This story was originally published by The Recorder, an American Lawyer affiliate.
Football players gained more yardage Friday against Electronic Arts Inc. during their second round of oral arguments at the U.S. Court of Appeals for the Ninth Circuit.
When the case was first argued last year, Judges Jay Bybee and Pamela Rymer sounded skeptical of claims that the video game maker must compensate the retired NFL and college players whose likenesses appear in them.
But Rymer died last fall before an opinion was issued. On Friday, her successor on the panel, Judge Sidney Thomas, sounded somewhat more wary of EA’s argument that “Madden NFL” is entitled to the same kind of First Amendment protection as films that are based on real people, like The Social Network and its depiction of Mark Zuckerberg.
Zuckerberg was portrayed by an actor, not a digitized avatar. “That’s the key difference here, right?” Thomas asked Electronic Arts counsel Kelli Sager.
Perhaps more ominously for EA, Judges Bybee and Gordon Quist also sounded less sympathetic this time around.
“At what point do we cry uncle?” Bybee asked Sager of Davis Wright Tremaine. “When somebody makes a movie with an avatar based on Tom Cruise … and says I don’t need to hire someone at $20 million a picture?”
“That’s not this scenario,” Sager told Bybee, but the judge didn’t sound reassured.
“Implicit in your answer was you do think there would be a problem with that,” he said, going on to pose a hypothetical “Top Gun 3″ featuring a younger, computer-animated likeness of Cruise.
“See Tom Cruise’s avatar in this movie!” said Quist.
“All the benefits of Tom Cruise,” said Bybee, “And not only that, we’ll pass the savings onto you — you’ll get in for $7.50 instead of ten bucks.”
Brown v. Electronic Arts and Keller v. Electronic Arts challenge Electronic Arts’ practice of digitizing thousands of football players, matching their height, weight, skin tone, playing styles and even equipment preferences to create realistic simulations of game conditions. Current NFL players get paid, but retired players like Hall of Famer Jim Brown and former college players like Sam Keller — the plaintiffs in the cases–do not.
With video games a $25 billion industry and the law of publicity rights still developing, the cases have attracted widespread attention, and apparently have been a tough nut for the Ninth Circuit to crack. The judges had “looked diligently at trying to resolve it” without further argument, Thomas said at the outset of the hearing.
And all the judges posed challenging questions to lawyers on each side.
Thomas asked Brown’s lawyer, Manatt, Phelps & Phillips partner Ronald Katz, how he would distinguish E.S.S. Entertainment 2000 v. Rockstar Videos, which Thomas said is “obviously controlling.” In that 2008 case the Ninth Circuit ruled that a Los Angeles strip club could not sue the makers of “Grand Theft Auto” for re-creating the club in their video game.
Katz said the strip club was incidental to “Grand Theft Auto,” only appearing in the background. By contrast, “This is an avatar. This is a performance. This is the man’s whole lifetime.”
But Bybee noted that “Madden NFL” re-creates 1,500 players, with 22 appearing on the screen at any given time. “If this were a tennis match your argument would be strengthened greatly,” he told Katz.
Katz appeared to score points with the panel, though, when he pulled out a box of an EA game that showed a likeness of Brown, along with several other players, on the cover. Quist, a Michigan district judge sitting by designation, asked Katz to leave the box with the court. “I thought I’d seen that [in the trial record], and then I couldn’t find it again,” he said.
Hagens Berman partner Steve Berman argued on behalf of former college player Keller that EA does pay licensing fees to the NCAA to re-create the team names, logos and mascots.
Thomas didn’t seem impressed. “What right of publicity does a college athlete have?” he asked.
“The same as any other person,” Berman said.
But the college players sign waivers of compensation for the privilege of playing in the NCAA. “So at the end of the day, how do you prove any damages?” Thomas said.
Berman said Keller is no longer bound by the waiver agreement, and for current players the money could be placed in trust until they graduate.
Sager, meanwhile, pressed the point that publicity rights can’t trump expressive activity like film documentaries or unauthorized biographies, which also use likenesses of real people.
What about a biography that says “maybe authorized”? asked Bybee. With Brown’s picture on the cover, how would consumers know “whether it’s authorized or unauthorized?”
Sager said a Lanham Act violation requires an explicitly misleading use. “Mr. Brown wants to talk about the box,” Sager said. “That was never raised in the district court or in his opening brief to this court. Now, having exhausted other arguments, we’re going to talk about the box.”
In his rebuttal, Katz argued said it’s “not our position that you cannot make historical documentaries … or unauthorized biographies.”
But Bybee had a hypothetical for him, too. “What if you had a book titled, ‘What If’?” and the premise were, “What if Jim Brown were put up against the greatest running backs of today?”
“Ultimately,” Thomas asked, why isn’t “Madden NFL” “just a work of fiction? Jim Brown will never play against the current Detroit Lions.”