In a recent 62-page decision by the Third Circuit, obviously intended to give guidance in an unclear area of the law, the rights of publicity of a college athlete in a video game trumped the First Amendment arguments of the video game manufacturer. Ryan Hart v. Electronic Arts, No. 11-3570 (Third Circuit, May 21, 2013). The college athlete, Ryan Hart, a star quarterback for Rutgers from 2002-2005, is attempting to represent a class of athletes like him, the video game manufacturer is Electronic Arts (EA), and the game is NCAA Football, which has been produced for a series of years. The court held that the so-called Transformative Use Test applied, and that EA did not sufficiently transform Hart’s image to merit First Amendment protection, a holding that provides valuable guidance to practitioners.
The facts are simple: EA used an avatar recognizable as Hart in NCAA Football. As the opinion put it on page 9:
In no small part, the NCAA Football franchise’s success owes to its focus on realism and detail—from realistic sounds to game mechanics to team mascots. This focus on realism also ensures that the "over 100 virtual teams" in the game are populated by digital avatars that resemble their real-life counterparts and share their vital and biographical information. Thus, for example, in NCAA Football 2006, Rutgers’ quarterback, player number 13, is 6 feet 2 inches tall, weighs 197 pounds and resembles Hart. Moreover, while users can change the digital avatar’s appearance and most of the vital statistics (height, weight, throwing distance, etc.), certain details remain immutable: the player’s home state, home town, team and class year.
The Applicable Test for Balancing Rights of Publicity and the First Amendment
There are more than half-a-dozen tests that have been used to balance rights of publicity versus the First Amendment. The Third Circuit started its analysis by rejecting two of the most prominent of those.
1. The Predominant Use Test
The Third Circuit defined the Predominant Use Test on page 25 of its opinion as follows:
If a product is being sold that predominantly exploits the commercial value of an individual’s identity, that product should be held to violate the right of publicity and not be protected by the First Amendment, even if there is some "expressive" content in it that might qualify as "speech" in other circumstances. If, on the other hand, the predominant purpose of the product is to make an expressive comment on or about a celebrity, the expressive values could be given greater weight.
The Third Circuit then rejected that test on the same page because the test “ . . . is subjective at best, arbitrary at worst, and in either case calls upon judges to act as both impartial jurists and discerning art critics. These two roles cannot coexist.”
2. The Rogers Test
The Third Circuit then proceeded to reject the so-called Rogers Test, which was applied by the Second Circuit in the case of a movie that, although its title was Ginger and Fred, was not about the famous dancers Ginger Rogers and Fred Astaire: Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). The Third Circuit on page 28 of its opinion defines the Rogers Test as not permitting “. . . he right of publicity to bar the use of a celebrity’s name in a movie title unless the title was wholly unrelated to the movie or was simply a disguised commercial advertisement for the sale of goods or services.” Ginger and Fred was about the dancing career of two obscure Italian dancers and it was not an advertisement, so the First Amendment trumped Ginger Rogers’ rights of publicity in that case.
Although some courts have applied the Rogers Test beyond the title of a work, the Third Circuit rejected it on page 33 as a “. . .blunt instrument, unfit for widespread application in cases that require a carefully calibrated balancing of two fundamental protections: the right of free expression and the right to control, manage, and profit from one’s own identity.” In particular, in response to EA’s argument regarding the part of the Test requiring the title to be wholly unrelated to the work in question, the Third Circuit stated on page 34 as follows:
Effectively, [EA] argues that [Hart] should be unable to assert a claim for appropriating his likeness as a football player precisely because his likeness was used for a game of football. Adopting this line of reasoning threatens to turn the right of publicity on its head.
Accepted Test: Transformative Use
The Third Circuit, as have many other courts, ultimately determined that the so-called Transformative Use Test was the best way to balance rights of publicity and First Amendment rights in a video game context. On page 38 of its opinion the Third Circuit defined that Test, which was originated by the California Supreme Court in a case (Comedy III Prods., Inc. v. Saderup, 21 P.3d 797 (2001)) involving T-shirts with line drawings of the Three Stooges, as turning on:
[w]hether the celebrity likeness is one of the ‘raw materials’ from which an original work is synthesized, or whether the depiction or imitation of the celebrity is the very sum and substance of the work in question . . . whether the product containing a celebrity’s likeness is so transformed that it has become primarily the defendant’s own expression rather than the celebrity’s likeness. And when we use the word ‘expression,’ we mean expression of something other than the likeness of the celebrity. [emphasis in original]
The Third Circuit held on page 46 that the Transformative Use Test was superior to the Predominant Use Test: “. . . the Transformative Use Test requires a more circumscribed inquiry, focusing on the specific aspects of a work that speak to whether it was merely created to exploit a celebrity’s likeness,” i.e., “. . . if First Amendment protections are to mean anything in right of publicity claims, courts must begin by considering the extent to which a work is the creator’s own expression.”
Also on page 46, the Third Circuit held that the Transformative Use Test was superior to the Rogers Test: “. . . the Transformative Use Test maintains a singular focus on whether the work sufficiently transforms the celebrity’s identity or likeness, thereby allowing courts to account for the fact that misappropriation can occur in any market segment, including those related to the celebrity.”
Finally, on page 51 the Third Circuit finds that the Transformative Use Test in a video game context is consistent with First Amendment cases in other contexts:
. . . adopting the [Transformative Use] Test ensures that already-existing First Amendment protections in right of publicity cases apply to video games with the same force as to ‘biographies, documentaries, docudramas, and other expressive works depicting real-life figures.’
Application of the Transformative Use Test to NCAA Football
Having established the Transformative Use Test as the correct standard, the Third Circuit concludes that Hart was not sufficiently transformed by EA to invoke First Amendment protections. The court deals in a footnote on page 52 with EA’s argument that merely digitizing Hart’s appearance in and of itself constitutes a transformative use: “Recreating a celebrity’s likeness or identity in some medium other than photographs or video cannot, without more, satisfy the Test; this would turn the inquiry on its head—and would contradict the very basis for the Transformative Use Test.”
The court on page 53 goes on to state the obvious about what EA alleges is transformative:
The digital Ryan Hart does what the actual Ryan Hart did while at Rutgers: he plays college football, in digital recreations of college football stadiums, filled with all the trappings of a college football game. This is not transformative; the various digitized sights and sounds in the video game do not alter or transform the Appellant’s identity in a significant way.
Finally, the Third Circuit on page 54 dismisses the argument that the ability to make changes in Hart’s avatar makes any legal difference in the result, as the district court had ruled: “To hold, therefore, that a video game should satisfy the Transformative Use Test simply because it includes a particular interactive feature would lead to improper results. Interactivity cannot be an end unto itself.”
Indeed, the Third Circuit notes on page 56 that allowing such an exception to the right of publicity would enable manufacturers like EA to easily get around rights of publicity: “If the mere presence of the feature were enough, video game companies could commit the most blatant acts of misappropriation only to absolve themselves by including a feature that allows users to modify the digital likenesses.”
Similarly, the court rejected on page 60 EA’s argument that having other creative aspects in the game—such as elaborately depicted locales—invokes the First Amendment: “It cannot be that content creators escape liability for a work that uses a celebrity’s unaltered identity in one section but that contains a wholly fanciful creation in the other, larger section.”
The overarching theme of the Third Circuit's opinion is that the First Amendment is not absolute. It is overcome under certain circumstances by other rights such as copyright, trademark, and the right not to be libeled, among many others.
One of these other rights is the right of publicity, which, because it often involves noncommercial speech, would be meaningless if it were always trumped by the First Amendment. The last footnote on page 61 of the opinion makes this point eloquently:
. . . the First Amendment protects video games in the first instance, and nothing in our decision today should be read to diminish this fact. Rather, our inquiry looked to whether other interests may surmount the First Amendment protection—as they can surmount protections for other modes of expression. In finding that NCAA Football failed to satisfy the Transformative Use Test, we do not hold that the game loses First Amendment protection. We merely hold that the interest protected by the right of publicity in this case outweighs the constitutional shield.