By Scott Hervey
Every practitioner should teach law school at least once. This year I am teaching Entertainment Law at the University of California at Davis. (Although flying up from and back to L.A. once a week can be a bit of a drag, so far it is a good experience.) Finding issues to trigger discussion and debate in class is forcing me to look at cases much differently. Since I already know the general holdings of the cases I am teaching, I find myself spending more time analyzing the dissenting opinion and loosing party’s position, looking for points that can foster robust in-class discussion. This week, in preparing for a class session on right of publicity, I re-read the recent 9th Circuit case of Keller v. Electronic Arts and found myself questioning whether the courts have changed the Transformative Use test set forth by the California Supreme Court and used to analyze a conflict between right of publicity and First Amendment protected speech.
The facts of Keller are straight forward. Electronic Arts produced an NCAA Football series of video games which allowed users to control avatars representing college football players and participate in simulated football games. In NCAA Football, EA replicated each school’s entire team as accurately as possible and every football player avatar had a jersey number and virtually identical height, weight, build, skin tone, hair color and home state as each real life player. EA’s player avatars reflect all of the real life attributes of the NCAA players; the only exception is that EA omitted the real life player’s name from the corresponding avatar and assigned the avatar a hometown that is different from the real player’s hometown.
Keller was the starting quarterback for Arizona State University in 2005. The 2005 edition of EA’s NCAA Football video game featured an avatar that was the starting quarterback for Arizona State University, wore the number 9, as did Keller and had the same physical characteristics, facial features, play style, and home state as Keller.
Objecting to EA’s use of his likeness in the video game, Keller filed a class action complaint alleging that EA violated his right of publicity under California Civil Code section 3344. EA moved to strike the complaint as a strategic lawsuit against public participation (“SLAPP”) under California’a anti-SLAPP statute. The case came to the 9th Circuit from the District Court’s denial of EA’s motion.
Having found that EA made a prima facie showing that Keller’s suit arises from EA’s production and distribution of video games — activities that are Constitutionally protected as free speech — the court spent most of its time evaluating whether Keller had established a reasonable probability that he would prevail on his claim. Since EA did not contest that Keller stated a right of publicity claim, the court’s focus was on the affirmative defenses advanced by EA and EA’s claim that in light thereof, it is not reasonably probable that Keller would prevail on his right of publicity claim.
In California, the test used to evaluate an affirmative defense to a right of publicity claim is to evaluate the “transformative use” of the new work. This test was formulated by the California Supreme Court in Comedy III Productions, Inc. v. Gary Saderup, Inc. Comedy III involved a charcoal sketch-work by artist Gary Saderup of The Three Stooges reproduced on lithographs and T-shirts . This test is a balancing of the defendant’s First Amendment rights and the plaintiff’s right of publicity. The Supreme Court explained that where a work contains significant transformative elements, it is not only especially worthy of First Amendment protection, but it is also less likely to interfere with the economic interest protected by the right of publicity. In upholding the plaintiff’s right of publicity claim, the California Supreme Court found that the work in question contained “no significant transformative or creative contribution” and that the artist’s “skill is manifestly subordinated to the overall goal of creating literal, convenient depictions of The Three Stooges so as to exploit their fame.”
In analyzing Comedy III, the 9th Circuit explained that it provides “at least five factors to consider in determining whether a work is significantly transformative to obtain First Amendment protection.” These factors are as follows:
(i) is the celebrity likeness one of the “raw materials” from which an original work is synthesized, or is the depiction of the celebrity the very sum and substance of the work;
(ii) is the work primarily the defendant’s own expression or merely an expression of the likeness of the celebrity. This factor is determined by looking at whether a purchaser of the work is motivated to buy a reproduction of the celebrity or buy the expressive work of the defendant;
(iii) which elements predominate in the work? The literal and imitative reflection of the celebrity or the defendant’s creative elements;
(iv) in close cases, is the economic value of the work derived primarily from the fame of the celebrity depicted; and
(v) is the defendant’s skill and talent “manifestly subordinated” to the overall goal of creating a conventional portrait of a celebrity so as to commercially exploit his or her fame.
After setting forth the five factors, the court then reviewed the major right of publicity cases following Comedy III and applying the Transformative Use test. In Winter v. DC Comics, villainous half-worm, half-human offspring named Johnny and Edgar Autumn were found not to violate the rights of rockers Johnny and Edgar Winters. Not only did the court find that the comic books contained significant expressive content other than plaintiffs’ mere likeness, but also that the brothers are “cartoon characters…in a larger story, which itself is quite expressive.”
The court also discussed the 6th Circuit case of ETW Corporation v. Jireh Publishing, Inc. which involved a painting entitled “The Masters of Augusta” which commemorates Tiger Woods’ victory at the Masters Tournament in Augusta, Georgia in 1997. Woods became the youngest player ever to win the Masters in that tournament. In assessing Woods’ right of publicity claim, the 6th Circuit applied the Transformative Use test and found the artwork contains significant transformative elements. The 6th Circuit specifically noted that the work consists of a collage of images in addition to Woods’ image, and that they are all combined to describe, in artistic form, a historic event in sports and convey a message about the significance of Woods’ achievement in that event.
Next the 9th Circuit analyzed the California Court of Appeals’ application of the Transformative Use test in Kirby v. Sega of America, Inc. In that case, the work in question was a video game that featured “Ulala,” a reporter from outer space allegedly based on a well known singer whose “signature” lyrical expression is “ooh la la.” The court noted the video game character’s physical characteristics, costume, dance mores and role as a space age reporter, and found the video game character to be more than a mere literal depiction of the singer. The court noted that Ulala is a “fanciful, creative character who exists in the context of a unique and expressive video game.”
And finally, the 9th Circuit reviewed No Doubt v. Activision Publishing, Inc. in which the California Court of Appeal addressed Activision’s “Band Hero” video game. In Band Hero, users can choose from a number of avatars, some of which represent actual rock stars, including the members of No Doubt, and are able to simulate performing in a rock band. Activision had licensed No Doubt’s likeness, but allegedly exceeded the scope of the license. The court held that No Doubt’s right of publicity claim prevailed over Activision’s First Amendment defense; the court concluded that the video game was not “transformative” under the holding of Comedy III. Specifically, the court reasoned that the video game characters were “literal recreations of the band members” doing “the same activity by which the band members achieved and maintain fame.” The fact that the avatars “appear in the context of a video game that contains many other creative elements…does not transform the avatars into anything other than exact depictions of No Doubt’s members doing exactly what they do as celebrities.”
After review of these cases, the 9th Circuit found that EA was not entitled to judgment as a matter of law on the Transformative Use test. The court stated that “No Doubt offers a persuasive precedent that cannot be materially distinguished” from the case at hand.
In almost the exact same case in the 3rd Circuit, Hart v. Electronic Arts, Judge Ambro dissented and disregarded No Doubt and Kerby on the grounds that they were not decided by the Supreme Court; the court that established the Transformative Use test. In his dissent, Judge Ambro stated his belief that Kirby and No Doubt were wrongly decided. The Ninth Circuit acknowledged Judge Ambro’s position, but stated its belief that No Doubt is consistent with the California Supreme Court’s relevant decisions and will not disregard a well reasoned decision from a state’s appellate court.
The question I posed to my students was whether the California Court of Appeals had properly applied the holdings of Comedy III and Winters in deciding Kerby and No Doubt. In Winters, the court clearly considered the comic book in its entirety when determining whether the work met the Transformative Use test. Why did the Appeals Court specifically state that it did not matter that the No Doubt avatars appear in the context of a video game containing other creative elements. I asked my students whether it is fair to say that the California Court of Appeals added two additional factors to the Transformative Use test – (i) without regard to the context in with the celebrities’ likeness appears, is that likeness a literal recreation of the celebrity; and (ii) is the celebrity featured performing the same activity by which he/she achieved and maintains fame. If this is now the test for determining transformative use, the 6th Circuit Tiger Woods case – which I believe was correctly decided – may very well have been decided differently.