Transformative Use Musings

The California Supreme Court has accepted “transformative use” as a First Amendment defense to a right-of-publicity claim for more than a decade. Comedy III Productions Inc. v. Gary Saderup Inc., 25 Cal.4th 387 (Cal. 2001). A transformative use may occur when the raw materials of an individual's persona are incorporated into a new work that contains a sufficient amount of its own expression.

Judges in right-of-publicity cases have debated whether a transformative use should be determined based on the new work as a whole, or specifically on how a plaintiff's persona is included in the new work. The issue recently came up before the U.S. Court of Appeals for the Ninth Circuit, in the class action suit by former college athletes who claim Electronic Arts (EA) violated their rights of publicity with the NCAA Football video game. In re: NCAA Student-Athlete Name & Licensing Litigation, 10-15387 (9th Cir. 2013).

EA moved to dismiss the complaint on First Amendment grounds, but the U.S. District Court for the Northern District of California denied the motion. The Ninth Circuit affirmed, noting that NCAA Football “literally recreates” elements of first-named plaintiff Samuel Keller ' a former player at Arizona State University and the University of Nebraska ' as a game avatar “in the very setting in which he has achieved renown.” The video game's players have some ability to direct an individual player's career and form teams by picking high school players. But the Ninth Circuit noted: “EA seeks to replicate each [NCAA] school's entire team as accurately as possible. Every real football player on each team included in the game has a corresponding avatar in the game with the player's actual jersey number and virtually identical height, weight, build, skin tone, hair color, and home state.”

Though EA argued its transformative use defense should be decided based on NCAA Football as a whole, the Ninth Circuit embraced the view of the California Court of Appeal in No Doubt v. Activision Publishing, Inc., 122 Cal. Rptr. 3d (Ct. App. 2011). In that case, by members of the rock band No Doubt over the video game Band Hero , the court of appeal found: “That the avatars can be manipulated to perform at fanciful venues including outer space or to sing songs the real band would object to singing, or that the avatars appear in the context of a videogame that contains many other creative elements, does not transform the avatars into anything other than exact depictions of No Doubt's members doing exactly what they do as celebrities.”

In NCAA, the Ninth Circuit also cited the Third Circuit in Hart v. Electronics Arts Inc., 717 F.3d 141 (3d Cir. 2013), another right-of-publicity suit by former college athletes in which an appeals court found no transformative use by EA. The Third Circuit's transformative use analysis focused on the Hart avatar rather than EA's video game as a whole to decide that the “ability to make minor alterations ' is likewise insufficient for '[a]n artist depicting a celebrity must contribute something more than a 'merely trivial variation.'” Taken together, NCAA Student-Athlete , No Doubt and Hart represent a judicial trend toward narrow view-finding for the transformative use defense in right-of-publicity cases.

The California Supreme Court adopted the transformative use as a defense to right-of-publicity claims from copyright law, where it is a component of fair use defense. The Ninth Circuit recently acknowledged, in a copyright-infringement case against punk rockers Green Day, that “whether a work is transformative is an often highly contentious topic.” In the case, visual artist Dereck Seltzer sued over the band's inclusion of his “Scream Icon” image in a stage backdrop video. In copyright law, transformative use is determined under '107's “purpose and character of the use” prong. The appeals court found a transformative use because, “although Scream Icon is prominent, it remains only a component of what is essentially a street-art focused music video about religion and especially about Christianity (images of Jesus Christ appear ' and are defaced ' several times during the course of the video).” Seltzer v. Green Day Inc., 11-56573 (9th Cir. 2013).

Though the appeals court discussed Green Day's overall video message, in copyright law the consideration of a “whole work” occurs under the “amount and substantiality” factor of the Copyright Act's fair use test, 17 U.S.C. '107. This is looked at from the perspective of how much of the plaintiff's work the defendant has used. Green Day incorporated Seltzer's entire “Scream Icon” image into its stage video. But the Ninth Circuit noted that “this factor will not weigh against an alleged infringer, even when he copies the whole work, if he takes no more than is necessary for his intended use.”

Stan Soocher'is Editor-in-Chief of'Entertainment Law & Finance'and a tenured Associate Professor of Music & Entertainment Industry Studies at the University of Colorado's Denver Campus. He can be reached at'[email protected]'or via'www.stansoocher.com.

The California Supreme Court has accepted “transformative use” as a First Amendment defense to a right-of-publicity claim for more than a decade. Comedy III Productions Inc. v. Gary Saderup Inc., 25 Cal.4th 387 (Cal. 2001). A transformative use may occur when the raw materials of an individual's persona are incorporated into a new work that contains a sufficient amount of its own expression.

Judges in right-of-publicity cases have debated whether a transformative use should be determined based on the new work as a whole, or specifically on how a plaintiff's persona is included in the new work. The issue recently came up before the U.S. Court of Appeals for the Ninth Circuit, in the class action suit by former college athletes who claim Electronic Arts (EA) violated their rights of publicity with the NCAA Football video game. In re: NCAA Student-Athlete Name & Licensing Litigation, 10-15387 (9th Cir. 2013).

EA moved to dismiss the complaint on First Amendment grounds, but the U.S. District Court for the Northern District of California denied the motion. The Ninth Circuit affirmed, noting that NCAA Football “literally recreates” elements of first-named plaintiff Samuel Keller ' a former player at Arizona State University and the University of Nebraska ' as a game avatar “in the very setting in which he has achieved renown.” The video game's players have some ability to direct an individual player's career and form teams by picking high school players. But the Ninth Circuit noted: “EA seeks to replicate each [NCAA] school's entire team as accurately as possible. Every real football player on each team included in the game has a corresponding avatar in the game with the player's actual jersey number and virtually identical height, weight, build, skin tone, hair color, and home state.”

Though EA argued its transformative use defense should be decided based on NCAA Football as a whole, the Ninth Circuit embraced the view of the California Court of Appeal in No Doubt v. Activision Publishing, Inc ., 122 Cal. Rptr. 3d (Ct. App. 2011). In that case, by members of the rock band No Doubt over the video game Band Hero , the court of appeal found: “That the avatars can be manipulated to perform at fanciful venues including outer space or to sing songs the real band would object to singing, or that the avatars appear in the context of a videogame that contains many other creative elements, does not transform the avatars into anything other than exact depictions of No Doubt's members doing exactly what they do as celebrities.”

In NCAA, the Ninth Circuit also cited the Third Circuit in Hart v. Electronics Arts Inc., 717 F.3d 141 (3d Cir. 2013), another right-of-publicity suit by former college athletes in which an appeals court found no transformative use by EA. The Third Circuit's transformative use analysis focused on the Hart avatar rather than EA's video game as a whole to decide that the “ability to make minor alterations ' is likewise insufficient for '[a]n artist depicting a celebrity must contribute something more than a 'merely trivial variation.'” Taken together, NCAA Student-Athlete , No Doubt and Hart represent a judicial trend toward narrow view-finding for the transformative use defense in right-of-publicity cases.

The California Supreme Court adopted the transformative use as a defense to right-of-publicity claims from copyright law, where it is a component of fair use defense. The Ninth Circuit recently acknowledged, in a copyright-infringement case against punk rockers Green Day, that “whether a work is transformative is an often highly contentious topic.” In the case, visual artist Dereck Seltzer sued over the band's inclusion of his “Scream Icon” image in a stage backdrop video. In copyright law, transformative use is determined under '107's “purpose and character of the use” prong. The appeals court found a transformative use because, “although Scream Icon is prominent, it remains only a component of what is essentially a street-art focused music video about religion and especially about Christianity (images of Jesus Christ appear ' and are defaced ' several times during the course of the video).” Seltzer v. Green Day Inc., 11-56573 (9th Cir. 2013).

Though the appeals court discussed Green Day's overall video message, in copyright law the consideration of a “whole work” occurs under the “amount and substantiality” factor of the Copyright Act's fair use test, 17 U.S.C. '107. This is looked at from the perspective of how much of the plaintiff's work the defendant has used. Green Day incorporated Seltzer's entire “Scream Icon” image into its stage video. But the Ninth Circuit noted that “this factor will not weigh against an alleged infringer, even when he copies the whole work, if he takes no more than is necessary for his intended use.”

Stan Soocher'is Editor-in-Chief of'Entertainment Law & Finance'and a tenured Associate Professor of Music & Entertainment Industry Studies at the University of Colorado's Denver Campus. He can be reached at'[email protected]'or via'www.stansoocher.com.