Hart v. Electronic Arts Inc., No. 11-3750; Third Circuit; opinion by Greenaway, U.S.C.J.; dissent by Ambro, U.S.C.J.; filed May 21, 2013. Before Judges Ambro, Greenaway and Tashima, sitting by designation. On appeal from the District of New Jersey, 09-cv-05990. [Sat below: Judge Wolfson.] DDS No. 53-8-xxxx [73 pp.]

In 2009, appellant Ryan Hart brought suit against appellee Electronic Arts Inc. (EA) for allegedly violating his right of publicity as recognized under New Jersey law.

Hart was a quarterback with the Rutgers University NCAA Men’s Division I football team for the 2002 through 2005 seasons. As a condition of participating in college-level sports, Hart, player number 13, was required to adhere to the NCAA’s amateurism rules, which preclude the athlete from using his or her athletics skill (directly or indirectly) for pay in that sport or accepting any remuneration or permitting the use of his or her name or picture to advertise, recommend or promote directly the sale or use of a commercial product or service. In comporting with these bylaws, Hart purportedly refrained from seizing on various commercial opportunities.

On the field, at 6’2", weighing 197 pounds, and typically wearing a visor and armband on his left wrist, Hart amassed an impressive list of achievements as the Scarlet Knights’ starting quarterback.

Hart’s participation in college football also ensured his inclusion in EA’s successful NCAA Football videogame franchise. In NCAA Football 2006, Rutgers’ quarterback, player number 13, is 6’2" tall, weighs 197 pounds and resembles Hart. Moreover, although users can change the digital avatar’s appearance and most of the vital statistics (height, weight, throwing distance, etc.), certain details remain immutable: the player’s home state, home town, team, and class year.

Hart filed suit against EA alleging that (1) EA replicated his likeness in NCAA Football 2004, 2005 and 2006 (complete with biographical and career statistics) and that (2) EA used Hart’s image in the promotion for NCAA Football wherein appellant was throwing a pass with actual footage from Rutgers University’s bowl game against Arizona State University.

The district court granted summary judgment in favor of EA on the ground that its use of Hart’s likeness was protected by the First Amendment.

Held: The NCAA Football 2004, 2005 and 2006 video games do not sufficiently transform Hart’s identity to escape the right-of-publicity claim. While the apparent use of Hart’s likeness in NCAA Football 2009 (the photograph) is protected by the First Amendment, Hart’s overall claim for violation of his right of publicity should have survived EA’s motion for summary judgment.

Appellee concedes, for purposes of the motion and appeal, that it violated appellant’s right of publicity in misappropriating his identity for commercial exploitation. However, appellee contends that the First Amendment shields it from liability because NCAA Football is a protected work. Thus, the interests underlying the First Amendment right to free expression must be balanced against the interests in protecting the right of publicity.

The circuit panel finds that the transformative use test is the proper analytical framework. Thus, the issue is whether appellant’s identity is sufficiently transformed in NCAA Football. The term "identity" encompasses not only appellant’s likeness, but also his biographical information.

Here, not only does the digital avatar match appellant in terms of hair color, hair style and skin tone, but the avatar’s accessories mimic those worn by appellant. The information also accurately tracks appellant’s vital and biographical details. Considering the context within which the digital avatar exists — looking at how appellant’s identity is "incorporated into and transformed by" NCAA Football — there is little support for appellee’s arguments. The 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. The digital representation and context evince no meaningful transformative element in NCAA Football.

A third avatar-specific element is also present: the users’ ability to alter the avatar’s appearance. The issue becomes to what extent the ability to alter a digital avatar represents a transformative use of appellant’s identity. Interactivity cannot be an end onto itself; the circuit panel thus considers whether the type and extent of interactivity permitted is sufficient to transform the appellant’s likeness into the appellee’s own expression. The panel finds that it does not.

In NCAA Football, appellee seeks to create a realistic depiction of college football for the users. Part of this realism involves generating realistic representations of the college teams, including realistic representations of the players. Given that appellant’s unaltered likeness is central to the core of the game experience, the panel declines to credit users’ ability to alter the digital avatars in the application of the transformative use test here.

The panel is likewise unconvinced that NCAA Football satisfies the transformative use test because appellee created various in-game assets to support the altered avatars (e.g., additional hair styles, faces, accessories, et al.). Avatars with superficial modifications to their appearance can count as a market "substitute" for the original. Further, if a user makes major changes to the avatar, it no longer represents appellant, and no longer qualifies as a "use" of the appellant’s identity. The panel also rejects appellee’s suggestion that other creative elements of NCAA Football, which do not affect appellant’s digital avatar, are so numerous that the video games should be considered transformative.

However, the circuit panel agrees with the district court that the photograph of appellant that appears in NCAA Football 2009 is "but a fleeting component part of the montage" and therefore does not render the entire work nontransformative. This particular use of appellant’s likeness is shielded by the First Amendment.

The circuit panel reverses the district court’s grant of summary judgment and remands.

Judge Ambro, dissenting, believes that the creative components of NCAA Football contain sufficient expressive transformation to merit First Amendment protection.

For appellant — Michael Rubin (Altshuler, Berzon, Nussbaum & Rubin), Timothy J. McIlwain (McIlwain & Mullen) and Keith A. McKenna. For appellee — Elizabeth A. McNamara (Davis, Wright & Tremaine) and Bruce S. Rosen (McCusker, Anselmi, Rosen & Carvelli). For amici appellants: Major League Baseball Players Association et al. — P. Casey Pitts and Michael Rubin (Altshuler, Berzon, Nussbaum & Rubin); Screen Actors Guild et al. — Duncan W. Crabtree-Ireland. For amici appellees: Advance Publications Inc. et al. — Nathan E. Siegel (Levine, Sullivan, Koch & Schulz); Motion Picture Association of America Inc. — Douglas E. Mirell and Eric B. Schwartz (Loeb & Loeb); Counsel for the Organization for Transformative Works et al. — Julie A. Ahrens, Stanford Law School.