Antitrust Law Daily Wrap Up, ADVERTISING—9th Cir.: Use of former pro football players’ likenesses in videogame not protected by First Amendment, (Jan 7, 2015)

By Peter Reap, J.D., LL.M.

The use of the likenesses of former professional football players by Electronic Arts, Inc. (EA), in its Madden NFL series of video games was not, as a matter of law, protected by the First Amendment, the U.S. Court of Appeals in San Francisco has decided (Davis v. Electronic Arts Inc., January 6, 2015, Fisher, R.).

EA’s contention that the suit brought by former players as a putative class action was barred by five affirmative defenses under the First Amendment—the transformative use defense, the public interest defense, the public affairs exemption of California Civil Code § 3344(d), the Rogers test, and the incidental use defense—was rejected. Thus, a district court’s denial of EA’s motion to strike the lawsuit as a strategic lawsuit against public participation (SLAPP) under California’s anti-SLAPP statute was affirmed.

Background

EA is a developer and publisher of video games, including Madden NFL, which EA publishes annually. Madden NFL allows users to play virtual football games between National Football League (NFL) teams by controlling virtual players, or avatars. Each annual version of Madden NFL includes all current players for all 32 NFL teams, along with accurate player names, team logos, colors, and uniforms. EA has paid National Football Players Inc.—the licensing arm of the National Football League Players Association—annual licensing fees in the millions of dollars to use current players’ likenesses.

From 2001 through 2009, Madden NFL also included certain particularly successful or popular “historic teams.” EA did not obtain a license to use the likenesses of the former players on these historic teams. Although the players on the historic teams were not identified by name or photograph, each was described by his position, years in the NFL, height, weight, skin tone, and relative skill level in different aspects of the sport.

The plaintiffs alleged that Madden NFL similarly included, without authorization, accurate likenesses of plaintiffs Michael Davis and Billy Joe Dupree, as well as roughly 6,000 other former NFL players who appeared on more than 100 historic teams in various editions of Madden NFL. The plaintiffs asserted claims for right of publicity under California Civil Code § 3344 and California common law, conversion, trespass to chattels, and unjust enrichment on behalf of themselves and all former NFL players depicted in Madden NFL. After the district court denied the motion to strike, EA appealed.

Anti-SLAPP Motion

California’s anti-SLAPP statute is “designed to allow courts ‘to promptly expose and dismiss meritless and harassing claims seeking to chill protected expression.’” Mindys Cosmetics, Inc. v. Dakar, 611 F.3d 590, 595 (9th Cir. 2010). Under the statute, “a party may file a motion to strike a cause of action against it if the complaint ‘aris[es] from any act of that person in furtherance of the person’s right of petition or free speech under the United States Constitution or the California Constitution in connection with a public issue.’” Id. To defeat a motion to strike, a plaintiff must “establish[] that there is a probability that the plaintiff will prevail on the claim.” Cal. Civ. Proc. Code § 425.16(b)(1).

The plaintiffs conceded that their suit arose from an act by EA in furtherance of its right of free speech under the First Amendment. The district court denied EA’s motion, however, concluding that the plaintiffs established a reasonable probability they would prevail on their claims.

EA did not challenge the plaintiffs’ ability to state or support any substantive element of their claims. Instead, EA argued that it is not reasonably probable the plaintiffs would prevail, because their claims were barred by five affirmative defenses under the First Amendment—the transformative use defense, the public interest defense, the public affairs exemption of California Civil Code § 3344(d), the Rogers test, and the incidental use defense. EA had the burden of establishing the transformative use defense as a matter of law, the court noted. On its other affirmative defenses, EA had the burden of establishing “a probability” of prevailing.

Transformative use. EA contended that the plaintiffs’ claims were barred by the transformative use defense formulated by the California Supreme Court in Comedy III Productions, Inc. v. Gary Saderup, Inc., 21 P.3d 797 (Cal. 2001). “The defense is ‘a balancing test between the First Amendment and the right of publicity based on whether the work in question adds significant creative elements so as to be transformed into something more than a mere celebrity likeness or imitation.’” Keller v. Electonic Arts, Inc.(In re NCAA Student-Athlete Name & Likeness Licensing Litig.), 724 F.3d 1268 at 1273 (9th Cir. 2013). In Keller, the Ninth Circuit rejected EA’s transformative use defense. The court held the use of college athletes’ likenesses in the NCAA Football video game series was not, as a matter of law, transformative use.

The same was true here, the appellate court determined. Like NCAA Football, Madden NFL replicates players’ physical characteristics and allows users to manipulate them in the performance of the same activity for which they are known in real life—playing football for an NFL team. Neither the individual players’ likenesses nor the graphics and other background content are transformed more in Madden NFL than they were in NCAA Football. Thus, EA failed to show that the transformative use defense applied to the plaintiffs’ claims.

The public interest defense. EA next contended that the plaintiffs’ common law right of publicity claim was barred by the public interest defense, and their statutory right of publicity claim was barred by the “public affairs” exemption of California Civil Code § 3344(d). Under the common law public interest defense, no cause of action will lie for the publication of matters in the public interest, which rests on the right of the public to know and the freedom of the press to tell it. Under the statutory “public affairs” exemption, the right of publicity recognized in California Civil Code § 3344(a) does not apply to the “use of a name, voice, signature, photograph, or likeness in connection with any news, public affairs, or sports broadcast or account.” Cal. Civ. Code § 3344(d). Although California courts typically analyze the statutory and common law defenses separately, both defenses “protect only the act of publishing or reporting,” the court observed. Keller, 724 F.3d at 1282.

In Keller, the Ninth Circuit rejected EA’s reliance on these defenses, explaining that, unlike the cases on which EA relied, involving a documentary, a newspaper photograph, and a game program, EA was “not publishing or reporting factual data.” Id. at 1283. Madden NFL was indistinguishable in this regard from NCAA Football, the court said. Like NCAA Football, although Madden NFL contained some factual data about current and former NFL teams and players, it was “a game, not a reference source” or a “publication of facts” about professional football. Id. Thus, EA did not establish a probability of prevailing on either the common law public interest defense or the “public affairs” exemption of California Civil Code § 3344(d), the court held.

The Rogers test. EA next contended that Madden NFL was entitled to First Amendment protection under the test formulated by the Second Circuit in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). Rogers held that a literary title does not violate the Lanham Act “unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.” Id. at 999.

In Keller, the Ninth Circuit rejected EA’s argument that the Rogers test should be extended to right-of-publicity claims. See 724 F.3d at 1279–82. The court explained that the Rogers test “was designed to protect consumers from the risk of consumer confusion—the hallmark element of a Lanham Act claim.” Id. at 1280. In contrast, the right of publicity “does not primarily seek to prevent consumer confusion.” Id. Thus, the Rogers test did not apply to the plaintiffs’ right-of-publicity claims, the court explained.

The incidental use defense. Finally, EA contended that the plaintiffs’ claims were barred by the incidental use defense. Although EA did not assert this defense in the district court, the appellate court exercised its discretion to address the issue.

The parties agreed that the incidental use defense exists under California law and relied on the same cases and treatises to define the scope of the defense, the court noted. Under those authorities, “[a] number of factors are relevant,” such as “(1) whether the use has a unique quality or value that would result in commercial profit to the defendant; (2) whether the use contributes something of significance; (3) the relationship between the reference to the plaintiff and the purpose and subject of the work; and (4) the duration, prominence or repetition of the name or likeness relative to the rest of the publication.” Aligo v. Time-Life Books, Inc., No. C 94-20707 JW, 1994 WL 715605, at *3 (N.D. Cal. Dec. 19, 1994).

Under the first and second factors, the former players’ likenesses had unique value and contributed to the commercial value of Madden NFL, according to the court. EA acknowledged that “[t]he Madden titles are successful in part because they allow consumers to simulate play involving any of the 32 NFL teams, using real NFL players.”

Having acknowledged the likenesses of current NFL players carry substantial commercial value, EA did not offer a persuasive reason to conclude otherwise as to the former players, the court held. EA argued that, because there are several thousand players depicted in Madden NFL, any individual player’s likeness has only a de minimis commercial value. There was no basis for such a sweeping statement, the court ruled. EA included only a small number of particularly successful or popular historic teams and it advertised the inclusion of those teams, the court noted.

Under the third and fourth factors, the former players’ likenesses were featured prominently in a manner that was substantially related to the main purpose and subject of Madden NFL—to create an accurate virtual simulation of an NFL game. Accurate depictions of the players on the field were central to the creation of an accurate virtual simulation of an NFL game. Therefore, EA failed to establish a probability of prevailing on its incidental use defense.

Conclusion. EA did not show that its unauthorized use of former players’ likenesses in the Madden NFL video game series qualified for First Amendment protection under the transformative use defense, the public interest defense, the Rogers test, or the incidental use defense. Accordingly, the district court’s denial of EA’s motion to strike was affirmed.

The case is No. 12-15737.

Attorneys: Alonzo Wickers IV (Davis Wright Tremaine LLP) for Electronic Arts, Inc. Brian D. Henri (Henri Law Group) for Michael E. Davis.

Companies: Electronic Arts Inc.

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