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.