Jim Brown, a well-known football player, alleged that EA violated the Lanham Act by using his likeness in Madden NFL. The 9th Circuit uses the Rogers test to balance First Amendment interests in free expression against the public interest in freedom from confusion about affiliation and endorsement when it comes to expressive works. Therefore, Brown lost, despite a different result on right of publicity claims in Keller on the same day (extended rant to follow about valuing the private interest in making money more heavily than the private interest in making money + the public interest in avoiding deception); the court emphasized that the outcome might have been different with a right of publicity claim, but that was dismissed and will be litigated at the state level.
Madden NFL allows users to control avatars representing pro players. Each version includes the current year’s NFL teams, and each avatar on those teams is designed to mirror a real current NFL player, including the player’s name, jersey number, physical attributes, and physical skills. Some versions also include historical and all-time teams, for which no names are used. But the players are still recognizable “due to the accuracy of their team affiliations, playing positions, ages, heights, weights, ability levels, and other attributes.” EA licenses names and likenesses of current players from the NFL and NFL Players Association, but former players like Brown aren’t covered.
Rogers is the test for balancing First Amendment rights against §43(a) interests in cases involving expressive works, not just for titles but for material in the body of a work. E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008). The court rejected Brown’s invitation to apply the likely confusion test of Dr. Seuss Enterprises, L.P. v. Penguin Books USA, Inc., 109 F.3d 1394 (9th Cir. 1997), or the “alternative means” test found in International Olympic Committee v. San Francisco Arts & Athletics, 781 F.2d 733 (9th Cir. 1986), aff’d on other grounds, S.F. Arts & Athletics, Inc. v. U.S. Olympic Comm., 483 U.S 522 (1987). The ordinary likely confusion test fails to account for “the full weight of the public’s interest in free expression” when expressive works are involved. (I assume then that The Cat NOT in the Hat was not an expressive work? Oh, never mind.) Rogers rejected the adequate alternative means test for the same reason, and the 9th Circuit adopted that reasoning.
Under Rogers, the level of artistic relevance merely must be above zero. “This black-and-white rule has the benefit of limiting our need to engage in artistic analysis in this context.” (Citing Bleistein’s nondiscrimination principle; it’s too bad that somehow the right of publicity justifies adding art criticism to the judge’s role.) And use of Brown’s likeness was artistically relevant, because as Brown himself argued, “EA prides itself on the extreme realism of the games.” (So, artistic relevance will turn into a right of publicity violation for works—okay, just video games—in the realist mode.) The ’65 Cleveland Browns can’t be the ’65 Cleveland Browns without the players who played for the ’65 Cleveland Browns, especially the team’s most famous player, Brown. This was at least artistic relevance more than zero. It didn’t matter that he was just one of many players in the game.
Brown argued that, as in Parks v. LaFace Records, 329 F.3d 437 (6th Cir. 2003), EA had denied Brown’s relevance/importance to Madden NFL. But in Parks, it wasn’t just Outkast’s denial that the song Rosa Parks was about Parks that mattered; the lyrics weren’t about her. Even if EA made the same denial as Outkast did, which it didn’t, the content of the games was clearly related to Brown. Plus, EA denied using certain aspects of Brown’s likeness (in letters, EA officials have claimed that “Brown has not appeared in any Madden NFL game since 1998,” and that “Brown’s name and likeness does not appear in Madden NFL 08 or any packaging or marketing materials associated with the product”).
But EA didn’t deny that Brown’s likeness was relevant to the games; rather, it denied that Brown’s likeness was present. If the denials were true, then Brown had no claim at all, whereas Outkast didn’t deny that it used Parks’ name. “If artistic irrelevance can only be proven by accepting the truth of EA’s denial of the use of Brown’s likeness,” Brown couldn’t make out a Lanham Act claim. Plus, on a motion to dismiss, Brown’s allegations had to be accepted as true, and Brown alleged that his likeness was used. (One reading is that Brown was implicitly trying to re-import the rejected “adequate alternative means” test into artistic relevance by arguing that the fact that his name had already been removed proved that there wasn’t artistic relevance to his identity, since the game could obviously survive without certain elements of his identity. Still a losing argument, though.) Parks worried that a celebrity’s name could be “appropriated solely because of the vastly increased marketing power of a product bearing the name of [the celebrity].” This was a “legitimate concern,” but “the court’s determination that the lyrics of Outkast’s song may very well have nothing to do with Rosa Parks or the civil rights movement  made that concern much more realistic in that case than in this one.” EA didn’t make Jim Brown Presents Pinball, with no relation to Brown or football beyond the title; it made a football game featuring likenesses of thousands of current and former NFL players, including Brown. (Periodic reminder that this rationale grants First Amendment protection versus the Lanham Act, but strips First Amendment protection versus the right of publicity.)
Brown also invoked American Dairy Queen Corp. v. New Line Productions, Inc., 35 F. Supp. 2d 727 (D. Minn. 1998), where the losing defendant admitted that it didn’t intend the title Dairy Queens to refer to plaintiff, and therefore the court found that it could express its ideas in other ways. This was both inapposite on the facts and not an application of Rogers.
Brown complained that the relevance-above-zero standard rendered Rogers, which was supposed to balance First Amendment interests against the interest in preventing deception, “an inflexible and mechanical rule that more or less automatically protects expressive works regardless of the deception involved. But a balance need not be designed to find each of the sides weightier with equal frequency.” (Periodic reminder that the companion right of publicity case is going to reject Rogers because it would mean defendants would win too often, just like the Third Circuit did in Hart.)
Rogers clearly explained that its test would normally prevent a Lanham Act claim against an expressive work. “‘Intellectual property rights aren’t free: They’re imposed at the expense of future creators and of the public at large,’ White v. Samsung Elecs. Am., Inc., 989 F.2d 1512, 1516 (9th Cir. 1993) (Kozinski, J., dissenting from denial of rehearing en banc), and the Rogers test applies when this expense is most significant.” (Ed. note: OK, irony meter pegged; Kozinski, of course, is talking about the right of publicity.)
Brown argued that he could prevail on the “explicitly misleads” part of Rogers, even if there was artistic relevance. Explicitness is key here. Implicit suggestions won’t suffice, given the risk to artistic expression of broadly interpreting endorsement or sponsorship. Brown argued that the use of his likeness in the game plus a consumer survey “demonstrating that a majority of the public believes that identifying marks cannot be included in products without permission” raised a triable fact on explicitness. Use of a mark alone can’t be explicitly misleading; that would render Rogers a nullity. “Adding survey evidence changes nothing.” Evidence of explicit misleadingness can only come from the “nature of the behavior of the identifying material’s user,” not “the impact of the use.” Rogers rejected a survey; ETW v. Jireh also rejected a survey purporting to find 60% confusion over affiliation/connection, because the risk of incorrect inferences/misunderstandings was outweighed by the interest in artistic expression.
Brown also argued that certain written materials were explicitly misleading; this was at least the right kind of evidence, but the statements to which he pointed didn’t show any attempt to mislead:
Brown points to materials that say that one of the game’s features was the inclusion of “[f]ifty of the NFL’s greatest players and every All-Madden team.” Since Brown is one of the fifty greatest NFL players of all time and has been named to the “All Madden, All Millennium” team, Brown argues that the statement “explicitly represents that Brown was in EA’s game.” But 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; nothing in EA’s promotion suggests that the fifty NFL players who are members of the All Madden, All Millennium team endorse EA’s game. (emphasis added)
This was true and not misleading.
Brown then argued that changes in his likeness were explicitly misleading: EA “made changes to certain versions of the game that might make a consumer of the game less confident that the player in question was intended to be Brown,” most notably changing the avatar’s jersey number from 32 to 37. Whatever EA’s litigation-avoidance motives in “scrambling” his likeness, “an action that could only make consumers less likely to believe that Brown endorsed Madden NFL cannot possibly satisfy the second prong of the Rogers test.” Likewise, various comments made by EA officials weren’t explicitly misleading. They allegedly contradicted statements to Brown’s attorneys that “Brown has not appeared in any Madden NFL game since 1998” and that “Brown’s name and likeness does not appear in Madden NFL 08 or any packaging or marketing materials associated with the product” by saying at a USC Law School conference that EA could use images and likenesses of players because it had written authorization from the players and the NFL. Statements in letters to Brown’s attorneys were irrelevant; they were neither made to consumers nor said anything about endorsement.
The statement at the conference, too, was made to a limited audience, not to consumers. “If a similar statement appeared on the back cover of a version of Madden NFL, that might satisfy the ‘explicitly misleading’ prong, or at least raise a triable issue of fact, but a statement made at an academic conference about all of the likenesses used in the game could not realistically be expected to confuse consumers as to Brown’s involvement.” Brown also argued that using the (licensed) logo of the NFL Players Association and the (true) statement “Officially Licensed Product of NFL PLAYERS” on the packaging was explicitly misleading, since it could be understood by consumers to mean that retired players, including Brown, endorsed the game. The court dodged this argument (which raises complex issues of the validity of the NFL Players mark, if you think about it) by holding that Brown failed to raise the argument in his opening brief. For the same reason, it declined to address Brown’s argument that using his likeness on the back covers of packages was explicitly misleading (though, per Rogers, it really can’t be, for the same reason that use of a name alone can’t count as explicitly misleading).