Memo in Support of MOTION for Summary Judgment filed by NFL in Dryer vs NFL Films

8/12/2019 Memo in Support of MOTION for Summary Judgment filed by NFL in Dryer vs NFL Films

1/73

UNITED STATES DISTRICT COURT

DISTRICT OF MINNESOTA

______________________________________

John Frederick Dryer,Elvin Lamont Bethea, and,

Edward Alvin White,

Plaintiffs,

v.

National Football League,

Defendant.

)

))

)

)

)

)

)

)

)

)

)

No. 0:09-cv-02182-PAM-AJB

NATIONAL FOOTBALL LEAGUES MEMORANDUM OF LAW

IN SUPPORT OF ITS MOTION FOR SUMMARY JUDGMENT

CASE 0:09-cv-02182-PAM-FLN Document 544 Filed 08/08/14 Page 1 of 73


2/73

Table of Contents

Page

INTRODUCTION ............................................................................................................... 1

FACTUAL AND PROCEDURAL BACKGROUND ........................................................ 3

I.

The History Of NFL Films ....................................................................................... 3

II.

Plaintiffs ................................................................................................................... 4

III.

The Challenged Programs ........................................................................................ 5

IV. Plaintiffs Participation In Creating The Challenged Programs ............................... 6

V.

The History Of The Litigation .................................................................................. 8

SUMMARY JUDGMENT STANDARD.. ................................. 8

ARGUMENT.. 9

I.

The Challenged Programs Are Protected By Safe Harbors To The

Applicable State And Federal Laws And By The First Amendment. ...................... 9

A.

The challenged programs are protected by safe harbors in the

governing states laws for speech addressing sports and other

newsworthy topics. ........................................................................................ 9

1.

Programs showing Dryer California and New York law .................. 10

Programs showing Bethea Texas law. ............................................... 14

2.

Programs showing White California and Minnesota law. ................. 163.

B.

The challenged programs are fully protected by the First

Amendment, barring Plaintiffs right-of-publicity claims. ......................... 18

The challenged programs cover events of great public interest1.

and are thus entitled to full First Amendment protection. .................... 19

The challenged programs do not materially implicate any of the2.

interests protected by right-of-publicity laws. ...................................... 24

The challenged programs are not commercial speech. ......................... 26

3.

The expressive content of the challenged programs is4.

inextricably intertwined with any brand-enhancing elements. ............. 32

C.

The Lanham Act does not apply to the challenged programs becausethey are expressive works............................................................................ 35

II.

Plaintiffs Claims Are Barred By The Doctrines Of Laches, Acquiescence,

And Consent Because Of Their Decades-Long Delay In Bringing Suit And

Active Participation In Creating The Challenged Programs. ................................. 37

A.

Laches and acquiescence bar all of Plaintiffs Lanham Act claims. ........... 37



3/73

ii

Plaintiffs inexcusably delayed in asserting their rights and1.

bringing suit. ......................................................................................... 39

The NFL was unduly prejudiced by Plaintiffs delay. ......................... 41

2.

Plaintiffs actively acquiesced in the NFLs use of game footage. ....... 43

3.

B.

Several equitable doctrines bar Plaintiffs right-of-publicity claims

under state law. ............................................................................................ 45

Implied consent and laches bar Dryers and Whites claims1.

under California law. ............................................................................ 45

Implied consent, laches, and quasi-estoppel bar Betheas claims2.

under Texas law. ................................................................................... 46

Implied consent, laches, and estoppel bar Whites claims under3.

Minnesota law. ...................................................................................... 47

Laches, the limitations period, and the incidental-use doctrine4.

bar Dryers claims under New York law. ............................................. 48

III.

Plaintiffs State-Law Claims Are Preempted By The Federal Copyright Act. ...... 50

IV.

Plaintiffs Unjust Enrichment Claims Fall With Their Publicity-Rights

Claims. .................................................................................................................... 55

V. In The Alternative, Plaintiffs State-Law Claims Are Preempted By The

LMRA. .................................................................................................................... 55

CONCLUSION.59



4/73

iii

Table of Authorities

Page(s)

FEDERAL CASES

3M Co. v. Intertape Polymer Grp., Inc.,423 F. Supp. 2d 958 (D. Minn. 2006) ..........................................................................48

A.C. Aukerman Co. v. R.L. Chaides Constr. Co.,

960 F.2d 1020 (Fed. Cir. 1992) ....................................................................................42

Ahn v. Midway Mfg. Co.,

965 F. Supp. 1134 (N.D. Ill. 1997) ...............................................................................54

Am. Needle Inc. v. NFL,

538 F.3d 736 (7th Cir. 2008) ........................................................................................12

Anheuser-Busch, Inc. v. Balducci Publns,

28 F.3d 769 (8th Cir. 1994) ..........................................................................................35

Ann-Margret v. High Socy Magazine, Inc.,

498 F. Supp. 401 (S.D.N.Y. 1980) ...............................................................................14

Arctic Cat, Inc. v. Injection Res. Specialists, Inc.,

362 F. Supp. 2d 1113 (D. Minn. 2005) ........................................................................41

Armstrong v. Eagle Rock Entmt, Inc.,

655 F. Supp. 2d 779 (E.D. Mich. 2009) .......................................................................54

Baltimore Orioles, Inc. v. Major League Baseball Players Assn,

805 F.2d 663 (7th Cir. 1986) ..................................................................................52,54

Bd. of Trs. of State Univ. of N.Y. v. Fox,

492 U.S. 469 (1989) ...............................................................................................26,33

Bloemer v. Nw. Airlines, Inc.,

401 F.3d 935 (8th Cir. 2005) ........................................................................................58

Bolger v. Youngs Drug Prods. Corp.,463 U.S. 60 (1983) .................................................................................................27,30

Brady v. NFL,

779 F. Supp. 2d 992 (D. Minn. 2011) ..........................................................................12

Brown v. Ames,

201 F.3d 654 (5th Cir. 2000) ............................................................................15, 36,37



5/73

iv

Brown v. Cassens Transp. Co.,

743 F. Supp. 2d 651 (E.D. Mich. 2010) .......................................................................55

Brown v. Elec. Arts, Inc.,

724 F.3d 1235 (9th Cir. 2013) ....................................................................20, 35, 36,37

Brown v. NFL,

219 F. Supp. 2d 372 (S.D.N.Y. 2002) ..........................................................................59

Reed Elsevier, Inc. v. Muchnick,

559 U.S. 154 (2010) .....................................................................................................53

C.B.C. Dist. & Mktg., Inc. v. Major League Baseball Advanced Media, L.P.,

505 F.3d 818 (8th Cir. 2007) ......................................................................18, 20, 24, 56

Cardtoons, L.C. v. Major League Baseball Players Assn,

95 F.3d 959 (10th Cir. 1996) .................................................................................passim

CBS Interactive Inc. v. Natl Football League Players Assn, Inc.,

259 F.R.D. 398 (D. Minn. 2009) ............................................................................19,20

Celotex Corp. v. Catrett,

477 U.S. 317 (1986) .......................................................................................................8

Cepeda v. Swift & Co.,

415 F.2d 1205 (8th Cir. 1969) ......................................................................................58

Charles v. City of L.A.,697 F.3d 1146 (9th Cir. 2012) ......................................................................................33

Cheatham v. Paisano Publns, Inc.,

891 F. Supp. 381 (W.D. Ky. 1995) ...............................................................................55

Citizens & Landowners Against Miles City/New Underwood Powerline v. Secy,

U.S. Dept. of Energy,

683 F.2d 1171 (8th Cir. 1982) ......................................................................................40

City of Cincinnati v. Discovery Network, Inc.,

507 U.S. 410 (1993) .....................................................................................................26

Cliffs Notes, Inc. v. Bantam Doubleday Dell Publg Grp., Inc.,

886 F.2d 490 (2d Cir. 1989) .........................................................................................35

Conan Properties, Inc. v. Conans Pizza, Inc.,

752 F.2d 145 (5th Cir. 1985) ........................................................................................44



6/73

v

Connick v. Myers,

461 U.S. 138 (1983) ...................................................................................18, 19, 21,22

Dex Media W., Inc. v. City of Seattle,

696 F.3d 952 (9th Cir. 2012) ........................................................................................33

Downing v. Abercrombie & Fitch,

265 F.3d 994 (9th Cir. 2001) ........................................................................................45

Dryer v. NFL,

689 F. Supp. 2d 1113 (D. Minn. 2010) .................................................................passim

Duncan v. Universal Music Grp. Inc.,

No. 11-CV-5654, 2012 WL 1965398 (E.D.N.Y. May 31, 2012) .................................49

Dwinell-Wright Co. v. White House Milk Co.,

132 F.2d 822 (2d Cir. 1943) .........................................................................................44

ETW Corp. v. Jireh Publg,Inc.,

332 F.3d 915 (6th Cir. 2003) .................................................................................passim

Facenda v. N.F.L. Films, Inc.,

542 F.3d 1007 (3d Cir. 2008) .......................................................................................30

Farkas v. GMAC Mortg., LLC,

737 F.3d 338 (5th Cir. 2013) ........................................................................................47

Glovaroma, Inc. v. Maljack Prods., Inc.,No. 96-cv-3985, 1998 WL 102742 (N.D. Ill. Feb. 26, 1998) ......................................54

Goodman v. McDonnell Douglas Corp.,

606 F.2d 800 (8th Cir. 1979) ........................................................................................41

Gore v. TWA,

210 F.3d 944 (8th Cir. 2000) ........................................................................................56

Grp. Health Plan, Inc. v. Philip Morris Inc.,

188 F. Supp. 2d 1122 (D. Minn. 2002) ..........................................................................8

Heidi Ott A.G. v. Target Corp.,

153 F. Supp. 2d 1055 (D. Minn. 2001) ........................................................................52

Hoepker v. Kruger,

200 F. Supp. 2d 340 (S.D.N.Y. 2002) ..........................................................................13



7/73

vi

Hoffman v. Capital Cities/ABC, Inc.,

255 F.3d 1180 (9th Cir. 2001) ......................................................................................34

Holmes v. NFL,

939 F. Supp. 517 (N.D. Tex. 1996) ..............................................................................59

Hot Wax, Inc. v. Turtle Wax, Inc.,

191 F.3d 813 (7th Cir. 1999) ............................................................................38, 41,42

Hubbard Feeds, Inc. v. Animal Feed Supp., Inc.,

182 F.3d 598 (8th Cir. 1999) ............................................................................38, 40,41

In re NCAA Student-Athlete Name & Likeness Licensing Litig.,

724 F.3d 1268 (9th Cir. 2013) ................................................................................10,12

Jarrow Formulas, Inc. v. Nutrition Now, Inc.,

304 F.3d 829 (9th Cir. 2002) ........................................................................................46

Jones v. Corbis Corp.,

815 F. Supp. 2d 1108 (C.D. Cal. 2011) .................................................................45,46

Jones v. Corbis Corp.,

489 F. Appx 155 (9th Cir. 2012) ............................. 45

Jordan v. Jewel Food Stores, Inc.,

743 F.3d 509 (7th Cir. 2014) ..................................................................................33,34

Joseph Burstyn, Inc. v. Wilson,343 U.S. 495 (1952) ...............................................................................................21,31

Jules Jordan Video, Inc. v. 144942 Can., Inc.,

617 F.3d 1146 (9th Cir. 2010) ................................................................................53,54

Lakewood v. Plain Dealer Publg Co.,

486 U.S. 750 (1988) .....................................................................................................31

Laws v. Sony Music Entmt,

448 F.3d 1134 (9th Cir. 2006) ................................................................................52,54

Lingle v. Norge Div. of Magic Chef, Inc.,

486 U.S. 399 (1988) .....................................................................................................56

Lutheran Assoc. of Missionaries and Pilots, Inc. v. Lutheran Assoc. of

Missionaries and Pilots, Inc.,

No. 03-cv-6173, 2004 WL 2730104 (D. Minn. Nov. 19, 2004) ..................................38



8/73

vii

Masters v. UHS of Del., Inc.,

631 F.3d 464 (8th Cir. 2011) ..................................................................................38,43

Matthews v. Wozencraft,

15 F.3d 432 (5th Cir. 1994) ..........................................................................................15

Meadows v. Hartford Life Ins. Co.,

492 F.3d 634 (5th Cir. 2007) ........................................................................................47

Miller v. Glenn Miller Prods., Inc.,

454 F.3d 975 (9th Cir. 2006) ......................................................................38, 39, 41,46

Minn. Mining & Mfg. Co. v. Beautone Specialties, Co., Ltd.,

82 F. Supp. 2d 997 (D. Minn. 2000) ............................................................................41

Murray Hill Publns, Inc. v. ABC Commcns, Inc.,

264 F.3d 622 (6th Cir. 2001) ........................................................................................53

NAACP v. NAACP Legal Def. & Educ. Fund., Inc.,

753 F.2d 131 (D.C. Cir. 1985)......................................................................................41

Natl Basketball Assn v. Motorola,

105 F.3d 841 (2d Cir. 1997) .........................................................................................52

Natl Car Rental Sys. Inc. v. Computer Assocs. Intl. Inc.,

991 F.2d 426 (8th Cir. 1993) ..................................................................................51,53

New Kids on the Block v. News Am. Publg, Inc.,971 F.2d 302 (9th Cir. 1992) ........................................................................................11

N.Y. Times v. Sullivan,

376 U.S. 254 (1964) .....................................................................................................27

Newton v. Thomason,

22 F.3d 1455 (9th Cir. 1994) ..................................................................................45,46

NFLPA v. NFL,

654 F. Supp. 2d 960 (D. Minn. 2009) (Magnuson, J.) .................................................58

Petrella v. Metro-Goldwyn-Mayer, Inc.,

134 S. Ct. 1962 (2014) .................................................................................................38

Porous Media Corp. v. Pall Corp.,

173 F.3d 1109 (8th Cir. 1999) ....................................................................27, 29, 30,31



9/73

viii

Preston v. Martin Bregman Prods., Inc.,

765 F. Supp. 116 (S.D.N.Y. 1991)..........................................................................25,49

ProFitness Physical Therapy Ctr. v. Pro-Fit Orthopedic & Sports Physical

Therapy P.C.,

314 F.3d 62 (2d Cir. 2002) .....................................................................................38,44

Ray v. ESPN, Inc.,

No. 13-cv-1179, 2014 WL 2766187 (W.D. Mo. April 8, 2014).......................51, 53,54

Reynolds v. Heartland Transp.,

849 F.2d 1074 (8th Cir. 1988) ......................................................................................41

Riley v. Natl Fedn of the Blind of N.C.,

487 U.S. 781 (1988) ...............................................................................................33,34

Rogers v. Grimaldi,875 F.2d 994 (2d Cir. 1989) ...................................................................................35,36

Romantics v. Activision Publg, Inc.,

574 F. Supp. 2d 758 (E.D. Mich. 2008) .......................................................................54

Sherwin v. Indianapolis Colts, Inc.,

752 F. Supp. 1172 (N.D.N.Y. 1990) .............................................................................59

Smith v. Houston Oilers,Inc.,

87 F.3d 717 (5th Cir. 1996) ..........................................................................................59

Snyder v. Phelps,

131 S. Ct. 1207 (2011) .................................................................................................19

Somerson v. World Wrestling Entmt,Inc.,

956 F. Supp. 2d 1345 (N.D. Ga. 2012) ..................................................................51,54

Stringer v. NFL,

474 F. Supp. 2d 894 (S.D. Ohio 2007) .........................................................................59

Tellado v. Time-Life Books, Inc.,

643 F. Supp. 904 (D.N.J. 1986) ...................................................................................17

Trs. of Twin City Bricklayers Fringe Benefit Funds v. Superior Waterproofing, Inc.,

450 F.3d 324 (8th Cir. 2006) ........................................................................................56

U.S. Olympic Comm. v. Am. Media, Inc.,

156 F. Supp. 2d 1200 (D. Colo. 2001) .........................................................................31



10/73

ix

Univ. of Ala. Bd. of Trs. v. New Life Art, Inc.,

683 F.3d 1266 (11th Cir. 2012) ....................................................................................35

Va. State Bd. of Pharmacy v. Va. Citizens Consumer Council, Inc.,

425 U.S. 748 (1976) .....................................................................................................31

Ventura v. Titan Sports, Inc.,

65 F.3d 725 (8th Cir. 1995) ..............................................................................54, 55,58

Vilma v. Goodell,

917 F. Supp. 2d 591 (E.D. La. 2013) ...........................................................................59

Wagner v. Gallup, Inc.,

989 F. Supp. 2d 782 (D. Minn. 2013) ..........................................................................16

Whitehurst v. Showtime Networks, Inc.,

No. 1:08-CV-47, 2009 WL 3052663 (E.D. Tex. Sept. 22, 2009) ................................15

Williams v. NFL,

582 F.3d 863 (8th Cir. 2009) ..................................................................................56,58

Zacchini v. Scripps-Howard Broad.,

433 U.S. 562 (1977) ...............................................................................................18,21

STATE CASES

Aronovitch v. Levy,

56 N.W.2d 570 (Minn. 1953) .......................................................................................48

Burdette Tomlin Meml Hosp. v. Estate of Malone,

845 A.2d 615 (N.J. Super. Ct. App. Div. 2003) ...........................................................50

Castro v. NYT Television,

851 A.2d 88 (N.J. Super. Ct. App. Div. 2004) .............................................................17

City of Oakland v. Oakland Police & Fire Ret. Sys.,

169 Cal. Rptr. 3d 51 (Cal. Ct. App. 2014) ...................................................................46

Costanza v. Seinfeld,719 N.Y.S.2d 29 (N.Y. App. Div. 2001) .......................................................................49

Danforth v. Star Tribune Holdings Corp.,

No. A10-128, 2010 WL 4286242 (Minn. Ct. App. Nov. 2, 2010) ...............................16

Delan ex rel. Delan v. CBS, Inc.,

458 N.Y.S.2d 608 (N.Y. App. Div. 1983) .....................................................................50



11/73

x

Dora v. Frontline Video, Inc.,

18 Cal. Rptr. 2d 790 (Cal. Ct. App. 1993) .............................................................11,12

Ecumenical Task Force of Niagara Frontier, Inc. v. Love Canal Area Revitalization

Agency,

583 N.Y.S.2d 859 (N.Y. App. Div. 1992) .....................................................................50

Finger v. Omni Publns Intl, Ltd.,

566 N.E.2d 141 (N.Y. 1990) ........................................................................................14

Finnie v. Town of Tiburon,

244 Cal. Rptr. 581 (Cal. Ct. App. 1988) ......................................................................46

Fleet v. CBS, Inc.,


Garcia v. Garza,311 S.W.3d 28 (Tex. App. 2010) ..................................................................................47

Gautier v. Pro-Football, Inc.,

107 N.E.2d 485 (N.Y. 1952) ..................................................................................14,15

Gionfriddo v. Major League Baseball,

114 Cal. Rptr. 2d 307 (Cal. Ct. App. 2001) ...........................................................passim

Greenstein v. Greif Co.,

No. B200962, 2009 WL 117368 (Cal. Ct. App. Jan. 20, 2009) .............................45,46

Heuer v. Heuer,

704 A.2d 913 (N.J. 1998) .............................................................................................50

Howell v. N.Y. Post Co., Inc.,

612 N.E.2d 699 (N.Y. 1993) ........................................................................................13

Kimbrough v. Coca-Cola/USA,

521 S.W.2d 719 (Tex. Civ. App. 1975) ........................................................................15

Lake v. Wal-Mart Stores, Inc.,

582 N.W.2d 231 (Minn. 1998) .........................................................................16, 17,48

Lopez v. Munoz, Hockema & Reed, L.L.P.,

22 S.W.3d 857 (Tex. 2000) ..........................................................................................47

Messenger ex rel. Messenger v. Gruner

727 N.E.2d 549 (N.Y. 2000) ................................................................................. 13, 14



12/73

xi

Montana v. San Jose Mercury News, Inc.,


Nussenzweig v. diCorcia,

832 N.Y.S.2d 510 (N.Y. App. Div. 2007) .....................................................................49

Pesina v. Juarez,

181 N.W.2d 109 (Minn. 1970) .....................................................................................48

Pinkus v. Minneapolis Linen Mills,

67 N.W. 643 (Minn. 1896) ...........................................................................................48

Saratoga Cnty. Chamber of Commerce, Inc. v. Pataki,

798 N.E.2d 1047 (N.Y. 2003) ......................................................................................50

Sporn v. MCA Records, Inc.,

448 N.E.2d 1324 (N.Y. 1983) ......................................................................................49

Stephano v. News Grp. Publns, Inc.,

474 N.E.2d 580 (N.Y. 1984) ........................................................................................13

Stewart v. Rolling Stone LLC,


FEDERAL STATUTES

15 U.S.C. 1069 ...............................................................................................................38

15 U.S.C. 1125(a) ...........................................................................................................35

17 U.S.C. 102 .................................................................................................................52

17 U.S.C. 106 ...........................................................................................................51,53

17 U.S.C. 301(a) .............................................................................................................51

29 U.S.C. 185 ................................................................................................................. 56

STATE STATUTES

Cal. Civ. Code 3344 ............................................................................................10,12,56

N.Y. C.P.L.R. 215(3) .......................................................................................................49

N.Y. Civ. Rights Law 51 ...............................................................................13, 14, 49,50



13/73

xii

RULES

Fed. R. Civ. P. 56(c) .............................................................................................................8

CONSTITUTIONAL PROVISIONS

First Amendment ........................................................................................................passim

OTHER AUTHORITIES

2 J. Thomas McCarthy, The Rights of Publicity & Privacy(2014 ed.) .......................38,56

J. Thomas McCarthy,McCarthy on Trademarks & Unfair Competition

(4th ed. 2009) ...............................................................................................................43

Restatement (Second) of Torts ..............................................................................17,47,48

Restatement (Third) of Unfair Competition ......................................................................16

Vincent A. Palladino,Lanham Act False Advertising Claims: What is a Plaintiff to

Do?, 101 Trademark Rep. 1601 (2011) .......................................................................22



14/73


15/73

2

Even if the relevant state laws did not protect the challenged programs, the First

Amendment would. In every case involving similar speech about sporting events, courts

have concluded that First Amendment interests outweighed any interests protected by

state publicity-right laws. The factual record shows that the same is true here. The

challenged programs use of NFL Films game footage showing Plaintiffs playing football

poses no threat to Plaintiffs ability to use their identities for commercial gain. To the

contrary, when Plaintiffs can be identified at all, they agree that the programs enhance

their ability to benefit from their identities. On the other side of the balance, the

programs are fully protected by the First Amendment as speech about a topic that is of

such great public interest that it commands coverage in every medium that covers sports,

whether newspapers, radio, television, or online. Plaintiffs state-law claims must

therefore give way to the protections afforded by the First Amendment.

Second, Plaintiffs decades-long delay in bringing suit and their active

participation in making the challenged programs bar their claims under the doctrines of

laches, acquiescence, and consent. Despite knowing that NFL Films programs contained

game footage in which they appeared, Plaintiffs never objected for more than 20 years

after they retired. To the contrary, they led the NFL to believe that they agreed it could

use game footage of them in NFL Films programs. In reliance on Plaintiffs conduct, the

NFL continued making programs, continued including Plaintiffs in those programs, and

continued relying on its player contracts as adequate statements of the parties rights.

Plaintiffs course of conduct, and the prejudice it caused the NFL, bar all of their claims.



16/73

3

Third, the Copyright Act preempts Plaintiffs state-law claims. In discovery,

Plaintiffs admitted that their claims are based entirely on the NFLs uses of game footage

for its original purpose as sports programming, not in separate ads. In addition, two

recent federal decisions have dismissed identical right-of-publicity claims brought by

other professional athletes against the use of footage of their performances on the

grounds of copyright preemption. These two developments, one factual and one legal,

warrant granting summary judgment for the NFL.

Finally, in the alternative, Plaintiffs claims are preempted by Section 301 of the

Labor Management Relations Act (LMRA). If the Court does not grant summary

judgment for the NFL on any of the above grounds, it has recognized that each former

players contract must be examined to determine whether [publicity] rights are covered

by the terms of the contract as well as the extent and duration of such coverage. (Order,

Dkt. 431, at 14.) Because the player contracts were negotiated in Collective Bargaining

Agreements, only a labor arbitrator may interpret them. If the Court reaches that stage of

the analysis, it should dismiss Plaintiffs claims as preempted by LMRA.

FACTUAL AND PROCEDURAL BACKGROUND

I.

The History Of NFL Films

Since 1965, NFL Films has sent film crews to chronicle NFL football games and

the teams and players who play them. (Connolly Decl., Ex. U.1) NFL Films uses the

resulting footage to document the history of the National Football League. (Katz Dep.

(Ex. E) 38:1-4.) As explained by the Chief Operating Officer of NFL Films, Howard

1All exhibit citations refer to the exhibits attached to the Connolly Declaration.



17/73

4

Katz, We are filmmakers at NFL Films. We go out and figure out whats the best story

we can tell. (Id.40:25-41:7.)

NFL Films altered forever the way sports is presented on film, with innovations

that virtually everyone in the sports and television business have been trying to copy

since. David Lidsky, This Is NFL Films, Fortune, Sept. 16, 2002 (Ex. V). For its work,

NFL Films has won more than 110 Emmys for Cinematography, Writing, Editing, Sound

and Sports Series, and Specials. (See, e.g., Exs. X, Y.)

II.

Plaintiffs

Each Plaintiff is a former NFL football player who retired more than 20 years ago.

John Frederick Fred Dryer played defensive end, wearing number 89, for the

New York Giants from 1969 to 1971 and for the Los Angeles Rams from 1972 to 1981.

(Second Am. Compl., Mar. 18, 2013, 6, Dkt. 258 (SAC).) Dryer has resided in

California since 1972. (See, e.g., SAC 6.)

Elvin Lamont Bethea played defensive end, wearing number 65, for the Houston

Oilers from 1968 to 1983. (SAC 9; Bethea Dep. (Ex. G) 14:24-15:7.) Bethea has

resided in Texas since 1972. (Bethea Dep. (Ex. G) 13:17-22.)

Edward Alvin Ed White played offensive guard for the Minnesota Vikings from

1969 to 1977, wearing number 62. He then played for the San Diego Chargers from 1978

to 1985, wearing number 67. (SAC 11.) White has resided in California since at least

1999. (White Dep. (Ex. H) 13:11-15.)



18/73

5

III.

The Challenged Programs

In this case, Plaintiffs challenge as a violation of their publicity rights every

program that was shown, licensed, or sold by the NFL within one or more of the relevant

limitations periods in which one of them is shown playing football (the challenged

programs). Dryer appears in 47 such programs, Bethea in 32, and White in 91. In most

cases, Plaintiffs appear so incidentally that it is difficult to identify them. Lists of the

challenged programs indicating where Plaintiffs appeared and for how long are attached

as Exhibits AC.

Relatively few of the programs were distributed widely. Most were sold only to

individual consumers on DVDs. (See Ex. D, at App. 1; Ex. DD.) For example, a DVD

of Game of the Week 1973 Week #16: Vikings v. Cowboys, in which White briefly

appears, was purchased twice within the longest limitations period. (Ex. DD, at 2, 22.) A

smaller subset of programs was licensed as part of bundles to third-party distributors like

Warner Home Video and Hulu. (See Ex. D, at App. 2.) Finally, 35 programs were

shown on NFL Network and clips from 17 programs were posted on NFL.com. (Ex. D,

at App. 1.) Charts showing the challenged programs uses are attached as Exhibit D.

All of the challenged programs recount historic sporting events and use game

footage of Plaintiffs only to show them playing football. The programs can be roughly

divided into five categories. The first category is Historical Documentaries. This

category includes the Americas Game series, which tells the stories of Super Bowl

teamsprimarily the winning teams, but sometimes the other team, such as in Missing



19/73


20/73

7

Before they filed this suit, Plaintiffs let more than 20 years pass after their

retirements without ever objecting to appearing in NFL Films programs. Instead, they led

NFL Films to believe that they consented to appearing in the challenged programs. Dryer

repeatedly sat, without objection, for interviews for programs that he knew would use

game footage of him and is shown on videotape watching and enjoying the completed

programs with NFL Films personnel decades after the programs were made. (See Dryer

Dep. (Ex. F) 92:21-93:5, 164:14-23, 173:8-174:1; Ex. A, No. 47, at 00:39:5400:41:04.)

Bethea likewise gave interviews to NFL Films, without objection, in 1994, 1997,

and 2007. (Bethea Dep. (Ex. G) 80:15-83:6, 83:24-87:4, 88:7-92:7, 112:1-16, 116:11-

117:4, 118:24-119:2.) His 1997 interview was incorporated into the film Pro Football

Hall of Fame: 85 Years of Greatness, (Ex. B, No. 31, at 00:11:0000:11:43), a copy of

which he received, (Bethea Dep. (Ex. G) 110:22-111:20, 113:1-4, 116:11-117:4).

White, from the time he retired in 1985 until the summer of 2009 when he was

approached by counsel to join the lawsuit, believed the NFL was entitled to show game

footage in which he appeared and never objected to it. (White Dep. (Ex. H) 129:12-

130:15, 137:16-138:10.) After his house tragically burned down in November 2003,

destroying all his papers, documents, and films, (id.31:22-32:6), White contacted NFL

Films to ask for copies of the programs in which he appeared. (Id.183:2-15, 184:22-

185:1.) The NFL sent him free copies of 25 to 30 films, which White still has. (Id.

183:5-15, 191:16-192:13, 193:4-11.) On March 24, 2009, five months before this lawsuit

was filed, White gave a new interview to NFL Films, (id.262:19-264:11), explaining that

he agreed to participate because I just enjoy football, being a part of it andand



21/73

8

everything about it, (id.265:2-5). White never objected to the use of game footage

showing him when he gave this interview. (Id.274:1-275:10.)

V. The History Of The Litigation

This lawsuit began as a class action filed in August 2009 by, among others, the

three Plaintiffs who remain: Dryer, Bethea, and White. (See Dkt. 1.) In January 2010,

the Court denied the NFLs motion for judgment on the pleadings, giving Plaintiffs the

benefit of every reasonable inference. Dryer v. NFL, 689 F. Supp. 2d 1113, 1120-21 (D.

Minn. 2010). The Court also encourage[d] the parties to investigate a reasonable

settlement. Id.at 1123. The parties did just that, and the Court granted final approval of

a class settlement on November 1, 2013. (SeeDkt. 431.) Dryer, Bethea, and White opted

out of the settlement class to pursue their claims individually.

The factual record has been fully developed since January 2010 through extensive

merits discovery by both sides. The NFL has produced over 100,000 documents, and the

parties have taken 17 fact depositions and 9 expert depositions. The case is now ready for

the Courts decision based on a comprehensive factual record.

SUMMARY JUDGMENT STANDARD

Summary judgment should be granted when there are no disputed issues of

material fact and the moving party is entitled to judgment as a matter of law. Fed. R. Civ.

P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317 (1986); Grp. Health Plan, Inc. v. Philip

Morris Inc., 188 F. Supp. 2d 1122, 1125 (D. Minn. 2002).



22/73


23/73

10

Programs showing Dryer California and New York law

1.

Dryer played in California (Rams) and New York (Giants), and he currently

resides in California. Thus, either California and New York law, or California law alone,

will govern his claims.

California law.a.

California recognizes both a statutory and a common law right of publicity. The

common law requires a plaintiff to prove four elements: (1) the defendants use of the

plaintiffs identity; (2) the appropriation of plaintiffs name or likeness to defendants

advantage, commercially or otherwise; (3) lack of consent; and (4) resulting injury.

Stewart v. Rolling Stone LLC, 105 Cal. Rptr. 3d 98, 111 (Cal. Ct. App. 2010) (quotation

omitted). The statute requires two additional elements: a knowing use by the defendant

as well as a direct connection between the alleged use and the commercial purpose. Id.

at 111.

In two ways, California protects reporting of factual information under state

law. In re NCAA Student-Athlete Name & Likeness Licensing Litig., 724 F.3d 1268,

1282 (9th Cir. 2013). First, the statute contains a safe harbor for uses in connection with

any news, public affairs, or sports broadcast or account, or any political campaign. Cal.

Civ. Code 3344(d). Second, the common law claim does not extend to the publication

of matters in the public interest. In re NCAA, 724 F.3d at 1282.

Although the protections under California law are animated by First Amendment

concerns, they are not coextensive with the Federal Constitution, and their application is

thus a matter of state law. Id.(internal citation omitted). California law provides extra



24/73


25/73

12

which they appeared. 114 Cal. Rptr. 2d at 313-19. The court found that [t]he public has

an enduring fascination in the records set by former players and in memorable moments

from previous games, and hence that video footage from historic games commands a

substantial public interest. Id. at 315. This Court distinguished Gionfriddoat the

pleadings stage as it related to First Amendment law, but as to California state-law issues,

Gionfriddo,Montana, andDora are controlling.2

The NFL Films programs that Dryer challenges fall directly within the scope of

Californias state-law protections. Just as Gionfriddo,Montana, andDorafound with

regard to the sporting events they covered, the NFL football games covered by the

challenged programs involve matters of public interest under the California common

law and public affairs under 3344and that is putting it mildly, given the pervasive

media attention the games attract. See generally Brady v. NFL, 779 F. Supp. 2d 992,

1042 (D. Minn. 2011) (noting the strong investment that fans of professional football

have in the NFL season);Am. Needle Inc. v. NFL, 538 F.3d 736, 737 (7th Cir. 2008)

(noting that [a]s the most successful and popular professional sports league in American

today the NFL has inspired countless hours of heated and in-depth discussion about

the leagues professional-football history), revd on other grounds, 560 U.S. 183

(2012). To pick two examples from the challenged programs, the 23-minute-long

2The Ninth Circuits decision inIn re NCAA reaffirmed the application ofMontana,

Dora, and Gionfriddoto accounts of historic sporting events, but distinguished them in

the context of depictions of a college football player in a video game, reasoning that the

video game is not a means for obtaining information about real-world football games.

724 F.3d at 1283. The challenged uses of game footage, in contrast, all show real-world

football games and are thus controlled byMontana,Dora, and Gionfriddo.



26/73


27/73


28/73

15

To succeed on a Texas right-of-publicity claim, a plaintiff must prove that:

(1) the defendant misappropriated the plaintiffs name or likeness for the value

associated with it and not in an incidental manner or for a newsworthy purpose; (2) the

plaintiff can be identified from the publication; and (3) the defendant derived some

advantage or benefit. Brown v. Ames, 201 F.3d 654, 658 (5th Cir. 2000) (citing

Matthews v. Wozencraft, 15 F.3d 432, 437 (5th Cir. 1994)).

Texas law, like New Yorks, distinguishes between the use of a personality for

purposes of trade, on the one hand, and dissemination of news or information on the

other hand. Kimbrough v. Coca-Cola/USA,521 S.W.2d 719, 721 (Tex. Civ. App. 1975)

(quoting Gautier, 107 N.E.2d at 488); see also Matthews, 15 F.3d at 439 (a Texas right-

of-publicity claim cannot be based on newsworthy events); Whitehurst v. Showtime

Networks, Inc., No. 1:08-CV-47, 2009 WL 3052663, at *6 (E.D. Tex. Sept. 22, 2009)

(dismissing claim against a film depicting an event that was highly publicized in the

news media as a newsworthy event open to public observation).

All of the challenged programs involving Bethea are protected against right-of-

publicity claims in Texas because they all tell stories about the history of the Houston

Oilers, a topic of wide and legitimate public interest. Gautier,107 N.E.2d at 489. Of

the 32 programs in which footage of Bethea appeared during the limitations period, 16

are season highlight films that profile the growth and success of the Oilers franchise, (see,

e.g., Ex. B, No. 17,1978 Houston Oilers Season Highlight; Ex. B, No. 25, 1979

Houston Oilers Season Highlight Love Ya Blue), 11 are Game of the Week

productions that recap a specific NFL game, 2 are Americas Game programs telling



29/73

16

the story of the Pittsburgh Steelers Super Bowl championship teams, (Ex. B, Nos. 28,

30), 2 describe the history of the Pro Football Hall of Fame, (Ex. B, Nos. 27, 31, Pro

Football Hall of Fame: 85 Years of Greatness), and 1 recounts the history of the

franchise and its eventual move to Tennessee, (Ex. B, No. 29, NFL Films Presents

Remember the Oilers). All of these stories are newsworthy within the meaning of

Texas law. The Court should therefore grant summary judgment to the NFL against all

of Betheas state-law claims.

Programs showing White California and Minnesota law.3.

White played in Minnesota (Vikings) and California (San Diego Chargers) and

lives in California. Thus, either California and Minnesota law, or California law alone,

will govern his claims.

Minnesotas tort of appropriation is committed when one appropriates to his

own use or benefit the name or likeness of another. Wagner v. Gallup, Inc., 989 F.

Supp. 2d 782, 791 (D. Minn. 2013) (quotingLake v. Wal-Mart Stores, Inc., 582 N.W.2d

231, 233-36 (Minn. 1998)). Minnesota has yet to address how to deal with matters in the

public interest under its nascent right-of-publicity doctrine, butDanforth v. Star Tribune

Holdings Corp., No. A10-128, 2010 WL 4286242, at *4-5 (Minn. Ct. App. Nov. 2,

2010), holds that reporting on matters of public interest is protected against privacy-

related claims. That proposition is summarized in the Restatement (Third) of Unfair

Competition (Restatement),which explains that right-of-publicity claims are limited to

uses for purposes of trade and do not ordinarily include using a persons identity in news

reporting, commentary, entertainment, works of fiction or non-fiction or in advertising



30/73


31/73

18

B.

The challenged programs are fully protected by the First Amendment,

barring Plaintiffs right-of-publicity claims.

The First Amendment provides another independent ground for granting summary

judgment to the NFL. At the pleadings stage, the Court held that competing, reasonable

inferences arising from Plaintiffs allegations precluded it from dismissing their claims

under the First Amendment. Dryer, 689 F. Supp. 2d at 1121. But now, there is a

complete factual record regarding the challenged programs and the issue is ripe for

decision because the ultimate question of First Amendment protection is a question of

law for the Court to decide. Id. at 1119 (citing Connick v. Myers, 461 U.S. 138, 147-48

(1983)).

When a plaintiff asserts a state-law claim against expressive materials, courts must

balanc[e] the state law rights of publicity against first amendment considerations.

C.B.C. Dist. & Mktg., Inc. v. Major League Baseball Advanced Media, L.P., 505 F.3d

818, 823 (8th Cir. 2007) (citingZacchini v. Scripps-Howard Broad., 433 U.S. 562

(1977).) In every previous case involving speech about professional sports, courts have

concluded that the economic interests served by state publicity-right laws were

outweighed by the interests in distributing newsworthy speech protected by the First

states mentioned above, exempts uses that relate to the dissemination of news and

information. Tellado v. Time-Life Books, Inc., 643 F. Supp. 904, 909-10 (D.N.J. 1986).To be actionable, a use must be mainly for purposes of trade, without a redeeming

public interest, news, or historical value. Id. at 910. [I]t is irrelevant to this inquiry

whether the use concerns a story about important public events or a subject that provides

only entertainment and amusementboth are equally protected. Castro v. NYT

Television, 851 A.2d 88, 97 (N.J. Super. Ct. App. Div. 2004). The NFLs uses fall within

these protections for the same reasons that they fall within similar safe harbors under

California, Texas, Minnesota, and New York law.



32/73


33/73

20

coverage on TV, in newspapers, and elsewhere. In C.B.C., the Eighth Circuit noted that

sports command a substantial public interest, stating [t]he public has an enduring

fascination in the records set by former players and in memorable moments from

previous games. 505 F.3d at 823 (quoting Gionfriddo, 114 Cal. Rptr. 2d at 315). The

court therefore held that a commercial fantasy baseball website was entitled to full First

Amendment protection. Id.; see also CBS Interactive, 259 F.R.D. at 417-19 (applying

C.B.C. to claim brought against NFL fantasy football website).

The Tenth Circuit, in adecision addressing unauthorized parody baseball cards,

recognized that professional athletes are public figures and held that commentary on

an important social institution such as Major League Baseball constitutes protected

expression. Cardtoons, 95 F.3d at 969.

The Sixth Circuit, in a decision addressing an unauthorized painting of Tiger

Woods at the Masters, found that sports and entertainment celebrities have come to

symbolize certain ideas and values in our society and have become a valuable means of

expression in our culture. ETW, 332 F.3d at 937-38. The court therefore held that the

painting was expression which is entitled to the full protection of the First Amendment.

Id. at 937.

The Ninth Circuit, in a decision addressing the alleged unauthorized appearance of

Jim Brown, one of the NFLs all-time greatest players, in theMadden NFL video

game, found that the video game was an expressive work that was entitled to the same

First Amendment protection as great literature, plays, or books. Brown v. Elec. Arts,

Inc., 724 F.3d 1235, 1243-44, 1248 (9th Cir. 2013).



34/73


35/73


36/73


37/73


38/73


39/73


40/73

27

To help apply these tests, the Eighth Circuit has identified three factors:

(1) whether the speech is an advertisement, (2) whether it refers to a specific product, and

(3) whether the speaker has an economic motivation. See Porous Media Corp. v. Pall

Corp., 173 F.3d 1109, 1121 (8th Cir. 1999); see also Bolger v. Youngs Drug Prods.

Corp., 463 U.S. 60, 66-67 (1983). Applied to the factual record that has been developed,

the Porous Mediafactors only reinforce the conclusion that the challenged programs are

expressive speech. As this Court previously held, only when speech combines all three

factors is there strong support for the conclusion that the speech is commercial. Id. at

1116 (quotingBolger, 463 U.S. at 66). Here, the challenged programs do not combine all

three factors and are not commercial speech. 4

The challenged programs are not advertisements.a.

First, the factual record shows that the challenged programs are not

advertisements within the meaning of Porous Media. In Porous Media, the Eighth

Circuit defined an ad as speech that propose[s] a commercial transaction. 173 F.3d at

1120. The contents of the challenged programs do not meet that definition. InNew York

Times v. Sullivan, 376 U.S. 254 (1964), whichBolger cited as the source for its

advertisement factor, see463 U.S. at 66, the Supreme Court defined ads by reference to a

case involving a commercial handbill offering paid admission to a submarine. See 376

U.S. at 265-66. The contents of the challenged programs do not meet that definition,

either. The programs do not offer anything for sale, and the NFL does not pay to

4Because the challenged programs do not meet the Supreme Courts definition of

commercial speech, the NFL believes that it is unnecessary to apply the Porous Media

factors. But as demonstrated above, the factors produce the same result.



41/73


42/73

29

118:10-19, 184:4-187:1.) Frederick Fried, a sports marketing executive and former agent

for professional athletes in connection with the licensing of their publicity rights, stated

that NFL Films programs are not recognized as a form of advertisement or endorsement

and that professional athletes therefore neither expect to receive, nor do receive,

additional compensation post-retirement for their appearance in game footage in NFL

Films-like programs. (Fried Rep. (Ex. T) at 9-10, 16-20, 26-33; see also OMalley

Dep. (Ex. I) 103:13-17, 114:6-17, 116:1-17, 177:14-18, 202:18-22.)

Even Plaintiffs experts conceded these points. Although Mr. Fallon, Plaintiffs

advertising expert, contended in his report that the challenged programs are a type of

advertising, he revised his opinions at his deposition, admitting that the public does not

perceive NFL Films programs as advertising and conceding that, were he to suggest

otherwise outside of the context of this lawsuit, he would be told to go see a therapist.

(Fallon Dep. (Ex. J) 321:5-24.) As noted above, all three of Plaintiffs experts conceded

that the challenged programs are sports and entertainment programs. (Seeid.71:12-14,

385:3-17; Anson Dep. (Ex. L) 117:18-20; Kamins Dep. (Ex. K) 281:12-14, 284:15-17.)

The challenged programs do not meet the first Porous Media factor; they are not

ads.

The challenged programs do not refer to a specificb.

product that viewers can buy.

The challenged programs also do not meet the second Porous Media factor

because they do not refe[r] to a specific product apart from the speech that makes up

the programs themselves. Porous Media, 173 F.3d at 1120. Speech that is distributed for



43/73

30

its own inherent contentthat is, speech that is itself the productis fully protected.

See, e.g.,Cardtoons, 95 F.3d at 970 (finding parody baseball cards fully protected

because they do not promote an unrelated product). Porous MediaandBolgerinstruct

courts to look for references to a specific product other than the speech that the viewer

can buy. In those cases, there was such a product, whether a filter, a contraceptive

device, or paid admission to a submarine. But here, the challenged programs do not refer

to any specific product for sale, whether game jerseys, game tickets, televised showings

of upcoming games, or video games. As the Court has previously recognized, the

challenged programs are thus not like the Making of Madden program at issue in

Facenda v. N.F.L. Films, Inc., 542 F.3d 1007, 1017 (3d Cir. 2008), which focused on the

Madden NFL 06video game and feature[d] a clock at its ending that displayed the

number of days until the video games release for sale. See Dryer, 689 F. Supp. 2d at

1120 (commenting that [t]he films at issue here are not pure infomercials, as was the

film at issue in Facenda).

The programs that Plaintiffs challenge are themselves the product: they are

entertainment content addressing NFL football games.5 Plaintiffs previous argument

that NFL Football is the specific productis entirely wrong. A sport in the generic

sense is not a product that someone can buy, and treating speech about sports as

commercial on the theory that it necessarily mentions a product is not only inconsistent

with all the cases cited above, but would convert virtually all books, newspapers and

5This is what the NFL meant to convey in its briefing on its motion for judgment on the

pleadings: The NFL Videos do not use Plaintiffs identities to advertise a separate

product. They [the videos] are the product . See Dryer, 689 F. Supp. 2dat 1120 n.3.



44/73


45/73

32

Under any of the tests that this Court or the Supreme Court has used to define or

identify commercial speech, the challenged programs are expressive rather than

commercial and thus entitled to full First Amendment protection.

The expressive content of the challenged programs is4.

inextricably intertwined with any brand-enhancing elements.

Plaintiffs have never disputed that the challenged programs contain at least some

elements of expressive speech. (See, e.g., SAC 37.) Instead, their expert argues that

they also function like advertisements because they have the effect of enhancing the

NFLs brand. (SeeFallon Dep. (Ex. J) 201:25-202:8, 229:4-230:12.) No court has ever

used this brand enhancement argument to turn expressive content into commercial

speechand the argument cannot be correct, or else every successful play and movie

would lose First Amendment protection because of its positive effect on its producers

brand. Every successful Disney film, for example, would lose First Amendment

protection because it bolsters Disneys reputation. (Keller Dep. (Ex. M) 53:12-54:7,

104:11-105:4.) Indeed, Plaintiffs licensing expert Anson admitted that his approach

would require that result. (Anson Dep. (Ex. L) 123:14-125:20.) Ansons incorrect

opinion about the First Amendment status of Disney movies shows that his opinion is

equally incorrect about the challenged NFL Films programs.

Even if the challenged programs did contain some element of commercial speech,

however, they would nonetheless retain their full First Amendment protection because

any commercial element is inextricably intertwined with the expressive speech. The

inextricably intertwined doctrine holds that any commercial aspect of speech does not



46/73


47/73


48/73

35

C.

The Lanham Act does not apply to the challenged programs because

they are expressive works.

Just as courts have done with state laws, they have interpreted the Lanham Act, 15

U.S.C. 1125(a), to provide a safe harbor to expressive speech. To sustain a Lanham

Act false-endorsement claim, Plaintiffs must demonstrate that the challenged programs

made explicit misrepresentations that Plaintiffs endorsed them. Although Plaintiffs

alleged that the programs falsely represent Plaintiffs endorsement of the NFL and its

goods or services, (see SAC 89, 94, 95), the undisputed factual record now shows

that they do not. The NFL is therefore entitled to summary judgment.

The leading case establishing the Lanham Act standard isRogers v. Grimaldi, 875

F.2d 994, 999 (2d Cir. 1989). Rogersheld that when a plaintiff challenges expressive

works, he must show either (1) that his name or likeness has no artistic relevance to the

underlying work whatsoever, or, (2) if it has some artistic relevance, that the underlying

work explicitly misrepresents his sponsorship of it. Id. at 1000. Several circuits have

expressly adopted theRogerstest. See ETW, 332 F.3d at 924; Univ. of Ala. Bd. of Trs. v.

New Life Art, Inc., 683 F.3d 1266, 1278 (11th Cir. 2012);Brown, 724 F.3d at 1241-42.

The Eighth Circuit has not yet expressly adopted theRogers test, but there is no

reason to believe that it will decline to do so and thereby create a circuit split, especially

because it has appliedRogers progeny in related contexts. See Anheuser-Busch, Inc. v.

Balducci Publns, 28 F.3d 769, 776 (8th Cir. 1994) (repeatedly quoting and applying

Cliffs Notes, Inc. v. Bantam Doubleday Dell Publg Grp., Inc., 886 F.2d 490, 494 (2d Cir.

1989)). The Court should therefore applyRogersto Plaintiffs claims.



49/73


50/73

37

argument that the use of his image in the game communicated an endorsement. Instead,

it reiterated that there must be an express misrepresentation such as, Jim Brown

approves of Madden NFL. See id.; see also ETW, 332 F.3d at 936-37 (holding that

explicit statement that Woods authorized the artwork would be required). Even if Brown

had submitted survey evidence demonstrating that consumers believedthat his

appearance in the videogame communicated an endorsement, the court held that that

would not be enoughan express falsehood is required. 724 F.3dat 1246 (citingETW,

332 F.3d at 937). Here, the challenged programs do not associate Plaintiffs with a new

product, as inBrown, much less make any express representation that Plaintiffs endorse

the programs. They use footage only to accurately show games in which Plaintiffs

played. On these undisputed facts, Plaintiffs have no claim for false endorsement under

the Lanham Act.

II.

Plaintiffs Claims Are Barred By The Doctrines Of Laches, Acquiescence,

And Consent Because Of Their Decades-Long Delay In Bringing Suit AndActive Participation In Creating The Challenged Programs.

Plaintiffs knowledge of their appearances in NFL Films programs, their over two-

decade delay in bringing suit, their failure to object to the NFLs use of its copyrighted

game footage at any time before they sued, and their active participation in creating the

programs they now challenge bar their claims under state and federal law.

A.

Laches and acquiescence bar all of Plaintiffs Lanham Act claims.

First, the doctrines of laches and acquiescence bar all of Plaintiffs claims under

the Lanham Act.



51/73


52/73

39

2011), but where, as here, they are undisputed, the defenses can be applied as a matter of

law, seeMiller,454 F.3d at 980-81.

Plaintiffs inexcusably delayed in asserting their rights and1.

bringing suit.

The undisputed facts establish the first element of laches and acquiescence by

showing that Plaintiffs inexcusably delayed for years, even decades, in asserting their

rights and bringing suit.

Dryer retired from the NFL in 1981. (Dryer Dep. (Ex. F) 39:6-9.) During his

playing career, he knew that NFL Films personnel were recording footage at every

game, (seeid.100:17-21), and, by 1986 at the latest, he knew that the NFL was using

clips of this game footage in new NFL Films programs, (id.89:19-25, 92:21-93:5).

Rather than objecting, he regularly sat for NFL Films interviews after he retired, even

though he knew that NFL Films would intersperse his interview with game footage in

which he appeared. (See, e.g., id.92:24-93:5.) [T]he very first word Dryer said to the

NFL about those uses was this lawsuit in August 2009. (Id.52:22-53:5; see also id. 41:2-

10; 149:3-7; 161:25-162:4.)

Bethea retired from the NFL in 1983. (Bethea Dep. (Ex. G) 14:24-15:7.) During

his playing career, he saw NFL Films personnel on the sidelines and knew that NFL

Films [took] the game films and distribute[d] them. (Id.24:17-25:4.) Although his

memory was vague about the exact date, it is undisputed that he learned earl[y] in his

retirement that NFL Films used footage in which he appeared. (Id.33:16-21, 36:6-14.)

Between 1994 and 2007, Bethea sat for three NFL Films interviews. (Id.80:15-92:7;



53/73


54/73


55/73

42

was infringing his rights until he began watching the newly-established NFL

Network).) Throughout this entire period, the NFL had no reason to change its practices

because, as each of the three Plaintiffs concedes, he never raised the issue with the NFL

before 2009, (id.52:22-53:5; Bethea Dep. (Ex. G) 74:16-22; White Dep. (Ex. H) 130:11-

15), and sports agent Fred Fried testified, without contradiction, that professional athletes

do not expect compensation for such uses, (Fried Dep. (Ex. O) 70:4-13, 109:18-110:20,

126:14-21, 231:20-25). Had Plaintiffs successfully pressed [their] claims in a timely

manner, the NFL could have avoided the substantial economic prejudice it now faces.

Hot Wax, 191 F.3d at 824.

Second, the NFL has also suffered substantial evidentiary prejudice due to the

loss of records, the death of a witness, [and] the unreliability of memories of long past

events. A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020, 1033 (Fed. Cir.

1992). One example is the untimely passing, in 2012, of Steve Sabol, the co-founder and

creative force behind NFL Films. Sabol, who spent decades at NFL Films, directly

interacted with Plaintiffs and other retired NFL players, including multiple conversations

with Dryer that go directly to the issue of consent. (See, e.g., Dryer Dep. (Ex. F) 175:10-

176-25, 177:13-24; 183:13-185:12; 190:21-191:8.) Another example is the house fire

that White suffered in 2003, when he lost potentially valuable evidence, including

correspondence and copies of NFL Films programs. (White Dep. (Ex. H) 31:22-32:6;

184:22-185:1.) Had Plaintiffs brought their claims when they arose, the NFL would have

been able to present a more effective and efficient defenseand Plaintiffs should not be

allowed to benefit from their delay.



56/73


57/73


58/73


59/73

46

that you are using my name, everyone who Ive talked to about it thinks its exciting and

so do I. Id. at 1458. Although plaintiff never uttered the words I consent, the court

concluded that it is obvious that he did consent. Id. at 1461. In the same way, it is

obvious that Dryer and White consented to the use of game footage showing them in

challenged programs. See Jones, 815 F. Supp. 2d at 1114 (granting summary judgment

where plaintiff voluntarily posed for photographers, who she knew would display her

images to prospective buyers, for over 40 years without objection); Greenstein, 2009

WL 117368, at *10 (affirming dismissal based on implied consent where plaintiff knew

that his likeness was being captured on film and never objected).

Plaintiffs conduct also satisfies the California test for laches, which bars their

claims entirely. See Miller, 454 F.3d at 981, 997 (at summary judgment, nine-year delay

barred California right-of-publicity claim); see also Jarrow Formulas, Inc. v. Nutrition

Now, Inc., 304 F.3d 829, 842 (9th Cir. 2002) (at summary judgment, seven-year delay

barred California unfair competition and false advertising claims). In California, courts

consider a number of factors in applying laches, including delay, prejudice, and evidence

of the plaintiffs acquiescence in the challenged use. See City of Oakland v. Oakland

Police & Fire Ret. Sys., 169 Cal. Rptr. 3d 51, 83 (Cal. Ct. App. 2014); Finnie v. Town of

Tiburon, 244 Cal. Rptr. 581, 588 (Cal. Ct. App. 1988). For the same reasons that laches

bars Plaintiffs Lanham Act claims, it bars their claims under California law.

Implied consent, laches, and quasi-estoppel bar Betheas claims2.

under Texas law.

In Texas, the relevant doctrines are implied consent, laches, and quasi-estoppel.



60/73


61/73


62/73


63/73


64/73

51

performances in sports programming. See Ray v. ESPN, Inc., No. 13-cv-1179, 2014 WL

2766187, at *2-5 (W.D. Mo. April 8, 2014); Somerson v. World Wrestling Entmt,Inc.,

956 F. Supp. 2d 1345, 1353-56 (N.D. Ga. 2012). Second, all three Plaintiffs have now

conceded that their claims are solely based on the NFLs uses of game footage for its

original purpose as sports programming, thus bringing the challenged uses within the

exclusive rights to perform, display, and prepare derivative works granted by the

Copyright Act. Plaintiffs state-law claims are therefore preempted.

There is no dispute that the NFL has a valid copyright in the video clips used in

the films. Dryer, 689 F. Supp. 2d at 1121. Because the NFL owns the copyrights, the

Copyright Act grants it the exclusive rights to reproduce, distribute, perform,

display, transmi[t], and prepare derivative works based on the game footage. 17

U.S.C. 106(1)-(6). The Copyright Act protects its grant of exclusive rights by

preempting state-law claims that attempt to limit those rights. See id. 301.8

In the Eighth Circuit, state-law claims are preempted if they meet a two-part test:

(1) they address a work within the subject matter of copyright; and (2) the state-law-

created right is equivalent to any of the exclusive rights set forth in 106. See Natl Car

Rental Sys. Inc. v. Computer Assocs. Intl. Inc., 991 F.2d 426, 428-31 (8th Cir. 1993);

Heidi Ott A.G. v. Target Corp., 153 F. Supp. 2d 1055, 1067 (D. Minn. 2001).

8Section 301 provides that all legal or equitable rights that are equivalent to any of the

exclusive rights within the general scope of copyright as specified by section 106 in

works of authorship that are fixed in a tangible medium of expression and come within

the subject matter of copyright are governed exclusively by this title. [N]o person is

entitled to any such right of equivalent right in any such work under the common law or

statutes of any State. 17 U.S.C. 301(a).



65/73

52

Plaintiffs claims meet the two-prong test ofNational Car Rentaland thus are

preempted. First, although personas and athletic performances are not works within the

subject matter of copyright,Dryer, 689 F. Supp. 2d at 1121, recordingsof athletic

performances in a tangible medium such as video or film are such works, see, e.g.,17

U.S.C. 102 (listing motion pictures and other audiovisual works among the works for

which [c]opyright protection subsists);Natl Basketball Assn v. Motorola, 105 F.3d

841, 846-47 (2d Cir. 1997) (so holding for recordings of NBA games); Baltimore

Orioles, Inc. v. Major League Baseball Players Assn, 805 F.2d 663, 674-75 (7th Cir.

1986) (recordings of Major League Baseball games);Laws v. Sony Music Entmt, 448

F.3d 1134, 1144-45 (9th Cir. 2006) (recording of vocal performance).

At the pleadings stage, Plaintiffs alleged that the work at issue is not the

videos themselves, but rather Plaintiffs own identities. Dryer, 689 F. Supp. 2d at 1121.

But discovery has shown that this allegation was not correct. Instead, it is now

undisputed that Plaintiffs are not challenging any use of their identities other than in

recorded game footage, and it is further undisputed that the challenged programs use that

game footage only for its original purpose as sports programming. White, for example,

testified that his claim is that the NFL cant use its copyrighted game footage without

paying him. (See,e.g., White Dep. (Ex. H) 341:22-342:3, 342:18-25, 345:3-8.) Dryer

stated that the NFL can do what they want with their product as long as they pay

me. (Dryer Dep. (Ex. F) 147:14-17.) And Bethea testified that his claim was that any

NFL Films program that contains footage of him violates his right of publicity. (Bethea

Dep. (Ex. G) 103:16-20.) Plaintiffs claims thus meetNational Car Rentals first prong.



66/73

53

Plaintiffs claims also meet the second prong of preemption because the state-law

rights they are assertingas applied to the facts of this caseare equivalent to several

of the exclusive rights granted by 106 of the Copyright Act. The relevant question in

assessing preemption is whether, upon the facts presented and the claims actually pled,

extra state-law elements make the claim qualitatively different from a copyright

infringement claim. Murray Hill Publns, Inc. v. ABC Commcns, Inc., 264 F.3d 622,

636 (6th Cir. 2001) (internal quotation omitted), abrogated on other grounds byReed

Elsevier, Inc. v. Muchnick, 559 U.S. 154 (2010); see also Natl Car Rental, 991 F.2d at

431 (applying the extra element test). When the entirety of the allegedly

misappropriated performance is contained within a copyrighted medium and is

displayed as a performance, the state-law claim is equivalent to copyright and preempted.

Jules Jordan Video, Inc. v. 144942 Can., Inc., 617 F.3d 1146, 1153 (9th Cir. 2010)

(citation omitted).

Plaintiffs claims are that state publicity laws preclude the NFL from using game

footage of their athletic performances even for its original purpose as an athletic

performance. (See,e.g., SAC 42, 49 (arguing that NFL violates their rights by

showing game footage on NFL Network); White Dep. (Ex. H) 341:22-342:3, 342:18-25,

345:3-8.) This is the same claim that the Western District of Missouri held preempted in

Ray. There, a professional wrestler sued ESPN under Missouri state publicity law for

replaying video footage of his wrestling performances without his consent. 2014 WL

2766187, at *1. The court held that Rays claim was preempted by the Copyright Act

because his wrestling performances were part of the copyrighted material, and his



67/73

54

likenesses could not be detached from the copyrighted performances that were contained

in the films. Id., at *5.9 Because Ray complained simply about ESPN airing wrestling

performances that have been captured on video, his claim was subsumed by copyright

law and preempted.Id.(quotation marks omitted). The new Somerson decision holds

the same thing as to sales of DVDs of athletic performances, for the same reason. 956 F.

Supp. 2d at 1354. There is no distinguishingRayand Somersonhere.

Ray and Somersonare only the most recent of many decisions holding that

attempts to use state right-of-publicity laws to prevent a copyright owner from

performing, displaying, or distributing its copyrighted works are preempted by the

Copyright Act, regardless of whether the recorded performance involved sports,10

audio,11music videos,12adult films,13or other films.14 These holdings compel the

dismissal of Plaintiffs claims.

9In Ventura v. Titan Sports, Inc., 65 F.3d 725, 730 n.6 (8th Cir. 1995), another

professional wrestling case, the Eighth Circuit did not reach the issue of copyright

preemption because the defendant had not raised it, but noted that it was troubled by

the issue.10Baltimore Orioles, 805 F.2d at 674 (Major League Baseball);Ahn v. Midway Mfg. Co.,

965 F. Supp. 1134, 1138 (N.D. Ill. 1997) (martial arts).

11Laws, 448 F.3d at 1144-45 (song recording);Romantics v. Activision Publg, Inc., 574F. Supp. 2d 758, 766-67 (E.D. Mich. 2008) (song recording).12

Glovaroma, Inc. v. Maljack Prods., Inc., No. 96-cv-3985, 1998 WL 102742 , at *5-6

(N.D. Ill. Feb. 26, 1998);Armstrong v. Eagle Rock Entmt, Inc., 655 F. Supp. 2d 779,

788-90 (E.D. Mich. 2009).13Jules Jordan, 617 F.3d at 1152-53.14Fleet v. CBS, Inc., 58 Cal. Rptr. 2d 645, 650-51 (Cal. Ct. App. 1996).



68/73

55

IV.

Plaintiffs Unjust Enrichment Claims Fall With Their Publicity-Rights

Claims.

Plaintiffs unjust enrichment claims are entirely derivative of their publicity-rights

claims and rest on exactly the same alleged unauthorized use of Plaintiffs identities.

(SAC 138.) All of the NFLs arguments in support of summary judgment against

Plaintiffs right-of-publicity claims apply equally to their claims for unjust enrichment,

and summary judgment should be entered for the NFL for the same reasons. Ventura v.

Titan Sports, Inc., 65 F.3d 725, 729-730 (8th Cir. 1995) (noting that plaintiffs unjust

enrichment claim may succeed only if defendant was not entitled to use the

performance without his consent); Cheatham v. Paisano Publns, Inc., 891 F. Supp. 381,

387 n.7 (W.D. Ky. 1995) (stating that, when coupled with a right-of-publicity claim,

unjust enrichment merely forms a measure of damages and is not a separate cause of

action).

V. In The Alternative, Plaintiffs State-Law Claims Are Preempted By The

LMRA.

If the Court grants summary judgment for the NFL on the preceding grounds, then

it will be unnecessary to address preemption under the LMRA. See, e.g.,Brown v.

Cassens Transp. Co., 743 F. Supp. 2d 651, 653-54 n.2 (E.D. Mich. 2010) (declining to

address the merits of [defendants] arguments regarding preemption under the LMRA

after dismiss[ing] Plaintiffs claims on other grounds), revd on other grounds, 675

F.3d 946 (6th Cir. 2012). But if the Court does not grant summary judgment on those

grounds, resolving Plaintiffs claims will require each former players contract [to] be

examined to determine whether [publicity] rights are covered by the terms of the contract



69/73


70/73

57

requires a showing that [d]efendant, without permission, has used some aspect of

identity or persona .) (emphasis added).

Each Plaintiff signed standard player contracts consenting to the NFLs use of his

publicity rights. (SeeDryer Dep. (Ex. F) 21:10-27:5, 30:12-38:1; Ex. AA; Bethea Dep.

(Ex. G) 39:1-65:8; Ex. BB; White Dep. (Ex. H) 80:23-85:8, 87:15-88:2, 89:24-95:11,

96:23-97:25, 100:7-109:13; Ex. CC.) Before 1976, the first page of the standard player

contracts, paragraph 4, stated that the player agreed to comply with and be bound by:

the [NFL] Constitution and By-Laws, Rules and Regulations of the League. (See,

e.g., Ex. AA, at Dryer Dep. Ex. 6 4.) The then-current NFL Constitution and Bylaws

contained Section 10.7, captioned Broadcasting and Television, stated that each NFL

player:

grants to the club controlling his contract andto the League

severally and jointly, the privilege andauthority to use his

name and/or picture for publicity and/or advertising

purposes in m

Date post:	03-Jun-2018
Category:	Documents
Upload:	robert-lee
View:	222 times
Download:	0 times

Memo in Support of MOTION for Summary Judgment filed by NFL in Dryer vs NFL Films

Documents