An Indiana District Court Guns Down Dillinger’s Right of Publicity and Lanham Act Claims By Asserting the Right of Publicity is Not Retroactive and the First Amendment Protects Use of ‘Dillinger Tommy Gun’

Judge Magnus-Stinson of the District Court of the Southern District of Indiana recently delivered two decisions on right of publicity and trademark claims brought by John Dillinger heirs’ against  Electronic Arts. John Dillinger was a “’notorious and vicious thief’—a ‘lurid desperado’ who ‘came to evoke the gangster era,’” and was “commonly associated with Thompson submachine guns, also known as Tommy guns.” Electronic Arts is a videogame developer and publisher that released the Godfather and the Godfather II videogames in 2006 and 2009.

The first decision, which was decided on the pleadings, addressed whether Dillinger had a right of publicity claim against EA when it used his name in connection with Tommy Guns in EA’s “The Godfather” video games.  The primary issue in this case centered on whether Indiana’s right of publicity statute, which provides protection for up to 100 years after the death of the personality, could be applied retroactively.  Dillinger died sixty years before the statute was enacted, so without the court deciding in the affirmative, the claim could not be brought. At common law, no post-mortem right of publicity exists.

Dillinger contended that the statute should be read retroactively by citing non-precedential authority, Scalf v. Lake County Convention & Visitors Bureau, Inc. , that had stated that the “Indiana Right of Publicity statute should…be read retroactively.” However, the Dillinger court ultimately agreed with EA’s argument that it should not be retroactive, based on a New York district case, Shaw Family Archives, Ltd. v. CMG Worldwide, Inc., where the court rejected the notion that Marilyn Monroe had a property right in her publicity that she could leave in her will at the time of her death.

First, the Court adopted a Seventh Circuit rule that it should adopt the “narrower and more reasonable path” when confronted with the choice “between an interpretation of [state] law which reasonably restricts liability and one which greatly expands liability.” If the statute was retroactive, “heirs of the millions of people who died between 1894 and 1994…would greatly expand the potential liabilities that the statute creates.” Second, the Court noted that if it were to recognize a new property right “after probate has concluded [it] would frustrate Indiana’s ability to collect the tax.” Further, “probate…ensures that creditors who have claims against the decedent are paid” and that the rightful heirs received the property.  Therefore, the right of publicity does not apply retroactively.

In addition, the court addressed whether–if the right of publicity statute was to apply retroactively– videogames should be considered literary works for purposes of the literary works exception to the right of publicity statute.  Although the General Assembly did not include videogames as literary works expressly, EA successfully argued that they should be considered literary works.  The Court pointed to Congress’s practice of expressly stating that videogames fall under literary works for purposes of copyright.  Additionally, the Court emphasized how a narrow definition of literary works may “set the right of publicity statute up for a constitutional challenge because videogames have just as much protection under the First Amendment as does ‘highbrow literature.’”

The second decision, which was rendered on summary judgment, addressed Dillinger’s Lanham Act claims.  Specifically, the Court examined whether the games’ use of Dillinger’s name in association with weapons, for example the “Modern Dillinger Tommy Gun,” infringed Dillinger’s trademark rights. Dillinger contends that First Amendment protection should not be given in this instance because EA “explicitly misleads players regarding the content of the games and Dillinger’s approval of the mark’s usage.”  The First Amendment defense is controlled by Rogers v. Grimaldi, which instructs the court to consider a two-part test: (1) does the mark’s use have any artistic relevance to the underlying work, and (2) if so, does the use explicitly mislead the public as to the source of the work?

Meeting the artistic relevance prong is an “appropriately low threshold of minimal artistic relevance.” The Court found that EA met this low standard because the “‘mental imagery’ associated with the Dillinger name has more than zero relevance to the content of the Godfather games,” and compared it to E.S.S. v. Rock Star Videos, which was decided by the Ninth Circuit.   There, the Ninth Circuit held that the use of the name of a Los Angeles strip club in a videogame met this threshold because the goal was to “mimic the look and feel of actual Los Angeles neighborhoods.”

To be misleading, and thus satisfy the second prong of the Roger’s test, EA’s work must “make some affirmative statement of the plaintiff’s sponsorship or endorsement, beyond mere use of plaintiff’s name or other characteristic.” As with E.S.S., EA’s use of the mark is “not the main selling point of the [g]ame” and is “quite incidental to the overall story of the game.” A single line in a complex game was not enough to mislead consumers into believing Dillinger sponsored it.

[Photo under Creative Common’s license by  Puuikibeach http://www.flickr.com/photos/puuikibeach/3281023246/in/photostream/]

An Indiana District Court Guns Down Dillinger’s Right of Publicity and Lanham Act Claims By Asserting the Right of Publicity is Not Retroactive and the First Amendment Protects Use of ‘Dillinger Tommy Gun’, 5.5 out of 10 based on 2 ratings

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