Revisiting the issue of how trademark and similar rights under the Lanham Act are balanced against First Amendment rights, the U.S. Court of Appeals for the Ninth Circuit confirmed that the Rogers test remains the appropriate framework for analyzing this issue, and affirmed the grant of a motion to dismiss for failure to state a claim. Brown v. Elec. Arts, Inc., Case No. 09-56675 (9th Cir., July 31, 2013) (Bybee, J.). 

Jim Brown was a star football player for the Cleveland Browns and was inducted into the National Football League Hall of Fame after his retirement. Electronic Arts (EA) produces the Madden NFL series of video games. Although Brown’s name does not appear, his likeness can be recognized in some Madden NFL games. Brown sued EA for false endorsement under §43(a) of the Lanham Act. The district court applied the Rogers test in granting EA’s motion to dismiss. Brown appealed.

Brown urged consideration of the “likelihood of confusion” test and the “alternative means” test in addition to the Rogers test. The 9th Circuit declined to apply those tests, noting that it had previously rejected those tests because each fails to account for the full weight of the public’s interest in free expression when expressive works are involved.

The 9th Circuit previously adopted the Rogers test created by the U.S. Court of Appeals for the Second Circuit. Under the first of two prongs of the Rogers test, § 43(a) is not applied to expressive works “unless the [use of the trademark or other identifying material] has no artistic relevance to the underlying work whatsoever.” The second prong applies if the use of the trademark or other identifying material has some artistic relevance, and does not apply § 43(a) to expressive works “unless the [use of the trademark or other identifying material] explicitly misleads as to the source or the content of the work.”

The “‘level of [artistic] relevance [of the trademark or other identifying material to the work] merely must be above zero’ for the trademark or other identifying material to be deemed artistically relevant.” The 9th Circuit determined that Brown’s likeness had at least some artistic relevance because realism was central to EA’s expressive goal, and inclusion of Brown’s likeness was important to realistic recreation of one of the teams in Madden NFL. Thus, the 9th Circuit concluded that the first prong of the Rogers test was inapplicable to Brown’s claim.

Under the second prong, the Ninth Circuit found that Brown failed to allege any facts to show that EA explicitly mislead consumers that Brown endorsed Madden NFL.

Because Brown’s likeness is artistically relevant and the complaint included no allegation that EA explicitly mislead consumers, the district court properly granted EA’s motion to dismiss.

Practice Note:  The Rogers test has not been adopted by all circuit courts. Other tests, such as the U.S. Court of Appeals for the Third Circuit’s “predominant use” test may strike a balance more in favor of Lanham Act rights. Thus, venue may affect the outcome of some Lanham Act claims. Also, claims under state law may succeed where claims under the Lanham Act fail.