'Voice of God' Case Kicks Off Against NFL

Shannon P. Duffy

The Legal Intelligencer

A federal appeals court will hear arguments today in the court battle between the estate of legendary sports announcer John Facenda and NFL Films that centers on whether Facenda's distinctive voice was improperly used in a promotional film for a John Madden video game.

Facenda, who was known in football circles as the "Voice of God," scored a major victory in the lower court when a federal magistrate judge rejected the NFL Films' argument that Facenda's suit failed due to a release he signed in 1984.

U.S. Magistrate Judge Jacob P. Hart found that the release Facenda signed included a clause that barred NFL Films from using Facenda's voice in any way that would constitute the "endorsement" of a product or service.

As a result, Hart said, the case hinged on whether the film, titled "The Making of Madden," was a documentary, as NFL Films claimed, or a promotional tool for the video game "Madden NFL 06."

Hart concluded that the film was not a documentary because it "lacks the journalistic independence typical of the maker of a documentary" and because NFL Films had a "direct financial interest" in the success of the video game.

Facenda's estate was therefore entitled to summary judgment on the issue of liability for two of its claims, Hart found, alleging violation of the federal Lanham Act and a Pennsylvania law barring "unauthorized use of name or likeness."

Lawyers for NFL Films responded by urging Hart to certify the case for an immediate appeal on two issues.

Hart had erred, they argued, by failing to require Facenda to produce evidence that viewers of the film would believe that Facenda was endorsing the video game. Without such evidence, they argued, such an "implied endorsement" claim must fail.

And in ruling in Facenda's favor on the state law claim, the defense lawyers argued that Hart had erred by failing to recognize that such a claim would be pre-empted by federal copyright law.

Hart had ruled that the state claim was not pre-empted by copyright law because the written agreement between Facenda and the NFL limited the scope of the NFL's copyright. But the NFL insisted that the only remedy for a violation of that agreement would be a breach of contract claim and not a state claim for unauthorized use of name or likeness.

Both issues, Hart found, would benefit from an immediate appeal because they centered on controlling questions of law for which "there is substantial ground for difference of opinion."

Now the lawyers will be squaring off before a three-judge panel of the 3rd U.S. Circuit Court of Appeals -- Judges Thomas L. Ambro, Michael A. Chagares and Robert E. Cowen.

Attorney Bruce P. Keller of Debevoise & Plimpton will be arguing for NFL Films, urging the judges to reverse both of Hart's rulings that entered judgment on liability for Facenda.

Attorney Paul A. Lauricella of The Beasley Firm, who filed the suit on behalf of Facenda's son, will be arguing that Hart got both issues right and that the case should be sent back only to litigate the issue of damages.

Hart had agreed early on in the case to bifurcate it, focusing first on liability, because lawyers for NFL Films argued that discovery on the issue of damages would be unnecessary if they prevailed on the legal issues related to liability.

According to court papers, Facenda, who died in 1984, had earned legendary status in the football world for his dramatic narrations of NFL films, using his intense baritone to describe the slow motion highlights of the weeks' games.

In the suit, Facenda's son claims that while the NFL was given the right to use Facenda's voice for its programs, the written agreement explicitly prohibited any use of his father's voice for advertisements.

The suit alleged that "The Making of John Madden" is an "infomercial" that was designed to promote sales of the John Madden football videogame. The 22-minute program includes three lines from Facenda that last a combined 13 seconds.

In litigation before Hart, Keller argued that the case should be dismissed under the doctrine of "incidental use" because the clips of Facenda's voice in the film were minimal.

Hart disagreed, finding that Facenda's voice played a "significant role" in the purpose of the film.

"Although Facenda's appearance was brief, it added some commercial value to The Making of Madden," Hart wrote.

In the appeal being argued today, the court is expected to focus on two issues that the NFL contends are fatal flaws in Facenda's case.

Hart set the bar too low on the Lanham Act claim, Keller argues, by failing to require evidence that "a substantial percentage of the public actually received the implied message of Mr. Facenda's endorsement of the video game."

But in his response brief, Lauricella argues that Keller is ignoring the plain language of the statute, which calls for a "likelihood of confusion" test, and that the NFL is effectively asking the court to "graft" an actual confusion standard on a statute that explicitly calls for nothing more than proof of a likelihood of confusion.

In his brief, Keller argues that he is not asking for an "actual confusion" test but only that Facenda must have "proof that an implied message was received" by viewers in order to succeed on his false endorsement claim.

Hart erred, Keller argues, by failing to distinguish between the tests for "implied messages" and "express messages."

"In the case of an implied message," Keller wrote, "a private Lanham Act plaintiff must first prove that the implication he alleges actually was the message received and believed by a substantial portion of the public."

Lauricella, in his brief, argues that Keller had "invented a distinction without a difference."

The practical consequences of a court's acceptance of Keller's argument would be "absurd," Lauricella argued, because plaintiffs would be forced to meet a two-step test in which they would first have to show actual confusion before satisfying a less onerous burden of showing that their "involuntary participation" in a commercial had created a likelihood of confusion.