“Ridin’ on a ‘Cole’ Train:” Former Football Player Sues Over Alleged IP Infringement in Gears of War Video Games

Football player turned wrestler, Lenwood Hamilton, filed suit last month alleging the makers of the video game Gears of War used his likeness to create one of the game’s main characters. The suit, filed in federal court for the Eastern District of Pennsylvania, names five defendants to include Hamilton’s former business associate, Lester Speight, and video game makers Epic Games and Microsoft.

Background[i]

Hamilton’s professional football career was short lived; he played one game with the Philadelphia Eagles in 1983. In 1997, Hamilton switched from football and launched Soul City Wrestling, Inc. “Hard Rock” Hamilton wanted to promote wrestling as family entertainment and held himself out to be the “Defender of the Youth of America.” Hamilton used the notoriety he gained from his stint in the NFL (as well as decade-old criminal allegations that were eventually dropped) to promote his new brand.

In 1998, Defendant and former wrestler Lester Speight, “Rasta the Urban Warrior” participated in a few Soul City Wrestling productions. During an after party, Speight allegedly proposed he and Hamilton collaborate to create a “violent video game.” Hamilton, disinterested in the violence, declined the offer. Speight did not give up easily, making Hamilton several more offers. Hamilton continued to decline the offers, but Greg Bushu, a Soul City investor, and Soul City videographer, Robert Geary, eventually pursued the opportunity for themselves.

In 2006, Epic Games developed and Microsoft published the first Gears of War (GOW). The game features troops on the fictional planet “Sera” fighting against an enemy that is “threatening human survival.”[ii] The four sequels to the game all featured the same four main characters.

According to the complaint, in January 2015, a friend of Hamilton’s son mentioned that Hamilton resembled one of the GOW characters. Hamilton alleges that game makers appropriated his voice and physical appearance to create the character Cole Train.

Owen Forensics Services out of New Jersey conducted a “voice analysis and comparison” which indicated that the character does not merely sound like Hamilton, but that the character actually uses Hamilton’s voice. Hamilton accuses Robert Gearey of having access to and distributing Hamilton’s voice recordings to the game-makers.

Hamilton’s complaint alleges multiple IP violations including trademark, right of publicity and right to privacy. 

Trademark

Hamilton alleges that Defendants advertised that Cole Train’s human persona is Lester Speight in violation of 15 U.S.C. §1125(a)(1)(A) and (B), which prohibits manufacturers from representing any facts about goods that are likely to confuse consumers about the origin or qualities of a good.

Hamilton claims the Defendants are deceiving the public as to the real human persona of Cole Train by advertising that Speight provided the character’s voice. In order to state a viable §1125 claim, Hamilton will have to prove that (1) his voice and physical appearance are legally protectable “marks”; (2) he owns the “marks”; and (3) the defendants’ use of the marks is likely to create confusion concerning the plaintiff’s sponsorship or approval of those goods or services.[iii]

First, Hamilton does not allege that he has registered his voice or his physical appearance as trademarks; however, registration is not required for recovery.[iv] The second part of the analysis—ownership of the mark—will likely be the area of contention. Defendants Epic Games and Microsoft will likely continue to represent that they used Speight’s likeness for Cole Train.

Last, courts use the Sleekcraft factors when determining likelihood of confusion. The factors include the proximity of the goods, similarity of the marks, evidence of actual confusion, marketing channels, the nature of the goods, the degree of care to be exercised by a purchaser, the defendant’s interest, and the likelihood of expansion of the product lines.[v]

Here, the court will likely look at the fact that Hamilton’s brands tend to be sports related, while Gears of War is a tactical game set during a battle on a fictional planet—which given Hamilton’s self-proclaimed aversion to violence, does not seem to indicate a very high risk for his expansion into the violent video game industry. Beyond the friend of Hamilton’s son, there is no indication of actual confusion (although lack of actual confusion is not necessarily dispositive). Further, Epic Games and Microsoft do not seem to be “free-riding” off of Hamilton’s reputation as they openly advertise Speight as the voice of the character in question. At this pre-discovery stage, the Sleekcraft factors seem to be weighing against Hamilton’s trademark infringement claims.

Right of Publicity

The right of publicity grants a person exclusive entitlement to their likeness, and prevents unauthorized exploitation.[vi] The right of publicity closely resembles a property right, as it was established to protect the commercial value of one’s reputation.[vii]

Under Pennsylvania law,[viii] right of publicity is an appropriation of a plaintiff’s “valuable name or likeness, without authorization, to the defendant’s commercial advantage. The [likeness] appropriated must have secondary meaning;”[ix] in other words, the threshold issue is whether the public immediately associates the appropriated-likeness with a specific individual or enterprise. Here, the court will essentially need to decide whether Hamilton is famous enough for his look and sound to have developed secondary meaning.

Privacy

To be liable for invasion of privacy, a defendant must have appropriated the plaintiff’s name or likeness for his own use or benefit.[x]

Pennsylvania’s two-year statute of limitations provides one possible bar to Hamilton’s invasion of privacy claims. The clock starts on the date of the initial publication of the infringing material. Pennsylvania has a “single publication rule” for the statute of limitations, which holds that “any one edition of a book or newspaper, or any one radio, television broadcast, exhibition of a motion picture or similar aggregate communication is a single publication.”[xi] So, although the single publication rule does not specifically mention video games, it is likely that Hamilton will not be able to recover damages for any invasions to his privacy caused by any of the games published more than two years prior to the filing of his complaint.

Conclusion

Hamilton does not seek injunctive relief for the alleged infringements, but instead seeks royalties, a percentage of profits, and compensatory and punitive damages. It is difficult to deny the resemblance of Hamilton and his possible video game persona—the details are uncanny down to the gold tooth. The question however is whether this is the type of harm that IP law is prepared to recognize.[xii] The parties have agreed to allow Defendants an extension in filing their response. Defendants’ response is due on March 8, 2017.

Photocredit: Epic Games, TMZ
[i]Background gathered from Plaintiff’s Complaint for Hamilton v. Speight 2:17-CV-00169-AB, filed Jan. 11, 2017; and Lee, Ex-Athlete Slaps Microsoft with IP Suit Over “Gears of War” Law360 Jan. 11, 2017, 9:53 PM EST https://www.law360.com/articles/880001/ex-athlete-slaps-microsoft-with-ip-suit-over-gears-of-war-
[ii] Complaint at 7.
[iii] See Facenda v. N.F.L. Films, Inc., 542 F.3d 1007, 1015 (3d Cir. 2008) (citing Commerce Nat’l Ins. Servs., Inc. v. Commerce Ins. Agency, Inc., 214 F.3d 432, 437 (3d Cir. 2000)).
[iv] Waits v. Frito-Lay, Inc.,978 F.2d 1093 1106 (9th Cir. 1992)(discussing voices as possibly protectable marks).
[v] AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-349 (9th Cir. 1979); see also A&H Sportswear, Inc. v. Victoria’s Secret Stores, Inc., 237 F.3d 198, 215 (3d Cir. 2000) (enumerating the Third Circuit’s ‘version’ of the Sleekcraft factors).
[vi] Eagle v. Morgan, 2013 U.S. Dist LEXIS 34220 *22 (E.D. PA Mar. 12, 2013).
[vii] Id. at *23 (explaining that the benefit need not be commercial in nature).
[viii] See Digital Media Law (“At common law, Pennsylvania has distinguished the right of publicity from the tort of misappropriation. . . However, it is unsettled in Pennsylvania if 42 Pa. Cons. Stat. §8316 has absorbed the common law tort of invasion of privacy by appropriation of name or likeness.”), http://www.dmlp.org/legal-guide/pennsylvania-right-publicity-law.
[ix] Philadelphia Orchestra Ass’n v. Walt Disney Co., 821 F.Supp. 341, 349 (E.D. Pa. April 30, 1993).
[x] See Restatement (Second) of Torts § 626 C (Am. Law Inst. 1965).
[xi] Muhamed Aly Rifai v. CMS Med. Care Corp., 2016 U.S. Dist LEXIS 22906, *5 (E.D. PA Feb. 24, 2016) (citing In re Philadelphia Newspapers, LLC, 690 F.3d 161, 174 (3d Cir. 2012)).
[xii] Compare with Gravano v. Take-Two Interactive Software, Inc., 142 A.D.3d 776 (Sept. 1, 2016) (the court ruled in favor of the makers of Grand Theft Auto in a suit brought by Gravano and Lohan, two celebrities, who claimed that the game appropriated their likenesses).

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