The Third Circuit Court of Appeals found that a college football player has a right to publicity claim against a video game company who used his likeness in its annual NCAA Football video game. Hart v. Electronic Arts, Inc., Case No. 11-3750 (3d Cir. May 21, 2013) (available here). Ryan Hart sued Electronic Arts, Inc. (“EA”) for violating his right of publicity under New Jersey Law from EA’s alleged use of his likeness and biological information in its NCAA Football series of video games. The lower court granted summary judgment in favor of EA, finding the use protected by the First Amendment. On appeal, the Third Circuit reversed.
Hart played football for Rutgers University for three seasons. As an NCAA athlete, Hart was precluded from monetizing off of his athletic skills. Hart often wore a visor and armband on his left wrist while playing football. His participation in college football, along with his accomplishments, ensured that he would be included in EA’s NCAA Football video games. The game is released annually, and includes rosters of over 100 college teams. Part of the reason why EA’s game is so popular is the realism associated with each annual release: the game’s football player digital avatars resemble their real-life counterparts and share vital statistics.
The Third Circuit began its discussion by stating that video games are protected as expressive speech under the First Amendment. However, this protection can be limited when the game conflicts with other protected rights. EA conceded that it violated Hart’s right of publicity, but argued that its actions are protected by the First Amendment. As a result, the Third Circuit had to balance the right to free expression by EA with Hart’s right of publicity.
First, the Third Circuit examined the relevant interests in protecting freedom of expression as compared to protecting the right of publicity. The Third Circuit noted that freedom of expression benefitted the individual as well as society. The right of publicity has its roots in the right to privacy, and the goal is to protect the property interest that an individual gains and enjoys from his labor and efforts. The Third Circuit had never balanced the two before and therefore turned to approaches of other courts in this case of first impression.
The Third Circuit looked at the three most prominent balancing tests. First, the Third Circuit looked at the commercial-interest-based Predominant Use Test, which Hart argued the Court should adopt. This test states: “If a product is being sold that predominantly exploits the commercial value of an individual’s identity, that product should be held to violate the right of publicity and not be protected by the First Amendment, even if there is some ‘expressive’ content in it that might qualify as ‘speech’ in other circumstances. If, on the other hand, the predominant purpose of the product is to make an expressive comment on or about a celebrity, the expressive values could be given greater weight.” Doe v. TCI Cablevision, 110 S.W.3d 363 (Mo. 2003) (en banc). The Third Circuit declined to adopt this test because “the Predominant Use Test is subjective at best, arbitrary at worst, and in either case calls upon judges to act as both impartial jurists and discerning art critics.” Hart, Slip Op. P. 25.
The Third Circuit next looked at the trademark-based Rogers Test, which looks at the relationship between the celebrity image and the work as a whole. Thus, in this case, EA argued that Hart, as a former college football player, could not meet the requirements of the Rogers Test because Hart’s likeness was used in the game, the game was about college football, and there was no hidden or unrelated advertisements. However, the Third Circuit declined to adopt this test because it would immunize a broad range of tortious activity from liability.
The last test the Third Circuit considered was the copyright-based Transformative Use Test. This test turns on “[w]hether 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. [I]n other words, 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. And when we use the word ‘expression,’ we mean expression of something other than the likeness of the celebrity.” Comedy III Prods., Inc. v. Gary Saderup, Inc., 21 P.3d 797, 808 (Cal. 2001). Thus, the Transformative Use Test requires more than just a trivial variation from the celebrity, the work must create something recognizably unique in order to have legal protection under the First Amendment. The Third Circuit adopted this test because it “effectively restricts right of publicity claims to a very narrow universe of expressive works.” Hart, Slip Op. P. 47.
The Third Circuit had to determine whether Hart’s identity (his likeness and biographical information) was sufficiently transformed in EA’s game to merit protection. The Third Circuit concluded that EA’s digital avatar closely resembled Hart’s physical appearance. The biographical information in EA’s game also accurately tracks Hart’s vital and biographical details. Next, the Third Circuit considered the context within which EA’s digital avatar exists. “The digital Ryan Hart 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. This is not transformative[.]” Hart, Slip Op. P. 53. Finally, the Third Circuit considered the fact that the users of EA’s game had the ability to alter the avatar’s appearance. The Third Circuit noted that appearance alone was insufficient to satisfy the Transformative Use Test because “[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.” Hart, Slip Op. P. 56. EA’s goal was to create a realistic depiction of college football and to capitalize on the respective fan bases for various teams and players. Thus, the Third Circuit discredited the fact that users could alter the avatar’s appearance.
In its conclusion, the Third Circuit held that while EA’s use of Hart’s likeness in the game is protected by the First Amendment. However, Hart’s right of publicity should not have been dismissed on summary judgment.