Alex Gloor is a JD Candidate at Osgoode Hall Law School.

A recent District Court decision out of California dismissed the case of NFL Hall of Fame player Jim Brown against video games giant Electronic Arts (EA), producers of the popular Madden football series. Mr. Brown alleged that EA misappropriated his "name, identity and likeness" by using a representation of him on some teams in the game. The dismissal was granted based on a First Amendment defence that protects "expressive works" such as video games.

Many of us from Generation Y grew up playing sports video games where Michael Jordan, Barry Bonds or Wayne Gretzky were not included because they did not agree for their likeness to be used. Instead, video game developers simply made replica players on the same team but with the players' names excluded. This is what is done in Madden for "historical" players who do not have a licence with EA for their likeness.  While this has not been an issue in the past, Mr. Brown felt that his replica player, who has his approximate physical attributes but not his name or correct jersey number, was a misappropriation of his likeness.

Specifically, Mr. Brown put forth an unfair competition claim under s.43(a) of the Lanham Act, under a theory of false endorsement. In general, this claim alleges the misuse of a trademark based on some distinguishing characteristic which is likely to confuse customers about the plaintiff's sponsorship of the product. The First Amendment provides a defence against Lanham Act claims asserted against the creator of expressive works. Based on the test from Rogers v. Grimaldi, the following two part test must be met for the claim to succeed:

1. The defendant's use of the plaintiff's mark must be relevant to the underlying work.
2. The use of the trademark must explicitly mislead customers about the source or content of the work.

While the use of the Jim Brown doppelgänger was held to be relevant, it was ruled that "a leap of logic" would be needed to equate the use of the anonymous, mis-numbered player to endorsement of the game. This seems to be a just ruling based on the Rogers test. In fact, given the aforementioned history of the video game business and that all players used in advertising and marketing of the game are represented in game by their actual names and numbers it does not take a "leap of logic" to conclude that EA is implicitly showing that Brown chose not to endorse the Madden game.

Canadian law on personality rights is slightly different to the law applied in Brown. In order for the tort to be established, the plaintiff must prove that:

1. The exploitation of the plaintiff's identity must be for a commercial purpose;
2. The exploitation must clearly capture the plaintiff.

This brings forward a much different issue than the Rogers test. The endorsement question is absent from this evaluation. Using the Canadian standard, the Brown case would turn on whether the replica player "clearly captures" the plaintiff. It seems that Brown would have actually succeeded, as the judge seemed prepared to concede that an avid football fan would be able to recognize the great Jim Brown as the running back on the historical teams of which he is a part.

In an interesting development, several former NCAA football players have recently launched a class action suit against EA and the NCAA for using their likeness in EA's college football game. Because the claim was made based on the "illegal profit" made by the NCAA rather than Brown's "false endorsement" argument, the players' lawyer does not expect the First Amendment to apply. Their claim may be stronger than Brown's because EA uses their actual jersey numbers and EA even has a feature where the user can download the players' actual names. Some argue that the NCAA has long departed from amateur ideals and has turned into a professional sports organization that does not pay its athletes. These people claim that the NCAA unfairly exploit their unpaid student athletes by collecting vast amounts of money from ticket sales, TV rights and jersey sales. Thus, this is a huge case for the NCAA for if they lose, it may open the floodgates for likeness claims regarding jersey sales, promotional materials and more.