by Michael Lovitz
Recently, the 3rd Circuit issued a ruling concerning the interplay of the right of publicity and First Amendment rights. The case, Ryan Hart v. Electronic Arts, No. 11-3570 (3d Cir., May 21, 2013), involved the inclusion by EA of Ryan Hart (Rutgers’ quarterback for 2002-2005) in its “NCAA Football 2006” video game.
The suit was initially dismissed when the District Court held that EA (which conceded that it had violated Hart’s right of publicity) was nonetheless entitled to dismissal on the grounds that the First Amendment shielded it from any right of publicity claims. Hart v. Elec. Arts, Inc., 808 F. Supp. 2d 757 (D.N.J. 2011).
On appeal, the 3rd Circuit provided a detailed analysis of the balance between right of publicity and First Amendment protections. The Court considered three modern-era balancing tests that have been employed by courts in the past, looking in turn at each test’s origins, scope of application, and possible limitations: (1) the commercial-interest-based Predominant Use Test (favored by EA); (2) the 2nd Circuit’s trademark-based Rogers Test; and (3) the Transformative Use Test, which was originated by the Supreme Court of California (a state where right of publicity is a matter of both state statutory law and common law).
The Court declined to adopt the Predominant Use Test, finding it to be “subjective at best, arbitrary at worst,” and “antithetical to our First Amendment precedent.” The Rogers Test was found to be useful for trademark claims, but the Court was skeptical regarding whether it “applies to the general contents of a work when analyzing right of publicity claims,” as the right of publicity protects a broader swath of property interests than are protected under traditional trademark principles. The Court determined that it needed “a broader, more nuanced test, which helps balance the interests at issue in cases such as the one at bar,” and ultimately found that in the Transformative Use Test.
The Transformative Use Test was crafted to address the fact that the right of publicity is applicable not only in the context of commercial speech, but also in instances where the speech is merely expressive. Thus, while the right of publicity cannot be used to censor disagreeable portrayals, like copyright, it “nonetheless offers protection to a form of intellectual property that society deems to have social utility.” The balance between these rights then 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. And when we use the word “expression,” we mean expression of something other than the likeness of the celebrity.
The Transformative Use Test had been used previously with respect to video games, most recently in the California case No Doubt v. Activision Publishing, Inc., 122 Cal. Rptr. 3d 397 (Cal. Ct. App. 2011), which centered on the game “Band Hero.” The game allows players to simulate performing in a rock band by selecting avatars that are digital recreations of real-life musicians. The members of the band No Doubt sued Activision after a contract dispute, claiming violation of their rights of publicity, and the court applied the Transformative Use Test. The Court found that “the avatars perform rock songs, the same activity by which the band achieved and maintains its fame,” and the fact that the locations at which the performances occur could be changed “does not transform the avatars into anything other than the exact depictions of No Doubt’s members doing exactly what they do as celebrities.” Thus, the court concluded that Activision’s use of No Doubt’s likenesses infringed the band’s right of publicity.
Once the Hart Court settled on the Transformative Use Test, it then went about applying the Test to the instant case to determine whether Hart’s identity is sufficiently transformed in the “NCAA Football” video game so as to avoid violating Hart’s right of publicity. First, the Court found that the Hart avatar closely resembled the actual player, based on the combination of both the digital avatar’s appearance and the biographical and identifying information. Next, the Court examined the context within which the avatar existed, and found that it provided little support for EA’s arguments:
The digital Ryan Hart does what the actual Ryan Hart did while at Rutgers; he plays college football, in digital recreations of college football stadiums, filled with all the trappings of a college football game. This is not transformative; the various digitized sights and sounds in the video game do not alter or transform the Appellant’s identity in a significant way.
However, this was not the end of the Court’s analysis, as the game allowed for users to alter an avatar’s appearance, an ability that had accounted in large part for the District Court’s finding that EA satisfied the Transformative Use Test. The Court held that the mere presence of this feature, without more, cannot satisfy the Test, explaining that:
[T[he balancing test in right of publicity cases does not look to whether a particular work loses First Amendment protection. Rather, the balancing inquiry looks to see whether the interests protected by the right of publicity are sufficient to surmount the already-existing First Amendment protections. … As Zacchini [v. Scripps-Howard Broad. Co., 433 U.S. 562 (1977)] demonstrated, the right of publicity can triumph even when an essential element for First Amendment protection is present. … To hold, therefore, that a video game should satisfy the Transformative Use Test simply because it includes a particular interactive feature would lead to improper results. Interactivity cannot be an end onto itself.
Because Hart’s unaltered likeness was central to the core of the game and the user’s experience, the Court was disinclined to credit this ability to alter the digital avatar in applying the Transformative Use Test to the instant case. Further, the Court did not credit any of the elements of the video game that did not, in some way, affect the use or meaning of Hart’s identify. Ultimately, the Court held that the “NCAA Football” game did not sufficiently transform Hart’s identity so as to escape the right of publicity claim, and it reversed the District Court’s grant of summary judgment, remanding the case back to the District Court for further proceedings.
Michael Lovitz is the founding partner of Lovitz IP Law, where he practices all aspects of intellectual property law, including copyright, trademark, unfair competition, trade secrets, portfolio management, and licensing and transactional matters.
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