Jim Brown, a well-known football player, alleged that EA
violated the Lanham Act by using his likeness in Madden NFL. The 9th
Circuit uses the Rogers test to
balance First Amendment interests in free expression against the public
interest in freedom from confusion about affiliation and endorsement when it
comes to expressive works. Therefore,
Brown lost, despite a different result on right of publicity claims in Keller on the same day (extended rant to
follow about valuing the private interest in making money more heavily than the
private interest in making money + the public interest in avoiding deception);
the court emphasized that the outcome might have been different with a right of
publicity claim, but that was dismissed and will be litigated at the state
level.
Madden NFL allows
users to control avatars representing pro players. Each version includes the current year’s NFL
teams, and each avatar on those teams is designed to mirror a real current NFL
player, including the player’s name, jersey number, physical attributes, and
physical skills. Some versions also
include historical and all-time teams, for which no names are used. But the players are still recognizable “due
to the accuracy of their team affiliations, playing positions, ages, heights,
weights, ability levels, and other attributes.”
EA licenses names and likenesses of current players from the NFL and NFL
Players Association, but former players like Brown aren’t covered.
Rogers is the test
for balancing First Amendment rights against §43(a) interests in cases
involving expressive works, not just for titles but for material in the body of
a work. E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d
1095 (9th Cir. 2008). The court rejected
Brown’s invitation to apply the likely confusion test of Dr. Seuss Enterprises,
L.P. v. Penguin Books USA, Inc., 109 F.3d 1394 (9th Cir. 1997), or the
“alternative means” test found in International Olympic Committee v. San
Francisco Arts & Athletics, 781 F.2d 733 (9th Cir. 1986), aff’d on other
grounds, S.F. Arts & Athletics, Inc. v. U.S. Olympic Comm., 483 U.S 522
(1987). The ordinary likely confusion
test fails to account for “the full weight of the public’s interest in free
expression” when expressive works are involved. (I assume then that The Cat NOT in the Hat was not an expressive work? Oh, never mind.) Rogers
rejected the adequate alternative means test for the same reason, and the 9th
Circuit adopted that reasoning.
Under Rogers, the
level of artistic relevance merely must be above zero. “This black-and-white rule has the benefit of
limiting our need to engage in artistic analysis in this context.” (Citing Bleistein’s nondiscrimination principle; it’s too bad that somehow the right
of publicity justifies adding art criticism to the judge’s role.) And use of Brown’s likeness was artistically
relevant, because as Brown himself argued, “EA prides itself on the extreme
realism of the games.” (So, artistic
relevance will turn into a right of publicity violation for works—okay, just
video games—in the realist mode.) The ’65
Cleveland Browns can’t be the ’65 Cleveland Browns without the players who
played for the ’65 Cleveland Browns, especially the team’s most famous player,
Brown. This was at least artistic
relevance more than zero. It didn’t
matter that he was just one of many players in the game.
Brown argued that, as in Parks v. LaFace Records, 329 F.3d
437 (6th Cir. 2003), EA had denied Brown’s relevance/importance to Madden NFL. But in Parks,
it wasn’t just Outkast’s denial that the song Rosa Parks was about Parks that mattered; the lyrics weren’t about
her. Even if EA made the same denial as
Outkast did, which it didn’t, the content
of the games was clearly related to Brown.
Plus, EA denied using certain aspects of Brown’s likeness (in letters,
EA officials have claimed that “Brown has not appeared in any Madden NFL game
since 1998,” and that “Brown’s name and likeness does not appear in Madden NFL
08 or any packaging or marketing materials associated with the product”).
But EA didn’t deny that Brown’s likeness was relevant to the
games; rather, it denied that Brown’s likeness was present. If the denials were
true, then Brown had no claim at all, whereas Outkast didn’t deny that it used
Parks’ name. “If artistic irrelevance
can only be proven by accepting the truth of EA’s denial of the use of Brown’s
likeness,” Brown couldn’t make out a Lanham Act claim. Plus, on a motion to dismiss, Brown’s
allegations had to be accepted as true, and Brown alleged that his likeness was
used. (One reading is that Brown was
implicitly trying to re-import the rejected “adequate alternative means” test
into artistic relevance by arguing that the fact that his name had already been
removed proved that there wasn’t artistic relevance to his identity, since the
game could obviously survive without certain elements of his identity. Still a losing argument, though.) Parks worried
that a celebrity’s name could be “appropriated solely because of the vastly
increased marketing power of a product bearing the name of [the celebrity].” This was a “legitimate concern,” but “the
court’s determination that the lyrics of Outkast’s song may very well have
nothing to do with Rosa Parks or the civil rights movement [] made that concern
much more realistic in that case than in this one.” EA didn’t make Jim Brown Presents Pinball, with no relation to Brown or football
beyond the title; it made a football game featuring likenesses of thousands of
current and former NFL players, including Brown. (Periodic reminder that this rationale grants First Amendment protection versus
the Lanham Act, but strips First
Amendment protection versus the right of publicity.)
Brown also invoked American Dairy Queen Corp. v. New Line
Productions, Inc., 35 F. Supp. 2d 727 (D. Minn. 1998), where the losing
defendant admitted that it didn’t intend the title Dairy Queens to refer to plaintiff, and therefore the court found
that it could express its ideas in other ways.
This was both inapposite on the facts and not an application of Rogers.
Brown complained that the relevance-above-zero standard
rendered Rogers, which was supposed
to balance First Amendment interests against the interest in preventing
deception, “an inflexible and mechanical rule that more or less automatically
protects expressive works regardless of the deception involved. But a balance
need not be designed to find each of the sides weightier with equal frequency.” (Periodic reminder that the companion right
of publicity case is going to reject Rogers
because it would mean defendants would win too often, just like the Third
Circuit did in Hart.)
Rogers clearly
explained that its test would normally prevent a Lanham Act claim against an
expressive work. “‘Intellectual property rights aren’t free: They’re imposed at
the expense of future creators and of the public at large,’ White v. Samsung
Elecs. Am., Inc., 989 F.2d 1512, 1516 (9th Cir. 1993) (Kozinski, J., dissenting
from denial of rehearing en banc), and the Rogers
test applies when this expense is most significant.” (Ed. note: OK, irony meter pegged; Kozinski,
of course, is talking about the right of publicity.)
Brown argued that he could prevail on the “explicitly
misleads” part of Rogers, even if there
was artistic relevance. Explicitness is
key here. Implicit suggestions won’t suffice,
given the risk to artistic expression of broadly interpreting endorsement or
sponsorship. Brown argued that the use
of his likeness in the game plus a consumer survey “demonstrating that a
majority of the public believes that identifying marks cannot be included in products
without permission” raised a triable fact on explicitness. Use of a mark alone can’t be explicitly
misleading; that would render Rogers
a nullity. “Adding survey evidence
changes nothing.” Evidence of explicit
misleadingness can only come from the “nature of the behavior of the
identifying material’s user,” not “the impact of the use.” Rogers
rejected a survey; ETW v. Jireh also rejected
a survey purporting to find 60% confusion over affiliation/connection, because
the risk of incorrect inferences/misunderstandings was outweighed by the
interest in artistic expression.
Brown also argued that certain written materials were
explicitly misleading; this was at least the right kind of evidence, but the
statements to which he pointed didn’t show any attempt to mislead:
Brown points to materials that say
that one of the game’s features was the inclusion of “[f]ifty of the NFL’s
greatest players and every All-Madden team.” Since Brown is one of the fifty
greatest NFL players of all time and has been named to the “All Madden, All
Millennium” team, Brown argues that the statement “explicitly represents that
Brown was in EA’s game.” But Brown needs to prove that EA explicitly misled
consumers about Brown’s endorsement
of the game, not that EA used Brown’s
likeness in the game; nothing in EA’s promotion suggests that the fifty NFL
players who are members of the All Madden, All Millennium team endorse EA’s
game. (emphasis added)
This was true and not misleading.
Brown then argued that changes in his likeness were
explicitly misleading: EA “made changes to certain versions of the game that
might make a consumer of the game less confident that the player in question
was intended to be Brown,” most notably changing the avatar’s jersey number
from 32 to 37. Whatever EA’s litigation-avoidance
motives in “scrambling” his likeness, “an action that could only make consumers
less likely to believe that Brown endorsed Madden
NFL cannot possibly satisfy the second prong of the Rogers test.” Likewise,
various comments made by EA officials weren’t explicitly misleading. They allegedly contradicted statements to
Brown’s attorneys that “Brown has not appeared in any Madden NFL game since
1998” and that “Brown’s name and likeness does not appear in Madden NFL 08 or
any packaging or marketing materials associated with the product” by saying at
a USC Law School conference that EA could use images and likenesses of players
because it had written authorization from the players and the NFL. Statements in letters to Brown’s attorneys were
irrelevant; they were neither made to consumers nor said anything about
endorsement.
The statement at the conference, too, was made to a limited
audience, not to consumers. “If a similar
statement appeared on the back cover of a version of Madden NFL, that might
satisfy the ‘explicitly misleading’ prong, or at least raise a triable issue of
fact, but a statement made at an academic conference about all of the
likenesses used in the game could not realistically be expected to confuse
consumers as to Brown’s involvement.”
Brown also argued that using the (licensed) logo of the NFL Players
Association and the (true) statement “Officially Licensed Product of NFL
PLAYERS” on the packaging was explicitly misleading, since it could be
understood by consumers to mean that retired players, including Brown, endorsed
the game. The court dodged this argument
(which raises complex issues of the validity of the NFL Players mark, if you
think about it) by holding that Brown failed to raise the argument in his
opening brief. For the same reason, it
declined to address Brown’s argument that using his likeness on the back covers
of packages was explicitly misleading (though, per Rogers, it really can’t be, for the same reason that use of a name
alone can’t count as explicitly misleading).
1 comment:
thanks - looking forward to the post on Keller
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