The Ninth Circuit's Irreconcilable Video Game Rulings

By Kevin Vick (guest blogger)          

The Ninth Circuit’s July 31 decisions in Brown v. Electronic Arts and Keller v. Electronic Arts cannot be reconciled with each other or the First Amendment.  

            Both lawsuits involve the alleged use of athletes’ likenesses in highly-popular video games.  The suits claim that popular Electronics Arts (EA) games Madden NFL and NCAA Football include players whose characteristics – e.g., jersey number, height, weight, skin tone, home state – are based on the attributes of real-life players such as plaintiffs Jim Brown (NFL Hall of Famer) and Samuel Keller (former University of Arizona and University of Nebraska quarterback).

            While the lawsuits are based on the same core allegations, they differed in one respect that determined the outcome.  The claims at issue in Brown were for alleged violations of the Lanham Act (the federal trademark and unfair competition law), while the claims in Keller were for violations of California’s common law and statutory rights of publicity, which gives the right to control your persona … within the confines of the First Amendment.  

The difference in the claims made all the difference, as the Ninth Circuit affirmed the dismissal of Brown’s lawsuit while holding that Keller can proceed with his case.  The principal reason: the Ninth Circuit applied different tests to the respective claims.  The different approaches cannot be reconciled under the First Amendment.

            For Brown’s Lanham Act claims, the court applied the test first set forth by the Second Circuit in Rogers v. Grimaldi.  The Rogers test provides strong free speech protections to creators – not just video games, but movies, books and other expressive works.  Lanham Act plaintiffs complaining about the alleged use of their name or likeness in expressive works must show that (1) the use has no artistic relevance to the work and (2) the work explicitly misleads consumers to believe that the plaintiff endorsed or sponsored the work.  This standard is difficult for plaintiffs to meet.  Defendants routinely defeat Lanham Act claims based on the Rogers test (as in Brown).   

            However, the Ninth Circuit held in Keller that California right of publicity claims were not subject to the Rogers test, but to the “transformative use” test – i.e., whether the defendant has sufficiently transformed the plaintiff’s persona in some expressive way.  The transformative use test provides far less First Amendment protection than the Rogers test because it is a multi-factor analysis that culminates in a question of fact.  That is much less useful to defendants looking to defeat a lawsuit on First Amendment grounds via a pre-trial motion. 

            The Ninth Circuit should not have treated the Brown and Keller cases differently.  Video game maker EA should have won both.

The Ninth Circuit said that Lanham Act claims are meant to protect against consumer confusion, while right of publicity claims are designed to protect celebrities’ interests in the value of their personas.  This distinction does not withstand scrutiny.  Courts and commentators have often referred to the Lanham Act as the federal equivalent to state right of publicity claims.  And a concern for individuals’ interests in the values of their personas animates many Lanham Act decisions in favor of celebrity plaintiffs.  (I’m looking at you Tom Waits!) Likewise, right of publicity claims have often been seen as vehicles to prevent opportunistic defendants from misleading the public into believing that celebrities endorse or are affiliated with defendants’ products bearing their name or likeness.  In other words, consumer confusion and the celebrity’s interest in the value of his or her name are two sides of the same coin.

            Moreover, even if Lanham Act claims and right of publicity claims did protect different interests, why would that justify providing right of publicity defendants with a watered-down version of First Amendment protection?  The Ninth Circuit failed to answer that question, or even acknowledge that it requires an answer.  This is especially frustrating given the well-recognized – indeed, paramount – importance of First Amendment speech rights.

            That failure – along with some contrary decisions from other jurisdictions applying the Rogers test to state right of publicity claims – may lead to en banc review in the Ninth Circuit or, perhaps eventually, review by the Supreme Court.

            In the meantime, the Keller decision encourages plaintiffs to change the label on their claims from “Lanham Act” to “right of publicity.”  Such a facile sidestep offends the First Amendment.  

It will also further encourage and exacerbate the patchwork of state right of publicity laws and rulings – a legal regime that is particularly unsuited for the 21^st century and modern technologies such as the Internet.  The result is a potential minefield for content creators and distributors as JP Jassy and I explained in this article advocating a federal right of publicity statute that would preempt state right of publicity laws.

Guest blogger Kevin Vick is my partner at Bostwick & Jassy LLP, a stellar lawyer and all around good guy.  Here is his bio.  - JP Jassy