By Jeff Fabian
In holding that Electronic Arts Inc.’s (EA) use of player likenesses in its popular “NCAA Football” video game series was not protected by the First Amendment, the Ninth Circuit Court of Appeals followed the Third Circuit and applied the “transformative use” test. In re NCAA Student-Athlete Name & Likeness Licensing Litig., 724 F.3d 1268 (9th Cir. 2013); Hart v. Electronic Arts, Inc., 717 F.3d 141 (3d Cir. 2013). These decisions seemingly depart from prior decisions applying the Rogers test to evaluate a First Amendment defense to right-of-publicity claims based on the unauthorized commercial use of a claimant’s likeness. See, e.g., Brown v. Electronic Arts, Inc., 724 F.3d 1235 (9th Cir. 2013); Parks v. LaFace Records, 329 F.3d 437 (6th Cir. 2003).
Both cases involve claims brought by former college athletes against EA alleging that the video game maker violated the players’ right of publicity under state law by including the players’ likenesses in multiple versions of “NCAA Football.” EA’s success with the “NCAA Football” franchise is in no small part owed to EA’s focus on realism and detail. Every team included in the game is populated by digital avatars resembling real-life counterparts with each player’s actual jersey number and similar appearances and biographical information. In fact, EA did not contest right-of-publicity liability but instead asserted that its use of player likenesses was a protected expression under the First Amendment.
The transformative use test applied by the Ninth and Third Circuits derives from copyright law and is an adaptation of a factor commonly considered when evaluating a fair-use defense — the purpose and character of the use. The central question is whether the accused use merely copies the plaintiff’s identity or instead creates something new. The test attempts to strike a balance between safeguarding a plaintiff’s right of publicity and the public’s interest in free expression.
By contrast, the Rogers test stems from trademark law and provides a defense to liability unless the claimant’s likeness has no artistic relevance to the accused work, or the work is explicitly misleading as to its source or content. In declining to apply the Rogers test, the circuit courts noted that the test was designed to protect consumers from the risk of confusion — a policy consistent with trademark law. The right of publicity on the other hand, serves a distinct purpose in protecting a form of intellectual property in one’s person.
Notably, cases applying the Rogers test often involve federal trademark claims related to the use of a plaintiff’s likeness to create confusion about affiliation or endorsement, but the former players made no such allegations against EA. Thus, it is likely premature to assume that the Rogers test will fall by the wayside, and practitioners should carefully consider the nature of the alleged harm as it relates to potential defenses against a right-of-publicity claim.
