Antitrust Law Daily Wrap Up, ADVERTISING—3rdCir: Use of Realistic Player Avatar in NCAA Football Video Games Could Violate Former Rutgers Quarterback’s Right of Publicity, (May 22, 2013)

By Cheryl Beise, J.D.

The First Amendment did not bar former Rutgers University quarterback Ryan Hart’s New Jersey common law right of publicity claim based on misappropriation of his likeness in the Electronic Arts (“EA”) video game NCAA Football, the U.S. Court of Appeals in Philadelphia has ruled (Hart v. Electronic Arts, Inc., May 21, 2013, Greenaway, J.). The federal district court in Trenton, New Jersey adopted the proper test in balancing the parties’ competing rights of expression and publicity, but erred in applying the test to the facts on summary judgment.

EA has produced its NCAA Football interactive video game series since the 1990s. New editions in the series are released annually. The current version allows users “to experience the excitement and challenge of college football” by interacting with “over 100 virtual teams and thousands of virtual players.” EA licenses the right to use team names, logos, uniforms, mascots, fight songs, and other game elements, but not the right to use player likenesses. In fact, the rules of the National Collegiate Athletic Association (“NCAA”) prohibit college athletes from accepting remuneration or permitting commercial use of their name or likeness.

The appeal of EA’s NCAA Football video game series is due in large part to its focus on realism and detail, including populating the game’s 100 virtual teams with “digital avatars that resemble their real-life counterparts and share their vital and biographical information,” according to the court. One such avatar bore a striking similarity to Hart, who was a quarterback, player number 13, with the Rutgers University NCAA Men’s Division I Football team for the 2002 through 2005 seasons. For example, in NCAA Football 2006, Rutgers’ quarterback, number 13, was 6’ 2” tall, weighed 197 pounds and resembled Hart. While users could change the digital avatar’s appearance and most of the vital statistics (height, weight, throwing distance, etc.), certain details remained immutable, such as the player’s home state, home town, team, and class year.

In 2009, Hart filed suit against EA in New Jersey state court, asserting that EA’s use of his likeness and biographical information in its NCAA Football 2004, 2005, and 2006 videogames violated his right of publicity under New Jersey law. Hart eventually filed suit on behalf other football players depicted in NCAA Football. The action was removed to federal court and EA moved to dismiss Hart’s complaint as barred by the First Amendment. Solely for purposes of its motion to dismiss, EA conceded that it had violated Hart’s right of publicity.

Construing EA’s motion as one for summary judgment, the district court ruled in favor of EA, concluding that EA’s First Amendment right to expression trumped Hart’s right of publicity. In reaching its conclusion, the district court adopted the “transformative use” test and in applying the test found that EA’s use of Hart’s likeness was sufficiently “transformative” to merit protection. The court alternatively determined that, even under the Second Circuit’s test in Rogers v. Grimaldi, 875 F.2d 994 (1989), Hart’s claim was barred because EA’s use of Hart’s likeness was clearly related to the game and not simply an advertisement for an unrelated product.

Because EA conceded for purposes of its motion that NCAA Football infringed on Hart's right of publicity as recognized in New Jersey, the only question before the appellate court was whether EA’s right to free expression overpowered Hart’s right of publicity. Faced with an issue of first impression, the court examined three tests used by other courts—the “Predominant Use Test,” the “Rogers Test,” and the “Transformative Use Test.”

The Predominant Use Test. Hart urged the court to adopt the “Predominant Use Test,” which first appeared in Doe v. TCI Cablevision, 110 S.W.3d 363 (D. Mo. 2003), a case that considered a hockey player’s right of publicity claim against a comic book publishing company. Under the Predominant Use Test, sale of a product that “predominantly exploits the commercial value of an individual’s identity” is not protected by the First Amendment, even if the product contains some “expressive” content that might qualify as “speech” in other circumstances.

The court rejected the Predominant Use Test, describing it as “subjective at best, arbitrary at worst, and in either case calls upon judges to act as both impartial jurists and discerning art critics.” Hart’s particular application of the Predominant Use Test—requiring a finding that EA’s use of Hart’s likeness add to NCAA Football’s expressive content to be protectable—was overbroad and antithetical to the First Amendment, according to the court.

The Rogers Test. In Rogers, the Second Circuit held that the right of publicity did not bar use of the title “Ginger and Fred” for a movie because the title clearly related to the content of the movie (i.e., was artistically relevant) and was not a disguised advertisement for the sale of goods and services or a collateral commercial product.

Derived from trademark law concepts concerned with likelihood of consumer confusion, the “Rogers Test” arguably applied only to the use of celebrity identity in a work’s title. But EA argued that the test applied to a work’s contents as well as its title. The court was not persuaded. “EA argues that Hart should be unable to assert a claim for appropriating his likeness as a football player precisely because his likeness was used for a game about football. Adopting this line of reasoning threatens to turn the right of publicity on its head,” the court remarked.

The Rogers Test did not present the proper analytical approach for the instant case. “While the Test may have a use in trademark-like right of publicity cases, it is inapposite here,” the court decided.

The Transformative Use Test. The court held that the “Transformative Use Test,” first recognized by the California Supreme Court in Comedy III Prods., Inc. v. Gary Saderup, Inc., 21 P.3d 797 (2001), provided the proper analytical framework for evaluating the countervailing rights of publicity and creative expression. Borrowing from the copyright law doctrine of fair use, the Transformative Use Test balances the competing interests of the right of publicity and the First Amendment by protecting works that add significant elements of expression beyond the mere literal depiction or imitation of a celebrity for commercial gain.

Unlike the Rogers Test, 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 court explained. In addition, unlike the Predominant Use Test, 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.”

EA’s use of Hart’s likeness. Under the Transformative Use Test, the determinative issue was whether EA sufficiently transformed Hart’s identity in its NCAA Football game series. The term “identity” encompassed not only Hart’s likeness, but also his biographical information, the court said.

EA’s digital avatar for Rutgers player number 13 closely resembled the genuine article, mimicking Hart in terms of hair color, hair style, skin tone, and the accessories worn by Hart during his time as a Rutgers player. In addition, EA’s player information accurately tracked Hart’s vital and biographical details.

EA argued that the interactive nature of NCAA Football —endowing users with the ability to change the digital avatar's appearance—was transformative. Interactivity by itself cannot be used as means of avoiding misappropriation liability, the court noted. Moreover, in this case, the type and extent of interactivity permitted by EA was insufficient to transform Hart’s likeness into EA’s own expression, the court determined.

Hart’s unaltered likeness, the game’s default setting, “was central to the core of the game experience,” the court found. The appeal of NCAA Football, and by extension, the game’s success, lay in users’ ability to play “as, or alongside” their preferred players or team, the court explained. Avatars with superficial modifications to their appearance counted as a suitable proxy or market “substitute” for the original, in the court’s view. To the extent users made major transformations to Hart’s avatar, it no longer represented Hart and, therefore, no longer qualified as a “use” of Hart’s identity, the court explained.

EA also argued that other creative elements of NCAA Football, which did not affect Hart’s digital avatar, were so numerous that the videogames should be considered transformative. The court disagreed. Creative game elements that did not alter or transform Hart’s avatar were irrelevant to EA’s use of Hart’s identity, the court determined.

The court therefore held that the NCAA Football 2004, 2005, and 2006 games did not sufficiently transform Hart's identity to foreclose right of publicity liability. However, EA’s use of Hart’s likeness in a photograph in NCAA Football 2009 was protected by the First Amendment. The district court's grant of summary judgment was reversed and the case remanded for further proceedings.

“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,” the court clarified.

Dissent. In a dissenting opinion, Circuit Judge Thomas L. Ambro agreed that the Transformative Use Test was the preferred approach for balancing competing rights of publicity and First Amendment interests, but he parted ways with the majority on its “interpretation and application” of the test. Specifically, Judge Ambro criticized the majority for diminishing the value of NCAA Football’s creative elements and improperly considering the games’ commercial value and marketability.

“My colleagues limit effectively their transformative inquiry to Hart’s identity alone, disregarding other features of the work,” Judge Ambro wrote. Judge Ambro would hold that EA’s use of Hart’s likeness, in context and considering the myriad other creative features incorporated throughout NCAA Football, constituted sufficient expressive transformation to merit First Amendment protection.

Judge Ambro also criticized the majority for diminishing First Amendment protection because a celebrity’s name or likeness was used to increase a product’s value and marketability. The majority’s approach was at odds with the First Amendment protection afforded to other types of expressive works incorporating real-life figures—such as books, movies, and magazines— which specifically does not depend on whether the characters are depicted realistically or whether their inclusion increases profits. Therefore, in Judge Ambro’s view, the majority’s application of the Transformative Use Test effectively “creates a medium-specific metric that provides less protection to video games than other expressive works,” a distinction at odds with the Supreme Court’s decision in Brown v. Entm’t Merchs. Ass’n, 131 S. Ct. 2729 (2011).

The case is No. 11-3750.

Attorneys: Michael Rubin (Altshuler, Berzon, Nussbaum & Rubin) for Ryan Hart. Elizabeth A. McNamara (Davis, Wright & Tremaine) for Electronic Arts, Inc. P. Casey Pitts (Altshuler, Berzon, Nussbaum & Rubin) for amici Major League Baseball Players Association, Major League Soccer Players Union, NFL Players Association, NHL Players Association, and National Basketball Players Association.

Companies: Electronic Arts, Inc.

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