IP/Entertainment Law Weekly Case Update for Motion Picture Studios and Television Networks -- August 9, 2013

Table of Contents

Brown v. Electronic Arts, Inc., USCA, Ninth Circuit, July 31, 2013
 Click here to download a PDF of the full decision.

  • Ninth Circuit affirms dismissal of NFL great Jim Brown’s Lanham Act claim against video game developer Electronic Arts, Inc., concluding that Rogers balancing test was appropriate standard to evaluate defendant’s use of his likeness in Madden NFL games, that use was artistically relevant to games and was protected by First Amendment.

Plaintiff Jim Brown is regarded as one of the best professional football players of all time, starring for the Cleveland Browns from 1957 to 1965 before his eventual induction into the NFL Hall of Fame. Defendant Electronic Arts, Inc. (EA), produces and sells video games, including the popular Madden NFL series of football video games. While EA has entered into licensing agreements to use the names and likenesses of current NFL players, these agreements do not cover former players, including Brown. Brown sued EA, alleging that EA violated § 43(a) of the Lanham Act by using his likeness in several versions of Madden NFL without compensating him. The district court granted EA’s motion to dismiss and Brown appealed, challenging the applicability of the test employed by the district court, the court’s analysis under that test and the court’s fact finding. On appeal, the Ninth Circuit affirmed the dismissal, finding that, under the Rogers standard, EA was entitled to First Amendment protection and the Lanham Act did not apply.

The district court dismissed Brown’s claim under the balancing test created in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) and adopted by the Ninth Circuit in Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002). Under Rogers, § 43(a) of the Lanham Act does not apply to expressive works unless (1) the use of the likeness has no artistic relevance to the underlying work whatsoever, or (2) if it has some artistic relevance, the use explicitly misleads consumers as to the source of the work. The Rogers test is intended to balance the public’s First Amendment interest in free expression with the public’s interest in being free from consumer confusion about affiliation and endorsement. The Ninth Circuit first explained that the Rogers test was applicable because the Supreme Court has explicitly recognized that video games are expressive works and Brown was alleging Lanham Act claims. (In an opinion released the same day in Keller v. Electronic Arts, the Ninth Circuit rejected the applicability of Rogers to NCAA football players’ right-of-publicity claims against EA. Read our summary of that decision in this IP/Entertainment Law Weekly Case Update.)

Brown argued that the district court should have applied either the “likelihood of confusion” test or the “alternative means” test. The Ninth Circuit disagreed, having previously rejected the “likelihood of confusion” test because it fails to account for the full weight of the public’s interest in free expression when expressive works are involved, and the “alternative means” test was rejected for the same reason in the Rogers decision.

Noting that, under the first prong, the level of artistic relevance “merely must be above zero,” the Ninth Circuit agreed with the district court that the use of Brown’s likeness was artistically relevant to Madden NFL. Given EA’s goal of attaining realism in the game and the importance of including Brown’s likeness to realistically re-create one of the teams, the court found it obvious that Brown’s likeness had at least some artistic relevance to the game.

Turning to the second prong of the Rogers test, the Ninth Circuit explained because that this prong aims directly to address and avoid consumer confusion in the marketplace, the key element is that the creator of the work must explicitly mislead consumers. The appeals court framed the issue as whether the use of Brown’s likeness would confuse Madden NFL players into thinking that Brown was somehow behind the game or sponsored it and whether EA made an explicit indication, overt claim, or explicit misstatement that caused this confusion. Brown offered several arguments to meet the second prong, all of which the court rejected.

First, Brown maintained that use of his likeness coupled with a consumer survey showing that a majority of the public believed use of identifying marks required permission raised a triable issue of fact. The court observed that use of a mark alone is not sufficient to satisfy the second prong and that Brown’s survey evidence did not affect the analysis. Because the use must be explicitly misleading, evidence must relate to the nature of the defendant’s behavior, not the impact of the use. Even if Madden NFL gamers believed that Brown endorsed the game, their misimpression would not support the claim that EA’s use was explicitly misleading. Second, Brown argued that certain written materials accompanying the game showed EA’s attempts to explicitly mislead consumers. The court acknowledged that this was at least the right kind of evidence but found that the materials did not show any attempt to mislead consumers, because nothing in them suggested that Brown endorsed the game. Third, Brown argued that alterations made to his likeness by EA, including changing the jersey number from 32 to 37, demonstrated an intent to mislead. The court found, however, that if these alterations had any impact, they would make consumers less likely to believe that Brown endorsed the game. Fourth, Brown cited various comments made by EA, but the court pointed out that the statements were not made to consumers and did not say anything about Brown’s endorsement of the game.

Finally, Brown argued that the district court improperly engaged in fact finding in granting EA’s motion to dismiss, asserting that the district court could not possibly have granted the motion if it accepted as true his allegations that his likeness was not artistically relevant and EA attempted to mislead consumers. The Ninth Circuit acknowledged that it must presume the truth of Brown’s allegations and draw all reasonable inferences in Brown’s favor but explained that it is not required to accept any unreasonable inferences or assume the truth of legal conclusions cast as factual allegations. In the court’s view, Brown’s allegations were legal conclusions unsupported by actual factual assertions. The Ninth Circuit also found that the district court could conclude that the likeness of a great NFL player was artistically relevant to a video game that aims to re-create NFL games, having reviewed versions of that game provided to the court as part of the complaint.

Keller v. Electronic Arts Inc., USCA, Ninth Circuit, July 31, 2013
 Click here to download a PDF of the full decision.

  • Ninth Circuit affirms district court order denying motion to strike, under California’s anti-SLAPP statute, right-of-publicity claims asserted by former college football player, rejecting video game developer EA’s contention that use of the player’s physical characteristics and jersey numbers was, as a matter of law, transformative use protected by First Amendment.

Plaintiff, a former starting quarterback for Arizona State University and the University of Nebraska, brought a putative class action (along with other former college football players) against Electronic Arts (EA), alleging that its use of his likeness in the NCAA Football series of video games violated his right of publicity under California statutory and common law. EA filed a motion to strike the complaint as a strategic lawsuit against public participation under California’s anti-SLAPP statute. The district court denied EA’s motion (read our summary of the district court’s decision here, and EA appealed.

Reviewing the district court’s ruling de novo, the Ninth Circuit panel noted the standard surrounding motions to strike under the anti-SLAPP statute. First, defendant must make a prima facie showing that plaintiff’s suit arises from an act that defendant made in connection with a public issue in furtherance of defendant’s free speech rights. Second, the court must examine whether plaintiff has established a reasonable probability that he will prevail on his claim. Here, it was undisputed that EA’s video games constituted expressive activity, and EA did not dispute that Keller had stated a right-of-publicity claim under California statutory and common law. EA maintained, however, that the challenged video game was protected speech under the First Amendment and that, therefore, Keller was unlikely to prevail on his claim.

The three-judge panel split 2-1 as to EA’s affirmative transformative use defense, with the majority rejecting EA’s contention that the video game was sufficiently transformative as to endow EA with First Amendment immunity as a matter of law. Looking to the California Supreme Court’s formulation in Comedy III Productions, Inc. v. Gary Saderup, Inc., the panel noted that the 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.” For purposes of an anti-SLAPP motion to strike, a defendant invoking the defense must establish that a reasonable fact finder could not conclude that the challenged use was transformative, and EA could only rely on the defense by establishing transformative use as a matter of law.

After cataloging a series of California cases applying the defense in right-of-publicity cases, the panel majority concluded that Keller’s challenge most closely resembled the facts of No Doubt v. Activision Publishing, Inc., in which the California Court of Appeal addressed the use of “avatars” in the Band Hero video game. There, the video game developer licensed the likeness of band members from the band No Doubt but allegedly exceeded the license’s scope by, among other things, allowing game users to manipulate various elements of the avatars’ voices. The California appellate court concluded that the developer’s use was not transformative, as a matter of law, because the video game characters were “literal recreations of the band members” doing “the same activity by which the band achieved and maintains its fame.” Following the same logic, the panel majority concluded that EA’s use of Keller’s likeness was not transformative: “EA was alleged to have replicated Keller’s physical characteristics in NCAA Football, just as the members of No Doubt are realistically portrayed in Band Hero. Here, as in Band Hero, users manipulate the characters in the performance of the same activity for which they are known in real life—playing football in this case and performing in a rock band in Band Hero.”

The panel majority also looked to the Third Circuit’s decision in Hart v. Electronic Arts, Inc., a “materially identical” challenge to EA’s use of players’ likenesses in the NCAA Football game, in which the Third Circuit relied substantially on the No Doubt decision in concluding that EA’s use was not transformative for purposes of defeating a challenge under New Jersey’s right-of-privacy law. Although federal courts are not bound by intermediate state appellate court decisions, the panel majority viewed the No Doubt case as providing sufficiently reliable indication as to what the California Supreme Court would do to support its analysis.

EA urged the court to adopt a broader First Amendment defense, borrowed from the Second Circuit’s decision in Rogers v. Grimaldi, but the panel majority declined to apply the Rogers balancing test in the right-of-privacy context. Although the Ninth Circuit had endorsed the Rogers test in Lanham Act cases, and most recently the very same day in Brown v. Electronic Arts (read our summary of the court’s opinion in this IP/Entertainment Law Weekly Case Update), the panel majority distinguished between the nature of those challenges. “As the history and development of the Rogers test makes clear, it was designed to protect consumers from the risk of consumer confusion—the hallmark element of a Lanham Act claim.” In contrast, the court stated, the right of publicity “does not primarily seek to prevent consumer confusion.” The distinction rested, in the panel majority’s view, on the fact that the right of publicity “protects the celebrity, not the consumer.” Although Rogers in fact applied the test to a right-of-publicity claim under Oregon law, the panel majority refused to adopt the test to California cases, in light of contrary California authority (particularly, the No Doubt decision). Having concluded that EA was not protected by the First Amendment as a matter of law, the panel majority affirmed the district court’s decision denying EA’s motion to strike.

Judge Sidney Thomas dissented, taking the position that the “transformative use” defense, properly applied, would encompass EA’s creative work and that EA was therefore entitled to First Amendment protection. 

Westlaw decisions are reprinted with permission of Thomson/West. If you wish to check the currency of these cases, you may do so using KeyCite on Westlaw by visiting http://www.westlaw.com/.

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