The Right of Publicity in Video Games Plays Hardball with the First
Amendment
By Guylyn R. Cummins – December 23, 2013
In two recent cases involving the video-game manufacturer Electronic Arts, Inc., the Third
and Ninth Circuits have construed the right-of-publicity (misappropriation) tort in the
context of college football video games to have ramifications that may dangerously impact
protections afforded by the First Amendment for other realistic, but unauthorized,
expressive works. The decisions—Hart v. Electronic Arts, Inc., 717 F.3d 141 (3d Cir. 2013),
and In re NCAA Student-Athlete Name & Likeness Licensing Litigation, 724 F.3d 1268 (9th
Cir. 2013)—grant video games much more limited protection than other expressive works,
and cast doubt on the protection that will be afforded to future works.
The Third and Ninth Circuits, over strong dissents, held that realistically depicting college
football players in video games showing them playing football is not sufficiently
“transformative” to avoid liability for using their likenesses and player biographical
information. The dissenters argue that the case holdings put the ability for creators to
produce other realistic, but unauthorized, expressive works based on historical events and
people at risk. Both decisions are at least sufficient to give pause for most First
Amendment proponents.
This article discusses the Third Circuit’s decision and highlights questions it raises for
future realistic, but unauthorized, expressive works. The second part in this series will
discuss the Ninth Circuit’s decision and why the Rogers test is more protective of First
Amendment rights and, thus, a better test.
The Hart Case
In Hart v. Electronic Arts, Inc., 717 F.3d 141 (3d Cir. 2013), plaintiff Ryan Hart sued
Electronic Arts for violating his right of publicity under New Jersey law for using his likeness
and biographical information as a Rutgers University quarterback in its National Collegiate
Athletic Association (NCAA) football series of video games. As a condition of participating in
college-level sports, Hart was required to adhere to NCAA “amateurism” rules, which
prevent athletes from using their athletic skill for pay in any form in that sport. The NCAA
rules further prevent athletes from using their name or likeness to advertise or
commercially promote any product or service.
Electronic Arts created college football video games that allow users to experience the
excitement and challenge of college football by interacting with over 100 virtual teams and
thousands of virtual players. Electronic Arts licenses from the NCAA the right to use
member school names, team names, uniforms, logos, stadium fight songs, and other game
elements in simulated football games. But it cannot license the likeness and identity rights
for intercollegiate players due to the NCAA restriction on commercial use of a player’s
name and likeness. The digital players, or avatars, in the video games resemble their reallife
counterparts and share the players’ vital and biological information. Thus, for example,
the Rutgers’ quarterback in the 2002 through 2005 games resembles Hart’s physical
characteristics at 6 feet 2 inches tall and 197 pounds, has Hart’s coloring, and wears his
number 13 jersey. While users can change the digital avatar’s appearance and most of the
player statistics associated with it, certain details remain immutable, such as the player’s
biographical home state, hometown, team, and class year.
Hart sued, alleging Electronic Arts misappropriated his identity and likeness to enhance the
commercial value of its video games. Hart alleged that the avatar’s physical attributes
were his and that its speed, agility, and passer rating reflected actual footage of him taken
during his tenure at Rutgers.
Electronic Arts filed a motion to dismiss. It conceded for purposes of the motion that it had
violated Hart’s right of publicity, but it argued it was entitled to dismissal or summary
judgment on First Amendment grounds. The district court granted summary judgment for
Electronic Arts, and Hart appealed. The Third Circuit reversed.
Video Games Are Protected by the First Amendment
Video games are fully protected as expressions of speech under the First Amendment.
Brown v. Entm’t Merchs. Ass’n, 131 S. Ct. 2729 (2011). As the Supreme Court noted in
Brown, “video games communicate ideas—and even social messages—through many
familiar literary devices (such as characters, dialogue, plot, and music) and through
features distinctive to the medium (such as the player’s interaction with the virtual world).”
Id. at 2733. As with other types of expressive conduct, First Amendment protection can be
limited in situations where the right of free speech necessarily conflicts with other
protected rights.
To resolve the tension between the First Amendment and the right of publicity, the Third
Circuit looked to the balancing test employed in Zacchini v. Scripps-Howard Broadcasting
Co., 433 U.S. 562, 574–75 (1977). In doing so, the Third Circuit concluded this case
presents a situation in which the “other rights” trump the First Amendment, in that the
video game violates Hart’s right of publicity—in essence, misappropriating his identity for
commercial exploitation. Hart, 717 F.3d at 165–70.
The Relevant Interests at Issue
Freedom of expression. Freedom of expression “is paramount in a democratic
society. . . .” Hart, 717 F.3d at 149. First Amendment protections apply not only to
political speech but to entertainment as well. Id. at 150. First Amendment protections
weigh heavily in any balancing inquiry, yet must yield in the face of competing interests.
Id.
The right of publicity. Electronic Arts conceded for purposes of the motion it had
violated Hart’s right of publicity. Accordingly, the court looked to the nature of that right
and concluded under New Jersey law it was a property interest in one’s identity. This
right was first established in Haelan Laboratories, Inc. v. Topps Chewing Gum, Inc., 202
F.2d 866 (2d Cir. 1953), a case concerning baseball cards in chewing gum packages, in
which the court held that an individual has a right of publicity value in a photograph. In
Palmer v. Schonhorn Enterprises, Inc., 97 N.J. Super. 72 (1967), the Superior Court of
New Jersey adopted the right, noting that “[i]t is unfair that one should be permitted to
commercialize or exploit or capitalize upon another’s name, reputation or
accomplishments merely because the owner’s accomplishments have been highly
publicized.” Hart, 717 F.3d at 150.
New Jersey’s current right of publicity is based on the Restatement (Second) of Torts
(1977), section 652c, which recognizes a right of privacy called appropriation: “One who
appropriates to his own use or benefit the name or likeness of another is subject to
liability to the other for invasion of privacy.” The goal of maintaining a right of publicity
is to protect the property interests that an individual gains and enjoys in his or her
identity through his or her labor and effort. Hart, 717 F.3d at 151 (also noting the right
of publicity “‘is closely analogous to the goals of patent and copyright law, focusing on
the right of the individual to reap the reward of his endeavors’”(quoting Zacchini, 433
U.S. at 573)).
How Courts Balance the Interests
The Third Circuit began its balancing inquiry by looking to the Zacchini case, the only U.S.
Supreme Court case to address the First Amendment in the right-of-publicity context.
Zacchini involved a television news broadcast of Zacchini’s entire “human cannonball” act
from a local fair. Zacchini sued for misappropriation, and the Supreme Court held that the
case concerned “the strongest case for a ‘right of publicity’ because it did not involve the
appropriation of an entertainer’s reputation to enhance the attractiveness of a commercial
product, but instead involved the appropriation of the very activity by which the
entertainer acquired his reputation in the first place.” Zacchini, 433 U.S. at 574–75. The
Court concluded:
Wherever the line in particular situations is to be drawn between media reports that are
protected and those that are not, we are quite sure that the First Amendment does not
immunize the media when they broadcast a performer’s entire act without his consent.
The Constitution no more prevents a state from requiring [the media] to compensate
[Zacchini] for broadcasting his act on television than it would privilege [the media] to
film and broadcast a copyrighted dramatic work without liability to the copyright owner.
Id.
In the wake of Zacchini, courts began applying a balancing inquiry to resolve cases in
which a right-of-publicity claim collided with First Amendment protections.
The Modern Balancing Tests
Today, three major tests for balancing publicity and free expression rights exist: The
commercial-interest-based predominate-use test, the trademark-based Rogers test, and
the copyright-based transformative-use test. Of these three, the Rogers and
transformative-use tests are the most solidly established.
The predominate-use test. While the predominate-use test is generally disfavored by
courts today, it is the test all plaintiffs in right-of-publicity cases urge the courts to
adopt. This test first appeared in Doe v. TCI Cablevision, 110 S.W.3d 363 (Mo. 2003),
involving a hockey player’s right-of-publicity claim against a comic book publishing
company. Anthony “Tony” Twist, a hockey player, brought suit against a comic book
publisher after the introduction of a villainous character named Anthony “Tony Twist”
Twistelli in its comic books. In balancing Twist’s property interests in his name and
identity against the First Amendment interests of the comic book creators, the court
rejected both the transformative-use and the Rogers tests in favor of the court’s own
predominate-use test. The court found that both the transformative-use and the Rogers
tests were “too rigid,” noting that they operate “to preclude a cause of action whenever
the use of the name and identity is any way expressive, regardless of its commercial
exploitation.” Doe, 110 S.W.3d at 374.
The Doe court articulated the parameters of the predominant-use test as follows:
If a product is being sold that predominantly exploits the commercial value of the
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.
Id.
The court thereafter ruled for Twist, holding that “[t]he metaphorical reference to Twist,
though a literary device, has very little literary value compared to its commercial value.”
Id.
Like other courts, the Third Circuit declined to adopt this test, finding it “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 co-exist.” Hart, 717 F.3d at 155.
The Third Circuit further noted that “[a]s a necessary (and insidious) consequence,” this
test “would suppose that there exists a broad range of seemingly expressive speech that
has no First Amendment value.” Id.
The Rogers test. The Rogers test looks to the relationship between the celebrity image
used and the work as a whole. The Third Circuit also rejected this test because it would
“potentially immunize a broad swath of tortious activity.” Hart, 717 F.3d at 155.
The Third Circuit first noted that various commentators have endorsed the Rogers test
because right-of-publicity claims are akin to trademark claims, i.e., both balance the
interest in protecting the relevant property right against the interest in free expression.
Hart, 717 F.3d at 155. The Rogers test arose in a case involving an Italian film, Ginger
and Fred, about a couple who danced like Ginger Rogers and Fred Astaire. Ginger Rogers
sued the filmmaker (Fellini) for misappropriation under Oregon law. In analyzing the
right-of-publicity claim, the Second Circuit noted that Oregon’s concern for the
protection of free speech would not “permit the right of publicity to bar the use of a
celebrity’s name in a movie title unless the title of the film was wholly unrelated to the
movie or was simply a disguised commercial advertisement for the sale of goods or
services.” Id. In applying this test, the Second Circuit concluded that the right-ofpublicity
claim merited dismissal because the title was “clearly relevant to the content of
the movie” and not a disguised advertisement for the sale of goods or services or a
collateral commercial product. Id.
In arguing for the Rogers test to be applied to Hart’s claim, Electronic Arts looked to
section 46 of the Restatement (Third) of Unfair Competition: “One who appropriates the
commercial value of a person’s identity by using without consent the person’s name,
likeness, or other indicia of identity for purposes of trade is subject to liability for
[misappropriation].” However, this excludes the use of a person’s identity in “news
reporting, commentary, entertainment, works of fiction or nonfiction, or in advertising
that is incidental to such uses.” Hart, 717 F.3d at 155–56.
Quoting comments from section 47 of the Restatement, the Third Circuit declined to
adopt the Rogers test, stating:
The right of publicity is recognized by statute and common law as fundamentally
constrained by the public and constitutional interest in freedom of expression. The use
of a person’s identity primarily for purpose of communicating information or
expressing ideas is not generally actionable as a violation of the person’s right of
publicity. . . . However, if the name or likeness is used solely to attract attention to a
work that is not related to the identified person, the user may be subject to liability for
a use of the other’s identity in advertising.
Id.
In rejecting the Rogers test, the Third Circuit stated it was “concerned that this test is 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.” Id. at 157–58. In so ruling,
the court found that, because consumer confusion is an element of a Lanham Act claim
but not of a right-of-publicity claim, the weakness of comparing the right of publicity to
the Lanham Act is that the right of publicity is “broader” and, by extension, “protects a
greater swath of property interest.” Id. Thus, “it would be unwise . . . to adopt a test
that hews so closely to traditional trademark principles. Instead, we need a broader,
more nuanced test, which helps balance the interests at issue in cases such as the one
at bar. The final test—the transformative use test—provides just such an approach.” Id.
at 158.
The transformative-use test. The transformative-use test is grounded in the California
Supreme Court’s decision in Comedy III Productions, Inc. v. Gary Saderup, Inc., 21 P.3d
797, 25 Cal. 4th 387 (2001), which imported the concept of “transformative” use from
copyright law into the right-of-publicity context. In so doing, the California Supreme
Court noted that “the right of publicity is essentially an economic right,” where the right
holder possesses “not a right of censorship, but a right to prevent others from
misappropriating the economic value generated by the celebrity’s fame. . . .” Id. at 807,
25 Cal. 4th at 403. There, the court held that a T-shirt bearing an artist’s drawings of
the Three Stooges was not entitled to First Amendment protection. Of the “fair use”
analysis it borrowed from copyright law, the court decided that only the first fair-use
factor, “the purpose and character of the use,” was appropriate to apply. Id. at 808, 25
Cal. 4th at 404. The court stated:
[T]he central purpose of the inquiry into this fair use factor “is to see . . . whether the
new work merely ‘supersede[s] the objects’ of the original creation, or instead adds
something new, with a further purpose or a different character, altering the first with
new expression, meaning, or message; it asks, in other words, whether and to what
extent the new work is ‘transformative.’”
Id. at 808, 25 Cal. 4th at 404.
In Hart, the Third Circuit explained that works containing significant transformative
elements are less likely to interfere with the economic interests implicated by the right of
publicity. “For example, ‘works of parody or other distortions of the celebrity figure are
not, from the celebrity fan’s viewpoint, good substitutes for conventional depictions of
the celebrity and therefore do not generally threaten markets for celebrity memorabilia
that the right of publicity is designed to protect.’” Hart, 717 F.3d at 159–60 (quoting
Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994)). The court further
emphasized that the transformative elements were creative contributions in a work and
might include factual reporting, fictionalized portrayal, heavy-handed lampooning, or
subtle social criticism, i.e., “[t]he inquiry is in a sense more quantitative than qualitative,
asking whether the literal and imitative or the creative elements predominate in the
work.” Id. at 159.
Restating its test, the California Supreme Court in Comedy III said the balance turns 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. We ask, in other words, 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.
Hart, 717 F.3d at 160 (quoting Comedy III, 21 P.3d at 809, 25 Cal. 4th at 406).
The California Supreme Court ultimately concluded that the charcoal portraits of the
Three Stooges on the T-shirts did violate their right of publicity because it could “discern
no significant transformative or creative contribution” and “the marketability and
economic value of [the] work derives primarily from the fame of the celebrities
depicted.” Id. (quoting Comedy III, 21 P.3d at 811, 25 Cal. 4th at 409).
Application of the Transformative-Use Test
The Third Circuit, in applying the transformative-use test, contrasted California’s Comedy
III with Johnny & Edgar Winter v. DC Comics, 69 P.3d 473, 30 Cal. 4th 881 (2003). Unlike
Comedy III, which involved an artist’s literal depiction of the Three Stooges on T-shirts
that was not “transformative,” Winter involved a cartoonist’s depiction of the “Autumn
brothers” in comic books as “half-human and half-worm.” In finding that the creative
cartoons were “transformative,” and therefore protected expressions, the California
Supreme Court noted they were merely part of the “raw materials from which the comic
books were synthesized.” The brothers were distorted for purposes of lampoon, parody, or
caricature, and therefore, the cartoonists’ rights under the First Amendment outweighed
the right-of-publicity claim. Hart, 717 F.3d at 160.
The court also looked to the Sixth Circuit’s decision in ETW v. Jireh Publishing, Inc., 332
F.3d 915 (6th Cir. 2003), wherein the court held that an artist’s depiction of a collage of
Tiger Woods images in a single painting was protected under the First Amendment, as it
was a historic event in sports history and conveyed a message about the significance of
Woods’s achievement in the sport of golf. Hart, 717 F.3d at 161–63.
The Third Circuit concluded that arguably, the Comedy III and the Winter decisions
“bookend the spectrum of cases applying the transformative use test,” wherein Comedy III
presents a clear example of a non-transformative use (i.e., mere literal depictions of
celebrities created in a different medium), and Winter offers a use that is highly
transformative (i.e., fanciful characters, placed in a fanciful setting, that draw inspiration
from celebrities). Hart, 717 F.3d at 161–63. The ETW case, like the Hart case, fell
somewhere in between, focusing on whether and how the celebrities’ likeness was
transformed. Id.
The Third Circuit found that the transformative-use test, like the predominant-use and
Rogers tests, aims to balance the interests protected by the right of publicity against those
interests reserved by the First Amendment. Hart, 717 F.3d at 163. Yet, it best strikes the
balance as a flexible—but uniformly applicable—analytical framework. Id. Unlike the Rogers
test, it “maintains a singular focus on whether the work sufficiently transforms the
celebrities’ 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.” Id.
The court then turned to whether Hart’s identity was “sufficiently transformed” by
Electronic Arts in its video game to escape liability. Hart, 717 F.3d at 166–70. Crucially,
the court limited the term “identity” to encompass not only Hart’s likeness but also his
biographical information; it did not analyze the video game as a whole—a clear error
according to the dissent. Id. The court then ruled that, based on the combination of both
the digital avatar’s appearance and the player’s biographical and identifying information,
the digital avatar closely resembles the genuine article, i.e., Hart. Id.
The Third Circuit discounted the fact that the video game was interactive (another error,
according to the dissent) by making characteristics of the avatars changeable. The court
noted that simply making a game interactive, without more, cannot satisfy the
transformative-use test. Id. That Hart’s likeness is the default position of the game with
respect to his avatar’s appearance only served to support the court’s conclusion that
“realistic depictions of the players are the ‘sum and substance’ of these digital facsimiles.”
Id. In also rejecting analysis of elements of the game unrelated to Hart’s identity as an
“improper inquiry” into whether the video game was transformative, the Third Circuit noted
that to hold otherwise would allow “[a]cts of blatant misappropriation [to] count for
nothing so long as the larger work, on balance, contained highly creative elements in great
abundance.” Id. at 169.
The Third Circuit therefore ruled Electronic Arts did not sufficiently transform Hart’s identity
in its video games to survive summary dismissal of his right-of-publicity claim, and
remanded the case back to the district court.
The Dissent
In a strongly worded dissent, Judge Ambro agreed with the majority that the
transformative-use test is the correct test to be applied, but he balanced the interests
differently, to side with Electronic Arts. Hart, 717 F.3d at 170–76 (Ambro, J., dissenting).
He criticized the majority for limiting their transformative inquiry to how Hart’s identity
alone is used, disregarding all other features of the game, i.e., the hundreds of players and
teams available to users to create a simulated football game. Id. Ambro explained that the
inquiry is 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, citing the Comedy III case. Id. at 171.
Also relying on the ETW case, Judge Ambro explained that the court there had found the
collage of photographic images of Tiger Woods to be transformative, and the same analysis
should argue in favor of finding in Electronic Arts’ favor. Hart, 717 F.3d at 171. Judge
Ambro stated that, in keeping with a substantial body of case law finding that selling
products like books, newspapers, and magazines for profit does not prevent them from
being protected by the First Amendment, it is wrong to focus simply on whether a
celebrity’s name or likeness was used to increase the product’s value in marketability. Id.
Thus, the majority’s holding equating the inclusion of realistic player likenesses to increase
the profits of the game with the wrongful appropriation of Hart’s commercial value was an
approach “at odds with the First Amendment protection afforded to expressive works
incorporating real life figures.” Id. at 173.
Judge Ambro concluded that
NCAA Football [Electronic Arts’ video game] transforms Hart’s mere likeness into an
avatar that, along with the rest of the digitally created college football team, users can
direct and manipulate in fictional football games. With the many other creative features
incorporated throughout the games, sufficient expressive transformation takes place to
merit First Amendment protection.
Id. at 173–75.
Potential Fallout of the Hart Case
It is clear that the holding of the Hart case casts doubt on and raises a risk of significant
proportion to First Amendment protection of expressive, yet historically accurate, works.
The Ninth Circuit recently followed Hart in NCAA Student-Athlete Name & Likeness
Licensing Litigation (Keller) v. Electronic Arts Inc., 2013 WL 3928293 (9th Cir. July 31,
2013), which will be discussed in second part of this article). In Keller, the Ninth Circuit
held that Keller, a college athlete, could pursue his right of publicity against Electronic Arts
in a virtually identical case to Hart.
Now questions abound. For example, would the same results have been reached if the
Third and Ninth Circuits had been presented with a historical film or other expressive work
about Hart’s and Keller’s performances as college athletes? See, e.g., Tyne v. Time Warner
Entm’t Co., L.P., 425 F.3d 1363 (11th Cir. 2005) (the Florida Supreme Court, answering a
certified question, held that Florida’s right-of-publicity statute does not apply to
publications, including motion pictures, that do not directly promote a product or service);
Loft v. Fuller, 408 So. 2d 619 (Fla. Dist. Ct. App. 1981) (the use of the name and likeness
of the deceased captain of a flight that crashed into the Everglades in a nonfiction book
and subsequent film, The Ghost of Flight 401, was not barred by Florida’s right-of-publicity
statute because the uses were not for commercial advertisements or promotion, but for a
protected publication of current and legitimate public interest); Frosch v. Grosset &
Dunlap, Inc., 75 A.D.2d 768, 427 N.Y.S.2d 828 (N.Y. App. Div. 1980) (protecting Norman
Mailer’s book about Marilyn Monroe, regardless of whether the book was a biography, a
fictional biography, or any other kind of literary work, it being sufficient that it was a
literary work and not simply a disguised commercial advertisement for the sale of goods or
services).
Can films like The Perfect Storm or Zero Dark Thirty, which are based on realistic
depictions of historical events, be published? Can a photographer now publish a book of his
photographs of rock bands in concert without risking right-of-publicity claims? The Hart
and Keller opinions would appear to permit individuals depicted in these or similar works to
sue for violation of the right of publicity. The risks these decisions create clearly chill free
speech.
2014. Published in Intellectual Property, 25:3, by the American Bar Association. Reproduced with permission. All rights
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