WOLFSON, District Judge:
This matter comes before the Court on a motion by Defendant Electronic Arts, Inc. ("Defendant" or "EA") to dismiss Plaintiff Ryan Hart's Second Amended Complaint ("Plaintiff" or "Hart") pursuant to Federal Rule of Civil Procedure 12(b)(6), or, in the alternative, for summary judgment pursuant to Federal Rule of Civil Procedure 56(c). The allegations giving rise to Plaintiff's putative class action lawsuit stem from Defendant's purported misappropriation of the likeness and identity of Plaintiff, a former college football athlete, as well as those similarly situated, for a commercial purpose in connection with four of Defendant's NCAA Football video games. Defendant contends that Plaintiff's claims under New Jersey law for misappropriation of his likeness, which claims the Court treats as a single right of publicity claim, are barred by the First Amendment. For the reasons set forth below, the Court treats Plaintiff's motion as one for summary judgment. The Court, further agrees that, on balance, on the facts of this case, Defendant's First Amendment right to free expression outweighs Plaintiff's right of publicity. Accordingly, the Court grants Defendant's motion for summary judgment.
A. NCAA Football Games
EA produces a video game series annually called NCAA Football. NCAA Football video games permit users to manipulate the actions of over 100 college football teams and thousands of virtual players in a virtual world with simulated games that "allows users to experience the excitement and challenge of college football." Def.'s
These video games are interactive, and users "most directly influence the games' outcome through their own play-calling and their ability to use their hand-held controllers to manipulate the actions of the virtual players." Id. at 11. For example, each time during gameplay that a user has the option of throwing a football, the user can control the virtual player's throw distance and accuracy. Id. at 12. Users can choose to play a single game against a game-controlled opponent, a second player connected to the same system, or another person connected to the Internet. Id. at 5. Multi-game options are also available for users. Id. at 18. One of these options is "Dynasty" mode, in which the "user controls a college program for up to thirty seasons, creating his own story of the program's development." Id. at 19. Users in "Dynasty" mode are tasked with the "year-round responsibilities of a college coach, such as recruiting virtual high school players out of a random-generated pool of athletes." Id.
B. Plaintiff's First Amended Complaint
Plaintiff filed his First Amended Complaint in the Superior Court of New Jersey, Law Division, Somerset County, on October 27, 2009. In that complaint, on behalf of himself and similarly situated athletes, Plaintiff asserted, among other claims, that Defendant had violated his right of publicity based on its use of Plaintiff's likeness as a virtual player on the Rutgers University football team in EA's 2004, 2005, 2006, and 2009 editions of NCAA Football.
Plaintiff submitted a brief in opposition to EA's motion to dismiss, as well as a Declaration. Both submissions averred misappropriation of specific attributes of Plaintiff into EA's NCAA Football games. See Court's Sept. 22, 2010 Opinion, Docket No. 23 ("Court's Opinion"), 740 F.Supp.2d 658 at 660-62 (D.N.J.2010). In his Declaration, Plaintiff asserted that the disputed games depicted a "virtual" player that had been designed to replicate Plaintiff's physical attributes, as well as his football skills. Id. at 660-62. Further, Plaintiff contended that Defendant had used video footage of him playing in a Rutgers University Football game "in promotion for ... EA's NCAA game." Id. at 661. Plaintiff described Defendant's games as allowing consumers "to simulate the college football playing experience by stepping into the shoes of Rutgers' QB Ryan Hart, and other college football players, where fans can mimic Plaintiff's style and movements and play against Plaintiff's actual opponents." Id. at 662 (citation omitted).
On September 22, 2010, the Court granted Defendant's motion to dismiss the First Amended Complaint with prejudice on all counts with the exception of Plaintiff's right of publicity claim, which it dismissed without prejudice. Id. at 668, 671. The Court determined that it could not consider allegations presented by Plaintiff outside of its pleadings on a motion to dismiss, and subsequently determined that because the First Amended Complaint did not contain allegations "as to what aspects of [Plaintiff's] likeness [were] appropriated" by EA, the Court was unable to decide, as a matter of law, whether Plaintiff could state a right of publicity claim under New Jersey law. Id. at 662-63, 664-65. Nonetheless, the Court did undertake an analysis of New Jersey right of publicity law as it related to the facts alleged in Plaintiff's Declaration and opposition brief, and found that the allegations "appear to state a right of publicity claim under New Jersey law." Id. at 665. Thus, the Court granted Plaintiff's request for an opportunity to amend his Complaint for the second time, and informed EA that the Court would consider its First Amendment defense if Plaintiff filed a Second Amended Complaint. Id. at 664-65.
C. Plaintiff's Second Amended Complaint
On October 12, 2010, Plaintiff filed his Second Amended Complaint ("Complaint"), in which he alleges that EA violated his right of publicity under New Jersey law by misappropriating and incorporating his identity and likeness for a commercial
With respect to the NCAA Football 2006 video game, the Complaint alleges that "[t]he attributes of the `virtual' player ... are Plaintiff Ryan Hart's physical attributes as referenced in the Rutgers University Football Media Guide." Id. at ¶ 34. In addition, the Complaint alleges, that "in its NCAA Football 2006 video game, Defendant lists the ... `virtual' player quarterback as hailing from Florida ...," id. at ¶ 35, "standing six (6) feet and two (2) inches tall," id. at ¶ 36, and "weigh[ing] one hundred ninety-seven (197) pounds (lbs.) ...," id. at ¶ 37. The Complaint further alleges that the virtual player wears "Hart's jersey number ... thirteen (13)," id. at ¶ 38, a "left wrist band," id. at ¶ 39, and "a helmet visor," id. at ¶ 40. Finally, Hart's "speed and agility rating... passing accuracy rating [and] arm strength" all reflect actual footage of Hart during his 2005 college season, according to the Complaint. Id. at ¶¶ 41-43. Based on the language of the Complaint, it appears that Hart intends for the allegations related to NCAA Football 2006 to be imputed to NCAA Football 2004 and NCAA Football 2005.
Attached to the Complaint are copies of screenshots taken from NCAA Football games, and a copy of the 2004 Rutgers University Football Media Guide. See Second Am. Compl., Exh. A-E. The media guide lists biographical facts about Hart, such as his hometown and his physical attributes, such as height and weight. See id. at Exh. A. It, further, describes his football statistics, such as his number of attempts, total offense, and passing yards. Id. The screenshots show images of the virtual player that have been allegedly modeled after Hart. However, Plaintiff did not label the screenshots to link each screenshot to a particular game.
Plaintiff's allegation concerning NCAA Football 2009 is similarly unclear on the face of the Complaint. For one, the Complaint does not allege that the virtual character that purportedly mimics Plaintiff is featured in NCAA Football 2009. Instead, Plaintiff alleges that his "image was used in the promotion for ... EA's NCAA Football game wherein [Plaintiff] was throwing a pass with actual footage from Rutgers University's Bowl Game against Arizona State University." Id. at 45. Plaintiff does not expressly identify the video game in dispute, nor any details about the promotion, but based on allegations found in his First Amended Complaint and Defendant's responses, this allegation appears to be referencing NCAA Football 2009. EA does not dispute that a photo of Plaintiff "throwing a pass appears
Plaintiff avers that these instances of misappropriation of his identity and likeness were "committed with the full intent of increasing the sales and profits for Defendant(s) since [EA's] heightened realism in NCAA Football videogames translates directly into increased sales and revenues for EA." Second Am. Compl. at 48. According to Plaintiff, video game consumers demand that these games "simulate actual college football matches in the most realistic manner possible, including the use of the `virtual' players that are modeled after real-life NCAA Football players such as [Plaintiff]." Id. Further, in regards to the users' ability to upload and download team rosters with names of real-life players, Plaintiff, while not alleging that EA has itself made this information available, does fault EA for "tak[ing] no courses of action to prevent" users from uploading rosters that use real players' names without authorization. Id. at 59-63. Plaintiff contends that EA's "courses of action and in-action" on this issue have allowed users to "effectively heighten the authenticity and realism of a true NCAA football experience." Id. at 64-65.
D. Instant Motion
EA filed the instant motion on November 12, 2010, arguing that the First Amendment to the United States Constitution mandates dismissal of the Complaint pursuant to Federal Rule of Civil Procedure 12(b)(6), or, in the alternative, summary judgment pursuant to Federal Rule of Civil Procedure 56(c). Plaintiff has opposed this motion, and both parties have filed declarations, affidavits, and exhibits. For the reasons explained herein, the Court elects to treat EA's motion as one for summary judgment, and finds that summary judgment is appropriate.
II. STANDARD OF REVIEW
As noted, Defendant has moved for dismissal, or, in the alternative, summary judgment. Defendant opposes consideration under either standard on the basis that discovery is not complete. See Opp. at 8-9. However, Plaintiff fails to identify how discovery would assist the Court in deciding this speech-based tort case.
Moreover, the question of whether the First Amendment limits Plaintiff's right of publicity claim is one of law, and courts answer this type of question by independently reviewing the disputed speech at the summary judgment stage. See Facenda v. N.F.L. Films, Inc., 542 F.3d 1007, 1016 (3d Cir.2008) ("[T]he categorization of speech is a question of law that we must resolve through independent review of the
"Summary judgment is proper if there is no genuine issue of material fact and if, viewing the facts in the light most favorable to the non-moving party, the moving party is entitled to judgment as a matter of law." Pearson v. Component Tech. Corp., 247 F.3d 471, 482 n. 1 (3d Cir.2001) (citing Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986)); accord Fed.R.Civ.P. 56(c). For an issue to be genuine, there must be "a sufficient evidentiary basis on which a reasonable jury could find for the non-moving party." Kaucher v. County of Bucks, 455 F.3d 418, 423 (3d Cir.2006); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). In determining whether a genuine issue of material fact exists, the court must view the facts and all reasonable inferences drawn from those facts in the light most favorable to the nonmoving party. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986); Curley v. Klem, 298 F.3d 271, 276-77 (3d Cir.2002). For a fact to be material, it must have the ability to "affect the outcome of the suit under governing law." Kaucher, 455 F.3d at 423. Disputes over irrelevant or unnecessary facts will not preclude a grant of summary judgment.
Initially, the moving party has the burden of demonstrating the absence of a genuine issue of material fact. Celotex Corp., 477 U.S. at 323, 106 S.Ct. 2548. Once the moving party has met this burden, the nonmoving party must identify, by affidavits or otherwise, specific facts showing that there is a genuine issue for trial. Id.; Monroe v. Beard, 536 F.3d 198, 206-07 (3d Cir.2008). Thus, to withstand a properly supported motion for summary judgment, the nonmoving party must identify specific facts and affirmative evidence that contradict those offered by the moving party. Anderson, 477 U.S. at 256-57, 106 S.Ct. 2505. The nonmoving party "must do more than simply show that there is some metaphysical doubt as to material facts." Id. at 206, 106 S.Ct. 2505 (quoting Matsushita, 475 U.S. at 586, 106 S.Ct. 1348). Moreover, the non-moving party must present "more than a scintilla of evidence showing that there is a genuine issue for trial." Woloszyn v. County of Lawrence, 396 F.3d 314, 319 (3d Cir.2005). Indeed, the plain language of Rule 56(c) mandates the entry of summary judgment, after adequate time for discovery and upon motion, against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial. Celotex Corp., 477 U.S. at 322, 106 S.Ct. 2548.
Additionally, in deciding the merits of a party's motion for summary judgment, the court's role is not to evaluate the evidence and decide the truth of the matter, but to determine whether there is a genuine issue for trial. Anderson, 477 U.S. at 249, 106 S.Ct. 2505. The nonmoving party cannot defeat summary judgment simply by asserting that certain evidence submitted by the moving party is not credible. S.E.C. v.
For the purposes of this motion, Defendant concedes that Plaintiff has stated a prima facie right of publicity claim under New Jersey law. Mot. at 1. Despite this concession, in its moving papers, EA expresses disagreement with statements of New Jersey law made in this Court's September 22, 2010 Opinion. In that opinion, which granted EA's motion to dismiss Plaintiff's complaint for failure to sufficiently plead a right of publicity claim under New Jersey law, the Court interpreted New Jersey's right of publicity law and concluded that Hart's proposed allegations "appear[ed] to state a right of publicity claim under New Jersey law." Court's Opinion at 665.
To the extent that some of EA's comments suggest that the Court's interpretation of New Jersey case law is inconsistent with First Amendment principles, EA misreads the September 22nd Opinion.
Indeed, at the time the Court issued its September 22, 2010 Opinion, the New Jersey Supreme Court had not addressed the misappropriation tort and the First Amendment in one case. A decision by the New Jersey Supreme Court rendered after this Court's September 22, 2010 opinion, and after the parties' initial briefing in this case, jointly considers the prima facie misappropriation elements and First Amendment principles.
In G.D. v. Kenny, 205 N.J. 275, 15 A.3d 300 (2011), the New Jersey Supreme Court held that the use of a political aide's criminal history in a campaign flyer, created by a public relations and marketing firm at the request of a political opponent, failed to satisfy the commercial purpose element of the misappropriation tort. Id. at 311. In reaching that conclusion, the Court reasoned:
Id. at 311-12 (internal quotation marks and citations omitted). While the G.D. Court did not explicitly define the relationship between the misappropriation tort and the First Amendment, nonetheless, by including First Amendment rationale in its analysis of the plaintiff's prima facie case, the Court construed the tort in a manner to avoid conflict with First Amendment principles.
Because of EA's decision not to challenge the sufficiency of Hart's right of publicity allegations for the purpose of this motion, the Court will focus solely upon EA's assertion of the First Amendment defense—rather than upon how a New Jersey court might construe the prima facie elements of the right of publicity. For this reason, the Court finds EA's inclusion of its disagreement with the Court's interpretation of New Jersey right of publicity law in several footnotes throughout its brief not only irrelevant to the motion but also a distraction from the issue at hand— the scope of EA's First Amendment defense.
Turning now to the First Amendment defense, the parties dispute whether the First Amendment trumps Plaintiff's claim. In EA's opening brief, it argued that the First Amendment bars Plaintiff's right of publicity claim because NCAA Football video games constitute protected expressive works. Plaintiff disagreed, in its opposition papers, contending that the NCAA Football games constitute speech made for commercial purposes that is not afforded extensive First Amendment protections.
While the motion was under consideration, the United States Supreme Court decided Brown v. Entertainment Merchants Ass'n, ___ U.S. ___, 131 S.Ct. 2729, 180 L.Ed.2d 708 (2011). That suit involved a First Amendment challenge to a California statute that "prohibits the sale or rental of `violent video games' to minors, and requires their packaging to be labeled '18." Id. at 2732. Violation of the statute was punishable by civil fine. Id. In light of Brown's potential applicability to the instant motion, the Court directed the parties to file supplemental briefs discussing that decision.
In ruling that the statute was unconstitutional, the Supreme Court confirmed that video games are entitled to First Amendment protection:
Id. at 2733.
Plaintiff argues, in his supplemental briefing, that Brown is of no help to EA here. In Plaintiff's view, Brown is distinguishable because it involved a content-based statute deserving of strict First Amendment scrutiny whereas a New Jersey right of publicity claim, in contrast, is not content-based. EA agrees, in its supplemental
A content-based speech restriction is one that regulates "speech when the specific motivating ideology or the opinion or perspective of the speaker is the rationale for the restriction." Galena v. Leone, 638 F.3d 186, 199 (3d Cir.2011). While EA cites to a law review article to support its contention that a New Jersey right of publicity claim operates as a content-based restriction, see Thomas F. Cotter, et al., Integrating the Right of Publicity with First Amendment and Copyright Preemption Analysis, 33 Colum. J. of Law & the Arts 165 (Winter 2011), that article acknowledges that most courts have not adopted the argument it advocates that the "exercise of state publicity rights is a content-based regulation of speech."
Contrary to the article's proposal, courts apply one of several tests, referred to in the legal discourse as "balancing tests," that are unique to intellectual property-related cases, to determine whether the First Amendment limits a right of publicity claim in that context. Courts do not tend to apply strict or intermediate scrutiny tests when addressing a First Amendment defense to intellectual property-related claims, such as the right of publicity. Accordingly, this Court's analysis will focus on the tests actually applied by courts, which tests are explained in more detail infra.
As to EA's latter argument regarding commercial speech, Brown does not explicitly discuss commercial speech. However, another recent decision of the Supreme Court, Sorrell v. IMS Health Inc., ___ U.S. ___, 131 S.Ct. 2653, 180 L.Ed.2d 544 (2011), does so. In that case, the Supreme Court made clear that challenges to content-based restrictions on both commercial and noncommercial speech are generally subject to heightened scrutiny. Id. at 2664 ("The First Amendment requires heightened scrutiny whenever the government creates `a regulation of speech because of disagreement with the message it conveys.' ... Commercial speech is no exception.").
Sorrell was not an intellectual-property related case, however. Moreover, Sorrell did not explicitly overrule Central Hudson Gas & Elec. Corp. v. Pub.
In any event, whatever First Amendment protection is afforded to commercial speech, NCAA Football is not commercial speech. The Third Circuit's decision in Facenda, supra, explains that courts are to consider three factors in determining whether speech is commercial or noncommercial:
Id. at 1017 (internal citations and quotation marks omitted). In conducting this inquiry, courts are to make "a commonsense distinction between speech proposing a commercial transaction ... and other varieties of speech." Id.
Applying Facenda here, Plaintiff cannot reasonably contend that the NCAA Football games constitute commercial speech. The speech at issue in Facenda was a video that the court characterized as a "late-night, half-hour-long `infomercial' [for the Madden Football video game, that was] only broadcast eight times in a three-day span immediately before the release of the video game to retail stores—much like an advertisement for an upcoming film." Id. at 1017. The "infomercial" referred specifically, and solely, to the Madden Football video game. And, the defendant-producer of the game had a financial interest in the sales of the game. Id. at 1017-18. In short, the video "aim[ed] to promote another creative work, the video game." Id. at 1018. Here, by contrast, the speech is the video game that is being sold. It is not a separate instance of speech that promotes the purchase of another work.
Similarly, in Tellado v. Time-Life, 643 F.Supp. 904, 914 (D.N.J.1986), a court in this district found that the First Amendment did not insulate the defendant from a right of publicity claim by a Vietnam veteran whose photograph was used in an advertisement for a book series the defendant produced about the Vietnam War. The Tellado court distinguished between use of the plaintiff's photograph in an advertisement for a book and the hypothetical use of the photograph in the book itself, noting that in the latter case, "defendant's use clearly would have been protected by the First Amendment, regardless of what type of profit defendant expected to make with its book series." Id.
Further, as courts have long recognized, the First Amendment's guarantee of free speech extends not only to political and ideological speech, but also to "[e]ntertainment... motion pictures, programs broadcast by radio and television, and live entertainment, such as musical and dramatic works." Tacynec v. City of Philadelphia, 687 F.2d 793, 796 (3d Cir.1982)
For these reasons, the Court finds no support for Plaintiff's contention that EA's NCAA Football video games are not expressive works entitled to the same protections afforded to other expressive works. Plaintiff's only allegation that appears to make a commercial speech argument is that his "image was used in the promotion for ... EA's NCAA Football game wherein [Plaintiff] was throwing a pass with actual footage from Rutgers University's Bowl Game against Arizona State University." Second Am. Compl. at 45. Yet, Plaintiff has produced no evidence that his likeness was ever used in an advertisement for a NCAA Football video game, nor has he suggested that discovery would reveal such evidence. In addition, Defendant denies ever using Plaintiff's image in any advertisement for the games, but has submitted a photograph of Plaintiff "throwing a pass [that] appears in a photo montage inside NCAA Football  that can only be seen when a user selects Rutgers as his or her favorite team." See Def.'s R. 56.1 Statement at 24; Supp. Decl. of Strauser, Ex. E at 16, Ex. I. Because this photograph is part of the video game itself, the commercial transaction has already taken place, and because Plaintiff's photo does not advertise another product or service, the Court finds no basis for concluding that NCAA Football 2009—or any other NCAA Football video game—is commercial speech.
Having concluded that NCAA Football is not commercial speech, the Court now turns to the more thorny question of whether the First Amendment grants EA the right to impinge upon Plaintiff's New Jersey common law right of publicity. The Court begins by discussing the competing interests protected by the right of publicity and the First Amendment, as well as the tests used by courts in balancing those competing interests. Therefore, the Court considers the party's arguments regarding what test the Court should employ to balance Defendant's First Amendment rights against Plaintiff's right of publicity—the transformative test or the Rogers test.
A. Competing Interests of the Right of Publicity and the First Amendment
"The area of interrelated torts encompassed by the umbrella term `invasion of privacy' is largely an American contribution to the common law, which is usually said to have its origins in the seminal law review article by Samuel Warren and Louis Brandeis published in 1890." Rodney A. Smolla, 3 SMOLLA & NIMMER ON FREEDOM OF SPEECH § 24:2 (2011) ("Smolla").
Despite its early characterization as a privacy right, by 1967, New Jersey cases treated the tort as a property right. See Canessa, 97 N.J.Super. at 352, 235 A.2d 62 ("We therefore hold that, insofar as plaintiffs' claim is based on the appropriation of their likeness and name for defendant's commercial benefit, it is an action for invasion of their `property' rights and not one for `injury to the person.'").
Throughout the tort's development, its underlying purpose has been to protect a person's name, likeness, voice, and biographical data from exploitation by others who seek economic or other benefit from that use. See Bisbee v. John C. Conover Agency, Inc., 186 N.J.Super. 335, 343, 452 A.2d 689 (App.Div.1982); Tellado v. Time-Life Books, Inc., 643 F.Supp. 904, 909-10 (D.N.J.1986). As explained in this Court's
Hart v. Electronic Arts, Inc., 740 F.Supp.2d 658, 664 (D.N.J.2010) (internal citations omitted).
The term "right of publicity" made its first appearance in a federal court opinion in 1953, in Haelan Laboratories, Inc. v. Topps Chewing Gum, Inc., 202 F.2d 866 (2d Cir.1953). That case concerned the use of player images on baseball cards, and the opinion described the right of publicity as an economic, as opposed to personal, right. See Marshall Leaffer, The Right of Publicity: A Comparative Perspective, 70 Albany L.Rev. 1357, 1360 (2007) ("Publicity"). The opinion explained: "a man has a right in the publicity value of his photograph ... [and] to grant the exclusive privilege of publishing his picture...." Haelan, 202 F.2d at 868. The court did not characterize this right as a property right because "[w]hether it [was] labelled [sic] a `property right' [was] immaterial." Id. What mattered was that "courts enforce a claim which has pecuniary worth." Id.
Following Haelan, states began to recognize a common law right of publicity and some states even enacted statutes protecting such a right. The right, effectively, became a property right, with some statutes providing that the right might be transferred through will or intestacy. Publicity, supra at 1360.
New Jersey has adopted the Restatement of Torts 2d (1977), thereby incorporating the common law privacy right of appropriation into its state law. Unlike other states, such as California and New York, New Jersey has not enacted a right of publicity statute. Nonetheless, given the similarity between the two doctrines, and that New Jersey treats its misappropriation tort as a property-based rather than privacy-based right, the Third Circuit has used the terms appropriation and right of publicity, interchangeably, to refer to the common law right in New Jersey. See McFarland v. Miller, 14 F.3d 912, 917 (3d Cir.1994) ("In New Jersey, the right of publicity is a property right.") Examples of New Jersey right of publicity claims upheld by courts include the misappropriation of professional golfers' names and playing profiles, Palmer v. Schonhorn Enterprises, Inc., 96 N.J.Super. 72, 232 A.2d 458 (Ch.1967), and the use of a photograph of a former Vietnam veteran in a letter
Recently, one federal district court in California assumed, without expressly deciding the issue, that a former collegiate football athlete, like Hart, was entitled to pursue a right of publicity claim for EA's use of his image in NCAA Football. See Keller v. Electronics Arts, Inc., No. C 09-1967, 2010 WL 530108 (N.D.Cal. Feb. 6, 2010).
When an author or creator uses another individual's image in a work, the First Amendment rights of the author or creator are implicated. There are several theories or policies underlying the First Amendment, including the marketplace of ideas, human dignity and self-fulfillment, and democratic self-governance. See Smolla, supra at § 2:3; McCarthy, THE RIGHTS OF PUBLICITY AND PRIVACY §§ 7:3, 8:16, 8:18 (2d ed.2008). Important here is the human dignity and self-fulfillment theory, which views the right of free expression as central to the dignity and self-realization of the individual author or creator. Smolla, supra at § 2:5.
While it is clear that the right of publicity may encroach upon First Amendment rights, there is little clarity as to how to balance the competing interests that each set of rights protects. As one scholar has noted, "[m]ost would acknowledge that the right of publicity needs to be reigned in when it burdens free expression, but no one convenient legal format has been found to set those limits ... The fact is that no judicial consensus has been reached on the contours of the First Amendment vis-a-vis the right of publicity." Publicity, supra at 1363. Indeed, this body of law can be aptly described as "disordered and incoherent." Id.
For example, "New Jersey recognizes a robust First Amendment constitutional defense to right of publicity claims: if the speech is newsworthy and informative, it may be protected even if it incidentally implicates the right of publicity; if, on the other hand, the speech is primarily commercial, the privilege may be lost." Right of Publicity, supra at § 16:3. New Jersey, further, recognizes First Amendment protection for entertainment-based, news-related works. As the Third Circuit stated in Jenkins v. Dell Pub. Co., 251 F.2d 447 (3d Cir.1958), cert. denied, 357 U.S. 921, 78 S.Ct. 1362, 2 L.Ed.2d 1365 (1958) (en banc), "it is neither feasible nor desirable to make a distinction between news for information and news for entertainment in determining the extent to which a publication is privileged." Id. at 451 (emphasis added).
This Court is not constrained by First Amendment analysis employed by New Jersey courts in this context because just
Moreover, neither New Jersey nor the Third Circuit has explicitly adopted a test that reconciles First Amendment interests with the state right of publicity. Accordingly, I look to decisional law throughout the country that has attempted such reconciliation, as well as secondary sources, for guidance. As noted, many decisions and sources refer to the attempt to reconcile the competing interest of publicity rights and First Amendment rights as a type of "balancing test."
Courts throughout the United States have utilized up to eight "balancing" tests that attempt to weigh the First Amendment rights of an author/creator against the right of publicity. Michael D. Scott, 1 SCOTT ON MULTIMEDIA LAW § 11.49- § 11.52 (3d ed.2006). It is important to note, before describing the various tests, that the Supreme Court in Zacchini, the only Supreme Court case addressing a First Amendment defense to the right of publicity, did not engage in a balancing of the competing interests.
Zacchini involved a television station's broadcast, in its news programming, of a stunt performer's entire cannonball act without the performer's permission. Ruling in favor of the performer's publicity right, and against the broadcaster's reliance on the First Amendment in defense of its airing of the performance, the Zacchini Court reasoned that the First Amendment "does not immunize the media when they broadcast a performer's entire act without his consent." Id. at 575, 97 S.Ct. 2849. And, the Court added, "the rationale for [protecting the right of publicity] is the straightforward one of preventing unjust enrichment by the theft of good will. No social purpose is served by having the defendant get free some aspect of the plaintiff that would have market value and for which he would normally pay." Id. at 576, 97 S.Ct. 2849.
Since Zacchini was decided in 1977, however, many courts have limited its application to its facts; only when a performer's entire act is appropriated do courts find it unnecessary to engage in any balancing. See ETW Corp. v. Jireh Pub., Inc., 332 F.3d 915, 956 (6th Cir.2003) ("Zacchini has been criticized as being very `narrowly drawn' in that it involved the wholesale reproduction of a live `entire act' ...."); McCarthy, supra at § 8:27. See also Wisconsin Interscholastic Athletic Ass'n v. Gannett Co., Inc., 658 F.3d 614, 624, 2011 WL 3773844, *10 (7th Cir.2011) (reasoning that Zacchini "distinguishes between the media's First Amendment right to "report on" and "cover" an event and its lack of rights to broadcast an "entire act.""); id. at 625, at *11 ("... Zacchini makes clear [that] the newspapers do not
The two key tests followed by courts today are the transformative test, which is borrowed from the copyright fair use doctrine, and the Rogers test, which is most often applied in Lanham Act trademark actions. Here, Hart advocates for the former and EA for the latter. The United States Supreme Court, the Third Circuit, and the New Jersey Supreme Court have not explicitly endorsed either test.
Hart further urges the Court to adopt a third test he describes as "the predominance test." This test, Hart argues, was utilized by a district court in this district in Estate of Presley v. Russen, 513 F.Supp. 1339, 1356 (D.N.J.1981).
Notably, Presley suggested that the copyright fair use doctrine serves as an appropriate analogy for balancing First Amendment interests with right of publicity concerns. In this way, Presley predicted a transformative-style test. Presley, 513 F.Supp. at 1359 ("[While] entertainment... enjoys First Amendment protection..., entertainment that is merely a copy or imitation, even if skillfully and accurately carried out, does not really have its own creative component and does not have a significant value as pure entertainment."). As the Presley court reasoned:
Id. at 1360 n. 21. Accordingly, this Court does not view Presley as espousing an independent test that requires separate analysis, and I will focus my analysis on the transformative test that Presley appears to have foreseen, as well as the Rogers test.
In my view, and as explained in more detail herein, the transformative test is more refined than the Rogers test and better balances the competing interests of the right of publicity and the First Amendment. The transformative test's incorporation of copyright's fair use doctrine not
B. Transformative Test
The tension between copyright interests and the First Amendment is apparent. The First Amendment provides that "Congress shall make no law ... abridging the freedom of speech...." Yet the Copyright Act, enacted by Congress under the authority of the U.S. Constitution's Copyright Clause, grants individuals monopoly-like power to preclude others from expressing copyrighted material. It is this "paradox," Smolla, supra at § 21:2, that creates tension between the two legal doctrines. The copyright laws grant a copyright owner the right to suppress another person's freedom of speech, when that person seeks to express copyrighted material.
In 2003, the Supreme Court commented on this apparent tension in Eldred v. Ashcroft, 537 U.S. 186, 123 S.Ct. 769, 154 L.Ed.2d 683 (2003). In that case, the Supreme Court observed that both the First Amendment and the Copyright Clause were adopted close in time, suggesting that "in the Framer's view, copyright's limited monopolies are compatible with free speech principles. Indeed, copyright's purpose is to promote the creation and publication of free expression." Id. at 788. Importantly, the Court concluded thereafter, "copyright law contains built-in First Amendment accommodations." Id. This is because the Copyright Act protects only expression, not ideas, and thereby "strikes a definitional balance between the First Amendment and copyright law by permitting free communication of facts while still protecting an author's expression." Id. at 788-89 (citation omitted). "Due to this [idea/expression dichotomy]," the Court continued, "every idea, theory, and fact in a copyrighted work becomes instantly available for public exploitation at the moment of publication." Id.
Additionally, the Court noted, the fair use defense codified in the Copyright Act "allows the public to use not only facts and ideas contained in a copyrighted work, but also expression itself in certain circumstances." Id. at 789. Per that defense, "[t]he fair use of a copyrighted work, including such use by reproduction in copies..., for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright." Id. Notably, the Court held that there is no need to apply a strict scrutiny test to First Amendment defenses to a copyright infringement claim in light of the aforementioned, built-in First Amendment protections. Id. at 788 ("We reject petitioners' plea for imposition of uncommonly strict scrutiny on a copyright scheme that incorporates its own speech-protective purposes and safeguards.").
I briefly turn to a description of the idea/expression dichotomy and the fair use doctrine for context. The idea/expression dichotomy serves as one means of alleviating the tension between copyright protection and First Amendment goals. While scholars debate the precise contours of what constitutes an "idea," see generally Smolla, supra at § 21:5, copyright law protects the "expression of the idea." Id.
The contours of the fair use doctrine are more clear. As codified at 17 U.S.C. § 107, the fair use doctrine is comprised of a list factors for courts to consider:
Transformative use was first coined, as a phrase, by Judge Pierre N. Leval in a 1990 Harvard Law Review article on the copyright doctrine of fair use. In that article, Judge Leval argued that the fair use doctrine is best effectuated if individuals are permitted to appropriate another's expression as "raw material" that the individual then "transform[s] in the creation of new information, new aesthetics, new insights and understandings...." Pierre N. Leval, Commentary, Toward a Fair Use Standard, 103 Harv. L.Rev. 1105, 1111 (1990). Just four years following Judge Leval's suggestion, the Supreme Court employed the transformative use analysis in Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 114 S.Ct. 1164, 127 L.Ed.2d 500 (1994). Quoting from Judge Leval's article, the Court reasoned that "whether and to what extent [a] new work is `transformative'" informs the Court's analysis as to the first factor of the fair use analysis, i.e., the purpose and character of the use. Id. at 579, 114 S.Ct. 1164.
Post-Campbell, California state court decisions have been credited with shaping the development of the transformative use doctrine in right of publicity cases. The doctrine was adopted by the California Supreme Court in Comedy III Productions, Inc. v. Gary Saderup, Inc., 25 Cal.4th 387, 106 Cal.Rptr.2d 126, 21 P.3d 797 (2001), in 2001. In that case, the California Supreme Court held that an artist's sale of lithographed t-shirts of the likenesses of The Three Stooges, which likenesses were reproduced from a charcoal drawing, were undeserving of First Amendment protection because the likenesses were insufficiently transformed. That court recognized that "creative appropriation of celebrity images can be an important avenue of individual expression... [because the celebrities] symbolize individual aspirations, group identities, and cultural values." Id. at 397, 106 Cal.Rptr.2d 126, 21 P.3d 797. Nonetheless, the California Supreme Court cautioned, First Amendment rights may not trample without bounds the right of publicity.
Viewing the right of publicity as akin to an intellectual property right, designed to protect the "considerable money, time, and energy ... needed to develop one's prominence in a particular field," id. at 399, 106 Cal.Rptr.2d 126, 21 P.3d 797 (quoting Lugosi v. Universal Pictures, 25 Cal.3d 813, 160 Cal.Rptr. 323, 603 P.2d 425 (1979)),
The Comedy III Court reasoned that the transformative test best protects the competing interests of protecting the celebrity while preserving First Amendment rights. The Court explained:
Id. Ultimately, the California Supreme court concluded, "the right-of-publicity holder continues to enforce the right to monopolize the production of conventional, more or less fungible, images of the celebrity." Id.
In addition, the Comedy III Court provided another (oft-quoted) formulation of the transformative test:
Id. at 406, 106 Cal.Rptr.2d 126, 21 P.3d 797. In using the word "expression," the court meant "something other than the likeness of the celebrity." Id. And, the inquiry is a qualitative rather than quantitative one, "asking whether the literal and imitative or the creative predominate in the work." Id.
Since Comedy III, many courts have adopted and applied the transformative test. See e.g., Hilton v. Hallmark Cards, 580 F.3d 874 (9th Cir.2009); C.B.C. Distrib. & Mktg., Inc. v. Major League Baseball Adv. Media, L.P., 505 F.3d 818 (8th Cir.2007); Reyes v. Wyeth Pharmaceuticals, Inc., 603 F.Supp.2d 289 (D.Puerto Rico2009); Romantics v. Activision
The transformative test, however, has been subject to some criticism. As explained by one scholar, the test lacks clear, objective guidelines and, thus, "can encourage judges to be art critics or base decisions on external factors like the fame of the artist." David Tan, Political Recoding of the Contemporary Celebrity and the First Amendment, 2 Harv. J. Sports & Ent. L. 1, 25-26 (2011). Tan further explains:
Id. at 26. Moreover, Tan notes, the copyright fair use doctrine, from which the transformative test was crafted, "has been criticized as one of copyright's `most nebulous and unpredictable aspects' and should only be `invoked as a last resort [in publicity claims] after all other solutions have been tried and found wanting.'" Id. (quoting McCarthy, supra at § 8:38).
While some may question the vagueness of the fair use doctrine, it nonetheless remains the statutory law for copyright matters and the U.S. Supreme Court found it appropriate in Zacchini to analogize the right of publicity to federal copyright law. See Zacchini, 433 U.S. at 573, 97 S.Ct. 2849. Moreover, the Supreme Court has described the fair use copyright doctrine as embodying First Amendment principles, thereby dispensing with the need for a strict scrutiny test. See Eldred v. Ashcroft, 123 S.Ct. at 788-89. Still, Tan's point that the transformative test may encourage judges to be art critics has some merit. It is clear from reviewing some of the decisions applying the transformative test, including those discussed below, that courts must engage in a degree of artistic interpretation in order to determine whether a work contains additional expressive elements. Even considering that the test may have some indeterminate qualities, I find that the test's rooting in the fair use doctrine and its consideration of the extent to which an image is copied fairly takes into account the competing right of publicity and First Amendment interests.
There are several decisions applying the transformative test that deserve mention here. In 2003, the California Supreme Court held in Winter v. DC Comics, 30 Cal.4th 881, 134 Cal.Rptr.2d 634, 69 P.3d 473 (2003), that a comic book's use of two musicians as inspiration for comic book characters was a transformative use. The comic book series features "Jonah Hex," an "anti-hero" in the context of a five volume miniseries that involved, inter alia, singing cowboys and an emporium patterned after the life of Oscar Wilde. Id. at
Plaintiffs Johnny and Edgar Winter, two musician brothers with long white hair and albino features, sued the creator of the comic books, asserting that the worm-like creatures were appropriations of their likenesses. Rejecting their claim, the California Supreme Court reasoned that it "reviewed the comic books ... [and] can readily ascertain that they are not just conventional depictions of plaintiffs but contain significant expressive content other than plaintiffs' mere likenesses." Id. at 890, 134 Cal.Rptr.2d 634, 69 P.3d 473. While acknowledging the similar hair and features, the Court concluded that the plaintiffs were "merely part of the raw materials from which the comic books were synthesized," and in the Court's view, the drawings were "but cartoon characters—half-human and half-worm—in a larger story, which is itself quite expressive." Id. The Court further reasoned that the plaintiffs' fans would not find the comic books a substitute for the musicians' work. Id.
Several years later, and drawing upon Winter, the Ninth Circuit in Hilton, supra, applied the transformative test to a Hallmark® greeting card that contained Paris Hilton's image and quoted her famous statement "that's hot." As described by that court, the card
Hilton, 580 F.3d at 891.
The question before the Ninth Circuit was whether Hallmark was entitled to strike and, thereby dismiss, the plaintiff's right of publicity claim based upon its First Amendment defense; the court applied the transformative test to conclude that Hallmark was not so entitled.
However, the Ulala character differed from Kirby in physique, and was based, in part, on the Japanese-style animation form of anime. While the character's hairstyle and primary costume mimics one of Kirby's hair colors and outfits, Kirby often varied her hair color and clothing, the court reasoned. Importantly, the court noted, the setting for the game was unique—in the game, the character was a space-age reporter in the 25th Century. Id. at 59, 50 Cal.Rptr.3d 607. And, the character's dance movements were unlike Kirby's. Altogether, the court concluded, the video game character was transformative. Id.
Recently, another California court applied the transformative test to the Band Hero video game that included computer-generated avatars designed to look like the members of the rock band No Doubt. In that case, No Doubt v. Activision, Inc., 192 Cal.App.4th 1018, 122 Cal.Rptr.3d 397 (Cal.App.2011), the avatars were literal recreations of the band members, who had posed for photography to enable the video game developer to reproduce the band members' likenesses with great detail. The No Doubt band members sued the developer for exceeding the bounds of the parties' license agreement, and relied on their right of publicity as one basis for their suit. The developer of the video game asserted the First Amendment as a defense.
Ruling in favor of the band members, the court reasoned that the video game was not transformative. The court reasoned:
Id. at 1033, 122 Cal.Rptr.3d 397. The court contrasted these depictions to those in Kirby, noting that the depictions here were not "fanciful, creative characters."
Here, NCAA Football's use of Hart's image presents a closer call than that in Kirby and No Doubt. The Ulala character was placed in an entirely different setting in the video game, although her characteristics relied heavily on the singer. Hart's NCAA Football virtual player, on the other hand, plays college football—just like Hart did.
On the other hand, that Hart's image is placed in a college football game is problematic for EA's assertion of a transformative defense. Placing present and former college athletes, including Hart, into the fittingly-titled NCAA Football game setting strongly suggests that the goal of the game is to capitalize upon the fame of those players. Indeed, "[i]t seems ludicrous to question whether video game consumers enjoy and, as a result, purchase more EA-produced video games as a result of the heightened realism associated with actual players." Holmes, supra at 20. This, alone, however, does not mean that EA's use of Hart's image was not transformative. See Winter, supra at 889, 134 Cal.Rptr.2d 634, 69 P.3d 473 ("[i]f it is determined that a work is worthy of First Amendment protection because added creative elements significantly transform the celebrity depiction, then independent inquiry into whether or not that work is cutting into the market for the celebrity's images ... appears to be irrelevant.") (citation omitted). Nevertheless, a game developer that bases its work on real players, in the context of the games that bring them notoriety, may walk a fine line between using reality as a building block for the developer's own creative work and exploiting the hard-earned reputations of college players for its own profit.
For this reason, the Court appreciates the plight of college players who are prohibited by NCAA bylaws from entering into licensing agreements and other "commercial opportunities" during their playing years. Hart Decl., ¶ 5. In this connection, Hart argues that EA has a practice of paying professional football players for the use of their images in EA's professional football video games, suggesting that it is disingenuous for EA to refuse to pay college
Hart further states, in a declaration, that EA has a practice of entering into license agreements with Collegiate Licensing Company, "the nation's leading collegiate trademark licensing and marketing company," The Collegiate Licensing Company, About CLC, http://www.clc.com/ clcweb/publishing.nsf/Content/aboutclc. html (Sept. 2, 2011), for use of team trademarks, uniforms, and logos, that are included in the NCAA Football video game. Hart Decl. at ¶ 9. As noted, EA admits that it has licensing agreements with the Collegiate Licensing Company. Def. Resp. Pl. Stat. Mat. Facts ¶ 15.
That EA may license professional player images, as well as team intellectual property from the N.C.A.A., yet refuse to license former college athlete images may suggest an element of unfairness. Nevertheless, it bears not on the question before this Court here—whether or not EA's use of Hart's image is protected by the First Amendment.
Viewed as a whole, there are sufficient elements of EA's own expression found in the game that justify the conclusion that its use of Hart's image is transformative and, therefore, entitled to First Amendment protection. For one, the game includes several creative elements apart from Hart's image. Similar to the Madden NFL video game, as described in a case dismissing a former professional football player's Lanham Act claim, Brown v. Electronic Arts, supra, the NCAA Football game contains "virtual stadiums, athletes, coaches, fans, sound effects, music, and commentary, all of which are created or compiled by the games' designers." Slip Op. at 7. Furthermore, as explained by Jeremy Strauser, an Executive Producer at EA responsible for the development of NCAA Football,
Strauser Decl., ¶ 4. The Court's own review of the video games confirms Mr. Strauser's description.
Even focusing on Hart's virtual image alone, it is clear that the game is transformative. It is true that the virtual player bears resemblance to Hart and was designed with Hart's physical attributes, sports statistics, and biographical information in mind. However, as noted, the game permits users to alter Hart's virtual player, control the player's throw distance and accuracy, change the team of which the player is a part by downloading varying team names and rosters, or engage in "Dynasty" mode, in which the user incorporates players from historical teams into the gameplay. See id. at ¶¶ 6-8. That the user is able to change the image's features, statistics, and teammates distinguishes
To be clear, it is not the user's alteration of Hart's image that is critical. What matters for my analysis of EA's First Amendment right is that EA created the mechanism by which the virtual player may be altered, as well as the multiple permutations available for each virtual player image. Since the game permits the user to alter the virtual player's physical characteristics, including the player's height, weight, hairstyle, face shape, body size, muscle size, and complexion, see e.g., Strauser Decl., Exh. F at 4 (Part I) (displaying "Edit Player-Appearance" screenshot), it follows that EA's artists created a host of physical characteristic options from which the user may choose. For example, EA artists created the several different hairstyles that can be morphed onto the image. See id. The Court's review of the game revealed eight such hairstyle options: fade 1, fade 2, close crop, buzzout 1, buzzout 2, afro, balding 1, and balding 2.
One could argue that the use of Hart's unaltered image as the starting point for the virtual player suggests that EA's use of Hart's image is not transformative. The problem with this argument is that it fails to fully take into account the distinctive interactive nature of video games. As noted by the United States Supreme Court in Brown v. Entert. Merch., supra,
131 S.Ct. at 2733 (emphasis added). This language from Brown recognizes that a user's interaction with a video game is one of the means by which video games communicate ideas and social messages. To deny NCAA Football First Amendment protection because the game initially displays the virtual player in an unaltered form would not give due accord to this expressive aspect of video games.
This leaves only the screenshot images from the game that Hart attached to his Second Amended Complaint and his opposition to the instant motion. As noted, those images are taken from NCAA Football, though Hart has not explained in his papers from which game or game(s) the screenshots were taken. In his Complaint exhibit, Hart juxtaposed, next to the screenshots, photographs of himself taken during his college career. In comparing the screenshots to the photographs, it is clear that the screenshots reflect his image. Hart further argues that the screenshots show the virtual player "in the same position" as in the photographs. McKenna Cert., ¶ 7.
While the screenshots reflect Hart's image, in my view, the screenshots do not depict the virtual player in the exact position as Hart appears in the photographs. There are variations. Even if the screenshots did replicate the photographs, that would not end the inquiry—the question here is whether EA's use of Hart's image in the game is transformative. That a few still screenshots in the context of a larger video game reflect his image does not undercut the existence of the additional creative elements of the game, discussed above, and the variable permutations of his image, created by EA's artists, for use in the game.
In this connection, Hart points to a statement from EA's website indicating that the goal of NCAA Football (no pun intended) is to create "the most realistic authentic [football] performance [so that the user may] feel what it's like to cover the field and play at the most elite level in college football." McKenna Cert., Exh. I. He, further, attaches statements from online articles that also describe the video game as a realistic experience. See id. at Exh. H, J, K. Whether EA has attempted to create a realistic experience, however, is not the focus of my inquiry. The pertinent question is whether EA's use of Hart's image is transformative and, for the reasons expressed above, I conclude that the use is transformative.
My analysis is in contrast to that in Keller, supra, cited by Plaintiff. In that case, the District Court for the Northern District of California held that NCAA Football is not sufficiently transformative. Looking solely at the image of the former college player-plaintiff in that case, who had previously played for Arizona State University, the court reasoned:
2010 WL 530108 at *5.
As an initial matter, EA's motion before the Keller court was a motion to dismiss. As such, the court considered only "those documents whose contents [were] alleged in [the] complaint," 2010 WL 530108 at *5 n. 2, and it did not take into account declarations, submitted by EA, that described the games. Nor did the court consider other materials submitted by the parties, although it did take "judicial notice" of the content of the games. Id. That this Court considers EA's motion as one for summary judgment, taking into account declarations and other materials, as well as the games themselves, distinguishes my ruling from Keller.
With regard to Keller's substantive analysis, that court fails to address that the virtual image may be altered and that the EA artists created the various formulations of each player. As noted, I find this aspect of the game significant because it suggests that the goal of the game is not for the user to "be" the player, as in No Doubt, where the virtual player could not be altered. The malleability of the player's image in NCAA Football suggests, instead, that the image serves as an art-imitating-life starting point for the game playing experience. In this way, while the player image may not be fanciful, like the worm-like characters in Winter, it is one of the "raw materials' from which an original work is synthesized, [and] the depiction or imitation of the celebrity is [not] the very sum and substance of the work in question." Comedy III, supra at 406, 106 Cal.Rptr.2d 126, 21 P.3d 797. Moreover, one could argue that even the technology that permits users to alter a player's image is itself a noteworthy, expressive attribute of the game. None of these facts were considered by the Keller court.
Finally, I disagree with Keller's approach of focusing solely on the challenged image, as opposed to the work as a whole. Contrary to Keller's reasoning, I read Kirby as looking at the video game in that case, as a whole. By focusing on the setting in which the Ulala character appeared, Kirby considered the entire game. Similarly, the Winter court considered that the purported images of the Winter brother musicians were "cartoon characters— half-human and half-worm—in a larger story, which is itself quite expressive." Id. at 890, 134 Cal.Rptr.2d 634, 69 P.3d 473 (emphasis added). While the Winter Court did focus most of its attention on the fanciful worm-like characters, it also considered the larger story of which the characters were a part. Moreover, in my view, it is logically inconsistent to consider the setting in which the character sits, which Keller does in its analysis, yet ignore the remainder of the game.
For the aforesaid reasons, I conclude that, under the transformative test, EA is entitled to assert the First Amendment as a defense to Hart's appropriation claim.
C. Rogers Test
The Rogers test was developed by the Second Circuit in Rogers v. Grimaldi, 875 F.2d 994
In Rogers, the Second Circuit was faced with a Lanham Act, 15 U.S.C. § 1125(a), false-endorsement claim by Ginger Rogers, of the famous film duo of Fred Astaire and Ginger Rogers, against the creators of a film titled "Ginger and Fred." 875 F.2d at 996. This section of the Lanham Act, 15 U.S.C. § 1125(a), creates civil liability for "[a]ny person who shall affix, apply, annex, or use in connection with any goods or services ... a false designation of origin, or any false description or representation... and shall cause such goods or services to enter into commerce...."
The Rogers court fashioned a "relevance" test, which mandates that Lanham Act liability should not be imposed unless the title to the challenged work has no relevance to the underlying work, or, if the title bears some relevance, whether the title misleads the public as to the content or source of the work. 875 F.2d at 999. In the Rogers court's view, this test is useful because "[a] misleading title with no artistic relevance cannot be sufficiently justified by a free expression interest." Id. This is because
Id. If there is some modicum of relevance, the court further reasoned, a title that was "explicitly misleading" could still be found to violate the Lanham Act.
Noticeably, the Rogers court does not explain the genesis of its Lanham Act, "relevance test." See id. It appears, however, that this test may have been borrowed from a doctrine developed under New York state law that is referred to as the "real relationship" test. That test was first applied in a 1957 decision by a New York appellate court in Dallesandro v. Henry Holt & Co., 4 A.D.2d 470, 166 N.Y.S.2d 805 (1957). In that decision, the court applied the "real relationship" test to a right of publicity claim, brought under the New York statute, by a priest who alleged that a book based on his life, and that featured him on the book cover, violated his right of publicity. The court
The Dallesandro court described the "real relationship" test as a newsworthiness exception to the statutory right of publicity:
Id. at 806-07 (internal citations omitted) (emphasis added). The purpose of the test is to exclude from the New York right of publicity statute those uses of a individual's image that are not commercial in nature or "used for the purpose of trade." Id.
Like the Rogers test, the "real relationship" test does not apply to a use that "has no real relationship to the article, or unless the article is an advertisement in disguise." Id. Yet Rogers expands upon the "real relationship" test by not requiring that the substance of the challenged work be related to newsworthy matters of public interest. Important here is that, while Rogers was addressing a First Amendment defense to a Lanham Act claim, it apparently imported the New York "real relationship" test without explaining why that test was helpful in the Lanham Act context.
In addition to its Lanham Act analysis, Rogers engages in a separate legal analysis of Ms. Rogers common-law right of publicity claim. In addressing that claim, the Second Circuit noted that "the right of
EA properly acknowledges in its briefing that Rogers actually involves the application of two separate tests—the Lanham Act test, and the right of publicity test. Some courts have described the Lanham Act as the federal equivalent of a state right of publicity, see Kirby, supra at 57, 50 Cal.Rptr.3d 607 (citing ETW, 332 F.3d at 924), and have applied the Lanham Act test to appropriation claims like that presented here. The court in ETW is one example.
Other courts have applied the right of publicity claim test to misappropriation claims. For example, in Parks v. LaFace Records, supra, the Sixth Circuit applied the right of publicity test in denying summary judgment on a claim brought by the civil rights icon Rosa Parks against a rap group that used her name in a song title. The Sixth Circuit held that genuine issues of material fact existed as to whether the song title was "wholly unrelated" to the song and whether the use of her name was a "disguised commercial advertisement." Id. at 461. These courts may have chosen to apply the right of publicity test because right of publicity claims do not embody the same likelihood-of-confusion concerns that the Rogers Lanham Act test is designed to protect. See Parks, 329 F.3d at 460 ("[A] right of publicity claim does differ from a false advertising claim in one crucial respect; a right of publicity claim does not require any evidence that a consumer is likely to be confused.") (citing Herman Miller, Inc. v. Palazzetti Imports, 270 F.3d 298, 319-20 (6th Cir.2001); Rogers, 875 F.2d at 1004; Cairns v. Franklin Mint Co., 24 F.Supp.2d 1013, 1030 (C.D.Cal. 1998)).
EA's argument as to why I should apply Rogers here is convoluted, yet easily addressed. According to EA, because New Jersey follows the Restatement, and the Restatement (Third) mirrors New York's statutory appropriation tort which a New Jersey court has described as "essentially the same" as New Jersey's common law tort, Tellado, 643 F.Supp. at 912, and because the Rogers test appears to track the Restatement (Third) of Unfair Competition, I should adopt that test.
Moreover, as explained above, courts have noted that right of publicity claims do not embody the same likelihood-of-confusion concerns that the Rogers Lanham Act test is designed to protect. See Parks, 329 F.3d at 460 ("[A] right of publicity claim does differ from a false advertising claim in one crucial respect; a right of publicity claim does not require any evidence that a consumer is likely to be confused.") (citing Herman Miller, Inc. v. Palazzetti Imports, 270 F.3d 298, 319-20 (6th Cir.2001); Rogers, 875 F.2d at 1004; Cairns v. Franklin Mint Co., 24 F.Supp.2d 1013, 1030 (C.D.Cal.1998)). And, the Rogers right of publicity test mirrors the Lanham Act test. For this reason, I question the wisdom of applying a trademark-based test to right of publicity claims without accounting for this difference. The Rogers court did not explain the genesis of its Lanham Act test, yet it appears that the test was borrowed from New York's "real relationship" test. If that is the case, Rogers fails to explain
Arguably, one benefit of applying either of the Rogers tests (the Lanham Act or right of publicity tests) is that they are both straightforward, and do not require courts to engage in as much artistic interpretation as required by the transformative test. However, like the "real relationship" test, the Rogers tests may be manipulated depending upon the level of generality employed by the parties or the reviewing court.
It is important to note that the Third Circuit has not adopted the Rogers test in the context of either a Lanham Act claim or a right of publicity claim. In Facenda, the Third Circuit declined to rule on the test's applicability to a Lanham Act claim. See 542 F.3d at 1018. In addition to the Sixth Circuit, two other circuits, however, have adopted the test for use in the Lanham Act context. See Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 902 (9th Cir. 2002); Sugar Busters LLC v. Brennan, 177 F.3d 258, 269 & n. 7 (5th Cir.1999). And, in E.S.S. Entert. 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008), the Ninth Circuit applied the Rogers test to a Lanham Act claim relating to the content of a video game that incorporated the use of a night club's name into the game scenery.
Notably, in Brown v. Electronic Arts, No. 2:09-cv-1598 (C.D.Cal. Sept. 23, 2010) (Slip Op.), the Central District of California applied the Rogers test to conclude that the use of a former professional football player's likeness in EA's Madden NFL video game was protected by the First Amendment. In that Lanham Act action, the court concluded that "the mere use of [the plaintiff's] likeness in the game, without more, is insufficient to make the use explicitly misleading." Id. at 8. A similar holding was reached in another Lanham Act video game case brought against EA, albeit not a sports-related game.
In short, although the Third Circuit has not adopted the Rogers test to either Lanham Act or right of publicity claims, there
As noted, the Rogers Lanham Act test is a two-prong test that asks: (1) whether the challenged work has relevance to the underlying work; and (2) if the challenged work is relevant, whether the title misleads the public as to the source of content of the work. Rogers, 875 F.2d at 999. The use of Hart's image in the video game has great relevance to the game itself, which is set on a college football field and revolves around the playing of virtual football. In addition, the use of Hart's image in the game cannot reasonably be said to mislead the public as to the content or source of the video game. Hart has not suggested, in his opposition brief, that the use of his image leads the public to believe that he has endorsed the NCAA Football product. Indeed, in his opposition brief, Hart fails to adequately address the Rogers test altogether. He merely cites the case in one footnote, and provides no analysis of the Rogers test factors.
Under the Rogers right-of-publicity test, the two queries are: (a) whether the challenged work is wholly unrelated to the underlying work; or (b) whether the use of the plaintiff's name is a disguised commercial advertisement. Rogers, 875 F.2d at 1004. One cannot reasonably argue that Hart's image is wholly unrelated to the game, for the same reasons expressed under my analysis of the Lanham Act test. Nor is the use of Hart's image a "disguised commercial advertisement." Id. Instead, the use of his image is part of an expressive act by EA that might draw upon public familiarity with Hart's college football career but does not explicitly state that he endorses or contributes to the creation of the game.
As explained by the court in Seale v. Gramercy Pictures, 949 F.Supp. 331 (E.D.Pa.1996), applying Rogers to a Pennsylvania right of publicity claim, "[i]f the name or likeness is used solely to attract attention to a work that is not related to the identified person, the user may be subject to liability for a use of the other's identity in advertising." Id. at 336 (quoting Restatement (Third) Unfair Competition § 47, cmt c.). On the other hand, the "use of a person's name and likeness to advertise a novel, play, or motion picture concerning that individual is not actionable as an infringement of the right of publicity." Id. (citing Restatement (Third) Unfair Competition § 47, cmt a.) Here, EA's use of Hart's image is clearly related to the video game and is not simply an advertisement for an unrelated product.
In sum, it is my view that the transformative test best encapsulates the type of nuanced analysis required to properly balance the competing right of publicity and First Amendment interest. Nonetheless, having concluded that EA is entitled to First Amendment protection under either the transformative test or either of the Rogers' tests, the Court need not decide which test should generally apply to misappropriation cases. On the facts of this case, EA is entitled to assert the First Amendment defense and its motion for summary judgment must, therefore, be granted.
Castro did not discuss the First Amendment in its analysis of the plaintiffs' claim in that case, however. Rather, Castro held that the plaintiffs in that case failed to "allege that any of the videotape footage taken of them ... has been used for `trade purposes" and, therefore, that the "plaintiffs' complaints [did] not state causes of action for commercial appropriation of their likenesses." 370 N.J.Super. at 298, 851 A.2d 88. EA now takes issue with the Court's comment in the September 22nd Opinion that cases interpreting Castro have limited its holding to news-related entities. Court's Opinion at 667-68 (discussing Liebholz v. Harriri, Civil Action No. 05-5148, 2006 WL 2023186 (D.N.J. Jul. 12, 2006)). Reading that comment out of context, EA argues that Castro, and other cases discussed by this Court in that opinion, do not stand for the proposition that the First Amendment distinguishes between media and non-media defendants. Read in context, it is clear that this Court was not discussing the First Amendment nor opining on whether a ruling that distinguishes between media and non-media defendants would be appropriate. Indeed, the paragraph following the Court's discussion of how Castro's holding has been interpreted explains that the "the touchstone of the commercial purpose requirement is whether the publication uses the plaintiff's likeness `for the purpose of capitalizing upon the name by using it in connection with a commercial project....'" Court's Opinion at 667-68 (emphasis added). For EA to now argue that the Court suggested that "`non-media' expressive speech is entitled to less First Amendment protection than `media' speech," Def. Mov. Br. in Supp. Mot. to Dismiss at 22, is unfounded.
This is not to say that the Castro court's distinction between media and non-media defendants in its trade purposes analysis may reflect the century-old "newsworthiness" exception to misappropriation claims, which was an early attempt by courts to take into account First Amendment concerns as they related to freedom of the press. See generally Amicus Brief of 73 Law Professors in Support of Defendant/Appellee Jireh Publishing, Inc., For Affirmance, ETW Corp. v. Jireh Publishing, Inc., No. 00-3584 at 6-8, 2000 WL 35456243 (6th Cir.2000) available at http:// jurist.law.pitt.edu/amicus/etw_v_jireh.pdf (arguing that "The Definition of Commercial Use in Publicity Law Reflects Understandings of the First Amendment from the Early Twentieth Century"). While more recent cases make clear that non-newsworthy works are likewise entitled to First Amendment protection, as discussed herein, the Castro court did not explicitly address First Amendment concerns. Moreover, as EA recognizes, the defendant in that case was a media defendant, thus, the Castro court did not address the applicability of its holding to non-media defendants.
Jim Henson Productions, Inc. v. John T. Brady & Associates, Inc., 867 F.Supp. 175, 188-89 (S.D.N.Y.1994).
Slip Op. at 9. NCAA Football, in contrast, is about college football players like Hart.