BY:Neil J. Rosini, Michael I. Rudell
(Originally published in the Entertainment Law column in the New York Law Journal on Friday, July 26, 2013)
The right of publicity has traced a long arc since Hugo Zacchini, the human cannonball, was shot from a cannon in 1972. That year, a TV news report included Zacchini’s entire act from ignition to landing without his permission; Zacchini then sued claiming that his right of publicity had been violated. Balancing that right with the First Amendment defense of the broadcaster, the United States Supreme Court ruled that free speech had been trumped by the plaintiff’s need to earn a living by attracting visitors who hadn’t seen his act.
Several weeks ago in Hart v. Electronic Arts, the Third Circuit returned to the same jurisprudential territory in a updated mode: this time, the unauthorized use was an avatar in a football video game that resembled the plaintiff — a former star quarterback at Rutgers — in physical appearance, team membership, the number on its jersey, and statistics. The majority opinion by Judge Joseph A. Greenaway Jr. acknowledged that depicting the player in a videogame was no less protected by the First Amendment than featuring him in a film or book. But as in Zacchini, the court held that the plaintiff’s right of publicity outweighed the defendant’s right of free speech.
The opinion’s main focus was the degree of “transformativeness” of the use, a concept from copyright law that has been adopted by California courts for this balancing test in right of publicity cases. The “transformative” analysis poses a question: what is being transformed – or not transformed – into what? How the court chose to frame that comparison heavily influenced the outcome in Hart and it could have major repercussions for the future of digital entertainment.
The Facts in Hart
Ryan Hart was a star quarterback with the Rutgers University Men’s Division I Football team from 2002 to 2005. In accord with NCAA amateurism rules, he “purportedly refrained from seizing on various commercial opportunities.” He was 6’2″, wore number 13, weighed 197 pounds and still holds the Scarlet Knights’ records for career attempts, completions, and interceptions. Like many other college athletes, Hart was included by Electronic Arts (“EA”) in their successful NCAA Football videogame series in which new editions are released annually. The game allows users to experience “the excitement and challenge of college football” by “interacting with 100 virtual teams and thousands of virtual players.”
According to the majority opinion, a player chooses two college teams to compete against one another and the game assigns a stadium and “populates it with players, coaches, referees, mascots, cheerleaders and fans.” Additional game modes allow for “multi-game” play as well as for assuming the year-round responsibilities of a college coach, including recruiting. Another mode allows the user to create a virtual player and control it from high school throughout its college football career, all the while making choices about practices, academics and social life.
The success of the series is attributable to its “focus on realism and detail” including the resemblance of the digital avatars in the game to their real-life counterparts who share their vital and biographical information. In the 2006 edition, for example, the un-named Rutgers quarterback, number 13, was 6’2″, weighed 197 pounds, and physically resembled Hart down to his hair color, hair style, skin tone, and accessories (he typically wore a visor and armband) — unless a user chose to change the avatar’s appearance or certain statistics, which was an option. Hart claimed that his likeness was replicated in the 2004 and 2005 editions as well.
Choosing a Balancing Test
The majority’s decision first noted what was “self-evident”: that video games are protected by the First Amendment as expressive speech in that they communicate ideas through familiar literary devices as well as features distinct to the medium, like a player’s interaction with a virtual world. The decision acknowledged that First Amendment protections have been held applicable not only to political speech, but also to entertainment like motion pictures, radio and television programs, and live musical and dramatic works. But the protection afforded to games, like other expressive works, “can be limited in situations where the right of free expression necessarily conflicts with other protected rights.” To resolve the “tension” between the right of publicity and First Amendment protection, the court undertook to balance those competing interests.
The majority opinion traced the development of the right of publicity, which in the nature of a property right protects against unauthorized use “to commercialize or exploit or capitalize upon another’s name, reputation or accomplishments.” Protection is particularly apt for celebrities, who gain and enjoy their identities through “labor and effort and deserve to reap the reward of [their] endeavors.” And among other purposes, the right of publicity is designed to encourage further development of this property interest for society’s benefit, including entertainment.
The court observed that in the “wake” of Zacchini, courts in various jurisdictions began to apply balancing tests in more systematic ways, with three tests emerging: The Predominant Use Test, the trademark-based Rogers test (adopted in the Second Circuit) and the copyright-based Transformative Use Test.
The Predominant Use Test asks whether the predominant purpose is to make an expressive comment on or about a celebrity. In rejecting it, the court declared it “subjective at best, arbitrary at worst” and called upon judges “to act as both impartial jurists and discerning art critics.”
The Rogers Test asks whether a use is “wholly unrelated” to the expressive work in which it appears; if it is related to the content and “not a disguised advertisement for the sale of goods and services or a collateral commercial product,” the use is allowed. But the Hart majority was skeptical that the Rogers Test applied in a right of publicity analysis to the contents of a work as opposed to its title alone. Further, it considered the test a “blunt instrument, unfit for widespread application” because it was derived from trademark principles that could not accommodate the “carefully calibrated balancing of two fundamental protections” like publicity rights and free expression.
Instead, the court favored the “broader, more nuanced” approach of the Transformative Use Test that originated with the Supreme Court of California in Comedy III Prods., Inc. v Gary Saderup, Inc. Comedy III involved the unauthorized production and sale of t-shirts and prints bearing a charcoal drawing of the Three Stooges, and required the court to balance First Amendment protection of expressive works with the benefits that publicity rights conferred on rights owners and to society at large. To analyze whether or not use of the images on the t-shirts deserved to be protected, the court imported the “transformative test” used in the fair use analysis of copyright law, which also balances the social utility of certain unauthorized uses versus the monopoly of a rights holder.
In support of this approach, the California Supreme Court noted that works with “significant transformative elements” were less likely to interfere with economic interests of a rights owner because they did not substitute for the original works. Further, transformative elements or other creative contributions could be found under the right circumstances in many genres, including factual reporting, fictionalized portrayal, heavy–handed lampooning and subtle social criticism. This inquiry was more quantitative than qualitative and asked “whether the literal and imitative or the creative elements predominate in the work.” In particular, was the “product containing a celebrity’s likeness… so transformed that it has become primarily the defendant’s own expression rather than the celebrity’s likeness”? In the case of the Three Stooges t-shirts – a “literal” rendering of the three comedians in which “the marketability and economic value… derives primarily from the fame of the celebrities depicted” — the answer was “no.”
The Hart decision followed much the same path notwithstanding that the product in question was an interactive video game instead of a drawing on a t-shirt.
The Hart Analysis
In applying the Transformative Use Test, the court asked whether Hart’s identity was “sufficiently transformed” in NCAA Football, with the term “identity” encompassing not only his likeness but also his biographical information. It was the combination of those two parts that identified the digital avatar as an “in-game recreation” of the quarterback. Moreover, the avatar “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.” The court concluded: “This is not transformative.”
But what about the users’ ability to alter the avatar’s appearance? Considering that “interactivity is the basis upon which First Amendment protection is granted to video games in the first instance,” would such a feature change the balance? The majority thought not; the interests protected by the right of publicity were still sufficient to surmount First Amendment protections. Moreover, “[i]f the mere presence of the feature were enough, video game companies could commit the most blatant acts of misappropriation only to absolve themselves by including a feature that allows users to modify the digital likenesses.” The decision favorably cited an argument in the amicus brief filed by the Screen Actors Guild: if EA’s application of the transformative test prevailed, then “presumably no infringement would be found if individuals such as the Dalai Lama and the Pope were placed within a violent ‘shoot-em-up’ game” so long as the user “could manipulate their characteristics.”
The court was unmoved by the fact that NCAA Football allows users to “recreate the setting of a bitter defeat and, in effect, achieve some cathartic readjustment of history.” Rather, this feature required realistic representations of the various college teams and individual players, and as the “default position” it supported the conclusion “that realistic depictions of the players are the ‘sum and substance’ of these digital facsimiles.” The ability to modify the avatar, in the majority’s view, “counts for little where the appeal of the game lies in users’ ability to play ‘as, or alongside’ their preferred players or team.” Further, even an avatar with superficial changes counted “as a suitable proxy or market ‘substitute’ for the original” and an avatar with major changes “simply ceases to be” the person on whom it was once based and is irrelevant to the whole inquiry.
Finally, the majority rejected the argument that numerous other creative elements in the NCAA Football video game should make the use of Hart’s identity transformative. As the majority framed it, the issue is how the celebrity’s identity is used in or altered by other aspects of a work; “[w]holly unrelated elements do not bear on this inquiry” including elements of the video game “that are not tied directly to reality.” Otherwise, acts of blatant misappropriation would be redeemed if “the larger work, on balance, contained highly creative elements in great abundance” – particularly in works like video games that “lend themselves to easy partition” with a celebrity’s unaltered identity in one section and a “wholly fanciful creation” in another.
The dissenting judge, Thomas L. Ambro, “[took] the same road but read the signs differently.” He too acknowledged that EA’s key to profitability was the users’ desire to experience a realistic football playing experience and that “most good Rutgers fans” knew that the Rutgers avatar playing quarterback was Hart. He also agreed that the Transformative Use Test was the preferred approach for balancing “the publicity interest in protecting an individual’s right to benefit financially when others use his identifiable persona for their own commercial benefit versus the First Amendment interest in insulating from liability a creator’s decision to interweave real-life figures into his expressive work.” But he took issue with the majority in how the question of transformativeness should be framed. Specifically, Judge Ambro believed that “it is necessary to review the likeness in the context of the work in its entirety, rather than focusing only on the individual’s likeness.”
Looking to Comedy III for support, the dissent noted that the issue in the case was “whether 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” (emphases by Judge Ambro). The key issue for him was whether or not portrayals are “conventional depictions” or contain significant expressive content other than the plaintiff’s mere likeness.
Accordingly, the dissent criticized the majority for “reject[ing] as immaterial the myriad other creative elements of the video game” on the ground that the test was limited to how the celebrity’s identity was used, without considering “the aggregate of many parts (including, here, many individuals).” In Judge Ambro’s view, “[t]he protection afforded by the First Amendment to those who weave celebrities into their creative works and sell those works for profit applies equally to video games” as it does to portrayals (fictional or nonfictional) in movies and books. The key question from the dissent’s perspective is whether the “likeness, as included in the creative composition, has been transformed into something more or different than what it was before,” with the user’s profit “not constitutionally significant, [or] even an appropriate consideration when applying the Transformative Use Test.”
The dissent also observed that in NCAA Football, the avatar representing Hart — along with the rest of a virtual football team – could be directed and manipulated by users in fictional football games. This and many other creative features of the games, like “myriad original graphics, videos, sound effects, and game scenarios,” allowing for the creation of “invented games and seasons” and the users’ “own narratives,” was sufficient transformation to merit First Amendment protection. In addition, “multiple permutations” were available for each virtual player image. All considered, Hart’s likeness was “transformed by the artistry necessary to create a digitally rendered avatar within the imaginative and interactive world EA has placed that avatar.”
According to the dissent, the majority misapplied the Transformative Use Test. Hart’s likeness was merely “one of the ‘raw materials’ from which [the] original work [was] … synthesized,” quoting Comedy III. These were hardly “conventional depictions” like those of the Three Stooges on a t-shirt; rather, they contained “significant expressive content” beyond Hart’s mere likeness. Judge Ambro found EA’s use to be transformative.
In the Hart majority’s application of the Transformative Use Test, the framing of the comparison that tested “transformativeness” and gave publicity rights greater weight than First Amendment-protected expression, was critical – especially in its tight focus on whether or not the plaintiff’s biographical details, appearance, and performance as a quarterback were used without authorization for EA’s profit. The dissent framed the “transformative” comparison more broadly, finding that the plaintiff’s appearance as one element of a complex interactive environment that involved multiple teams, many players and the ability of users to create fictional players in fictional games, was indeed transformative and protected by the First Amendment.
Given that nationally distributed video games have to comply with the law of every federal circuit, this decision has broad ramifications for the use of real persons — including athletes, actors, and musical performers — who appear to do professionally in a virtual environment what they do (or did) in life.
 Zacchini v. Scripps-Howard Broadcasting Co. 433 U.S. 562 (1977).
 No. 11-3750, Opinion filed May 21, 2013. A petition for en banc review was subsequently denied.
 Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989).
 21 P.3d 797 (Cal. 2001).
 As the Hart decision noted, it wasn’t the first case after Comedy III to apply the Transformative Use test in balancing First Amendment rights versus publicity rights in a video game context. In Kirby v. Sega of America, Inc., 50 Cal. Rptr. 3d 607 (Cal. Ct. App. 2006), a video character took a musician’s “signature phrases” and resembled her hair style and clothing choice. The court relied on differences in appearance and movement, however, and rejected the claim. In No Doubt v. Activision Publishing, Inc., 122 Cal. Rptr. 3d 397 (Cal. Ct. App. 2011), a game included “digital recreations of real-life musicians” from the band No Doubt among many “creative elements.” For examples, the avatars could be manipulated to perform at fanciful venues or to sing songs the real band would object to singing. But the court held for the band, emphasizing that the avatars were “literal recreations” and “exact depictions” that performed rock songs — exactly what the real-life band did to achieve and maintain its fame.
 In the No Doubt case, users had no ability to alter the avatars’ appearances.
 NCAA Football 2014, released this month, will be the last to include the NCAA’s name and logo. The organization announced that it would not renew its contract with EA, leaving it to universities to decide whether to permit the video game series to go forward with the use of their football teams.