When football legend Jim Brown sued Electronic Arts Inc. in 2009 for using his likeness in its video games, EA argued that its games are expressive activity protected by the First Amendment. Brown’s lawyers sneered at that argument the same way Brown stared down an opposing lineman.

“EA claims that a victory for Brown spells the death of great literary and artistic works — including its own cultural magnum opus, the Madden NFL football video game,” Manatt, Phelps & Phillips partner Mark Lee wrote in a brief to the U.S. Court of Appeals for the Ninth Circuit. “Brown’s positions, however, are in the mainstream.”

But the mainstream is shifting rapidly when it comes to celebrity publicity rights and computer-generated art, and what might have seemed laughable in the era of Pac-Man and Donkey Kong has become a closer question as game programmers take realistic images and animate them in ever more creative ways.

Electronic Arts digitizes thousands of football players — current and retired, professional and amateur — matching their height, weight, skin tone, hair, playing styles and even equipment preferences to create realistic simulations of game conditions. But only the current pros get paid. “EA makes no artistic or other comment about Brown,” Lee writes, “but simply steals Brown’s good will to sell its profitable product.”

On Friday, Brown, former college player Sam Keller, lawyers for them and potentially thousands of other players are set to line up against Electronic Arts at the Ninth Circuit. The stakes are enormous. Video gaming is a $25 billion industry, according to the Entertainment Software Association, and the list of law firms and amici curiae in the case underscores its import.

EA’s lawyers say they’re not doing anything new — that filmmakers and novelists use historic characters and likenesses all the time. If Sony Pictures can take a person who looks like Mark Zuckerberg and recreate the founding of Facebook, EA ought to be allowed to take football player likenesses and let gamers recreate historic gridiron contests. “You can’t have The King’s Speech or The Social Network ” under the rule sought by Brown, Davis Wright Tremaine partner Kelli Sager has argued in court.

The list of law firms that have weighed in includes Hagens Berman Sobol Shapiro; Lieff Cabraser Heimann & Bernstein; and Keker & Van Nest, in addition to Manatt and Davis Wright. Among the amici curiae are the professional football, baseball, basketball, hockey and soccer player associations, the Screen Actors Guild, the Writers Guild, Viacom Inc. and Gawker Media.

Electronic Arts has submitted a video game console, controllers and video games, and encouraged the judges to experience the technology personally.

“Video game companies are going to be following the cases closely,” said Lawrence Siskind of San Francisco’s Harvey Siskind, an IP lawyer who is not involved in the litigation. Athletes, celebrities and their heirs will be, too. “Marilyn Monroe made more money after she died than when she was alive,” Siskind noted, “so there’s a great deal of money at stake.”

This will be the second argument before the Ninth Circuit in Brown v. Electronic Arts and Keller v. Electronic Arts , which are being heard together. The cases were originally argued in February 2011 but Judge Pamela Rymer died before the panel ruled. Judge Sidney Thomas was assigned to take Rymer’s place in October. Five months later, perhaps in a sign of the challenging nature of the issues, the new panel ordered a fresh round of arguments.

TOO ALIKE?

Brown was considered by some, including The Sporting News , to be the greatest football player in history. Keller, by contrast, never played a game in the NFL, but was a standout quarterback at Arizona State and Nebraska. The likenesses of both, along with numerous other players, appear in EA video games. Although it doesn’t put their names on the jerseys, EA does not seem to seriously dispute that they’re using the individual players’ likenesses. The company pays the NCAA for the right to use player images, according to Keller’s lawyers, but not the college players themselves.

Brown’s claims under the federal Lanham Act were dismissed by U.S. District Judge Florence-Marie Cooper of the Central District of California, who concluded that “Madden NFL games manifest their designers’ creative vision” and no juror could think Brown is endorsing Madden NFL.

Keller is suing under California law, and EA brought a motion to strike under the state’s anti-SLAPP law, but it was denied by U.S. District Judge Claudia Wilken of the Northern District of California.

There’s no longer any doubt that video games are entitled to some measure of First Amendment protection. The U.S. Supreme Court so held last year in Brown v. Entertainment Merchants Association , striking down a California law that restricted violent video games. Under the Lanham Act and California law, though, the First Amendment right of expressive activity must be balanced against a celebrity’s right to publicity.

The California Supreme Court has set the boundaries in two decisions: In one, it ruled that charcoal drawings of the Three Stooges on T-shirts were not sufficiently transformative to trump publicity rights. In the other case, the court ruled that the depiction of rock musicians Johnny and Edgar Winter as half-worms, half-humans in a comic book fantasy was protected speech that outweighed the musicians’ publicity claims.

In rejecting EA’s anti-SLAPP motion, Wilken ruled that the depiction of quarterback Keller “is far from the transmogrification of the Winter brothers. EA does not depict [Keller] in a different form; he is represented as what he was: the starting quarterback for Arizona State University.”

At the Ninth Circuit last year, Davis Wright’s Sager disputed Wilken’s characterization, noting that players of the video game can indeed transform the football players. They “can make them blond or brunette, more muscular or less muscular, you can replace their head with a mascot head,” she said.

Judge Jay Bybee had sounded sympathetic. “Electronic Arts can give you the parameters for Keller when he was at ASU, but you’ve got somebody else who’s at the other end of the controller who can apparently change his number” or even alter his playing characteristics, the judge said.

In response, Keller’s attorney, Hagens Berman’s Steve Berman, argued that the main selling point of the game is realism. “EA says, ‘If it’s in the game, it’s in our game,’” Berman said. “Striving for realism is really the exact opposite of the Winters case.”

Rymer had sounded somewhat skeptical. “I know it doesn’t matter,” she told Berman, but “what economic right does a college football player have?”

Berman said a person’s economic rights can’t be taken without compensation. “Well, if you have ‘em,” Rymer replied.

TOUCHDOWNS AS IP

Brown’s attorney, Manatt partner Ronald Katz, argues that Cooper should not have dismissed Brown’s claims without allowing any discovery. But to the extent the Ninth Circuit weighs in on the First Amendment protections, he argues they’re limited in the video game context.

“No court has ever held that scoring a touchdown is intellectual property that’s expressive,” Katz said in an interview. Although some video games tell a story, with Madden NFL “you’re not expressing yourself, you’re trying to score more touchdowns than the other player.”

Siskind said that argument could carry some weight, but probably not a lot. A video game of “Jim Brown the lawyer” or “Jim Brown the accountant” might be more transformative, he said, “but I think you don’t have to go that far to have First Amendment protection.”

Courts have drawn these kinds of distinctions in recent cases. The Ninth Circuit in 2008 turned down a Los Angeles strip club’s suit against the makers of the “Grand Theft Auto” series for allegedly recreating the club’s look and feel in one of the game’s settings. The Ninth Circuit ruled the strip club was “relevant to [the publisher's] artistic goal, which is to develop a cartoon-style parody of East Los Angeles.”

But last year, the Second District Court of Appeal upheld a claim by the rock band No Doubt and singer Gwen Stefani, who had accused Activision of unfairly using computer-generated images of the band in its “Band Hero” video game. The court ruled it was not a transformative use because Activision used “exact depictions of No Doubt’s members doing exactly what they do as celebrities.”

The EA football games, however, are not about one or a few players. Brown is just one of thousands of players depicted in Madden NFL, so there was no suggestion that he’s personally endorsing the product, Sager argued before the Ninth Circuit.

U.S. District Judge Gordon Quist of the Western District of Michigan, who is sitting on the panel as a visiting judge, didn’t sound entirely on board with that argument. “I don’t know anybody that played on the Cleveland Browns in ’64, or ’59 when I saw them play, except one guy,” Quist said. “I don’t know the other players, but I know Jim Brown.”

Scott Graham is a reporter for The Recorder, a Legal affiliate based in San Francisco. •