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Court clears new lane for Jim Brown in video game litigation

A virtual Pierre Garcon evades Eagles defenders in an in-game screenshot of Madden NFL 25, EA Sports’ newest version of the flagship football franchise. Browns legend Jim Brown sued the gaming juggernaut for using his likeness without providing compensation, and he may yet find a foothold with right-of-publicity claims. (AP Photo/EA Sports)

DANIEL W. WERLY
ROBERT S. BRESSLER
Law Bulletin columnists

Published: September 16, 2013

Two recent federal court opinions have narrowed the focus of class-action lawsuits brought by former athletes against sports video game maker Electronic Arts (EA). The overarching issue in both cases is the balance between trademark and similar rights on one hand and First Amendment rights on the other.

On July 31, the 9th U.S. Circuit Court of Appeals affirmed the dismissal of a case brought by former Cleveland Browns legend Jim Brown against EA. Brown v. Electronic Arts Inc., No. 09-56675. Brown brought his claims under Section 43(a) of the Lanham Act and under California state laws regarding rights of publicity.

Brown alleged that several versions of the EA video game Madden NFL used his likeness without providing compensation. Each version of Madden NFL includes the current year’s NFL teams with the teams’ current roster.

Some versions also include historic and all-time teams. While the historic and all-time teams do not provide player names, the players are recognizable based on their team affiliations, playing position, ages, numbers and physical characteristics.

EA enters into licensing agreements with the NFL and NFL Players Association for its use of the names and likenesses of current NFL players. However, former players who can be identified on the historic or all-time teams, such as Brown, are not covered by this or any other agreement with EA.

In determining whether EA’s use of Brown’s likeness violated § 43(a) of the Lanham Act, the court applied the so-called “Rogers test.” Rogers v. Grimaldi, 875 F.2d 994 (2nd Cir. 1989).

In order for Brown to succeed under this two-prong test, he was required to show his likeness had no artistic relevance to the underlying work whatsoever; or if there is some artistic relevance, the identifying material explicitly misleads consumers that he is somehow behind or sponsors the product.

The 9th Circuit found that Brown could not satisfy either prong of the Rogers test and affirmed the district court’s dismissal.

Specifically, the court held that the first prong was not satisfied because EA’s use of Brown’s likeness as part of the historic or all-time teams in the game obviously had at least some artistic relevance to the game. As to the second prong, the court held that Brown provided insufficient factual support (he attempted to use consumer surveys and a statement by an EA official at an academic conference) to demonstrate that EA explicitly misled consumers as to his involvement.

However, in a footnote the court stated: “We emphasize that this appeal relates only to Brown’s Lanham Act claim. Were the state causes of action before us, our analysis may be different and a different result may obtain.” The 9th Circuit cited to another opinion involving EA released the same day. Keller v. Electronic. Arts Inc., No 10-15387.

In Keller — a former Division I quarterback at Arizona State University and, later, the University of Nebraska — brought a class action against EA for (among other things) allegedly violating his right of publicity under California law.

The suit alleged that EA’s NCAA Football video game series used his likeness without permission in including an avatar with his physical characteristics in the game. EA filed a motion to strike Sam Keller’s right-of-publicity claim as a strategic lawsuit against public participation (SLAPP) under the state’s anti-SLAPP statute. The district court denied the motion.

The central issue on appeal to the 9th Circuit was whether EA had a valid affirmative defense to the right-of-publicity claim.

First, the court rejected EA’s transformative-use defense.

That state law defense is “a balancing test between the First Amendment and the right of publicity based on whether the work in question adds significant creative elements so as to be transformed into something more than a mere celebrity likeness or imitation.”

Relying on a 2011 California state court decision in a case brought by the band No Doubt, the court held that EA’s avatar of Keller in its games was not “transformative” because it used Keller’s likeness in the same activity and in the same college football setting for which he is known in real life.

Second, the court rejected EA’s request that the court extend the Rogers test to right-of-publicity claims. While admitting the existence of some overlap between the Rogers test and the transformative-use test, the court distinguished the two tests because the Rogers test under the Lanham Act is designed to protect the consumer, while the right of publicity is designed to protect the celebrity.

Thus, the transformative use test is the proper analysis and the court affirmed the lower court’s denial of EA’s motion to strike.

The 9th Circuit’s decision green lights Keller and other related cases to move forward, and also likely preserves Brown’s right-of-publicity claims in his lawsuit against the video game maker.

While these cases still have a long way to go until final resolution, the recent 9th Circuit decisions have upheld former athletes’ right of publicity claims on the pleadings and should permit the plaintiffs to obtain important discovery from EA.

The battle ahead will pit an athlete’s right of publicity against EA’s First Amendment rights, an issue that could eventually be decided by the U.S. Supreme Court.

Daniel W. Werly is an associate in the business litigation and dispute resolution practice group and member of the sports industry team at Foley & Lardner LLP. He focuses his practice on complex commercial litigation, including sports litigation, breach-of-contract claims, consumer class actions and intellectual property disputes. He can be reached at dwerly@foley.com. Robert S. Bressler is a litigation associate at Foley & Lardner and is a member of the firm’s sports industry team. He focuses on complex commercial litigation matters including breach-of-contract claims, breach-of-fiduciary-duty claims, employment disputes, securities disputes and sports litigation. He can be reached at rbressler@foley.com.


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