Use of Original Infringing Ravens Logo In Madden NFL Video Game Is Not Fair Use

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The use of an infringing Baltimore Ravens logo in the “throwback uniform” feature of the Madden NFL video game does not constitute fair use, the U.S. District Court for the District of Maryland ruled Nov. 19 (Bouchat v. NFL Properties LLC, D. Md., No. 1:11-cv-02878-MJG, 11/19/12).

Denying a motion for summary judgment by the National Football League and the Baltimore Ravens, the court, however, found that the appearance of the infringing logo in NFL historical films and in static displays at the Ravens' stadium were fair uses.

Security Guard Wins on Infringement.

Frederick E. Bouchat was an amateur artist and security guard at a state office building in Baltimore. As news of a new National Football League team for Baltimore spread in 1995, Bouchat created drawings for possible logos. Bouchat showed the drawings to a state official in his office building and the official arranged a meeting between Bouchat and the chairman of the Maryland Stadium Authority, who said he would pass along the drawings to club officials.

From 1996 to 1998, the Baltimore Ravens, once established, used a logo--the Flying B Logo--that Bouchat believed was based on his drawings and in 1997, he sued, alleging infringement. A jury returned a verdict in Bouchat's favor, finding that the Flying B Logo was an infringing derivative of Bouchat's Shield Drawing.

The Ravens sought a new trial based on the argument that Bouchat had not shown that anyone connected with the Ravens had actually seen the drawings.

The U.S. Court of Appeals for the Fourth Circuit held that Bouchat could show access, and, thus, copying, through circumstantial evidence. Bouchat v. Baltimore Ravens Inc., 228 F.3d 489, 56 USPQ2d 1422 (4th Cir. 2000); Bouchat v. Baltimore Ravens Inc., 241 F.3d 350, 56 USPQ2d 1422 (4th Cir. 2001).

However, having shown infringement, Bouchat ran into trouble establishing damages. The Ravens were awarded summary judgment that Bouchat could collect no damages on the basis that Bouchat was not able to show that the Ravens' profits were attributable to the infringement. Bouchat v. Baltimore Ravens Football Club Inc. d/b/a Baltimore Ravens Inc., 346 F.3d 514, 68 USPQ2d 1494 (4th Cir. 2003) (199 PTD, 10/15/03).

Bouchat then sought to recover from retail outlets that sold licensed Ravens goods, but the Fourth Circuit found that such claims were precluded by the decision in the earlier action. Bouchat v. Bon-Ton Department Stores Inc., 506 F.3d 315, 84 USPQ2d 1289 (4th Cir. 2007).

New Action on New Uses.

The instant action sought to stop the use of images of the infringing logo in season highlight films, video clips, and in the Ravens' corporate lobby. A federal district court found all these uses to constitute fair uses. Bouchat v. Baltimore Ravens LP, 587 F. Supp. 2d 686 (D. Md. 2008). The Fourth Circuit partially upheld the fair use ruling for the corporate lobby, but not in the films and video clips. Bouchat v. Baltimore Ravens LP, 619 F.3d 301, 96 USPQ2d 1260 (4th Cir. 2010).

On remand, the district court rejected Bouchat's motion for an injunction Bouchat v. Baltimore Ravens LP, No. 1:08-cv-00397-MJG, 100 USPQ2d 1719 (D. Md. Nov. 9, 2011) (221 PTD, 11/16/11).

The NFL and the Ravens then moved for summary judgment on the claims.

Stadium Displays Are Fair Use.

Judge Marvin J. Garbis applied the fair use factors as set forth in 17 U.S.C. §107 to the three uses in question.

Turning first to the images displayed at the Ravens' home venue, M&T Stadium, the court separately considered three different works: a display showing a timeline of Ravens history, a “highlight reel” of still photographs offering information about significant events in the teams' history, and a display on “important plays.”

Although the displays were inside the stadium and consumers must pay to enter the stadium, the court found that these displays were only indirectly of a commercial nature, given that they were not what consumers were paying for. Neither were they included in the “game experience.”

Furthermore, the court said, quoting from the 2010 decision, these uses were transformative, in that they were “displayed to represent the inaugural season and the team's first draft picks” and “not for its expressive content, but rather for its … factual content.”

Turning to the second factor--the nature of the works--the court found that this did not weigh against a finding of fair use. Under the third factor, the fact that the entire logo was used in the displays was “neutralized” by the transformative nature of those uses, the court said.

Finally, transformation also neutralized the fourth factor--the effect on any potential market for Bouchat's work. Taking the factors together, the court found that the stadium picture displays were all fair use.

Documentary Films Also Fair Use.

Next, the court turned to three documentary videos produced by the NFL. These works, as biographical and historical works, were transformative uses, and this weighed in favor of fair use, even though they were commercial, the court said.

“Each offers commentary, criticism, and documents historical facts,” the court said. “Each use in these films adds something new by representing factual content, documenting and commenting on historical events, or functioning as a biography or career retrospective.”

This fact outweighed the fact that these films were commercial works, the court said. As with the stadium picture displays, the fact that the Bouchat logo appeared in full and any possible market for the logo was neutralized by transformation.

Thus, the appearance of the logo in the documentary films was also fair use, the court concluded.

Video Game Is Not Fair Use.

The court then turned to the final category of allegedly infringing works--the Madden NFL video game produced by Electronic Arts Inc. Several of the recent editions of the game allow users to choose “throwback uniforms,” so that the players depicted in the game are not wearing the current NFL clubs' uniforms, but rather ones used in the past. Use of this option for the Baltimore Ravens would display the Bouchat logo on their uniforms.

The court began its analysis of this use by specifying that it was “materially different” from the stadium picture displays and the documentaries.

First, the court said, the purpose and character of use prong of the fair use test “quite strongly” weighed against fair use. The video game was a commercial product, and “the throwback uniform feature would not have been added to the Game without a determination by EA that there was commercial value (even if a small one) to the addition of a feature that included the use of the Flying B Logo.” Furthermore, the court said that this use was “totally or virtually non-transformative.”

There was also some question as to whether EA had acted in good faith by including the Bouchat logo in the throwback uniform feature because it was not established that EA held a license from NFL, the court said.

The second and third factors--nature of the work and amount and substantiality--weighed in Bouchat's favor and unlike before were not neutralized by a finding of transformative use, the court said.

Finally, the effect on the market factor did not favor a finding of fair use, according to the court. The NFL itself recognizes the commercial value of exploiting throwback uniforms, in the form of replica jerseys and licensed good bearing old logos.

“Since there is a market for memorabilia, it only stands to reason that there is a potential market for the Flying B Logo,” the court said. And to the extent that there is no market for Bouchat's original Shield Drawing does not mean that marketing the Flying B Logo--and infringing derivative work--is fair use. The court said:

The instant litigation arises in a context in which a user of the Flying B Logo [, Electronic Arts,] needs consent of both Bouchat and the NFL. There is, no doubt, a market for the Flying B Logo. hence, it would be unsound to find that there is no market for Bouchat's copyrighted work since that work is, itself, an integral element of the Flying B Logo. Indeed, Bouchat is analogous to the holder of a patent on an item that is of commercial value only if it incorporates the invention of an improvement patent. There would be no market for the product produced by virtue of the initial pant, but the improvement patent enables a marketable product.  


Taking these factors together, the court concluded that the use of the Flying B Logo in the video game did not constitute a fair use.

The court thus denied the NFL's motion for summary judgment.

Bouchat was represented by Howard J. Schulman of Schulman & Kaufman, Baltimore. The NFL was represented by Mark D. Gately of Hogan Lovells, Baltimore. Electronic Arts was represented by Elizabeth A. McNamara of Davis Wright Tremaine, New York.

By Anandashankar Mazumdar  

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