[UPDATED] – Legendary football running back Jim Brown may eke out a victory over video game maker Electronic Arts , Inc., in his claim that the popular Madden football games violate his trademark and publicity rights.
But it is going to be a close call. The 9th U.S. Circuit Court of Appeals heard arguments Friday, and it appears that two members may be split and the tie-breaker could come down to Judge Sidney Thomas.
This is the second time the appeal has been argued. The death of Judge Pamela Rymer, an original member of the three-judge panel, came before a decision was rendered. The re-argument suggests the other two judges, Jay Bybee and visiting Judge Gordon J. Quist of Michigan, may be split on how to rule.
Brown, 74, has been called the “greatest football player of all time” and has been inducted into the college and professional halls of fame. He played as a record-setting running back for the National Football League’s Cleveland Browns from
1857 1957 to 1965 and later went on to make Hollywood movies, including his famous role as World War II soldier Robert Jefferson in “The Dirty Dozen.”
Brown sued Electronic Arts for its use of his image and persona as an avatar in popular Madden NFL videogames without his permission. He claimed violation of federal trademark rights and state law right of publicity.
EA has responded that it has a first amendment right to use his likeness in a creative way and there is no likelihood consumers would be confused about Brown’s role or think he endorsed the game.
Although EA consistently obtains licenses from the players’ association to use current NFL players’ likenesses, it often does not do the same for retired players, according to Brown’s lawyers.
“Jim Brown is arguably the greatest football player that ever lived… that is why Electronic Arts is doing it, they are trading on Mr. Brown’s persona,” argued Ronald S. Katz, Brown’s lawyer.
Judges Split Views
In response to a question from Bybee, Katz said the EA games use roughly 1,500 different players as avatars.
“If this was tennis you’d have a stronger argument,” Bybee said. “Jim Brown is one of 1,500 on the field. He was not singled out.”
Quist quickly piped up that Brown is on the cover of EA videogame packaging.
(The judges had issued an order asking EA to supply copies of the games and a player so they could inspect the material prior to argument. Not such tough duty for law clerks.)
The diverging perspectives between Bybee and Quist continued throughout the argument session.
In addition, the panel followed with similar arguments in the case of collegiate quarterback Sam Keller, who played for Arizona State and Nebraska. He was also portrayed in an EA college football game series.
“I don’t think there is a first amendment right to mislead the public,” Katz told the panel.
“But you can lie,” Bybee responded, citing the recent U.S. Supreme Court decision allowing someone to lie about being a Medal of Honor winner without criminal prosecution.
EA lawyer Kelli Sager pressed hard for the broadest application of free speech protection.
“Videogames are entitled to first amendment projection just as movies, plays and books,” she said. “Jim Brown wants you to carve out a lower protection four video games,” she said.
Quist grilled her repeatedly about the ability to take any movie star and create an avatar or a hologram that could be used without pay in the place of the real person.
He suggested her argument would allow the movie creation of an avatar for Sean Connery as James Bond to be made without seeking rights from the actor.
During the argument in Keller’s case Sager argued that the movie Blindside could not have been made because it was a work of fiction based on the real life story of a homeless kid who is helped to become a star football player.
She compared the EA games to Andy Warhol art, which are based on real photos but are transformed through his adaptations into works of art. For the same reason, EA should not have to pay the players for the right to their images, she argued.
Thomas asked, “The avatar is the key here right?” He said EA could make the avatar heroic or change it. Why isn’t that a publicity interest?”
Finally, Bybee wanted to know “how far will you carry this?”
“If you get to the point where you’re taking an entire performance… then you have a case,” she said.
Case: Brown v. Electronic Arts, Inc. No. 09-56675,
Keller v. Electronic Arts, Inc., No. 10-15387