Plaintiff Ryan Hart, a former quarterback for the Rutgers University football team, sued Electronic Arts on behalf of himself and all other similarly situated athletes, alleging that the video game maker violated his publicity rights under New Jersey law by using his likeness and biographical information, and those of other players, in the video game series NCAA Football. The district court granted EA’s summary judgment motion, finding that EA’s use of athletes’ likenesses and attributes was entitled to First Amendment protection. On Hart’s appeal, the Third Circuit reversed, adopting the transformative use test (which the Supreme Court of California originally adopted from the U.S. Supreme Court’s gloss on the first factor of the fair use test in copyright law in Comedy III Prods., Inc. v. Gary Saderup, Inc.) and rejected two other possible tests. The court found that, under that test, EA’s use of Hart’s likeness was not sufficiently transformative. NCAA Football allows users to assume command of numerous college football teams, identifiable by their names, uniforms and logos – attributes EA licensed from the National Collegiate Athletic Association. The players on each team are not named, but their jersey numbers, positions, likenesses and attributes do correspond to actual players on prior NCAA teams. The game’s editing feature allows users to input the actual players’ names as well as change player attributes including height, weight and playing abilities. The district court found that under the transformative use test, because users can change the players’ attributes and likenesses in numerous ways, and because the game places the players into a unique virtual setting that includes sound effects, music and commentary, that EA’s use was sufficiently transformative.
Hart appealed, and the Third Circuit reversed, finding that under the transformative use test, EA’s use was not sufficiently transformative. Though the court accepted that video games are protected by the First Amendment, it sought to balance the interests underlying the right to free expression against the interests in protecting the right of publicity, and analyzed three different approaches – the predominant use test, the Rogers test and the transformative use test. Concluding that the predominant use test was too subjective and arbitrary, as it calls upon judges to act as both impartial jurists and discerning art critics to determine the predominant purpose of the product, and the Rogers test to be inapposite in this situation, the appellate court ultimately settled on the transformative use test, taken from copyright precedents and that involves an inquiry as to whether a work is so transformed that it has become primarily the defendant’s own expression rather than the celebrity’s likeness. In applying this test, the court analogized the case to the California Court of Appeals 2011 decision in No Doubt v. Activision Publishing, Inc., in which members of the rock band No Doubt sued video game publisher Activision for violating their rights of publicity by using the band members’ likenesses in the video game Band Hero. In that case, the court found that the video game did not constitute a transformative use because the No Doubt avatars could not be altered by the players and at all times remained images of the real celebrity musicians, and because no matter what else the players did in the game (including changing settings, adding additional avatars for themselves and having the band perform songs they would never sing in real life), the No Doubt avatars performed the same activities through which the band achieved and maintains its fame – in essence, the avatars were exact depictions of No Doubt members doing exactly what they do as celebrities.
Similarly, the Third Circuit found that the digital version of Hart did what the actual Hart did while at Rutgers (albeit in digital form) – play college football in (digital re-creations of) college football stadiums, filled with all the trappings of a college football game – and concluded that this use by EA was not transformative, as the digitized sights and sound in the game do not alter or transform Hart’s identity in any significant way. While game players could alter the appearance of Hart’s avatar and the avatars of the other players, the court also found that EA, by setting the default appearance of avatars to be realistic depictions of the actual players, sought to create realistic depictions of college football for the users and sought to capitalize on the respective fan bases for the various teams and players. Any interactivity allowing the players to change the avatars’ appearances was insufficient to satisfy the transformative use test.Though the court acknowledged that various other elements of the video game are not tied directly to reality and are creative expressions, it found that Hart’s right of publicity claim should have survived summary judgment, as “it cannot be that content creators escape liability for a work that uses a celebrity’s unaltered identity in one section but that contains a wholly fanciful creation in the other, larger section.” In a dissent, one judge agreed that the transformative use test was the proper test but thought that the EA game was sufficiently transformative.