january 7-13, 2011

Reprinted for web use with permission from Boston Business Journal. ©2011, all rights reserved. Reprinted exclusively by Scoop ReprintSource 1-800-767-3263.

Ginger Rogers leads a tricky dance for trademarks

ip law

Boston Business Journal l IP LAW l January 7-13, 2011

BostonBusinessJournal.com

30

In today’s high-demand world for online video games and other content-rich technology, the struggles trade-mark owners face in protecting their trademarks from unauthorized use are growing exponentially. When a com-pany’s trademark is incorporated into a creative work without consent, there is often a clash between the trademark owner’s right to prevent such use and a third party’s First Amendment right to freedom of expression.

Interestingly, the law isn’t always on a trademark owner’s side as courts con-tinue to rely on the 21-year-old “Rogers Test” to determine whether use of a trademark by a third party amounts to trademark infringement.

The Rogers Test is named for actress Ginger Rogers who claimed the title of the fi lm “Ginger and Fred,” which she did not star in, created the false impression of association between her and the fi lm’s producers. The court held that the title of the fi lm did not infringe Rogers’ rights because it had artistic relevance to the fi lm’s plot and the title was not misleading as to the source or content of the fi lm.

Subsequent application of the Rogers Test by courts has bloomed into wider application beyond use of a trademark owner’s mark in a fi lm title to video games and other technology. However, application of the Rogers Test by these

courts have been fairly consistent with owners of well-known trademarks fail-ing to prove the use of their marks in artistic works constitute infringement, consumer confusion or dilution of their brands. In fact, the more famous the owner’s trademark is, the more likely the third-party use is to pass the Rog-ers Test and receive First Amendment protection. In this regard, courts have made it diffi cult for Mattel to prevent the use of its “Barbie” trademark be-cause the brand has become part of America’s cultural vocabulary, and has cultural signifi cance beyond the trade-mark itself.

One pivotal case in which current law failed to protect the brand owner was James “Jim” Brown v. Electronic Arts Inc. (EA Sports). Brown claimed EA Sports committed trademark in-fringement because it allegedly used his likeness without his consent in the videogame Madden NFL.

Applying the Rogers Test, the court found that Brown failed to show that EA Sports’ usage of his likeness was

irrelevant to the underlying work be-cause Madden NFL is about NFL foot-ball and that Brown is a “legendary player.” Absent explicit representations of endorsement, the Court found that consumer confusion was highly un-likely, and the use of Brown’s likeness failed to outweigh the public’s interest in the expressive and creative aspects of the game.

The clashes over use of trademarks show that it is legally permissible for a third party to use a trademark owner’s mark in a creative work. For creators, the practical ramifi cation is clear: if an artist wants to use someone’s trade-mark for an artistic work, it should be used for a protected purpose, such as parody or free expression, not just to draw attention to the artist.

Two more recent cases offer some hope for trademark owners seeking protection. Last July, rapper Pitbull was sued by the reggae band Rebelu-tion for use of the band’s name as the title of his album. Pitbull argued that his choice of title should get protection under the Rogers Test. While the Court ruled that the test was inapplicable in his case for different reasons, it illus-trated the minimum threshold for ar-tistic relevance for the Ninth Circuit. The court observed there was no ar-tistic relevance because Pitbull didn’t title any of the songs “Rebelution” nor

was the word used as a lyric. While the threshold level for artistic relevance is minimal, artists cannot use any mark they wish and hide behind a claim of “artistic expression.”

Additionally, Samuel Keller, a former quarterback for two NCAA football teams alleged that EA used his like-ness in a series of video games called “NCAA Football.” The Court held that Keller’s action could be maintained de-spite EA’s invocation of First Amend-ment defenses and that EA’s depiction was “not suffi ciently transformative ... EA does not depict the Plaintiff in dif-ferent form; he is represented what he was: the starting quarterback for ASU (and) the game’s setting is identical to where the public found plaintiff dur-ing his collegiate career: on the football fi eld.”

While The Rogers Test is still the yardstick to measure these types of in-fringement cases, this outmoded litmus test creates signifi cant loopholes that will continue to widen in today’s high-tech media saturated environment.

KIMBERLY B. HERMAN is a partner in Sullivan & Worcester’s corporate and intellectual property departments in Boston. She is the leader of the firm’s Trademark Group and co-leader of the Intellectual Property Department. For more information, visit www.sandw.com

Ginger Rogers leads a tricky dance for trademarksINSIDER

VIEW

Kimberly B. Herman

Lisa van der Pool joins Paula Ebben and David Wade for a look at the day’s business headlines.

Weekday Mornings 4:30am—7:00amon WBZ TV.

Business with Breakfast.

41st Annual

Ad created by:

M ARTIN LUTHER KING, JR. EMORIAL BREAKFAST

Celebrate Martin Luther King, Jr., Day at Boston’s premier event dedicated to the memory of Dr. King. Monday, January 17, 2011 — 8 amBoston Convention & Exhibition Center415 Summer StreetBoston, MA

Featuring keynote speaker Dr. Melissa Harris-Perry (formerly Melissa Harris-Lacewell) MSNBC commentator and Princeton University professor.

Th e 41st Annual Martin Luther King, Jr. Memorial Breakfast will feature delicious food, live music and a diverse gathering

of over 1,000 people, including business, civic and religious leaders from across Massachusetts.

Invited guests include Mayor Th omas M. Menino, Governor Deval Patrick, Senator Scott Brown, Senator John Kerry and Attorney General Martha Coakley.

Purchase your tickets now at www.mlkbreakfastboston.org

For sponsorship information, contact mlkjrbreakfast@gmail.com or call 617.427.6175.

In today’s high-demand world for online video games and other content-rich technol-ogy, the struggles trademark owners face in protecting their trademarks from unauthor-ized use are growing exponentially. When a company’s trademark is incorporated into a creative work without consent, there is often a clash between the trademark own-er’s right to prevent such use and a third party’s First Amendment right to freedom of expression.

Interestingly, the law isn’t always on a trademark owner’s side as courts continue to rely on the 21-year-old “Rogers Test” to determine whether use of a trademark by a third party amounts to trademark infringe-ment.

The Rogers Test is named for actress Ginger Rogers who claimed the title of the film “Ginger and Fred,” which she did not star in, created the false impression of asso-ciation between her and the film’s produc-ers. The court held that the title of the film did not infringe Rogers’ rights because it had artistic relevance to the film’s plot and the title was not misleading as to the source or content of the film.

Subsequent application of the Rogers Test by courts has bloomed into wider application beyond use of a trademark owner’s mark in a film title to video games and other technology. However, applica-tion of the Rogers Test by these courts have been fairly consistent with owners of well-known trademarks failing to prove the use of their marks in artistic works consti-tute infringement, consumer confusion or dilution of their brands. In fact, the more famous the owner’s trademark is, the more likely the third-party use is to pass the Rog-ers Test and receive First Amendment pro-tection. In this regard, courts have made it

difficult for Mattel to prevent the use of its “Barbie” trademark because the brand has become part of America’s cultural vocabu-lary, and has cultural significance beyond the trademark itself.

One pivotal case in which current law failed to protect the brand owner was James “Jim” Brown v. Electronic Arts Inc. (EA Sports). Brown claimed EA Sports com-mitted trademark infringement because it allegedly used his likeness without his con-sent in the videogame Madden NFL.

Applying the Rogers Test, the court found that Brown failed to show that EA Sports’ usage of his likeness was irrelevant to the underlying work because Madden NFL is about NFL football and that Brown is a “legendary player.” Absent explicit repre-sentations of endorsement, the Court found that consumer confusion was highly unlike-ly, and the use of Brown’s likeness failed to outweigh the public’s interest in the expres-sive and creative aspects of the game.

The clashes over use of trademarks show that it is legally permissible for a third party to use a trademark owner’s mark in a cre-ative work. For creators, the practical rami-fication is clear: if an artist wants to use someone’s trademark for an artistic work, it should be used for a protected purpose, such as parody or free expression, not just to draw attention to the artist.

Two more recent cases offer some hope

for trademark owners seeking protection. Last July, rapper Pitbull was sued by the reggae band Rebelution for use of the band’s name as the title of his album. Pit-bull argued that his choice of title should get protection under the Rogers Test. While the Court ruled that the test was inappli-cable in his case for different reasons, it illustrated the minimum threshold for artistic relevance for the Ninth Circuit. The court observed there was no artistic rele-vance because Pitbull didn’t title any of the songs “Rebelution” nor was the word used as a lyric. While the threshold level for artistic relevance is minimal, artists cannot use any mark they wish and hide behind a claim of “artistic expression.”

Additionally, Samuel Keller, a former quarterback for two NCAA football teams alleged that EA used his likeness in a series of video games called “NCAA Football.” The Court held that Keller’s action could be maintained despite EA’s invocation of First Amendment defenses and that EA’s depiction was “not sufficiently transforma-tive ... EA does not depict the Plaintiff in different form; he is represented what he was: the starting quarterback for ASU (and) the game’s setting is identical to where the public found plaintiff during his collegiate career: on the football field.”

While The Rogers Test is still the yard-stick to measure these types of infringe-ment cases, this outmoded litmus test cre-ates significant loopholes that will continue to widen in today’s high-tech media satu-rated environment.

Kimberly b. Herman is a partner and the co-leader of the Intellectual Property Group at Sullivan & Worcester LLP in Boston. For more information, visit www.sandw.com.