Keller (Plaintiff) was the starting quarterback for Arizona State University before transferring to the University of Nebraska. Electronic Arts (Defendant) was a video game developer who created an NCAA Football game that included a player with similar characteristics to Keller, who filed a class action suit alleging a violation of his right of publicity under California law.
In order to use a plaintiff’s likeness without permission or compensation, a defendant in a right-of-publicity action must show that the use of the plaintiff’s likeness is transformative.
Defendant is a video game developer that creates college football and basketball video games that allow users to control avatars representing college football and basketball players during simulated games. One of these games was NCAA Football. In this game, the real college football players on college rosters were represented by corresponding avatars that wore the same jersey number, played the same position, had the same height, weight, build, skin color, hair color, and home state. Defendant determined these characteristics by sending college equipment managers questionnaires about the players. Defendant created realistic depictions of the college stadiums, coaches, and fans. The game differed from reality in that the players’ names were not displayed on their jerseys and the home towns listed were not accurate. Users of the game could obtain and upload rosters from third parties that allowed the player names to appear on the jerseys. Plaintiff was the starting quarterback for Arizona State University in 2005 and then the University of Nebraska in 2007. In the 2005 version of the game, the avatar for Arizona State University’s quarterback wore Plaintiff’s number and had the same physical and athletic characteristics as Plaintiff did. In the 2008 version, the University of Nebraska quarterback now had those characteristics, although the jersey number did not match Plaintiff’s as he had changed it shortly before the season started. Defendant did not have Plaintiff’s permission to use his likeness and did not compensate him for it. Plaintiff filed a putative class action in federal court on the basis that Defendant was violating his right of publicity under California law. The trial court denied Defendant’s claim of a First Amendment defense and Defendant appealed.
Must a defendant in a right-of-publicity action show that its use of a plaintiff’s likeness is sufficiently transformative in order to avoid liability for using the likeness without permission or compensation?
(Bybee, J.) Yes. In order to use a plaintiff’s likeness without permission or compensation, a defendant in a right-of-publicity action must show that the use of the plaintiff’s likeness is transformative. California law includes a transformative use defense that attempts to balance the First Amendment with a plaintiff’s right of publicity. The defense is based on whether the work in question adds significant creative elements such that it is transformed into more than a mere celebrity likeness or imitation. The court examines five factors in making this determination. First, the court looks at whether the plaintiff’s likeness is merely a â€œraw materialâ€ used to create an original work, or if the likeness is the substance of the work in question. Second, the court examines whether the work is primarily the defendant’s own expression. This requires determining whether a potential purchaser would buy the work to get a reproduction of the plaintiff or to get a work by the artist. Third, the court analyzes whether the literal and imitative qualities or the creative elements dominate the work. Fourth, the court looks to whether the marketability of the work derives primarily from the fame of the depicted celebrity. Finally, the court determines whether the artist’s skill and talent is manifestly subordinated to the goal of creating a likeness of a celebrity in order to commercially exploit the celebrity’s fame. After applying these factors, Defendant’s use of Plaintiff’s likeness does not contain sufficient transformative elements. Defendant copied Plaintiff’s physical characteristics and allowed users to manipulate this avatar in the same activity he is known for in realityâ€”football. The realistic depictions of stadiums and game environments also leads to this conclusion. Plaintiff was represented playing football at Arizona State University and the University of Nebraska, the same place the public found him during his college career. Defendant cannot prevail on its transformative use defense as a matter of law. Defendant urges the court to apply a broad First Amendment defense found in false endorsement claims made under the Lanham Act. In Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), the issue was whether the artistic work misled viewers into believing the depicted celebrity endorsed the work. The Second Circuit found that titles of artistic or literary works were less likely to be misleading than the names of ordinary commercial products, and applied Lanham Act protections less rigorously with these types of work. In those cases, the Lanham Act did not apply unless the title of the work had no artistic relevance to the work whatsoever, or if it had relevance but explicitly misleads as to the source or content of the work. The Rogers test should not be imported completely into right-of-publicity cases because it was designed to protect consumers from the risk of consumer confusion. The right of publicity, however, seeks instead to protect a celebrity’s right to his or her likeness. Plaintiff’s claim is not that consumers are being misled into believing he endorses Defendant or its products, so the reasoning behind Rogers is not applicable here. Affirmed.
(Thomas, J.) The majority focuses on the likeness of one athlete and does not examine the transformative and creative elements in the game as a whole as required by the transformative use test. A broad view of the game is that it is work of interactive historical fiction. Although the game changes each year, it is predominantly a role-playing game. The gamer makes the decision to be a player or a coach, and to create a virtual image of himself. Although the college teams in the game replicate the actual college teams for the season, including the athletes on those teams, the players are not identified and can be changed by the gamer. Gamers can manipulate the avatars to change teams, mascots, and other environmental factors. These considerations favor First Amendment protection because the player likenesses are the raw materials from which the broader game is constructed. The work as a whole is one of Defendant’s own expression. The creative and transformative elements predominate over the player likenesses. The marketability and economic value of the game comes from the creative elements, not from the images displayed. The number of likenesses involved also makes this case different than other right of publicity cases. Thousands of virtual actors are involved in Defendant’s work. This is an important factor in determining whether the source of the product’s marketability comes from creative elements or from exploiting a celebrity image. No evidence has been presented of Plaintiff’s personal marketing power, as distinguished from the creative aspects of the product. The sheer number of athletes involved reduces the significance of the publicity right here. The majority’s decision seems to determine that all realistic depictions of actual people, even when incidental, are protected by a right of publicity no matter the creative context.
The majority responded to the dissent’s argument regarding the number and relative anonymity of athletes depicted by arguing that this was a relevant factor, but that Defendant obviously used the actual likenesses of players for a reason. If Defendant did not think there was a value to having the actual players depicted, it would not have gone to the length it did to do so. Having used the players’ likenesses, Defendant could not now claim that the individual players were unimportant or that they had used too many likenesses to be liable.