When Keeping It Real, Goes Wrong: How Ed O’Bannon Changed the Game
By Uleses Henderson, Jr.
The sports-media industry has experienced a proliferation of litigation involving right of publicity claims asserted by student-athletes for the unauthorized use of their names, images and likenesses. This begs the question, should collegiate athletes be paid for the commercial use of their identity?
Former University of Southern California basketball standout Marcus Johnson believes so, arguing that “collegiate athletics generate millions of dollars for colleges, yet the student athletes whose blood, sweat, and tears literally generate the revenue, don’t receive any of the money.”
Marcus is not alone. In 2009, former UCLA basketball star Ed O’Bannon sued the National Collegiate Athletic Association (“NCAA”), on behalf of himself and other former NCAA athletes, over the NCAA’s and videogame manufacturer Electronic Arts, Inc.’s (“EA”) use of their likeness in videogames. O’Bannon alleged that not only did the NCAA and EA violate his and other athletes’ right of publicity, but conspired to prevent all NCAA athletes from licensing their names and images.
In June 2013, District Judge Claudia Wilken sided with O’Bannon, ruling that the NCAA cannot stop players from selling the rights to their names, images and likenesses. This effectively struck down NCAA regulations prohibiting athletes from receiving anything other than scholarships and the costs of collegiate attendance.[1] “This landmark decision marks the first time student-athletes will be paid for the likeness or image, and stands as a huge victory in the ongoing fight for student-athletes’ rights,” said Steve Berman, a Seattle-based attorney who represented the plaintiff in this case.[2]
That ruling is currently being appealed by the NCAA.[3]
Last July, Judge Wilken approved a $60 million settlement that resolved the claims against EA and the NCAA. The settlement permits some athletes to receive up to $7,200 for the use of their names, images, and likenesses. As a result of this case, EA discontinued its NCAA March Madness and NCAA Football videogame series; the question is whether EA will ever bring back the videogame series.
The right of publicity refers to the right of an individual to control the commercial use of his or her name, likeness, image, signature, performance, or other aspects of one’s identity. It often revolves around the use of the name or of a famous individual’s likeness, but an individual does not need to be a public figure to enforce the right. If anyone’s image is taken for a commercial use without consent, there could be a claim for infringing the right of publicity.
Perhaps the first case to recognize explicitly the right of publicity was the 1953 case of Haelan Laboratories, Inc. v. Topps Chewing Gum, Inc.,[4] which involved a dispute over the right to place an athlete’s photo on baseball trading cards. This court coined the phrase “right of publicity,” as it found that an individual has a property right in their images that could be exclusively transferred to another who, in turn, could enforce the same right against unauthorized users.
Since that case, right of publicity laws have emerged in many states in the U.S. To no surprise, California was the first state to make the right of publicity codified law in 1971, when the California Legislature enacted Civil Code Section 3334, which enables recovery by any living person whose name, photograph, or likeness has been used for commercial purposes without his or her consent. Today, more than half of our 50 states recognize the right of publicity, and at least 12 of those states allow for rights to be asserted posthumously.
One of the first cases addressing rights of publicity in digital depictions of celebrities was an early 1990’s case involving game show hostess Vanna White. White successfully sued Samsung over an ad that used a robot dressed in a wig, gown and jewelry, posed next to a Wheel of Fortune-style letter board. The Ninth Circuit appeals court found that there was little doubt that the celebrity ad was meant to depict Vanna White and appropriated her identity.
Since then, rights of publicity claims have emerged into the sports-media industry. The most highly publicized cases have been brought by former college athletes concerning sports videogames. Besides O’Bannon, two other notable federal cases on the issue include Hart v. Electronic Arts, Inc. [5] and Keller v. Electronic Arts, Inc. [6]
Both Hart and Keller involve former college quarterbacks who brought right of publicity claims against EA, alleging that EA intentionally used avatars resembling their likeness in its NCAA Football videogames and promotions. Applying the “transformative use” test, [7] the courts in these cases found that the First Amendment does not definitively protect EA’s unlicensed use of college football players’ likenesses in commercial videogames — not even where the video games include creative elements apart from the players’ likenesses. The court in Hart explained that EA’s use of player likenesses was insufficiently transformative, as “[a]n artist depicting a celebrity must contribute something more than a ‘merely trivial’ variation” to benefit from First Amendment protection. The court in Keller found that under the “transformative use” test, EA’s use did not qualify for First Amendment protection as a matter of law because it literally recreated Keller in the very setting in which he achieved notoriety. The courts found that the variation required for First Amendment protection must be to the celebrity’s likeness itself, and not exclusively to background elements.
Keller’s right of publicity claims represent one aspect of a broader consolidated California district court action, In re NCAA Student-Athlete Name and Likeness Licensing Litigation, which includes O’Bannon’s claim that EA, the NCAA and its licensing agent, Collegiate Licensing Company, violated federal antitrust laws against price fixing by conspiring to set licensing fees for college athletes’ names, likenesses and images at zero.
In these sports media cases, the principle issue in dispute is the use of avatars that resemble the height, weight, positions, playing abilities and special moves of certain collegiate players. While these games don’t use their names, their jersey numbers are used and the players are easily recognizable. Some games even have recruiting features that include the hometowns of the players.
In a more recent loss for media companies, last year EA lost its appeal before the Ninth Circuit court to dismiss claims by approximately 6,000 retired professional football players.[8] The Ninth Circuit affirmed a lower court’s holding that the players’ likenesses in the Madden NFL videogames are not sufficiently different or transformative to confer protection.
The allegations brought in this case are virtually identical to those brought against EA in Keller and Hart. Similar to its decision in Keller, the Ninth Circuit court was unmoved by EA’s arguments pertaining to its use of other creative elements within the game’s virtual world. The Court found that “[l]ike NCAA Football, Madden NFL replicates players’ physical characteristics and allows users to manipulate them in the performance of the same activity for which they are known in real life — playing football for an NFL team. Neither the individual players’ likenesses nor the graphics and other background content are transformed more in Madden NFL than they were in NCAA Football.”
While the issue of identity use in videogames continues to be a matter of strong debate, Marcus Johnson believes that the overall issue is that college athletics is a business where everyone profits except the athletes themselves. For example, the NCAA requires student athletes to sign agreements that permit the NCAA to profit from the athletes’ names and likenesses indefinitely without compensating the athletes at all.
Some argue that the value of a free education is enough for college athletes. The NCAA argues that sharing revenue with student-athletes would threaten the amateur model of college sports. However, many student-athletes don’t consider college a privilege, but rather a mandatory stepping-stone to professional sports. Advocates for college sports reform contend that student-athletes should be paid during their tenure in college in light of an exploitative system where student-athletes receive nothing for name, image and likeness rights; particularly in an era where the NCAA and top conferences negotiate billion-dollar TV contracts and where college coaches earn millions of dollars a year to coach student-athletes. As advocacy for college sports reform continues, more litigation in this area is indeed expected.
Uleses Henderson, Jr. is a partner at One LLP, an intellectual property, technology and media law firm. He offers a broad range of intellectual property counseling and litigation services in all aspects of patents, trademarks, copyrights, trade dress, trade secret, entertainment and new media, sports, and rights of publicity. He can be reached at (310) 774-0256 or uhenderson@onellp.com.
[1]NCAA student-athletes can’t even hold side jobs earning more than $2,000 per year.
[2] The Associated Press, $60 Million Settlement Approved in N.C.A.A. Video Game Lawsuit, The New York Times (July 15, 2015), http://www.nytimes.com/2015/07/18/sports/ncaa-video-game-lawsuit-60-million-settlement-is-approved.html.
[3] This past September, the Ninth Circuit Court of Appeals upheld the lower court’s decision and affirmed Ed O’Bannon’s central thesis that certain NCAA amateurism rules violate federal antitrust law.
[4] 202 F.2d 866, 868 (2d Cir. 1953).
[5] Keller v. Elec. Arts, Inc., 724 F.3d 1268 (9th Cir. 2013).
[6] Hart v. Elec. Arts, Inc., 808 F. Supp. 2d 757 (D.N.J. 2011).
[7] The landmark ruling of Comedy III Products v. Gary Saderup, Inc., 106 Cal. 2d, 126 (2001) sets forth the “transformative use” test, which asks whether the challenged work or product “contains significant transformative elements [that] does not derive primarily from the celebrity’s fame.”
[8] Michael Davis, et. al v. Elec. Arts, Inc., 775 F.3d 1172 (9th Cir. 2015).
