Ninth Circuit Affirms That Jim Brown Has No False Endorsement Claim vs. Madden NFL
By Tony Dutra
Famed football player Jim Brown cannot make a false endorsement claim under the Lanham Act for using his likeness in Madden NFL football video games, the U.S. Court of Appeals for the Ninth Circuit held July 31 (Brown v. Elec. Arts, Inc., 9th Cir., No. 09-56675, 7/31/13).
Affirming the case dismissal by a lower court, the appeals court reaffirmed that the Rogers test is best for determining the balance of whether an expressive work–including a video game–deserves First Amendment protection compared to the protections available to individuals under the Lanham Act.
No Names in Historical Versions of Madden NFL
James “Jim” Brown was a highly successful running back who last played for the Cleveland Browns in 1965.
Brown sued Electronic Arts Inc. in the U.S. District Court for the Central District of California for a violation of Section 43(a) of the Lanham Act, 15 U.S.C. §1125(a)(1), by EA’s use of Brown’s likeness in its Madden NFL football video games.
Versions of the games using current National Football League players identify the players by name, under a license with the league and the players’ union. Versions with historical players–the ones challenged by Brown–use only likenesses, but, combined with other information on the players, it is easy to identify the likeness of Jim Brown. EA has not compensated Brown for using his likeness.
Judge Florence-Marie Cooper granted EA’s motion to dismiss because Brown’s complaint failed to state facts that would meet either prong of the Rogers test, set forth by the Second Circuit in Rogers v. Grimaldi, 875 F.2d 994, 10 U.S.P.Q.2d 1825 (2d Cir. 1989), and adopted by the Ninth Circuit in Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 63 U.S.P.Q.2d 1715 (9th Cir. 2002).
Recommitted to Rogers Test
Judge Jay S. Bybee began with the observation that, based on Jim Brown’s career and post-football activities, “There is no question that he is a public figure whose persona can be deployed for economic benefit.”
The court next reaffirmed the Ninth Circuit’s commitment to using the Rogers test “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.” The two prongs of the test dictate, the court said, that the Lanham Act should not be applied to expressive works:
- “unless the [use of the trademark or other identifying material] has no artistic relevance to the underlying work whatsoever, or,
- “if it has some artistic relevance, unless the [trademark or other identifying material] explicitly misleads as to the source or the content of the work.”
Artistic Relevance Clear
Madden NFL is not Anna Karenina or Citizen Kane, but it is nevertheless an expressive work and entitled to the same First Amendment protection, the court said, citing Brown v. Entertainment Merchants Ass’n, 131 S. Ct. 2729, 2733 (2011), an unrelated case involving video games.
As to the first Rogers prong, the artistic relevance “merely must be above zero,” the court said, quoting E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095, 1100, 88 U.S.P.Q.2d 1691, 1694 (9th Cir. 2008) (218 PTD, 11/12/08).
“Given the acknowledged centrality of realism to EA’s expressive goal, and the importance of including Brown’s likeness to realistically recreate one of the teams in the game, it is obvious that Brown’s likeness has at least some artistic relevance to EA’s work,” the court said.
The court distinguished Parks v. LaFace Records, 329 F.3d 437, 66 U.S.P.Q.2d 1735 (6th Cir. 2003) (93 PTD, 5/14/03), where evidence of artistic relevance was potentially lacking when a song by the group OutKast was clearly not intended to be about civil rights hero Rosa Parks. In contrast here, the court said, “the content of the Madden NFL games–the simulation of NFL football–is clearly related to Jim Brown, one of the NFL’s all-time greatest players.”
A parallel to Parks would have instead been an EA game titled Jim Brown Presents Pinball, the court said, trading off Brown’s name with no relation to the football player beyond the title. Instead, “[EA] produced a football game featuring likenesses of thousands of current and former NFL players, including Brown,” the court said. “Comparing this case to Parks does not further Brown’s cause.”
No Misleading as to Involvement
As to the second prong of Rogers, the court said, “It is key here that the creator must explicitly mislead consumers.”
The court recited the question at issue by borrowing quotes from E.S.S. and Rogers and substituting the relevant facts of the instant case: “We must ask ‘whether the [use of Brown's likeness] would confuse [Madden NFL] players into thinking that [Brown] is somehow behind [the games] or that [he] sponsors [EA's] product,’ … and whether there was an ‘explicit indication,’ ‘overt claim,’ or ‘explicit misstatement’ that caused such consumer confusion.”
Brown offered consumer survey evidence that the public believes Brown’s permission was needed before EA could have included his likeliness, but the court was not convinced. “To be relevant, evidence must relate to the nature of the behavior of the identifying material’s user, not the impact of the use.”
And though EA made some statements that indicated one of the likenesses was Brown’s, the court said that “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.”
A further statement by an EA official at an academic conference was “perhaps the closest Brown comes” to a deliberately misleading representation, but it was to a limited audience and “not to consumers,” the court said. “If a similar statement appeared on the back cover of a version of Madden NFL, that might satisfy the ‘explicitly misleading’ prong,” the court conjectured.
Summing up its review of the second prong, the court said, “the factual support Brown offers is simply of the wrong type. Brown would need to demonstrate that EA explicitly misled consumers as to hisinvolvement.”
Judge Sidney R. Thomas and Judge Gordon J. Quist of the U.S. District Court for the Western District of Michigan, sitting by designation, joined the opinion.
Ronald S. Katz of Manatt, Phelps & Phillips, Palo Alto, Calif., represented Brown. Kelli L. Sager of Davis Wright Tremaine, Los Angeles, represented EA.
As recently reported in a Special Report in this journal, the Ninth Circuit’s approach is at odds with the Third Circuit’s analysis in Hart v. Electronic Arts Inc., No. 11-3750, 107 U.S.P.Q.2d 1001 (3d Cir. May 21, 2013) (100 PTD, 5/23/13).