Our weekly SoCal IP Institute meeting on Monday, August 5, 2013 will be a discussion of a recent 9th Circuit decision regarding player likenesses in games and a non-precedential case at the TTAB involving the Morehouse defense. Brief synopses of the cases appear below.

Brown v. EA, Inc., Case No. 09-56675 (9th Cir. July 31, 2013) (available here).  The 9th Circuit affirmed the district court’s dismissal of retired professional football player Jim’s Brown’s action alleging that Electronic Arts, Inc., violated § 43 of the Lanham Act through the use of his likeness in its Madden NFL series of video games.

The 9th Circuit held that because the video games were expressive works, the district court correctly applied the Rogers test for balancing between trademark and similar rights, on the one hand, and First Amendment rights, on the other. The panel held that neither the “likelihood of confusion” test nor the “alternative means” test was the appropriate framework. Applying the Rogers test, the panel concluded that Brown’s likeness was artistically relevant to the games and that there were no alleged facts to support the claim that Electronic Arts explicitly misled consumers as to Brown’s involvement with the games. Accordingly, the public interest in free expression outweighed the public interest in avoiding consumer confusion.

Citadel Federal Credit Union v. KCG IP Holdings LLC, Canc. No. 92/055,228 (T.T.A.B. July 10, 2013) (available here). Citadel filed a petition for cancellation of KCG’s mark on grounds of priority and likelihood of confusion.  KCG IP received numerous extensions of time to answer and, eventually, filed an answer and a motion for summary judgment. KCG asserted the so-called Morehouse defense and argued that the marks were essentially the same and cover essentially the same goods and services.  Citadel countered that KCG applied a more lenient likelihood of confusion test, rather than the required “essentially the same” test.  Because the marks were not “essentially the same” with Citadel’s mark including a crenelated design.  The Board ruled that the Morehouse defense was unavailable to KCG and denied the motion for summary judgment.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, August 5, 2013 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.