Antitrust Law Daily Wrap Up, ADVERTISING—9th Cir.: Former NFL player’s Lanham Act claim for unauthorized use of likeness in Madden NFL video games barred by First Amendment, (Aug 1, 2013)

By Cheryl Beise, J.D.

The First Amendment barred a Lanham Act claim filed by football legend Jim Brown against Electronic Arts for unauthorized use of his likeness in Madden NFL video games, the U.S. Court of Appeals in San Francisco has ruled (Brown v. Electronic Arts, Inc., July 31, 2013, Bybee, J.). Dismissal of Brown’s Lanham Act §43(a) claim by the federal district court in Los Angeles was affirmed.

EA has produced the Madden NFL series of football video games since 1989. The Madden NFL series allows users of the games to control avatars representing professional football players to participate in simulated NFL games. Although EA enters into licensing agreements with the NFL and NFL Players Association (“NFLPA”) for its use of the names and likenesses of current NFL players, Brown, as a former player, was not covered by those agreements and never agreed to allow EA to use his likeness in Madden NFL. Brown asserted that EA used his likeness in several versions of the game dating back at least to 2001 but never compensated him.

In 2009, Brown filed suit against EA, claiming that use of his likeness in the Madden NFL games violated § 43(a) of the Lanham Act. Brown also brought claims under California law for invasion of privacy and unfair and unlawful business practices. The district court granted EA’s motion to dismiss Brown’s Lanham Act claim and declined to exercise supplemental jurisdiction over Brown’s state-law claims. Applying the Second Circuit’s Rogers artistic relevance test, the district court found that EA’s First Amendment rights in its expressive works outweighed Brown’s Lanham Act endorsement rights.

On appeal, Brown did not disagree that the Rogers test was relevant to his claim, but he argued that the district court should have applied the “likelihood of confusion” and the “alternative means” tests, in addition to the Rogers test. Brown also contended that the district court erred in its application of Rogers.

Expressive works. Section 43(a) of the Lanham Act protects the public’s interest in being free from consumer confusion about affiliations and endorsements. Although § 43(a) generally relates to the use of trademarks or trade dress, it also encompasses claims relating to the use of a public figure’s persona or likeness. However, section 43(a)’s protection against consumer confusion is limited by the First Amendment, particularly if the product involved is an expressive work, the Ninth Circuit explained.

In Brown v. Entertainment Merchants Ass’n, 131 S.Ct. 2729 (2011), the U.S. Supreme Court made it clear that video games, such as Madden NFL, are expressive works entitled to full First Amendment protection, like books, plays, and movies. Each version of Madden NFL— featuring characters (players), dialogue (between announcers), plot (both within a particular simulated game and more broadly), and music—was unquestionably an expressive work, according to the court

Rogers Test

To reconcile a defendant’s First Amendment interests with a plaintiff's Lanham Act claim, the Ninth Circuit has adopted the framework set forth by the Second Circuit in Rogers v. Grimaldi, 875 F.2d 994 (2nd Cir. 1989). In Rogers, the Second Circuit held that the right of publicity did not bar use of the title “Ginger and Fred” for a movie because the title clearly related to the content of the movie (i.e., was artistically relevant) and was not a disguised advertisement for the sale of goods and services or a collateral commercial product.

While some courts have limited the Rogers test to cases involving titles of expressive works, the Ninth Circuit has consistently also employed the Rogers test in § 43(a) cases where the trademark or other identifying material in question is used in the body of an expressive work, as in Madden NFL.

The Ninth Circuit rejected Brown’s argument that the “likelihood of confusion” and the “alternative means” tests applied in this case. The court explained that it has previously rejected both tests because they fail to account for “the full weight of the public’s interest in free expression” when expressive works are involved. “The only relevant legal framework for balancing the public’s right to be free from consumer confusion about Brown’s affiliation with Madden NFL and EA’s First Amendment rights in the context of Brown’s § 43(a) claim is the Rogers test,” the court reiterated.

Under the two-part Rogers test, as applied in the Ninth Circuit, an artistic work's use of a trademark that would otherwise violate the Lanham Act in either the title or the body of the work is not actionable unless (1) the use of the mark has “no artistic relevance to the underlying work whatsoever” or (2) it has some artistic relevance, but “explicitly misleads as to the source or the content of the work.” In this case, Brown failed to present any triable issues of fact as to either prong.

Artistic relevance prong. The district court correctly determined that EA’s use of Brown’s likeness was artistically relevant to the Madden NFL games, according to the Ninth Circuit. Brown argued that EA’s denials that it did not use Brown’s likeness (in games released since 1998) provided a basis for questioning the court’s artistic relevance finding. However, in order to have a valid § 43(a) claim based on artistic irrelevance, Brown had to allege that EA used his likeness in Madden NFL. In the context of a motion to dismiss, the court was constrained to accept Brown’s factual allegations as true and to reject EA’s denials that it did not use Brown’s likeness. Brown was accordingly precluded from using EA’s denials “as support for artistic irrelevance,” the court reasoned.

Brown also argued that wooden application of the artistic relevance prong of the Rogers test— requiring a finding of no artistic relevance—amounted to an “inflexible and mechanical rule that more or less automatically protects expressive works regardless of the deception involved.” However, the Rogers test only applies when First Amendment rights are at their height, i.e., when expressive works are involved. “[S]o it is no surprise that the test puts such emphasis on even the slightest artistic relevance,” the court said.

Explicitly misleading prong. In order to show that the Madden NFL games were “explicitly misleading” under Rogers’ second prong, Brown was required to show that an “explicit indication,” an “overt claim,” or an “explicit misstatement” caused Madden NFL game users to believe that Brown was somehow behind the games or that he sponsored EA’s product. None of Brown’s arguments purporting to establish EA’s explicitly misleading conduct were availing.

Brown first presented evidence in the form of a consumer survey to show that the majority of the public believes that identifying marks cannot be included in products without permission. However, to be relevant under Rogers’ second prong, the evidence must relate to the nature of the behavior of the identifying material’s user, not the impact of the use, the court noted. “Even if Brown could offer a survey demonstrating that consumers of the Madden NFL series believed that Brown endorsed the game, that would not support the claim that the use was explicitly misleading to consumers,” the court said.

Brown next contended that certain statements accompanying game materials regarding “[f]ifty of the NFL’s greatest players named to the “All Madden, All Millennium” team “explicitly represents that Brown was in EA’s game” because Brown is one of the fifty greatest NFL players of all time. However, such statements, while probative of EA’s use of Brown’s likeness in the game, did not suggest that the fifty NFL players named to the “All Madden, All Millennium” team endorsed EA’s game, the court reasoned.

Brown also pointed to changes EA made to his likeness in certain versions of Madden NFL (such as changing the number on the avatar’s jersey) as satisfying Rogers’ second prong. However, EA’s attempts to “scramble” Brown’s likeness would make consumers less likely to believe that Brown endorsed Madden NFL, the court observed.

Lastly, Brown cited various comments made by EA officials. The statements made to Brown’s attorneys were irrelevant to consumer confusion. One statement allegedly made at a law school conference—indicating that EA had obtained players’ permission to use their images and likenesses in games—was not made to consumers and did not show that Brown endorsed Madden NFL.

Fact-finding. Brown also argued that the district court improperly engaged in fact-finding in granting EA’s motion to dismiss. However, Brown offered no facts that could plausibly support a finding that EA’s use of Brown’s likeness was not artistically relevant to Madden NFL or that EA explicitly misled consumers as to his involvement in the games, the court determined. “The Rogers test tells us that, in this case, the public interest in free expression outweighs the public interest in avoiding consumer confusion,” the court concluded.

The case is No. 09-56675.

Attorneys: Kelli L. Sager (Davis Wright Tremaine LLP) for Electronic Arts, Inc. Ronald S. Katz (Manatt, Phelps & Phillips, LLP) for James “Jim” Brown. Nathan Siegel (Levine Sullivan Koch & Schulz, L.L.P.) for amici curiae.

Companies: Electronic Arts, Inc.

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