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 21st
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