Category Archives: First Amendment

Hart v. Electronic Arts and the Triumph of the Transformative Use Test

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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Roll Trademark, Roll: The University of Alabama’s Battle for Trademark Protection

by Jordan S. Paul

On June 11, 2012, artist Daniel Moore finally prevailed in his 10-year battle for the right to create paintings and prints of the University of Alabama’s “Crimson Tide” football team.

Since 1979, Daniel Moore has been painting celebrated moments from the Crimson Tide’s storied history.  Many of these paintings depict realistic portrayals of action scenes and often include the University of Alabama’s iconic crimson and white helmets and uniforms.  Moore has also created derivative works of these paintings on mugs, mini-prints, cups, flags, towels, and t-shirts.

 Mr. Moore’s work did not go unnoticed by the University of Alabama.  In fact, the University of Alabama had been commissioning, purchasing, and reselling Moore’s work since 1991 and continued to do so through 1999.  As part of this arrangement, Moore and the University of Alabama entered into numerous licensing agreements that permitted Moore to use additional University trademarks and granted permission to Moore to say that his art was “officially licensed.”  However, during this period, Moore also created numerous unlicensed prints, paintings, and related products depicting University of Alabama football players and scenes.  Some of these were  sold by the University of Alabama in its campus store and one unlicensed painting even adorned the University’s athletic department office.

Despite the University of Alabama’s knowledge that Moore was creating numerous unlicensed works, it did not demand royalties until 2002, eventually commencing litigation in 2005, in which it accused Moore of breach of contract, trademark infringement, and unfair competition.

In 2009, the Northern District of Alabama held that (1) the prior licensing agreements did not require that Moore receive permission to portray the University’s uniforms because the uniforms were not included in the agreements’ definition of “licensed indicia”; (2) the University’s colors had some secondary meaning but were not especially strong marks on the trademark spectrum; (3) Moore’s depiction of the uniforms in paintings and prints was protected by the First Amendment and also was a fair use; and (4) Moore’s depiction of the uniforms on mugs, calendars, and other “mundane products” was not protected by the First Amendment, was not a fair use, and would likely result in consumer confusion.  In its decision last week, the Eleventh Circuit affirmed and reversed the District Court’s ruling.

With respect to the prior licensing agreements entered into by Moore and the University of Alabama, the Eleventh Circuit agreed that there was ambiguity as to whether Moore was allowed to depict Alabama uniforms in unlicensed products.  To resolve this ambiguity, the Eleventh Circuit agreed that it was proper to examine the course of conduct between the parties, noting that Moore’s continued unrestricted use of Crimson Tide uniforms and helmets was known, tolerated, and even monetized by the University of Alabama.  Therefore, the Eleventh Circuit affirmed the district court’s ruling that the parties’ course of conduct indicated that neither Moore nor the University of Alabama had any expectation that the licensing agreement would prohibit Moore from engaging in unlicensed work that incorporated Crimson Tide uniforms or helmets:

The parties’ course of conduct clearly indicates that they did not intend that Moore would need permission every time he sought to portray the university’s uniforms in the content of his paintings, prints and calendars.

Nor was the University of Alabama any more successful on its trademark infringement claims.  Ultimately, the Eleventh Circuit agreed that Moore’s First Amendment Rights outweighed any likelihood of confusion that may flow from his incorporation of Crimson Tide helmets, uniforms, or associated colors, holding:

An artistically expressive use of a trademark will not violate the Lanham Act unless the use of the mark has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless it explicitly misleads as to the source or the content of the work.

Even if some members of the public would draw the incorrect inference that [the University] had some involvement with [Moore’s paintings, prints, and calendars,] . . . that risk of misunderstanding, not engendered by any overt [or in this case even implicit] claim . . . is so outweighed by the interest in artistic expression as to preclude” any violation of the Lanham Act.

But, with respect to the mini-prints, cups, flags, towels and t-shirts, the Eleventh Circuit rejected the district court’s ruling that these products were covered by the licensing agreements and could only be created by Moore subject to those agreements.  In so doing, the Eleventh Circuit remanded the case on this issue and ordered the District Court to more fully develop the record with regard to Moore’s First Amendment and fair use defenses.

Of course, this decision is a decisive win for Moore.  And, in a larger sense, it is another step closer to greater clarity and resolution of the longstanding tension between trademark and First Amendment Rights, first explored in depth in by the Second Circuit in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) and by the Sixth Circuit in ETW Corp. v. Jireh Pub., Inc., 332 F.3d 915, 925 (6th Cir. 2003).  For trademark owners, the takeaway could not be clearer:  develop and institute a focused and comprehensive IP management policy that vigilantly “polices” your marks, or risk diminution of their value – or, worse, lose the right to control them completely.  For content owners, this case is an ostensible win, but it should caution those who stray too far from First Amendment expression and into intellectual property misappropriation.

Jordan Paul is an attorney with Robins, Kaplan, Miller & Ciresi L.L.P. where his practice focuses on intellectual property and complex commercial matters, with an emphasis on copyright infringement and contract disputes in the entertainment industry.

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