Written By: Andrew Sensi
In the past few years several lawsuits have been initiated by former collegiate athletes seeking compensation for the alleged use of their likenesses in video games and other products licensed by the National Collegiate Athletic Association ("NCAA") and its member institutions. From lesser known athletes such as Sam Keller and Ryan Hart, to well-recognized athletes such as Oscar Robertson, Ed O'Bannon and Bill Russell; former student athletes have alleged various violations of their right of publicity. Sam Keller and Ryan Hart's claims stem from the video game series NCAA Football produced by Electronic Arts ("EA"). Likewise, Bill Russell's claim stems from EA's alleged use of his image in an NCAA basketball video game. Meanwhile, Oscar Robertson and Ed O'Bannon claim that the NCAA, EA and the Collegiate Licensing Company ("CLC") have (1) conspired to fix prices for the use and sale of their images at zero dollars, and (2) engaged in a group boycott by requiring student athletes to relinquish publicity rights in perpetuity.1
This post is the first of several which will examine the history of the right of publicity, the justifications for and criticisms of the law, along with the potential success or failure of these recent suits. This post will focus on defining the right of publicity, and tracing its history.
The right of publicity is "the inherent right of every human being to control the commercial use of his or her identity,"2 and until recently was generally successful in securing to persons the commercial value of their identities. In general, the elements of a right of publicity claim are (1) use of a person's identity, (2) for a commercial purpose, (3) without their consent. The term identity is broad and includes, but is not limited to a person's name, nickname, photograph, voice, likeness, and persona. Two commonly asserted defenses to a right of publicity claim are copyright preemption and the First Amendment.
In order to fully understand the state of the law today it is necessary to understand both its origin and development. Since its inception, the protection available under the right of publicity has swayed like a pendulum from little or no protection to broad protection. Currently, the pendulum is swinging back towards the realm of little or no protection.
The right of publicity traces its origin to an 1890 law review article, "The Right of Privacy."3 The article responded to a growing problem concerning tabloid journalism by arguing that a person has a "right to be let alone," which protects them from emotionally harmful invasions of their privacy. After an initial rejection, the right of privacy gained recognition and was successful in allowing everyday citizens to prevent the commercial exploitation of their likenesses.4
However, the right of privacy was unable to help famous plaintiffs because the law was focused on preventing emotional harm. Courts reasoned that having sought out the public eye, famous plaintiffs could not complain of any mental distress or of any invasion to their privacy.5 This created a void, which the right of publicity filled in order to protect famous persons from the unauthorized use of their identity. Thus, "the right of publicity was created not so much from the right of privacy as from frustration with it." 6
Following the recognition of the right of publicity in 1953 by Judge Jerome Frank in Haelan Labs. Inc. v. Topps Chewing Gum, Inc.7, celebrities were finally able to secure the commercial value of their identities. From board games to trading cards, the right of publicity generally provided broad protection for the next four decades. In 1977, the Supreme Court issued its only opinion on the right of publicity. In Zacchini v Scripps-Howard Broadcasting Co., the Court held that airing a fifteen second clip of plaintiff's human cannonball performance during a television newscast violated his right of publicity.8 Unfortunately, the majority opinion is so narrowly drawn that Zacchini is really a right of performance case and offers little help where the plaintiff's entire act or performance is not used. However, the Court's reasoning and justifications provide important support for the existence of the right of publicity, which will be explored further in a future posting.
The pendulum arguably reached its peak around 1992, in the case of White v Samsung.9 In White, the Ninth Circuit held that an advertisement featuring a robot dressed in a wig, gown, and jewelry standing next to a game board recognizable as the Wheel of Fortune game show set is a violation of Vanna White's right of publicity. Furthermore, the court rejected Samsung's First Amendment parody defense, holding that the parody message was subservient to the ad's primary message: buy a Samsung VCR. This case represents the peak of protection for two reasons. First, the advertisement does not directly use Vanna's identity it only evokes or reminds the viewer of Vanna White (which is not to say that this type of use should not satisfy the use prong of a ROP claim). Secondly, the right of publicity trumped a First Amendment parody claim. The result of this case sparked a wave of academic and judicial criticism which will be analyzed in more detail in the next post.
That the pendulum has swung away from the protection provided in White is demonstrated by several cases from the past two-plus decades.
While the prevailing view is that the right of publicity is not preempted by Copyright law, at least two courts have disagreed. Both the Second and Seventh Circuits have found a right of publicity claim to be preempted by copyright law. In Baltimore Orioles v MLBPA, the Seventh Circuit held that professional baseball players' right of publicity claim for their performances in games was preempted because their performances were fixed in a tangible medium of expression and were therefore equivalent to the exclusive rights in a copyright.10 Eleven years later, the Second Circuit followed suit in National Basketball Ass'n v. Motorola, Inc.11
The First Amendment has by far been the biggest threat to the right of publicity over the past two decades. Several aspects of First Amendment protection have been used to limit the reach of the right publicity, including: publication of newsworthy information, parody, the transformative use test, and a general expansion of non-commercial speech.
In Cardtoons v MLBPA, the Tenth Circuit found that baseball trading cards which parodied famous players were protected by the First Amendment.12 The court's primary justification was based on the assumption that celebrities would likely prevent the distribution of valuable expression since they are unlikely to license a parody. Additionally, the court concluded that baseball cards are not properly categorized as commercial speech and are therefore entitled to full First Amendment protection.
In addition to baseball cards the following have also been found to be protected as non-commercial, expressive free speech: greeting cards,13 T-shirts,14 video games,15 and fantasy sports websites.16 Focusing on the medium instead of the message, courts have missed the mark in this area. For example, a video game which is the modern equivalent of a board game is entitled to First Amendment protection while the board game is not. Thus, in 1967, when a board game used the names and biographies of famous golfers it was not protected by the First Amendment.17 Whereas today such a use in a video game would likely be protected by the First Amendment.
Another way in which courts have attempted to balance the right of publicity with the First Amendment is through an adaption of the transformative use test from copyright law. The transformative use test in this context essentially asks whether the defendant has made a literal depiction of the celebrity or whether the defendant has added something new so that it has become his own expression. When performed properly the test will focus on whether the marketability and economic value of the challenged work derives primarily from the fame of the celebrity depicted, or from the defendant's creative transformations.18 If the value comes primarily from a source other than the plaintiff's fame then sufficient transformative elements are present to exempt the work under the First Amendment.
Unfortunately, courts have incorrectly focused on whether or not the defendant has distorted the plaintiff's identity in such a way that the market for conventional images of the plaintiff is unlikely to be affected. The most egregious example comes from the Sixth Circuit which found a painting commemorating Tiger Woods' first victory at the Masters to be transformative.19 Today, as long as the defendant has not used a conventional depiction of the plaintiff the use is likely to be transformative and thereby protected by the First Amendment.
Perhaps the biggest threat to the right of publicity from the First Amendment is the protection afforded to news and other subjects in the public interest. The Restatement (Third) of Unfair Competition properly exempts use of a plaintiff's identity in news, entertainment and creative works.20 However, this exception has the potential to swallow the rule, and has turned the celebrity's fame into a double-edged sword. The same thing which gives a plaintiff's identity value (their fame and popularity) is also the same thing which makes them newsworthy and in turn denies them protection.21
Unless a court focuses on whether the use of the plaintiff's identity was used for a newsworthy purpose the exception will swallow the rule. For example, a defendant could place Peyton Manning's face on its product along with the quote "3-time MVP," and his career TD numbers and claim the newsworthy exception. But certainly, the purpose of including Manning's face and statistics is not to inform purchasers about his place in sports history. Rather the purpose is to attract attention to the product through Manning's fame and popularity, and therefore should not be granted First Amendment protection.
A final way in which courts have swung the pendulum away from the protection afforded in White is through a narrowing of the aspects of a plaintiff's identity which are protected by the right of publicity. For example, in Burck v Mars Inc., the court found that a fictional character (the Naked Cowboy) created by the plaintiff was not protectable.22 If the court's holding is extended to find a distinction between actors and the roles they play, or between athletes off the field and on the field, it would further limit the protections of the right of publicity.
In summary, the protection provided by the right of publicity is aptly compared to a pendulum. When the right of privacy was first recognized there was little to no protection for famous plaintiffs. But in 1953, with the recognition of the right of publicity, the pendulum began to swing in favor of broad protection. However, the pendulum reached its peak around 1993 with the White decision and has since swung back towards the lack of protection afforded nearly a century ago. The cases brought by former student athletes such as Sam Keller present a unique opportunity for the courts to either stop the momentum of the past two decades, or allow the pendulum to continue its swing and effectively sound the death knell of the right of publicity.
In the next posting, I will discuss the justifications for and criticisms of the right of publicity, along with the ways in which the criticisms have helped to diminish the protection of the right of publicity.
1 In re NCAA Student Athlete Name & Likeness Litigation
, 2011 WL 1642256, 2 (N.D.C.A. 2011).
2 1 J. Thomas McCarthy, The Rights of Publicity and Privacy § 1:3 (2d ed., rev. vol. 2010).
3 Warren and Brandeis, The Right to Privacy, 4 Harv. L. Rev. 193 (1890).
4 Compare Roberson v. Rochester Folding Box Co., 64 N.E. 442, 447 (1902) (holding that there is no common law right of privacy) with Pavesich v. New England Life Ins. Co., 50 S.E. 68 (Ga. 1905)(holding that the unauthorized use of a person's photograph in a testimonial advertisement actionable as an invasion of privacy).
5 O'Brien v. Pabst Sales Co., 124 F.2d 167, 170 (5th Cir. 1941) cert. denied, 315 U.S. 823 (1942)(O'Brien, a famous football player who was against the consumption of alcohol could not stop the use of his image in beer advertisements because, "the publicity he got was only that which he had been constantly seeking and receiving").
6 Madow, Private Ownership of Public Image: Popular Culture and Publicity Rights 81 Cal. L. Rev. 125, 167 (1993).
7 Haelan Labs., Inc. v. Topps Chewing Gum, Inc., 202 F.2d 866, 868 (2d Cir. 1953).
8 433 U.S. 562, 578 (U.S. 1977).
9 971 F.2d 1395, 1399 (9th Cir. 1992).
10 Baltimore Orioles, Inc. v. Major League Baseball Players Assoc., 805 F.2d 663, 674-675 (7th Cir. 1986).
11 National Basketball Ass'n v. Motorola, Inc., 105 F.3d 841 (2d. Cir. 1997).
12 95 F.3d 959, 970-76 (10th Cir. 1996).
13 Hilton v. Hallmark Cards, 599 F.3d 894 (9th Cir. 2010).
14 Ayres v. City of Chicago, 125 F.3d 1010, 1014 (7th Cir. 1997); Comedy III, 21 P.3d 797, 802 (Cal. 2001).
15 Kirby v. Sega of America, Inc., 50 Cal. Rptr. 3d 607, 615 (Cal. Ct. App. 2006); Romantics v. Activision Pub., Inc., 574 F. Supp. 2d 758, 756 (E.D. Mich. 2008).
16 C.B.C. v. MLB Advanced Media, 505 F.3d 818 (8th Cir. 2007); CBS Interactive Inc. v. NFLPA, Inc., 259 F.R.D. 398 (D. Minn 2009).
17 Palmer v. Schonhorn Enters., 232 A.2d 458 (N.J. Super. Ct. Ch. Div. 1967).
18 Comedy III Productions, Inc. v. Gary Saderup, Inc., 21 P.3d 797, 810 (Cal. 2001). This is similar to the predominant use test employed in the Tony Twist case. See Doe v. TCI Cablevision, 110 S.W.3d 363 (Mo. 2003).( The use of a professional hockey players name "has become predominantly a ploy to sell comic books and related products rather than an artistic or literary expression.").
19 ETW Corp. v. Jireh Pub., Inc., 332 F.3d 915, 938 (6th Cir. 2003). But see ETW, 332 F.3d 915, 959-960 (Clay, E., dissenting) ("Rush's ability as an artist is subordinate to the goal of creating a literal depiction so as to exploit his fame. Also, it is clear that the prints gain their commercial value by exploiting the fame and celebrity status that Woods has worked hard to achieve.").
20 Restatement (Third) of Unfair Competition § 47 com. c (1995).
21 See, ETW Corp v Jireh Pub., Inc., 332 F.3d 915, 936-38 (Finding that Rush's painting conveyed a message about a historical sporting event and the significance of Woods' achievement).
22 Burck v Mars Inc., 571 F.Supp.2d 446, 453 (S.D.N.Y. 2008) (The case was analyzed under New York's right of privacy statute which is equivalent to many common law right of publicity claims.).