Over the past several years, I have written about a series of decisions in suits brought by former collegiate athletes against EA Sports and the NCAA, seeking compensation for the use of their likenesses and those of thousands of other football and basketball players in EA's gold standard NCAA video games in alleged violation of their common law and statutory right of publicity. Federal district courts in the Third and Ninth Circuits reached opposite conclusions on virtually identical facts, threatening a split that would sow further confusion. But in two recent decisions, the Third and Ninth Circuit Courts of Appeal resolved the issue in favor of the athletes, establishing a unified paradigm for delineating the border between the right of publicity and First Amendment–protected creative expression, with significant ramifications for entertainment and media companies.
The "right of publicity" (recognized in Texas and most other states and by the U.S. Supreme Court) purports to protect against the uncompensated commercial exploitation of one's likeness or identity by another. In Keller v. Electronic Arts, No. 09–1967, 2010 WL 530108 (N.D.Cal. 2010) and Hart v. Electronic Arts, 808 F. Supp. 2d 757 (D.N.J. 2011), two federal courts applied the "transformative use" test to EA's NCAA Football video game to determine whether the inclusion of virtually identical avatars of two college quarterbacks violated their right of publicity. The Keller court, focusing on the clone-like appearance of the avatars, found for the players; the Hart court, focusing instead on the game as a whole (which includes equally life-like replicas of stadiums, fight songs, uniforms, coaches and cheerleaders) was equally adamant in finding for EA. When both decisions were appealed, lawyers advising publishers and celebrities eagerly waited to see where the chips would fall.
The question then turned to whether a court should consider only the celebrity likeness, or the work as a whole, when determining whether the non-permissive use of the likeness is transformative enough to invoke the First Amendment's protection.
The answer came in Third and Ninth Circuit appellate decisions which sided with the players, finding that EA's uncompensated use of their virtual personas in its life-like video games usurped their rights of publicity. The majority in Hart v. Electronic Arts, Inc., 717 F.3d 141 (3d Cir. 2013) began by determining that only the "transformative use" test (developed by California appellate courts and borrowed from copyright law's fair use defense) adequately balanced the conflicting interests of First Amendment-protected expression and the common law right of a person to control the commercial exploitation of his or her persona. The question then turned to whether a court should consider only the celebrity likeness, or the work as a whole, when determining whether the non-permissive use of the likeness is transformative enough to invoke the First Amendment's protection. The Third Circuit held that the celebrity likeness itself – not other creative aspects of the game when taken as a...
