First Amendment Does Not Shield Video Game from Right of Publicity Claims: Third Circuit

Practical Law Legal Update 5-530-1585 (Approx. 5 pages)

First Amendment Does Not Shield Video Game from Right of Publicity Claims: Third Circuit

by PLC Intellectual Property & Technology

Key Litigated Issue

In Hart v. Electronic Arts, Inc., the key litigated issues were:

Whether Ryan Hart's right of publicity interests trump Electronic Arts, Inc.'s First Amendment interests in using Hart's likeness and identity in a college football video game.
Which test should be used to balance these competing interests.

Background

Electronic Arts, Inc. (EA) develops, publishes and distributes the NCAA Football video game, which features over 100 virtual teams and thousands of virtual players. From 2002-2005, Hart was a quarterback with the Rutgers University NCAA football team. In its 2004-2006 versions of the NCAA Football video game, EA included an avatar on the Rutgers team that bore Hart's likeness and had his statistical information, including his height, weight, throwing distance, hometown, team and class year.

In October 2009, and in an amended complaint filed in October 2010, Hart sued EA alleging:

EA violated his right of publicity by appropriating his likeness for use in the NCAA Football video games.
EA misappropriated Hart's identity and likeness to enhance the commercial value of NCAA Football.

The US District Court for the District of New Jersey granted EA's motion for summary judgment finding that NCAA Football was entitled to protection under the First Amendment. Hart appealed arguing:

The district court erred in granting summary judgment prematurely as discovery had not yet been completed.
The First Amendment did not shield NCAA Football from right of publicity claims.

Outcome

In a May 21, 2013 split opinion, the US Court of Appeals for the Third Circuit reversed the district court's grant of summary judgment and found that EA's use of Hart's identity in NCAA Football was not sufficiently transformative to escape right of publicity claims. Having found in favor of Hart, it did not reach Hart's request for further discovery.

The court noted that although it is well established that video games are protected by the First Amendment, individuals' right of publicity must be balanced against the freedom of expression which protects video games.

Balancing the Right of Publicity and the First Amendment

Because the key litigated issue was a matter of first impression for this circuit, the court considered the three approaches other courts have used to balance the right of publicity and the First Amendment:

The "predominant use test".
The trademark-based Rogers test.
The copyright-based "transformative use test".

Predominant Use Test

The predominant use test, adopted by the Supreme Court of Missouri in Doe v. TCI Cablevision, determines whether the predominant purpose of the product being sold is to exploit the commercial value of an individual's identity or instead make an expressive comment on or about the individual. A use is protected if it predominantly contributes to a work's expressiveness.

While favored by Hart, the Third Circuit rejected this test as being too subjective and arbitrary, requiring judges to be both impartial and make artistic judgments.

Rogers Test

The Rogers or "relatedness" test looks to the relationship between an individual's likeness and the work as a whole, as in Rogers v. Grimaldi. Specifically, the Rogers test examines whether the use of the identity is wholly unrelated to the product being sold. The Second Circuit developed the test in a case alleging trademark-specific Lanham Act violations relating to the use of a name in a movie title. However, in this case, EA urged the broader application of Rogers to the work as a whole.

The Third Circuit declined to apply Rogers in this instance where an identity was used outside of the work's title. While acknowledging that the test may be appropriate in trademark-like right of publicity cases, the court found the test inappropriate in cases where the very reason for the individual's celebrity would prevent its protection. Specifically, because Hart was a college football player whose identity was used in a college football video game, the use of his identity could not be wholly unrelated to the product being sold. Under Rogers, any use of Hart's identity by EA would be permitted because the game in which they are using his image is related to the arena where he became famous.

Transformative Use Test

The transformative use test, articulated by the Supreme Court of California in Comedy III Prods., Inc., v Gary Saderup, Inc., builds on the prong of the copyright fair use test that asks whether the use of a work is transformative rather than merely derivative. Applied to right of publicity, the question is whether the use of a likeness is sufficiently transformative so as to be an expression of the defendant or is rather solely an expression of the likeness itself. Both parties argued that the test applied in this case.

The Third Circuit decided that the transformative use test was the appropriate test to evaluate Hart's right of publicity claims because:

It provided the court with a flexible but uniform analytical framework.
It seeks only to determine whether the work sufficiently transforms the celebrity's identity or likeness.
It allows for consideration of the extent to which a work is the creator's own expression, which takes into consideration the protections afforded by the First Amendment.

Application of the Transformative Use Test

Applying the transformative use test, the Third Circuit focused specifically on whether Hart's identity, including his likeness and biographical information, was sufficiently transformed in NCAA Football. It found that EA did not sufficiently transform Hart's identity to protect it against Hart's right of publicity claims because:

The Hart avatar in the game plays college football like the real Hart did and the various sights and sounds in the video game do not change Hart's identity in any significant way.
Users' ability to change the avatar's biographical information, playing statistics or uniform accessories does not satisfy the transformative use test because users will likely want to use the players as they are depicted in real life.
In so far as users are able to change Hart's avatar to have different physical features, the avatar no longer represents Hart's likeness and therefore does not qualify as a use for the purposes of a right of publicity claim.

Although the Third Circuit acknowledged that there were other creative elements of NCAA Football, it found that because these were not tied to the use of Hart's identity they should not factor into its analysis. If these factors were given weight, a party could freely use an individual's likeness so long as it was situated in broader, more fanciful, context.

Dissent

In his dissent, Judge Ambro agreed that the transformative use test was the proper test to balance the parties' respective interests.

However, he argued that the majority had too narrowly construed the application of this test, by limiting their analysis solely to Hart's identity and failing to view his likeness more broadly within the context of the game. In his view, for the test to be sufficiently protective of the First Amendment, the use of real-life figures cannot depend on whether an individual is realistically depicted, but should instead consider the totality of the work's creative elements. Judge Ambro would find Hart's inclusion to be only one element in a game with sufficiently expressive components to merit First Amendment protection.

In addition, he faulted the court for considering whether EA profited from its inclusion of Hart and argued that the commercial value of the work should not disqualify it from First Amendment protection.

Practical Implications

This case demonstrates the contested nature of right of publicity claims versus First Amendment rights in the video game context, but has applications for the unauthorized use of celebrity likenesses in other creative industries.

The Third Circuit's ruling demonstrates that where a video game maker populates a work of art with a real life individual, if the individual's likeness itself fails to be sufficiently transformative, a court may allow an individual's right of publicity to trump First Amendment considerations, without taking into account the work in its entirety. If the transformative use test is adopted broadly and the Third Circuit's approach to the test is applied consistently to other types of works, it could impact the ability of other creators to evoke a person's likeness in other forms of content, such as movies or works of literature. The dissent cautioned that it may be difficult to reconcile the majority's approach to the transformative use test when applied to other media.

In a case raising identical issues currently before the Court of Appeals in the Ninth Circuit, the district court similarly found that users' ability to alter the virtual player's attributes was not sufficiently transformative (Keller v. Electronic Arts, Inc). A similar case involving a professional football player who brought a false endorsement claim under the Lanham Act is also pending before the Ninth Circuit (James “Jim” Brown v. Electronic Arts, Inc.).

If the Ninth Circuit again relies on the transformative use test in these cases, practitioners should be mindful of whether it adopts a narrow analysis similar to the Third Circuit or focuses on the work as a whole and how that impacts its First Amendment analysis. In addition, the transformative use test originally did not purport to consider, as a fair use analysis does, a use's effect on the market and this factor was not relied on by the Third Circuit in this case. However, the extent to which the Ninth Circuit or other courts see fit to directly or indirectly consider this factor is likely to shape their analysis.

First Amendment Does Not Shield Video Game from Right of Publicity Claims: Third Circuit | Practical Law