Two federal appellate courts held this summer that the First Amendment does not insulate video game maker Electronic Arts (“EA”) from right of publicity suits brought by football players whose likenesses it used as part of the video game NCAA Football. In Hart v. Electronic Arts and Keller v. Electronic Arts, the Third and Ninth Circuit Courts of Appeals each held that, to successfully invoke a First Amendment defense to a right of publicity claim, the use of a player’s identity must be sufficiently transformative, i.e., the depiction of a celebrity must be “something more than a ‘merely trivial’ variation” of the celebrity’s likeness. Hart v. Electronic Arts, 717 F.3d 141, 153, 160 (3d Cir. 2013); Keller v. Electronic Arts, No. 10-15387, 2013 WL 3928293, *5 (9th Cir. July 31, 2013). EA plans to appeal both cases to the U.S. Supreme Court, and a decision there could pose considerable challenges for video game designers to sufficiently recast avatars of football players without sacrificing the realism sought after by sports fans.
The right of publicity protects against the unauthorized appropriation of a person’s name or likeness for the benefit of another, and thus affords a sort of property interest in one’s persona. At issue in both cases was the extent to which the First Amendment protects artistic expressions that nonetheless violate the right of publicity—and, more specifically, which legal test is appropriate for evaluating that tension. In both cases, EA argued for the test used by the Second Circuit in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), which seeks to balance Lanham Act trademark claims with First Amendment defenses. Under Rogers, a defendant’s use of a plaintiff’s likeness is protected if the likeness is relevant to the expressive work in issue and does not explicitly mislead consumers. The appellate courts in Hart and Keller, however, rejected the Rogers test and instead adopted a version of the “transformative use” test, a component of copyright law’s fair-use analysis. Transformative use focuses on whether the work “adds significant creative elements so as to be transformed into something more than a mere celebrity likeness or imitation.” Keller, 2013 WL 3928293, *3. The courts reasoned that the Rogers test was inappropriate for evaluating right of publicity claims because it was “designed to protect consumers from the risk of consumer confusion,” whereas the right of publicity “‘protects a form of intellectual property [in one’s person].’” Id. at *8; Hart, 717 F.3d at 158.
Both courts found that NCAA Football did not sufficiently transform the players’ identities. Even though the game does not identify the players by name, the courts both found that the game’s use of the players’ vital and game statistics, physical characteristics, jersey numbers, and biographical information was a sufficient depiction of the players’ likenesses so as to run afoul of their publicity rights. The courts characterized the games as depicting the players in the very settings in which they had achieved renown—college football games—and thus as literally recreating, rather than creatively transforming, their identities. That the game allowed users to modify physical aspects of the athletes counted “for little where the appeal of the game lies in users’ ability to play as” their preferred football players. Hart, 717 F.3d at 168. Each court pointed to the example of Kirby v. Sega of America, Inc., 144 Cal.App.4th 47 (2006), where a video game depicting singer Kierin Kirby as a futuristic reporter from outer space named Ulala was a sufficiently transformative use of the singer’s likeness.
Judge Thomas, who dissented in Keller, opined that the majority misapplied the transformative use test by focusing on “how a single athlete’s likeness is represented in the video game, rather than examining the transformative and creative elements in the video game as a whole.” Keller, 2013 WL 3928293, *13. He argued that NCAA Football is “a work of interactive historical fiction,” the creative and transformative elements of which, as a whole, predominate over the commercial use of the players’ likenesses. Id. Similarly, Judge Ambro, who dissented in Hart, argued that the majority limited the “transformative inquiry to Hart’s identity alone, disregarding other features of the work” that signified “sufficient expressive transformation” so as to “merit First Amendment protection.” 717 F.3d at 171, 174-75.
Given what little law exists on this issue and the disagreement over whether it is the game as a whole or the individual athlete’s avatar that must be transformative, and the degree of alteration that is required to be transformative, video game designers may have to wait for additional clarity from the Supreme Court as to how game designs can appease both the law and the fans.