Football season has officially kicked off—not just on the field, but also in the courtroom.
The 9th Circuit recently handed down two decisions on the same day concerning football video games and the players depicted in them. In both cases, former National Collegiate Athletic Association (NCAA) and National Football League (NFL) players sued Electronic Arts Inc. (EA), a video game maker, for using their likenesses without permission in its football-themed video games. And in both cases, EA argued that the First Amendment protected its right to use the players’ likenesses in its games because they are creative works.
But even though the plaintiffs’ claims centered on nearly identical conduct on the part of the video game maker, the two cases—In Re: NCAA Student-Athlete Name & Likeness Licensing Litigation and Brown v. Electronic Arts Inc.—had entirely different outcomes. The result: Uncertainty among makers of video games and other creative works about when First Amendment protection applies.
In its “NCAA Football” video game series, EA replicates entire college football fields and teams as accurately as possible. This means all NCAA schools’ real football players are featured in the game as nameless avatars wearing the players’ identical jersey numbers. The avatars are the same height, weight and build. The real players’ home states are even listed in the avatars’ biographies.
Sam Keller, a former Arizona State and University of Nebraska starting quarterback, sued EA for violating his right of publicity—or his right to control the commercial use of his name, image and likeness—when it created an avatar in his likeness without prior approval for the 2005 and 2008 editions of “NCAA Football.”
A district court ruled in favor of Keller, and the 9th Circuit affirmed the decision. In reaching its decision, the appeals court applied the “transformative use test,” which the California Supreme Court developed and which the 3rd Circuit used in a similar case concerning an NCAA football player fighting against EA’s use of his likeness (see “Hart Unbeaten”). The transformative use test requires that a court 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.”
The 9th Circuit found that EA’s use of Keller’s likeness didn’t contain significant transformative elements “because it literally recreated Keller in the very setting in which he had achieved renown.” Therefore, EA’s use of Keller’s likeness didn’t fall under First Amendment protection.
Although EA’s First Amendment argument fell flat in Keller’s case, it succeeded in Brown.
Jim Brown was a star NFL player on the Cleveland Browns from 1957 to 1965. For more than a decade, he says, EA has used his likeness in several editions of its “Madden NFL” video games without his permission and without compensating him.
Although EA has secured licensing agreements with the NFL and the NFL Players Association to use current players’ names and likenesses in its games, those agreements don’t cover Brown, who is an ex-player. He sued EA under the Lanham Act, claiming that by featuring his likeness in the game, EA was creating a false impression of endorsement that could mislead consumers and lead to unfair financial gains for the video game company.
According to the 9th Circuit’s opinion, “There is no question that [Brown] is a public figure whose persona can be deployed for economic benefit.” Nonetheless, the court affirmed the lower court’s dismissal of Brown’s case.
“The 9th Circuit concluded that the Madden games communicate ideas in a manner sufficient to qualify as expressive works” rather than commercial speech, says John Greiner, a partner at Graydon Head. “Having determined that the games were expressive, the court could find a Lanham Act violation only if the use of Brown’s likeness had no artistic relevance to the underlying work, or if it did have some artistic relevance that the use explicitly misleads as to Brown’s endorsement.”
The court determined that Brown’s likeness was relevant to the game’s desire to be realistic, and that nothing about EA’s use of his likeness was explicitly misleading.
Given the 9th Circuit’s conflicting opinions concerning identical conduct and different legal claims, experts say any company using a celebrity’s likeness should tread carefully.
“To avoid liability in the Lanham Act context, the defendant’s use of the likeness need only make some artistic contribution to the work and not explicitly mislead as to origin and be likely to cause consumer confusion,” says Kathryn Fritz, a partner at Fenwick & West.