Edited by Ben Mulcahy, 
Creating a new rule that gives videogames much more limited protection than other expressive works, the Ninth Circuit has ruled that realistically depicting college athletes in videogames showing them doing what they became famous for doing—in this case, playing football—is not sufficiently transformative to avoid a state law right of publicity claim. In In re NCAA Student-Athlete Name & Likeness Licensing Litigation (Keller), 2013 WL 3928293 (9th Cir. July 31, 2013), the court held that Keller, a former college athlete prohibited by NCAA rules from commercializing his name and likeness rights, could pursue a right of publicity claim based on the use of his likeness in a football videogame—a work admittedly protected by the First Amendment—despite the game producer’s assertion of First Amendment defenses. This decision, following on the heels of the May 21, 2013 opinion in Hart v. Electronic Arts, Inc., 717 F.3d 141 (3rd Cir. 2013), which was heavily relied on by the Keller decision, as well as its re-interpretation of precedent in the right of publicity area that had up-to-now been considered well-established, are sure to have unintended consequences extending to branded entertainment and other hybrid contexts where brand messages and creative expression combine.
Samuel Keller (“Keller”), a former college football quarterback for Arizona State and Nebraska, sued Electronic Arts (“EA”) for right of publicity violations arising from the use of his likeness in its NCAA Football videogame series. NCAA Football is a highly realistic football videogame that tries to portray each college football team as accurately as possible. NCAA Football does not automatically include players’ names on their jerseys, but players may, using third-party sources, include names on the back of the players’ jerseys. Apart from that, the game matches everything it can about the athletes portrayed—from their physiques down to any “highly identifiable playing behaviors.” It similarly attempts to recreate the stadiums in which college games are played, including the coaches, cheerleaders, and even fans. Keller, at *1.
Keller complained that the 2005 and 2008 versions of NCAA Football contained an avatar of him playing quarterback for Arizona State and Nebraska, respectively. Keller, at **1-2. EA filed an anti-SLAPP special motion to strike, which the district court denied. The Ninth Circuit affirmed in a ruling that gives videogames much less First Amendment protection than other expressive works.
The Ninth Circuit itself considered five factors in evaluating whether the so-called “transformative use” defense could overcome the plaintiff’s state law right of publicity claim:
- whether the depiction of a celebrity is a “raw material” used in a larger expressive work, or whether the depiction of the celebrity “is the very sum and substance of the work”;
- whether the work in question is “primarily the defendant’s own expression,” i.e., whether the primary motivation for a purchaser of the work is to buy the defendant’s expressive content or a mere reproduction of the celebrity;
- “whether the literal and imitative or the creative elements predominate in the work”;
- whether “the marketability and economic value of the challenged work derive primarily from the fame of the celebrity depicted”; and
- whether “an artist’s skill and talent is manifestly subordinated to the overall goal of creating a conventional portrait of a celebrity so as to commercially exploit his or her fame.”
Id. at *3 But the majority focused almost exclusively on the third factor listed above—the realistic depiction of Keller, who is just one of many players in the game—ignoring the other considerations, particularly whether the primary motivation for a purchaser of the game is the “reproduction” of Keller’s likeness or whether the value of the game derives primarily from Keller’s fame. Based exclusively on the realistic nature of the videogame, the majority held that the transformative use defense could not apply.
The dissent, by contrast, holistically focused on NCAA Football as a whole, as an entire expressive work, and criticized the majority for focusing exclusively on Keller’s relatively limited appearance in the game. The dissent would have held that the transformative use defense applies, and indeed recognized the danger of not applying it: namely, the risk that works accurately portraying historical events would fall outside the scope of the transformative use defense, jeopardizing the ability to make works of historical fiction and documentaries, among others.
The dissent diverged from the majority because it viewed the NCAA Football game as a whole, instead of focusing only on the treatment of Keller’s image therein as did the majority. As the dissent explains, the “salient question is whether the entire work is transformative, and whether the transformative elements predominate, rather than whether an individual persona or image has been altered,” and whether “[a]t its essence, EA’s NCAA Football is a work of interactive historical fiction.” Keller, at *13. Finally, the dissent pointed out the danger in the majority’s failure to apply the transformative use test:
The stakes are not small. The logical consequence of the majority view is that all realistic depictions of actual persons, no matter how incidental, are protected by a state law right of publicity regardless of the creative context. This logic jeopardizes the creative use of historic figures in motion pictures, books, and sound recordings. Absent the use of actual footage, the motion picture Forrest Gump might as well be just a box of chocolates. Without its historical characters, Midnight in Paris would be reduced to a pedestrian domestic squabble. The majority’s holding that creative use of realistic images and personas does not satisfy the transformative use test cannot be reconciled with the many cases affording such works First Amendment protection.
Keller, at *17.
This is a real risk that the majority all but writes off in a footnote: “We reject the notion that our holding has such broad consequences. As the Keller dissent points out, however, the Ninth Circuit now puts the ability to produce realistic but unauthorized expressive works based on historical events and real people at risk. Moreover, it sets up a strange set of circumstances where an expressive work could be considered protected speech for purposes of a Lanham Act federal false endorsement claim, but not for a state right of publicity claim, even though the two claims are highly similar, a fact that the Ninth Circuit itself acknowledged more than 20 years ago in Waits v. Frito-Lay, Inc., 978 F.2d 1093, 1110 (9th Cir. 1992). See also Hart, 717 F.3d at 155 (“‘a Lanham Act false endorsement claim is the federal equivalent of the right of publicity’”, taken from the Tiger Woods right of publicity case, ETW Corp. v. Jireh Publishing, Inc., 332 F.3d 915, 924 (6th Cir. 2003)).
 A longer version of this article was recently published by Bloomberg BNA.