Court's denial of Jim Brown’s Lanham Act claim ironically boosts the value of ‘publicity rights’

Electronic Arts (EA) owns one of the best computer game franchises in sports … Madden NFL. Part of its appeal is realism, and creating realism depends upon using well known character images as players, even if they are not identified by name.  Jim Brown, arguably the greatest and certainly one of the most recognizable running backs to ever play in the National Football League reasoned another’s capitalizing on his well-known image without his permission or compensation surely couldn’t be legal. His attorneys sought remedy under the Lanham Act for false endorsement.

When EA identifies National Football League players by name, it is covered under a license with the NFL and the players’ union. Versions if the games that use famous historical players use only their likenesses; many are easy to identify, such as the likeness of Jim Brown. EA does not compensate Brown for that use.

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) affirmed a lower court decision and denied Brown’s claim, reinforcing reliance on the Rogers test to determine if an expressive work deserves First Amendment insulation from the Lanham Act.

The two prongs of the Rogers test (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) state 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.”

The artistic relevance was clear. “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 key to the second prong of Rogers, is “that the creator must explicitly mislead consumers.” That was not proven.

In analyzing other cases, Bloomberg suggests a better avenue to take is seeking protection of the “celebrity” through state right-of-publicity actions. The court has rejected arguments that the Rogers test should be extended to right-of-publicity claims, reasoning that the Rogers test was developed in the Lanham Act context to balance the public’s interest in free expression with the public’s interest in being free of consumer confusion. “The right of publicity protects the celebrity, not the consumer.”