Third Cir. Embraces 'Transformative Use' As Defense Against Publicity Right Claim

Joining Judge Greenaway in the majority was Senior Judge A. Wallace Tashima of the Ninth Circuit, who sat by designation. Third Circuit Judge Thomas Ambro dissented. After an extensive exploration of various methods used in other courts, the majority chose to follow the 'transformative use' test, citing the 2001 case from the Supreme Court of California in Comedy III Productions Inc. v. Gary Saderup Inc, 21 P.3d 797. That case, over the production of T-shirts with an artist's charcoal drawing of the Three Stooges, applied the transformative use test from copyright law into right-of-publicity cases.

'Applying this test, the court concluded that charcoal portraits of the Three Stooges did violate the Stooges' rights of publicity, holding that the court could 'discern no significant transformative or creative contribution' and that 'the marketability and economic value of [the work] derives primarily from the fame of the celebrities depicted,” Judge Greenaway said, quoting from the California court's opinion.

Ultimately in Hart, the Third Circuit ruled that the video-game maker didn't change his appearance enough to escape the football player's right of publicity claim.

Comparing the transformative use test to other options, Judge Greenaway said: 'In our view, the transformative use test appears to strike the best balance because it provides courts with a flexible ' yet uniformly applicable ' analytical framework.'

Circuit Judge Ambro didn't disagree with the majority's choice of test; rather, he disagreed with their application of it. 'My colleagues limit effectively their transformative inquiry to Hart's identity alone, disregarding other features of the work,' Ambro wrote. 'Further, my colleagues penalize EA for the realism and financial success of NCAA Football, a position I find difficult to reconcile with First Amendment protections traditionally afforded to true-to-life depictions of real figures and works produced for profit.'

Just about every work ' a book, a painting, a video game ' has some expressive content, so if the test were to be based on the product as a whole, there would be no theory of the right to publicity, said Michael Rubin in response to the dissent. Rubin, of Altshuler Berzon in San Francisco, argued the case before the Third Circuit for Hart.

Elizabeth A. McNamara, of Davis Wright Tremaine in New York, argued the case for Electronic Arts.

Saranac Hale Spencer reports for The Legal Intelligencer, an ALM affiliate publication of Entertainment Law & Finance.

In a case of first impression, a split panel of the U.S. Court of Appeals for the Third Circuit restored a cause of action by a former college football player who says his likeness was appropriated without his consent for use in a video game. In so holding, the appeals court panel reversed a New Jersey federal district court that had dismissed the ex-player's suit on the ground that video games are afforded First Amendment protections as expressive speech. The Third Circuit agreed that video games enjoy First Amendment protections, but said intellectual property rights could impose limits on those free speech rights.

In Hart v. Electronic Arts Inc., 11-3750, the Third Circuit on a 2-1 vote said that Ryan Hart, who played quarterback for Rutgers University in 2004 and 2005, could bring a right of publicity claim against Electronic Arts over its NCAA Football video game. Hart filed the suit as a purported class action. He alleges that the video-game maker violated his right of publicity by featuring a player with his jersey number, 13; his height and weight; and his token left-hand wristband.

Because neither the Third Circuit nor the New Jersey courts had a 'definitive methodology for balancing the tension between the First Amendment and the right of publicity, we are presented with a case of first impression,' said Third Circuit Judge Joseph A. Greenaway Jr. for the majority.

Joining Judge Greenaway in the majority was Senior Judge A. Wallace Tashima of the Ninth Circuit, who sat by designation. Third Circuit Judge Thomas Ambro dissented. After an extensive exploration of various methods used in other courts, the majority chose to follow the 'transformative use' test, citing the 2001 case from the Supreme Court of California in Comedy III Productions Inc. v. Gary Saderup Inc , 21 P.3d 797. That case, over the production of T-shirts with an artist's charcoal drawing of the Three Stooges, applied the transformative use test from copyright law into right-of-publicity cases.

'Applying this test, the court concluded that charcoal portraits of the Three Stooges did violate the Stooges' rights of publicity, holding that the court could 'discern no significant transformative or creative contribution' and that 'the marketability and economic value of [the work] derives primarily from the fame of the celebrities depicted,” Judge Greenaway said, quoting from the California court's opinion.

Ultimately in Hart, the Third Circuit ruled that the video-game maker didn't change his appearance enough to escape the football player's right of publicity claim.

Comparing the transformative use test to other options, Judge Greenaway said: 'In our view, the transformative use test appears to strike the best balance because it provides courts with a flexible ' yet uniformly applicable ' analytical framework.'

Circuit Judge Ambro didn't disagree with the majority's choice of test; rather, he disagreed with their application of it. 'My colleagues limit effectively their transformative inquiry to Hart's identity alone, disregarding other features of the work,' Ambro wrote. 'Further, my colleagues penalize EA for the realism and financial success of NCAA Football, a position I find difficult to reconcile with First Amendment protections traditionally afforded to true-to-life depictions of real figures and works produced for profit.'

Just about every work ' a book, a painting, a video game ' has some expressive content, so if the test were to be based on the product as a whole, there would be no theory of the right to publicity, said Michael Rubin in response to the dissent. Rubin, of Altshuler Berzon in San Francisco, argued the case before the Third Circuit for Hart.

Elizabeth A. McNamara, of Davis Wright Tremaine in New York, argued the case for Electronic Arts.

Saranac Hale Spencer reports for The Legal Intelligencer, an ALM affiliate publication of Entertainment Law & Finance.