Brown v. Electronic Arts: Why the Rogers Test Sank Jim Brown's Likeness Claim the Same Day Keller Won

Brown v. Electronic Arts, Inc., No. 09-56675 (9th Cir. July 31, 2013), is the indispensable counterpoint to the Ninth Circuit’s likeness jurisprudence. Decided the very same day as the court’s Keller opinion, by the same panel, against the same defendant, it reached the opposite result. Jim Brown, the Hall of Fame fullback who starred for the Cleveland Browns from 1957 to 1965, sued Electronic Arts over the appearance of an unnamed but recognizable running back on the historical and all-time teams in several versions of Madden NFL, which he alleged had used his likeness dating back at least to 2001. Crucially, the only claim he took up on appeal was not a right-of-publicity claim. He sued under Section 43(a) of the Lanham Act, alleging false endorsement: that consumers would be misled into believing he sponsored or was affiliated with the games. He also pleaded California claims for invasion of privacy and unfair business practices, but the district court declined supplemental jurisdiction over them, so only the federal claim reached the Ninth Circuit. The U.S. District Court for the Central District of California dismissed the Lanham Act claim under Rule 12(b)(6), and the Ninth Circuit affirmed in an opinion by Judge Bybee, joined by Judge Thomas and Senior District Judge Quist. The pairing of Brown and Keller is the clearest demonstration in the case law that the legal test for a likeness dispute is dictated by the cause of action, not the medium.

At a glance

• Case: Brown v. Electronic Arts, Inc., No. 09-56675 (9th Cir. 2013)
• Court / panel: U.S. Court of Appeals for the Ninth Circuit; Bybee, J. (author), Thomas, J., Quist, Sr. D.J. (by designation)
• Decided: July 31, 2013
• Claim: False endorsement under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a)
• Test applied: The Rogers v. Grimaldi artistic-relevance test, 875 F.2d 994 (2d Cir. 1989)
• Holding: Brown’s likeness was artistically relevant to Madden NFL and its use did not explicitly mislead consumers as to source; dismissal affirmed
• Significance: Establishes that Rogers, not transformative use, governs Lanham Act likeness claims against expressive works, the doctrinal mirror image of the same panel’s Keller decision

That the case reached the Ninth Circuit as a Lanham Act case rather than a right-of-publicity case was, ultimately, dispositive. A false-endorsement claim turns on consumer confusion about sponsorship, an inquiry the Ninth Circuit channels through Rogers when the allegedly infringing use appears in an expressive work. That framework is markedly more protective of defendants than the transformative-use test that governed Keller. Litigating the federal theory alone put Brown in the doctrinal current most favorable to EA.

The Rogers test and expressive works

The Rogers v. Grimaldi test originated in the Second Circuit’s resolution of Ginger Rogers’s objection to the Fellini film Ginger and Fred, and the Ninth Circuit had adopted it for Lanham Act claims involving expressive works. Under Rogers, Section 43(a) does not bar the use of a trademark (or, by extension, a person’s identity functioning as a source identifier) in an expressive work unless the use either (1) has no artistic relevance to the underlying work whatsoever, or (2) if it has some relevance, explicitly misleads consumers as to the source or content of the work. The test reflects a strong thumb on the scale for First Amendment interests: it tolerates a measure of consumer confusion as the price of expressive freedom.

The panel first confirmed that Madden NFL is an expressive work entitled to First Amendment protection, relying on the Supreme Court’s decision in Brown v. Entertainment Merchants Ass’n, 564 U.S. 786 (2011), which recognized video games as protected speech. With the threshold satisfied, Rogers supplied the governing standard. Note that the test is disjunctive and runs against the plaintiff: the Lanham Act does not reach an expressive work unless the use has no artistic relevance whatsoever, or, having some relevance, explicitly misleads. Brown therefore needed to allege facts satisfying at least one of those conditions, and he satisfied neither.

Why Jim Brown lost on both prongs

On artistic relevance, the panel held the bar is intentionally low: the use need only have some relevance to the work, more than zero. The inclusion of a legendary running back’s likeness on a historic team in a football simulation easily met that threshold. Realistic depiction of NFL history, including its iconic players, is plainly relevant to a game whose appeal rests on authentic football. Brown’s likeness was not gratuitously appended to an unrelated product; it was woven into the very subject matter the game depicts.

On the second prong, the court asked whether EA had explicitly misled consumers into believing Brown endorsed or was affiliated with Madden NFL. The word “explicitly” does heavy work. Under Rogers, it is not enough that some consumers might infer endorsement from the mere presence of a recognizable likeness; the maker must make an “explicit indication,” “overt claim,” or “explicit misstatement” of sponsorship. EA had made no such representation. The panel worked through each of Brown’s theories. It rejected his consumer survey, which showed that a majority of the public believes identifying marks cannot be used without permission, on the ground that relevant evidence must go to the user’s own conduct, not the impact of the use; the court added that even a survey showing consumers believed Brown endorsed the game would not establish an explicit misstatement. It held that EA’s promotional claim that the game featured “[f]ifty of the NFL’s greatest players and every All-Madden team” was true and not misleading, because it said nothing about endorsement. It reasoned that EA’s alteration of Brown’s avatar, including changing his jersey number from 32 to 37, could only make consumers less likely to think he was involved. And it found EA’s letters to Brown’s lawyers and a statement by EA officials at a law school conference irrelevant, because neither was directed at consumers. The court declined to reach Brown’s argument about the “Officially Licensed Product of NFL PLAYERS” legend on the packaging, because he had not raised it in his opening brief.

Because Brown satisfied neither condition, the panel affirmed dismissal. Notably, the court took care to cabin its holding to the Lanham Act. In a footnote it observed that “[w]ere the state causes of action before us, our analysis may be different and a different outcome may obtain,” citing Keller, in which the same panel that same day held EA had no First Amendment defense to state right-of-publicity claims. The opinion is thus a study in how a plaintiff’s pleading choices can determine the outcome of essentially the same grievance.

Lanham Act versus right of publicity: one set of facts, two regimes

The enduring lesson of Brown lies in its juxtaposition with Keller. Both cases concerned EA’s unlicensed depiction of identifiable athletes in a realistic sports simulation, though the games differed: Brown’s likeness appeared in Madden NFL, while Sam Keller, a former Arizona State and Nebraska quarterback, sued over NCAA Football. Yet because Brown sued under the Lanham Act, his claim was filtered through Rogers, which asks about consumer deception and heavily favors expressive defendants; because Keller sued for violation of his right of publicity, his claim was filtered through the transformative-use test, which asks whether the defendant added original expression and proved far more favorable to the plaintiff. Materially similar conduct, litigated under two different theories, yielded opposite results on the same day from the same panel.

That divergence is not an accident of drafting but a feature of the doctrines’ distinct purposes. The Lanham Act polices marketplace deception; it cares whether consumers are misled about source. The right of publicity protects a proprietary interest in identity; it cares whether the defendant appropriated commercial value without adding its own. A defendant can avoid deceiving anyone while still appropriating value, which is precisely the gap between Brown and Keller.

Open questions

• After Jack Daniel’s Properties v. VIP Products, 599 U.S. 140 (2023), the Rogers threshold no longer applies when a mark is used as a source identifier. Would a modern Brown-type claim still get the benefit of Rogers, or would Jack Daniel’s reroute it into ordinary confusion analysis?
• How should courts treat survey evidence of confusion under Rogers now that Jack Daniel’s has unsettled the framework’s boundaries?
• Where a likeness functions simultaneously as expressive content and as a perceived endorsement, which doctrine should dominate when claims are pleaded in the alternative?
• Does the “explicitly misleading” standard make sense for AI-generated likenesses, where the line between depiction and implied endorsement may blur?

Implications

• Plead the right theory. A likeness grievance can rise or fall on whether it is framed as false endorsement (Lanham Act, Rogers) or misappropriation (right of publicity, transformative use). Counsel should choose deliberately.
• The medium does not select the test; the claim does. Brown and Keller prove that the same kind of expressive product, a realistic EA sports simulation, yields different standards depending on the cause of action invoked.
• “Explicitly misleading” is a high bar. Mere presence of a recognizable person, even with survey-measured confusion, does not satisfy Rogers; an overt claim of endorsement is required.
• Watch the post-Jack Daniel’s landscape. The 2023 Supreme Court decision narrowing Rogers may reshape how future Brown-type claims are analyzed.
• First Amendment protection for games is settled. Madden NFL is expressive speech, a premise no longer open to dispute after Entertainment Merchants.

Frequently asked questions

Why did Jim Brown lose when Sam Keller won on similar facts? Because they sued under different laws. Brown brought a Lanham Act false-endorsement claim, governed by the speech-protective Rogers test, and could not show EA explicitly misled consumers about his endorsement. Keller brought a right-of-publicity claim, governed by the transformative-use test, which asks whether EA added original expression rather than whether consumers were deceived.

What does “explicitly misleads” mean under Rogers? It requires an overt, affirmative representation that the person endorsed or is affiliated with the work, not merely the inference some consumers might draw from seeing a recognizable likeness. The Ninth Circuit held that even survey evidence of confusion cannot substitute for an explicit misstatement, because that would defeat the heightened First Amendment protection Rogers provides.

Did Brown foreclose all of Jim Brown’s claims against EA? No. The decision addressed only the Lanham Act claim. Brown had also pleaded California claims, but the district court declined supplemental jurisdiction over them, and the Ninth Circuit noted in a footnote that its analysis might differ had the state causes of action been before it. The companion Keller ruling allowed precisely such a right-of-publicity claim to proceed against EA, though over its NCAA Football game rather than Madden NFL.

Authorities and sources

• Slip opinion, Brown v. Electronic Arts, Inc., No. 09-56675, 724 F.3d 1235 (9th Cir. July 31, 2013) (U.S. Court of Appeals for the Ninth Circuit): https://cdn.ca9.uscourts.gov/datastore/opinions/2013/07/31/09-56675.pdf
• Opinion (slip copy), Brown v. Electronic Arts, Inc., 724 F.3d 1235 (9th Cir. 2013) (Berkeley Law archive): https://www.law.berkeley.edu/archive/files/Brown_v_Electronic_Arts.pdf
• Slip opinion, In re NCAA Student-Athlete Name & Likeness Licensing Litigation (Keller v. Electronic Arts, Inc.), No. 10-15387, 724 F.3d 1268 (9th Cir. July 31, 2013): https://cdn.ca9.uscourts.gov/datastore/opinions/2013/07/31/10-15387.pdf
• 15 U.S.C. § 1125 (Lanham Act § 43) (Cornell LII): https://www.law.cornell.edu/uscode/text/15/1125
• Crowell & Moring LLP, “After Being Tripped Up by the Lanham Act, Jim Brown Rushes at Electronic Arts with a Right of Publicity Claim”: https://www.crowell.com/en/insights/client-alerts/after-being-tripped-up-by-the-lanham-act-jim-brown-rushes-at-electronic-arts-with-a-right-of-publicity-claim
• Quimbee, “Brown v. Electronic Arts, Inc., 724 F.3d 1235 (2013): Case Brief Summary”: https://www.quimbee.com/cases/brown-v-electronic-arts-inc