Latest Update

Following years of IP social justice advocacy by community activists and a faction of IP scholars, culminating in California’s adoption of the Fair Pay to Play Act, in late April the NCAA Board of Directors finally agreed to support rule changes to allow college athletes to receive third party compensation for the use of an athlete’s name, image, or likeness (NIL). While the Board has tasked its three divisions to consider rule changes to take effect by the start of the 2021-22 academic year, the NCAA has now joined the policy chorus calling for federal legislation to regulate this sphere of commerce.

IIPSJ recently expanded its initiatives to collaborate with students at the Howard University School of Law to undertake a national IP Empowerment for All grassroots campaign, in support of student and community IP education and federal legislation to protect their NIL legal rights and interests. Watch this space next month for a spotlight update on this project.

We will continue to post updates on this issue and stand ready to weigh in on any legislation proposed on the topic.

Background on the issue

The NCAA change in position on college athletes and NIL compensation is likely due to the Pay for Play Act passed in California last year.  Click here to read a blog post by Ron Katz discussing the these issues further. 

We also discussed this issue during the social justice luncheon at our annual CLE program.  The conversation detailed the unfairness of current practices that do not allow student athletes to profit from their NIL.  We also discussed the potential impact of the California legislation on student athletes nationwide.  Click here to watch the discussion.

For additional reading on right of publicity and social justice, check out:

1. What’s Mine is Mine but What’s Yours Is Ours: IP Imperialism, the Right of Publicity, and Intellectual
   Property Social Justice in the Digital Information Age
2. the excerpt below from the article Athlete and Celebrity Publicity Rights: Balancing First Amendment (and Other Competing) Legal Interests

Athlete and Celebrity Publicity Rights: Balancing First Amendment (and Other Competing) Legal Interests    

© 2017 Lateef Mtima, Professor of Law, Howard University School of Law; Director, Institute for Intellectual Property and Social Justice.

Introduction

 Right of publicity jurisprudence presently constitutes one of the most volatile areas of intellectual property law. Although publicity rights have been recognized by courts for decades, recent advances in digital information technology and related developments have spurred litigation disputes through which parties seek to delineate the parameters of these rights.

…

Publicity Rights: Common Law History and Development

The origins of the right of publicity can be traced to the landmark law review article published by Samuel D. Warren and Louis D. Brandeis, who defied prevailing convention and called for judicial recognition of “a right to be let alone.”[1] Perturbed with the growing encroachment upon private matters by the press and the consequential public fascination with sensationalism, Warren and Brandeis’ social observations could well have been made today:

Of the desirability–indeed of the necessity–of some such protection, there can, it is believed, be no doubt. The press is overstepping in every direction the obvious bounds of propriety and of decency. Gossip is no longer the resource of the idle and of the vicious, but has become a trade, which is pursued with industry as well as effrontery. To satisfy a prurient taste the details of sexual relations are spread broadcast in the columns of the daily papers. To occupy the indolent, column upon column is filled with idle gossip, which can only be procured by intrusion upon the domestic circle. The intensity and complexity of life, attendant upon advancing civilization, have rendered necessary some retreat from the world, and man, under the refining influence of culture, has become more sensitive to publicity, so that solitude and privacy have become more essential to the individual; but modern enterprise and invention have, through invasions upon his privacy, subjected him to mental pain and distress, far greater than could be inflicted by mere bodily injury.[2]

Although the right of privacy was not immediately embraced by the courts,[3] gradually some courts began to accept the notion that individuals are entitled to some legal protection from intrusion upon their private lives and personas. The trend culminated in a pivotal decision by the Second Circuit Court of Appeals, wherein the right of publicity was recognized as a distinct species of the right of privacy. In Haelan Laboratories, Inc. v. Topps Chewing Gum, Inc., the plaintiff had entered into an exclusive contract with a professional baseball player to place his photograph on trading cards.[4] The defendant, however, induced the baseball player to allow it to also use his photograph on trading cards, and thereby breach his prior agreement. In defense, the defendant argued that the baseball player had no legally recognized property interest in his image that he could have assigned to the plaintiff, and thus the plaintiff had no legal interest that the defendant could have invaded.[5] The Court of Appeals disagreed:

We think that in addition to and independent of [a] right of privacy . . . a man has a right in the publicity value of his photograph, i.e., the right to grant the exclusive privilege of publishing his picture. . . . This right might be called a ‘right of publicity.’ For it is common knowledge that many prominent persons (especially actors and ball-players), far from having their feelings bruised through public exposure of their likenesses, would feel sorely deprived if they no longer received money for authorizing advertisements, popularizing their countenances, displayed in newspapers, magazines, busses, trains and subways. This right of publicity would usually yield them no money unless it could be made the subject of an exclusive grant which barred any other advertiser from using their pictures.[6]

Finally in 1960, Dean Prosser published a seminal article charting the various judicial conceptions of privacy rights, wherein he outlined four categories of judicially recognized privacy interests,[7] and describing the latter-most interest as the right to protect one’s image or likeness from misappropriation.[8] Thereafter, both the Restatement (Second) of Torts and the Restatement (Third) of Unfair Competition included the right of publicity, enumerating the elements of the cause of action.[9]

Elements and Scope of the Right of Publicity

The right of publicity provides individuals control over the commercial exploitation of their images or personas. “The right of publicity is an intellectual property right of recent origin which has been defined as the inherent right of every human being to control the commercial use of his or her identity. . . . [It] is a creature of state law and its violation gives rise to a cause of action for the commercial tort of unfair competition.”[10]

Identifying the Judicial Boundaries of Publicity Rights

Although the right of publicity is now widely recognized,[11] the scope and breadth of the right is still somewhat unsettled. While this is due in part to varying regional privacy customs and values, two issues in particular have presented pervasive challenges in fixing the boundaries of the right of publicity.

The most prominent challenge to delineating the parameters of the right of publicity has been that of perceived conflicts between publicity rights and the First Amendment. For obvious reasons, society has a revered interest in promoting the accurate discourse of historic and public events, including the roles of public and private individuals in such events. If individuals were to possess an absolute right to determine when their images or personas could be used or referenced by others in commercial contexts, such as in commercially distributed newspapers or history texts, they could effectively censor public discussion and even historical accounts of actual events.[12] Consequently, the right of publicity is often said to end where the First Amendment begins. “[T]he right of publicity cannot be used to prevent someone’s name or picture in news reporting. It cannot be used to prevent the use of identity in an unauthorized biography. It cannot prevent use of identity in an entertainment parody or satire, such as that of Rich Little or Saturday Night Live.”[13]

At the same time, however, courts have recognized that the right of publicity also serves important social utility functions. The United States Supreme Court has observed that the right of publicity provides important incentives to individuals to invest effort and resources in the development and stylization of personal skills, attributes, and innovations, and to pursue activities and accomplishments of public and popular interest, with the possibility of celebrity, public renown, and commercial reward. See Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562, 573 (1977). “[T]he State’s interest in permitting a right of publicity is in protecting a proprietary interest of the individual in his act to encourage such entertainment….[t]he State’s interest is closely analogous to patent or copyright law, focusing on the right of the individual to reap the reward of his endeavors….”

Accordingly the social value of the right of publicity is held in the same esteem as that afforded to other forms of intellectual property. “[A state’s] decision to protect [a performer’s] right of publicity…rests on more than a desire to compensate the performer for the time and effort invested in his act; the protection provides an economic incentive for him to make the investment required to produce a performance of interest to the public. This same consideration underlies the patent and copyright laws long enforced by this Court.”[14] Similar to authors and inventors, holders of publicity rights can make important contributions to the greater societal good. “[C]elebrities ‘create’ their valuable personas in much the same way that a novelist creates a work of fiction or an inventor a new device. Thus, giving the famous individual a property right in this form of intellectual property has been explained as an incentive to promote future creativity, as a reward for a valuable service to the public, or as a means of preventing unjust enrichment.”[15]

Consequently the greatest challenge in delineating the parameters of the right of publicity has been in balancing the right against First Amendment interests.[16] In other fields of intellectual property protection, the courts have developed various judicial tests for balancing rights holder interests as against the right to free expression. In copyright the balance is achieved through the idea/expression dichotomy and the Fair Use doctrine. In trademark, nominative descriptive and non-source designation uses of marks are permitted under the law. Although the tension between the First Amendment and rights holder property interests can be particularly acute where the right of publicity is at issue, the courts have yet to devise uniform, socially efficacious tests for balancing these sometimes competing interests.

In addition to the problem of balancing publicity rights against competing First Amendment interests, the question of the duration of publicity rights, specifically whether such rights enjoy postmortem viability, has further confounded judicial efforts to determine the scope of the right. As discussed above, in Haelan Laboratories, Inc., defendant therein argued that given its derivation from the right of privacy, the right of publicity should be considered a personal and non-transferable tort interest which only provides civil liability protection against intrusion upon this right to be “left alone”. While the court instead concluded that the right is more akin to a property interest (and thus is transferable) the question of duration/postmortem viability was not at issue.  Given that publicity rights have only been widely recognized for about half a century, courts have only recently been asked to address whether the right survives the death of its owner and can thus be enforced by the heirs of her estate.

As detailed below, the courts have endeavored to resolve these questions regarding the boundaries of the right of publicity. The courts have promulgated various tests for balancing publicity rights against competing First Amendment interests. With regard to the question of the postmortem viability of publicity rights, recently both the courts and various state legislatures have been tasked with resolving this issue.

…

Student Athlete Unauthorized Digital Avatar and Other Publicity Rights Litigation

In recent years, litigation concerning the publicity rights of student athletes has produced some of the most important right of publicity decisions, including disputes involving unauthorized digital avatars. Student athlete right of publicity litigation can be particularly complex and implicate important questions of intellectual property social justice, because of the unique status of “amateur sports” and the National College Athletes Association (“NCAA”).

For example, in Yahchaaroah Lightbourne v. Printroom Inc.,[31] the plaintiff brought suit for misappropriation of publicity rights after playing football for the University of Texas at El Paso, whereat he was required to execute a Student Athlete Image Authorization form, which authorized “UTEP or its agents to make[ ] copies of, use, sell and distribute…any photographic or other images taken in connection with my participation on a UTEP intercollegiate athletic team.” Thereafter, UTEP granted a third-party business a license to implement a University Sports Website, together with the right to use student athletes’ names, images, and likenesses, and explicitly approved the launch of a University Photo Store.

In granting defendants’ motion for summary judgment, the court found that “[plaintiff’s] right of publicity claims fail because he expressly consented to the challenged uses of his image.”[32] The court rejected plaintiff’s contention that because NCAA rules preclude student athletes from exploiting their publicity rights and moreover, require them to prevent third parties from exploiting their publicity rights, plaintiff had standing to object to the third-party license and related commercial use of his image. The court’s rationale in rejecting plaintiff’s arguments illustrates the legal conundrum that student athletes face:

[Plaintiff] argues there are genuine issues of material fact surrounding the issue of express consent and the import of the Student–Athlete Image Authorization forms…. [plaintiff] argues that [the form] ‘does not permit student-athletes to grant consent to use their [names, images, or likenesses] for commercial purposes’ and ‘…requires Plaintiff…*946 to attempt to stop [defendant’s] conduct or risk losing eligibility and, by extension, the athlete’s scholarship.”…. [However plaintiff] does not even attempt to explain how [the form] even if it did apply to the situation at bar—would somehow vitiate his express legal consent. Rather, if [the form] prohibited [plaintiff] from assenting to the sale of his likeness, his signing of the Student–Athlete Image Authorization forms would appear only to place him in breach of his alleged obligation to the NCAA.”[33]

In short, not only are student athletes barred from exploiting their publicity rights for their own benefit, but they could potentially be found to have forfeited their scholarships where their Universities authorize third parties to do so, even though the students receive none of the revenues from such arrangements.

Student athletes have fared somewhat better in cases which involve the unauthorized commercial exploitation of their digital avatars. In Keller v. Electronic Arts, Inc.,[34] a former quarterback for the Arizona State University and University of Nebraska football teams brought suit against Electronic Arts, which produced the “NCAA Football” video game series. These games offered players the opportunity to simulate matches between various real-world college and university teams. Plaintiff Keller argued that Electronic Arts designed the virtual players in “NCAA Football” to replicate their real-life counter parts, such that “these virtual players are nearly identical to their real-life counterparts: they share the same jersey numbers, have similar physical characteristics and come from the same home state.”[35] Consequently plaintiff alleged that the video game series commercially exploited his persona without his authorization and thus constituted an infringement upon his publicity rights. Relying on Comedy III, however, EA argued that it had a First Amendment right to utilize plaintiff’s persona in an expressive work, contending that its unauthorized video games were “‘protected by the First Amendment inasmuch as [the game] contains significant transformative elements [and/] or that the value of the work does not derive primarily from the [plaintiff’s] fame.”[36]

Virtually coterminous with Keller, the New Jersey District Court was confronted with essentially identical facts and allegations regarding “NCAA Football” in Hart v. Electronic Arts, Inc.[37] Once again, Electronic Arts argued that it had a First Amendment right to produce its video games.

The two district courts reached diametrically opposing dispositions of the disputes. Similar to the court in No Doubt, the Keller court found insufficient transformation of plaintiffs’ personas to permit the unauthorized production of “NCAA Football” on First Amendment grounds – the court concluded that the plaintiffs were depicted “doing what they do”. In contrast, the Hart court extended its Comedy III transformation assessment to encompass Electronic Arts’ expressive contributions to the video game as a whole, including a game feature that allowed users to alter an athlete’s avatar by using “add-ons” designed by EA.[38] Consequently, considering EA’s total “expressive contributions”, the Hart court concluded that EA’s use was a transformative use “overall” and thus entitled to First Amendment protection.[39]

On appeal, the potential split between the Third and Ninth Circuits was resolved. In each case, the appellate court ruled in favor of the plaintiff athletes. Moreover, the courts’ opinions were consistent with the social utility theory of publicity rights articulated in Zacchini.

The Court of Appeals for the Third Circuit rendered its decision first, reversing the New Jersey District Court.[40] Among other things, the Hart appellate court expressly observed that, similar to other intellectual property rights, the right of publicity “is designed to encourage further development of this property interest.”[41]Affirming that the Comedy III transformation test is the appropriate test for balancing First Amendment and publicity interests within an expressive work, the court held that EA’s “Hart avatar” was not a transformative use of Hart’s persona, in that “[t]he digital Ryan Hart does what the actual Ryan Hart did while at Rutgers: he plays college football, in digital recreations of college football stadiums, filled with all the trappings of a college football game.”[42]

Moreover, the court rejected the finding of the district court that the inclusion of the “avatar alteration” function in the game provided a sufficient “transformation option” to satisfy the transformation test. The court noted that if this argument were accepted, “video companies could commit the most blatant acts of misappropriation only to absolve themselves by including a feature that allows users to modify the digital likeness.”[43] The Hart appellate court also rejected the argument that the game’s other “expressive contributions” rendered the work transformative as a whole, holding that “the Transformative Use Test invariably looks[s] to how the celebrity’s identity is used in or altered by other aspects of a work.”[44] Concluding that the use of Hart’s replicated persona was “central to the core of the game experience”,[45] the court held that EA’s use did not sufficiently transform Hart’s identity so as to defeat his right of publicity claim.

Shortly thereafter, the Court of Appeals for the Ninth Circuit affirmed the decision of the California District Court in Keller, and also held that EA’s avatar use “literally recreates Keller in the very setting in which he has achieved renown.”[46] Here too, the court found that the plaintiff’s digital avatar has been placed in the very setting in which the plaintiff achieved fame, and which also provides the basis for the public’s interest in the EA game.[47] In addition, the Ninth Circuit also found that neither the “avatar alteration” feature nor EA’s expressive contributions to other aspects of the game outweigh this key appeal of “NCAA Football”.[48]

Student Athlete Publicity Rights and Antitrust Law: O’Bannon v. NCAA

The publicity rights of student athletes were a pivotal aspect of the highly publicized class action litigation brought to obtain compensation for student athletes. In O’Bannon v. National Collegiate Athletic Association,[49] plaintiffs brought suit in California district court on behalf of dozens of former college athletes, alleging that certain rules and practices of the NCAA violate the federal antitrust laws. Among other things, plaintiffs alleged that the NCCA member institutions constitute a cartel which restrains competition in two discreet markets: (i) the market for recruitment of “Division I” amateur athletes, in which student athletes “sell” their services and their publicity rights to colleges and universities (the “College Education Market”), and (ii) the market for amateur game recording/television broadcasts and related rights, in which various entities purchase the rights to record and make commercial use of collegiate game footage (the “Group Licensing Market”). Plaintiffs alleged that the NCAA cartel fixes the “prices” for plaintiffs’ services and intellectual property rights, and also precludes and otherwise injures competition in the respective markets.

Based on plaintiff’s allegations and applicable antitrust principles, it was necessary for the court to determine whether the alleged discreet markets did in fact exist, and if so, whether there was impermissible restraint upon competition in these markets. Reviewing the evidence, the court concluded that plaintiffs had established the existence of each alleged market, and consequently addressed the question of injury to competition in the respective markets.

With respect to the College Education Market, the court found that the NCAA member institutions are essentially the only “buyers” to whom plaintiffs are allowed to “sell” their athletic services and accompanying publicity rights, and moreover, through the NCAA rules and practices, the member institutions cooperate to fix the prices that student athletes are paid for same (i.e., the cost of attendance at the college or university). Accordingly the plaintiffs prevailed on their antitrust claims arising in connection with the College Education Market.

With respect to the Group Licensing Market, however, the court held that competition in that market had not been restrained, in that various entities did in fact compete to obtain the rights at issue in that market. In other words, once the student athletes granted these rights to the colleges and universities (pursuant to the transactions undertaken in the College Education Market) the colleges and universities subsequently permitted – indeed, actively encouraged – competition in the Group Licensing Market, among broadcasters and others, for the opportunity to exploit these rights, such as through taping and televising game footage. The court noted that the fact that the student athletes received no compensation in connection with the underlying transfers of their publicity rights might provide a basis for a cause in conversion of their rights, but that was irrelevant as to whether plaintiffs had established antitrust injury in the Group Licensing Market.[50]

Finally, the court structured a remedy for the antitrust injury which it found to occur in the College Education Market. In light of arguments made by the NCAA regarding the need to preserve the amateur nature of collegiate sports, the court ruled that said injury would be appropriately addressed by permitting the NCAA member institutions to (i) cover the full cost of college attendance for their student athletes and (ii) make payments of up to $5,000 per student per year in to a trust fund for each athlete.

A key underpinning of the court’s holdings in O’Bannon was its acknowledgment that in accordance with the decisions in Hart and Keller, the subject uses of the student athletes’ publicity rights were not protected by the First Amendment under Comedy Three. Absent these prior decisions, the California district court would likely  have reached a different result, in that the “product” in the College Education Market would be limited to the athletes’ “services” (in playing collegiate sports) for which they are (arguably) compensated with college scholarships and related benefits. As indicated above, other than the finding that the NCAA could permit its members to cover the full costs of student athlete college attendance, the only recovery awarded the plaintiffs was the holding that the NCAA could make the trust payments to student athletes, which payments were to be derived from the revenues generated from the exploitation of athletes’ publicity rights.

The Ninth Circuit Overturns the Students’ Right to Compensation

On appeal, the Court of Appeals for the Ninth Circuit upheld the substantive findings of the district court with respect to plaintiff’s antitrust claims. “We conclude that the district court’s decision was largely correct. Although we agree with the Supreme Court and our sister circuits that many of the NCAA’s amateurism rules are likely to be procompetitive, we hold that those rules are not exempt from antitrust scrutiny…”[51]

Nonetheless, the Court of Appeals reversed the district court’s remedy mechanism, as being inconsistent with the NCAA’s amateurism policies:

In our judgment…the district court clearly erred in finding it a viable alternative to [the NCAA prohibition on compensation to] allow students to receive…cash payments untethered to their education expenses. [T]he district court identified two procompetitive purposes served by the NCAA’s current rules: “preserving the popularity of the NCAA’s product by promoting its current understanding of amateurism” and “integrating academics and athletics.” … The question is whether the alternative of allowing students to be paid…compensation [for their publicity rights] unrelated to their education expenses, is “virtually as effective” in preserving amateurism as not allowing compensation. …We cannot agree that a rule permitting schools to pay students pure cash compensation and a rule forbidding them from paying compensation [for publicity rights] are both equally effective in promoting amateurism and preserving consumer demand. Both we and the district court agree that the NCAA’s amateurism rule has procompetitive benefits. But in finding that paying students cash compensation would promote amateurism as effectively as not paying them, the district court ignored that not paying student-athletes is precisely what makes them amateurs.[52]

Thus, notwithstanding its finding that the NCAA amateurism rules are subject to antitrust scrutiny, the court effectively subordinated the plaintiffs’ right to an antitrust remedy (for the loss of their ability to “sell” their publicity rights in a competitive market) to the NCAA’S amateurism traditions. Put differently, while students are arguably “compensated” for their services in playing college sports (when they are allowed to attend college at no charge) the Ninth Circuit concluded that any further compensation (e.g., for the use of their publicity rights) would undermine the NCAA’s objective in preserving the amateur nature of collegiate sports. See also Marshall v. ESPN, Inc., 111 F. Supp. 3d 815 (M.D. Tenn. 2015) (dismissing student athlete publicity claims by distinguishing Zacchini as inapplicable to performance events organized by someone other than the publicity plaintiff).

[1] See Samuel D. Warren & Louis D. Brandeis, The Right to Privacy, 4 Harv. L. Rev. 193, 195 (1890).

[2] Id. at 196

[3] See J. Thomas McCarthy, 1 Rights of Publicity and Privacy §6.3(2d ed. 2006); see, e.g., Roberson v. Rochester Folding Box Co., 64 N.E. 442, 451 (N.Y. 1902).

[4]  202 F.2d 866, 867 (2d Cir. 1953)

[5] Id. at 867.

[6] Id. at 868. See also Melville B. Nimmer, The Right of Publicity, 19 Law & Contemp. Probs. 203, 203-04 (1954), available at http:// scholarship.law.duke.edu/cgi/viewcontent.cgi?article=2596&context=lcp (“Well known personalities…do not seek the ‘solitude and privacy’ which Brandeis and Warren sought to protect…. However, although the well-known personality does not wish to hide his light under a bushel of privacy, neither does he wish to have his name, photograph, and likeness reproduced and publicized without his consent or without remuneration to him.”)

[7]William L. Prosser, Privacy, 48 Cal. L. Rev. 383, 389 (1960), available at http://www.californialawreview.org/assets/pdfs/misc/prosser_ privacy.pdf. Dean Prosser enumerated the following four categories of invasion of privacy: “[i]ntrusion upon the plaintiff’s seclusion or solitude, or into his private affairs;” “[p]ublic disclosure of embarrassing private facts about the plaintiff;” “[p]ublicity which places the plaintiff in a false light in the public eye;” and “[a]ppropriation, for the defendant’s advantage, of the plaintiff’s name or likeness.” Id.

[8] Id. This is the interest the Haelan court denominated as the right of publicity, see 202 F.2d at 868.

[9] See e.g. Restatement (Third) of Unfair Competition § 46 (1995); Restatement (Second) of Torts § 652C (1977).

[10] ETW Corp. v. Jireh Pub., Inc., 332 F. 3d 915, 928 (6^th Cir. 2003); see also Memphis Development Foundation v. Factors Etc., Inc., 616 F.2d 956 (6th Cir. 1980) (“[T]he famous have an exclusive legal right during life to control and profit from the commercial use of their name and personality.”)

[11] Virtually every state recognizes the right of publicity; in some states it is a right of common law, in others it is a statutory right, and in some states it is both.  See e.g. Jonathan Faber, http://rightofpublicity.com/statutes;  J. Thomas The Rights of Publicity and Privacy 2d at Sec. 6:3; see also Gregory L. Curtner, Atleen Kaur, and Suzanne L. Wahl, Show and Tell: Misappropriation of the Right of Publicity, Counseling Clients in the Entertainment Industry 2011, p. 263 (PLI 29016).

[12] See e.g. Time, Inc. v. Hill, 385 U.S. 374 (1967); Mason v. Jews for Jesus, No. 06 Civ. 6433(RMB), 2006 WL 3230279 (S.D.N.Y. Nov. 8, 2006); Nussenzweig v. diCorcia, 832 N.Y.S.2d 510 (N.Y. App. Div. 1st Dept. 2007) certified question answered, order aff’d, 878 N.E.2d 589 (N.Y. 2007); Arrington v. New York Times Co., 434 N.E.2d 1319 (N.Y. 1982).

[13] J. Thomas McCarthy, The Spring 1995 Horace S. Manges Lecture–The Human Persona as Commercial Property: The Right of Publicity, 19 Colum.-VLA J.L. & Arts 129, 130-31 (1995); see also Cardtoons, L.C. v. Major League Baseball Players Ass’n, 95 F.3d 959, 969 (10th Cir. 1996) (“[P]arody trading cards receive full protection under the First Amendment. The cards provide social commentary on public figures, major league baseball players, who are involved in a significant commercial enterprise, major league baseball. While not core political speech… this type of commentary on an important social institution constitutes protected expression.”); Vinci v. Am. Can Co., 591 N.E.2d 793, 794 (Ohio Ct. App. 1990) (per curiam) (permitting unauthorized use of athletes’ personas where “the mention of the athletes’ names within the context of accurate, historical information was incidental to the promotion of the… partnership… [and] reference to the athletes and their accomplishments was purely informational.”)

[14] Zacchini, 433 U.S. at 576

[15] Melissa B. Jacoby & Diane Leenheer Zimmerman, Foreclosing on Fame: Exploring the Uncharted Boundaries of the Right of Publicity, 77 N.Y.U.L. Rev. 1322, 1330 (2002). See also Roberta Rosenthal Kwall, The Right of Publicity vs. The First Amendment: A Property and Liability Rule Analysis, 70 Ind. L. J. 47, 74 (1994) (“As a society, we can suffer two general types of harms from the toleration of unauthorized uses of an individual’s persona.  One type of harm focuses on the increased potential for consumer deception, and the other focuses on the increased potential for diminished incentives.”)

[16] Of course, parties often also litigate whether an unauthorized use even involves a publicity persona. See e.g. White v. Samsung Elecs. Am., Inc., 971 F.2d 1395, 1397-99, 1400-01 (9th Cir. 1992) (use of Vanna White’s likeness as a robot in an advertisement for VCRs held to infringe White’s publicity rights).

[31] 122 F. Supp. 3d 942 (C.D. Ca. 2015)

[32] Id. at 945

[33] Id. at 946

[34] 94 U.S,P.Q. 2d 1130 (N.D. Cal. 2010)

[35] 94 U.S,P.Q. 2d  at 1132

[36] 94 U.S,P.Q. 2d  at 1134

[37] 808 F. Supp. 2d 757 (D. N.J. 2011)

[38] 808 F. Supp. 2d at 785. Interestingly, the court acknowledged that the fact that the athlete is presented unaltered and in his usual /celebrity setting (i.e., on the football field) is “problematic” for a finding of “transformation”, and moreover, “[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’”.

[39] “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…. 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.’” 808 F. Supp. 2d at 784. As a side issue, the New Jersey district court further determined that in choosing between the Comedy III and Rogers tests, the Rogers test is more appropriate for assessing the marketing use of a persona in the title or advertising of a work, as opposed to the expressive use of a persona in the work itself. 808 F. Supp. 2d at 788. The Hart court nonetheless went on to also assess “NCAA Football” under Rogers, and determined that it would reach the same conclusion under either test.

[40] Hart v. Electronic Arts, Inc., 717 F 3d 141 (3d Cir. 2013)

[41] Id. at 151

[42] Id. at 166

[43] Id. at 167-68

[44] Id. at 169

[45] Id. at 168

[46] Keller v. Elec. Arts (In re NCAA Student-Athlete Name & Likeness Licensing Litig.), 724 F.3d 1268, 1276 (9th Cir. 2013)

[47] Id. at 1276-77

[48] Id. at 1277

[49] No. C 09-3329 CW (N.D.C. 2014)

[50] That lack of compensation was of course relevant to the court’s finding of price fixing in the College Education Market.

[51] Case No. 14-16601, D.C. No. 4:09-cv-03329-CW, 9/30/2015, at p. 7, 26-31

[52] Id. at 56-57