Free Speech Sacks Publicity Rights (but Was it Offside?)

A few weekends ago I blogged about publicity rights in connection with a Vampire Weekend album cover.  One of my main points was that publicity rights are a lot like copyright, except that it’s a right held by the subject of a work, rather than by the work’s author.  Thus, when a work has a living (or in some states, dead) person as its subject, there can be two rights to worry about: copyright and publicity.  Publicity is the right to control representations of yourself; copyright is the right to control representations (OK, “expressions”) you make.

Team Publicity Rights vs. Team Free Speech

Publicity rights make intuitive sense.  If you’re a celebrity, even a local or minor one, people shouldn’t be able to use your likeness to make a buck.  That’s a market for you to control.  To this, we add a kind privacy or dignity sheen that arises (in my opinion) from the general feeling of discomfort we get when our likeness is shown to people outside our normal circle of family and acquaintances.  Intuitively, the scope of this privacy right changes depending on the intimacy of the portrayal:  one can imagine pictures that one would not want anyone, except perhaps a spouse, ever seeing*, whereas some pictures (a professional headshot, for example) that are clearly meant to be seen by anyone.

Actually, one doesn’t want to imagine this.

But what if I see a celebrity walking out of my favorite restaurant, take a picture of her*, and show the picture to my friends, exclaiming, “ZOMG! Look who I saw!”?  What if I tweeted the picture with the exclamation?  What if said celebrity was, at the time, drunk and barfing behind a bush, or arrested after a fight?  Can the celebrity sue me?  Can the celebrity get an injunction preventing me from even publicizing the picture?

BTW, I live in Nashville.  No self-respecting Nashvillean would ever do this.  I, too, have adopted the Nashvillean attitude of barely-restrained coolness when finding oneself in close proximity with Nicole Kidman or Reba McEntire, to take two totally random examples.  A Nashvillean never asks for autographs, takes pictures, fawns or fusses over celebrities.  Rather, a Nashvillean endeavors to treat the celebrity as he would anyone else (since this is Nashville, that means treating them politely), but instead excitedly tells all his friends later about whom he saw, the circumstances and how totally cool he was with the whole thing.

In most states, the celebrity wouldn’t have a cause of action.  Although the privacy/dignity part of the publicity right is conceptually satisfied, particularly in the barfing/fighting contexts, the economic part isn’t.  I’m not making any money off the portrayal.  And, while a picture of a barfing might damage the celebrity’s overall value, there’s really no connection between that damage and whatever benefit you might derive from publicizing the celebrity’s likeness.

OK, but what if you’re a newspaper?  You’re in the business of selling newspapers and newspaper subscriptions.  Having celebrities’ images in your paper probably helps on both scores, particularly if the celebrity is caught barfing behind a bush.  You clearly gain an economic benefit from using the celebrity’s likeness.  Under most states’ laws, the elements for a claim of publicity would be satisfied.

That doesn’t sound right, though, does it?  If a celebrity ate at a certain restaurant, that’s worth knowing, isn’t it?  Perhaps it’s not “news” on the same level as uprisings in the Middle East, a local mayoral election or even a high-profile wedding–but these facts are “newsworthy.”  It shouldn’t make a difference that the celebrity was barfing behind a bush or arrested after getting into a fight.  Doesn’t the public have a right to know these things, even if they’re not “important”?

Indeed, the public does; and indeed, the newspaper has a right to publish those photographs, even though the publicity harms the celebrity’s “image,” and even though the newspaper profits from the publicity.  This is one of the big limits on the right of publicity:  the First Amendment right to free speech.  Among other things, it protects the right of Americans to report on events of public interest.  Thus, celebrities usually know their ability to control their image is often limited to their ability to control their own public behavior.

Hart v. Electronic Arts

It’s not always easy to see how the First Amendment right of free speech limits publicity rights.  The recent case of Ryan Hart against Electronic Arts, Inc. (“EA”), is a case in point.  Hart was a quarterback for the Rutgers University football team in the mid 00’s.  Rutgers is not known for its football prowess, but its 2006 team was actually pretty good, led by running back Ray Rice (now having a very good NFL career with the Baltimore Ravens) to a 11-2 record, coming very close to appearing in a BCS bowl game in an unusually strong Big East Conference.

EA is a well-known publisher of video games, especially sports games, with its Madden NFL franchise being one of the best selling video games ever.  It makes and publishes a college-football version called NCAA Football.  As with the professional-football version, EA adds realism to the game by using images of the actual collegiate players.  It also uses other physical attributes, such as quarterback arm strength, as well as the player’s statistics, in computing a player’s on-field effectiveness and abilities.  Thus, if you were to play, say, the “default” version of the University of California* 2006 football team, your running back is meant to be a close physical approximation of the real running back from that time in that year (which happens to have been Marshawn Lynch).

That would be my alma mater.

Hart thought this was a violation of his publicity rights and those of his fellow collegiate football players.  As he points out (and the court acknowledges), collegiate football players are in a catch-22.  They have publicity rights, but the NCAA forbids them from making any money off them–but the NCAA has no difficulty making money off the publicity rights of its collegiate players.  Hart thought this was wrong and sued.  (He’s not the only one.  That case, Keller v. Electronic Arts, Inc., is pending in the Northern District of California.  It hasn’t had to address squarely the free-speech issues, yet.)

The court was obviously sympathetic with Hart’s position, but she ruled against him all the same.  She held that EA’s First Amendment right to free speech trumped Hart’s publicity right.  The court’s opinion, which is erudite and expansive, may be found here.

The first question the court had to address was whether NCAA Football was commercial speech or not.  This was important because it determined how much “scrutiny” the court would give an application of a law in determining whether it passes constitutional muster.  The higher the scrutiny, the less likely the law will survive the constitutional challenge.  Commercial speech is said to get less scrutiny than “core” or “expressive” speech.  On the one hand, video games are products.  But then, so are books, and nobody doubts that they are “expressive.”  A snob might sniff that video games aren’t truly “expressive” like a good book–they’re just “fun”–but (1) that’s beside the point, constitutionally speaking, since courts aren’t to make artistic judgments; (2) fun and art aren’t mutually exclusive*; and (3) have you played a video game lately?  They really are expressive, a story-telling medium for our time.  Asteroids and Space Invaders may have been a bit weak in the storytelling department (and even they would be “expressive” for free-speech purposes), but have gotten a load of (to take just a couple examples) the Mass Effect or Portal series?

Read Tom Jones.  It was written in the 18th century, is considered a great work of fiction it regularly appears on syllabi of English lit classes, and is one of the funnest reads ever.

Anyway, the court ruled that video games are expressive speech and, therefore, applied highest form of scrutiny (“strict scrutiny”) to NCAA Football.  Now all the court has to do is figure out to balance Hart’s publicity right with EA’s free-speech right.  It turns out this isn’t very easy to do.  The court was confronted with two main tests (although at one point she said there were eight tests).  The first test, known as the “transformation test,” was borrowed from copyright law.  The second test, known as the “Rogers test,” was borrowed from trademark law.

The Transformation Test

It might seem strange that one might borrow a free-speech test from copyright law, when one considers that copyright law is supposed to be an exception to the right of free speech (as I blogged about here).*  But that’s an oversimplification.  It might be more accurate to say that you don’t need to apply the right of free speech to copyright law because free speech is already “built into” copyright law.  This is because copyright law shares many of the same goals as the right of free speech, especially, the dissemination of ideas.  Copyright law protects only expression, not the underlying ideas, so no one can control the spread of ideas–you just have to express the idea in your own way.  Further, copyright law includes the concept of “fair use,” which allows others to use expression to further disseminate their own ideas, within reasonable limits.

Congress is empowered by the Constitution to pass copyright laws, so it’s considered to be on equal footing with the First Amendment.

It is out of fair use that the idea of “transformative use” arises.  The idea is that you should be able to use another’s expressive content to make something new and different.  Thus, free expression is not stifled, and ideas are spread and criticized.  Courts, especially those in California, have been applying this test to publicity cases.  The idea is the same: you may use someone’s likeness if it’s necessary to further your own expression.  Thus, Elvis impersonators are OK.  Yes, they use the King’s likeness, but they also parody and generally have fun with it.  At the same time, Guitar Hero (remember when that game was relevant?) can’t use the likeness of the band No Doubt (remember when they were relevant?).  But a comic book can mock Edgar Winter by turning him into a worm-like creature named “Edgar Autumn” that looks a lot like the real Edgar Winter, and a video game designer can use the likeness and mannerisms of a well-known singer and placer her the role of a 25th-century news reporter.  Yes, that’s right:  the issue comes to do whether Elvis impersonators serve a socially useful function.

One commentator challenges this test by asking, in essence:  If Andy Warhol were a nobody, would Marilyn Monroe have a publicity claim against him?  Is your answer influenced by the fact that Andy Warhol is, in fact, famous, or that his silkscreens of Marilyn Monroe are considered great art?  If the answer is yes, there’s something wrong with the test.

The court decided that EA’s use of Hart’s likeness is transformative, for reasons that may not be apparent from my brief description of the case above.  It turns out that users of NCAA Football aren’t stuck with the likeness and statistics of actual players.  Those likeness and statistics are just default settings.  Users may customize both aspects of their players.  What matters, said the court, is that there is a mechanism that permits these changes.  Given the interactive nature of video games, this makes all the difference.

This begs the question:  why, then, even start with the likeness of actual players?  Doesn’t that imply that part of NCAA Football’s appeal lies in the ability to simulate “real” football contests.  If, for some reason, you wanted to see how the 2006 Rutgers team would have fared against Florida (the eventual national champion), you could find out (approximately).

The Rogers Test

The court wanted to cover its bases, so it also went into the Rogers test as well.  The Rogers test arose from a case involving Ginger and Fred, a 1986 Italian film directed by Frederico Fellini and starring Marcello Mastroianni and Giuletta Masina.  It was not about the real Ginger Rogers and Fred Astaire, but rather about a vaudeville dance couple that performed famous Rogers-and-Astaire routines.  The movie is generally considered a satire, but not on Rogers and Astaire, but on the television industry (the protagonists perform for a TV variety show)*.

Including an obvious satire of current Italian prime minister Silvio Berluschoni, who was then a TV mogul.

Ginger Rogers thought the movie’s title misused her name.  The movie, after all, was not about her, so it was misleading to call it Ginger and Fred.  She reasoned that the only reason the film was called Ginger and Fred was to take advantage of her and Astaire’s celebrity.  The Second Circuit disagreed, holding that the filmmakers had a free-speech right to use celebrity names in the titles of their works, even if misleading, so long as there was a viable artistic reason for the use.  The court wanted to protect against uses of names that serve no other function than to generate interest in the underlying work–but, beyond that, it artists had free reign.  In Rogers’ case, there were good artistic reasons for incorporating Rogers and Astaire impersonators into the film.  They represented a kind of American glamor that contrasted with the meanness of popular Italian culture.

The Rogers test is nearly impossible for celebrities to overcome, and Hart was no exception.  There are certainly artistic reasons to include his likeness and statistics in the game.

One suspects that Hart will be appealing this decision.  He’s clearly on a mission against NCAA hypocrisy.  If he can convince the appellate court that the transformation test, and not the Rogers test, applies, he stands a decent chance of reversal.  It’ll also be worth keeping an eye on the Keller case in California.

Thanks for reading!

Rick Sanders

Rick is an intellectual-property litigator. He handles lawsuits, arbitrations, emergency injunctions and temporary restraining orders, opposition and cancellation proceedings, uniform dispute resolution proceedings (UDRPs), pre-litigation counseling, litigation avoidance, and other disputes, relating to copyrights, trademarks, trade secrets, domain names, technology and intellectual-property licenses, and various privacy rights. He has taught Copyright Law at Vanderbilt University Law School. He co-founded Aaron | Sanders with Tara Aaron-Stelluto in 2011.