When Hall of Fame Running Back sued Electronic Arts and Sony two weeks ago over his likeness being used in one of the popular “Madden” video games, it set in motion a renewed debate over how far commercial interests can go in using the likeness of current and retired professional athletes.
Brown’s suit, filed in Manhattan Supreme Court, alleged that the defendants cast him as the “muscular African American player wearing the number 32” on the “All Browns Team. “To Brown’s knowledge, [Sony and Electronic Arts] are not now, nor have they ever been, authorized to make any use of his trademark as the All-Time Great Cleveland Browns running back,” the suit continued.
Brown is seeking unspecified damages and a court order to stop his likeness from being used in the games.
One of Brown’s contentions is that he never signed over the rights to use his image in a video game. The lawsuit notes that “When Jim Brown played football, the NFL had a league wide policy that players shall have no lawyers or agents when negotiating compensation. Video games were not invented yet.”
Brown’s likeness, along with aforementioned other identifying characteristics, is not used in the current Madden NFL ’09, though it was used in the 2001 version.
The video game industry has been on the periphery of such litigation before. In 2006, for example, John Facenda Jr. sued the NFL for using his deceased father’s voice in a film entitled “The Making of Madden 2006.”
While some have suggested that the courts would be going down a slippery slope to extend relief to Brown in this instance, sports law expert Rick Karcher suggested recently that the onus is on the defendants.
“There will be two main defenses asserted here, neither of which is very compelling,” he wrote recently on the sports law blog.
“The first defense will be that Jim Brown’s name and picture are not being used, therefore his identity is not being exploited. However, it is well-established by case precedent that the identity element necessary for a right of publicity cause of action is met when there is a sufficient link between the particular plaintiff and the defendant’s use, in other words, that the defendant is actually referring to the plaintiff. In Doe v. TCI Cablevision, the court explained: ‘To establish that a defendant used a plaintiff’s name as a symbol of his identity, the name used by the defendant must be understood by the audience as referring to the plaintiff….In resolving this issue, the fact-finder may consider evidence including the nature and extent of the identifying characteristics used by the defendant, the defendant’s intent, the fame of the plaintiff, evidence of actual identification made by third persons, and surveys or other evidence indicating the perceptions of the audience.’ In Jim Brown’s case, the defendants will have a difficult time convincing a court that those playing the video game do not understand that the character in the game is referring to Jim Brown.”
Here are a few cases, according to Karcher, that support Brown’s case against EA:
• Carson v. Here’s Johnny Portable Toilets, Inc. — held the phrases “Here’s Johnny” and “The World’s Foremost Commodian” were clearly referencing Johnny Carson even though his name wasn’t being used.
• Ali v. Playgirl, Inc. — held that the defendant’s use of a drawing of a black man seated on a stool in the corner of a boxing ring captioned as “Mystery Man” and “the Greatest” sufficiently identified Muhammad Ali even though his name and picture were not being used.
• Hirsch v. S.C. Johnson & Son, Inc. — held that use of the name “Crazylegs” on a shaving gel for women violated the right of publicity of a famous football player named Elroy Hirsch, who had been known by this nickname.
• Motschenbacher v. R.J. Reynolds Tobacco Co. — held that the image of a race car driver in a red racing car with a white pinstripe and number “11” sufficiently identified a professional race car driver whose number “71” race car was always in red and white with the same pinstripe.
• White v. Samsung Electronics America, Inc. — court found that the use of mechanical robots clearly resembling Vanna constituted a violation.
“The second defense most likely to be asserted is that the First Amendment trumps the right of publicity. The defendants will most likely rely on the Eighth Circuit’s recent decision in C.B.C. Distribution and Marketing, Inc. v. Major League Baseball Advanced Media, L.P., whereby the court applied a precarious ‘public domain’ standard to hold that the use of names and statistics of professional baseball players by fantasy leagues without authorization is protected by the First Amendment.”
Karcher was pessimistic that such a standard would be successfully applied in the Brown case, reasoning that by doing so a court would “essentially eliminate ALL right of publicity causes of action where the defendant uses a high profile person’s identity without authorization in every single context, whether that be unauthorized use in fantasy leagues, video games, trading cards or advertisements.
“The only practical standard to apply in determining whether the First Amendment trumps a right of publicity claim in a given context must focus on whether the primary use of the plaintiff’s identity by the defendant constitutes an expression protected by the First Amendment (e.g. news reporting, opinions and critiques written in magazine and internet articles, parodies, artistic expressions, etc.),” he continued. “While fantasy league use, video game use, trading card use and use in advertisements serve an ancillary function of informing the public (a legitimate First Amendment concern), the primary use in these contexts is simply not to inform the public.”
Mark Conrad, another sports law expert who has contributed to Sports Litigation Alert in the past, added: “What troubles me about the Eighth Circuit’s ruling in MLBAM is that the court did not set any contours or tests regarding the balancing of the commercial and first amendment interests.
“The issue can get only more confusing, not less, as more cases come up and the more dominant digital rights become,” he added, suggesting two solutions that “come to mind: (1) federalizing the standard; and (2) creating a compulsory license system.”
