On Sept. 9, 2011, Judge Freda Wolfson of the United States District Court for the District of New Jersey granted summary judgment for Electronic Arts (“EA”) on the claims of a putative class of NCAA football players that EA had misappropriated their likeness and identity under New Jersey law by featuring them in its NCAA Football video games. Hart v. Electronic Arts, Inc., 2011 WL 4005350 (D.N.J. Sept. 9, 2011)The Court held that EA‘s First Amendment right to free expression outweighed the plaintiff‘s right of publicity under either the “transformative use” test developed by California state courts or the “Rogers” test developed by the Second Circuit in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989).Judge Wolfson‘s thorough and scholarly opinion is a significant contribution to the law on the interplay between the Fi r s t Amendment and the right of publicity. Of particular note, the decision places great emphasis on the interactivity of EA‘s video games in finding them protected by the First Amendment.
The CaseAt summary judgment, Activision Blizzard argued that the strong First Amendment interest in protecting free expression warranted dismissal of AMG’s claims. The Court noted that there was a long line of precedent, beginning with Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), that weighed strongly in favor of protecting works of artistic expression against Lanham Act claims. (slip op. at 7).
Activision moved for summary judgment on all claims.In granting Activision’s motion, the court looked to the two-prong test in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), to determine whether the Lanham Act should be interpreted narrowly to avoid the suppression of protected speech under the First Amendment. In citing Rogers, the court noted that the “balance [between trademark interests and First Amendment speech interests] will normally not support application of the [Lanham] Act unless [the use of the trademark] has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless [the use of the trademark] explicitly misleads as to the source or the content of the work.”Under the two-prong Rogers test, courts in the Second Circuit must determine whether the use of the trademark (1) has any “artistic relevance to the underlying work whatsoever,” and (2) “explicitly misleads as to the source or the content of the work.”
The court also rejected Brown’s objection that he never signed a “video release form” authorizing the use of his likeness in the documentary because “no such agreement is necessary where, as here, the film and its portrayal of Brown are protected under the First Amendment.”Similarly, the court dismissed the estate’s right-of-publicity claim because the use of Bobbi Kristina Brown’s likeness in the documentary was “newsworthy” and therefore not actionable pursuant to the First Amendment. As the court explained, “the use of a newsworthy person’s name and likeness is protected, and this includes the use of a person’s identity in news reporting, commentary, entertainment, works of fiction or nonfiction, or in advertising that is incidental to such uses.”As for Brown’s Lanham Act claim, the court applied the test first articulated in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) “to balance the First Amendment interest in free expression against the public’s interest in being free from consumer confusion about affiliation and endorsement.” Under the Rogers test, the Lanham Act is inapplicable to “artistic works” if a mark, including a person’s name or likeness, is (1) “artistically relevant” to the work and (2) not “explicitly misleading.”
Since the 1989 case of Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), courts have applied the Rogers test when an artistic work is alleged to have infringed a Lanham Act-protected right. With litigants locking horns over the titles and other creative elements of their nature documentaries, the U.S. District Court for the District of Colorado proposed a revision to the two-pronged Rogers test in the case of Stouffer v. Nat’l Geographic Partners, LLC, No. 18-cv-3127-WJM-SKC, 2019 U.S. Dist. LEXIS 140947 (D. Colo. Aug. 20, 2019).Plaintiffs Marty Stouffer and his eponymous production company produced and hosted a popular nature documentary series called Wild America, which aired for decades on PBS. Stouffer and National Geographic had discussed the possibility of National Geographic licensing or purchasing some of his series, but National Geographic ultimately declined.
With free expression under the First Amendment at stake, Activision argues that AMG’s trademark rights, asserted under the Lanham Act, should be read narrowly to avoid suppressing speech. In the Second Circuit, where this case is pending, the standard for balancing trademarks against First Amendment rights is known as the Rogers test, named for Rogers v. Grimaldi (1989). Under that test, the balance between trademark rights and the First Amendment “will normally not support application of the Lanham Act unless  the use of the plaintiff’s name [or in the case of AM General, its trademark] has no artistic relevance to the underlying work whatsoever.
Epic Games notes in its motion to dismiss Ferguson’s Milly Rock suit that the Swipe It emote is not substantially similar, the crux of any copyright claim. Further, Epic Games argues that its use of the Swipe It dance is sufficiently transformative to overcome any trademark rights or right of publicity held by Ferguson under the precedent set by Rogers v. Grimaldi, 875 F2d 994 (2d Cir. 1989), a case that weighs First Amendment freedom of speech/expression against trademark rights and right of publicity, allowing artistic works that are transformative enough to survive the echoes of fame created by the original artists. It remains to be seen whether a case about Ginger Rogers and Fred Astaire should set precedent for 2 Milly, or whether those writing the Copyright Act of 1976 could anticipate how one dance move could catapult an artist to worldwide fame on YouTube.
The Expansion of the Rogers Test The predominant approach taken by courts is to limit the application of the Lanham Act to expressive works where “the public interest in avoiding consumer confusion outweighs the public interest in free expression” as set forth by the Second Circuit in Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989). Under the Rogers test, the use of another’s mark in an expressive work will not be actionable under the Lanham Act unless it “has no artistic relevance to the underlying work whatsoever, or if it has some artistic relevance, unless [it] explicitly misleads as to the source or content of the work.”
Empire Distribution counterclaimed for trademark infringement, trademark dilution, unfair competition and false advertising. After Fox moved for summary judgment, the district court determined that Fox’s use of “Empire” is protected by the First Amendment under the two-prong test laid out by the US Court of Appeals for the Second Circuit in Rogers v. Grimaldi (1989). Under the Rogers test, the title of an expressive work does not violate the Lanham Act unless the title “has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless it explicitly misleads consumers as to the source or content of the work.”
In most instances, likelihood of confusion is the method for determining trademark infringement. However, when the allegedly infringing use is in connection with an expressive work, courts in the 9th Circuit will apply a different test developed by the Second Circuit in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). Courts apply this different test primarily because such situation implicates the First Amendment right of free speech which must be balanced against the public’s interest in avoiding consumer confusion.