By Oliver Herzfeld, Marc Aaron Melzer and Jared Mermelstein
With the academic year and new NCAA football season well underway, and the Supreme Court’s decision whether to hear the appeal in O’Bannon v. NCAA expected in late September or early October, it is an ideal time for us to look at the challenging intellectual property questions raised by this case. Although the NCAA’s petition also raised an antitrust issue, we will examine one of the main questions raised by NCAA's petition: “whether the First Amendment protects a speaker against a state-law right-of-publicity claim based on the realistic portrayal of a person in an expressive work (here, a student-athlete in a college sports video game).”
In or around 2008, Ed O’Bannon, a former All-American basketball player at UCLA, learned that he was depicted in a college basketball video game produced by Electronic Arts (EA). Around the same time, Samuel Keller, a former starting quarterback for the Arizona State University and University of Nebraska football teams, learned that his likeness was being used in video games produced by EA. O’Bannon commenced a lawsuit alleging that the NCAA’s amateurism rules, which prevents student-athletes from being compensated for the use of their names, images and likenesses, constitutes an illegal restraint of trade in violation of the Sherman Antitrust Act. Keller brought a suit focusing on violations of rights of publicity as defined in state laws that grant famous personalities the right to control the commercial exploitation of certain aspects of their identity, such as their name and likeness. The two cases were initially consolidated and later separated as certain claims were dismissed. Ultimately, EA settled both cases and the NCAA settled the Keller lawsuit, leaving O’Bannon’s case against the NCAA to proceed to trial.
At the heart of this issue on appeal is the question of how best to balance players’ rights of publicity that would require video game makers to procure a license to use their names and likenesses, against the principles of the First Amendment that would protect the video game producers’ right of free creative expression shielding them against any such obligation to procure a license. Since no clear answer can be found in state right of publicity statutes, the dispute’s stakeholders propose solutions by analogy to other, more developed, areas of intellectual property law.
Parties aligned with the players analogize copyright law’s interest in protecting authors’ control over their artistic creations to the right of publicity laws’ interest in protecting the players’ control over uses of their identity. Under such an analysis, the First Amendment would trump the players’ publicity rights only to the extent a third party’s use is “transformative.” The determination as to whether something is transformative is fact-based and subjective but, in general, a use is likely to be deemed transformative if another party’s work is used in a new or unexpected way. Applying that analysis, several prior court decisions, including Keller, held depictions of players in the context and setting for which they gained fame, doing exactly what they did as athletes, with limited creative additions, is not sufficiently transformative to overcome their publicity rights.
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In its appeal to the Supreme Court, the NCAA is essentially analogizing the situation to trademark law’s interest in preventing consumer confusion. Under such an analysis, the First Amendment would trump the players’ publicity rights to the extent the new work passes the so-called Rogers test. The Rogers test requires a trademark used in an expressive work to have “no artistic relevance to the underlying work” or “explicitly mislead as to the source” of the work before it is deemed to be an infringing use. Applying that standard, the players would not be able to enforce their publicity rights because sports video games have at least some artistic relevance and there are no claims of false endorsement that the players’ identities are used in such a way that consumers are likely to be misled about the players’ sponsorship or approval of the video games.
In rejecting the application of the Rogers test to the right-of-publicity claims in Keller, the Ninth Circuit highlighted the question: who is the statute, or type of intellectual property, intended to protect? As stated above, trademarks are primarily intended to protect consumers, not the owners of the marks, from confusion about the source of goods or services that they purchase or consume. State right of publicity statutes, on the other hand, typically are intended to protect the intangible interest that individuals have in their own names, images and likenesses. It is a more absolute protection, not reliant upon the Trademark Act’s “likelihood of confusion” standard. Absent certain exceptions, for example, newsworthiness, you are supposed to maintain some control over your name, image and likeness, at least with respect to commercial uses.
So that leads us back to O’Bannon. If the Supreme Court chooses to hear the parties’ appeal and decides in favor applying the Rogers test to publicity law, we can expect to see many more unlicensed uses of famous personalities’ names, likenesses and images similar to the recent video for Kanye West's "Famous" that deliberately used nude lookalikes of Taylor Swift, Rihanna, Donald Trump and other famous figures, presumably without their consent.
Regardless of how the Supreme Court acts, publishers of all sorts need to be cautious and thoughtful about their use of actual people’s names, images and likenesses for commercial purposes. It is always advisable to seek out and secure releases or licenses when including real people in a work. In the absence of a license, authors should undertake an analysis to determine how their work’s creative, expressive content would balance with the real-life subject’s rights under trademark and rights of publicity laws. Fair use and free expression are important and dynamic values in our legal system, but they do not free one up to do whatever one wants when it comes to using others’ intellectual property.
UPDATE 10/3/2016: The Supreme Court just decided not to hear the appeal. This means that, as far as these parties are concerned, the Ninth Circuit’s decision is final and preserves its ruling in Keller where it refused to apply the Rogers test, a trademark analysis, to right-of-publicity claims, and rejected the argument that the First Amendment would preclude any right-of-publicity claim arising out of a sports video game. So, for the moment, the division between trademark and right-of-publicity claims with respect to the First Amendment survives. As advised above, authors and content creators should be wary when incorporating real people into their works and consider how third-parties, including courts, might assess the transformative nature of their works.
Oliver Herzfeld is the Chief Legal Officer at Beanstalk, a leading global brand extension agency and part of the Diversified Agency Services division of Omnicom Group. Follow @oherzfeld.
Marc Aaron Melzer is Counsel at the law firm of Hoguet Newman Regal & Kenney, LLP, and practices all types of intellectual property law and information technology law, along with complex commercial litigation. Follow @MarcMelzerEsq.
Jared Mermelstein is Assistant General Counsel at Beanstalk, a leading global brand extension agency and part of the Diversified Agency Services division of Omnicom Group. Follow @Jared_Shimi.
