Sports Stars Take on Video Game Makers: Right of Publicity or First Amendment? The Supreme Court May Decide

The "right of publicity" tort, which exists in many states, generally accords persons an economic right in their names and likenesses, so they may "profit from the full commercial value of their identities." Cardtoons, L.C. v. Major League Baseball Players Ass'n, 95 F.3d 959, 968 (10th Cir. 1996). Similarly, the federal Lanham Act provides a private right of action to prevent false endorsements or affiliations. 15 U.S.C. §1125(a)(1).  Cases alleging one or both of these theories are frequently brought by celebrities seeking compensation for unauthorized use of their image, voice, or identifying characteristics. In a recent high-water mark for right of publicity cases, Michael Jordan won an $8.9 million judgment against a grocery chain that used an image of his jersey in an ad it placed in a commemorative issue of Sports Illustrated, published for Jordan's induction into the Basketball Hall of Fame.

These types of cases have mushroomed in recent years and represent a serious risk for marketers and creators of content. The phenomenon is driven by changing technology and the muddled and confused state of the law. 

Social media has enabled marketers to co-opt celebrity news and sightings in nearly real-time, and video game makers can create remarkable likenesses of real people to use as in-game avatars. Celebrity management teams now regularly use sophisticated online monitoring tools to patrol the Internet for unauthorized uses of their client's names and likenesses. In a world where Kim Kardashian is reportedly paid $10,000 for a single, 140-character Tweet, it is no wonder that celebrities have become quick to demand compensation or takedown whenever they detect the unauthorized use of their identity.

The development of legal theories governing right of publicity has not kept pace with technology, however. There is a significant legal conflict among jurisdictions that leads to what appear to be contradictory outcomes on similar fact patterns, based mainly on where the plaintiff brings suit. As we discuss below, the United States Supreme Court may have the opportunity to clear up some of this confusion if it grants certiorari in Davis, et al. v. Electronic Arts, Inc., 775 F.3d 1172 (9th Cir. 2015).   

Davis is the latest in a line of influential right of publicity decisions arising out of the use of famous sports personalities in video games. The first such case,  Facenda v. NFL Films, Inc., 542 F.3d 1007 (3d Cir. 2008),  involved the allegedly unauthorized use of audio clips recorded by John Facenda, the famous "voice of god" NFL Films announcer. After Facenda died, NFL Films developed a half-hour promotional "documentary" about the making of the Madden NFL video game. The documentary used several stirring voice clips that had been recorded by Facenda many years earlier. When these clips appeared in the documentary, however, Facenda's estate sued, arguing that he had never given NFL Films the right to use his famous voice (or the clips) to promote a video game. In a decision rejecting NFL Films' motion for summary judgment, the court held that the documentary was essentially commercial in nature (akin to an "infomercial") and that Facenda's right of publicity claim was neither barred by the First Amendment nor preempted by the Copyright Act. 

Five years later, the Madden video game franchise continued to generate right of publicity challenges. In Keller v. Electronic Arts, Inc., 724 F.3d 1268 (9th Cir. 2013), the Ninth Circuit held that EA's unauthorized use of a former college football player's likeness in the NCAA Football series of video games was not, as a matter of law, protected by the First Amendment. Applying the "transformative use" test set forth by the California Supreme Court in Comedy III Products v. Gary Saderup, Inc., 106 Cal. 2d, 126 (2001), the court concluded that the video game did not contain significant transformative elements not otherwise "derive[d] primarily from the celebrity's fame." According to the California Supreme Court in Saderup, the right of publicity clearly protects against uses that appropriate "the very activity by which the entertainer acquired his reputation in the first place." Building on this theme, the Keller court set forth "a balancing test between the First Amendment and the right of publicity based on whether the work in question adds significant creative elements so as to be transformed into something more than a mere celebrity likeness or imitation." 

While Keller involved a state law right of publicity claim, Brown v. Electronic Arts, Inc., 742 F.3d 1235 (9th Cir. 2013), involved a related allegation under the Lanham Act for false affiliation or endorsement.  There, the result was different.  In Brown, the Ninth Circuit held that the unauthorized use of legendary football player Jim Brown's likeness in a video game was protected from a Lanham Act claim as an "expressive use" under the First Amendment.   

Like Brown and Keller, the recent case in which certiorari is sought -- Davis, et al. v. Electronic Arts, Inc.-- involves the uncompensated use by EA of the identities (although not names) of recognizable former football stars in "historical" teams that users of the game can play. For example, one of the plaintiffs is Vince Ferragamo, the quarterback for the LA Rams in 1979. According to the court's opinion, Ferragamo can clearly be recognized as an avatar in the game: the animation looks like him, and he is described within the game as having the same height, weight, and statistics that the actual Ferragamo did in his playing days. As in Keller, the court held that EA's use of retired players' images in this manner was neither expressive nor transformative, and that the First Amendment does not bar state law right of publicity torts.

The dividing line between "expressive" speech protected by the First Amendment and the right of publicity created by state law (as well as the similar protection against false endorsement and affiliation under the Lanham Act) remains muddled. The primary uncertainty involves the degree to which such claims are barred by the First Amendment where the celebrity's persona is used in works that are arguably expressive, even if they also have some commercial purpose. The "transformative use" test articulated in cases like Davis and Keller seems to require judges to assess the creativity inherent in each use of a celebrity image, a subjective exercise that places fundamental Constitutional rights in a tenuous position.

At present, there appear to be at least three different tests in the Circuits for determining the viability of right of publicity claims against First Amendment arguments. There is the Ninth Circuit's "transformative use" test set forth in Davis and Keller. There is the Second Circuit's so-called "relatedness test," under which the courts attempt to determine whether the use of the celebrity's likeness is (1) "'wholly unrelated' to the individual" or (2) a "disguised advertisement for the sale of goods or services or a collateral commercial product." See Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). And there is balancing test in use in three other circuits that weighs the magnitude of the speech restriction against the asserted governmental interest in protecting the intellectual property right. See Cardtoons, L.C. v. Major League Baseball Players Assoc., 95 F.3d 959 (10th Cir. 1996).

While the Supreme Court decides whether to take the Davis case and reconcile the apparent conflicts, an amicus brief by 31 professors of Constitutional Law makes a compelling argument for why it should:

"[S]ay you want to create a computer sports game that includes players based on real athletes. The Eighth Circuit said this is just fine, when athletes' names and statistics were used in an online fantasy sports game. C.B.C. Dist. & Mktg., Inc. v. Major League Baseball Advanced Media, L.P., 505 F.3d 818 (8th Cir. 2007). The Third and Ninth Circuits said no, when athletes' general body types, team affiliations, and player numbers were used in sports video games. But the First Amendment draws no distinctions be-tween fantasy sports games and video sports games."

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"This is the sort of uncertainty that leads speakers to "steer far wide[] of the unlawful zone" and change their speech to avoid risking ruinous litigation—even when most courts would see their speech as constitutionally protected."

The Professors got it right. On almost a daily basis, we are asked to advise our clients about right of publicity issues. We typically caution them against assuming that even oblique references to third-party celebrities in their advertising will go unchallenged. We remind them that deep-pocketed advertisers face substantial risk if they fail to steer far wide of this "unlawful zone." In practice, unfortunately, speech and creativity often take a back seat to fear of litigation.

The Court has already delayed its decision on the petition for certiorari in Davis. If it accepts the case, it will have the opportunity to clarify the scope of these rights nationally, which could, in turn, have a major impact on the value of celebrity rights and on the compensation models used in the advertising industry.

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Other Articles in This Month's Edition:

• Sluggers Hit News Network with Defamation Suit Over Reports of Performance-Enhancing Drugs
• Spurned St. Louis Rams Fans Sue L.A.-Bound Team for Deceptive Marketing
• Battling Counterfeits: Supply Chain Management and Regulatory Tools Help Protect against Harmful Counterfeit Products
• Hoverboards: Gliding Toward Oblivion?
• Supreme Court Limits Effect of Rule 68 for Class Actions in Campbell-Ewald
• Advertisers in the Ring — A Roundup of This Month's Competitor Advertising Challenges: Resolve to Watch the Scope of Claims — and NAD Jurisdiction

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