Stacy Allen Speaks

Stacy Allen Speaks Monetizing A Virtual Identity

If good facts make bad law and a sympathetic plaintiff is worth more than good law on point, then the case of Keller v. Electronic Arts, now on appeal before the Ninth Circuit, may well extend the nebulous "right of publicity" into the interactive digital ether. For nothing has done more to advance the development of the right of publicity doctrine, which purports to protect against the uncompensated commercial exploitation of one's likeness or identity by another, than the seeming inequity resulting from trading on a sports star's persona for profit (and without payment to the non-consenting celebrity). Indeed, the first case to recognize a right of publicity in 1953 (Haelan Laboratories, Inc. v. Topps Chewing Gum, Inc.) involved the "publicity value" of star athletes' pictures on baseball cards.

Fast forward to Keller v. Electronic Arts, Inc., a class action in which former Arizona State quarterback Sam Keller has sued video game publisher Electronic Arts and the NCAA among others, claiming that his unique athletic image and those of other college athletes are portrayed in EA's popular NCAA football and basketball video games, without compensation to him and his fellow players. According to Keller, EA has done little to conceal its misappropriation, making its virtual players as much like the real players as possible -- right down to their height, weight, jersey numbers, home states, and even their signature playing styles. Keller also points to an ironic double standard, with the NCAA licensing EA's reproduction of college team logos, uniforms, mascots and the like on the one hand, and adopting rules prohibiting paid endorsements by amateur college athletes on the other.

In denying EA's motion to dismiss the case last year, the presiding federal district judge ruled that EA had not sufficiently transformed the athletes' images into a creative work worthy of First Amendment protection. Under the "transformative use" test, a work is protected by the First Amendment if it contains significant transformative elements or has value that does not derive primarily from the celebrity's fame; put differently, the product must be so transformative that it has become primarily the defendant's own expression rather than the celebrity's likeness. The transformative use defense has its origins in copyright's fair use defense.

On appeal, EA argues that the lower court blew the call by focusing only on the similarities between Keller and his virtual counterpart and not the game as a whole, which EA insists qualifies as a creative work. In doing so, EA likens its alleged incorporation of sports stars into its game with Simon and Garfunkel's reference to sports icon Joe DiMaggio in their hit song "Mrs. Robinson." Keller counters that commercial gain, not artistic expression, was EA's sole motivation for making its virtual characters virtually indistinguishable from the real life stars they are based on. These competing contentions demonstrate how blurred the lines between the right to publicity, copyright law, and the right to free speech have become.

Given the stakes involved, it is no surprise that dozens of interested bystanders have weighed in as amicus supporters for each side. Media companies like ESPN, Viacom, and newspaper and video game publishers have sided with EA, while the Screen Actors Guild and professional players' unions – including the NFL Players Association, which is itself reported to have a lucrative licensing deal with EA for use of its members' names and likenesses in EA's popular Madden NFL video game – have lined up in Keller's corner.

Like other "new media," interactive gaming did not exist when the contours of the right of publicity were first outlined, leaving creative lawyers room to argue for expansion or limitation of the doctrine. Significantly, the United States Supreme Court has remained mostly on the sidelines, having issued only one decision on the right of publicity in 1977, in which it ruled in favor of the original "human cannonball," Hugo Zacchini, in his suit against a television station which aired footage of his circus act without his consent. Some have suggested that the time for further guidance is overdue, and the Roberts Court has shown a keen interest in First Amendment cases. Could the inevitable writ for certiorari by the loser in Keller be the opportunity that the High Court has been waiting for?

— Stacy Allen is a partner at Jackson Walker. He can be reached at stacyallen@jw.com.