The First Amendment Extends to Dillinger Tommy Guns

June 29, 2011 By Leave a Comment
255px-Godfather2gameCover

There has been significant activity over the past several years in the courts with regard to the First Amendment and how far it goes to protect the use of trademarks and the likeness of celebrities in video games.  I previously posted about the Madden NFL game and how the defendants were successful in a First Amendment Defense.

The Southern District of Indiana recently dismissed a case involving the use of “Dillinger” as the name of a weapon in the Godfather I and Godfather II video games.

The John Dillinger heirs sued EA under trademark infringement/right of publicity theories for using “Dillinger” and “Modern Dillinger” to refer to the Tommy Gun weapons available in the Godfather I and Godfather II games.  Although there were a number of issues raised in connection with a motion to dismiss/motion for summary judgment, the ultimate issue was whether EA had a First Amendment right to use “Dillinger” to refer to the weapons in the game.

In granting summary judgment for EA, the court applied the Second Circuit’s Rogers test, which requires an analysis of 1) whether the name used has any artistic relevance to the underlying work, and if so, 2) whether it explicitly misleads the public as to the source or content of the work.

In this case, the Godfather games were based on the novel and movie of the same name.  Neither the novel, nor the movie depicted John Dillinger.  However, it was undisputed that John Dillinger and Tommy Guns were closely related as that was Dillinger’s weapon of choice.  Because EA used the name to refer to Tommy Gun weapons in the games and the plaintiff presented no evidence of any confusion as to the source or content of the work, the First Amendment defense applies, the court held.  The court noted that even if it accepted plaintiff’s contention that the relationship between Dillinger and the games is attenuated, the threshold for “artistic relevance to the underlying work” is very low—it just needs to be above zero.

This is a good decision for game developers in that it presents a case where the artistic relevance of the use of the name to the underlying work is not as strong as it has been in other cases.  But the case will likely to be appealed to the Seventh Circuit according to plaintiff’s counsel.

It is important when developing a game to consider the artistic relevance of the use of celebrity names, likeness, and trademarks in video games.  Where there is no relevance, the courts have found that the First Amendment defense does not apply.

Filed Under: Trademarks, Trade Dress, and Unfair Competition

Hall of Famer Jim Brown Fails to Break Through Electronic Arts’ First Amendment Defense

October 4, 2009 By 1 Comment
Note of use of Brett Favre's likeness on front cover

 

Note of use of Brett Favre's likeness on front cover

Judge Florence-Marie Cooper of the Central District of California recently dismissed Jim Brown’s claim of false endorsement against Electronic Arts.  The decision continues the courts’ trend of 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 players 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 alleges in his Complaint 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.”

Section 43(a) of the Lanham Act provides a federal cause of action for the unauthorized use of a celebrity’s identity (such as visual likeness, vocal imitation, or other uniquely distinguishing characteristic) 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.  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 non-commercial 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, the courts have applied the Rogers balancing test established by the Second Circuit, which provides that a Lanham Act claim against the creator of an expressive work can survive only if “the public interest in avoiding consumer confusion outweighs the public interest in free expression.”  

The Rogers 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.  The court found that these elements represent the designers’ creative interpretation of real-world NFL game play and that 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 Rogers balancing test.  The Madden NFL games are about football. Brown is a legendary NFL football player, the best ever according to some.  Thus, the court found that the use of a legendary NFL football player’s likeness in a game about NFL football is clearly relevant, satisfying the first prong of Rogers.  

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 the 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.

Although the court discussed the fact that Brown was not expressly identified in the games either by name or number in reaching its decision, the result should not have been any different even if his name and number had been used  as the Court “assumed” that Brown’s likeness was used in the game.  Thus, it follows that, based on this decision, game developers could use players’ names, numbers, and likeness with impunity in a video game so long as the use of the characters is relevant to the game itself and there is no explicit claim of endorsement by the player.

Such a result would pave the way for development of more professional football games as currently the NFL has granted an exclusive license to EA to use current players in the video games.  EA enjoys a monopoly and would probably like to keep it that way.  However, EA’s successful argument in this case could result in a competitor using the same argument to avoid the need for a license from the NFL, thus taking away some of EA’s market share.  

Can EA have its cake and eat it too?  The Brown decision does not make a player’s likeness free for all purposes.  While the players’ likeness can be used in the video game itself without permission, use of a player’s likeness or name on the packaging for the video game or in promotional materials would probably cross the line and fall outside the protection of the First Amendment because in that case, the name or likeness is used in a manner so as to cause a consumer to believe that the video game is sponsored or endorsed by that player.

In conclusion, the First Amendment may give game developers and publishers more leeway than they think in using the name or likeness of a celebrity without paying for a license. However, it is important that the use of the name or likeness have relevance to the underlying work.  The determination of when a use crosses the line and becomes an explicit attempt to mislead consumers into thinking the product is endorsed by the celebrity will be made on a case by case basis.  Yet, the Brown decision solidifies the principle that mere use of a celebrity’s likeness in and of itself does not prove a Lanham Act violation.

Filed Under: Trademarks, Trade Dress, and Unfair Competition Tagged With: , , , , , , , , , , ,

Remember the Alamo: Federal Trademark Dilution v. Texas Trademark Dilution

February 12, 2009 By Leave a Comment
alamo

Trademark infringement occurs when a third party uses the same mark or a mark similar to a trademark owned by a trademark owner in such a manner that consumers of the products are likely to be confused as to the source of the products.  Generally speaking, a claim of trademark infringement does not exist when the competing products are not the same and are so unrelated that consumers will not be confused as to the source of each product.  That is, unless the mark is famous.

If the mark is famous, then the trademark owner may bring a federal trademark dilution claim against any party using the mark regardless of whether the trademark is being used for similar goods or services.  The rationale behind this theory of recovery is that the use of a famous mark, even if on differnt goods or services, weakens the commercial value of the mark. 

In 2006, Congress passed the Trademark Dilution Revision Act (TDRA) in response to Moseley v. V Secret Catalogue, Inc. in which the Supreme Court held that the plaintiff must prove “actual dilution” rather than “likelihood of dilution.”  Among other things, the TDRA amended the Federal Trademark Dilution Act to change the standard from “actual dilution” to “likelihood of dilution.”  Thus, proof of actual dilution is no longer required to prevail on a federal dilution claim.

To prove a federal dilution claim, a trademark owner must show (1) that the mark is famous, (2) that the mark is distinctive, (3) that the defendant began using a mark after it became famous, and (4) that defendant’s mark is likely to cause blurring or tarnishment of the mark.  Typically, the most difficult element of proof is showing that the mark is truly famous.  Under the TDRA, a mark is famous “if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner.” 

Most Texans, and indeed many people outside of Texas would recognize the longhorn silhouette used by the University of Texas in connection with the university’s athletic programs.  In Board of Regents v. KST Electric, Ltd., the university filed suit against the defendant for using the longhorn silhouette in connection with the logo for its business. 

In response to a motion for summary judgment by the defendant on the university’s federal dilution claim, the university presented evidence of how its football and other sports programs had acquired fame.  The court held that the university had only shown evidence of “niche fame” because evidence of fame among sports fans is not evidence of fame among the general consuming public.  The TDRA was enacted, in part, to get rid of “niche fame” by requiring a mark be “widely recognized by the general consuming public of the United States.”  “One of the major purposes of the TDRA was to restrict dilution causes of action to those few truly famous marks like Budweiser beer.”  Therefore, the court held that the university had not created a genuine issue of material fact as to whether the longhorn silhouette logo is “a household name.”

It is interesting to note that in KST Electric, the defendant did not move for summary judgment on the state dilution claim.  Why the defendant only moved for summary judgment on the federal dilution claim and not the state dilution claim in all likelihood relates to the broader scope of a Texas dilution claim. 

To prove a claim of dilution under Texas law, the trademark owner must show (1) that the mark is distinctive and (2) that defendant is making significant use of a very similar mark in a manner that is likely to cause dilution of the trademark owner’s mark by blurring or tarnishment.  Whether a mark is distinctive is determined by considering  (1) whether the mark is arbitrary, (2) the length of time a user has employed the mark, (3) the scope of the user’s advertising and promotions, (4) the nature and extent of the first user’s business, and (5) the scope of the first user’s reputation. 

Thus, there is no requirement that the mark be famous, and while it may be necessary to show that the mark is a strong mark, it is not necessary to prove that a mark is a household name to prevail on a Texas dilution claim.

By Vincent J. Allen

Filed Under: Trademarks, Trade Dress, and Unfair Competition