Prof. Rodney A. Smolla
August 26, 2013

In Hart v. Electronic Arts, Inc.,1 a former Rutgers University football quarterback, Ryan Hart, brought suit against Electronic Arts, Inc., popularly known as EA Sports, for violating his right of publicity under New Jersey law.  In analyzing Ryan’s common-law right of publicity claim, the U.S. Court of Appeals for the Third Circuit borrowed heavily from classic intellectual property principles.

Ryan claimed that the alleged use of his likeness and biographical information in the EA series of NCAA Football videogames violated his right of publicity.  EA in turn claimed that use of Ryan’s likeness was protected by the First Amendment.  The Third Circuit sought to “balance the interests underlying the right to free expression against the interests in protecting the right of publicity.”2

The court noted that as far back as 1907 New Jersey recognized a “property interest” in a person’s name or likeness.3  The court noted that in the seminal New Jersey case of Palmer v. Schonhorn Enters., Inc.,4 the Superior Court of New Jersey articulated “fruits of one’s own industry” theory as undergirding legal protection of the right:

Perhaps the basic and underlying theory is that a person has the right to enjoy the fruits of his own industry free from unjustified interference.  It is unfair that one should be permitted to commercialize or exploit or capitalize upon another’s name, reputation or accomplishments merely because the owner’s accomplishments have been highly publicized.5

“As such,” the court observed, “the goal of maintaining a right of publicity is to protect the property interest that an individual gains and enjoys in his identity through his labor and effort.  Additionally, as with protections for intellectual property, the right of publicity is designed to encourage further development of this property interest.” 6

The Third Circuit identified three different tests that have evolved in the aftermath of Zacchini,7 as courts began developing more systematized balancing tests for resolving conflicts between the right of publicity and the First Amendment: (1) the commercial-interest-based Predominant Use Test; (2) the trademark-based Rogers Test; and (3) the copyright-based Transformative Use Test.8

The Predominant Use test asks whether a product predominantly exploits the commercial value of an individual’s identity:

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.9

The Third Circuit rejected the Predominant Use Test, finding it insufficient to appropriately balance the competing interests.10

The Rogers Test, derived from the trademark case involving Ginger Rogers, Rogers v. Grimaldi,11 looks to the relationship between the celebrity image and the work as a whole.  It treats right of publicity cases as akin to trademark claims because in both instances courts must balance the interests in protecting the relevant property right against the interest in free expression.12

The Third Circuit rejected the Rogers Test:

Ultimately, we find that the Rogers Test does not present the proper analytical approach for cases such as the one at bar.  While the Test may have a use in trademark-like right of publicity cases, it is inapposite here.  We are concerned that this test is a blunt instrument, unfit for widespread application in cases that require a carefully calibrated balancing of two fundamental protections: the right of free expression and the right to control, manage, and profit from one’s own identity.

The potential problem with applying the Rogers Test in this case is demonstrated by the following statement from Appellee’s brief:

“Because, as a former college football player, Hart’s likeness is not ‘wholly unrelated’ to NCAA Football and the game is not a commercial advertisement for some unrelated product, Hart … does not try to meet the … test.”

(Appellee’s Br. at 24.)  Effectively, Appellee argues that Appellant should be unable to assert a claim for appropriating his likeness as a football player precisely because his likeness was used for a game about football.  Adopting this line of reasoning threatens to turn the right of publicity on its head.13

The Third Circuit ultimately adopted the Transformative Use Test, derived from copyright law.  The court in Comedy III Prods., Inc. v. Gary Saderup, Inc.,14 involving the Three Stooges, was the first to import the test from copyright law to the right of publicity.  In Comedy III, the Supreme Court of California dealt with an artist’s production and sale of t-shirts and prints bearing a charcoal drawing of the Three Stooges.  Borrowing from the “first prong” of copyright law’s “fair use” analysis, the court said that the key question is whether the allegedly offending use is “transformative”:

whether the new work merely “supercede[s] the objects” of the original creation, or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is “ transformative.”15

The Third Circuit noted that works containing “significant transformative elements” are less likely to interfere with the economic interests implicated by the right of publicity.16  For example, “works of parody or other distortions of the celebrity figure are not, from the celebrity fan’s viewpoint, good substitutes for conventional depictions of the celebrity and therefore do not generally threaten markets for celebrity memorabilia that the right of publicity is designed to protect.”17  The transformative elements or creative contributions “in a work may include – under the right circumstances – factual reporting, fictionalized portrayal, heavy-handed lampooning, and subtle social criticism.”18  Borrowing from the California Supreme Court, the key is:

[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.  We ask, in 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.19

As the Third Circuit explained, the California Supreme Court concluded that charcoal portraits of the Three Stooges did violate the Stooges’ rights of publicity, holding that the court could “discern no significant transformative or creative contribution” and that “the marketability and economic value of [the work] derives primarily from the fame of the celebrities depicted.”20

Applying the Transformative Use Test to Hart’s claim, the Third Circuit framed the question as whether Ryan Hart’s identity was sufficiently “transformed” in NCAA Football.21  The court found that NCAA Football’s digital avatar closely resembled the genuine article – Ryan Hart.  It matched his hair color, hairstyle, and skin tone, and the avatar’s accessories mimicked those worn by Hart during his time as a Rutgers player.22  The depiction in the game also tracked Hart’s vital biographical details.23  The digital Ryan Hart did what the actual Ryan Hart did, and this was not transformative:

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; the various digitized sights and sounds in the video game do not alter or transform the Appellant’s identity in a significant way. 24

The Third Circuit was nonetheless concerned, however, about the fact that users of the game can transform the avatar’s characteristics.  This feature, arguably, might make the use transformative.  In the end, however, the court was unwilling to treat this feature as a talisman that would save the day for EA.25  Nor was the court willing to import the other creative elements of NCAA Football into the transformative use inquiry regarding Hart’s avatar, stating that “[w]holly unrelated elements do not bear on this inquiry.”26  To hold otherwise, the court reasoned, “could have deleterious consequences, for ‘[a]cts of blatant misappropriation’ would count for nothing so long as the larger work, on balance, contained highly creative elements in great abundance.” 27  This concern is particularly apt for videogames, the court reasoned: “It cannot be that content creators escape liability for a work that uses a celebrity’s unaltered identity in one section but that contains a wholly fanciful creation in the other, larger section.28

The court concluded that the NCAA Football EA videogames did not sufficiently transform Ryan Hart’s identity to escape Hart’s right of publicity claim, and remanded to the trial court, reversing its grant of summary judgment.29