By Tyler S. Woods, J.D. Candidate, Sandra Day O’Connor College of Law
In Brown v. Entm’t Merchants Ass’n, the Supreme Court confirmed that video games——like books, plays, and movies——are works of art that enjoy First Amendment protection. 564 U.S. 786, 790 (2011). But this protection is not without limit. Although video games enjoy the freedom of expression, this expression cannot unjustly infringe upon an individual’s right of publicity. Accordingly, when a plaintiff alleges a video game violates their right of publicity, courts will conduct a balancing test to determine whether the individual’s right of publicity outweighs the artistic value of the speech. This balancing analysis, adopted by most jurisdictions, is known as the transformative use test.
The Transformative Use Test as an Affirmative Defense
As a general rule, to succeed on a right of publicity claim, a plaintiff must prove: (1) the defendant used the plaintiff’s identity; (2) the defendant appropriated plaintiff’s name or likeness to defendant’s advantage, commercially or otherwise; (3) lack of consent; and (4) resulting injury. Downing v. Abercrombie & Fitch, 265 F.3d 994, 1001 (9th Cir. 2001).
In Comedy III Prods., Inc. v. Gary Saderup, Inc., the California Supreme Court annunciated the transformative use test as an affirmative defense to a right of publicity claim. 21 P.3d 797 (Cal. 2001). The test inquires “whether a product containing a celebrity’s likeness is so transformed that it has become primarily the defendant’s own expression rather than the celebrity’s likeness.” Id. at 809. In other words, to qualify for legal protection, “an artist depicting a celebrity must contribute something more than a merely trivial variation, but create something recognizably his own.” Id. at 810—11.
The Transformative Use Test Applied
Video game developers have faced several right of publicity claims by former athletes and asserted the transformative use test as an affirmative defense. Provided are two such cases: the first case being the most well-known, the second case being the most recent.
In Keller v. Elecs. Arts, Inc., Samuel Keller, the former starting quarterback for Arizona State University, sued Electronic Arts (“EA”) for using his image and likeness in EA’s video game series, NCAA Football, without consent. No. C 09-1967 CW, 2010 WL 530108, at *5 (N.D. Cal. Feb. 8, 2010). The college football video game featured virtual players that physically resembled real college football players, listed the same jersey numbers as real college football players, and even included player biographies that displayed the same hometowns as real college football players. Id at *1. EA asserted transformative use as a defense to the right of publicity claim because the video game was an artistic expression that neither listed real player names nor depicted real college football exhibitions. Id. at*3—4.However, the court held EA’s use was not sufficiently transformative, and thus Keller prevailed on his right of publicity claim. Id. at *4. The court reasoned the use was not transformative because the virtual player and Keller shared many characteristics, including the same height, weight, jersey number, and hometown. Furthermore, the court reasoned the virtual player depicted Keller in the same form: they were both starting quarterbacks for the same football team. See also Hart v. Elec. Arts, Inc., 717 F.3d 141, 170 (3d Cir. 2013) (holding that EA’s NCAA Football use of former Rutgers’ quarterback Ryan Hart’s virtual image was also not sufficiently transformative).
In Hamilton v. Speight, a former professional football player and wrestler, Lenwood Hamilton, sued several video game developers for using his image and likeness in creating the virtual character Augustus Cole for the Gears of War video game series. No. 2:17-CV-00169-AB, 2019 WL 4697485, at *1 (E.D. Pa. Sept. 26, 2019). Gears of War is a third-person shooter tracking a fictional military squad at war on a foreign planet against a race of exotic reptilian humanoids. Id. at *2. The Cole video game character is a member of the fictional military squad, and Cole’s physical characteristics and voice are similar to Hamilton’s. Id. In Gears of War 3, the player can change the Cole character’s outfit to either resemble Hamilton’s professional wrestling costume or a football player. Id. at *3. Nonetheless, the court held that the transformative use test was satisfied, and thus Hamilton’s right of publicity claim was dismissed. Id. at *9. The court first reasoned the use was transformative because Cole’s name, background, and violent persona are distinct from Hamilton’s. Id. at *6. Second, the court reasoned the use was transformative because the context in which the Cole character appeared was dissimilar from Hamilton’s, for unlike Hamilton who wrestled and played football, Cole engaged in “fantastical violence against cartoonish reptilian humanoids on a fictional planet in a fictional war.” Id. at *7.
Alternative Tests
There are at least two alternatives to the transformative use test: (1) the predominant use test; and (2) the Roger’s test.
First, the predominate use test “weighs whether the predominate use of the identity is for commercial exploitation or whether the predominate use is to make an expressive comment.” Doe v. TCI Cablevision, 110 S.W.3d 363, 374 (Mo. 2003). In Doe, the courtheld that the comic book series, Spawn, violated professional hockey player Tony Twist’s right of publicity by naming the comic book villain after Twist. Id. The court applied the predominant use test and reasoned that using the hockey player’s name and likeness was “predominantly a ploy to sell comic books and related products rather than an artistic or literary expression, and under these circumstances, free speech must give way to the right of publicity.” Id.
Advocates of the predominate use test argue the transformative test unjustly operates to “preclude a cause of action whenever the use of the name and identity is in any way expressive, regardless of its commercial exploitation.” Id. However, advocates of the transformative use test argue the predominate use test “is subjective at best, arbitrary at worst, and in either case calls upon judges to act as both impartial jurists and discerning art critics.” Hart, 717 F.3d at 154.
Second, the Roger’s test, which originated from trademark law, considers whether celebrities’ names are used in the title of a work absent connection to the work or consent from the celebrity. Rogers v. Grimaldi, 875 F.2d 994, 1004—05 (2d Cir. 1989). In Rogers, the court held that even though the title was inspired by the famous couple, Ginger Rogers and Fred Astaire, the use of “Ginger and Fred” as a movie title did not violate Rogers’ right of publicity. Id. The court reasoned that under the Roger’s test, the title “Ginger and Fred” is “clearly related to the content of the movie and is not a disguised advertisement for the sale of goods or services or a collateral commercial product.” Id.
Advocates of the Roger’s test argue the test is fair because it intuitively bars “minimally relevant use of a celebrity’s name in the title of an artistic work where the title does not explicitly denote authorship, sponsorship, or endorsement by the celebrity or explicitly mislead as to content.” Id. at 1005. However, proponents of the transformative use test argue the Roger’s test is inadequate because the Roger’s test was designed for trademark cases and the right of publicity is broader and more complex than trademark rights; accordingly, right of publicity cases require a more nuanced test like the transformative use test. Hart, 717 F.3d at 158.
Conclusion
The transformative use test is utilized by a majority of jurisdictions and focuses on the artist’s unique expression as it relates to their work of art. As applied to athletes and video games, the more a video game removes the athlete from the setting they professionally compete or competed in, the more likely the video game developer will succeed in defending against a right of publicity claim. While there are alternatives to the transformative use test, the transformative use test is likely the most objective and nuanced test observed by courts today.
