Reposted from DLA Piper’s Sports, Media and Entertainment Blog

By Frank Ryan, Richard Flaggert, Matthew Ganas and Rebecca Smock

On May 21, 2013, the US Court of Appeals for the Third Circuit held that the First Amendment does not shield Electronic Arts, Inc. (EA) from right of publicity violations alleged in connection with its depiction of college-athlete “avatars” in its series of NCAA Football videogames. Ryan Hart v. Electronic Arts, Inc., No. 11-3750, 2013 U.S. App. LEXIS 10171 (3d Cir. 2013).

As a matter of first impression for the Third Circuit, the Hart case involves the complex intersection of First Amendment protections and the publicity rights of individuals. By determining that plaintiff Ryan Hart’s publicity rights trump First Amendment considerations in this instance, a Third Circuit majority panel reversed the US District Court of New Jersey’s prior grant of summary judgment in EA’s favor and remanded the case to the district court for further proceedings.

Hart is a former Rutgers quarterback who originally brought this right of publicity claim against EA in October 2009, alleging that EA used his avatar in certain of its NCAA Football videogames and related promotions. According to Hart, the avatar was intentionally created to resemble him and displays unmistakable physical and biographical similarities. After successfully removing the action to federal court and dismissing all but one of Hart’s claims, EA moved to dismiss Hart’s remaining right of publicity claim in November 2010. In its motion, EA argued that its actions constitute protected expression under the First Amendment. The district court granted EA’s summary judgment motion, finding that EA’s use of Hart’s likeness was sufficiently transformative to warrant First Amendment protection and that EA’s First Amendment right outweighs Hart’s right of publicity in his likeness.

Throughout the right of publicity doctrine’s development, courts have wrestled with the appropriate standard to apply when balancing the parties’ respective interests. In its opinion, the Third Circuit discussed at length the various tests that courts have constructed to determine whether an individual’s right of publicity should prevail over First Amendment concerns. The Third Circuit focused its discussion on the Predominant Use Test, the Rogers Test and the Transformative Use test. The court below had applied the Transformative Use Test to find that EA’s conduct deserved First Amendment protection, because EA’s NCAA Football games include a feature that allows users to modify the avatars’ appearance and characteristics.

On appeal, Hart urged the Third Circuit to adopt the Predominant Use Test, which requires that a defendant’s use of a plaintiff’s likeness be predominantly expressive – rather than commercial – to receive First Amendment protection. Hart argued that EA’s use of Hart’s likeness did not add any additional expressiveness to the videogame but simply exploited the commercial value of his identity. The Third Circuit rejected the Predominant Use Test, however, criticizing it as overly subjective and potentially arbitrary in nature.

In contrast, EA endorsed the Second Circuit’s Rogers Test, originally applied to the use of a celebrity’s name in the title of a work. Under the traditional Rogers Test, the right of publicity will only preclude another from using a celebrity’s name in the title of a work if that chosen title is completely unrelated to the subject matter of the work or a disguised commercial advertisement. EA proposed an expansion of the Rogers Test beyond the use of a person’s identity in the title of a work to the use of a person’s identity in the context of the entire work. EA argued that Hart’s likeness is wholly related to the college football videogame and thus is not being used merely to advertise EA’s product. The Third Circuit rejected this broad application of the Rogers Test, however, reasoning that EA’s proposal would improperly preclude Hart from asserting publicity rights to protect the unauthorized use of his likeness in the very area in which he achieved celebrity. This, according to the Third Circuit, would be a fundamental perversion of right of publicity principles.

Like the lower court, the Third Circuit ultimately adopted the Transformative Use Test, which requires courts to begin by evaluating the degree to which the work is the creator’s own expression. But unlike the lower court, the Third Circuit found that EA’s accused NCAA Football videogames did not sufficiently alter Hart’s identity to provide First Amendment protection against Hart’s right of publicity claim. The court reasoned that the videogame avatar had many of Hart’s physical attributes, such as the same hair color, skin tone and Rutgers accessories. Additionally, the court emphasized contextual similarities: the avatar does much of what Hart is popular for doing, including playing football in a football stadium. Lastly, the Third Circuit disagreed with the lower court’s treatment of the user manipulation function. The court held that the mere presence of an interactive feature is insufficient to satisfy the requirements of the Transformative Use Test, particularly here because an integral aspect of the NCAA Football gamer’s experience is the ability to play as an actual college athlete. On the other hand, the Third Circuit held that EA’s use of Hart’s photograph in its promotional materials was protected by the First Amendment, because the context of the photograph “imbues the image with additional meaning beyond simply being a representation of the player.” Hart, No. 11-3750, 2013 U.S. App. LEXIS 10171, at *79.

The Hart case runs parallel to In re NCAA Student-Athlete Name & Likeness Licensing Litigation, No. 09-1677-CW (N.D. Cal. 2009), a consolidated action currently pending in the Northern District of California. Like Hart, the In re NCAA case involves right of publicity claims brought by college athletes against defendants in connection with EA’s line of college sports videogames. The lead “publicity plaintiff” in In re NCAA is Samuel Keller, a former Arizona State and Nebraska quarterback. In July 2009, EA similarly moved to dismiss Keller’s right of publicity claims, relying on First Amendment principles. EA also filed an anti-SLAPP (Strategic Lawsuit Against Public Participation) motion to strike Keller’s complaint, asserting that its activity falls within its right of free speech. As the Third Circuit noted, the California district court in Keller found EA’s use of player likenesses insufficiently transformative to warrant First Amendment protection under the Transformative Use Test. Keller v. Elec. Arts, Inc., 2010 WL 530108, at *5 (N.D. Cal. Feb. 8, 2010). For similar reasons, the California district court denied EA’s anti-SLAPP motion. Thus, the lower court outcomes in In re NCAA and Hart were previously viewed as inconsistent, and arguably irreconcilable, given the near factual identity of the right of publicity claims at issue. Now, with the Third Circuit’s opinion in Hart, these two cases are placed on more equal footing from a right of publicity standpoint. On the other hand, the California district court’s decision to deny EA’s anti-SLAPP motion remains pending before the Ninth Circuit, so there still remains the possibility of a circuit split on how to perform this balancing act between the right of publicity and the First Amendment.