RIGHT OF PUBLICITY
right of publicity case law and the balancing test that courts apply. T is article will focus on the most recent
three cases dealing with athletes depicted in sports video games. T ese cases, brought against Electronic Arts (EA) for allegedly violating the athletes’ right of publicity, have pushed and developed the balancing tests that courts use in such cases.
Brown v EA In Brown v EA, from July 31, 2013, National Football League (NFL) great Jim Brown asserted that EA used his likeness in several versions of its popular video game Madden NFL. Brown, as a retired player, was not covered by the licensing agreements EA had signed with the NFL and the NFL Players Association, and as a result did not receive compensation for the use of his likeness. Brown did not assert his right of publicity; instead, he asserted Lanham Act trademark claims. T e US Court of Appeals for the Ninth
Circuit applied the ‘Rogers’ test. Under this test, liability will not be found under the Lanham Act “unless the [use of the trademark or other identifying material] has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the [use of trademark or other identifying material] explicitly misleads as to the source or the content of the work”. T is test was fi rst established in the case of Rogers v Grimaldi, which the US Court of Appeals for the Second Circuit ruled on in 1989. Ginger Rogers, the late actress, fi led suit against the producers and distributors of Ginger and Fred, a fi lm that allegedly infringed her right of publicity and confused consumers, in violation of the Lanham Act. Despite its title, the movie was not about either Rogers
the title clearly related to the content of
or late actor Fred Astaire. T e court dismissed the claim because the
movie and was not a disguised advertisement for the sale of goods and services or a collateral commercial product. In Brown, the ninth circuit held that because video games were expressive works, the district court correctly applied the Rogers test. Applying this test, the court concluded that Brown’s likeness was artistically relevant to the games and that there were no facts to support the claim that EA explicitly misled consumers about Brown’s involvement in the games. T e court reasoned that the public interest in free expression outweighed the public interest in avoiding consumer confusion.
www.worldipreview.com what
“BROWN’S LIKENESS WAS ARTISTICALLY RELEVANT TO THE GAMES AND THERE WERE NO FACTS TO SUPPORT THE CLAIM THAT EA EXPLICITLY MISLED CONSUMERS ABOUT BROWN’S INVOLVEMENT IN THE GAMES.”
T e two cases that came aſt er the Brown
decision applied a diff erent analysis because they were based on rights of publicity instead of the Lanham Act. T e courts in these college sports cases applied the transformative use test instead of the author-friendly Rogers test.
Hart v EA T e fi rst such case was Hart v EA, decided by the US Court of Appeals for the T ird Circuit in May 2013, when Ryan Hart sued EA for allegedly violating his right of publicity under New Jersey law. Hart was a quarterback at Rutgers University. EA’s popular NCAA Football video game featured a Rutgers quarterback with
the
same number, same height, weight, throwing distance, and physical appearance as Hart in its 2006 version of the game. Because of National Collegiate Athletic Association (NCAA) rules preventing student athletes from earning money from merchandising or sport-related commercial deals, EA did not sign any licensing deals with any college players. In this case, the third circuit chose to apply
the transformative use test, which is rooted in copyright law. Under this test, a court examines “whether the product containing a celebrity’s likeness is so transformed that it has become primarily the defendant’s own expression rather than the celebrity’s likeness”. T is test fi nds its roots in the Comedy III
Productions v Gary Saderup case, which looked at a defendant’s unadorned drawings of
comedy act T e T ree Stooges and whether those drawings manifested the artist’s skill and talent or whether they exploited the plaintiff ’s rights in order to achieve fame. Applying the transformative use test to the
facts in Hart, the court concluded that EA failed the test because the digital Hart was doing
the
Roxana Sullivan is an attorney at law at Dennemeyer & Associates. Her experience covers trademark and copyright prosecution, licensing, business-related agreements, and internet/e-commerce issues. She can be contacted at:
rsullivan@dennemeyer-law.com
the actual Hart did—that is, he played
college football. In an analysis similar to the one applied in another video game case, No Doubt v Activision, the court ruled that while the game allowed users to literally transform (ie, modify the Hart avatar), that was insuffi cient to satisfy the transformative use test.
Keller v EA T e second college sports case was Keller v EA, ruled on in July 2013 by the ninth circuit. In a case very similar to Hart, Samuel Keller accused EA of violating his right of publicity under California Civil Code 3344 and California common law by using his likeness as part of the NCAA Football video game series. T e ninth
circuit also applied the
transformative use test to balance Keller’s right of publicity with EA’s First Amendment rights. Under this test, the court held that EA’s use did not qualify for First Amendment protection as a matter of law because it literally recreated Keller “in the very setting in which he had achieved renown”. Based on the EA cases, it seems that courts
may have shiſt ed towards the plaintiff s and against the defendants in video game disputes. However, those cases also presented sympathetic plaintiff s, ones who had worked hard to become excellent athletes but were not compensated under the NCAA student-athlete system. T e growing criticism of that system for allegedly exploiting student athletes may have created a bad environment for EA’s defence. It will be interesting to see whether courts
will revert to being more sympathetic to authors when the plaintiff s are less sympathetic, or as more video games come over the horizon.
World Intellectual Property Review Annual 2015
61
Page 1 |
Page 2 |
Page 3 |
Page 4 |
Page 5 |
Page 6 |
Page 7 |
Page 8 |
Page 9 |
Page 10 |
Page 11 |
Page 12 |
Page 13 |
Page 14 |
Page 15 |
Page 16 |
Page 17 |
Page 18 |
Page 19 |
Page 20 |
Page 21 |
Page 22 |
Page 23 |
Page 24 |
Page 25 |
Page 26 |
Page 27 |
Page 28 |
Page 29 |
Page 30 |
Page 31 |
Page 32 |
Page 33 |
Page 34 |
Page 35 |
Page 36 |
Page 37 |
Page 38 |
Page 39 |
Page 40 |
Page 41 |
Page 42 |
Page 43 |
Page 44 |
Page 45 |
Page 46 |
Page 47 |
Page 48 |
Page 49 |
Page 50 |
Page 51 |
Page 52 |
Page 53 |
Page 54 |
Page 55 |
Page 56 |
Page 57 |
Page 58 |
Page 59 |
Page 60 |
Page 61 |
Page 62 |
Page 63 |
Page 64 |
Page 65 |
Page 66 |
Page 67 |
Page 68 |
Page 69 |
Page 70 |
Page 71 |
Page 72 |
Page 73 |
Page 74 |
Page 75 |
Page 76 |
Page 77 |
Page 78 |
Page 79 |
Page 80 |
Page 81 |
Page 82 |
Page 83 |
Page 84 |
Page 85 |
Page 86 |
Page 87 |
Page 88 |
Page 89 |
Page 90 |
Page 91 |
Page 92 |
Page 93 |
Page 94 |
Page 95 |
Page 96 |
Page 97 |
Page 98 |
Page 99 |
Page 100 |
Page 101 |
Page 102 |
Page 103 |
Page 104 |
Page 105 |
Page 106 |
Page 107 |
Page 108 |
Page 109 |
Page 110 |
Page 111 |
Page 112 |
Page 113 |
Page 114 |
Page 115 |
Page 116 |
Page 117 |
Page 118 |
Page 119 |
Page 120 |
Page 121 |
Page 122 |
Page 123 |
Page 124 |
Page 125 |
Page 126 |
Page 127 |
Page 128 |
Page 129 |
Page 130 |
Page 131 |
Page 132 |
Page 133 |
Page 134 |
Page 135 |
Page 136 |
Page 137 |
Page 138 |
Page 139 |
Page 140