EA SportsCross-posted at WLF’s Forbes.com contributor page

A little over three years ago, in For Video Gaming Likenesses, If “You’re in the Game,” Are Your Rights Being Violated?, we highlighted an interesting lawsuit in California federal court in which former collegiate athletes were suing EA Sports. Last week, the U.S. Court of Appeals for the Ninth Circuit ruled on the appeal by EA Sports, affirming that the First Amendment does not protect it from liability for violating athletes’ “right of publicity” (In Re: NCAA Student-Athlete Name & Likeness Litigation).

The Lawsuit. The athletes alleged that EA Sports’s use of their images in NCAA football and basketball video games without permission violated California statutory and common law rights. EA Sports countered that the First Amendment protected them from liability, and moved to dismiss the class action as an unlawful strategic lawsuit against public participation (SLAPP). The trial court ruled that because the NCAA basketball and football video games failed to transform either the players themselves or the settings and circumstances through which they achieved their notoriety, EA Sports could not assert a First Amendment defense.

A wide spectrum of professional and business interests, understanding the potential impact of the Ninth Circuit’s decision, participated as amicus curiae. Professional sports unions, TV and movie studios, online gossip sites, and comic book and newspaper publishers contributed their views./p>Ninth Circuit Majority Opinion. In a 2-1 decision authored by Judge Jay Bybee, the court applied a string of colorful precedents in the right of publicity area involving The Three Stooges, blues and rock performers Edgar and Johnny Winter, singer/DJ Kieren Kirby, the band No Doubt, actor Dustin Hoffman, and Paris Hilton. Judge Bybee described how EA Sports has always taken great pains to replicate the characteristics of each player on NCAA football and basketball rosters, including the distribution of detailed questionnaires to team equipment managers. EA Sports is so successful at making the games realistic, the court found, that the likeness of each player “does not contain significant transformative elements such that EA is entitled to the [First Amendment] defense as a matter of law.”

Some of the interesting facts and factors that failed to sway the majority’s opinion included:

  • While in college, athletes are prohibited by NCAA rules from profiting from their “publicity.”
  • The large number of players on a collegiate roster, which could minimize any one player’s publicity value.
  • The relative anonymity of the vast majority of collegiate athletes when compared to the lawsuit’s class representative (a former University of Arizona quarterback).
  • The ability of gamers to change each player-avatar’s appearance, quirks, and talents.

Dissent. Judge Sidney Thomas’s dissent called for a more “holistic” application of the transformation analysis, arguing that instead of focusing on the images of specific players, the court should “examin[e] the transformative and creative elements in the video game as a whole.” Judge Thomas sounds an ominous note about the ruling’s larger implications in his conclusion:

This logic jeopardizes the creative use of historic figures in motion pictures, books, and sound recordings. Absent the actual footage, the motion picture Forrest Gump might as well be just a box of chocolates.

The majority rejected Judge Thomas’s prediction in a footnote, asserting that the multi-factor nature of the transformation analysis “leaves room for distinguishing between this case . . . and cases involving other kinds of expressive works.”

mattelWhat’s Next? It’s doubtful that EA Sports will “take a knee” on Judge Bybee’s ruling. It can seek en banc review of the ruling and, if that proves unsuccessful, U.S. Supreme Court review. While a final judgment against EA Sports won’t thrust sports gamers back into the relative technological Dark Ages of Pong or Mattel Football, it would have a significant impact on the design of games like NCAA Football and could have a chilling effect on creative endeavors beyond the world of video games.

A Second EA Sports Decision. The same Ninth Circuit panel released a ruling in a parallel suit against EA Sports brought by former Cleveland Browns running back Jim Brown (Brown v. EA Sports). Brown’s appearance in Madden NFL games was not covered by the licensing agreement that EA Sports had signed with the NFL and the NFL Players Association. He sued under the federal Lanham Act, claiming that EA Sports used his likeness to promote its product without his permission. Both the federal trial court, and a unanimous Ninth Circuit (led by Judge Bybee) rejected Brown’s claim because it failed to allege facts that overcame the First Amendment defense advanced by EA Sports.