9th Circuit Plays Video Games in Likeness Infringement Cases: NCAA Vets Earn Right of Publicity Victory; NFL Vets Taste Agony of Lanham Act Defeat

“Because we know when we add up all those inches...that’s the difference between winning and losing”   – Al Pacino, Any Given Sunday Last week, the Ninth Circuit handed down rulings in two cases that have held the interest of sports fans, gamers, and IP lawyers for four years:  In re: NCAA Student-Athlete Name & Likeness Licensing Litigation and James “Jim” Brown v. Electronic Arts.  The In re NCAA ruling allowed lead plaintiff Samuel Keller’s right of publicity claims to survive defendant Electronic Arts’ (EA) motion to strike and rejected many of EA’s key arguments in the process.  By contrast, the Brown v. EA ruling dismissed  NFL legend Jim Brown’s last remaining claim against the very same defendant.

At a glance, these completely different results might seem a bit curious given that the two cases involved nearly identical fact patterns.  But because the Ninth Circuit applied very different standards to its analysis of these similar fact patterns, the rulings are not nearly as inconsistent as they may first appear.  In In re NCAA, the Ninth Circuit ruled in Keller’s favor based on its analysis of his California state law right of publicity claims.  In Brown v. EA, the Ninth Circuit ruled against Brown based on its analysis of his Section 43 (a) Lanham Act claims.

The Ninth Circuit never addressed Brown’s state law claims, including those grounded in California’s right of publicity law, as it lacked the jurisdictional authority to do so.  This fact turned out to be a game changer, as claims brought under California’s right of publicity law have a significantly easier path to victory than those brought under Section 43 (a) of the Lanham Act.

From here, this post will summarize the striking similarities between In re NCAA and Brown v. EA’s operative facts.  It will then explain how a small procedural difference between the two cases impacted the Ninth Circuit’s jurisdiction over the plaintiffs’ respective right of publicity claims and, in so doing, proved to be the “inch” that made the difference between winning and losing.



EA Used Keller’s Likeness in Its NCAA Football Video Games

Let’s start with the facts of each case.  In re NCAA stems from former college quarterback Samuel Keller’s claim that EA used his likeness without his consent in its NCAA Football video game series (EA NCAA Football).  According to the Ninth Circuit (and a fair amount of personal experience), EA NCAA Football “allows users to control avatars representing college football players as those avatars participate in simulated games.”  EA simulates every little detail for each player represented in the game as accurately as possible.  EA’s long held slogan is “If it’s in the Game, It’s in the Game” – and it goes as far as sending team equipment managers detailed player questionnaires in its quest to satisfy this high standard.

EA did not fail to meet its rigorous accuracy goals in replicating the likeness of Samuel Keller.  Keller was the starting quarterback at Arizona State University in 2005 and at Nebraska University in 2008.  In both years, EA NCAA Football included a virtual player whose physical attributes and athletic skills seemed pretty familiar to Keller. Per the Ninth Circuit:

In the 2005 edition of the game, the virtual starting quarterback for Arizona State wears number 9, as did Keller, and has the same height, weight, skin tone, hair color, hair style, handedness, home state, play style (pocket passer), visor preference, facial features, and school year as Keller.  In the 2008 edition, the virtual quarterback for Nebraska has these same characteristics, though the jersey number does not match, presumably because Keller changed his number right before the season started.

EA Used Brown’s Likeness in Its Madden NFL Video Games

Similar to In re NCAA, Brown v. EA stems from former NFL running back Jim Brown’s claim that EA used his likeness without his consent in its lucrative Madden NFL video game series (Madden NFL).  The underlying facts in Brown v. EA are remarkably close to In re NCAA’s.  Defendant EA, is the same EA that is also a defendant in the on-going In re NCAA Litigation.  Madden NFL video is EA NCAA Football’s conceptual twin.  In fact, the only difference between the Ninth Circuit’s descriptions of the two games each is one uses the word “college” and the other “professional.”

Given this, it’s not surprising that EA uses the same level of painstaking detail to create Madden NFL’s player avatars as it does for EA NCAA Football.  Madden NFL contains an avatar for each current NFL player, and that avatar is designed to mirror the player’s “name, jersey number, physical attributes, and physical skills.”   In addition, some versions of Madden NFL include great teams from the NFL’s past (like, for example, the Jim Brown led 1965 Cleveland Browns).   Just like the EA NCAA Football player avatars, the Madden NFL avatars for former NFL players do not include the players’ names.  But the Ninth Circuit found that, even without their names, the former players that are virtually represented in Madden NFL “are easily recognizable due to the accuracy of their team affiliations, playing positions, ages, heights, weights, ability levels, and other attributes.”

Jim Brown’s Madden NFL avatar is no exception.  His avatar does not include his name, has a different jersey number than the one Brown wore while playing for the Browns, but, as the Ninth Circuit found, was still easily recognizable as Jim Brown due to similarities in physical likeness and style of play.  Note that Keller’s 2008 EA NCAA Football avatar also did not include Keller’s name or jersey number.

Amongst all these similarities, there is a notable difference between the cases’ named plaintiffs, but it’s one that would lead you to expect Brown’s claims had a higher chance of success:  Jim Brown’s likeness is much more recognizable than those of Samuel Keller or any of In re NCAA’s eight other named plaintiffs.  As the Ninth Circuit correctly points out, Jim Brown is “widely regarded as one of the best professional football players of all time.”  Brown starred as a running back for the Cleveland Browns and followed up his Hall of Fame football career with a successful stint as an actor and an entertainer.  Per the Ninth Circuit“[t]here is no question that he is a public figure whose persona can be deployed for economic benefit.”

And yet, despite the fact that the main factual difference between Keller and Brown tilts in the Brown's favor, last week's scoreboard reads Keller 1 and Brown 0.  Here's why.


The Critical Difference -- Brown and Keller Both Filed Complaints Containing California State Law Claims in California Federal District Court, But They Alleged Different Grounds for Federal Jurisdiction

A minor procedural difference in how Brown and Keller framed their causes of action had a major impact on the outcome of the two cases.  Both Brown and Keller alleged, in addition to other claims, that EA misappropriated their likenesses under California’s right of publicity law (Cal. Civ. Code. §3344).  Both Brown and Keller filed suit in a California federal district court – Keller in the Northern District of California and Brown in the Central District of California.  But, unlike Brown, Keller asserted that the court had federal diversity jurisdiction over his state law claims.  Brown, on the other hand, asserted that the  district court had supplemental jurisdiction over his state law claims because it would already be deciding a federal claim he brought under Section 43(a) of the Lanham Act.

Brown's reliance on supplemental jurisdiction was critical, as federal courts won’t rule on state law claims if they’ve dismissed the federal claim that provided the basis for the court’s supplemental jurisdiction state law causes of action.  As a result, Brown’s state law claims could have survived a motion to dismiss only if his Lanham Act claim could have survived one as well. 

Brown’s Federal Lanham Act Claim Faced a Much More Stringent Standard than the Plaintiffs’ Respective Right of Publicity Claims

For Brown’s Lanham Act claim to survive EA’s motion to dismiss, Brown needed to meet the strict Rogers test requirements.  The Rogers test was first applied by the Second Circuit in Rogers v. Grimaldi, and was adopted by the Ninth Circuit in Mattel v. MCA.  Under the Rogers test, Brown had to allege facts sufficient to show either that (i) EA’s use of his likeness had “no artistic relevance whatsoever,” or, (ii) even though EA’s use involved some artistic elements, EA’s use explicitly misleads consumers as to whether Brown endorsed Madden NFL’s use of his likeness. The district court held that he didn't, and dismissed the claim.  It then declined to exercise supplemental jurisdiction over Brown's state law claims, including his California right of publicity claims.  As a result, the Ninth Circuit could address his Lanham Act claims on appeal.

And when it did, the Ninth Circuit held Brown's Lanham Act claim to the same high Rogers test standards Brown failed to meet at the district court level.  Brown tried to meet it by presenting the court with a wide variety of arguments.  After addressing and rejecting each one, the court dismissed Brown's Lanham Act claim because it found he had not alleged facts sufficient to meet his high pleading burden under the Rogers test.

Had the court examined Brown’s right of publicity state law claims, it would have analyzed EA’s motion to strike under the plaintiff friendly transformative use test.  Under the transformative use test, a defendant’s use of a celebrity’s likeness does not constitute a violation of the celebrity’s right of publicity where the use contains significant transformative use elements sufficient for it to be afforded protection under the First Amendment.

According to the Ninth Circuit, a defendant seeking to strike right of publicity claims on the grounds that its use of the celebrity’s likeness was transformative may only succeed if “it is entitled to the transformative defense as a matter of law,” and it would only be entitled to this defense as a matter of law “if no trier of fact could reasonably conclude that the game is not transformative.”  Using this test in In re NCAA, the court upheld Keller’s right of publicity claim.

*Side Note: Brown’s California law right of publicity claims aren’t dead. The district court dismissed the claims without prejudice to his right to bring the claims in another venue.  If he can find a basis for diversity jurisdiction, Brown might be able to file his claims in another district.  If not, California state court might be another option.  Either way, I would not be surprised to see Brown’s state law claims reappear in a California court sometime in the near future.


In Brown v. EA, the Ninth Circuit makes clear that public figures seeking relief under Lanham Act Section 43(a) must meet a very high burden to survive on a motion to dismiss.  In In re NCAA, the Ninth Circuit makes equally clear that public figures seeking redress under California’s Right of Publicity claim do not need to meet such a burden.

Near the end of its In re NCAA opinion, the Ninth Circuit explains the rationale underlying this differential treatment: “As the history and development of the Rogers test makes clear, it was designed to protect consumers from the risk of consumer confusion—the hallmark element of a Lanham Act claim.  The right of publicity, on the other hand, does not primarily seek to prevent consumer confusion….The right of publicity protects the celebrity, not the consumer.” And for that celebrity, the right of publicity “protects a form of intellectual property [in one’s person] that society deems to have some social utility.”

Section 43(a) protects interests that are not nearly as compelling.  According to the Ninth Circuit, “the public interest in free expression outweighs the public interest in avoiding consumer confusion,” so the Rogers test “balance need not be designed to find each of the sides weightier with equal frequency.”  In other words, the Rogers test is supposed to present tough sledding.

So plaintiffs alleging likeness misappropriation have a much easier path to success under California’s right of publicity laws than under the Lanham Act.  Accordingly, the best course of action for those seeking redress for likeness misappropriation in Ninth Circuit courts would be to make sure to bring a right of publicity claim AND make sure the court’s jurisdiction over the claim rests on something other than the ability of your Section 43 (a) claim to meet the Rogers test and survive a motion to dismiss.