A Look at Right of Publicity Suit Over <i>Gears of War</i>

While rooted in state privacy law, a right of publicity claim also borrows themes from copyright and trademark law. It recognizes the right of celebrities to profit from their creative endeavors, as well as the resulting commercial value that stems from their identity. In New Jersey, the right of publicity is a common law cause of action that is based on the Second Restatement of Torts. Pennsylvania recognizes both common law causes of action as well as a statutory cause of action. See, “Unauthorized Use of Name or Likeness,” 42 Pa. Cons. Stat §8316 et seq.. To state a claim under the Pennsylvania statute, the natural person's name or likeness has to have commercial value, the name or likeness has to have been used for any commercial or advertising purpose, and the name or likeness has to have been used without written consent of the natural person or the written consent of any party authorized to give consent. Under the Pennsylvania statute, claims can survive the celebrity's death for 30 years. But the statute exempts situations where the name or likeness is used in an “expressive work.” Under the statute, expressive works include literary, dramatic, fictional, historical, audiovisual or musical works, other than when used or employed for commercial or advertising purposes. In Hart, the Third Circuit indicated that video games fall into the category of protected expressive speech under the First Amendment. Statutory remedies in the Pennsylvania statute for violating the right of publicity statute include damages for injury or loss and/or injunctive relief.

Hart

In Hart, the Third Circuit evaluated the three main competing tests utilized across the federal circuits when balancing the tension between First Amendment and right of publicity claims. In that case, Ryan Hart, a former college football quarterback at Rutgers sued EA for using his likeness without his permission in the popular NCAA Football video game. The game incorporates the digital avatars of various college athletes. The avatars share the vital and biographical information of the player they are based upon. EA did not request permission from intercollegiate players to use their likeness and identity rights. Players of the video game have some ability to change the digital avatar's appearance, but certain details are unchangeable. These include the avatar's home state, home town, team and class year. Hart brought suit against EA for inclusion of an avatar based on him on various theories, including a claim for violating his right to publicity under New Jersey law.

EA countered with the argument that the First Amendment protected its use. The lower court sided with EA and granted its summary judgment motion. The Third Circuit reversed and remanded as to the right of publicity claim and, in doing so, it adopted the “transformative use” test first recognized in California as a right of publicity defense This test is based on the first prong of copyright law's fair use test; its primary inquiry is whether “new” expression is added by the defendant to the source material such that the use is transformative.

Before the Third Circuit, EA attempted to argue that the ability of the game-player to change the physical characteristics of the avatars was transformative enough to protect EA's use. The appeals court found this argument unavailing because in their estimation, a player's identity was tethered to both the biography and the physical likeness of the player. In Hart, facets of the biographical information were unchangeable and the avatars were presented in much the same context as the actual individual upon whom the avatar was based, i.e., in a college football game. As such, because the original source material was not significantly transformed, the appeals court reversed and remanded for further proceedings. Ultimately, EA and the NCAA settled with a class of college athletes who appeared in the video games between 2004 and 2013 for $60 million (averaging $1,600 per player).

Hamilton

In Hamilton v. Speight, the Eastern District of Pennsylvania case, via an amended complaint filed on Feb. 14, 2017, Lenwood Hamilton alleges that Lester Speight, Epic Games and various entities associated with Microsoft, incorporated his voice and physical attributes into the video game Gears of War. Hamilton, from Pennsylvania, is a former football player who later wrestled under the name “Hard Rock” Hamilton. According to the amended complaint, the Gears of War franchise is a smashing commercial success — both in the U.S. and abroad. Hamilton's causes of action include claims for unauthorized use of name or likeness under the Pennsylvania right of publicity statute, misappropriation of publicity, and invasion of privacy, among others.

One of the facts that distinguishes Hamilton from Hart, is that at this time there is a question as to whether the defendants appropriated Hamilton's voice and likeness. Here, the case is dissimilar to Hart, which presupposed that the avatar in question was based on Hart. The amended complaint in Hamilton alleges that a forensic examiner has determined that the voiceover has the same voice as Hamilton. It further indicates that the character that is allegedly based on Hamilton shares his signature gold tooth, derby hat, wrist bands, physiognomy and body build. The defendants have filed a motion to dismiss for failure to state a claim. In the supporting brief, they argue that even if Hamilton's likeness was incorporated into Gears of War, which they explicitly deny, that the use at issue is a protected, expressive work, and is transformative as elucidated by Hart. In addition to denying the physical similarities between the video game character and Hamilton, they further challenge the timeliness of the claims.

Ultimately, if Hamilton survives the motion to dismiss, he will have to persuade the fact-finder that an impermissible use of his identity and/or voice occurred, and that the use in the video game was not transformative. In video game cases where the character was not intended to be a literal depiction of a real person engaging in the same activities of that real person, the right of publicity claim struggles for traction. This is because identity is often strongly tied to context and when context is shifted, the use is more likely to be transformative such that it is protected expression.

Faulkner

But in Faulkner v. Hasbro, 15-6518 (D.N.J. 2016), the district court allowed a right of publicity claim to proceed where a Fox News Channel anchor alleged that Hasbro's Harris Faulkner Hamster Doll appropriated her identity by sharing her name. Hasbro argued that the “fundamental defect with Ms. Faulkner's Complaint is that she confuses her right of publicity, which protects the value of her unique identity … with her rights under the Lanham Act, which protect the value of her name, to the extent she can show it has acquired protection as an unregistered trademark.”

But the New Jersey federal district court noted that “Hasbro has failed to provide any authority showing that motions to dismiss claims based on a violation of the right of publicity have been successful — the cases it cites were decided on summary judgment.”

The New Jersey federal court went on to find: “According to Hasbro, 'it is clear that [its Littlest Pet Shop] is a fictionalized world in which “Harris Faulkner” and hundreds of other toys are characters.' [Still,] Faulkner is entitled to adduce evidence that as a child plays inside this fictionalized, highly interactive world, s/he may see or put into the girl hamster doll named Harris Faulkner the identity, persona, and characteristics of the real Harris Faulkner. In the specialized context of Hasbro's successful toy line 'world,' in which the hamster is admittedly 'a character' designed to be played with, Faulkner's allegation that this doll bears her unusual celebrity name sufficiently pleads a violation of the right of publicity.”

Conclusion

While there is an uptick in right of publicity cases, counsel should remember that context and jurisdiction are important in bringing or defending against a right of publicity claim. In the case of the class action lawsuit that encompassed the claims of Hart, the $60 million settlement reached with the class of college athletes (who notably are prohibited by NCAA eligibility rules from taking commercial endorsements) was far from a modest sum. Imagine how damages in the case of a celebrity that trades upon the commercial value of his or her identity have the potential to grow higher.

Accordingly, counsel should encourage a candid discussion about whether characters within a commercial work, or a work with commercial implications, are based on a famous person before, not after, the franchise has achieved a high-level of commercial success. This is especially true in a world where works are often created in serial format and it is easier to obtain permission before the work has proven its commercial value in the marketplace.

*****
Christine E. Weller is an associate at Griesing Law in Philadelphia where she focuses her practice on new media, intellectual property, nonprofit and employment law matters. This article also appeared in the New Jersey Law Journal, an ALM sibling of Entertainment Law & Finance.

Since the humble beginnings of Pac-Man and Pong, video games have continued to evolve and incorporate all facets of popular culture. Games today are commonly endorsed by, or contain the likenesses of, celebrities from NFL figures to reality TV starlets like Kim Kardashian. What happens though, when a video game features the defining characteristics of a celebrity, without receiving permission from that person?

Celebrities who are fiercely protective of their image and branding fight back, bringing an increasing number of lawsuits when it appears that a video game creator has borrowed without permission. These right of publicity cases highlight the tension that exists between the rights of public figures to control the way their image and likeness is used in commercial contexts and the First Amendment, which protects the rights of authors to develop creative expression.

In 2013, the case of first impression from the U.S. Court of Appeals for the Third Circuit based on a New Jersey right of publicity claim demonstrated that courts across the country aren't dismissing these plaintiffs out of hand, but success on the merits is an uphill battle. See , Hart v. Electronic Arts (EA) , 717 F.3d 141 (3d Cir. 2013). Within the Third Circuit, a 2017 right of publicity case worth tracking is based on a video game and before a court in the Eastern District of Pennsylvania. This time, the complaint is based on Pennsylvania right of publicity claims. See, Hamilton v. Speight, Docket, 17-cv-00169 (Jan. 11, 2017).

While rooted in state privacy law, a right of publicity claim also borrows themes from copyright and trademark law. It recognizes the right of celebrities to profit from their creative endeavors, as well as the resulting commercial value that stems from their identity. In New Jersey, the right of publicity is a common law cause of action that is based on the Second Restatement of Torts. Pennsylvania recognizes both common law causes of action as well as a statutory cause of action. See, “Unauthorized Use of Name or Likeness,” 42 Pa. Cons. Stat §8316 et seq.. To state a claim under the Pennsylvania statute, the natural person's name or likeness has to have commercial value, the name or likeness has to have been used for any commercial or advertising purpose, and the name or likeness has to have been used without written consent of the natural person or the written consent of any party authorized to give consent. Under the Pennsylvania statute, claims can survive the celebrity's death for 30 years. But the statute exempts situations where the name or likeness is used in an “expressive work.” Under the statute, expressive works include literary, dramatic, fictional, historical, audiovisual or musical works, other than when used or employed for commercial or advertising purposes. In Hart, the Third Circuit indicated that video games fall into the category of protected expressive speech under the First Amendment. Statutory remedies in the Pennsylvania statute for violating the right of publicity statute include damages for injury or loss and/or injunctive relief.

Hart

In Hart, the Third Circuit evaluated the three main competing tests utilized across the federal circuits when balancing the tension between First Amendment and right of publicity claims. In that case, Ryan Hart, a former college football quarterback at Rutgers sued EA for using his likeness without his permission in the popular NCAA Football video game. The game incorporates the digital avatars of various college athletes. The avatars share the vital and biographical information of the player they are based upon. EA did not request permission from intercollegiate players to use their likeness and identity rights. Players of the video game have some ability to change the digital avatar's appearance, but certain details are unchangeable. These include the avatar's home state, home town, team and class year. Hart brought suit against EA for inclusion of an avatar based on him on various theories, including a claim for violating his right to publicity under New Jersey law.

EA countered with the argument that the First Amendment protected its use. The lower court sided with EA and granted its summary judgment motion. The Third Circuit reversed and remanded as to the right of publicity claim and, in doing so, it adopted the “transformative use” test first recognized in California as a right of publicity defense This test is based on the first prong of copyright law's fair use test; its primary inquiry is whether “new” expression is added by the defendant to the source material such that the use is transformative.

Before the Third Circuit, EA attempted to argue that the ability of the game-player to change the physical characteristics of the avatars was transformative enough to protect EA's use. The appeals court found this argument unavailing because in their estimation, a player's identity was tethered to both the biography and the physical likeness of the player. In Hart, facets of the biographical information were unchangeable and the avatars were presented in much the same context as the actual individual upon whom the avatar was based, i.e., in a college football game. As such, because the original source material was not significantly transformed, the appeals court reversed and remanded for further proceedings. Ultimately, EA and the NCAA settled with a class of college athletes who appeared in the video games between 2004 and 2013 for $60 million (averaging $1,600 per player).

Hamilton

In Hamilton v. Speight, the Eastern District of Pennsylvania case, via an amended complaint filed on Feb. 14, 2017, Lenwood Hamilton alleges that Lester Speight, Epic Games and various entities associated with Microsoft, incorporated his voice and physical attributes into the video game Gears of War. Hamilton, from Pennsylvania, is a former football player who later wrestled under the name “Hard Rock” Hamilton. According to the amended complaint, the Gears of War franchise is a smashing commercial success — both in the U.S. and abroad. Hamilton's causes of action include claims for unauthorized use of name or likeness under the Pennsylvania right of publicity statute, misappropriation of publicity, and invasion of privacy, among others.

One of the facts that distinguishes Hamilton from Hart, is that at this time there is a question as to whether the defendants appropriated Hamilton's voice and likeness. Here, the case is dissimilar to Hart, which presupposed that the avatar in question was based on Hart. The amended complaint in Hamilton alleges that a forensic examiner has determined that the voiceover has the same voice as Hamilton. It further indicates that the character that is allegedly based on Hamilton shares his signature gold tooth, derby hat, wrist bands, physiognomy and body build. The defendants have filed a motion to dismiss for failure to state a claim. In the supporting brief, they argue that even if Hamilton's likeness was incorporated into Gears of War, which they explicitly deny, that the use at issue is a protected, expressive work, and is transformative as elucidated by Hart. In addition to denying the physical similarities between the video game character and Hamilton, they further challenge the timeliness of the claims.

Ultimately, if Hamilton survives the motion to dismiss, he will have to persuade the fact-finder that an impermissible use of his identity and/or voice occurred, and that the use in the video game was not transformative. In video game cases where the character was not intended to be a literal depiction of a real person engaging in the same activities of that real person, the right of publicity claim struggles for traction. This is because identity is often strongly tied to context and when context is shifted, the use is more likely to be transformative such that it is protected expression.

Faulkner

But in Faulkner v. Hasbro, 15-6518 (D.N.J. 2016), the district court allowed a right of publicity claim to proceed where a Fox News Channel anchor alleged that Hasbro's Harris Faulkner Hamster Doll appropriated her identity by sharing her name. Hasbro argued that the “fundamental defect with Ms. Faulkner's Complaint is that she confuses her right of publicity, which protects the value of her unique identity … with her rights under the Lanham Act, which protect the value of her name, to the extent she can show it has acquired protection as an unregistered trademark.”

But the New Jersey federal district court noted that “Hasbro has failed to provide any authority showing that motions to dismiss claims based on a violation of the right of publicity have been successful — the cases it cites were decided on summary judgment.”

The New Jersey federal court went on to find: “According to Hasbro, 'it is clear that [its Littlest Pet Shop] is a fictionalized world in which “Harris Faulkner” and hundreds of other toys are characters.' [Still,] Faulkner is entitled to adduce evidence that as a child plays inside this fictionalized, highly interactive world, s/he may see or put into the girl hamster doll named Harris Faulkner the identity, persona, and characteristics of the real Harris Faulkner. In the specialized context of Hasbro's successful toy line 'world,' in which the hamster is admittedly 'a character' designed to be played with, Faulkner's allegation that this doll bears her unusual celebrity name sufficiently pleads a violation of the right of publicity.”

Conclusion

While there is an uptick in right of publicity cases, counsel should remember that context and jurisdiction are important in bringing or defending against a right of publicity claim. In the case of the class action lawsuit that encompassed the claims of Hart, the $60 million settlement reached with the class of college athletes (who notably are prohibited by NCAA eligibility rules from taking commercial endorsements) was far from a modest sum. Imagine how damages in the case of a celebrity that trades upon the commercial value of his or her identity have the potential to grow higher.

Accordingly, counsel should encourage a candid discussion about whether characters within a commercial work, or a work with commercial implications, are based on a famous person before, not after, the franchise has achieved a high-level of commercial success. This is especially true in a world where works are often created in serial format and it is easier to obtain permission before the work has proven its commercial value in the marketplace.

*****
Christine E. Weller is an associate at Griesing Law in Philadelphia where she focuses her practice on new media, intellectual property, nonprofit and employment law matters. This article also appeared in the New Jersey Law Journal, an ALM sibling of Entertainment Law & Finance.