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


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.