By Daniel Klausner, JD
The summary judgment in favor of Electronic Arts (EA) based on the transformative use defense in Hart v. Electronic Arts (DNJ, Sept. 9, 2011) may give their legal team hope as they appeal their denied motion to dismiss in Keller v. Electronic Arts (NDCA, Feb. 8, 2010). While both of these cases are limited to collegiate football players, Davis v. Electronic Art (NDCA, April, 12, 2012), which contains similar claims by retired professional football players, waits in the wings and very likely will turn on the same issue. The appeal could result in a 9th Circuit decision on transformative use that will have repercussions on the use of athletes’ likenesses as avatars in video games.
No matter the outcome, an appeal will undoubtedly affect the market for software licenses of professional athletes. A win on the transformative use defense may give EA enough room to avoid licensing fees altogether. A loss may increase the overall cost of licensing fees so much that the developers avoid use of athletes’ likenesses in sports simulations entirely. Even with a loss in Keller, EA may still succeed on the transformative use defense in Davis, where avatars of former players use a different jersey number.
In their motion to dismiss the right of publicity claim in Keller, EA argues the First Amendment protects NCAA Football because the work is transformative and, thus, the use of the athletes’ likeness is a fair use. In denying the motion to dismiss, the court announced it would focus on EA’s use of the athletes’ likeness in NCAA Football not the game’s other elements.
Right of publicity law parallels copyright law which, at its core, intends to promote science and the arts. Under the fair use doctrine, the courts have protected works that may use copyrighted material but are sufficiently transformative to further this intent. Because the First Amendment defense requires a de novo standard of review and the Keller court focuses narrowly on the depiction of the athletes’ likenesses, a subtle shift in interpretation by the appellate court could change the outcome for EA.
The conclusion in Keller relies on Winter v. DC Comics (Cal. 2003) and Kirby v. Sega of America (Cal. App. 2nd 2006) to explain why EA must focus on the depiction of the athletes’ likenesses. In Winter, a comic book depicts musicians Edgar and Johnny Winter as half-worm, half-human characters with what are clearly likenesses of the musicians’ faces in a fanciful story having little to nothing to do with the true lives of the musicians.
Despite the context of the work, the Keller court focuses on the depiction of the characters as worms, citing the Winter court’s emphasis of the depiction. However, reading the decision as dispositive solely on the issue of character depiction would allow a performer to mirror the musicians’ life, personalities, public personas and stage presence but with a worm bodies, as fair use. It is doubtful that this is a result the Keller court would intend.
The Keller court directs attention to the comparison in Kirby between Ulala (the main character in the video game) and the plaintiff in that case. In Kirby, a musician and dancer claims misappropriation of her likeness in a video game featuring a main character phonetically named after that musician’s key catchphrase, “Ooo la la,” which also physically resembles her. However, the context of the video game in Kirby is important enough the Keller court referenced “Ulala, the main character in the defendant’s game, [who] worked as a news reporter in the twenty-fifth century, ‘dispatched to investigate an invasion of Earth.’”
Clearly, elements of the game beyond the mere depiction of the plaintiff are important in the analysis. In fact, the court found it significant enough to mention that NCAA football shows the athletes’ likenesses in the identical setting to where the public finds them originally, on a football field. The analysis in Hart, perhaps, clarifies why the court directed the focus of the analysis on the athlete depiction.
Hart reviews Winter and Kirby to provide a perspective of transformative use, then Hilton v. Hallmark Cards (9th Cir. 2009) and No Doubt v. Activision Publishing, Inc., (Cal. App. 2nd 2011) to flesh out the spectrum. The court poignantly quotes from Winter that the reader of the comic book “can readily ascertain that they are not just conventional depictions of plaintiffs but contain significant expressive content other than plaintiffs’ mere likenesses.”
The Hart court proceeds by discussing Hilton where the image of Paris Hilton appears as a cartoon waitress in apron accompanied by use of her tag line “That’s Hot” to warn the customer about the platter she is serving up. Hart again emphasizes context where “[d]espite [some] differences … the basic setting is the same: we see Paris Hilton born to privilege, working as a waitress.” While the Keller court referenced Winter and Comedy III Productions, Inc. v. Gary Saderup, Inc.(Cal. 2001)as “bookends” of the transformative use issue, perhaps Hilton helps narrow the gap on the bookshelf from the non-transformative side.
The Hart court then turns to transformative use as applied in video games, arguably to help give a definition of the “bookends” in a video game context. Hart points out, just as Keller does, that the Ulala character differs in physique from Kirby but notes the significant importance the Kirby court places on the uniqueness of the setting.
Finally, the court examines the No Doubt case, where the band is depicted in as realistic as possible precision so that users can “choose to ‘be’ the No Doubt rock stars.” The No Doubt court emphasized that the game does not permit users to alter the No Doubt avatars: “They remain at all times immutable images of the real celebrity musicians….”
The court in Hart hangs its hat on this differentiation and perhaps with good cause. The court notes that attempting to claim EA depicts the collegiate athletes playing in a football video game for some purpose other than to profit from the fame of those athletes is ludicrous. However, the intent of video game developers use athletes’ likenesses is not the test. Instead, the test questions whether the video game is sufficiently transformative to promote the arts, the medium here being video games, such that the work should fall under the protection of the First Amendment as carved out by the fair use doctrine.
In Hart, the court found NCAA Football a transformative work because the game contains “virtual stadiums, athletes, coaches, fans, sound effects, music, and commentary, all of which are created or compiled by the games’ designers.” Brown v. EA (CCD, Sept. 23, 2009), dismissing several right of publicity claims brought by a retired NFL player, inspired this quote from Hart. The key virtual items referenced in Brown and Hart exist nowhere but in the game itself.
Hart declares that even if the context were not enough to find a transformative use, the game would still be transformative. The game was designed so the users of the video game can alter physical attributes, “control the [college football] player’s throw distance and accuracy, change the team of which the [college football] player is a part by downloading varying team names and rosters, or engage in ‘Dynasty’ mode, in which the incorporates [college football] players from historical teams into the gameplay.”
Thus, the work is designed to allow a user to play a speculative game that might display an avatar of a football player with a name and stats of popular college athlete but more closely resembles the user. Alternatively, a user could have two teams that never played against each other, matched up in a bowl that neither played in.
If the reason from Hart holds it may narrow the gap between “bookends” in the video game context. Even if it does not hold, Davis will raise new questions where retired players are represented as avatars on “historic teams” but given different numbers than when they played professionally. Given that football players are at times difficult to distinguish from the sideline, let alone from the stands, without their jersey number, Davis’ argument that his likeness is obvious from skin tone and statistics alone becomes incredulous. The jersey number of a football player is so connected to their likeness that teams retire the jersey numbers associated with their most accomplished athletes.
The Keller court focused on the game depiction of the athletes’ likenesses as reason for denying the motion to dismiss perhaps to indicate the slight differences in the context of the likenesses were not enough to make the game transformative. In other words, having an exact, photorealistic version of an athlete a la No Doubt, in a contest not part of his official career may not be enough. While the games from EA have allowed users to see the athletes up close and personal, the appellate court’s decision will decide whether these images retain the athletes’ stats, become more or less realistic, or whether a simple costume change will do.
