College Athlete Wins, Jim Brown Loses in Video-Game Lawsuits

Thursday, August 1, 2013

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College Athlete Wins, Jim Brown Loses in Video-Game Lawsuits

By KENNETH OFGANG, Staff Writer

Video game maker Electronic Arts, Inc. received split results yesterday in rulings by the Ninth U.S. Circuit Court of Appeals on claims of using athletes’ images without permission.

In a 2-1 decision with significant repercussions, the court held that EA has no First Amendment protection from a putative class action brought by onetime college quarterback Sam Keller, while the same panel unanimously rejected claims brought by former NFL star Jim Brown in a separate lawsuit.

Keller, a quarterback who played for Arizona State before transferring to the University of Nebraska, brought his suit in the Northern District of California in 2009. It has been combined with a similar lawsuit filed by former UCLA basketball star Ed O’Bannon against the NCAA, which recently announced that it would terminate its licensing arrangement with EA when its current contract ends in June of next year.

EA, which no longer makes a college basketball game, said it would continue to produce a college football game, but without NCAA logos.

Keller argued that his common-law right of publicity was infringed upon when EA, in the 2005 edition of NCAA Football, featured a starting quarterback for Arizona State who wore Keller’s number 9 and had the same height, weight, skin tone, hair color, hair style, handedness, home state, pocket-passer playing style, visor preference, facial features, and school year as Keller.

His rights were similarly infringed for the 2008 edition, he contends, because the virtual quarterback for Nebraska had these same characteristics, though the jersey number did not match, presumably because Keller changed his number right before the season started.

That was infringement, not journalism, Judge Jay Bybee suggested.

“Under the ‘transformative use’ test developed by the California Supreme Court, EA’s use does not qualify for First Amendment protection as a matter of law because it literally recreates Keller in the very setting in which he has achieved renown,” the judge said.

Panel Ruling

The panel ruling came on an appeal by EA from Judge Claudia Wilken’s denial of its anti-SLAPP motion, based on the judge’s determination that Keller is likely to win on the merits.

Bybee agreed, saying the avatars used in the company’s basketball and football games were exact replicas of individual players. The court concluded that the company did little to transform the avatars into works of art and said EA’s NCAA Football game was too realistic to be considered a new art form.

“Every real football player on each team included in the game has a corresponding avatar in the game with the player’s actual jersey number and virtually identical height, weight, build, skin tone, hair color, and home state,” the judge noted.

Bybee rejected EA’s contention that the game was akin to a newsgathering product that restates statistical, biographical and other publicly available information. He noted that EA omitted putting the names of players on the avatars.

Cases Distinguished

He distinguished cases such as Gionfriddo v. Major League Baseball (2001) 114 Cal. Rptr. 2d 307, which held that Major League Baseball’s First Amendment right to display on its website and in other media “factual data concerning the players, their performance statistics, and verbal descriptions and video depictions of their play” took precedence over former players’ right to control the use of their likenesses.

The judge explained:

“We think that, unlike in Gionfriddo…EA is not publishing or reporting factual data. EA’s video game is a means by which users can play their own virtual football games, not a means for obtaining information about real-world football games. Although EA has incorporated certain actual player information into the game (height, weight, etc.), its case is considerably weakened by its decision not to include the athletes’ names along with their likenesses and statistical data. EA can hardly be considered to be ‘reporting’ on Keller’s career at Arizona State and Nebraska when it is not even using Keller’s name in connection with his avatar in the game. “

Bybee was joined by Senior Judge Gordon Quist of the Western District of Michigan, sitting by designation.

Judge Sidney Thomas dissented. He warned that the majority’s stance will jeopardize the rights of authors, movie makers and others to use real people in fictional settings.

“Absent the use of actual footage, the motion picture ‘Forrest Gump’ might as well be just a box of chocolates,” Thomas wrote. “Without its historical characters, ‘Midnight in Paris’ would be reduced to a pedestrian domestic squabble.”

In the Brown case, however, the same panel unanimously ruled that EA has a First Amendment defense to the ex-Cleveland Browns star’s deception claim under Sec. 43 of the Lanham Act. Brown argued that his inclusion in the “Madden NFL” series suggested he endorsed the product.

Bybee, however, said EA was entitled to prevail under the balancing test laid out by the Second Circuit in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) and later adopted by a number of courts, including the Ninth Circuit.

In Rogers, actress Ginger Rogers claimed that the makers of the film “Ginger and Fred,” a fictional story about the reunion of a couple who had portrayed Rogers and Fred Astaire in their cabaret act, were infringing trademarks and likely to confuse the public into thinking that the movie was about her or endorsed by her.

The court said a film title and related media are constitutionally protected from trademark infringement claims if the title has some artistic relevance to the underlying work and do not “explicitly mislead[ ] as to the source or content of the work.”

Brown failed to show that EA, by promoting a feature in older Madden games that included 50 of the greatest NFL players, was trying to mislead consumers into thinking Brown endorsed the games.

“EA’s statement is true and not misleading,” Bybee said, noting that the NFL had named Brown one of its 50 greatest players.

“As expressive works, the Madden NFL video games are entitled to the same First Amendment protection as great literature, plays, or books,” he concluded. “Brown’s likeness is artistically relevant to the games and there are no alleged facts to support the claim that EA explicitly misled consumers as to Brown’s involvement with the games.”

In the Keller opinion, however, Bybee expressly declined to apply the Rogers test to right-of-publicity claims, saying the issue of consumer confusion at the heart of the Lanham Act section “is simply not responsive to Keller’s asserted interests here.” He noted that EA had lost on that very point in Hart v. Electronic Arts, Inc., 717 F.3d 141 (3d Cir. 2013), in which the court applied the “transformative use” test to a right-of-publicity claim brought by former Rutgers quarterback Ryan Hart under New Jersey law.

Kelli L. Sager of Davis Wright Tremaine LLP argued for EA in both cases.

Steve W. Berman of Hagens Berman Sobol Shapiro LLP argued for the plaintiffs in the Keller case, In re NCAA Student-Athlete Name & Likeness Licensing Litigation, 10-15387, while Ronald S. Katz of Manatt, Phelps & Phillips, LLP argued for Jim Brown in Brown v. Electronic Arts, Inc., 09-56675.