Stacy Allen Speaks

Stacy Allen Speaks First Amendment v. Right of Publicity: Game On

Last year, I wrote about the federal district court opinion in Keller v. Electronic Arts, 2010 WL 530108 (N.D.Cal.), in which former Arizona State quarterback Sam Keller's class action against video game publisher Electronic Arts ("EA") survived a motion to dismiss. Keller alleged that EA's popular college football video game, which included a virtual quarterback identical to himself in every way but name, violated his "right of publicity" (which purports to protect against the uncompensated commercial exploitation of one's likeness or identity by another). EA's appeal to the Ninth Circuit, pending for over a year, remains undecided. Not content to wait, a New Jersey federal court in Hart v. Electronic Arts, 2011 WL 4005350 (D.N.J.) recently evened the score by ruling against another former college quarterback on virtually identical facts, finding that EA's First Amendment right of expression shields the company from right of publicity liability.

The video game at issue in Hart is the same as in Keller: EA's NCAA Football, which includes what Hart contends is a virtual player indistinguishable from himself -- right down to his home state, height, weight, jersey number (13), left wrist band, helmet visor, speed and agility rating, passing accuracy and arm strength. Hart asserts that the uncanny similarity is no accident, but part of EA's effort to make the game as realistic as possible, allowing consumers "to simulate the college football playing experience by stepping into the shoes of Rutgers' QB Ryan Hart, and other college football players," without compensation to Hart or the other players. EA conceded that Hart's class action complaint stated a prima facie right of publicity claim under New Jersey law, but argued that the First Amendment protected its game as an expressive work.

District Judge Wolfson began by noting that the U.S. Supreme Court has already ruled that video games are entitled to First Amendment protection. Judge Wolfson then determined that NCAA Football is not commercial speech (for which less First Amendment protection is afforded), observing that "[h]ere,… the speech is the video game that is being sold" and not a separate instance of speech promoting purchase of the game. The court then applied two tests adopted in prior cases to determine whether NCAA Football was an expressive work for which the First Amendment's protections trumped Hart's right of publicity claim.

Under the so-called "transformative use" test developed by California courts, 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 work must be so transformative that it has become primarily the defendant's own expression rather than the celebrity's likeness. The test has its origins in copyright's fair use defense. Conceding that the facts here were "problematic" for EA, Judge Wolfson nonetheless held that NCAA Football satisfied the transformative use test. In doing so, the court found it significant that the physical characteristics of Hart's avatar could be altered by players of the interactive game, which itself contains countless other details about the real world teams portrayed (uniforms, stadiums, coaches, fans, fight songs, cheerleaders) separate and apart from those concerning Hart and other players. Judge Wolfson specifically disagreed with the Keller court's approach "of focusing solely on the challenged image, as opposed to the work as a whole."

The Hart court then turned to the Second Circuit's Rogers test, which has its roots in trademark law concerning misappropriation and false advertising. As applied in the right of publicity context, the Rogers test asks "(a) whether the challenged work is wholly unrelated to the underlying work; or (b) whether the use of the plaintiff's name is a disguised commercial advertisement." Judge Wolfson found that "[o]ne cannot reasonably argue that Hart's image is wholly unrelated" to a game "which is set on a college football field and revolves around the playing of virtual football." Nor, the court held, was the use of Hart's image a disguised advertisement. "Instead, the use of his image is part of an expressive act by EA that might draw upon public familiarity with Hart's college football career but does not explicitly state that he endorses or contributes to the creation of the game." Summary judgment in favor of EA was granted; Hart has appealed to the Third Circuit.

Whether the Ninth Circuit will be influenced by Judge Wolfson's opinion remains anyone's guess, but a split between the Third and Ninth Circuits could ultimately cast the U.S. Supreme Court in the role of referee in a right of publicity case for first time in over 30 years.

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