Transformative Use Favored in Sports Video Game Case

By the time in 2011 that the U.S. Supreme Court officially recognized that video games are expressive works under the First Amendment, several federal appeals and district courts had reached the same conclusion. The Supreme Court found California's legislative restrictions on the sale to minors of video games with violent content to be unconstitutional. See, Brown v. Entertainment Merchants Association, 131 S.Ct. 2729 (2011). But in the context of alleged unauthorized uses of an individual's personal indicia, inconsistency ' in how different courts determine whether there are viable claims under state right of publicity laws or for false endorsement or association under the federal Lanham Act ' makes it difficult for attorneys who view content through a First Amendment lens when counseling entertainment production companies.

Rutgers QB Suit Fails Test

A new ruling by the U.S. District Court for the District of New Jersey emphasizes this inconsistency. See, Hart v. Electronic Arts Inc. (EA), 09-cv-5990. The New Jersey case is one of several pending litigations over uses of indicia of former college athletes in video games. The National Collegiate Athletic Association (NCAA) requires its educational-institution members to have college athletes sign consent forms for use of the athletes' right of publicity to promote NCAA events, and for charitable and educational purposes. The athletes receive no compensation from these activities, though the NCAA earns income from licensing athletes' indicia in commercial settings.

Former Rutgers University quarterback Ryan Hart filed a putative class action alleging that defendant Electronic Arts' NCAA Football video games misappropriated his likeness and identity in violation of New Jersey common law. The district court asked Hart to make the right of publicity claim more specific “as to what aspects of [Plaintiff's] likeness [were] appropriated.” EA moved on First Amendment grounds for summary judgment dismissal of Hart's second amended complaint (SAC).

The two major tests that courts employ when analyzing such First Amendment defenses are: the transformative test, which has its roots in copyright fair use and requires at least an expressive transformation of the “raw material” of the complaining individual's persona; and the Rogers test, which at a minimum requires artistic relevance between the defendant's product and use of the plaintiff's personal indicia. (See, Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), used by courts most commonly in Lanham Act actions.) The U.S. Court of Appeals for the Third Circuit, within which the District of New Jersey resides, hasn't formally adopted either test.

In considering Hart's SAC, District of New Jersey Judge Freda Wolfson observed that “virtual players in NCAA Football are identified by jersey number and position, although a user can edit game data to give the player a surname, which then appears on the player's jersey. Each virtual player's unique attributes, including personal characteristics ' and biographical details (place of origin) can also be edited by the user. Additionally, users with an Internet connection can modify entire teams by downloading custom rosters that have been created and uploaded by video game consumers.”

Granting EA's motion for summary judgment, Judge Wolfson determined “the transformative test best encapsulates [here] the type of nuanced analysis required to properly balance the competing right of publicity and First Amendment interest.” Hedging her bets, however, the district judge added: “Nonetheless, having concluded that EA is entitled to First Amendment protection under either the transformative test or either of the Rogers' tests, the Court need not decide which test should generally apply to misappropriation cases.”

Judge Wolfson did distinguish a pending action in which the U.S. District Court for the Northern District of California ruled that former college football player Samuel Keller and a group of co-plaintiffs could proceed with a right of publicity claim similar to Hart's. See, Keller v. Electronic Arts Inc., 09-01967 (N.D.Calif. 2010). The California federal court found no transformative use. But Judge Wolfson noted the Keller “court fails to address that the virtual image may be altered and that the EA [video game development] artists created the various formulations of each player.”

(The Keller litigation is a consolidated action in which a second group of former college athletes (both groups want certification as a class) allege a restraint of trade among EA, the NCAA and the Collegiate Licensing Company in violation of '1 of the Sherman Act. In July 2011, Northern District of California Judge Claudia Wilken denied EA's motion to dismiss the antitrust claims. See, In Re NCAA Student-Athlete Name & Likeness Licensing Litigation, 09-01967.)

Antitrust Actions on Pricing

Meanwhile, consumer antitrust class actions have been filed alleging the defendants set artificially high prices for interactive sports games. See, Pecover v. Electronic Arts Inc., 08-2820 (N.D.Calif.) and Hubbard v. Electronic Arts Inc., 2:09-CV-233 (E.D.Tenn.). And a Central District of California federal court tossed out ' on First Amendment grounds ' a false endorsement suit by former pro football player Jim Brown over EA's Madden NFL video games. That ruling was appealed to the Ninth Circuit, where oral arguments on the appeal were heard by a three-judge court panel in February 2011. See, Brown v. Electronic Arts, Inc., 09-01598.

By the time in 2011 that the U.S. Supreme Court officially recognized that video games are expressive works under the First Amendment, several federal appeals and district courts had reached the same conclusion. The Supreme Court found California's legislative restrictions on the sale to minors of video games with violent content to be unconstitutional. See , Brown v. Entertainment Merchants Association , 131 S.Ct. 2729 (2011). But in the context of alleged unauthorized uses of an individual's personal indicia, inconsistency ' in how different courts determine whether there are viable claims under state right of publicity laws or for false endorsement or association under the federal Lanham Act ' makes it difficult for attorneys who view content through a First Amendment lens when counseling entertainment production companies.

Rutgers QB Suit Fails Test

A new ruling by the U.S. District Court for the District of New Jersey emphasizes this inconsistency. See, Hart v. Electronic Arts Inc. (EA), 09-cv-5990. The New Jersey case is one of several pending litigations over uses of indicia of former college athletes in video games. The National Collegiate Athletic Association (NCAA) requires its educational-institution members to have college athletes sign consent forms for use of the athletes' right of publicity to promote NCAA events, and for charitable and educational purposes. The athletes receive no compensation from these activities, though the NCAA earns income from licensing athletes' indicia in commercial settings.

Former Rutgers University quarterback Ryan Hart filed a putative class action alleging that defendant Electronic Arts' NCAA Football video games misappropriated his likeness and identity in violation of New Jersey common law. The district court asked Hart to make the right of publicity claim more specific “as to what aspects of [Plaintiff's] likeness [were] appropriated.” EA moved on First Amendment grounds for summary judgment dismissal of Hart's second amended complaint (SAC).

The two major tests that courts employ when analyzing such First Amendment defenses are: the transformative test, which has its roots in copyright fair use and requires at least an expressive transformation of the “raw material” of the complaining individual's persona; and the Rogers test, which at a minimum requires artistic relevance between the defendant's product and use of the plaintiff's personal indicia. ( See , Rogers v. Grimaldi , 875 F.2d 994 (2d Cir. 1989), used by courts most commonly in Lanham Act actions.) The U.S. Court of Appeals for the Third Circuit, within which the District of New Jersey resides, hasn't formally adopted either test.

In considering Hart's SAC, District of New Jersey Judge Freda Wolfson observed that “virtual players in NCAA Football are identified by jersey number and position, although a user can edit game data to give the player a surname, which then appears on the player's jersey. Each virtual player's unique attributes, including personal characteristics ' and biographical details (place of origin) can also be edited by the user. Additionally, users with an Internet connection can modify entire teams by downloading custom rosters that have been created and uploaded by video game consumers.”

Granting EA's motion for summary judgment, Judge Wolfson determined “the transformative test best encapsulates [here] the type of nuanced analysis required to properly balance the competing right of publicity and First Amendment interest.” Hedging her bets, however, the district judge added: “Nonetheless, having concluded that EA is entitled to First Amendment protection under either the transformative test or either of the Rogers' tests, the Court need not decide which test should generally apply to misappropriation cases.”

Judge Wolfson did distinguish a pending action in which the U.S. District Court for the Northern District of California ruled that former college football player Samuel Keller and a group of co-plaintiffs could proceed with a right of publicity claim similar to Hart's. See, Keller v. Electronic Arts Inc., 09-01967 (N.D.Calif. 2010). The California federal court found no transformative use. But Judge Wolfson noted the Keller “court fails to address that the virtual image may be altered and that the EA [video game development] artists created the various formulations of each player.”

(The Keller litigation is a consolidated action in which a second group of former college athletes (both groups want certification as a class) allege a restraint of trade among EA, the NCAA and the Collegiate Licensing Company in violation of '1 of the Sherman Act. In July 2011, Northern District of California Judge Claudia Wilken denied EA's motion to dismiss the antitrust claims. See, In Re NCAA Student-Athlete Name & Likeness Licensing Litigation, 09-01967.)

Antitrust Actions on Pricing

Meanwhile, consumer antitrust class actions have been filed alleging the defendants set artificially high prices for interactive sports games. See, Pecover v. Electronic Arts Inc., 08-2820 (N.D.Calif.) and Hubbard v. Electronic Arts Inc., 2:09-CV-233 (E.D.Tenn.). And a Central District of California federal court tossed out ' on First Amendment grounds ' a false endorsement suit by former pro football player Jim Brown over EA's Madden NFL video games. That ruling was appealed to the Ninth Circuit, where oral arguments on the appeal were heard by a three-judge court panel in February 2011. See , Brown v. Electronic Arts, Inc., 09-01598.