On the same day, the same panel of judges of the Ninth Circuit issued two opinions addressing claims made by former football players (one NFL, one college) with respect to Electronic Arts' ("EA") football video games series Madden NFL and NCAA Football. The causes of action in the two cases bore different monikers but the factual allegations were similar and yet one player won while the other lost. In the end, the difference in the result may be explained--in part--by the unsurprising conclusion that the cause of action matters.
I will address the two cases in the order I happened to read them.
Brown v. Elec. Arts, Inc., Appeal No. 09-56675 (9th Cir. July 31, 2013):
Plaintiff Jim Brown played for the Cleveland Browns from 1957 to 1965, was inducted into the NFL Hall of Fame, and apparently is "widely regarded as one of the best professional football players of all time." In short, there was no dispute that he was "a public figure whose persona can be deployed for economic benefit."
EA produces the Madden NFL video games series in which users control avatars representing professional football players (much more details about the games in the court's opinion). All versions of Madden NFL include the current year's NFL teams and rosters and some versions include historical and all-time teams. With respect to the latter versions of the games, no player names are used although they apparently are recognizable based on various information and attributes. EA licenses the use of the names and likenesses of current NFL players but those licenses apparently do not cover former players like Brown.
Brown sued EA claiming its use of his likeness in Madden NFL violated Section 43(a) of the Lanham Act and asserting claims under California law for invasion of privacy and unfair and unlawful business practices.
EA filed a motion to dismiss, which the district court granted with respect to Brown's Lanham Act applying the so-called Rogers test. With the dismissal of Brown's federal claim, the district court declined to exercise supplemental jurisdiction over his state-law claims. Brown appealed.
The Ninth Circuit first rejected Brown's arguments that additional tests other than the Rogers test applied to his Lanham Act claim, concluding that the "only relevant legal framework for balancing the public's right to be free from consumer confusion about Brown's affiliation with Madden NFL and EA's First Amendment rights in the context of Brown's [Lanham Act] claim is the Rogers test."
The Rogers test comes from a Second Circuit case--Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989)--brought by Ginger Rogers challenging the use of her name in the title of a movie, Ginger and Fred, as a violation of Section 43(a) of the Lanham Act.
Because enforcing Section 43(a) in the context of a film might constrain expression in violation of the First Amendment, the Second Circuit employed a two-pronged test intended to address the competing interests. Under the Rogers test, the Lanham Act does not apply 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."
Meeting the first prong of the Rogers test--that the trademark or identifying material have artistic relevance to the work at issue--is not an arduous burden. As the Ninth Circuit said in another case involving a video game (Grand Theft Auto: San Andreas), "'the level of [artistic] relevance . . . merely must be above zero[.]'" The Ninth Circuit had little difficulty concluding that EA's use of Brown's likeness in Madden NFL met this standard "[g]iven 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[.]"
Somewhat more interestingly, Brown argued that the "merely above zero" standard for artistic relevance makes the Rogers test "an inflexible and mechanical rule that more or less automatically protects expressive works regardless of the deception involved." Although the Ninth Circuit agreed to some extent, at least implicitly, that the Rogers test tended to favor protection of expressive works, given the context, that made sense: "The Rogers test is applicable when First Amendment rights are at their height--when expressive works are involved--so it is no surprise that the test puts such emphasis on even the slightest artistic relevance."
The Ninth Circuit then moved on to the second prong of the Rogers test under which the creator of an expressive work can face Lanham Act liability even having satisfied the first prong "if the creator uses the mark or material to 'explicitly mislead [consumers] as to the source or the content of the work.'" The court emphasized that the creator must explicitly mislead consumers and unsurprisingly given that emphasis, it found that Brown had failed to allege facts to support such a showing.
Of note with respect to this second prong of the Rogers test, the Ninth Circuit rejected the relevance of Brown's consumer survey that demonstrated that a majority of the public believes that identifying marks can't be included in products without permission:
It is well established that the use of a mark alone is not enough to satisfy this prong of the Rogers test. . . . Adding survey evidence changes nothing. The test requires that the use be explicitly misleading to consumers. To be relevant, evidence must relate to the nature of the behavior of the identifying material's user, not the impact of the use. . . . "The risk of misunderstanding, not engendered by any explicit indication on the face of the [work], is so outweighed by the interest in artistic expression as to preclude application of the [Lanham] Act."
Thus, the Ninth Circuit concluded that Brown's Lanham Act claim could not survive the Rogers test and therefore affirmed the district court's dismissal of that claim.
Notably, the Ninth Circuit made a point of emphasizing that the appeal related only to Brown's Lanham Act claim and that "[w]ere the [California] state causes of action before us, our analysis may be different and a different outcome may obtain," citing to the second decision of the Ninth Circuit discussed below.