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The Gavel

Diverse Viewpoints in the Law
August, 2013
Volume 10



              Barron L. Stroud   

Athlete's’ Rights of Publicity Trump
First Amendment in Video Game Context

In a recent decision by the U.S. Third Circuit Court of Appeals, obviously intended to give guidance in a murky area of the law, the rights of publicity of a college athlete in a video game trumped the First Amendment arguments of video game manufacturer Electronic Arts (EA). Ryan Hart v. Electronic Arts, No. 11-3570 (Third Circuit, May 21, 2013). The college athlete, Ryan Hart, a previous star quarterback for Rutgers, brought claims under New Jersey law on behalf of a class of similarly situated athletes respecting the depiction of his likeness in the video game NCAA Football, which is produced by EA. After removal, the U.S. District Court for the District of New Jersey entered summary judgment in favor of EA. Reversing summary judgment, the Third Circuit held that the so-called Transformative Use Test applied, and that NCAA Football game did not sufficiently transform Hart’s image to merit First Amendment protection.

The Facts

In its opinion, the court succinctly described the core facts on page 9:

  • In no small part, the NCAA Football franchise’s success owes to its focus on realism and detail—from realistic sounds to game mechanics to team mascots. This focus on realism also ensures that the "over 100 virtual teams" in the game are populated by digital avatars that resemble their real-life counterparts and share their vital and biographical information. Thus, for example, in NCAA Football 2006, Rutgers’ quarterback, player number 13, is 6 feet 2 inches tall, weighs 197 pounds and resembles Hart. Moreover, while users can change the digital avatar’s appearance and most of the vital statistics (height, weight, throwing distance, etc.), certain details remain immutable: the player’s home state, home town, team and class year.


The Applicable Test for Balancing Rights of Publicity and the First Amendment

Rejected Tests

A number of tests have been used by various federal circuits to balance rights of publicity versus the First Amendment. The Third Circuit began its analysis by rejecting two of the most prominent tests: 1) the Predominant Use Test, which essentially assess whether the “commercial” or “expressive” use of the individual’s identity predominates, as “subjective at best, arbitrary at worst …” (page 25); and 2) the so-called Rogers Test, which addressed the claimed use of Ginger Rogers’ and Fred Astaire’s names in the title of a move about two obscure Italian dancers, and which looks to the relationship between the celebrity image and the work as a hole, as a “. . . blunt instrument, unfit for widespread application in cases that require a carefully calibrated balancing of two fundamental protections: the right of free expression and the right to control, manage, and profit from one’s own identity.” (page 33).

Accepted Test: Transformative Use

The Third Circuit, as have many other courts, ultimately determined that the so-called Transformative Use Test was the best way to balance rights of publicity and First Amendment rights in a video game context. Citing the standard articulated by the California Supreme Court in a case involving T-shirts with line drawings of the Three Stooges (Comedy III Prods., Inc. v. Saderup, 21 P.3d 797 (2001)), the balance between these competing interests 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. [emphasis in original]

The Third Circuit held on page 46 that the Transformative Use Test was superior to the Predominant Use Test in that: “. . . the Transformative Use Test requires a more circumscribed inquiry, focusing on the specific aspects of a work that speak to whether it was merely created to exploit a celebrity’s likeness. :,” Thus, “if First Amendment protections are to mean anything in right of publicity claims, courts must begin by considering the extent to which a work is the creator’s own expression.” Also on page 46, the Third Circuit held that the Transformative Use Test was superior to the Rogers Test because “… the Transformative Use Test maintains a singular focus on whether the work sufficiently transforms the celebrity’s identity or likeness, thereby allowing courts to account for the fact that misappropriation can occur in any market segment, including those related to the celebrity.”

The Third Circuit also found that applying the Transformative Use Test in a video game context is consistent with First Amendment cases in other contexts: “…adopting the [Transformative Use] Test ensures that already-existing First Amendment protections in right of publicity cases apply to video games with the same force as to ‘biographies, documentaries, docudramas, and other expressive works depicting real-life figures.”

Application of the Transformative Use Test
to NCAA Football

Applying the Transformative Use Test, the Third Circuit concludes that Hart was not sufficiently transformed by NCAA Football to invoke First Amendment protections. Rejecting EA’s arguments, including that digitizing Hart’s appearance in and of itself constitutes a transformative use, the court held, on page 53:
  • 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.
The Third Circuit also rejected EA’s arguments that interactive features of the game, such as game players’ ability to make changes in Hart’s avatar, have legal significance in satisfying the Transformative Use Test. Respecting interactive uses, the Third Circuit affirmed on page 54: “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 unto itself.” Similarly, the court rejected EA’s arguments that other creative aspects ofthe game, such as whether events occurred in a “fanciful setting”, invoked First Amendment rights, stating at page 60: “It cannot be that content creators escape liability for a work that uses a celebrity’s unaltered identity in one section but that contains a wholly fanciful creation in the other, larger section.”


The Third Circuit’s opinion does not intend to diminish the breadth of First Amendment rights, or their applicability, in the first instance, even to video games. Rather, the central theme of the Third Circuit's opinion is that the protections of the First Amendment are not absolute, and must be balanced against -- and can be overcome by -- other rights such as copyright, trademark, and the right to publicity, among others. To that end, the Third Circuit pointedly states in the last footnote on page 61 of the opinion:

. . . the First Amendment protects video games in the first instance, and nothing in our decision today should be read to diminish this fact. Rather, our inquiry looked to whether other interests may surmount the First Amendment protection—as they can surmount protections for other modes of expression. In finding that NCAA Football failed to satisfy the Transformative Use Test, we do not hold that the game loses First Amendment protection. We merely hold that the interest protected by the right of publicity in this case outweighs the constitutional shield.

Barron L. Stroud
Copyright © 2013 Wong Fleming, All rights reserved.
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