October 2013: Sports Litigation Update - Athletes Prevail in Right of Publicity Suits Against Video Game Designer

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...