On July 31, 2013, the Ninth Circuit affirmed dismissal of the Lanham Act claims brought by Jim Brown, a former NFL star, against video game developer Electronic Arts, Inc. (EA). The court concluded that the Rogers balancing test was the appropriate standard to evaluate defendant EA’s use of Brown’s likeness in video games, and since the use of his likeness was artistically relevant to games, it is protected by the First Amendment.
Jim Brown, who played for the Cleveland Browns from 1957 – 1965, is regarded as one of the best professional football players of all time. Defendant EA, produces and sells the popular Madden NFL series of football video games. While EA and NFL have entered into licensing agreements to use the names and likenesses of current NFL players, these agreements do not cover former players, including Brown. Subsequently, Brown sued EA, alleging that EA violated § 43(a) of the Lanham Act by using his likeness in several versions of Madden NFL without permission and just compensation. The district court granted EA’s motion to dismiss and Brown appealed. 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.
Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) interprets § 43(a) of the Lanham Act as applying only to expressive works if 1) the use of the likeness has no artistic relevance to the underlying work whatsoever, or 2) it has some artistic relevance but the use explicitly misleads consumers as to the source of the work.
Brown argued that the district court should have applied either the “likelihood of confusion” test or the “alternative means” test. However, having previously rejected both tests proposed by Brown because they failed to account for the full weight of the public’s First Amendment interest in free expression, the Ninth Circuit disagreed with Brown.
Instead, the Ninth Circuit agreed with the district court that the use of Brown’s likeness was artistically relevant to Madden NFL, given the importance of incorporating Brown’s likeness to realistically recreate NFL in video game form.
Further, the key element in avoiding consumer confusion is that the creator of the work explicitly mislead consumers. The Ninth Circuit considered whether the use of Brown’s likeness would confuse Madden NFL players into thinking that Brown sponsored or endorsed the game, and whether EA made an explicit indication, overt claim, or explicit misstatement that caused this confusion.
The Ninth Circuit held that EA consumers’ misimpression does not support the claim that EA explicitly mislead consumers to believe that Brown endorsed the game. Further, alterations made to Brown’s likeness, including a change in the jersey number, demonstrated that consumers would less likely be to believe that Brown endorsed the game.
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.