Image Rights Litigation Update: Former Buccaneer Claims EA Raided his Rights

Posted on August 5, 2010 by Kevin Goldberg

Tony Davis says video giant owes him for using his 1979 persona in Madden ’09

It’s an annual occurrence. Like when the circus comes to town. Only more lucrative. The release of a new version of EA Sports’ popular “Madden NFL” video game. 

And just as the circus brings with it a certain amount of mess to clean up and (at least these days) controversy and litigation, so too does Madden NFL. It seems that each new release triggers an inevitable lawsuit by one or more current or former athletes who feel that their rights are being violated by the makers of this video game (or other similar media). So prevalent are these lawsuits that it’s almost impossible to keep track of things, or know who all the players are, without a scorecard. (Fortunately for you, we’ve prepared a scorecard showing where most of the major currently-pending image rights cases stand. Check it out here.) 

The list includes suits filed by former college football and basketball players against EA Sports, by former pro football players against NFL films, by current pro football and baseball players against fantasy sports websites. So that’s former pro athletes, former college athletes and current pro athletes suing video game makers, fantasy sports purveyors and filmmakers, in almost every combination. Has this genre of lawsuit finally run its course?

Apparently not.

On July 29, Michael E. Davis (a/k/a Tony Davis), a former NFL running back, sued EA Sports for its use of his likeness as part of a “historical team” contained in the 2009 edition of the Madden NFL series. 

Tony Davis played six years in the NFL. He was with the Cincinnati Bengals from 1976-1978 and the Tampa Bay Buccaneers from 1979-1981.  He claims that EA sports – which posted revenues of $3.67 billion in 2008 and $4.2 billion for fiscal year 2009 – profited from his likeness when it included his 1979 Tampa Bay team as one of 140 “historic teams” in Madden ‘09 (The Buccaneers? We can’t figure it out either). 

When it comes to current NFL players featured in its games, EA Sports bothers to represent them by name and provide their video game avatars with characteristics and attributes which are identical to their real life personae. And EA Sports pays handsomely for the right to do so: it has a deal with the NFL Players Union to license those likenesses, a deal that costs EA nearly $35 million per year, if you believe public reports. 

But neither Tony Davis nor any of the thousands of other retired players on these 140 historic teams are identified by name because they don’t have a similar agreement. But the digital players on these historic teams have likenesses eerily similar to their real life counterparts: there are real teams (if, that is, you view the Buccaneers as a “real team”) featuring players with the same height, weight, years of experience and physical characteristics as the real life player on that team. 

Note that we said “similar”, not “identical”. According to Davis’s complaint filed in the United State District Court for the Northern District of California:

EA attempted to avoid license fees for use of retired players’ likenesses by placing on the “avatar” of each retired player a different uniform number than that worn by the player when he was actually on that historic team. Similarly in some circumstances but not others, EA made certain trivial challenges in a player’s characteristics, such as changing a player’s weight by a few pounds. These changes reflect a calculated and underhanded attempt to avoid having to pay any license or royalty – but nonetheless readily invoke the likeness of the player in the mind of the consumer. In this way, EA has exploited the retired players by using their valuable likenesses and publicity rights.

An example, using Mr. Davis himself:                                                                

Characteristic               Tony Davis (real life)        EA Player Who Looks Like Tony Davis

Position                                   Halfback                                             Halfback

Pro Experience                     4 years                                                4 years

Uniform Number                   27                                                        37

Height                                        5’11”                                                    5'11"

Weight                                      215 pounds                                       215 pounds

This situation – where the only substantive change is the player’s jersey number and the absence of the player’s name – is pretty common. But there’s a feature within the game that allows the user to “customize” the teams by editing the rosters to change each player’s name or number.

Mr. Davis alleges that EA has violated his Right of Publicity under a California statute and California common law; he also relies on a theory of Unjust Enrichment. Plus, obviously trying to raise the ante, he is seeking to create a “class” for purposes of a class action lawsuit consisting of approximately 6,000 retired NFL players. The class would be limited to those players who appear in the video game with a height within two inches of the player’s real life height and within ten percent of his real life weight. Davis seeks damages, including actual damages, statutory damages and punitive damages, disgorgement of all profits earned by EA through the use of these players’ likenesses, and attorneys’ fees and other costs.

All we’ve got right now, of course, is a complaint filed in court which offers the most basic argument in favor of the retired NFL’ers. And though many similar lawsuits have been filed in the recent past, none has yet been resolved. So the result here is still very much in doubt. But if you’re keeping score at home (with past results being no indication of future performance, either in sports or the legal world), check out our scorecard to see where we’re at in terms of the major right of publicity cases in the sports world.
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Image-Rights Litigation: Former College Athletes Stay On Offensive

Posted on March 2, 2010 by Kevin Goldberg

Federal judge rejects motions to dismiss, allows videogame suits against NCAA, Electronic Arts to proceed

Update Time! For those of you wondering what ever happened with the efforts of Ed O’Bannon, Sam Keller and Craig Newsome – former college athletic stars all (but you probably knew that already, didn’t you?) – to protect their right to control the use of their images, the answer is: Lots. While none has yet emerged victorious over the NCAA, Electronic Arts (EA) and other various foes, progress has been made recently.

As loyal readers of this blog know, the field of “image rights” has been the subject of extensive litigation over the last couple of years. Former professional athletes (including no less a luminary than Jim Brown) and their college counterparts have sued a range of defendants in an effort to protect their ability to control, and profit from, the use of their images. And while Jim Brown’s attempt was stopped at the line of scrimmage, recent rulings in the cases of O’Bannon, Keller and Newsome may provide a path to victory for them (and other similarly situated celebs).

Keller and Newsome were big-time college football players, while O’Bannon played hoops. Since I happen to be partial to b-ball – as opposed to football (in large measure because of my distaste for the whole BCS ridiculousness) – here’s some background on O’Bannon. Originally recruited to play basketball at UNLV, he ends up at UCLA when UNLV’s program is put on probation. He gets injured bad (ACL) as a frosh, but fights back and, as a senior in 1995, is named college player of the year, stars when the Bruins win it all at the NCAA’s Big Dance, gets his UCLA number retired, the works. As college careers go, it doesn’t get more Story Book. Pro-wise, not so much: he went high (9th) in the NBA draft, but lasted only two seasons, followed by some play in the foreign leagues, and then retirement to a new career as a pretty successful car salesman.

Fast forward a decade or so. As the story goes, O’Bannon notices a friend’s son playing a video game featuring the 1995 UCLA Bruins. The video team includes an unnamed player startlingly similar – actually pretty much identical – to O’Bannon: same position, same number, same stats, same shooting hand, etc. His friend remarks, “You know what’s sad about this whole thing? You’re not getting paid for it.” O’Bannon thinks, “Wow, you’re right.” He lawyers up and sues.

O’Bannon and Newsome went after the NCAA. Keller, in a separate suit which was ultimately joined with the O’Bannon/Newsome action, named the NCAA and EA as defendants. The gist of the suits is that somebody – maybe the NCAA, maybe EA, maybe others – is making a boatload of cash from video games which depict (without specifically identifying) real people who are readily identifiable through various aspects – stats, player numbers, years, etc. Why should those real people not be entitled to share in the profits since their images are central to enterprise?

The two cases – O’Bannon/Newsome on the one hand, Keller on the other – adopted different legal strategies. Keller claimed that the NCAA and EA violated his “right of publicity”, i.e., the right to profit from the use of his name and/or likeness. O’Bannon/Newsome, on the other hand, claimed that the NCAA is engaging in “anti-competitive” practices by unduly restricting the rights of college athletes. From the court’s initial rulings – the Keller decision is here, the O’Bannon/Newsome decision here – both arguments appear to have gotten traction.

While Keller’s claims were dismissed with respect to the NCAA, they stuck with respect to EA. Because of the particular statutory language of the “right of publicity” laws in Indiana (one of the two jurisdictions at issue in Keller’s suit, mainly because the NCAA happens to be headquartered in Indiana), the court held that the NCAA itself did not “use” Keller’s name/likeness in a way which would make the NCAA directly liable under those laws. But as to EA, well, that’s another story entirely.

Conceding, at least for the sake of its motion to dismiss, that Keller could establish all he needed to in order to establish that EA had violated his right of publicity, EA argued that it had engaged merely in “transformative fair use”. In other words, the image of the football player that was included in EA’s video game was really EA’s own expression, and not Keller’s true likeness. 

To be successful, the transformative fair use defense requires a demonstration that the defendant has contributed “significantly distinctive and expressive content” which might be protected by the First Amendment. Cases where the defense is successful often involve taking an individual’s recognizable likeness and adding to it distinct new elements, or placing it in a completely novel setting. For instance, albino rocker brothers Johnny and Edgar Winter were portrayed in comic book form as brothers Johnny and Edgar Autumn, with pale faces and long white hair reminiscent of albinism. Transformative? If the changes had been limited to the name change alone, probably not. But in that case the Autumn brothers were also depicted as half-human, half-worm characters with green tentacles sprouting from their chests. Now that’s transformative. In another case, a musician and dancer known for uttering the phrase “ooh-la-la” was depicted with similar physical features and named “ulala” – but, instead of singing and dancing, she was shown as a “news reporter in the 25th century, ‘dispatched to investigate an invasion of earth by dance-loving aliens’.” That, too, is what they’re talking about what they talk about “transformative fair use”.

In Keller’s case, the court concluded that EA’s depiction of Keller contained no such “distinctive content”. Rather, EA simply presented Sam Keller as the college football quarterback for Arizona State.

Result: EA’s motion to dismiss Keller’s suit was denied, and the case proceeds to trial. Along the way, the judge also agreed that Keller’s additional claim – that EA conspired with the NCAA to violate his image rights – could also proceed to trial. So while the NCAA dodged one bullet (i.e., the claim that it had directly violated the right to publicity), it will still remain under the gun because of its involvement with EA in the development of EA’s videogames.

As to O’Bannon/Newsome, the same judge gave a similar thumbs up to the “anti-competition” theory. O’Bannon/Newsome’s claim was based primarily on a provision that the NCAA apparently requires all of its student-athletes to sign:

You authorize the NCAA [or a third party acting on behalf of the NCAA (e.g., host institution, conference, local organizing committee)] to use your name or picture to generally promote NCAA championships or other NCAA events, activities or programs

The plaintiffs claimed that this provision allows the NCAA to enter into licensing agreements which financially benefit the NCAA without conveying a benefit to the athletes.

To prevail in an anti-competition claim along these lines, O’Bannon/Newsome had to establish (a) the existence of a contract, combination or conspiracy that (b) unreasonably restrains trade in a way which (c) affects interstate commerce. The judge concluded that O’Bannon’s claim was sufficient to go to trial. After all, the NCAA’s own constitution which requires member schools to agree to abide by the organization's constitution, bylaws and rules (Factor (a)); the NCAA and its affiliates control the collegiate licensing market to such an extent that the average individual athlete is precluded from having any chance to enter the market for himself (Factor (b)); and the NCAA and its affiliates control the collegiate licensing market to such an extent that the average individual athlete is precluded from having any chance to enter the market for himself (Factor (c)). 

(Interestingly, Newsome’s claim was dismissed because he failed to make a sufficiently strong allegation of unreasonable restraint of trade (i.e., Factor (b)). No worries, though – the judge granted him to leave to amend his complaint to patch up that hole.)

The judge also ruled on a number of other ancillary arguments, but the bottom line here is that both the Keller and the O’Bannon/Newsome cases will proceed. While that does not necessarily mean that any of the athlete-plaintiffs will ultimately prevail, it’s at least a strong indication that their respective theories of liability are valid. It just remains for them to prove that the underlying facts support those theories.

Perhaps more importantly, though, the fact that the cases are proceeding – with the NCAA, in particular, as a defendant – means that discovery will go forward. And that in turn means that considerable light may now be shed on the various contractual arrangements which NCAA has made, and the wads of cash the NCAA has pocketed, in connection with the marketing of athlete-related merchandise. It is entirely possible that the revelation of the details of that enterprise could lead to substantial changes in the relationship between the NCAA, its members, and the student-athletes whose performance is the real key to the profit-generating machine that is college athletics. Attention should be paid.
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Jim Brown Downed At The Line Of Scrimmage

Posted on October 1, 2009 by Kevin Goldberg

Federal judge rejects former NFL star’s Lanham Act claim of “false endorsement” by EA Sports

In recent months we have focused a LOT of attention on the issue of the image rights of athletes. That issue has popped up in lawsuits filed by former college football and basketball players seeking to get their hands on some of the money generated by the very popular – and lucrative – video games produced by EA Sports. Recently, a similar effort has been made by some retired NFL players looking for a cut of the cash from the NFL’s film operations.

These suits are based in several different causes of action, but they all generally boil down to the fundamental claim that the defendant is engaging in the unauthorized use of the player’s likeness in some way (even though that use often does not always identify the player by name or team or number).

In late September a new opinion was issued by a Federal District Judge in California. The case involved a former NFL player, and it’s a big one – “big” referring both to the player and the decision.  The player in question is one James “Jim” Brown.  Yes, that Jim Brown. The core of the Cleveland Browns’ offense from 1957-1965.  The player often considered the best pure running back in NFL history, who retired after just eight seasons as the NFL’s all-time leader in career rushing yards – a record which stood for more than two decades.   (He was also one helluva lacrosse player, if you didn’t already know that.)

Much like Jim Brown himself, the District Court’s opinion plowed through any opposition, but still left you begging for more.

In his suit Brown alleged that EA Sports had engaged in the unauthorized use of his likeness in two “historic” teams featured in EA’s Madden NFL games.  Those games feature the1965 Cleveland Browns team and an “All Browns” team with an unnamed running back wearing number 37 and boasting statistics “nearly identical” to Brown’s actual playing statistics.  In real life, however, Brown wore number 32.

Brown brought the following causes of action: 

  • A federal unfair competition claim under the Lanham Act alleging that the apparent use of Brown’s likeness falsely implied that he had endorsed the game; and
  • California state law claims for (a) invasion of privacy and (b) unfair business practices.

EA Sports moved to dismiss the Lanham Act claim, arguing that the First Amendment precludes the imposition of liability in this case. The judge agreed.

The judge re-affirmed that the First Amendment does generally apply to these types of video games.  It disagreed with the arguments made by Brown – and by others suing video game makers or seeking to regulate their often sexual or violent content – that these games (and other similar commercial enterprises) should be entitled to less than full First Amendment protection. Au contraire, said the judge, the implicitly creative nature of EA’s games merits full First Amendment protection.

Because they enjoy that protection, video game manufacturers can be held liable for violations of commercial statutes such as the Lanham Act only if the public interest in avoiding consumer confusion outweighs the public interest in free expression. That is judged through a two-pronged test: (1) the defendant’s use of the plaintiff’s proprietary right must be relevant to the defendant’s underlying work; and (2) the defendant’s use of the plaintiff’s proprietary right must be found to explicitly mislead consumers about the source or content of the work.

In Brown’s case, the first prong was clearly met.  As the judge observed, “The Madden games are about NFL football. Brown is a legendary NFL player: the best ever, according to some journalists. Use of a legendary NFL player’s likeness in a game about NFL football is clearly relevant.”

As to the second prong, the judge found that users of EA’s Madden games would not be “misled into thinking that Brown is somehow behind the game or sponsors the product.”  The player depicted in the game is anonymous, identified only by a jersey number and a roster position; his name is never seen on the packaging or advertising.   As the judge saw it, it would require a “leap of logic” to conclude that the depiction of a player like Jim Brown equates to endorsement by the Jim Brown.

With that the District Court stopped the great Jim Brown dead at the line of scrimmage. 

The decision doesn’t bode well for those college athletes, mentioned in earlier blogs, who are also suing EA sports for unauthorized use of their likenesses.  However, the clock hasn’t totally run out on those other cases.  In dismissing the lone federal claim advanced by Brown, the judge declined to exercise supplemental jurisdiction over the state claims – including the non-federal right of publicity claim that is the heart of so many of these lawsuits – and simply left them unanswered.

So stay tuned to see whether the judge’s punt on these state law claims may be returned for a touchdown by one of our fearless former gridiron greats (or, slam dunked, as the case may be, by a former collegiate cager).
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Retired NFL'ers Seek Their Cut of the Marketing Pie

Posted on August 26, 2009 by Kevin Goldberg

We have previously reported about the burgeoning field of litigation involving the use of athletes’ images, personal information and statistics by various secondary industries, such as fantasy sports, video games and other marketing endeavors. Good news. That field continues to burgeon with the recent suit filed by several former NFL starts against (and here’s a twist) the NFL itself. Don’t bother to stay tuned for film at 11 – read on!

As the old saying goes, you can't tell the players without a scorecard.  So let’s recap the lawsuits that are already on the books.

1996:  The NBA sues to prevent Motorola and “Stats, Inc.” from distributing information from basketball arenas in real time, alleging violations of, among other things, copyright, trademark and right of publicity (commercial misappropriation). Verdict: Motorola/Stats, Inc. win, as the United States Court of Appeals for the Second Circuit rules that the NBA does not “own” the factual information about its games.

2008:  Major League Baseball falls to C.B.C. Distribution and Marketing, a fantasy sports purveyor, when the U.S. Court of Appeals for the Eighth Circuit rules that players’ names, biographies and statistics can be freely used because they’re akin to news that’s generally available. The Court rejects the notion that names, bios and stats are subject to overall “image right” that can be claimed, and commercially marketed, by the player, team or league alone.  This opens the door for all fantasy sports providers to drop their existing marketing contracts with major sports leagues, costing those leagues millions in licensing revenues.

2008: CBS Interactive grabs a page out of C.B.C. Distribution and Marketing’s playbook and sues the NFL, seeking a declaratory judgment allowing it to use these same types of player information (names/backgrounds/ stats) in its NFL fantasy football game.   CBS files its suit in Minnesota. Why Minnesota?  Because that’s in the same 8th Circuit that was so kind to C.B.C. Distribution and Marketing.  Guess what?  It works.  The District Court rules in favor of C.B.S Interactive in April 2009. 

Meanwhile, we also have a number of games still in progress, as big-name players – presumably prevented from recouping image rights (either directly or through the leagues or player associations supposed to represent them) for the use of the names, etc., in fantasy sports – began to find new ways to try to monetize their commercial images . . .

May, 2009:  Several former college football players file a class action  lawsuit in federal court in California, alleging that EA Sports, the maker of several popular sports video games, is using their images without permission (even though the players’ real names appear nowhere in the game). This case is pending trial.

June, 2009: Several more former college players file another lawsuit against EA Sports.  They “get in the game” in a state court in New Jersey.   This case is also pending trial. 

July, 2009:  Former UCLA basketballer Ed O’Bannon (last seen selling cars outside Las Vegas) files a lawsuit against EA Sports.  Yep, still pending. 

So, let’s see, we've got: 

  • Lawsuits between the leagues and the fantasy sports companies, with a clean sweep by the fantasy sports companies to date;
  • Lawsuits by former college athletes against video game makers, with no resolution thus far;
  • Leagues continuing to represent their current players with regard to use of those players image rights in all manner of commercial formats.

What’s missing?   As we see, about the only permutations or combinations we haven’t seen yet involve (a) former pro players getting getting back into the action and (b) lawsuits by athlete(s) against his/her/their league. 

That's why we're so happy to report that former NFL’ers John Dryer, Jim Marshall, Joe Senser,  Elvin Bethea, Dan Pastorini, and Ed White have filed a class action lawsuit against their former league, alleging that their images are being used in NFL films and other products  without their permission or any compensation.  Former pro players suing their former league! Two for the price of one!

The lawsuit alleges that the NFL “trades on the ‘glory days’ of the NFL as a marketing and advertising technique”, netting the NFL big bucks while the players get nothing.  The NFL, through its NFL Films website, offers hundreds of productions for $50 each, using the names and likeness of over 450 former players in the films and for promotion purposes. According to the players, such uses constitute: “false endorsement” (a violation of the Lanham Act); appropriation of the “right of publicity” under Minnesota, California and Texas law; and violations of the common law “right of publicity” under just about every other state’s laws. The players also allege that the league has engaged in unjust enrichment at their expense. 

The players seek all damages allowed under law and equity (and, for good measure, reimbursement of attorneys’ fees and court costs). 

What’s really interesting about this one – other than the fact that the players are now biting the very hand that once fed them (even if you believe the meals were of less than adequate size and, ultimately, extremely unhealthy) – is that the players’ complaint was filed in the United States District Court for the District of Minnesota.

But wait! Isn’t that the same court that has already declined to protect the names and likenesses of NFL players from use in fantasy sports? (Sure, that suit pitted the league’s marketing arm, not the players themselves, against the fantasy sportsters, but the same basic likenesses, images, etc., were at issue.) And isn't that in the same 8th Circuit that ruled against MLB player seeking compensation (again, through their league's marketing arm) for use of their names and likenesses in fantasy sports as well? Yes and Yes.

So what’s the deal? Have these players simply taken one too many blows to the head?  Surely they must know that the Court will bat this one down at the line of scrimmage once again!  Perhaps, but there’s plenty of reason to think they’ll emerge victorious as well. 

First, they know that the Court will not move the case for lack of jurisdiction, having ruled in the earlier NFL case that jurisdiction in Minnesota is proper due to sufficient minimum contacts there. So that’s one major procedural matter they don’t have to worry about.

Substantively, we think that the players’ lawyers have read between the lines of the earlier NFL and MLB cases and believe that the judges in each of those earlier cases ruled for the fantasy sports companies because the information used was so factual in nature that it could be obtained anywhere.  The court essentially viewed the player names, backgrounds and statistics as “news” to which the leagues could not claim any exclusive right. That would be distinct from using commercial images in which somebody – perhaps the players, perhaps the teams, perhaps the league – could properly assert a proprietary claim.  

If the earlier courts did rest their verdicts on that side of a “commercial/noncommercial” line, it would make sense for them to do the same here. But in this latest case, the courts could easily conclude that the material in question – featuring overtly commercial use of particular players’ readily-identifiable images – is entitled to precisely the kind of protection that the broader, noncommercial, informational name/background/stats stuff did not merit.  

One thing is for sure: the younger generation of college players who have sued EA Sports will be watching these elder statesmen closely, as we’ll likely see similar results for young and old.
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