Divided Third Circuit Reverses in EA v. Hart

Way back in September 2011, I blogged about Hart v. EA, mostly as an introduction to publicity rights. Hart was a former NCAA quarterback (and former teammate of Ray Rice at Rutgers) whose image (like many other former NCAA players’) is used in EA’s NCAA Football. The NCAA (whose reputation has not gotten any better since then) licenses collegiate athletes’ images and physical statistics to EA, but at the same time forbids collegiate athletes from profiting from their own images.* When you play NCAA Football, you can actually play a simulacrum of Hart—his image and certain physical and football statistics. If you’re a Rutgers alumnus, you might be pretty excited to play Rutgers’ powerful 2006 team (with Hart as quarterback and Rice as tailback) and relive the high-water-mark of Rutgers football.

* I’ll make no secret of my disgust at this state of affairs. Universities are able to profit mightily from young men to risk their health and long-term prospects to play a game they love. A university education is a very valuable thing, and most student-athletes get a great deal, but it’s on the backs of the football players, who mostly get a terrible deal. I used to teach student-athletes at a certain major Big 10 university, so, yeah, I know what goes on. Having said that, this state of affairs is, legally speaking, irrelevant, except that it motivates the plaintiffs in these cases.

At that time, Hart’s lawsuit had just been dismissed on summary judgment. EA had convinced the judge—who was clearly sympathetic with the Catch-22 that the NCAA had put Hart into—that its First Amendment right to free expression trumped Hart’s publicity rights. You can read my old post for the 40,000-feet view of the balance between free expression and publicity rights.


Block that lawsuit! Block this metaphor!

The judge’s opinion was careful. She found two relevant tests to determine when free expression trumped publicity rights. She decided that she didn’t need to choose between them because Hart lost under either test. The two tests are: the “transformation” test, borrowed from copyright law; and the “Rogers” test, borrowed from trademark law. I discuss both tests in my old post, but the important thing is that it is nearly impossible for a rights holder to beat the Rogers test, but Hart had a shot under the transformation test.

The district judge’s application of the transformation test came down to this: are purchasers stuck with the likenesses and statistics of Hart and his fellow real collegiate players? If they aren’t (and they aren’t—the real collegiate players are just the default), then it’s transformational. I pointed out that this begs the question of why EA would want the real collegiate players in the first place.

The Third Circuit Court of Appeals reversed. It held: (1) the transformation test was the only appropriate test, rejecting the Rogers test, and (2) the district judge misapplied the transformation test.

Dancing Away from Ginger Rogers

I explained the Rogers test in my old post. In its original state, it involved a celebrity’s trademark—not publicity—rights to her name and image. As we saw more recently with the superawesome Dark Night CLEAN SLATE case, it has been expanded to apply to all sorts of trademark cases, not just those involving celebrities.

But should it apply to all cases involving celebrities, i.e., to publicity rights? The Third Circuit thought not. The problem is that publicity rights and trademark rights don’t have a lot in common, even though celebrities can incidentally benefit from both of them (but do so in very different ways). Trademark protects a brand’s relationship with the consuming public. Would you be more likely to buy a product because it appeared a celebrity endorsed it (or was somehow affiliated with it)? If the answer is yes, but the celebrity did not, in fact, endorse the product, then you were a confused consumer. The Rogers test basically holds that we tolerate a certain amount of consumer confusion in the name of artistic expression.

Publicity rights relate to the intrinsic value of the celebrity’s image, not just in terms of endorsements, but for their own sake. Even if it’s clear the celebrity is not being used to endorse a product, she still has a separate right to control how people profit from her image. Not every use of a celebrity image is a potential endorsement. Consider, for example, a play about the Marx Brothers that incorporates their likenesses and mannerisms and several of their best known sketches, but is also a somewhat unflattering portrayal. Or consider T-shirts (or similar knick-knack) with the image of a well-known country-music star*. Or consider simply a model in a photo-shoot.** In each of these cases, the trademark claim is nonexistent or a real stretch. But the publicity right is very clear.

* It’s Fan Fair/CMA Festival time here in Nashville.

** There’s a reason why they sign releases. Sometimes, though

This leads to a paradox that the Third Circuit found irreconcilable. Simplified somewhat, the Rogers test held that if there were an artistic reason to use the celebrity’s name in a title, consumer confusion will be tolerated unless the title were wholly unrelated to the underlying work. Why that “wholly unrelated” exception? Because the Rogers court was concerned about too much consumer confusion. If the use of the celebrity’s name in the title were wholly unrelated to the underlying work—e.g., Ted Nugent’s Ice Follies—then it starts looking a lot more like a celebrity endorsement.

But in Hart’s case, the opposite is true. The more relevant his likeness to the video game, the more his publicity rights are infringed. But under the Rogers test, the more relevant his likeness is to the video game, the stronger EA’s free-speech rights. Which doesn’t make sense. The ideal rule would minimize the amount of infringement while maximizing free expression, but this application of the Rogers test maximizes both.

Starring as Yourself

If publicity rights are only superficially like trademark rights, are they more like copyright? Although the contours of publicity rights are much fuzzier than those of copyright, publicity rights have much more in common with copyright. In fact, as I’ve said before, they’re like copyright, but turned around. Whereas copyright belongs to the photographer, publicity rights belong to the subject. And they both exist for their own sakes, in the abstract, transcending commercial concerns like consumer confusion*.

* To be sure, copyright originates from a desire to promote commerce—without it, there would be little incentive to create except as a hobby—but beyond that, it operates according to its own rules, which sometimes promote commerce and sometime stifle it.

The problem with copyright is that it deals with the First Amendment right to free expression in its own way. The right to free expression is baked into copyright, specifically through fair use and the idea/expression dichotomy. There isn’t really a “First Amendment” test for copyright.

Nevertheless, courts have looked to a major component of fair use, the transformative use. Which is funny because it’s so maligned. As I’ve discussed recently, intelligent people can have very different ideas of what is “transformative.” As applied to publicity rights, the test looks like this (as expressed by the California Supreme Court and adopted by the Third Circuit):

Whether the celebrity likeness is one of the “raw materials” from which an original work is
synthesized, or whether the depiction or imitation of the celebrity is the very sum andsubstance of the work in question. We ask, inother words, whether the product containing a celebrity’s likeness is so transformed that it has become primarily the defendant’s own expression rather than the celebrity’s likeness. And when we use the word “expression,” we mean expression of something other than the likeness of the celebrity.

The Third Circuit then analogized the case to No Doubt’s similar claim against Activision involving the Band Hero video game. Since all No Doubt does in Band Hero is precisely what No Doubt does in real life—play musical instruments, perform on stage, etc.—the use of No Doubt’s image wasn’t transformational. They star as themselves, in a sense. The same is true for Hart: he is less an element of some broader expressive work than a self-contained image within a broader gallery.

What about the fact that users can modify Hart’s image? The Third Circuit dismisses this argument on two main grounds:

  1. That’s a huge exception. By this logic, you could include anyone’s likeness, so long as the users have the ability to use a different avatar.
  2. The point of using Hart’s image is so users can play Hart, i.e., to appeal to a particular audience.

Transformative Use: More than Meets the Eye

There is a dissent, and it’s worth reading. The dissent agrees that the transformational test is the correct test. And it, by implication, rejects the district court’s reasoning. But the dissent nevertheless finds that the use of Hart’s likeness is transformational. The dissent’s disagreement turns on whether Hart’s likeness is viewed as an element of a larger whole, or a self-contained element among other elements:

[T]he numerous creative elements of the video games discussed above are part of every fictional play a user calls. Any attempt to separate these elements from the use of Hart‘s likeness disregards NCAA Football’s many expressive features beyond an avatar having characteristics similar to Hart. His likeness is transformed by the artistry necessary to create a digitally rendered avatar within the imaginative and interactive world EA has placed that avatar.

This mostly goes to show that—ahem—reasonable minds can disagree strongly about what is “transformational.” Alas. The dissent apparently would have decided No Doubt differently. Also, EA has been wasting its money licensing the images of professional football players for Madden Football?

Would the outcome of either the majority’s reasoning or the dissent’s be different if, instead of collegiate football players, EA used random celebrities? Let’s say you could play a football game with Elvis Presley, Michael Jackson, Justin Beiber and Hulk Hogan, sans any trademark clothing or poses? How would the dissent get around that?

What about the images of identifiable University of Alabama players in Daniel A. Moore’s paintings? The players are wise enough not to sue Moore (unlike the University of Alabama, which sued, and lost, on trademark grounds), but should they have a publicity cause of action against Moore. He profits, though not nearly as much as EA, from depicting the images of collegiate players. If he’s different from EA, what makes his expression more protectable (on free expression grounds) than EA’s?

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.