Trademark and Rights of Publicity In Video Games LAIPLA Trademark Boot Camp October 24, 2014

Trademark Law

Free Speech: First Amendment “Trademark rights do not entitle the owner to quash an unauthorized use of the mark by another who is communicating ideas or expressing points of view.”

Free Speech: Rogers Two-Step Test Use of a trademark in an expressive work is only infringement if: (1) “No artistic relevance” to the underlying work, or (2) Use of the mark “explicitly misleads as to the source or content of the work” Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989)

Examples of Free Speech Trademark Uses “Pig Pen” nightclub in Grand Theft Auto (E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc. 547 F.3d 1095 (9th Cir. 2009) “ROUTE 66” in Penthouse video Roxbury Entertainment v. Penthouse Media Group, Inc. 669 F. Sup. 2d 1170 (C.D. Cal. 2009)

Brown v. Electronic Arts, Inc., 724 F.3d 1235 (9th Cir. 2013) Lanham Act claim arising from use of football player’s “celebrity persona” “[T]he likeness of a great NFL player is artistically relevant to a video game that aims to recreate NFL games” EA’s use of Brown’s likeness was not explicitly misleading “As expressive works, the Madden NFL video games are entitled to the same First Amendment protection as great literature, plays, or books. Brown’s Lanham Act claim is thus subject to the Rogers test, and we agree with the district court that Brown has failed to allege sufficient facts to make out a plausible claim that survives that test.”

Open Issues In Rogers Analysis Does the Court have any discretion in determining artistic relevance? Does the traditional Sleekcraft test have any place in the analysis? Plaintiffs have argued that the “explicitly misleading” prong should incorporate the test The Sleekcraft test is inconsistent with the Rogers test because Rogers presupposes possible confusion

Right of Publicity

Transformative Use Test Comedy III Productions, Inc. v. Saderup, 25 Cal. 4th 387 (2001) Basic Rule: “Depictions of celebrities amounting to little more than the appropriation of the celebrity’s economic value are not protected expression under the First Amendment Strong overlap with the “transformative” prong of the copyright fair use test

Right of Publicity: Factors In Transformative Defense Is the use a mere copy or imitation of the celebrity image or does it add something new and of a different character? Is there an intent to achieve humor, effect criticism, or serve an informational purpose? Does the use represent the defendant’s own expression rather than the celebrity likeness (e.g. Warhol paintings)? Does the market value derive from the fame of the celebrity or the contributions of the defendant? Are there artistic choices made in the depiction?

Transformative Use: Kirby and No Doubt Kirby v. Sega of America, 144 Cal. App. 4th 47 (2006) “Ulala” is not a literal depiction of Kirby New look, new dance moves Imitation is part of the “raw material” from which Ulala was created. No Doubt v. Activision Pub., Inc., 192 Cal. App. 4th 1018 (2011) Computer-generated images designed to look like original band members “Painstakingly designed” to mimic the band No ability to alter the avatars Depicted doing the same activities they are known for Expressive elements subordinated to overall goal of creating “conventional portrait.

Keller v. Electronic Arts, Inc., 2010 WL 530108 (N.D. Cal. 2010) The Court found no transformative use when football player was depicted in football video game Class action brought by college athletes Keller was depicted doing exactly what he is known to do; “represented as what he was: the starting quarterback for Arizona State University.” Same jersey number, same height and weight, hails from the same state.

Keller v. Electronic Arts, Inc., 724 F.3d 1268 (9th Cir. 2013) The Ninth Circuit affirmed - ruling that Keller’s Right of Publicity had been violated: “Under the ‘transformative use’ test developed by the California Supreme Court, EA’s use does not qualify for First Amendment protection as a matter of law because it literally recreates Keller in the very setting in which he has achieved renown.”

Hart v. Electronic Arts, Inc., 808 F. Supp. 2d 757 (D.N.J. 2011) The District Court applied the transformative test to grant summary judgment in favor of Electronic Arts for its use of a virtual football player resembling the plaintiff Differs from No Doubt because his image, accessories, and skills could be altered in many ways (height, weight, helmet) Use of reality as a “building block” for the game EA created the “mechanism” by which the virtual player could be altered and interacted with

Hart v. Electronic Arts, Inc., 717 F.3d 141 (3d Cir. 2013) The Third Circuit Court of Appeals reversed. “[A]n artist depicting a celebrity must contribute something more than a ‘merely trivial’ variation [but must create] something recognizably ‘his own,’ in order” to benefit from First Amendment protection. “Acts of blatant misappropriation would count for nothing so long as the larger work, on balance, contained highly creative elements in great abundance.” The opinion has been criticized by many, but is certainly a cautionary tale.

No Transformative Use of Player Images in Madden NFL Davis v. Electronic Arts, Inc., 2012 WL 3860819 (N.D. Cal. March 29, 2012) No Transformative Use of Player Images in Madden NFL Class action brought by three retired players Avatars not identified by jersey numbers, but are pre-programmed to represent specific athletes Use of likeness is the “digital equivalent of transferring the Three Stooges images onto a T-shirt” No transformation; the player is depicted realistically