Seattle Trademark Lawyer

Celebrities’ right of publicity claims are stronger than their Lanham Act claims, the Ninth Circuit recently found. At least in some situations.

On July 31, the court decided two cases former football players brought against Electronic Arts, Inc. The players argued the video game publisher featured avatars that many users would recognize as depicting them, without their permission.

In one case, former college quarterback Samuel Keller, representing similarly-situated former college football and basketball players, argued the use violated his right of publicity under California state law — the statutory right to stop the unauthorized use of his likeness for commercial purposes.  In the other, former pro football great Jim Brown focused on the federal Lanham Act, arguing that use of avatars with his likeness was likely to confuse consumers into believing the players had endorsed EA’s games.

In the Keller case, EA filed a motion to strike under California’s statute against Strategic Lawsuits Against Public Participation, arguing its use of Keller’s likeness was protected by the First Amendment. The Ninth Circuit affirmed the district court’s finding that EA’s use was not constitutionally protected as a matter of law. It instead applied the “transformative use” test the court had applied in earlier right of publicity cases, finding that EA’s use of Keller’s likeness was the reason why consumers would purchase its games — not because its artistic expression had transformed his likeness into something akin to an expressive work of art.

The court concluded: “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.”

In the Brown case, similar facts yielded the opposite result. Due to a different claim for federal jurisdiction. Brown relied on the Lanham Act rather than a state claim for right of publicity.

That difference made all the difference. As a Lanham Act claim, the court applied prior precedent adopting what’s known as the “Rogers” test. Under that test, Lanham Act claims “will not be applied to expressive works ‘unless the [use of the trademark or other identifying material] has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the [use of trademark or other identifying material] explicitly misleads as to the source or the content of the work.’”

Applying that test, the court affirmed the district court’s dismissal of Brown’s claim.

“As expressive works, [EA’s] Madden NFL video games are entitled to the same First Amendment protection as great literature, plays, or books. Brown’s Lanham Act claim is thus subject to the Rogers test, and we agree with the district court that Brown has failed to allege sufficient facts to make out a plausible claim that survives that test. 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. The Rogers test tells us that, in this case, the public interest in free expression outweighs the public interest in avoiding consumer confusion.”

Big decisions, both. Among other things, they illustrate how legal strategy can determine how similar cases can yield opposite results. 

The case cites are In re NCAA Student-Athlete Name & Likeness Licensing Litig., __ F.3d __, No. 10-15387, 2013 WL 3928293 (9th Cir. July 31, 2013), and Brown v. Elec. Arts, Inc., __ F.3d __, No. 09-56675, 2013 WL 3927736 (9th Cir. July 31, 2013).