Maddeningly Mismated Matches

We believe that in general the Act should be construed to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression. In the context of allegedly misleading titles using a celebrity's name, that balance will normally not support application of the Act unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.

Id. at 999.

The court applied the exact same standard in dismissing Ms. Rogers' right of publicity claim.

Jumping forward 24 years, Brown relied on Rogers and other intervening precedent adhering to the Second Circuit's 1989 ruling (and expanding its scope to encompass expressive content of a work, not merely titles), explaining that the Rogers test is now “a black and white rule” under which “the level of artistic relevance [of the trademark or other identifying material to the work] must merely be above zero for the trademark or other identifying material to be artistically relevant.” 107 U.S.P.Q.2d at 1692, quoting E.S.S Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095, 1100 (9th Cir. 2008). Because any realistic depiction of the 1965 Cleveland Browns football team would have included its star running back, Jim Brown, and because realism was deemed an artistic choice of Electronic Arts in making the video, Brown's likeness was deemed relevant to the video game. The court further explained that it would not assess the artistic merit of the accused work itself, noting that “[a]s expressive works, the Madden NFL video games are entitled to the same First Amendment protection as great literature, plays, or books.” 107 U.S.P.Q.2d at 1696. The court thus declined Brown's argument that the work lacked sufficient expressive content to be granted broad First Amendment protection. Having concluded that realism is a sufficiently worthy artistic goal, the court did not further consider either the artistic merit of the video game or the relevance of Brown's likeness in relation to any such artistry, and thus upheld the dismissal of Brown's Lanham Act claim.

The Transformative'Use Test

By contrast, in NCAA Student-Athlete, the same court held that the video game, “NCAA Football,” was not entitled to First Amendment protection because it was not sufficiently transformative under a state law test applied in right of publicity cases. The state law transformative use test, which bears some similarity to the identically named analysis under the copyright fair use defense, is “a balancing test between the First Amendment and the right of publicity based on whether the work in question adds significant creative elements so as to be transformed into something more than a mere celebrity likeness or imitation.” 107 U.S.P.Q.2d at 1632, quoting Comedy III Productions, Inc. v. Gary Saderup, Inc., 21 P.3d 797, 799 (Cal. 2001). Said the 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 renown.” 107 U.S.P.Q.2d at 1630. “[U]sers manipulate the characters in the performance of the same activity for which they are known in real life ' playing football in this case '. The context in which the activity occurs is also similarly realistic ' ' realistic depictions of actual football stadiums '.” That no one player had a predominant role and that the avatars could be modified in game play hence was deemed immaterial: “[T]hat the avatars appear in the context of a video game that contains many other creative elements does not transform the avatars into anything other than exact depictions ' doing exactly what they do as celebrities.” Id. at 1634, quoting No Doubt v. Activision Pub., Inc., 122 Cal. Rptr. 3d 397, 411 (Ct. App. 2011), review denied, 2011 Cal. LEXIS 6100 (Cal. June 8, 2011).

In short, the very same realism that was deemed so artistically worthy as to warrant First Amendment protection in Brown was deemed non-transformative in NCAA Student-Athlete and hence not a basis for establishing First Amendment rights. Notwithstanding that the Madden NFL video in Brown also literally recreates Jim Brown in the very setting in which he has renown, Judge Bybee explained in NCAA Student-Athlete the different results under virtually identical circumstances by noting that the right of publicity serves a purpose different from the commercial rights secured under the Lanham Act: “The right of publicity protects the celebrity, not the consumer. Keller's publicity claim is not founded on an allegation that consumers are being illegally misled into believing that he is endorsing EA or its products'. The reasoning of the Rogers and [other] courts ' that artistic and literary works should be protected unless they explicitly mislead consumers ' is simply not responsive to Keller's asserted interests here.” 107 U.S.P.Q.2d at 1637-38.

A dissent in NCAA Student-Athlete calibrated the constitutional scale quite differently, characterizing the video game as “a work of interactive historical fiction.” In reaching a conclusion directly contrary to the majority, the dissent noted the many ways in which the avatars could be modified and used in inventive ways in the game so as to warrant First Amendment protection: “The athletic likenesses are but one of the raw materials from which the broader game is constructed. ' The creative and transformative elements predominate over the commercial use of likenesses. The marketability and economic value of the game comes from the creative elements within, not from pure commercial exploitation of a celebrity image. The game is not a conventional portrait of a celebrity, but a work consisting of many creative and transformative elements.” 107 U.S.P.Q.2d at 1641-42. The dissent thus was more closely aligned with Brown , where the commercial interests of Jim Brown were deemed subordinate to Electronic Arts' First Amendment interests in publishing Madden NFL.

Finding A Balance

The sharp contrast between the two cases does indeed raise questions as to what is the proper balance. Even assuming Rogers and other like cases correctly curtail trademark owners' rights where a mark is used in an expressive work, if the First Amendment entails limiting the commercial interests of trademark owners, the question arises why it does not equally require limiting the rights of celebrities? Put differently, in NCAA Student-Athlete the NCAA video was deemed non-transformative and hence lacking in sufficient artistic merit to warrant First Amendment protection, yet in Brown, the same type of video was presumed to be of equal artistic stature as “Anna Karenina” or “Citizen Kane” (examples actually cited by the majority). And to assess the balance from the opposite perspective, it is curious how little weight Brown gave to consumers' interests in not being confused, instead holding that Rogers created a sharp rule under which only explicitly misleading content could cross the line deemed black and white in Brown . Almost making a virtue of the lack of artistic merit to Madden NFL, the Ninth Circuit was unreceptive to any facts supporting a finding of likelihood of confusion, including survey evidence.

Regardless of whether there are sufficient differences between the commercial interests protected by the Lanham Act and the right of publicity to warrant disparate treatment on that side of the scale, the First Amendment considerations would appear to be identical. Moreover, to the extent a court might simply seek to adhere strictly to the holding in Rogers , the Second Circuit in balancing Ginger Rogers' commercial interests against broader First Amendment considerations, gave identical weight to her Lanham Act and right of publicity claims.

The law is the law. Without suggesting that either Brown or NCAA Student-Athlete is at odds with existing precedent, what is striking is the contrast revealed by the two decisions, penned in parallel and published the same day by the same judge and involving essentially identical facts, yet leading to opposite results. In sum, treating the Rogers test as a strict black and white rule seems to permit little room for actual balancing of commercial versus First Amendment interests under the specific facts of a given case.

Jonathan Moskin is a partner in the New York office of Foley & Lardner LLP and a member of this newsletter's Board of Editors. ' 2013 Jonathan E. Moskin.

In paired opinions rendered the same day (July 31) by the same judge (Jay Bybee), the Ninth Circuit reached seemingly directly contrary conclusions in virtually identical cases concerning the balancing of intellectual property rights and First Amendment interests. In one of the two decisions, Brown v Elec. Arts, Inc., 107 U.S.P.Q.2d 1688 (9th Cir. July 31, 2013), the court upheld the dismissal on First Amendment grounds of a Lanham Act false endorsement claim by football star, Jim Brown, who objected to use of his likeness in Electronic Arts' “Madden NFL” video game. In the other, In re NCAA Student-Athlete Name & Likeness Licensing Litig., 107 U.S.P.Q.2d 1629 (9th Cir. July 31, 2013), the same court sustained the district court's refusal to dismiss a putative right of publicity class action claim by former college football star, Samuel Keller, whose likeness was used in another Electronic Arts video game, “NCAA Football.” Here, the court held that Electronic Arts had no viable First Amendment defense.

The Rogers Test

The basis of the ruling against Brown was the Second Circuit decision, Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), which affirmed a grant of summary judgment that the Federico Fellini film, “Ginger & Fred,” did not infringe the rights of the actress and former dancing partner of Fred Astaire, Ginger Rogers. Construing the Lanham Act narrowly so as to avoid needless Constitutional conflict with the First Amendment, the Second Circuit noted that “though consumers frequently look to the title of a work to determine what it is about, they do not regard titles of artistic works in the same way as the names of commercial products.” Id. at 1000. In short, consumers are not so simple-minded as to judge a book (or movie) merely by its cover. Rogers thus held that where a title has some artistic relevance to the work, it will not be deemed to violate the Lanham Act unless it is explicitly misleading. Rejecting Ms. Rogers' proposal that a title should be protected only if there is “no alternative means” to convey the intended meaning, the court explained:

We believe that in general the Act should be construed to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression. In the context of allegedly misleading titles using a celebrity's name, that balance will normally not support application of the Act unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.

Id. at 999.

The court applied the exact same standard in dismissing Ms. Rogers' right of publicity claim.

Jumping forward 24 years, Brown relied on Rogers and other intervening precedent adhering to the Second Circuit's 1989 ruling (and expanding its scope to encompass expressive content of a work, not merely titles), explaining that the Rogers test is now “a black and white rule” under which “the level of artistic relevance [of the trademark or other identifying material to the work] must merely be above zero for the trademark or other identifying material to be artistically relevant.” 107 U.S.P.Q.2d at 1692, quoting E.S.S Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095, 1100 (9th Cir. 2008). Because any realistic depiction of the 1965 Cleveland Browns football team would have included its star running back, Jim Brown, and because realism was deemed an artistic choice of Electronic Arts in making the video, Brown's likeness was deemed relevant to the video game. The court further explained that it would not assess the artistic merit of the accused work itself, noting that “[a]s expressive works, the Madden NFL video games are entitled to the same First Amendment protection as great literature, plays, or books.” 107 U.S.P.Q.2d at 1696. The court thus declined Brown's argument that the work lacked sufficient expressive content to be granted broad First Amendment protection. Having concluded that realism is a sufficiently worthy artistic goal, the court did not further consider either the artistic merit of the video game or the relevance of Brown's likeness in relation to any such artistry, and thus upheld the dismissal of Brown's Lanham Act claim.

The Transformative'Use Test

By contrast, in NCAA Student-Athlete, the same court held that the video game, “NCAA Football,” was not entitled to First Amendment protection because it was not sufficiently transformative under a state law test applied in right of publicity cases. The state law transformative use test, which bears some similarity to the identically named analysis under the copyright fair use defense, is “a balancing test between the First Amendment and the right of publicity based on whether the work in question adds significant creative elements so as to be transformed into something more than a mere celebrity likeness or imitation.” 107 U.S.P.Q.2d at 1632, quoting Comedy III Productions, Inc. v. Gary Saderup, Inc., 21 P.3d 797, 799 (Cal. 2001). Said the 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 renown.” 107 U.S.P.Q.2d at 1630. “[U]sers manipulate the characters in the performance of the same activity for which they are known in real life ' playing football in this case '. The context in which the activity occurs is also similarly realistic ' ' realistic depictions of actual football stadiums '.” That no one player had a predominant role and that the avatars could be modified in game play hence was deemed immaterial: “[T]hat the avatars appear in the context of a video game that contains many other creative elements does not transform the avatars into anything other than exact depictions ' doing exactly what they do as celebrities.” Id. at 1634, quoting No Doubt v. Activision Pub., Inc., 122 Cal. Rptr. 3d 397, 411 (Ct. App. 2011), review denied, 2011 Cal. LEXIS 6100 (Cal. June 8, 2011).

In short, the very same realism that was deemed so artistically worthy as to warrant First Amendment protection in Brown was deemed non-transformative in NCAA Student-Athlete and hence not a basis for establishing First Amendment rights. Notwithstanding that the Madden NFL video in Brown also literally recreates Jim Brown in the very setting in which he has renown, Judge Bybee explained in NCAA Student-Athlete the different results under virtually identical circumstances by noting that the right of publicity serves a purpose different from the commercial rights secured under the Lanham Act: “The right of publicity protects the celebrity, not the consumer. Keller's publicity claim is not founded on an allegation that consumers are being illegally misled into believing that he is endorsing EA or its products'. The reasoning of the Rogers and [other] courts ' that artistic and literary works should be protected unless they explicitly mislead consumers ' is simply not responsive to Keller's asserted interests here.” 107 U.S.P.Q.2d at 1637-38.

A dissent in NCAA Student-Athlete calibrated the constitutional scale quite differently, characterizing the video game as “a work of interactive historical fiction.” In reaching a conclusion directly contrary to the majority, the dissent noted the many ways in which the avatars could be modified and used in inventive ways in the game so as to warrant First Amendment protection: “The athletic likenesses are but one of the raw materials from which the broader game is constructed. ' The creative and transformative elements predominate over the commercial use of likenesses. The marketability and economic value of the game comes from the creative elements within, not from pure commercial exploitation of a celebrity image. The game is not a conventional portrait of a celebrity, but a work consisting of many creative and transformative elements.” 107 U.S.P.Q.2d at 1641-42. The dissent thus was more closely aligned with Brown , where the commercial interests of Jim Brown were deemed subordinate to Electronic Arts' First Amendment interests in publishing Madden NFL.

Finding A Balance

The sharp contrast between the two cases does indeed raise questions as to what is the proper balance. Even assuming Rogers and other like cases correctly curtail trademark owners' rights where a mark is used in an expressive work, if the First Amendment entails limiting the commercial interests of trademark owners, the question arises why it does not equally require limiting the rights of celebrities? Put differently, in NCAA Student-Athlete the NCAA video was deemed non-transformative and hence lacking in sufficient artistic merit to warrant First Amendment protection, yet in Brown, the same type of video was presumed to be of equal artistic stature as “Anna Karenina” or “Citizen Kane” (examples actually cited by the majority). And to assess the balance from the opposite perspective, it is curious how little weight Brown gave to consumers' interests in not being confused, instead holding that Rogers created a sharp rule under which only explicitly misleading content could cross the line deemed black and white in Brown . Almost making a virtue of the lack of artistic merit to Madden NFL, the Ninth Circuit was unreceptive to any facts supporting a finding of likelihood of confusion, including survey evidence.

Regardless of whether there are sufficient differences between the commercial interests protected by the Lanham Act and the right of publicity to warrant disparate treatment on that side of the scale, the First Amendment considerations would appear to be identical. Moreover, to the extent a court might simply seek to adhere strictly to the holding in Rogers , the Second Circuit in balancing Ginger Rogers' commercial interests against broader First Amendment considerations, gave identical weight to her Lanham Act and right of publicity claims.

The law is the law. Without suggesting that either Brown or NCAA Student-Athlete is at odds with existing precedent, what is striking is the contrast revealed by the two decisions, penned in parallel and published the same day by the same judge and involving essentially identical facts, yet leading to opposite results. In sum, treating the Rogers test as a strict black and white rule seems to permit little room for actual balancing of commercial versus First Amendment interests under the specific facts of a given case.

Jonathan Moskin is a partner in the New York office of Foley & Lardner LLP and a member of this newsletter's Board of Editors. ' 2013 Jonathan E. Moskin.