If you plan to create a work that will include references to famous people, you may well ask will you run into challenges for using such references. A recent 9th Circuit decision offers guidance as to whether your use will withstand the challenge by a famous person who claims you are violating his or her trademark-related rights.
Brown v. Electronic Arts, Inc., involves James “Jim” Brown (“Brown”), the famous football player, who sued Electronic Arts (“EA”), the manufacturer distributor and seller of the Madden NFL series of football video games. http://caselaw.findlaw.com/us-9th-circuit/1640518.html?DCMP=NWL-pro_ip The video games allow users to control avatars representing professional players, and to participate in simulated games. Some versions of the games included likenesses of Brown.
Brown’s claims under the Lanham Act, the main federal trademark law, are of particular interest here. Generally with trademarks, the basic test a mark’s owner is asked to show is whether use of the competing mark is likely to cause confusion in the public’s mind, and Brown’s basic argument was that EA’s use of his likeness without his permission was likely to cause confusion in the mind of the public as to whether he endorsed the video games.
However, there is always the understanding that granting exclusive use of marks limits constitutionally protected free speech. In evaluating the competing interests of protecting the public from deception and protecting freedom of expression, when the identifying material in question appears in an expressive work, Courts tend to shift the balance toward First Amendment considerations.
Because EA’s videos are considered expressive works, the Court considered whether EA’s use of Brown’s likeness in the videos was relevant. Given EA’s professed interest in creating a high level of realism for the various football teams portrayed, inclusion of Brown’s likeness in the recreation of the ’65 Cleveland Browns team was relevant.
While the takeaway from the Brown v. EA decision is that if inclusion of a famous person’s likeness in an expressive work is relevant, you are likely to withstand a challenge to such use under federal law. However, it is important to keep in mind, despite the dismissal of Brown’s case in federal court, Brown was not foreclosed from pursuing claims under California law for invasion of privacy and unfair businesses practices.