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Balancing Freedom Of Expression And The Right Of Publicity: Implications For The Future Of Interactive Entertainment

10/23/2013 Articles

Freedom of expression bowed to the right of publicity on July 31, 2013, when a divided panel at the Ninth Circuit ruled that college athletes could proceed in litigation against Electronic Arts (“EA”) for making sports-based video games so realistic as to capture the likenesses of the athletes.  In re NCAA Licensing Litig., No. 10-15387 (9th Cir. July 31, 2013) (Slip Op.).  The case calls into question how far one must depart from reality to create a work free from lawful objection by its participants.

Samuel Keller played starting quarterback for Arizona State University’s football team in 2005.  Contemporaneously, EA released its 2005 edition of NCAA Football, in which the virtual starting quarterback for Arizona State University wore the same number as Keller, and had the same height, weight, skin tone, hair color, hair style, handedness, home state, play style (pocket passer), visor preference, facial features, and school year as Keller.  Keller filed a putative class action against EA for allegedly violating the right of publicity set forth in California Civil Code § 3344 and California common law.  EA moved to strike the complaint as a strategic lawsuit against public participation – i.e., a “SLAPP” suit seeking to restrict EA’s First Amendment rights.  EA lost the motion and appealed.

The Ninth Circuit focused on the “transformative use defense”:  “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.”  Id. at 11.  The test involves five factors:  (1) if the celebrity likeness is one of the “raw materials” from which an original work is synthesized, it is more likely to be transformative than if the depiction is “the very sum and substance of the work in question”; (2) whether a likely purchaser’s primary motivation is to buy a reproduction of the celebrity, or to compensate the expressive talents of the work’s creator; (3) whether – in an inquiry “more quantitative than qualitative” – the literal and imitative or the creative elements predominate in the work; (4) whether, in close cases, the marketability and economic value of the challenged work derive primarily from the fame of the celebrity depicted; and (5) whether the creator’s skill and talent is manifestly subordinated to the overall goal of creating a conventional portrait of a celebrity so as to commercially exploit his or her fame.  Id. at 11-12.

Writing for the majority, Circuit Judge Jay S. Bybee found that Keller’s likeness and those of his fellow players predominated over EA’s contribution to NCAA Football because gamers purchased the product for its realism.  Keller was depicted playing his chosen sport in his uniform with his attributes in settings in which he actually played.  EA’s literalism impinged Keller’s right to exploit his own likeness.

In dissent, Circuit Judge Sidney R. Thomas found the athletic likenesses to comprise solely “raw materials from which the broader game is constructed.”  Id. at 36.  Gamers control the conduct of the game, weather, crowd noise, mascots, and other environmental factors.  Id.  Gamers could change Keller’s “impressive physical likeness . . . into an overweight and slow virtual athlete, with anemic passing ability.”  Id.  Moreover, a gamer “could play the game endlessly without ever encountering Keller’s avatar.”  Id.  “That the lifelike roar of the crowd and the crunch of pads contribute to the gamer’s experience demonstrates how little of NCAA Football is driven by the particular likeness of Sam Keller, or any of the other plaintiffs, rather than by the game’s artistic elements.”  Id. at 38.

It is difficult to miss the appeal of the dissent’s argument that the “sheer number of virtual actors” in NCAA Football, the absence of “any evidence as to the personal marketing power of Sam Keller,” and the relative anonymity of each individual player in NCAA Football as compared to the public figures in other California right-of-publicity cases (such as the Three Stooges and rockers No Doubt) all mitigate in favor of EA’s First Amendment rights over the athletes’ rights of publicity.  Id. at 17 n.7.  However, in rejoinder, the majority sympathetically defends the yeomen of collegiate football:  “EA elected to use avatars that mimic real college football players for a reason. . . . Having chosen to use the players’ likenesses, EA cannot now hide behind the numerosity of its potential offenses or the alleged unimportance of any one individual player.” 

The sides are also closely matched over the weight to be given the mutability of the athletes’ avatars.  While ability to modify the avatars is doubtlessly transformative – warranting additional protection under the First Amendment – the majority aptly points out that “the appeal of the game lies in users’ ability to play as, or alongside, their preferred players or team.”  Id. at 20.  The majority omits an equally compelling argument relied upon by the majority in the nearly-identical case decided by the Third Circuit in May:  “If the mere presence of the [mutability] 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 v. Electronic Arts, Inc., 717 F.3d 141, 167 (3d Cir. 2013).

Where the majority in Keller’s case go astray is in according NCAA Football no greater expressive protection than a sheaf of athletes’ photos, a series of silkscreened t-shirts, or a collection of bobble-head dolls.  EA’s software did not attain its success by being “[nothing] more than a mere celebrity likeness or imitation.”  The video game is not akin to a charcoal sketch of the Three Stooges reprinted on t-shirts, Comedy III Productions, Inc. v. Gary Saderup, Inc., 21 P.3d 797 (Cal 2001), nor does it resemble a Hallmark birthday card depicting Paris Hilton stating, “That’s hot,” Hilton v. Hallmark Cards, 599 F.3d , 894, 899 (9th Cir. 2010). 

Realism should not be punished in expressive works.  If EA had recreated battles from the conflict in Afghanistan using biometric data from actual combatants, gamers would have purchased the software not to obtain celebrity likenesses but rather to reenact history.  If EA’s software permitted gamers to recreate the 2012 presidential election based on the recorded aptitudes and likenesses of campaign workers, EA’s First Amendment rights should again predominate.  In the absence of privacy violations, individuals – even sympathetic groups that might otherwise deserve remuneration – should not have power to prevent or tax such speech.

In close cases, it may be that interactivity itself warrants additional consideration as transformative in the First Amendment analysis.  Indeed, it may be where history is most tactile – subject to reconfiguration, isolation, and replay – that freedom of expression should be given the benefit of the doubt.

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