ALI-ABA Topical Courses Trademark Law: What's New ... - ALI CLE

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2Highlights of Principal Cases Involving theExploitation of Athletes’ Likenessesfor“Trademark Law: What's New—2011”ALI-ABA Live Telecast: Tuesday, December 20, 2011compiled byRandolph B. Houston, Jr.Senior Counsel, Business and Legal AffairsCOMCAST SPORTS GROUP(part of The NBC Sports Group)One Comcast CenterPhiladelphia, PA 19103rhouston@comcastsportsnet.com
3Brown v. Electronic ArtsNFL Hall of Famer Jim Brown is in the midst of an overtime legal battle against ElectronicArts (“EA”), the maker of the popular Madden NFL video game, as a result of EA’sinclusion of a player that allegedly resembled Brown in various editions of Madden NFL ontwo “historic” teams: the 1964-65 Cleveland Browns and the All Browns team. But whatstarted as a set piece between a media titan and a football legend has turned into a FirstAmendment rumble. Parties as diverse as the American Association of Publishers, Viacom,ESPN and the Comic Book Legal Defense Fund, among other parties, are seeking to weighin on the implications of the lawsuit, and put this dispute into the larger context of similarlawsuits brought by athletes alleging that video games have violated their rights relating totheir celebrity status under various legal theories.The lawsuit kicked off in July 2009, when Brown brought suit against EA in the UnitedStates District Court for the Central District of California. Brown claimed that by including aplayer that resembled him in the Madden NFL game without a licensing agreement, EAviolated Section 43(a) of the federal Lanham Act, under a theory of false endorsement, andCalifornia state laws on invasion of privacy and unfair business practices. Although thecharacter who purportedly represents Brown in Madden NFL wears jersey number 37(Brown wore number 32) and the facial image was purportedly scrambled by EA, Brownalleges that the statistics for the running back on the Madden NFL 1964-65 ClevelandBrowns are nearly identical to his own and the changes to the image were merely superficialand nowhere near enough to transform the image of Brown.The district court tackled Brown for a loss and granted EA’s motion to dismiss Brown’sLanham Act count on September 23, 2009, relying heavily on EA’s First Amendmentdefense. In case you misplaced your intellectual property playbook, when a celebrity brings afalse endorsement claim under Lanham Act Section 43(a), the celebrity is likely alleging thathis “celebrity persona” functions as the “mark” that was allegedly misused. Although EAmaintained that it did not misuse Brown’s celebrity persona or likeness, the court ultimatelydismissed the claim based on the First Amendment’s complete defense to a Lanham Actfalse endorsement claim.As a threshold matter, before the court could consider the First Amendment defense, it heldthat video games, and specifically Madden NFL, are a form of expression protected by theFirst Amendment. Next, to evaluate Brown’s Lanham Act claim in light of the FirstAmendment’s protections, the court employed the Second Circuit’s two-pronged Rogers v.Grimaldi test, under which a Lanham Act claim asserted against the creator of the expressivework can succeed only if the public interest in avoiding confusion outweighs the publicinterest in free expression. The first prong of the test requires that the creator’s use of thesubject trademark (his “persona”) must be relevant to the underlying work, in this case, theMadden NFL game. The court easily tackled this issue and held that the first prong wassatisfied because the “[u]se of a legendary NFL player’s likeness in a game about NFLfootball is clearly relevant,” even viewing all factual allegations in the light most favorable toBrown.
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Page 5 and 6: 5Hart v. Electronic ArtsOn Sept. 9,
Page 7 and 8: 7This decision appears while the ap
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Page 11 and 12: 11The complaint goes on to allege t

ALI-ABA Topical Courses Trademark Law: What's New ... - ALI CLE

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