By Gregory Curtner and Suzanne Larimore Wahl, of Schiff Hardin LLP
What do sports, celebrities, and videogames have in common? All are involved in recent or current cases claiming violations of right of publicity[1] or otherwise protected intellectual property.[2]
Sports
One of the more interesting recent cases is University of Alabama Board of Trustees v. New Life Art, Inc., which involved a painter of noteworthy University of Alabama sports scenes. The painter, Daniel Moore, had depicted Alabama uniforms in his work since 1979 and had signed various licensing agreement with Alabama from 1991-1999. 683 F.3d 1266, 1269-170 (11th Cir. 2012). In 2002, after the licenses expired, Alabama told Moore he would need permission to portray Alabama’s uniforms and trademarks in his work. Moore disagreed, and litigation followed.
The Eleventh Circuit found that Moore’s use of Alabama trademarks in paintings, prints and calendars were protected under the First Amendment: “The depiction of the University’s uniforms in the content of these items is artistically relevant to the expressive underlying works because the uniforms’ colors and designs are needed for a realistic portrayal of famous scenes from Alabama football history.” Id. at 1278-79. In coming to this conclusion, the Eleventh Circuit relied on the Sixth Circuit’s decision in ETW Corp. v. Jireh Publishing, Inc., 332 F.3d 915 (6th Cir. 2003). There, Tiger Woods’s publicity company sued an artist who painted a collage of Tiger Woods images. The Sixth Circuit found that the work was protected by the First Amendment, as Woods’s image had artistic relevance to the underlying work and did not explicitly mislead as to the source of the work. Id. at 937.
Compare these decisions with the recent decision from the Northern District of Illinois in Jordan v. Jewel Food Stores, Inc., 851 F. Supp. 2d 1102 (N.D. Ill. 2012). Grocery store chain Jewel ran a page in a commemorative issue of Sports Illustrated Presents celebrating Michael Jordan’s induction into the Basketball Hall of Fame. Jewel’s page featured Jordan’s name and the number 23, along with Jewel’s logo, name and slogan. Id. at 1104. Jordan sued, arguing that the page constituted an improper commercial use of his name. The district court disagreed, finding that Jewel’s speech was noncommercial as the page did not propose a commercial transaction. The case is on appeal before the Seventh Circuit.
Celebrities
Celebrities can make the news — and the law — even when they have retired or passed away. Jones v. Corbis Corp., No. 11-56082, 2012 WL 2884790 (9th Cir. July 16, 2012) is such a case. Shirley Jones of Partridge Family fame claimed that Corbis Corporation violated her right of publicity by posting sample images of photographs taken of her at red carpet events, even though Jones admitted she intended for the photographs to be distributed to media outlets. Id. at *1. The Ninth Circuit found that Jones had consented to Corbis’s use, as Jones knew the photos would be distributed and Corbis acted in accordance with the well-known and established customs of the industry. Id.
The Ninth Circuit also weighed in on Marilyn Monroe’s publicity rights. In Milton H. Greene Archives, Inc. v. Marilyn Monroe LLC, 692 F.3d 983 (9th Cir. 2012), the issue was whether Monroe’s will had left her posthumous right of publicity to her estate, a question that turned on whether Monroe was domiciled in New York — which has no posthumous rights — or California — which does. As Monroe’s executors had consistently argued she was domiciled in New York to avoid California estate taxes, the Ninth Circuit found that they were now judicially estopped from asserting a California domicile to take advantage of the right of publicity. Id. at 986.
In another posthumous case, a company claiming to hold the publicity rights of the infamous gangster John Dillinger, as well as the trademark in the Dillinger name, sued the videogame company Electronic Arts, which features guns called the “Dillinger Level Three Tommy Gun” and the “Modern Dillinger” in its Godfather series of videogames. Dillinger, LLC v. Electronic Arts, Inc., 795 F. Supp. 2d 829, 830 (S.D. Ind. 2011). The court found that the posthumous statute did not apply to personalities like Dillinger who died before its 1994 enactment, as well as finding that EA’s use was protected as a literary work under Indiana law. Id. at 835-36.
Finally, an actress who appeared in the controversial movie Innocence of Muslims moved for a preliminary injunction to remove the movie from YouTube and Google.[3] Garcia v. Nakoula, No. CV 12-08315-MWF (VBKx) (C.D. Cal. Nov. 30, 2012). The actress claimed she held a copyright not in the movie itself but in her own performance. The court found that even if such a copyright was cognizable, the actress had necessarily (if impliedly) granted the movie’s author a “license to distribute her performance as a contribution incorporated into the indivisible whole of the Film” and denied her motion. Id. at 3.(4)[4]
Videogames
The Dillinger case discussed above is far from the only case at the intersection of publicity or trademark and videogames. The holders of intellectual property related to military helicopters brought claims against Electronic Arts for depicting those helicopters in its Battlefield 3 videogame. Electronic Arts, Inc. v. Textron Inc., No. C 12-00118 WHA, 2012 WL 3042668 (N.D. Cal. July 25, 2012). The court recently denied Electronic Art’s motion to dismiss, finding sufficient allegations about actual consumer confusion and the effectiveness of the videogame’s disclaimer, and to defeat a nominative fair use defense. Id. at *6.[5]
The ultimate success of such fair use and First Amendment arguments may have a drastic impact on the ability of trademark or publicity licensors to license their marks or likenesses. Videogame makers currently license various rights from professional athletes, singers, sports teams and leagues, and the owners of famous stadia and arenas. Will they do so in the future?
In the right of publicity world, former athletes are waiting for the Third and Ninth Circuits to rule on three closely-watched cases. Keller v. Electronic Arts, No. 10-15387 (9th Cir.) and Brown v. Electronic Arts, No. 09-56675 (9th Cir.) have been consolidated on appeal and are awaiting decision in the Ninth Circuit. Each involves claims that the avatars used in Electronic Arts sport videogames amount to actionable “uses” of the image, likeness, persona, or trademark of former players. In Brown, the lower court applied the Rogers v. Grimaldi test, adopted from the Second Circuit, to determine that the First Amendment permitted any alleged use of Brown’s image. Brown v. Electronic Arts, Inc., No. 2:09-cv-01598-FMC-RZx (C.D. Cal. Sept. 23, 2009). Conversely, in Keller, the lower court used the transformative use test from California state law and found that the videogame was not sufficiently transformative to bar the right of publicity claim as a matter of law. Keller v. Electronics Arts, Inc., No. C 09-1967 CW, 2010 WL 530108 (N.D. Cal. Feb. 8, 2010).
The Third Circuit case, Hart v. Electronic Arts, Inc., No. 11-3750 (3d. Cir.), also concerns the same type of claims about the avatars in Electronic Arts’ videogames. The lower court found that the videogame was entitled to protection under the First Amendment under both the transformative use test and the Rogers v. Grimaldi test.
Summary
Intellectual property laws are intended to promote creativity and innovation by ensuring that the creators and innovators can benefit from their work. But when the creators and innovators are successful, those creations and innovations become the currency of our culture. We must be able to discuss, debate and interact with those facets of our culture. Sports, in particular, sit at the intersection of news and entertainment and are an essential part of our culture today. Striking the appropriate balance between protecting innovation and protecting the continuing cultural conversation will continue to be a hot topic in the coming years, as the law tries to apply cases about movies and television to videogames and the Internet.
Gregory Curtner is a partner at Schiff Hardin LLP in its New York City and Ann Arbor, Michigan offices. He practices nationally in antitrust and sports law.
Suzanne Larimore Wahl is an associate at Schiff Hardin LLP in its Ann Arbor, Michigan office. She practices nationally in antitrust and sports law.
[1] The so-called right of publicity is recognized in a majority of the states either by statute, judicial decision, or both.
[2] Some claims are brought as publicity claims, some as copyright, some as trademark and some as a mixture of the three.
[3] The content of the film reportedly incited global riots because of its unfavorable portrayal of Mohammed.
[4] Athletes similarly seeking to control copyrighted footage in which they appear have also been unsuccessful. See Baltimore Orioles, Inc. v. Major League Baseball Players Association, 805 F.2d 663 (7th Cir. 1986); Washington v. National Football League, No. 11-3354 (PAM/AJB), 2012 WL 3017961 (D. Minn. June 13, 2012); Gionfriddo v. Major League Baseball, 94 Cal. App. 4th 400 (Cal. Ct. App. 2001).
[5] Similar cases in which the videogame makers were ultimately successful in receiving First Amendment protection include Kirby v. Sega of America Inc., 144 Cal. App. 4th 47 (Cal. Ct. App. 2006) and E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008).
