By Nathan Martin
At this year’s Sports Lawyers Association (SLA) Conference, a quality panel of experts discussed using athletes’ names, images, and likeness in the context of right of publicity. Moderated by Mary Braza, partner with Foley & Lardner (Milwaukee, WI), Braza brings the perspective of teams and leagues regarding right of publicity, notably that most right of publicity issues are negotiated in the collective bargaining agreements regarding athletes exploiting their rights and any respective compensation. The panel comprised Kevin Goering, partner with Norwick, Schad, & Goering (New York, NY), who litigates on behalf of individual athletes and players’ associations; Benjamin Mulcahy, content media entertainment partner with Jenner & Block (Los Angeles, CA), who serves clients as a litigation avoidance specialist advising them about risks of using the likeness of athletes; and Kelli Sager, partner with Davis Wright Tremaine (Los Angeles, CA), who litigates on behalf of media companies that use athletes in their products.
Braza first provided background about right of publicity, describing it as a “creature of state law” that varies from state to state in both common law and statute. She defined it as the use of someone else’s name, image, or likeness for commercial purposes without their consent. A plaintiff could sue for damages or injunctive relief, while the defendant would likely claim a defense under the First Amendment (i.e. freedom of expressive speech) or Copyright Act preemption, or both. She noted that courts struggle to apply the copyright preemption defense because there is so much “wiggle room” in its interpretation. Indeed, the courts look at whether the subject matter falls under copyright as well as whether the rights granted under both the Copyright Act and a state law are equivalent, leaving room for significant interpretation differences.
Legal History of Right of Publicity
Braza first asked Goering to give some historical context of right of publicity in sports. He began by quoting William Prosser, former Dean of University of California, Berkeley Law School and author of Prosser on Torts, that right of publicity law is much like libel law in that “much of the law on libel makes no sense.” In trying to understand the conflict between those who create content, performance included, and want to be paid for the rights to that content and those who legitimately want to report news or use the fame or celebrity of athletes without having to pay for it, awareness of its history is important.
Goering illustrated the beginning of right of publicity issue by discussing the case of Abigail Roberson, a young woman whose portrait had been used, without her prior consent, in an advertisement for a flour company (Roberson v. The Rochester Folding Box Company, 1902). While she lost her case, it created public outcry and within a year the New York legislature enacted a statute that disallowed using someone’s name, image, or likeness, without their written consent, for the purposes of advertising or trade. Goering commented that while interpreting advertising was relatively straight forward, the interpretation of trade was more challenging and thus a “battle” ensued. This battle was immediately contextualized around newsreels, movies, and in one of the earliest cases in sport where Babe Ruth sued Educational Films for using footage of him in its instructional batting product. While Ruth lost his case due to a public interest exception under the First Amendment, Goering suggested that if such a case were tried today in the context of the No Doubt/Band Hero case (No Doubt v. Activision Publishing, Inc., 2011), it likely would have been decided differently.
The next big sports case came along in O’Brien v. Pabst Sales (1941). Davey O’Brien, an All-American quarterback at Texas Christian University was displayed on a calendar sponsored by Pabst Blue Ribbon beer. Even though Pabst obtained permission to use O’Brien’s picture from TCU’s publicity department, O’Brien sued for invasion of privacy in that he had not given Pabst permission to use his picture and that the picture next to a glass of beer was embarrassing and humiliating. The court dismissed O’Brien’s claims on the grounds that there was no explicit endorsement by O’Brien.
Continuing, Goering cited Haelan Laboratories, Inc. v. Topps Chewing Gum, Inc. (1953) and Spahn v. Julian Messner, Inc. (1964) as important. The Haelan case distinguished between a personal right (i.e. right of privacy) and a property right. In this case Haelan believed it had the exclusive right to a player’s photograph to help sell its chewing gum. The court found that individuals possessed a property right of their own images, and that this right could be transferred to third parties. The Spahn case described the publication of a book about the life of a baseball pitcher where the life events described in the book were highly fictionalized, but in a positive rather than defamatory way. Spahn sued and won, rendering even false praise a misappropriation of one’s likeness.
Goering then summarized the next few decades of New York cases by describing the court decisions as going very far to the other side holding that almost anything connected with a magazine, movie, or television show (i.e. expressive works) would be exempt from the statute enacted immediately after the Roberson case. Over time video games came along and were considered expressive works, afforded full First Amendment protection by the Supreme Court. But then the O’Bannon v. National Collegiate Athletic Association (2014) and other video game and athlete likeness-related cases (e.g. Keller v. Electronic Arts Inc., 2013, Hart v. Electronic Arts Inc., 2013, Davis v. Electronic Arts Inc., 2015) swung the pendulum back toward right of publicity favor.However in the most recent case, Sarver v. Chartier (2016), Sarver sued for using his likeness without consent in the feature film The Hurt Locker. The case was dismissed on constitutional grounds, further adjusting right of publicity law toward First Amendment positions.
Goering concluded his historical context framework by suggesting that the right of publicity is important because it is the “fundamental building block on which this very valuable content is built, which makes an amazing amount of money for a lot of people in America; and sports content and live sports happens to be the most valuable entertainment content there is today.”
Right of Publicity and Video Game Avatars
Braza first asked the panel about the realism we find in video games today, particularly those in sport performance games that use avatars of real life players. Suggesting that there is both a right of publicity component due to the realism of these avatars, but also a creative or “expressive” component to developing these avatars, Braza wanted to explore how an argument is made.
Sager began her response by clarifying the recitation of the law provided by Goering, in that as the right of publicity law was being developed a clear distinction was made about commercial works on one side and expressive works on the other. As such, what was argued in Sarver v. Chartier (2016) included discussion on what kind of First Amendment tests could be applied to restricting speech to such expressive works like video games. When examining content-based restrictions, the Supreme Court had already clarified that a strict scrutiny test must be applied, and so such precedent was used to determine the Sarver outcome. In the other cases regarding video games and avatars, an argument for a constitutional test was not made. Sager summarized, “right of publicity is absolutely a content-based restriction when applied to expressive works. You have to apply strict scrutiny, and when you do that in this kind of case there is no compelling interest on the other side. When you apply that very simple constitutional test, I think the decisions turn out a different way, and they should.”
Mulcahy described right of publicity law as a patchwork quilt that has evolved piecemeal over a century, across states, court levels, and jurisdictions, and with that comes different interpretations. Even with that caveat, the 9th Circuit Court of Appeals particularly fascinated him where three different panels of judges have ruled in drastically different ways on the right of publicity in video games. However, Sager pointed out that it was really the precedent set by the Keller case, where the argument for a strict scrutiny test was not made, that forced the other panels to apply the common law precedent and rule in the way they did.
Goering added a different perspective about the strict scrutiny test being the crux of the differences between the case outcomes. He described the strict scrutiny test as inapplicable in Sarver because the courts in most cases are looking at government restriction and not a private action. As such, the court was overlooking the fundamental property right of one to be balanced against the fundamental speech right of another, which would become an issue of fact and not a matter of law based on strict scrutiny.
Braza then injected a further question of distinction into the dialogue about whether there was a difference between current athletes versus former athletes being appropriated in video games, as collective bargaining agreements cover current athletes in most professional circumstances. Sager responded that it really depends on the type of use, commercial or expressive, and how the law develops moving forward. She felt it would be disturbing if the law is becomes so broadly read as to reclassify expressive works about historical figures into commercial components, whereby a dead person’s heirs would sue on a right of publicity claim. Consequently, we would no longer be able to talk about historical records or historical people in all manner of expressive works.
Braza then asked a clarification question on whether the distinction was historical versus contemporary status that gives rise to a right of publicity claim or the manner in which the likeness is used, commercial or expressive (i.e. noncommercial).
Mulcahy stated that it’s always in the context of use, and it historically has been a straightforward analysis determining which was which. But, in the California video games cases the judges had difficulty classifying evidence into either commercial or non-commercial uses. Furthermore, what’s happening now is a blurring of industries (advertising as entertainment and vice-versa) and communication methods (editorial content as advertising and vice-versa). Traditional brands are putting out marketing messages that look a lot like editorial content (e.g. so-called native advertising online where brands sponsor content that appears on a website, regardless of whether the sponsorship is related to the content) begging the question whether that content is commercial or noncommercial. While the Federal Trade Commission has come out to ensure the consuming public understands the content is not purely editorial and thus requiring disclosures that make it clear that it is advertising, Mulcahy believes the real issue that will likely provoke more litigation is whether the people in those sponsor’s native advertising images are entitled a right of publicity. He suggested that the new case law gives them leverage to pursue such a claim, in some instances, simply because the law continues to get messier. Historically, when the lines were drawn on the extent to which a public interest outweighed one’s right of publicity, the Zacchini v. Scripps-Howard Broadcasting Co.(1977) case made it clear that if someone’s performance is appropriated in its entirety, then a First Amendment defense would not preclude a right of publicity claim. So the analysis became based on a criterion of entirety, which is where Mulcahy thought it should end. However, the California video games cases started applying criteria like the transformative use test that examined whether the likeness was sufficiently transformed to make it artistic enough to trump a right of publicity claim. Mulcahy believed that the subjectivity embedded in such a test is potentially dangerous for the First Amendment and is impossible to apply in practice.
Sager agreed that the law is really a mess; every state either has a statute that interprets it differently or the state recognizes rights under common law, and each state applies different tests like the transformative use test or one of a half-dozen others. This makes the job of advising clients difficult because one might get sued in a state where they view rights differently. In fact, the State of Washington applies its dead celebrities law so broadly so as to allow anyone to sue, even if they never lived there or died there. Clients are running some risk until the law gets settled. Sager also mentioned that the law needs to be fixed and she thinks it will likely rest with the Supreme Court because congress is unlikely to pass a Federal statute.
Goering suggested that asking for clarity in this area is impossible with the definitions we have. He provided a different but illustrative example in the area of copyright, specifically the law of fair use, where we have a statutory provision that we use but is very difficult to predict the outcome on. He submitted that we seem to manage just fine and make judgments under this law, and we have insurance and other things to cover for any risk. Goering also speculated that the Supreme Court would have a difficult time making a judgment that would result in a one-size-fits-all holding regarding right of publicity, which is likely why they have yet to agree to hear any recent cases on the matter.
Braza brought the panel full circle and sought final clarification on whether video games were expressive works or commercial products.
Sager responded that the Supreme Court already ruled on this and it, in a non-right of publicity case, found that video games were completely expressive works no different than movies, TV shows, or books (Brown v. Entertainment Merchants Association, 2011). However, the problem she thought lies in the intermediate courts’ misapplication or lack of application of the Supreme Court’s distinction on video games. Goering cautioned though that depending on the case context, many mixed commercial-expressive features of content does make judgment challenging, and he believed that the law ought to have adaptable tests that can be applied. He then added to his caution by warning about state statutes, developed in part to help clarify the law in the right of publicity arena, are being opposed by strong lobbying groups.
As the least biased member of the panel, Braza asked Mulcahy to describe how he would advise clients in the middle of all the unsettled law. He responded that it is context dependent, and whether permission is needed and ultimately granted. Beyond that he suggested that there is a wide range of activity outside the unsettled arena of video games and lifelike avatars, in which straightforward decisions can be made. He did note though that content delivered through cutting edge technology like virtual reality headsets will make advising more difficult.
In conclusion, Braza stated, “that you (Mulcahy) can help us figure out whether its clear cut or not, and if you can’t the two on either side of you (Sager and Goering) are going to battle it out.”
Martin is an Assistant Professor of Recreation and Sport Management at California State University, Northridge and the Executive Director of the CSUN Aquatic Center at Castaic Lake.
References
Brown v. Entertainment Merchants Association, 564 U.S. 08—1448 (2011).
Davis v. Electronic Arts Inc., 775 F.3d 1172 (9th Cir. 2015).
Haelan Labs Inc. v. Topps Chewing Gum Inc., 202 F.2d 866, 868 (2d Cir. 1953)
Hart v. Electronic Arts Inc.,717 F.3d 141 (3d Cir. 2013).
Keller v. Electronic Arts Inc., 724 F.3d 1268 (9th Cir. 2013)
No Doubt v. Activision Publishing, Inc., 192 Cal.App.4th 1018 (2011).
O’Bannon v. National Collegiate Athletic Association, 7 F. Supp. 3d 955 (N.D. Cal. 2014).
O’Brien v. Pabst Sales, 124 F.2d 167 (1941).
Sarver v. Chartier, 16 C.D.O.S. 1692 (9th Cir. 2016).
Spahn v. Julian Messner, Inc., 250 N.Y.S.2d 529 (1964).
Roberson v. The Rochester Folding Box Company, 171 N.Y. 538 (1902).
Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562 (1977)
