the NFL is not itself dispositive of the issue whether the productions themselves are advertising.” Still, speech need not explicitly propose a commercial transaction to be advertising.  These films didn’t offer to sell anything or encourage viewers to buy anything, but they still enhanced the NFL’s brand.  An ad can be commercial speech if it is just brand advertising.  See Jordan v. Jewel. 

But, while the brand-enhancement theory was attractive, it didn’t work in this context.  While brand enhancement can be an element of advertising, brand enhancement alone isn’t enough to render a film advertising.  This wasn’t like the ad in Jordan, which was an ad bought by the defendant appearing in a sports magazine and which was “easily distinguishable from the magazine’s editorial content.”  Here, by contrast, the films don’t appear in other media as paid spots—they are the content.  The NFL doesn’t pay TV networks to broadcast the films; the networks pay the NFL for the rights, and other advertisers pay to have their ads inserted. 

Nor did the films “exploit players’ images for the singular purpose of brand enhancement or other commercial gain.”  Instead, they tell a story about a game, a team, or even a player: they’re “a history lesson of NFL football.”  And the only way to tell such stories is by showing footage of the game—“the players, the coaches, the referees, and even the fans.”  The NFL was drawing benefit not from the likenesses of individual players but from “the drama of the game itself, something that the NFL is certainly entitled to do.”  There was no way to visually retell these stories without the use of footage of NFL players playing.  Thus, the use was not for commercial advantage, but “because the game cannot be described visually any other way.”

Despite brand enhancement, then, these films weren’t ads.  Comment: This has to be the case if the New York Times is not to be a commercial speaker when it publishes its most important stories: Publishing the Pentagon Papers and portions of the Wikileaks documents, or Judith Miller’s Iraq reporting, undoubtedly was extremely important to the NYT’s brand, for good or ill.  The NYT certainly takes into account the question of “what kind of stories do we publish as part of our mission to be the paper of record?” when it makes decisions at that level.  That’s branding, among other things.

Product reference: Plaintiffs argued that the productions referred to the NFL as a product, as in Facenda v. NFL Films, Inc., 542 F.3d 1007 (3d Cir. 2008).  But that involved a film the court determined to be an infomercial for a different creative work: it referenced an NFL videogame with a countdown clock until the game’s release, and it was broadcast only in the few days before the release, like a film trailer.  Here, the films didn’t promote a product separate from themselves.  And there was no other way to tell the story of NFL games and players without footage.

Economic motivation: Of course there was an economic motive, but that wasn’t dispositive in the absence of the other elements.  Publishing expressive works for profit doesn’t take them out of full First Amendment protection.  “This is not commercial speech; it is capitalism.”

Because the films were fully protected speech, plaintiffs’ claims failed.

The court proceeded, however, to do the more ad hoc balancing in other right of publicity cases, then an analysis of the relevant states’ rights of publicity, many of which incorporate at least some First Amendment-protective limits on their initial definitions.  For balancing, the court focused on previous athlete right of publicity cases not involving video games, for obvious reasons: C.B.C. Distrib. & Mktg., Inc. v. Major League Baseball Advanced Media, L.P., 505 F.3d 818 (8th Cir. 2007) (fantasy baseball); CBS Interactive Inc. v. Nat’l Football League Players Ass’n, Inc., 259 F.R.D. 398 (D. Minn. 2009) (fantasy football with images); and Gionfriddo v. Major League Baseball, 114 Cal. Rptr. 2d 307 (Cal. Ct. App. 2001) (video clips of former players playing). All three cases found that the free speech interests of the respective speakers outweighed the athletes’ publicity rights, with Gionfriddo holding that it was permissible to use images of players playing to advertise the game of baseball; the line would be drawn if MLB tried to use the players’ images to sell an unrelated product. 

The court previously denied a motion to dismiss based on these cases on the theory that the data and images in those cases were all in the “public domain,” unlike the NFL video footage, which the NFL protects vigorously.  But plaintiffs, having had a chance to develop the record, didn’t show that the uses of which they complained were truly different from the uses in those cases.  Specifically, plaintiffs didn’t explain how the NFL’s copyrights stripped protection from its films.  (Note: this distinction was always nonsense on the facts as well as the law.  CBS and Gionfriddo obviously involved footage/pictures still in copyright, even if those copyrights were not owned by the leagues at issue.  Separately, I can’t imagine the Supreme Court distinguishing between an authorized use of copyrighted works and a use of public domain works for purposes of First Amendment protection of the use.) 

Reviewing the films, it was clear that the challenged uses were akin to the use of footage in sports news broadcasts.  Thus, balancing the news-like uses against the players’ publicity rights, the players’ economic interests weren’t strong and were outweighed by the public interest inf ree dissemination of information about sports history.  After all, the right of publicity exists to provide incentives, and the players were already paid for their participation.

Anyway, even if the films were commercial speech, the plaintiffs failed on the merits of their claims.  The court initially declined to apply New Jersey law just because NFL Films was headquartered there.

California has expansive statutory and common-law rights of publicity; Texas has only the common law; Minnesota has a common-law right that doesn’t require a commercial purpose or a pecuniary benefit (and is therefore super duper unconstitutional, but no worries!); and New York has only the statutory right, which requires written permission for advertising uses.

The NFL argued that each state recognized an exception for newsworthiness. E.g., Texas actually defines the right to be for uses that aren’t newsworthy or incidental.  California excludes from its common-law protection the publication of matters in the public interest, and the statute exempts uses “in connection with any news, public affairs, or sports broadcast or account.”  Newsworthiness is often determined as a matter of law. 

California: it was clear that the films were “a means for obtaining information about real-world football games,” and are therefore “publishing or reporting factual data” within the meaning of the California newsworthiness defenses.  The use of music, narration, and camera angles might “dramatize” the games, but they still conveyed true information about real-world games. This was of public interest and related to news—factual reports about pro athletes’ performance are of great interest to the public.

Texas: Texas newsworthiness is likewise broad “and extends beyond subjects of political or public affairs to all matters of the kind customarily regarded as ‘news’ and all matters giving information to the public for purposes of education, amusement or enlightenment, where the public may reasonably be expected to have a legitimate interest in what is published.”  Plaintiffs argued that the defense was limited to uses that are “legitimately necessary,” but that didn’t matter, because using plaintiffs’ images was “the only way for the NFL to visually inform the public about historical football games. Thus, that use is ‘legitimately necessary’ to provide the public with a visual record of the NFL’s past.”

Minnesota: Plaintiffs argued that Minnesota didn’t recognize a newsworthiness defense, but the NFL argued that state courts applied a public-interest exception to similar privacy-related claims, and that the Minnesota Supreme Court’s reliance on the Restatement to formulate privacy claims meant that the Restatement news exceptions to the right of publicity ought to apply.  Given that newsworthiness is a First Amendment-related privilege, the court found it credible that Minnesota courts would apply it to publicity claims.

New York: New York also limits its statutory right to non-newsworthy publications, and the newsworthiness exception “should be liberally applied.”  The right is only triggered when there’s no real relationship between the plaintiff’s image and its use, or where the use is an ad in disguise.  That wasn’t so here.

Separately, the NFL argued that plaintiffs explicitly or implicitly consented to the NFL’s use of game footage. While that doesn’t matter in New York, which requires written consent, the other states make lack of consent an element of a claim; consent wouldn’t bar the claims but would prevent plaintiffs from recovering pre-suit damages.  The record showed that the plaintiffs all knew that NFL Films “regularly captured game footage and used that game footage in subsequent productions.”  Plus, each plaintiff voluntarily appeared in these films by giving interviews to NFL Films; though they didn’t challenge the use of the interviews, it was apparent that they consented to the use of the game footage too.  For example, Dryer testified that he “never thought [the NFL was] wrong” in showing game footage in NFL Films productions, and believed that NFL Films had the right to show game footage, including images of him playing football: “It’s their company.” Bethea “just was glad to be interviewed.”

The court then put on suspenders that are more likely to be snapped then the belt to be unbuckled: it found copyright preemption under §301.  (This should really be conflict preemption; courts’ insistence on using §301 has been the source of much incoherence.) Section 301 applies if (1) the disputed work is within the subject matter of copyright; and (2) the state-law-created right is equivalent to any of the exclusive rights within the general scope of the Act.

On the motion to dismiss, the court had ruled that plaintiffs plausibly alleged that the “work” at issue was their identities, and thus there was no preemption.  But the full record didn’t show that. Instead, the “works” plaintiffs challenged were films featuring game footage of them playing football.  Plaintiffs argued that athletic events aren’t copyrightable, making their appearances not within the subject matter of copyright. But the works here weren’t the games, but rather video recordings of games, which are beyond peradventure within the subject matter of copyright.  Their likenesses can’t be detached from the copyrighted performances contained in the films.

In addition, the court took account of two intervening decisions on the issue of whether the right of publicity was equivalent to any exclusive copyright right.  Ray v. ESPN, Inc., No. 13-1179, 2014 WL 2766187 (W.D. Mo. Apr. 8, 2014); Somerson v. McMahon, 956 F. Supp. 2d 1345 (N.D. Ga. 2012).  Both cases involved pro wrestlers challenging the rebroadcast of their wrestling performances; both cases found preemption.  A performance that’s fixed with the permission of the performer is copyrightable; later objection to the republication of that performance in a non-advertising use is a matter for copyright law, not the right of publicity.  “In other words, a claim for a violation of the right to publicity against a copyrighted work will lie only if that work is used for advertising, not in an expressive work.”

Comment: This comes straight from McCarthy, and while I applaud the result I abhor the reasoning.  (1) For copyright purposes, the athletes here weren’t performers/authors because the game itself wasn’t copyrightable; the authors were the ones making decisions about the footage, not about the plays; the court here even quotes language from the legislative history to that effect.  The players consented to appear, but even under Garcia they’re probably not authors.  (2) Where does that “non-advertising” limit come from?  Certainly not from the work or from the copyright right, which is not limited to non-advertising uses.  Drawing the line at advertising is conflict preemption reasoning and has nothing to do with §301.  More on this in a forthcoming article.

Given that the films weren’t ads and the recordings were made with plaintiffs’ permission, the claims were preempted.  Plaintiffs didn’t argue that the NFL couldn’t use the original game broadcast by showing it in full if it so chose. Instead, they argued that use in a new work violated the right of publicity. But the new work was likewise covered by copyright law.  Plaintiffs’ likenesses couldn’t be detached from the copyrighted performance, which the NFL had the right to exploit in expressive works.  (Also, since when is an ad not an expressive work?  Poor conceptualization tends to build upon itself.)

Finally, §43(a) false endorsement:  In the Eighth Circuit, the Lanham Act only applies to commercial speech, so we’re done here.  The court declined to adopt Rogers v. Grimaldi.  But it did say that, even if the films were commercial speech, there was nothing false or misleading in them: they showed plaintiffs playing football. “This use of game footage as game footage cannot, as a matter of law, cause confusion or mistake or deceive anyone as to Plaintiffs’ affiliation with the NFL.”  They were affiliated with the NFL.  Dryer was even filmed at the time of production of one film wearing his Giants jersey.  “If Dryer was truly concerned about creating an impression that he endorses the NFL, he would not have agreed to be filmed wearing NFL trademarks in 2006, a mere three years before the filing of this lawsuit.”

And furthermore, the court found laches.  Nearly all of the films at issue were made years or even decades before plaintiffs sued. A delay of more than six years raises a presumption of laches.  Plaintiffs didn’t provide evidence excusing their delay.  The fact that, until approached by counsel, they didn’t know they might have a claim was irrelevant—ignorance of the law was no excuse.  The NFL didn’t need to show prejudice given the length of delay, but it did so: “Bethea’s deposition alone illustrates the harm the long delay caused to witnesses’ memories. Bethea testified that he could not remember details of an interview he gave to NFL Films in 2007. That memories of events stretching back to the late 1960s would similarly be affected seems self-evident.”  Plaintiffs argued that the NFL’s intentional infringement precluded equitable defenses like laches.  But the NFL was merely exploiting its copyrights, and “correctly cautioned others that the use of game footage for other purposes might impinge players’ publicity rights because commercial use of player identities is not within either the NFL’s copyright or the First Amendment.”