By: Michael Engle
Last July, the Ninth Circuit Court of Appeals rendered two decisions–both featuring video game maker Electronic Arts (hereinafter EA) as a defendant–delineating when plaintiffs are entitled to compensation for the video-game personae based upon their respective likenesses. In affirming both In re NCAA Student-Athlete Name & Likeness Licensing Litigation (hereinafter “In re NCAA”) and Brown v. Electronic Arts, Inc., i.e.: by ruling against and for EA, respectively, the court marked a myriad of factors in weighing plaintiffs’ rights of publicity against First Amendment protections for EA. Although these verdicts are not necessarily contradictory, it is likely that this legal question will remain “in the game” for the foreseeable future.
Former Cleveland Brown and National Football League (NFL) legend James (“Jim”) Brown filed his lawsuit against EA in response to his unauthorized placement in Madden NFL, which is EA’s longstanding and widely successful NFL video game franchise. Brown brought forth a federal question by alleging that EA violated § 43(a) of the Lanham Act, which, in relevant part, provides a civil cause of action against:
[a]ny person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which … is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person[.]
Brown’s legal theories centered around Madden NFL’s inclusion of the 1965 Cleveland Browns, of which Brown was a notable member in real life, as a historical team within the video game. Additionally, Brown alleged that his likeness was improperly used in constructing an “All-Browns” team in Madden NFL. Detrimental to Brown’s lawsuit, his alleged Madden NFL doppelgänger sported jersey number 37, instead of the proper number 32. This factor, combined with EA’s denial that Brown’s likeness was used, rendered the Lanham Act improper.
Brown stated that the Lanham Act does not apply to expressive works, which has been held to categorically include video games, “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.” Under a strict reading of the Rogers test, in order for Brown’s likeness to have “no artistic relevance to the underlying work whatsoever,” there would have to be a greater disparity between Jim Brown and the associated product. In this case, the avatar’s different jersey number triggered a failure of the latter prong, for Brown’s trademark 32 was omitted. Meanwhile, the 37 that EA used instead could not mislead people into thinking that the Madden NFL character was Jim Brown; it could only cause consumers to believe that Jim Brown was not in the game. Accordingly, Brown’s Lanham Act cause of action was dismissed; with no further federal questions to consider, the district court declined supplemental jurisdiction on the other claims, which all implicated state laws.
In In re NCAA, EA was not afforded the same immunity from the Lanham Act as it enjoyed in Brown. On a superficial factual basis, Madden NFL’s “main attraction” is an annual video game featuring engineered game play according to real contemporary players on accurate rosters, with Jim Brown as an inherent example of an “old-timer.” At the same time, EA also created a similar video game, NCAA Football, based upon collegiate football teams within the National Collegiate Athletic Association (hereinafter “NCAA”). In re NCAA co-plaintiff Samuel M. Keller, who was the starting varsity quarterback at Arizona State University in 2005 and who, subsequently, held the same position at the University of Nebraska in 2007, noted that all contemporary NCAA football players matched their respective NCAA Football avatars, by virtue of each actual jersey number, height, weight, build, skin tone, hair color, and home state. Furthermore, in some cases, EA solicited NCAA football equipment managers to disclose certain players’ idiosyncratic behaviors, so that they could be incorporated into NCAA Football as well. On the other hand, the avatars’ respective hometowns did not match, and the avatars were, by default, anonymous; however, NCAA Football allowed customers to download a supplemental file to assign true names to the respective avatars.
Not surprisingly, Keller noted that in the 2005 edition of NCAA Football, the quarterback for Arizona State not only wore Keller’s #9, but also exhibited Keller’s height, weight, skin tone, hair color, hair style, handedness, home state, play style (pocket passer), visor preference, facial features, and school year attributes. Subsequently, the avatar corresponding to the Nebraska quarterback in the 2008 edition of NCAA Football matched Keller in all of those facets, except for the jersey number, because, as Keller charged, he belatedly changed his jersey number.
For these reasons, the Ninth Circuit refused to grant EA the Rogers affirmative defense that was granted in Brown. This judicial test contributed to the Ninth Circuit’s denial of EA’s motion to dismiss In re NCAA, even though a like previous motion by EA–to, similarly, dismiss a former football player’s complaint for damages arising from the uncompensated use of his likeness–was granted and upheld by the same court.
 Jonathan Stempel, Ex-NCAA athletes score court victory over EA video games, REUTERS (July 31, 2013, 3:32 PM), http://www.reuters.com/article/2013/07/31/us-electronicarts-lawsuit-idUSBRE96U0VA20130731.
 In re NCAA Student-Athlete Name & Likeness Licensing Litigation, ___ F.3d ___, 107 U.S.P.Q.2d 1629, 2013 WL 3928293 (9th Cir. 2013) (hereinafter “In re NCAA”).
 Brown v. Electronic Arts, Inc., 2009 WL 8763151 (C.D. Cal. 2009), aff’d ___ F.3d ___, 107 U.S.P.Q.2d 1688, 2013 WL 3927736 (9th Cir. 2013).
 Brown, 2013 WL 3927736 at *1.
 Id.; 15 U.S.C. § 1125(a).
 Brown, 2013 WL 3927736 at *1; 15 U.S.C. § 1125(a)(1).
 Brown, 2013 WL 3927736 at *4.
 Brown, 2009 WL 8763151 at *1.
 Id.; Brown, 2013 WL 3927736 at *8.
 Brown, 2013 WL 3927736 at *9; In re NCAA, 2013 WL 3928293 at *1 (stipulating that video games are entitled to First Amendment protection).
 Id. at *4, quoting Rogers v. Grimaldi, 875 F.2d 994, 999 (2d. Cir 1989).
 Id. at *6 (stating that EA did not produce Jim Brown Presents Pinball, which, hypothetically, would have satisfied the former condition of the Lanham Act).
 Brown, 2013 WL 3927736 at *8.
 Brown, 2009 WL 8763151 at *5-6.
 In re NCAA, supra note 4.
 In re NCAA, 2013 WL 3928293 at *2.
 In re NCAA, 2013 WL 3928293 at *8-10.
 Id. at *11.