Video Gamemaker's Unauthorized Use of Jim Brown's Likeness Protected by the First Amendment

 

By Jack C. Schecter

 

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an a world-famous athlete prevent the unauthorized use of his celebrity image in a video game?

An effort to do just that by legendary running back Jim Brown fell several yards short when he ran into the First Amendment. In James “Jim” Brown v. Electronic Arts, Inc., the Central District of California allowed gamemaker EA to continue using Brown’s likeness without his authorization. But in successfully arguing that the First Amendment is a complete defense to Brown’s claims, EA’s victory may prove costly, eroding the value of some of its most zealously guarded exclusive licensing deals with the National Football League.

Firmly ensconced in the Pro Football Hall of Fame (not to mention the College Football Hall of Fame and Lacrosse Hall of Fame), Brown has gone on to reach the upper echelons of public prominence, starring in major motion pictures and television programs and making his mark as a high-profile social activist. 

Having crafted a valuable celebrity persona, Jim Brown presumably felt he was on firm ground when he challenged the unauthorized use of his likeness by video game developer and publisher Electronic Arts in its flagship video football game series, Madden NFL.

Invoking a theory of false endorsement under Section 43(a) of the Lanham Act, Brown alleged that EA’s use of his likeness in its immensely popular series abridged his rights.

Asking the court to throw out Brown’s lawsuit, EA argued that the First Amendment provides a complete defense to Brown’s claim. The court agreed that EA’s free speech rights immunized EA from Brown’s suit.

The court noted that non-commercial speech receives more robust constitutional protections than commercial speech. Even though the Madden NFL games generate hundreds of millions in revenue for EA annually, the court found that “video games are expressive works entitled to as much First Amendment protection as the most profound literature.”

Having determined that the Madden NFL games constitute expressive, non-commercial speech, the court leaned heavily on E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., in which the Ninth Circuit held that the First Amendment protected defendant Rockstar, the producer of a video game in the “Grand Theft Auto” series, from a claim of trademark infringement based on the inclusion in the game of a virtual strip club modeled after a real-life strip club owned and operated by the plaintiff, ESS. See our December 2008 IP Update article on this decision.

In dismissing Brown’s Lanham Act claims, the court followed E.S.S. and applied the test first set forth by the Second Circuit in Rogers v. Grimaldi and subsequently adopted by the Ninth Circuit in Mattel v. MCA Records. Under that test, the First Amendment provides a complete defense for the unauthorized use of a trademark in an artistic work unless (1) the use of the mark has no artistic relevance to the underlying work whatsoever; or (2) if the use has some artistic relevance, it explicitly misleads as to the source or the content of the work.

Taking its lead from these precedents, the court found that EA’s Madden NFL video games met both prongs of the test. First, the court reasoned that because the games at issue are about NFL football, the use of a legendary NFL player’s likeness was clearly relevant to the underlying work. Second, the court concluded that people playing Madden NFL would not be misled into thinking that Brown is somehow behind the game or a sponsor of the product.

The court’s decision to dismiss Brown’s claims raises several provocative questions.

First, is it now safe to say that all video games – whether whimsical, story-driven fantasy games or realistic simulations – are expressive works entitled to full protection under the First Amendment?

In contrast to the video game in E.S.S., which told a fictional story and which the Brown court characterized as a parody of existing urban environments, the court acknowledged that EA’s Madden NFL seeks instead to realistically replicate NFL football. Nevertheless, the court held that the circumstance “that the designers used a realistic sports theme to express their creativity . . . does not change the fact that the Madden NFL games manifest their designers’ creative vision.”

Second, if a video game is an expressive work, what, if any, use of an individual’s likeness (or any trademark for that matter) will not qualify as relevant to the work under the first prong of the Rogers test?

As noted by the Brown court, the Ninth Circuit has expressly stated that meeting the first prong of the test requires that “the level of relevance must merely be above zero.” As such, it is difficult to conceive of an individual’s likeness being used in an expressive work but having no artistic relevance to the work whatsoever.  It would seem, then, that any use of Brown’s (or another person’s) likeness by EA in any video game – whether related to football or not – could be said to have at least some relevance to the work and therefore be immunized under the First Amendment.

Third, what exactly does it mean for the unauthorized use of an individual’s likeness in a video game to be “explicitly misleading” under the Rogers test? 

As in E.S.S., the court in Brown applied a likelihood-of-confusion analysis in determining whether EA’s use of Brown’s likeness in Madden NFL was explicitly misleading.  The court acknowledged that a consumer playing the game would understand that Brown was included as a player in Madden NFL but concluded that “it would take a leap of logic” to assume that Brown had endorsed EA’s product. 

Yet, as is widely understood by the consumers who purchase and play Madden NFL, EA holds – and vigorously protects – an exclusive license from the NFL Players Association to use the likenesses of actual NFL football players in its Madden franchise.  With this in mind, it would seem to be somewhat less than a leap to conclude that EA’s use of Brown’s likeness in Madden NFL is in fact endorsed either by Brown or by the players association acting on his behalf.  

Brown’s application of the Rogers test raises more questions than it answers. If courts continue to follow and extend the E.S.S. holding as the Brown court did, an individual faces an uphill battle in challenging the unauthorized use of his likeness in a video game. Likewise, individuals and companies may be stymied in trying to stop the unauthorized use of their trademarks in the same context.

Interestingly, in its skirmish with Jim Brown, EA may have won the battle but lost a much bigger war. While EA’s Madden franchise is far and away the best-selling video football game on the market, that, in no small part, is a result of EA’s exclusive licensing arrangement with the players association. Over the years, several competitors have attempted to carve into EA’s market dominance with competing football simulations but, lacking EA’s exclusive right to include real NFL players in their games, these competitors have been forced to populate their games with generic fill-ins, greatly diminishing the realism that consumers crave.

Taken to its logical conclusion, EA’s arguments for First Amendment protection together with the court’s holding suggest that no authorization is, in fact, required for video game developers to include the likenesses of real-life athletes in their games. If the result is an influx of competing video games simulating NFL football, the costs of EA’s victory may prove to be substantial.