Articles

Jim Brown Loses While Ed O’Bannon Wins On Use Of Likeness Claims In Same Court Of Appeal

On July 31, two different decisions from the same panel at the Ninth Circuit came down dealing with use of former athletes’ likenesses by Electronic Arts Inc. in sports oriented video games.

In the first, the dismissal of Jim Brown’s claim under Section 43(a) of the Lanham Act was affirmed. The panel affirmed the trial court’s finding that under Rogers v. Grimaldi, 994 F. 2d 994 (2d Cir. 1989), Brown’s claim was barred as Section 43(a) claims are not applied to “expressive works” unless the use of the trademark has no artistic relevance to the underlying work whatsoever. The court, finding that video games are expressive works, noted that it was only necessary for the relevance of the trademark or other identifying material to be above zero for the trademark or other identifying material to be deemed artistically relevant. Since Brown’s likeness was artistically relevant, and there was no finding that EA was misleading the consumer as to Brown’s involvement, the 43(a) claim was properly dismissed. As to the latter factor, it would appear, as Brown argued,  that the district court engaged in fact finding to grant the motion to dismiss, but the Ninth Circuit felt that the Brown’s evidence was insufficient no matter what.

Having denied one of the greatest players in the NFL his day in court on his Lanham Act claim, the same panel was far more charitable to former UCLA basketball player Ed O’Bannon and other college players in both football and basketball. The context, however, is different. The appeal was from the trial court’s denial of an anti SLAPP motion. The salient claims being asserted were not under Section 43(a) but rather under California’s right of publicity statute, California Civil Code Section 3344 and California common law. 

In addressing the second prong of the anti-SLAPP motion, while EA conceded that the plaintiffs had stated a right of publicity claim, it claimed that four affirmative defenses required the court to find that it was not reasonably probable that the plaintiffs would succeed on the their claims. The court rejected all four. EA’s defenses, derived from the First Amendment, were:

  1. The transformative use defense from Comedy III Productions, Inc. v. Gary Saderup, Inc., 21 P.3d 797 (2001) which 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. The Ninth Circuit found that as the video game realistically portrays college players in the context of college games, the district court was correct in concluding that EA cannot prevail as a matter of law on the transformative use defense at this stage.
  2. EA urged the court to apply the false advertising test from Rogers v. Grimaldi, to right of publicity cases as well as Lanham Act cases. Citing, in part, the fact that right of publicity protects the celebrity and not the consumer, the Ninth Circuit declined to extend the Rogers test to right of publicity claims.
  3. As to the common law claims, liability should not lie for matters of public interest. The Court summarily rejected this defense noting that the video game was not publishing factual data.
  4. As to the statutory claims, no claim can arise from use of the name or likeness in connection with any news, public affairs or sports broadcast or account. (Cal. Civ. Code Section 3344(d)). For the same reason cited as to the common law claims, the court rejected this defense as well.

Related Practices


Related Attorneys

Find an Attorney

Each of the firm's offices include partners, associates and a professional staff dedicated to meeting the challenge of providing the firm's clients with extraordinary service.