Touchdown for video game producer over football player’s false endorsement claim

In Brown v Electronic Arts Inc (Case No 09-56675, July 31 2013), revisiting the issue of how trademark and similar rights under the Lanham Act are balanced against First Amendment rights, the US Court of Appeals for the Ninth Circuit has confirmed that the Rogers test remains the appropriate framework for analysing this issue, and affirmed the grant of a motion to dismiss for failure to state a claim.

Jim Brown was a star football player for the Cleveland Browns and was inducted into the National Football League Hall of Fame after his retirement. Electronic Arts (EA) produces the Madden NFL series of video games. Although Brown’s name does not appear, his likeness can be recognised in some Madden NFL games. Brown sued EA for false endorsement under §43(a) of the Lanham Act. The district court applied the Rogers test in granting EA’s motion to dismiss. Brown appealed.

Brown urged consideration of the 'likelihood of confusion' test and the 'alternative means' test in addition to the Rogers test. The Ninth Circuit declined to apply those tests, noting that it had previously rejected those tests because each fails to account for the full weight of the public’s interest in free expression when expressive works are involved.

The Ninth Circuit previously adopted the Rogers test created by the US Court of Appeals for the Second Circuit. Under the first of two prongs of the Rogers test, §43(a) is not applied to expressive works “unless the [use of the trademark or other identifying material] has no artistic relevance to the underlying work whatsoever”. The second prong applies if the use of the trademark or other identifying material has some artistic relevance, and does not apply §43(a) to expressive works “unless the [use of the trademark or other identifying material] explicitly misleads as to the source or the content of the work”.

The “‘level of [artistic] relevance [of the trademark or other identifying material to the work] merely must be above zero’ for the trademark or other identifying material to be deemed artistically relevant”. The Ninth Circuit determined that Brown’s likeness had at least some artistic relevance because realism was central to EA’s expressive goal, and inclusion of Brown’s likeness was important to realistic recreation of one of the teams in Madden NFL. Thus, the Ninth Circuit concluded that the first prong of the Rogers test was inapplicable to Brown’s claim.

Under the second prong, the Ninth Circuit found that Brown failed to allege any facts to show that EA explicitly mislead consumers that Brown endorsed Madden NFL.

Because Brown’s likeness was artistically relevant and the complaint included no allegation that EA explicitly mislead consumers, the district court properly granted EA’s motion to dismiss.

The Rogers test has not been adopted by all circuit courts. Other tests, such as the US Court of Appeals for the Third Circuit’s 'predominant use' test, may strike a balance more in favour of Lanham Act rights. Thus, venue may affect the outcome of some Lanham Act claims. Also, claims under state law may succeed where claims under the Lanham Act fail.

Douglas Espenschied, McDermott Will & Emery LLP, Orange County