After Being Tripped Up By the Lanham Act, Jim Brown Rushes at Electronic Arts with a Right of Publicity Claim

Recent Happenings in APRM October 2013 Retractable Technologies v. Becton Dickinson & CO After Being Tripped Up By the Lanham Act, Jim Brown Rushes at Electronic Arts with a Right of Publicity Claim New California Law Allows Minors to Remove Regrettable Digital Content New European Commission Medical Device Safety Initiatives Aimed at Notified Bodies Will Impact Device Manufacturers As Well FDA Issues Final Guidance on Mobile Medical Apps FTC Trying to Read Between the Blurred Lines of Native Advertising

After losing a case brought against a video game maker, brought under the Lanham Act for the unauthorized use of his likeness in a video game about pro football, legendary football player Jim Brown picks himself up and files a new case against the video game maker for violation of his right of publicity. 

Jim Brown, one the greatest football players in NFL history, initially brought an action for false endorsement under Section 43(a) of the Lanham Act (15 U.S.C. § 1125(a)) as a result of Electronic Arts' (EA) unauthorized use of his likeness in the Madden NFL series of football video games (Mr. Brown apparently did not assert a claim for violation of his right of publicity in that case). See Brown v. Electronic Arts, Inc., No. 09-56675, 2013 U.S. App. LEXIS 15647 (9th Cir. July 31, 2013). In affirming the dismissal of Mr. Brown's claim, the Ninth Circuit Court of Appeals held that although Section 43(a) protects the public's interest in being free from commercial consumer confusion about affiliations and endorsements, this protection is limited by the First Amendment, particularly where, as in the case of the video game, the product is an expressive work. In applying the test set forth in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), the court found the use of Mr. Brown's likeness did not violate the Lanham Act because: (1) the importance of realistically re-creating Mr. Brown's likeness in a game about NFL football meant that the use has at least some artistic relevance to EA's work; and (2) the use of Mr. Brown's likeness did not explicitly mislead consumers about Brown's endorsement of the game.

This was the same Ninth Circuit panel that decided the In re NCAA Student-Athlete Name & Likeness Licensing Litig., No. 10-15387, 2013 U.S. App. LEXIS 15649 (9th Cir. July 31, 2013) case – finding that the first amendment did not protect a video game maker, as a matter of law, from a right of publicity claim brought by some college football players based on the use of their likeness in a college football video game, as reported on in last month's newsletter; sending a clear message that in the Ninth Circuit, the more player friendly "transformative standard" would apply to actions brought for violations of right of publicity in video games but the more absolute "Rogers test" would apply to claims brought under the Lanham Act. 

The message was not lost on Mr. Brown who is adept at changing course in midfield. On August 30, 2013, he filed a complaint in the Superior Court of California, County of Los Angeles, against EA alleging EA violated Mr. Brown's right of publicity by knowingly and intentionally utilizing Mr. Brown's likeness in its Madden NFL football games without Mr. Brown's consent and for a commercial purpose. Brown v. Electronic Arts, Inc., (Super. Ct. L.A. County, No. BC520019, Compl. Aug. 30, 2013). Mr. Brown alleges, as the college football players in In re NCAA had alleged, that EA uses and continues to use his likeness for the purpose of advertising, selling and soliciting purchases of EA's video games, including the Madden NFL series of games without his permission, in violation of his right of publicity. Id. It will be interesting to see how the facts in this case match up with In re NCAA and, in particular, whether the fact that Mr. Brown was a very famous professional player paid for his services will make any difference in the determination of the case.