On September 24, 2013, Electronic Arts, Inc. (“EA”) reached a $40 million dollar settlement of lawsuits over the use of college athletes’ likenesses in EA’s popular college football video game series NCAA Football.[1] EA also announced it has canceled the latest installment of the NCAA Football video game series. The developments follow decisions by two appellate courts earlier this year holding that EA could not invoke the First Amendment as a defense to the athletes’ right of publicity claims. The central issue in both cases, Hart v. Electronic Arts, Inc., 717 F.3d 141 (3d Cir. 2013) and Keller v. Electronic Arts, 724 F.3d 1268 (9th Cir. 2013),[2] concerns the proper balance between a video game publisher’s First Amendment rights and college football players’ rights of publicity where the players’ likenesses were featured in the video game series.
Since 1998, EA has developed and published its NCAA Football video game series. A new version was developed every year and allows players to simulate playing NCAA football games in a realistic setting, namely one that imitates the look of actual games played by real NCAA-sanctioned college football teams. The video games feature the graphical representations of real-life college football players. Two former NCAA quarterbacks — Ryan Hart and Samuel Keller — filed suit against EA seeking compensation for the use of their likenesses as a violation of the right of publicity.
This alert discusses the reasoning of the Hart and Keller appellate decisions and examines possible implications of the courts’ holdings on the balance between a person’s right of publicity and the constitutional right of free expression under the First Amendment.
Background
A person’s right of publicity is an offshoot of his or her right of privacy. It is the right of an individual to control the commercial use of his or her identity. The right of publicity is primarily a creature of state law. Protections vary significantly from state to state, as some states recognize a statutory right while other states rely on common-law protections. Nearly 30 states recognize some version of the right of publicity.[3]
EA’s NCAA Football video games present actual college athletes who were on the teams that year as digital “avatars” i.e., graphical representations of each athlete. The athletes’ names are not displayed. However, their “likenesses” (in the form of realistic appearance, biographical information, and physical attributes) are represented accurately. Players have the option of altering the default settings by editing each avatar’s physical characteristics and attributes. EA does not license or compensate the players for use of their likenesses. EA also does not ask the players for their consent prior to incorporating their likenesses for use in the video game.
Video games, such as NCAA Football, are considered expressive works deserving of protection under the First Amendment. However, when a person asserts that his or her right of publicity has been violated by an expressive work, the right of publicity and the constitutional right of free expression must be balanced. Courts do not have a definitive method for doing this. Rather, courts may apply various balancing tests depending on the facts of each case. Two of the most common balancing tests are the trademark-based Rogers test, and the copyright-based transformative use test.
The Rogers test originated in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). It examines a work to determine (1) whether the use of an identity has “artistic relevance” in relation to the underlying work, and (2) whether the use of the mark explicitly misleads as to the source of the product. The test is usually applied to Lanham Act claims involving misappropriation of a celebrity’s identity, but has appeared in the state-law right of publicity context.[4]
The transformative use test was formulated in Comedy III Prod., Inc v. Gary Saderup, Inc., 21 P.3d 797 (Cal. 2001). The test borrows the concept of the “transformative use” from copyright law’s fair use doctrine.[5] Its rationale is that works containing significant transformative elements are especially deserving of First Amendment protection and less likely to interfere with economic interests protected by the right of publicity. Thus, under this test, a work is only given First Amendment protection if it is considered to be significantly transformative. The transformative use test was adopted in both the Hart and Keller cases.
The Hart Case
In NCAA Football 2006, Rutgers’ digital quarterback looks just like the team’s actual quarterback that year, Ryan Hart. Although Hart’s name is not used, the Rutgers’ quarterback in the game has Hart’s No. 13 jersey, stands 6’2” tall, weighs 197 pounds, and wears an armband on his left wrist, just like the real Hart. In 2010, Hart filed a complaint seeking compensation for EA’s violation of his right of publicity. EA’s motion to dismiss on the basis of free expression under the First Amendment was granted by the District Court of New Jersey. On appeal, the Third Circuit, in an opinion written by Judge Greenaway, reversed the district court, finding that EA’s First Amendment rights did not outweigh Hart’s right of publicity claims on the facts of this case. A rehearing en banc was denied on June 25, 2013.
The Hart decision relied upon and interpreted New Jersey’s property-like right of publicity, which is derived from common law.[6] The balancing of the right of publicity and the First Amendment was an issue of first impression for the Third Circuit. The Third Circuit dismissed the Rogers test as unfit for “non-trademark-like” right of publicity cases because it protects the right of publicity only when the work is “wholly unrelated” to the celebrity’s name or likeness. Thus, the concern was that the Rogers test would provide sports-related products inadequate protection under the right of publicity. This would be worrisome because products aimed at Hart’s market segment — sports fans — would be the most lucrative uses of Hart’s identity. Thus, sports-related products provide the greatest incentive for exploitation, but would unjustly receive the least protection under the Rogers test, the court argued.
Ultimately, the Third Circuit applied the transformative use test because it believed the test: (1) accounts for misappropriation occurring in the celebrity’s own market segments, and (2) favors the right of publicity over...
