On Sept. 9, 2011, Judge Freda Wolfson of the United States District Court for the District of New Jersey granted summary judgment for Electronic Arts ("EA") on the claims of a putative class of NCAA football players that EA had misappropriated their likeness and identity under New Jersey law by featuring them in its NCAA Football video games. Hart v. Electronic Arts, Inc., 2011 WL 4005350 (D.N.J. Sept. 9, 2011)

The Court held that EA's First Amendment right to free expression outweighed the plaintiff's right of publicity under either the "transformative use" test developed by California state courts or the "Rogers" test developed by the 2nd Circuit in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989).

Judge Wolfson's thorough and scholarly opinion is a significant contribution to the law on the interplay between the First Amendment and the right of publicity. Of particular note, the decision places great emphasis on the interactivity of EA's video games in finding them protected by the First Amendment. Judge Wolfson's decision is also noteworthy because it stands in sharp contrast to the decision in Keller v. Electronic Arts, Inc., No. C 09-1967, 2010 WL 530108 (N.D. Cal. Feb. 6, 2010), appeal pending (No. 10-15387). Both decisions apply the transformative use test to the same NCAA Football game series and reach conflicting results. The Hart decision could inform the pending 9th Circuit appeal of Keller.

Factual Background

Plaintiff Ryan Hart, a former quarterback for Rutgers University, originally brought suit in New Jersey state court on behalf of himself and others similarly situated alleging, inter alia, that EA had violated his right of publicity by misappropriating his likeness as a virtual player in four editions of EA's NCAA Football video game. After EA removed the case to federal court, it moved to dismiss. Judge Wolfson granted the motion, but gave Hart leave to file an amended complaint to allege additional facts in support of his right of publicity claim.

The amended complaint alleged that EA misappropriated Hart's likeness by including in several editions of the game a virtual Rutgers player from his home state, bearing his jersey number, incorporating his physical attributes (height, weight, hair color and style) and equipment preferences (wrist band, helmet visor), as well as his skills (speed and agility rating and passing accuracy – all derived from his published season statistics). Hart alleged that the games' commercial value derived from the wholesale appropriation of the individual players' identity and the resulting "realism" of the games. Hart further argued that the use of his photograph in a photo montage inside the 2009 edition of the game constituted an unauthorized promotional use of his image.

Solely for purposes of its summary judgment motion, EA conceded that it used Hart's likeness within certain versions of NCAA Football. It argued, however, that as expressive speech, the games should be afforded full First Amendment protection, which here outweighed the plaintiff's publicity interests. The Court agreed and granted summary judgment dismissing Hart's claims.

First Amendment Protection for Video Games

Judge Wolfson began her analysis with the foundational point that video games are entitled to First Amendment protection. Here, the United States Supreme Court's recent decision in Brown v. Entertainment Merchants Association, 131 S.Ct. 2729 (2011), provided ready support:

Like the protected books, plays, and movies that preceded them, video games communicate ideas – and even social messages – through many familiar literary devices (such as characters, dialogue, plot, and music) and through features distinctive to the medium (such as the player's interaction with the virtual world). That suffices to confer First Amendment protection.

Hart, 2011 WL 4005350, at *7 (quoting Brown, 131 S.Ct. at 2733).

Judge Wolfson then analyzed the distinction between commercial and expressive speech, easily concluding the NCAA Football games were not commercial speech under the three-part test used in the 3rd Circuit. Id. at *9.  Contrasting EA's video games with the "infomercial" at issue in Facenda v. N.F.L. Films, Inc., 542 F.3d 1007 (3d Cir. 2008), the court explained:  "Here . . . the speech is the video game that is being sold. It is not a separate instance of speech that promotes the purchase of another work." Id. (emphasis in original). Judge Wolfson also found that the alleged use of Hart's photograph in a photo montage inside NCAA Football 2009 did not constitute promotion or advertising "because this photograph is part of the video game itself, the commercial transaction has already taken place." Id. at *10.

To determine whether the First Amendment trumped Hart's New Jersey common law right of publicity, the Court examined the origin and development of the right of publicity, New Jersey's adoption of the Restatement (Second) of Torts, the shift from a right-of-privacy-based tort to a property-based one, and the history of the application of the First Amendment to the right of publicity, leading to the various tests that courts have employed across the country to balance those competing interests. The primary tests, and those examined at length by Judge Wolfson, are the transformative use test, urged by Hart in his papers, and the Rogers test, advocated by EA, and it is here that the decision makes its greatest contribution to this area of the law. Although expressing a preference for the transformative test because "it best encapsulates the type of nuanced analysis required to properly balance the competing . . . interest[s]," Id. at *30, the Court found that EA prevailed under either test.

Transformative Use

The Court explained that the transformative test, which has its origins in the fair use analysis of copyright law, looks to the extent that the likeness has been transformed by expressive changes or additions in the new work, or, in the words of the California Supreme Court, whether "the celebrity likeness is one of the 'raw materials' from which an original work is synthesized, or whether the depiction of the celebrity is the very sum and substance of the work in question." Comedy III Productions, Inc. v. Gary Saderup, Inc., 25 Cal. 4th 387, 406 (2001). Reviewing recent cases applying the transformative use test, including to video games, the Court concluded that EA's use of plaintiff's likeness was sufficiently transformative to enjoy First Amendment protection.

Notably, the Court did not focus on the NCAA Football's representation of Hart in isolation. The Court concluded that, "viewed as a whole," EA's video games contain "sufficient elements of EA's own expression . . .[to] justify the conclusion that its use of Hart's image is transformative." Id. at 21. Here, Judge Wolfson cited the multitude of creative elements in the video games beyond Hart's image, including "virtual stadiums, athletes, coaches, fans, sound effects, music, and commentary, all of which are created or compiled by the games' designers." Id. (quoting Brown v. Electronic Arts, Inc., No. 2-09-cv-01598, slip op. at 7 (C.D. Cal. Sept. 23, 2009)).

Judge Wolfson then determined that, even focusing on Hart's virtual image alone, NCAA Football is transformative. Here, the court emphasized the interactive features of the game. For instance, Judge Wolfson noted that the "the game permits users to alter Hart's virtual player, control the player's throw distance and accuracy, change the team of which the player is a part . . ., or engage in _Dynasty' mode, in which the user incorporates players from historical teams into game play." Id. at *22. Amusingly, the Court noted that its own review of the game revealed eight hairstyle options that can be morphed onto a player's image: "fade 1, fade 2, close crop, buzzout 1, buzzout 2, afro, balding 1, and balding 2." Id. (Who knew you needed two variations on bald?) Speaking more generally, the court explained:

To be clear, it is not the user's alteration of Hart's image that is critical. What matters for my analysis of EA's First Amendment right is that EA created the mechanism by which the virtual player may be altered, as well as the multiple permutations available for each virtual player image. Id. at *22.

The Court rejected the notion that using Hart's unaltered image as the starting point for the virtual player rendered the use non-transformative, indicating that this argument "fails to fully take into account the distinctive interactive nature of video games." Id. Harkening back to the above-quoted language from Brown v. Entertainment Merchants Association, the Court explained that "[t]his language from Brown recognizes that a user's interaction with a video game is one of the means by which video games communicate ideas and social messages" and added that denying EA protection "would not give due accord to this expressive aspect of video games." Id.

It was the strong interactive element in EA's games that enabled the Court to distinguish a recent California decision, No Doubt v. Activision, Inc., 192 Cal. App.4th 1018 (2011), which held that the Band Hero video game was not sufficiently transformative because it included computer-generated avatars designed to look identical to the members of the band No Doubt and did not permit players to alter the avatars. Id. at 20.

In contrast to its distinguishing of No Doubt, Judge Wolfson confronted directly a federal district court's contrary holding in Keller v. Electronic Arts, Inc.supra, a putative class action involving the same series of EA video games. There, denying EA's motion to dismiss under California's anti-SLAPP statute, the district court for the Northern District of California held that NCAA Football was not sufficiently transformative because it did not "depict [the plaintiff] in a different form" and "the game's setting is identical to where the public found [the plaintiff] during his collegiate career: on the football field." Keller, 2010 WL 530108, at *5. Judge Wolfson criticized the Keller court's failure to take into account the expressive nature of the interactive features of the game and its overly narrow focus on the alleged likeness alone instead of the game as a whole. "[I]n my view, it is logically inconsistent to consider the setting in which the character sits, which Keller does in its analysis, yet ignore the remainder of the game." Id. at 24.

The Rogers Test

Finally, Judge Wolfson turned to the "Rogers" test, developed by the 2nd Circuit and adopted by numerous courts across the country in both Lanham Act "false endorsement" and right of publicity claims. Under Rogers, the First Amendment bars right of publicity claims arising from the use of a plaintiff's name or likeness in an expressive work, unless the use is "wholly unrelated" to the work or is "simply a disguised commercial advertisement for the sale of goods or services." 875 F.2d at 1004. Although Judge Wolfson praised the clarity of its application, she questioned whether a test derived from trademark law was properly applicable to a right of publicity claim and whether it struck the right balance between the competing interests. See Hart, 2011 WL 4005350, at *26-29. Nonetheless, applying the test to the facts at issue, the Court easily concluded that Hart's image was not wholly unrelated to NCAA Football, nor was its incorporation into the game a "disguised commercial advertisement" indicating his endorsement or creative input. Summary judgment was therefore appropriate under this test as well.

Key Takeaways

As noted, Judge Wolfson's thorough and scholarly opinion will likely have a significant impact on future cases involving the intersection between the First Amendment and rights of publicity.

First, this is a big victory for video game developers. Close on the heels of the Supreme Court's decision in Brown v. Entertainment Merchants Association, a federal district court has extended robust First Amendment protection for video games beyond the specific context of statutes targeting violent video games. While the Court did not apply strict scrutiny as in Brown, the basic recognition that video games are expressive works entitled to protection comes through clearly in this opinion. The court's emphasis on the interactive features of EA's games is also good news for video game developers and others interested working in "new media," where user interaction and incorporation of usergenerated content is becoming more-and-more the norm.

Second, Judge Wolfson's may be influential in convincing future courts outside of California to adopt the transformative use test. While the Court analyzed the facts under both tests, the Court's clear preference was for the transformative use test and its skepticism about the link between trademark law and rights of publicity could discourage future courts from adopting the Rogers test. This preference appears based on the assumptions that there are "common underlying principles shared by the right of publicity and copyright doctrine," Hart, 2011 WL 4005350, at *14, and that "right of publicity claims do not embody the same likelihood-of-confusion concerns" that the Lanham Act is designed to address, id. at *28. While fully addressing this point is beyond the scope of this short article, it is worth noting that these assumptions are very much open to question. In the Keller appeal, a coalition of media organizations submitted an amicus brief that argues persuasively that rights of publicity and copyright law are not actually analogous, that borrowing from copyright law is premised on a misreading of Zacchini v. Scripps-Howard Broad., 433 U.S. 562 (1977), and that trademark law and right of publicity are in fact closer cousins in the field of intellectual property because they both are concerned with the misuse of names, titles, and brands. See generally Brief Amicus Curiae in Support of Appellants by Advance Publications et al., No. 10-15387, Docket # 26-2 (Sept. 7, 2010).

Third, it is important to remember that the transformative use test is one of a series of First Amendment-related tests used by California courts in right of publicity cases, and was developed specifically to deal with visual depictions of celebrities. As such, it does not necessarily provide a good across-the-board test for balancing First Amendment rights against rights of publicity. In particular, the transformative use test makes an awkward fit for other types of expressive works like biographies, docudramas, and reality TV, where interactivity is not an option and where the creator's intention may well be to represent a famous person in his or her real-life context. Despite Judge Wolfson's helpful determination that courts should look at the creative expression in a work as a whole rather than the celebrity's image in isolation, there remains a risk that courts will continue to impose a requirement of physical transformation of the celebrity's image or placement of the celebrity in a counter-factual setting, based on a reading of cases like Kirby v. Sega of America, Inc., 144 Cal. App. 4th 47 (Cal. App. 2006), and No Doubt v. Activision, Inc., 192 Cal. App.4th 1018 (2011).

Judge Wolfson herself felt obliged to thread a needle between these two cases, stating that this case presented a "closer call" than either of them. Hart, 2011 WL 4005350, at *20. In the same vein, Judge Wolfson expressly warned future game developers in dicta: "a game developer that bases its work on real players in the context of the games that bring them notoriety . . . may walk a fine line between using reality as a building block for the developer's own creative work and exploiting the hard-earned reputation of college players for its own profit," Id. at *20 (emphasis added).

Any across-the-board test for balancing First Amendment and publicity rights has to take into account the strong First Amendment and public interests in creation of expressive works that depict real-life individuals in their real-life contexts, something current readings of the transformative use test – at least in the context of video games – still fail to accomplish. This is one of the strengths of the Rogers test, in that it looks primarily to artistic relevance and does not get caught up in the need to "transform" the celebrity's name or likeness, something that may continue to trip up future courts applying the transformative use test.

In the New Jersey action, Electronic Arts is represented by Elizabeth McNamara, Chris Robinson, and Sam Bayard from Davis Wright Tremaine LLP, and Bruce Rosen from McCusker, Anselmi, Rosen & Carvelli, P.C. EA is represented in the 9th Circuit appeal of the Keller decision by Davis Wright Tremaine's Kelli Sager, Al Wickers, Karen Henry, and Lisa Kohn, and Robert A. Van Nest, Steven A. Hirsch, and R. James Slaughter of Keker & Van Nest, LLP.