The Right of Publicity in Videogames [working title]

Modern game developers achieve their acclaim largely through creating hyper-realistic, interactive videogames that qualify as nothing less than an absolute work of art. Like many works of art, however, they are subject to monetary valuation as well as being a medium of expression. The billion-dollar software developer and distributer, Electronic Arts, has recently drawn itself into nationwide class action lawsuits brought by former collegiate athletes alleging EA’s NCAA videogames are violating their right of publicity.

EA’s videogames, NCAA Football and Basketball in particular, began as a licensing agreement between the software company and the National Collegiate Athletic Association and it’s licensing arm, the Collegiate Licensing Company (CLC). The issues raised by the class action plaintiffs involve the wrongful appropriation of their likeness and identity as former student-athletes in new videogames. While the use of the likeness of current athletes is unquestioned due to NCAA bylaws that prohibit student-athletes from receiving outside compensation, the contracts effectively assigned into perpetuity the publicity rights of former student-athletes. EA’s NCAA videogames, while not having the blockbuster status of their professional counterparts like Madden, NBA Live, or FIFA, enjoy a comfortable profit margin for the very reason of their not having to negotiate licensing deals with professional teams and players associations. So too, this is big business for the NCAA, which EA games help in part to generate licensing revenue of $4 billion per year.[1] By replicating everything down from the individual’s physical characteristics and statistics to the football stadiums and seasons, the EA Sports NCAA videogame franchise has successfully capitalized on what is increasingly becoming the most dominant participant in all of sports entertainment.[2]

The Right of Publicity

The Restatement (Third) of Unfair Competition defines the right of publicity as the right to control the “commercial value of a person’s identity” including that person’s “name, likeness, or other indicia of identity for purposes of trade.”[3] In a claim alleging the unlawful use of a right of publicity, a plaintiff must demonstrate the following: (1) the defendant used his identity; (2) his identity has commercial value; (3) the defendant appropriated that commercial value for purposes of trade; (4) lack of consent; and (5) a resulting commercial injury.[4] The right is closely associated to and often tangled with the right of privacy because both may involve the appropriation to one’s own use or benefit the name or likeness of another.[5] The notable difference between them, however, concerns the associated harm, in that a violation of one’s privacy causes primarily mental harm, but a violation of one’s publicity causes economic harm. It is also useful distinguishing the two by seeing privacy as a personal right and publicity as a property right.

Another distinction is that while federal and state laws recognize the right to privacy, the right of publicity is strictly a matter of state law. Of this, in fact, around only half of the states explicitly recognize the right of publicity.[6] California’s law is codified in our Civil Code, in Section 3344. Federal law’s closest counterpart to this right can be found in the Lanham (Trademark) Act, which sets forth a cause of action for the commercial use of one’s name “on or in connection with any goods and services.”[7] The identifying use, however, must be “likely to cause” consumer confusion about the “affiliation, connection, or association” between the two parties.[8]

The right of publicity, like trademark and other forms intellectual property, involves creation as a source of property protected by law. In the only Supreme Court case squarely addressing the right of publicity, the Court held that much like copyright and patent, the “protection provides an economic incentive for [the creator] to produce a performance of interest to the public.”[9] So too, the right of publicity provides an incentive for right holders to prevent the over-exploitation of his or her personae. Unlike other forms of intellectual property, however, the justification for recognizing and protecting a right of publicity are arguably “less compelling” than other areas of IP.[10]

As an example, the Restatement considers how the success of those practicing in the sports or entertainment industries will encompass substantial rewards independent of their identity. Creating an additional incentive with a right of publicity would have “only marginal significance”.[11] Put another way, a person seeking and having found the fame and fortune of being a celebrity will have the commercial value of their identity attributable to the greater reward of their actual being a celebrity, earning the reputation and lucrative salary for their work. Additionally, it is achieving that success that is more likely to motivate an individual to invest in his or her skill than is any incidental licensing deals that may or may not result, but will largely depend on having such prior success. Nonetheless, creating a private property right in one’s identity will “increase the incentive of the holder to develop the underlying resource”[12] and it is in taking that risk that one ought deserve the reward of protection for achieving their success.

No matter how minor the incentive, however, one may also find a basic justification for the right of publicity in natural rights theory. An English philosopher and natural rights theorist, John Locke proposed three natural rights: life, liberty and property. Under the property right, Locke reasoned that each person was entitled to the valuable property produced through his own labor. According to Lockean philosophy, by mixing one’s own labor with a resource, a certain value is created for which one may attach a property right. In this sense, the commercial value associated with a person’s identity should be protected as a form of property right because of the labor expended by the person to achieve it. This interest, however, is not without exception. Locke advocated such right of property only to the extent that it does not conflict with another’s rights, and specifically the former two—life and liberty. Professor Melville B. Nimmer, renowned expert in free speech and copyright law, stated the principle as follows: “every person is entitled to the fruit of his labors unless there are important countervailing public policy considerations.”[13]

The Freedom of Expression

The quintessential policy consideration implicated by the right of publicity is the First Amendment’s freedom of expression. In the realm of video games, only recently has the United States Supreme Court explicitly held that video games qualify for First Amendment protection.[14] In Brown, though the issue involved whether the state could prohibit the sale of violent video games to minors, the court recognized the fact that as a new medium of expression, “video games communicate ideas” just as the “books, plays and movies that preceded them.”[15] While First Amendment freedoms may shield game developers from governmental censorship, it does not give them free license to infringe the rights of private individuals. Like the laws of libel and slander, the right of publicity can provide a person with a cause of action against another’s supposedly expressive work.

This tension often raises noticeable conflict in the world of advertising. The use of someone’s identity in association with a commercial product creates a presumption of endorsement that benefits the seller. After all, why would a business want to use the likeness of any individual if not for the potential for increasing product recognition, sales and inevitable profit? Practically speaking, exploiting a person’s identity for an economic advantage will require that person’s prior authorization. The failure to do so can create a lawsuit under the individuals state right of publicity in addition to a Lanham Act violation which explicitly prohibits false endorsements. The rationale makes sense, as the commercial value one acquires in their identity through considerable investment and hard work should not be freely appropriated to another’s advantage without permission. Not requiring prior consent would create the potential for over-exploitation, the devaluing and “watering down” of the individual’s identity. This is especially true in the advertising context when, as the Restatement considers, “the name or likeness is used solely to attract attention to a work that is not related to the identified person.”[16]

There is less chance of liability when the use of an individual’s identity is to “communicate information or express ideas” not only in general news reporting, but also when used in creative works.[17] A news segment conveying information about an individual may generally use that person’s name or image without infringing that person’s right of publicity. Such use will largely depend on the purpose for using it, whether it is a true artistic expression or merely a commercial exploitation.

The Balancing Tests

To distinguish the two, courts frequently apply a balancing test. In states recognizing a right of publicity, one approach a court could use is the Rogers test. This test comes from a Second Circuit case involving an imitation of the late Ginger Rogers and Fred Astaire in a film titled “Ginger and Fred.”[18] In Rogers, the use of Ginger’s name and likeness was argued by the plaintiff to have violated her right of publicity and the Lanham Act. The court applied what became known as the Rogers test, whereby the “public interest in avoiding consumer confusion” was balanced with the “public interest in free expression”.[19] In what is arguably a deferential test to the weighty interest in free speech, so long as the use of the person’s identity is relevant to an underlying artistic or expressive work, the defendant will generally prevail. It is worth noting that this test, because it considers the potential for consumer confusion, has a greater tendency for application in the trademark context but it is also useful in cases concerning the right of publicity, given the relatedness of the two property interests.

In California, a state that explicitly recognizes the right of publicity,[20] the leading approach used by the courts is the Transformative test. Formulated by the California Supreme Court, this test essentially looks to “whether the work in question adds significant creative elements so as to be transformed into something more” than mere likeness of identity.[21] That is, whether “the product containing the celebrity’s likeness is so transformed that it has become primarily the defendant’s own expression.”[22] Per Comedy III, whether a work is sufficiently transformative will depend on whether there was enough “creative contribution” in the artistic expression so that the work’s value derives primarily from “the defendant’s own expression rather than the [plaintiff’s] likeness”.[23] The product at issue in that Court case was a silkscreened t-shirt with nothing more than the iconic picture of the three stooges. Without any added and significant expression, the “interest in protecting the fruits of [the plaintiff’s] labor outweighs the expressive interests of the [defendant-] artist.”[24]

Even if briefly, the court appears to partly justify the right of publicity in explicit Lockean philosophy. At other times, the court makes clear mention of the economic rationale in preventing a form of “commercial exploitation” that would regularly “not receive First Amendment protection.”[25] What was less clear yet subtly implied, and now increasingly important, is the degree to which the court may find the use of the individual’s identity as infringing when used within a larger expressive context.

A subsequent case from the California Supreme Court applied the transformative test to the creative work of a comic book. In Winter v. DC Comics, the defendant’s comic books featured two villainous human-worm hybrid characters based on the singers Edgar and Johnny Winter engaging in an epic battle with the fictional westerner, Jonah Hex. The court found the use of the plaintiff’s identity sufficiently transformed when not only considering the “distorted” physical appearances of the characters, but also in the “larger story” narrative, which was “itself quite expressive.”[26] Although irrelevant for purposes of the transformative test, the court observed that even if the characters resembled the defendants, they were “distorted for purposes of lampoon, parody, or caricature.”[27]

Application in Video Games

Turning now to the videogame context, an early but recent California appellate court decision applied the transformative test to the success of a first amendment defense raised by a game developer. In Kirby v. Sega of America, Inc., the court found the character, as a portrayal of the plaintiff, as sufficiently transformed despite sharing similarities. In what seemed a broad and narrow inspection of the work, the court recognized the variety of fanciful character designs and the futuristic game setting to have differed considerably from the plaintiff’s likeness and any “public depiction of [her].”[28] The character, while having similar physical characteristics, musical talents and a use of catchphrases, was not a “literal depiction” and contained enough “creative elements to create a new expression” completely protected by the First Amendment.[29]

Another, more recent appellate court case, the celebrity musicians from the rock band No Doubt brought an action against the game developer Activision for misappropriating the band members’ likeness in the videogame Band Hero.[30] Disregarding the grander overlay of the game itself, the court narrowly focuses on the portrayal of the band members and found that those avatars were engaged in the “same activity by which the band achieved and maintains its fame.”[31] Even though, the court admits, the avatars appear in a medium with “many other creative elements,” that alone was insufficient to “transform the avatars into anything other than exact depictions of No Doubt’s members doing exactly what they do as celebrities.”[32] While in some sense the game itself is a new expression, the fact that the avatars themselves were an exact depiction of the band members doing exactly what they do in real life was enough to fail the transformative test. Cases applying the transformative test must look to how the artist uses the celebrity’s identity in the work; wholly unrelated elements have no bearing on this inquiry.

The growing tension in the analysis balancing the interests of First Amendment freedoms with the individual rights of publicity has come to a boil in pending class-action lawsuits by student athletes in the National Collegiate Athletic Association (NCAA) and the billion-dollar software company Electronic Arts (EA). EA is responsible for the developing, marketing, publishing and distributing of nearly two-dozen different videogame products. Of these products, EA has created several editions of NCAA sporting games that use the unnamed players of various NCAA basketball and football teams. These avatars are purposively and accurately as possible matched with the corresponding player’s “actual jersey number” and “identical height, weight, build, skin tone, hair color, and home state.”[33] Every feature of the game, teams and players are replicated as “accurately as possible” to real life, with exception to the player’s hometown and the omission of the player’s name.[34]

In a recent appellate case, a panel of the Ninth Circuit applied the transformative test and held EA’s use of the plaintiff-student’s likeness does not qualify for First Amendment protection as a matter of law because “it literally recreates [the plaintiff] in the very setting in which he has achieved renown.”[35] The ruling, while troubling to EA, only affirmed the lower court’s judgment denying EA their anti-SLAPP motion. This motion sought to dismiss the plaintiff-student’s case on summary judgment as an unmeritorious lawsuit aimed at stifling the speech related activities of the defendant artist. What is noteworthy is the finding by the trial court that “the focus must be on the depiction of the plaintiff in ‘NCAA Football,’ [and] not the game’s other elements.”[36] Ignoring the ‘larger story’ analysis as discussed in Winter, the court chose instead to narrowly address the similarity of the plaintiff to the videogame avatar.

Particularly in sports games, which tend to be realistic, if the focus of every publicity case is on the individual avatar, the defendant-developer will surely lose. Even still, if the focus of the court is on both the avatar and the game as a whole, the defendant-developer may likely lose. This is precisely because realistic sports games create the characters as virtually identical to actual real people, having them engage in “the same activity by which [they] achieved and maintain [their] fame.”[37] It comes as little surprise that every lawsuit challenging the EA’s use of a student-athlete’s likeness has so far succeeded as a matter of law on appeal.[38]

In analyzing the conflicts, both the Third and Ninth Circuit have opted to apply the transformative use test. In applying this test, the courts narrowly examine the actual avatars being used in the NCAA games, as well as giving some review to the football and basketball games as a whole. The avatars created by EA are without question literal depictions, that is, digital recreations of the many student-athletes comprising the NCAA Football and Basketball teams. EA deliberately created the videogame avatars to replicate the identifying characteristics of the student-athletes by “sending detailed questionnaires to team equipment managers.”[39] The sharing of identifying information not otherwise readily available allowed EA to “focus on realism and detail” so to “accurately track [the plaintiff’s] vital and biographical details.”[40] While the digital representations omitted the names of the players, it was obvious to any enthusiast and consumer of the game that the same number, “height, weight, skin tone, hair color, hairstyle, handedness, home state, play state, visor preference, facial features and school year”[41] was simulating the real life player. In so doing, EA sought to “capitalize on the respective fan bases for the various teams and players” knowing full well that “consumers enjoy and, as a result, purchase more EA-produced videogames as a result of the heightened realism associated with actual players.”[42]

Even in turning to the context, that is a broader review of the game as a whole, it would require a willing suspension of disbelief to suggest the NCAA videogames offer any transformative element to a creative work. It is simply not transformative to have the digital equivalents of Ryan Hart, Samuel Keller, Ed O’Bannon and others in the class actions to do exactly what it is they do in real life. EA created “realistic virtual versions of actual stadiums,” filling them with “virtual athletes, coaches, cheerleaders, and fans” and incorporated “realistic sounds” down to the “crunch of player’s pads and the roar of the crowd.”[43] These various “digitized sights and sounds” in the videogame do not “alter or transform” the student-athletes identities.[44] Moreover, like the failed arguments made by the defendants in No Doubt, the mere ability for users to interact with virtual characters and teams by manipulating appearances or performances (i.e., unrealistic situations such as No Doubt performing music from other bands, or reenacting the 2013 BCS Championship so that Alabama loses) does not save the software company. Because the videogame itself and the avatars within it are, by default wholly created from the identities of real-world individuals, using the statistics of real world performances to engage in the same real-life activity by which they achieved renown, it can only serve to support the conclusion that the “depiction or imitation of the [student-athlete] is the very sum and substance of the work in question.”[45]

[CONCLUSION – ½ Page]

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[1] Nabeel Gadit, An End To The NCAA’s Exploitation of Former Student-Athletes, 30 Cardozo Arts & Ent. L.J. 347 (2012).

[2] Id. at 350

[3] See Restatement (Third) of Unfair Competition §46 (1995)

[4] Id. at §46 cmt. c

[5] See generally, William Prosser, Privacy, 48 Calif.L.Rev. 383 (1960)

[6] J. Thomas McCarthy, The Rights of Publicity and Privacy

[7] 15 U.S.C. §1125 (a)(1) (2012)

[8] Id at §1125 (a)(1)(A)

[9] Zacchini v. Scripps-Howard Broadcasting Co. 433 U.S. 562, 576 (1977)

[10] Restatement (Third) of Unfair Competition §46 cmt. c (1995)

[11] Id.

[12] Mark F. Grady, A Positive Economic Theory of the Right of Publicity, 1 UCLA Ent. L. Rev. 97, 111 (1994)

[13] Melville B. Nimmer, The Right of Publicity, 19 Law & Contemp. Probs 203, 216 (1954)

[14] Brown v. Entm’t Merchs. Ass’n 131 S.Ct 2729 (2011)

[15] Id at 2733

[16] Restatement (Third) of Unfair Competition §47 cmt. c

[17] Id.

[18] Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989)

[19] Id. at 999

[20] Cal. Civil Code § 3344

[21] Comedy III Prods., Inc. v. Gary Saderup, Inc., 25 Cal.4th 387, 391 (2001) (emphasis added)

[22] Id. at 407

[23] Id. at 406

[24] Id. at 405

[25] Id. at 403 (citing Zacchini v. Scripps-Howard Broadcasting Company, 97 S.Ct. 2849 (1977); Guglielmi v. Spelling-Goldberg Productions, 25 Cal.3d 860 (1979); Presley v. Russen, 513 F.Supp. 1339 (D.N.J. 1981).

[26] Winter v. DC Comics, 30 Cal.4th 881, 890 (2003) (finding the “less-than subtle” depictions of the plaintiff as a half-human and half-worm creatures that were “but cartoon characters” in a larger overlaying narrative)

[27] Id. 890

[28] Kirby v. Sega of America, Inc., 144 Cal.App.4th 47, 59 (2006)

[29] Id. at 59

[30] No Doubt v. Activision Publ’g, Inc., 192 Cal. App. 4th 1018 (2011)

[31] Id. at 1034

[32] Id. at 1034

[33] In re NCAA Student-Athlete Name and Likeness Litigation, 724 F.3d 1268, 1271 (2013)

[34] Id.

[35] Id.

[36] Keller v. Electronic Arts, Inc. WL530108, at 5 (N.D. Cal. 2010)

[37] No Doubt, 192 Cal. App. 4th, 1034

[38] Hart v. Electronic Arts, Inc., 717 F.3d 141 (3rd Cir. 2013); In re NCAA Student-Athlete Name & Likeness Licensing Litigation, 724 F.3d 1268 (9th Cir. 2013)

[39] In re NCAA Student-Athlete, 724 F.3d 1268, 1271 (9th Cir. 2013)

[40] Hart v. Electronic Arts, Inc. 717 F.3d 141, 166 (3rd Cir. 2013)

[41] In re NCAA, supra note 39, at 1272

[42] Hart, supra note 40, at 168

[43] In re NCAA, supra note 39, at 1271

[44] Hart, supra note 40, at 166

[45] Comedy III, supra note 21, at 406