A Ninth Circuit panel decision issued on July 31, 2013, has revived NFL legend Jim Brown's state law right of publicity claims against video game maker Electronic Arts, Inc. ("EA"). Back in March 2009, Brown filed an action in federal district court against EA alleging that it had misappropriated and used his likeness without authorization in EA's enormously popular video game series, Madden NFL. Brown's claims included a federal law claim for violation of Section 43(a) of the Lanham Act and state law claims for violation of his California state law rights of publicity. The district court judge dismissed Brown's Lanham Act claim, applying the so-called "Rogers test" to determine that EA's First Amendment rights outweighed the public interest in avoiding confusion as to whether or not Brown sponsored or endorsed the video game. The judge then refused to exercise supplemental jurisdiction over Brown's state law claims.

On appeal, the Ninth Circuit upheld the district court's decision regarding Brown's Lanham Act claim. However, the court left the door open for Brown to pursue his right of publicity claims in state court. In a footnote, the court stated: "We emphasize that this appeal relates only to Brown's Lanham Act claim. Were the state causes of action before us, our analysis may be different and a different outcome may obtain." Tellingly, the court cited to another decision it would issue the very same day: Keller v. Elec. Arts, Inc., No. 10-15387 (July 31, 2013).

Like Brown, Sam Keller and his coplaintiffs were college athletes whose images and personas EA had exploited in various video games. Also like Brown, the Keller plaintiffs argued that in acting without their authorization, EA had violated their state law rights of publicity. When EA's anti-SLAPP motion to strike was denied by the federal district court judge, EA appealed. This time, however, the Ninth Circuit panel sided with the athletes.

The court noted that unlike the Lanham Act, which is designed to protect the public from the risk of consumer confusion, California's right of publicity laws are designed to protect "a form of intellectual property in one's person that society deems to have some social utility." In determining how to balance EA's First Amendment rights with athletes' intellectual property rights in their own personas, the court declined EA's invitation to extend the Rogers test (which is decidedly tilted in the alleged misappropriator's favor) to right of publicity claims.

Instead, the court applied the "transformative use test" previously formulated by the California Supreme Court and applied by multiple courts in other right of publicity cases, such as Comedy III Prods., Inc. v. Gary Saderup, Inc., 25 Cal. 4th 387 (2001) (finding that lithographs and T-shirts bearing a likeness of The Three Stooges were not transformative), No Doubt v. Activision Publ'g, Inc., 192 Cal. App. 4th 1018 (2011) (finding that literal re-creations of No Doubt band members as avatars in a video game about rock bands were not transformative), and Hart v. Elec. Arts, Inc., 717 F.3d 141 (3d Cir. 2013) (finding that a realistic digital depiction of a college football player in a game about college football was not transformative). Under the transformative use test, courts examine the work in question to determine whether it "adds significant creative elements so as to be transformed into something more than a mere celebrity likeness or imitation." Comedy III, 25 Cal. 4th at 391.

Noting that EA re-created Keller as exactly what he was—the starting quarterback for Arizona State and Nebraska—and that the game's setting was identical to where the public found Keller during his collegiate career—on the football field—the court held that EA's use of Keller's likeness did not contain significant transformative elements. As a result, the court held, "EA's use of the likenesses of college athletes like Samuel Keller in its video games is not, as a matter of law, protected by the First Amendment." In a split-panel decision, the district court's judgment was affirmed, and Keller was given the green light to proceed with his action.

From Jim Brown's perspective, although the Lanham Act failed to provide him with the protection he sought, Keller makes clear that his California right of publicity claims are viable, and that he may proceed with those claims in state court. Furthermore, those state law claims will be deemed to have been filed at the same time as his previous federal court complaint was filed—March 2009—since state law limitation periods are tolled for such claims while they remain pending in federal court. 28 U.S.C. § 1367(d). Thus, Brown may be entitled to recover damages from as far back as March 2007.

If the state court applies the transformative use test in the same manner as the Keller court, Brown may once again reclaim control over when and how his likeness and persona are utilized.