NFL Hall of Famer Jim Brown is in the midst of an overtime legal battle against Electronic Arts (“EA”), the maker of the popular Madden NFL video game, as a result of EA’s inclusion of a player that allegedly resembled Brown in various editions of Madden NFL on two “historic” teams: the 1964-65 Cleveland Browns and the All Browns team. But what started as a set piece between a media titan and a football legend has turned into a First Amendment rumble. Parties as diverse as the American Association of Publishers, Viacom, ESPN and the Comic Book Legal Defense Fund, among other parties, are seeking to weigh in on the implications of the lawsuit, and put this dispute into the larger context of similar lawsuits brought by athletes alleging that video games have violated their rights relating to their celebrity status under various legal theories.

The lawsuit kicked off in July 2009, when Brown brought suit against EA in the United States District Court for the Central District of California. Brown claimed that by including a player that resembled him in the Madden NFL game without a licensing agreement, EA violated Section 43(a) of the federal Lanham Act, under a theory of false endorsement, and California state laws on invasion of privacy and unfair business practices. Although the character who purportedly represents Brown in Madden NFL wears jersey number 37 (Brown wore number 32) and the facial image was purportedly scrambled by EA, Brown alleges that the statistics for the running back on the Madden NFL 1964-65 Cleveland Browns are nearly identical to his own and the changes to the image were merely superficial and nowhere near enough to transform the image of Brown.

The district court tackled Brown for a loss and granted EA’s motion to dismiss Brown’s Lanham Act count on September 23, 2009, relying heavily on EA’s First Amendment defense. In case you misplaced your intellectual property playbook, when a celebrity brings a false endorsement claim under Lanham Act Section 43(a), the celebrity is likely alleging that his “celebrity persona” functions as the “mark” that was allegedly misused. Although EA maintained that it did not misuse Brown’s celebrity persona or likeness, the court ultimately dismissed the claim based on the First Amendment’s complete defense to a Lanham Act false endorsement claim.

As a threshold matter, before the court could consider the First Amendment defense, it held that video games, and specifically Madden NFL, are a form of expression protected by the First Amendment. Next, to evaluate Brown’s Lanham Act claim in light of the First Amendment’s protections, the court employed the Second Circuit’s two-pronged Rogers v. Grimaldi test, under which a Lanham Act claim asserted against the creator of the expressive work can succeed only if the public interest in avoiding confusion outweighs the public interest in free expression. The first prong of the test requires that the creator’s use of the subject trademark (his “persona”) must be relevant to the underlying work, in this case, the Madden NFL game. The court easily tackled this issue and held that the first prong was satisfied because the “[u]se of a legendary NFL player’s likeness in a game about NFL football is clearly relevant,” even viewing all factual allegations in the light most favorable to Brown.

Although the first prong was easily satisfied, the second prong was a tougher play: Brown had to show that EA’s use of the trademark explicitly misled consumers about the source or content of the work. Putting the second prong into context, the court stated that the relevant inquiry is whether people playing Madden NFL would be misled into thinking that Brown is somehow behind the game or is a sponsor of the product. The court held that, since neither Brown nor his name or likeness are depicted on the game’s packaging or advertising, and his virtual athlete is anonymous and identifiable only by jersey number, it would require a “leap of logic” to conclude that the anonymous, misnumbered player’s presence in the games equates to Brown’s endorsement or an explicit attempt to convince consumers of his endorsement. Thus, the court concluded that the second prong of the Rogers test was not met, and Brown’s Lanham Act claim was barred by the First Amendment’s protection of expressive works.

To further jump on the pile, because Brown’s Lanham Act claim did not survive the dismissal motion, the court declined to exercise supplemental jurisdiction over Brown’s remaining state and common law claims, since the district court no longer had a “hook” of original jurisdiction for which to hang the supplemental jurisdiction.

On July 6, 2010, Brown called for an instant replay review, and filed his appeal of the district court’s decision with the United States Court of Appeals for the Ninth Circuit. Brown’s brief, among other points, argues that the district court erred because in holding that the second prong of the Rogers test was not satisfied (i.e., that there were no explicit representations of endorsement to cause consumer confusion), the court made its own finding of fact, and the issue should have been a matter for discovery. The brief also argues that EA’s misappropriation is actionable under every trademark-versus-free-speech approach adopted by the Ninth Circuit, including the Rogers test.

EA went on the offensive and filed its answering brief on September 20, 2010, urging the Ninth Circuit to affirm the dismissal order and reiterating most of the district court arguments, including the application of the Rogers test. EA argued that if the court accepts the arguments in Brown’s briefs, “a broad range of expressive works might be subject to Lanham Act claims,” and further urged the court not to turn trademark law into a “weapon for prominent individuals to restrain the use of their name or likeness in expressive works.”

A motion seeking amicus status was filed on September 27, along with a brief arguing, among other things, that the Brown case shares similar issues as those raised in Keller v. Electronic Arts on which an appeal is also pending in the Ninth Circuit. The Keller case also involves allegations that an athlete’s persona was improperly included in an EA video game; in that case, a college football player. As we wrote in the April edition of Three Point Shot, the district court in Keller rejected arguments that EA was protected by the First Amendment against the athlete’s claims under the California statutory and common law right of publicity. The amicus brief states: “It would be difficult to invent two related cases that more starkly illustrate the troubled state of the law concerning the relationship between the right of publicity, the Lanham Act, and the First Amendment.”

On the merits, the amicus brief takes the position that the district court in the Brown case ruled correctly in finding that EA’s use is protected by the First Amendment, and that the ruling in Keller should be reversed. The controversy is now in possession of the Ninth Circuit, with the parties waiting on the sidelines anxiously awaiting the court’s next play.