C.A.G. Insights

Jim Brown Fails to Break Through First Amendment Defense

Jim Brown’s claim of false endorsement against Electronic Arts in regard to the use of his likeness in the Madden NFL video game was dismissed last year. The decision continues the trend of courts finding that the First Amendment provides a complete defense to a claim of unfair competition when source identifiers are used within video games. Jim Brown is a retired professional football player who is revered as one of the best football players of all time. Electronic Arts (EA) develops and publishes video games, including the popular Madden NFL series. The Madden NFL game is a virtual football game that contains up to 170 virtual teams and 1,500 virtual players. The virtual players include players that wear the names and numbers of current real-life players playing on real-life teams.

EA has an exclusive license from the NFL to use the names and numbers of current players. The virtual players also include players from historical teams that are anonymous, represented only by number and roster positions. The players compete in virtual stadiums with virtual fans and virtual coaches, all of which are designed by graphic artists.

Jim Brown alleged that EA used his name, identity, and likeness by including him in two of the historic teams used in the game, namely the 1965 Cleveland Browns team and the All Browns team. The character in the game that purportedly represents Brown is anonymous and wears the number 37. Brown wore number 32. Brown’s statistics and the character’s statistics are “nearly identical.”

Federal trademark law prohibits the unauthorized use of a celebrity’s identity in a manner which is likely to confuse consumers as to sponsorship or approval of a product. In the instant case, the Court assumed for purposes of deciding EA’s Motion to Dismiss that the game did use Brown’s likeness. But EA argued that the First Amendment provides a complete defense to Brown’s claim of false endorsement.

In analyzing the First Amendment defense, the courts first determine what type of speech is at issue. Commercial speech is not entitled to as much protection as noncommercial expressive speech. However, the courts have found that video games are expressive works that are entitled to as much protection as the most profound literature.

To evaluate the First Amendment defense, a balancing test is used to determine if “the public interest in avoiding consumer confusion outweighs the public interest in free expression.” The test has two prongs that must be satisfied to find that the First Amendment bars a Lanham Act claim. First, the use of the trademark (or in this case, the use of the likeness of Jim Brown) must have at least some relevance, however minimal, to the underlying work. Second, the use of the trademark must not explicitly mislead consumers about the source or content of the work. Even though there may be a risk that a consumer will wrongly believe that a celebrity endorsed a work, that risk may be outweighed by the public interest in artistic expression.

In Brown, the court found that the Madden NFL  series of sports-based games contain numerous creative elements. Specifically, the game contains virtual stadiums, athletes, coaches, fans, sound effects, music, and commentary created or compiled by the games’ designers.

These elements represent the designers’ creative interpretation of real-world NFL game play. The designers’ use of a realistic sports theme “does not change the fact that the Madden NFL games manifest their designers’ creative interpretation of real-world NFL game play.” The court held that the “Madden NFL video games are expressive works, akin to an expressive painting that depicts celebrity athletes of past and present in a realistic sporting environment.”

Upon finding the video game to be an expressive work, the court went on to apply the balancing test. The Madden NFL games are about football. Brown is a legendary NFL football player, the best ever according to some. Thus, the use of a legendary NFL football player’s likeness in a game about NFL football is clearly relevant, satisfying the first prong of the test.

In regard to the second prong, the Court found that the use of Brown’s likeness in the game does not explicitly mislead consumers as to the source or content of the work. Significant to this finding is the fact that Brown’s character is one of thousands of virtual athletes used in the Madden NFL games. Unlike most of the other characters, Brown’s character is anonymous, identified only by his number and roster position as a running back. Brown’s character is not depicted on the games’ packaging, advertisements, or promotional materials. The court held that the mere presence of an anonymous, mis-numbered character in the game does not constitute an explicit attempt to convince consumers that Brown endorsed the game.

Vincent Allen is a shareholder at Carstens, Allen & Gourley, LLP. He focuses on the litigation of intellectual property disputes and the prosecution of patent and trademark applications.

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