Finnegan's monthly review of essential decisions, key developments, evolving trends in trademark law, and more.

October 2011 Issue

Civil Cases

Hart v. Elec. Arts, Inc.,
2011 WL 4005350 (D.N.J. Sept. 9, 2011)

In the latest in a series of video-game avatar cases, the U.S. District Court for the District of New Jersey granted summary judgment to Electronic Arts, Inc. (“EA”), finding its use of a former football player’s likeness in its annual NCAA Football video games was fully protected noncommercial speech.  Recognizing that the right of publicity may encroach First Amendment rights in some circumstances, the court found little clarity in the existing case law as to how the competing interests should be balanced, ultimately concluding that under either the “transformative use” test grounded in copyright law, which it favored, or the Rogers v. Grimaldi balancing test from trademark law, EA’s First Amendment rights should prevail.


EA produces a video-game series permitting users to manipulate the actions of college football teams with virtual players in a virtual world of simulated games.  The football teams are identifiable by name, and the uniform designs, logos, and stadium fight songs are all licensed from the NCAA.  The virtual players, on the other hand, are identified only by jersey number and position.  Players can edit game data to give the player a surname and alter the players’ personal characteristics either individually, or by downloading custom rosters that replicate actual, current, and former teams.  Ryan Hart (“Plaintiff”), a former college football player for Rutgers—a team depicted in the video games—alleged that the depiction of a player avatar bearing his former number and position violated his right of publicity under New Jersey law.  EA moved for summary judgment on the ground that despite its sale commercially, the video game is an expressive work protected by the First Amendment, which trumps Plaintiff’s publicity right.

As an initial matter, the court concluded that under existing Supreme Court law, video games are expressive works fully protected under the First Amendment.  Turning to what it deemed the “more thorny question” of whether the First Amendment grants EA the right to impinge upon Plaintiff’s common-law right of publicity, the court noted the lack of clarity as to how to balance the competing interests that each set of rights protects, pointing to at least eight “balancing” tests other courts have used, and noting that neither New Jersey nor the Third Circuit has explicitly adopted any one test.  Ultimately, the court focused on the “transformative use” test developed by California courts and the balancing test set forth in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989).  Concluding that the transformative test is more refined and better balances the competing interests of right of publicity and the First Amendment, the court nevertheless refused to explicitly adopt either test because it found that the First Amendment prevailed under both tests.

Regarding the transformative test, the court noted that this test looks to whether artistic expression takes the form of a literal depiction or imitation of a celebrity for commercial gain without adding significant expression, in which case the right of privacy prevails, or whether the celebrity likeness is only one of the “raw materials” from which a work is created, making it transformative and protected.  Specifically, the court looked to two California cases involving video-game avatars, and found that the facts in the case before it fell somewhere in between.  In Kirby v. Sega, 144 Cal. App. 4th (Cal. App. 2006), the court found that a video-game character modeled after, but not meant to be, the singer Dee Lite was transformative, as contrasted with No Doubt v. Activision, 192 Cal. App. 4th 1018 (Cal. App. 2011), where the court found that avatars of the band members from No Doubt in the Band Hero game that were literal depictions, and could not be altered, were not transformative.  Because users of EA’s video game could change player features, the court concluded it was more akin to Kirby, and thus transformative.

Turning next to the Rogers test developed in the context of trademark law, the court explained that, under this test, there is no liability for trademark infringement unless the challenged mark is wholly unrelated to the underlying work and misleads the public as to the source or content of the work, or in the case of a right-of-publicity claim, there is no relevance to the underlying work and it is essentially a disguised commercial advertisement.  Noting that the Third Circuit has not specifically adopted Rogers in the context of either a Lanham Act claim or a right-of-publicity claim, the court nevertheless acknowledged some precedent for applying it to misappropriation actions like the one before it.  The court concluded that it could not reasonably be argued that Plaintiff’s image is wholly unrelated to the game, that its inclusion did not mislead the public as to the content or source, and that it was not used to advertise an unrelated product, thereby satisfying the tests enumerated in Rogers.

Because Defendant was entitled to First Amendment protection under either test, the court granted summary judgment in EA’s favor.

This opinion provides a detailed and lengthy analysis of the two leading tests for balancing the right to free expression under the First Amendment with an individual’s right of publicity.  While ultimately declining to decide which test should generally apply to misappropriation of likeness cases, the case is useful for its insightful analysis of both the transformative test and the Rogers test, and the application of both in the context of likenesses appearing in video games.