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The legal controversies over athletes' rights-of-publicity rage on. Two pending appellate decisions offer some hope that a rational conclusion might be in sight. The head of Manatt's Sports Law Practice Group, Ron Katz, had the article below on this subject published in Law360:
A recent New Jersey federal district court decision, Hart v. Electronic Arts Inc., described the body of law attempting to balance First Amendment rights with the right of publicity as "disordered and incoherent," a description with which those practicing in this subject area would readily agree. Ironically, however, Hart exacerbated this incoherence by coming to, on the same facts, an opposite conclusion from a California federal district court decision that preceded it by 18 months, Keller v. Electronic Arts.
Both of those cases are now on appeal, to the Third and Ninth Circuits respectively. The purpose of this article is to explore one of the central issues that arose from the diametrically opposed reasoning of these cases — transformativeness.
In summary, if an image of a person is transformed sufficiently, then the First Amendment trumps the right of publicity and vice versa. The results of these appeals on the issue of transformativeness are likely to have a dramatic impact on athletes' rights of publicity in one of the most important marketplaces for those rights, video games.
The facts of these two cases are familiar to all who play the popular Electronic Arts football video games. The facts are summarized respectively in the two cases, differing principally in the description of the plaintiffs.
Basically, the manufacturer of the video games, EA, uses as avatars players for real college teams who, although they are not identified by name, are recognizable. As the Keller court stated:
[Plaintiff] claims that these virtual players are nearly identical to their real-life counterparts: they share the same jersey numbers, have similar physical characteristics and come from the same home state. To enhance the accuracy of the player depictions, Plaintiff alleges, EA sends questionnaires to team equipment managers of college football teams. Although EA omits the real-life athletes' names from 'NCAA Football,' Plaintiff asserts that consumers may access online services to download team rosters and the athletes' names, and upload them into the games.
These images are alterable, as noted by the New Jersey court:
[Plaintiff's] image in NCAA football ... can be altered in many ways--from his personal characteristics (height, weight, athletic ability), to his accessories (helmet, visor, wristband). In addition, the image's physical abilities (speed and agility, throwing arm, passing accuracy), attributes and certain biographical details (right handed/left handed) can also be edited by the user.
But, as also noted by the New Jersey court, "the game initially displays the virtual player in an unaltered form."
The players receive no compensation for the use of their images. They filed these class action lawsuits seeking such compensation as damages.
Procedural History of the Two Cases
In both cases there were motions to dismiss. In the Keller case that motion was denied. In the Hart case there was, in the alternative, a motion for summary judgment, which the court granted. Therefore, although there has been some factual development through exhibits, judicial notice and declarations, neither case was yet at the discovery stage.
In the Keller case there was also a motion under California's SLAPP (Strategic Lawsuits Against Public Participation) statute, which discourages frivolous suits impinging on speech. That motion was also denied, but that denial is appealable. Although technically the SLAPP motion is under appeal, the issues are very close to those from the motion to dismiss.
The California Court's Analysis of the Transformativeness Issue
The California court first notes the elements of a common law right of publicity claim: (1) the defendant's use of the plaintiff's identity; (2) the appropriation of plaintiff's name or likeness to defendant's advantage, commercially or otherwise; (3) lack of consent; and (4) resulting injury.
The court then describes the affirmative defense of transformativeness:
A defendant may raise an affirmative defense that the challenged work is 'protected by the First Amendment inasmuch as it contains significant transformative elements or that the value of the work does not derive primarily from the celebrity's fame.'
Quoting the landmark California Supreme Court case on the transformativeness defense, Comedy III, the Keller court describes its main inquiry:
Whether 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. We ask, in other words, whether a 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.
Comedy III involved line drawings of the Three Stooges on a T-shirt. The California Supreme Court held that this depiction was not sufficiently transformative to enable a First Amendment affirmative defense.
The Keller court then looked to two other California decisions to determine the standard for transformativeness. The first, Winter, depicts two "fictional" characters, Johnny and Edgar Autumn, who are, as Keller states, "less than subtle evocations of Johnny and Edgar Winter," who are celebrities. These celebrities, however, were depicted as half human and half worm, which the California Supreme Court held was sufficiently transformative to effectuate the First Amendment affirmative defense. The Keller court referred to Winter as the opposite "bookend" to Comedy III.
The second case that the Keller court looked at and that the Keller court said fell in between these bookends was Kirby, which involved a current-day musician and singer who, in a video game, was transformed in both her looks and in her profession to a 25th-century investigative reporter. The court deciding Kirby held that these facts were considered sufficiently transformative to effectuate the First Amendment affirmative defense.
Using the cases above as guideposts, the Keller court ruled that the depiction of Keller was not sufficiently transformative to trigger the First Amendment affirmative defense:
Here, EA's depiction of Plaintiff in "NCAA Football" is not sufficiently transformative to bar his California right of publicity claims as a matter of law. In the game, the quarterback for Arizona State University shares many of Plaintiff's characteristics. For example, the virtual player wears the same jersey number, is the same height and weight and hails from the same state. EA's depiction of Plaintiff is far from the transmogrification of the Winter brothers. EA does not depict Plaintiff in a different form; he is represented as what he was: the starting quarterback for Arizona State University. Further, unlike in Kirby, the game's setting is identical to where the public found Plaintiff during his collegiate career: on the football field.
Furthermore, the Keller court rejects EA's position that the focus of the court's analysis should be on the video game taken as a whole rather than on the person depicted:
EA asserts that the video game, taken as a whole, contains transformative elements. However, the broad view EA asks the Court to take is not supported by precedent. In Winter, the court focused on the depictions of the plaintiffs, not the content of the other portions of the comic book. The court in Kirby did the same: it compared Ulala [the musician-singer] with the plaintiff; its analysis did not extend beyond the game's elements unrelated to Ulala. These cases show that this Court's focus must be on the depiction of Plaintiff in "NCAA Football," not the game's other elements.
The New Jersey Court's Analysis of the Transformativeness Issue
The New Jersey court came out in the exact opposite way from the California court on the last issue mentioned above, i.e., whether the court should focus on the person depicted or on the other elements of the video game:
Finally, I disagree with Keller's approach of focusing solely on the challenged image, as opposed to the work as a whole. Contrary to Keller's reasoning, I read Kirby as looking at the video game in that case, as a whole. By focusing on the setting in which the Ulala character appeared, Kirby considered the entire game. Similarly, the Winter court considered that the purported images of the Winter brother musicians were "cartoon characters--half-human and half-worm--in a larger story, which is itself quite expressive." Id. at 890. While the Winter Court did focus most of its attention on the fanciful worm-like characters, it also considered the larger story of which the characters were a part. Moreover, in my view, it is logically inconsistent to consider the setting in which the character sits, which Keller does in its analysis, yet ignore the remainder of the game.
The problem with this analysis, however, is that the setting in the current cases is the very setting in which the person depicted is normally found: on a football field playing football. The New Jersey court realized this:
On the other hand, that Hart's image is placed in a college football game is problematic for EA's assertion of a transformative defense. Placing present and former college athletes, including Hart, into the fittingly-titled NCAA Football game setting strongly suggests that the goal of the game is to capitalize upon the fame of those players. Indeed, "[i]t seems ludicrous to question whether video game consumers enjoy and, as a result, purchase more EA-produced video games as a result of the heightened realism associated with actual players." Holmes, supra at 20. This, alone, however, does not mean that EA's use of Hart's image was not transformative. See Winter, supra at 889 ("[i]f it is determined that a work is worthy of First Amendment protection because added creative elements significantly transform the celebrity depiction, then independent inquiry into whether or not that work is cutting into the market for the celebrity's images ... appears to be irrelevant.").
This realization pushes the New Jersey court in another direction in order to find transformativeness, i.e., using the fact that the people depicted can be altered:
EA created the mechanism by which the virtual player may be altered, as well as the multiple permutations available for each virtual player image. Since the game permits the user to alter the virtual player's physical characteristics, including the player's height, weight, hairstyle, face shape, body size, muscle size, and complexion, see e.g., Strauser Decl., Exh. F at 4 (Part I) (displaying "Edit Player - Appearance" screenshot), it follows that EA's artists created a host of physical characteristic options from which the user may choose. For example, EA artists created the several different hairstyles that can be morphed onto the image. See id. The Court's review of the game revealed eight such hairstyle options: fade 1, fade 2, close crop, buzzout 1, buzzout 2, afro, balding 1, and balding 2. In my view, the creation of these varied potential formulations of each virtual player alone makes the game a transformative use of Hart's image.
The New Jersey Court's Error: Alterability Does Not Equate to Transformativeness
As noted above, the New Jersey court acknowledges that "the game initially displays the virtual player in an unaltered form." This fact is highly significant because, regardless of the alterability of that form, the fact that it is initially unaltered creates a viable cause of action. Assuming arguendo that altered versions are not actionable, there is no reason why the unaltered version is not actionable.
The Third Circuit panel reviewing Hart on appeal specifically noted this error during oral argument while questioning EA's lawyer:
THE COURT: If we assume for a moment that people are attracted to your client's game because of its realistic portrayal of players, where should we look to find EA's own expressive content, as opposed to simply the celebrity's likeness? We touched on this earlier, but I want to get back to it. The problem we're having and we're grappling with is Ryan Hart is no different than the quarterback of any other college that's featured in the game. People are going to go to the Mississippi State or Princeton or Rutgers because they have an affinity towards them and they want to play with that person. Judge Wolfson [the New Jersey judge] seemed to focus on the fact that you can make Ryan Hart left-handed, you can put the wristband on the other hand, and so forth, which seemed to me, frankly, to miss the point. People are coming to a game; they're buying your client's game because they want to, whatever, relive glory, see their players play —
THE COURT: They want to see Ryan Hart just as Ryan Hart performed.
THE COURT: Right, because they had fun. It seems to me that when she [Judge Wolfson] was focusing on the other parts of it that were provided, it was kind of beside the point...
The comments of the Third Circuit judges immediately above may be the light at the end of the right-of-publicity tunnel of "disorder and incoherence." Whatever, if anything, is being expressed by video football games could be expressed by using pure avatars not depicting actual players. The only reason to depict those actual players is to make more sales, not to express anything more.
Therefore, the right of publicity should trump the First Amendment in video games that are no more than games that have never been played. Perhaps the answer would be different if the video games depicted actual, historical games, but that fact pattern is not yet before the courts.
 Hart v. Elec. Arts Inc., 808 F. Supp. 2d 757, 774 (D.N.J. 2011).
 Keller v. Elec. Arts Inc., No. C09-1967 CW, 2010 WL 530108 (N.D. Cal. Feb. 8, 2010).
 Keller, supra, *1-*2; Hart, supra, 760-764.
 Keller, supra, at *1.
 Hart, supra, at 783.
 Id. at 785.
 Keller, supra, at *11.
 Hart, supra, at 794.
 California Code of Civil Procedure, section 425.16.
 Id., *11.
 Keller, supra, at *3.
 Comedy III Prods. Inc. v. Saderup, 25 Cal. 4th 387 (2001).
 Keller, supra, at *4.
 Winter v. DC Comics, 30 Cal. 4th 881 (2003).
 Keller, supra, at *4.
 Kirby v. Sega of Am. Inc., 144 Cal. App. 4th 47 (2006).
 Id. at 59.
 Keller, supra, at *5.
 Hart, supra, at 787.
 Id. at 783.
 Id. at 785.
 This transcript was filed in the case of Samuel Keller, et. al. v. Electronic Arts, et. al., United States Court of Appeals for the Ninth Circuit Docket # 10-15387, Entry 155, Oct. 8, 2012.
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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.
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