“Point Guard, number 3 for three!” might be the call you hear from your Xbox 360 when you are playing EA Sports’ NCAA Basketball with Chris Paul and the 2004 Wake Forest Demon Deacons. Even though Chris Paul just dialed up downtown, the announcer did not refer to him by name.
EA Sports cannot name Chris Paul in the video game because they would need to have a license to do so; however, the NCAA prohibits players from making money off of their publicity rights so players cannot license their name to EA Sports. Instead, EA Sports uses Paul’s physical attributes, sports statistics, and biographical information to represent the virtual Paul. In other words, when a user plays EA Sports’s NCAA Basketball and selects Wake Forest’s 2004 squad, the point guard on that team is meant to be a close physical approximation of the real point guard from that time in that year. But it isn’t Chris Paul!
Arguably, using a collegiate athlete’s real attributes and characteristics in the form of a virtual video game character directly links the virtual character to the real person. Some college athletes have challenged this usage in court, claiming that EA Sports has violated the athlete’s right of publicity by using their likeness without permission.
Former UCLA Basketball standout Ed O’Bannon has filed a class action lawsuit in the Northern District of California on behalf of himself and other former college athletes against the NCAA and the Collegiate Licensing Clearinghouse for use of their likenesses after their NCAA playing days are over. Notably, Bill Russell just joined O’Bannon’s suit. Sam Keller, a former NCAA Division I quarterback, similarly filed suit against the NCAA and EA Sports in the Northern District of California for deprivation of the right of publicity.
Most recently though, the District of New Jersey held in Hart v. Electronic Arts that the First Amendment trumps college athletes’ rights of publicity. Ryan Hart, a former quarterback at Rutgers University, brought suit against EA Sports alleging a violation of the right of publicity. Hart pointed out that in NCAA Football 2006 the virtual quarterback for the Rutgers Scarlet Knights hailed from Florida; stood six feet two inches tall; weighed 197 pounds; wore jersey number 13, a left wrist band, and a helmet visor; and had speed, agility, passer accuracy, and arm strength all reflective of Hart’s real-life attributes.
Recognizing Hart’s right to publicity, the Court first had to determine if NCAA Football was commercial speech or expressive speech. The Court ruled that video games are expressive speech—like books, plays, and movies—rather than commercial speech like advertisements. Hart v. Electronic Arts, Inc., — F.Supp.2d —-, 2011 WL 4005350 at *9-10 (D.N.J. September 9, 2011).
Next, the Court had to determine whether “the First Amendment granted EA Sports the right to impinge on Hart’s common law right of publicity” by applying both the transformative and Rogers tests. The transformative test incorporates the Copyright Act’s fair use doctrine, and asks whether one person’s expression may be “transformed in the creation of new information, new aesthetics, new insights and understandings….” Pierre N. Leval, Toward a Fair Use Standard, 103 Harv. L. Rev. 1105, 1111 (1990). In other words, does the use transform the original content into something new? Applying the transformative test, use of Hart’s likeness was transformative under the First Amendment because NCAA Football contains creative elements apart from player likenesses, like “virtual stadiums, athletes, coaches, fans, sound effects, music, and commentary, all of which are created or compiled by the games’ designers.” Id. at *22. Moreover, Hart’s likeness—including his physical characteristics, playing style, and background information—is transformative because a user could control the virtual Hart’s throw distance and accuracy, change the virtual Hart’s team by downloading varying team names and rosters, or engage in “Dynasty” mode, in which the user incorporates players from historical teams into the gameplay. Id. In other words, the Court found EA Sports’s intrusion into Hart’s right of publicity protected under the first amendment based on the fact that Hart’s likeness in the game could be changed.
The Rogers test comes with an interesting backstory and is most often applied in Lanham Act trademark cases. In 1989, Ginger Rogers of the famous dancing film couple Fred Astaire and Ginger Rogers, brought a false endorsement claim against the creators of a film called Ginger and Fred. Rogers v. Grimaldi, 875 F.2d 994 (2d Cir.1989). Despite its misleading title, the film was a fictional account of two Italian cabaret performers who in their earlier careers traveled Italy imitating Astaire and Rogers, and the actual plot of the film revolved around their reunion. Id. at 997. Rogers sued to prevent the use of the film’s title and thereby protect her valuable name. Id.
Though the Rogers case revolved more around a trademark dispute, the Rogers court also discussed the right to publicity finding a two-prong test involving state law: i) whether the challenged work is wholly unrelated to the underlying work; and ii) whether the plaintiff’s likeness is really an advertisement for commercial use. Hart v. Electronic Arts, Inc., 2011 WL 4005350 at *26. Applying the Rogers test the Court found that use of a person’s likeness to advertise a media form related to that person is not an actionable infringement on the right of publicity. Id. at 29. The Court reasoned that the use of Hart’s likeness was related to the video game, and concluded that EA Sports was therefore entitled to First Amendment protection under the Rogers test. Id.
As pointed out by one commentator, the result seems to be pretty unfair and it brings up the larger debate about exploitation of college athletes. The result really does not affect Ed O’Bannon’s pending class action in the Northern District of California, nor has Hart indicated that he will not appeal. Either way, as it stands right now, you can pick up a copy of EA Sports NCAA Football 2006 and drop back with a Rutgers quarterback; the announcer will not exclaim “Hart back to pass” but you will know who it is.
* Joseph Norman is a third-year law student at Wake Forest University School of Law. He holds a Bachelor of Science in Management from North Carolina State University and an MBA in Finance from the McColl School of Business at Queens University of Charlotte. Prior to enrolling in law school, Mr. Norman worked for Wells Fargo Wealth Management in Equity Research. Upon graduation in May 2012, Mr. Norman will practice corporate law.