Right to Publicity Litigation Further Defines What Is A Transformative Use for Video Game Companies

Mar 12, 2021

By Courtney Seams, GW Law 2L, (Contributing Research, Joseph La Vine)

In a recent US Court of Appeals for the Third Circuit decision, Hamilton v. Speight, 827 Fed. Appx. 238 (3rd Cir. 2020), Microsoft and Epic Games prevailed when the court found that their video game character in the popular Gears of War video game franchise did not misappropriate the character’s likeness from the Plaintiff, Lenwood ‘Skip’ Hamilton.

Hamilton worked as a professional wrestler in the 1990s and was known as ‘Hard Rock’ Hamilton, the wrestler with a distinctive wardrobe. His out-of-the-arena persona focused on spreading the “message to kids about drug awareness, and the importance of getting an education,” according to Court documents. Prior to wrestling, he played NCAA Division I football, followed by a brief career at the professional level with the NFL Philadelphia Eagles.

During his wrestling career, he worked at a wrestling event with Lester Speight, a defendant in the case. Following a match, Hamilton claims Speight discussed plans for developing a violent shooting game, wanting Hamilton to be involved. Hamilton turned down the project due to its highly violent gameplay, as it was the complete opposite of his persona, he had worked so hard to develop.  Hamilton’s lack of interest did not deter Speight, who went on to create the Gears of War franchise, which follows fictional human characters who fight “exotic reptilian humanoids known as the Locust Horde” on an earth-like planet named Sera.

In the complaint, Hamilton alleges Gears of War is the same violent shooting game discussed after the wrestling match and that upon seeing one of the main characters, Cole Train, it was like “looking in the mirror.” Not only was Train an athletic African American male who played the fictional game of thrashball, the game’s highly fantasized version of football, but the game permitted the purchase of skins that allowed the character to dress in a civilian look or a thrashball outfit.

For Hamilton, this was too close to home and he decided to file an action against Microsoft and Epic Games, (developers and distributors), as well as Speight, for violating his right to publicity. The Defendants moved for summary judgment, claiming that the First Amendment right of free expression outweighed Hamilton’s right to publicity since the Train character was a ‘transformative use’.

The transformative use defense comes from the doctrine of ‘fair use’, where copyright law allows an ‘infringer’ to make limited use of an author’s work (in this case, Hamilton’s name, image, and likeness), without asking permission. Courts consider four primary factors in determining whether a particular use qualifies as ‘fair’, with one of them being ‘transformative’. Specifically, the court will determine fair use if the original work is transformed to such a high degree that the use no longer qualifies as infringing. (Campbell v. Acuff-Rose Music, 510 U.S. 569 (1994)).

The lower court, the US District Court for the Eastern District of Pennsylvania, found that video games are protected as expressive speech by the First Amendment and applied the transformative use test to determine whether the character containing Hamilton’s likeness was so transformed that it became the defendants’ own expression instead of Hamilton’s likeness. If found as such, the Defendants’ rights to expressive speech under the First Amendment would outweigh Hamilton’s right to publicity and Hamilton’s claims fail.

The lower court found that the Train character satisfied the Transformative Use test because (1) Hard Rock Hamilton was not the “very sum and substance” of Train’s identity and (2) the context Train appears in is transformative. In coming to the first conclusion, the court found that the Train character does not share the same name as Hard Rock Hamilton, wears heavy armor, carries heavy weaponry, and has a vastly different persona of the family-friendly Hamilton, which Hamilton himself admitted. The only similarities between Train and Hard Rock Hamilton that the court found were that they were both muscular African American males who played similar sports and had similar faces, skin tones, and large body builds. Thus, the court found that the similarities in likeness were too broad for Hard Rock Hamilton to be the “sum and substance” of Train’s identity.  In coming to the second conclusion, the court found that Cole does not and cannot wrestle like Hard Rock Hamilton, but instead battles reptilian humanoids on another planet. The court classified this major difference between the two characters’ environment and actions as a transformative change.

In sum, the District Court took into account the minimal similarities between the two characters and the transformative change and granted the Defendant’s motion for summary judgment, finding that Hamilton’s likeness was so transformed it became the defendants’ expression and his claims were thus barred by the First Amendment.

On appeal, the Third Circuit Court found that no reasonable jury would conclude that Hamilton is the “sum and substance” of the Train character. The Court admitted there were similarities between the two, but found that the differences show that Hamilton was, at most, just one source of inspiration for the creation of Train. As did the lower court, the Third Circuit found that the transformative use test was satisfied and that the First Amendment barred Hamilton’s claims, affirming the District Court’s grant of summary judgment.

Hamilton is now appealing his case to the Supreme Court, asking for the court to define the scope of publicity rights and create a standard for all right to publicity cases to be evaluated on. This case is yet another example of the Transformative Use standard, seen previously in a case about the NCAA college football video game, Hart v. Elec. Arts, Inc., 717 F.3d 141 (3rd Cir. 2013), and it may become the common defense for video game manufacturers accused of imitating someone’s likeness. Should the Supreme Court take Hamilton’s case, it is possible a uniform standard regarding publicity rights in video games could be developed.

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