A spate of recent decisions highlights the intersection of different forms of intellectual property rights when the names, likenesses and records of athletes are approved without the athletes’ consent for video games and like entertainment properties that are not factual renditions or actual representations of what transpired in any actual competition.

The focus in particular cases on different aspects of intellectual property has led to a patchwork of different outcomes, creating uncertainty and inviting further litigation. Compare Hart v. Electronic Arts, 717 F.3d 141 (3d Cir. 2013), from the U.S. Court of Appeals for the Third Circuit and In re NCAA Student-Athlete Name and Likeness Litigation, No. 10-15 387 (9th Cir. July 31, 2013), from the Ninth Circuit.

The issue should not be so complicated, although the convergence of sports and gaming certainly has an inherent appeal to participants and spectators of both activities, as well as to students of the law.

By way of basics, trademark law protects any word, device, symbol or the like that functions to identify source or sponsorship or affiliation of a good or service. That can be a name, such as Madden for video games. It can be the design of a logo such as an eagle’s head on a football helmet, or the colors and other markings on a college basketball player’s uniform. The owner of the trademark is the entity that controls the nature and extent of the use of the mark. Copyright law protects works of expression. This can include code for a game, the art or other representations of objects seen in screen shots, the artistic renderings of various animals depicted on emblems. The right of publicity, a creation of state law, precludes the unauthorized use of a celebrity’s name or likeness or other identifying indicia for commercial purposes.

A depiction of a driver’s car was held violative of the right of publicity because of the identification of the driver with the car in Motschenbacher v. R.J. Reynolds Tobacco, 498 F.2d 821 (9th Cir. 1974). A robotic version of Vanna White used in advertising was held violative of her right of publicity in White v. Samsung Electronics America, 971 F.2d 1395 (9th Cir. 1992).

Each of these rights is subject to a fair-use defense that essentially exempts from liability certain uses of a celebrity’s name or likeness or identifying characteristics, whether as a trademark or in a manner analogous to trademark use for purposes of identification that are fair and not misleading, as in a biographical piece or as a title of unrelated work, as in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989); or in a copyright context that is transformative of the material used, so as to create a new work that comments on the original; or in terms of the use of the likeness for commercial purposes containing some aspect that attracts First Amendment protection, as in Zacchini v. Scripps-Howard Broadcasting, 433 U.S. 562 (1977).

There are aspects of video games that make the traditional fair-use defense more difficult but not entirely untenable. This is so even if the game, as it is played, presents no actual game but the figures represent actual, identified players.

In Hart, the court on May 21 reversed grant of summary judgment against the plaintiff on First Amendment grounds, resurrecting his claim that Electronic Arts violated his right of publicity by use of his likeness and information about him in its NCAA Football series of video games. The potential impact of the case may be seen from the cast of amici, including the Motion Picture Association of America, Bloomberg News, ESPN, the Screen Actors Guild, the Major League Baseball Players Association and the Digital Media Law Project.

The facts were simple: Ryan Hart had played quarterback for Rutgers University from 2002-05. He was bound by NCAA rules to refrain from taking advantage of commercial opportunities, although his avatar was included in the 2006 edition and subsequent editions of the NCAA Football game, having Hart’s position, number and general appearance. Electronic Arts licenses from the NCAA’s licensing agent the right to use, inter alia, team names, uniforms, logos and other game elements, but not the likeness and identity rights of college players.

The court started by noting that “games enjoy the full force of the First Amendment protections,” and its obligation in the matter as balancing the right of free expression against the right of publicity. It then reviewed various of the balancing tests developed by the courts: “Of these, three tests are of particular note: the commercial-interest-based predominant use test, the trademark-based Rogers and copyright-based transformative use test. The Rogers and transformative use tests are the most well established. … We adopt the transformative use test as being the most appropriate balancing test to be applied here.”

The court rejected the trademark-focused Rogers test and adopted instead the copyright-focused transformative use test. In so doing, the court looked to precedent out of California, citing, inter alia, Winter v. DC Comics, 69 P.3d 473, 476 (Cal. 2003).

In summarizing the transformative use test, the court there explained that “an artist depicting a celebrity must contribute something more than a ‘merely trivial’ variation, [but must create] something recognizably ‘his own’ in order to qualify for legal protection.” In applying the test, the Winter court found that “although the fictional characters Johnny and Edgar Autumn are less-than-subtle evocations of Johnny and Edgar Winter, the books do not depict plaintiffs literally. To the extent the drawings of the Autumn brothers resemble plaintiffs at all, they are distorted for purposes of lampoon, parody or caricature.” The court found that “fans who want to purchase pictures of [the Winter brothers] would find the drawing of the Autumn brothers unsatisfactory as a substitute for conventional depictions” and rejected the claims for a right of publicity violation. The applicability of this analysis to the Electronic Arts appropriation of the likenesses of the college football players might reasonably be seen as remote.

It is worth noting that none of the tests directly takes into account whether the appropriation is in the context of a work of nonfiction (that is, a true story) or a work of fiction (such as a comic book or game in which the avatars perform deeds never done by their real-life counterparts but borrow the names and likenesses and statistics to create a sense of authenticity).

The Restatement (Third) of Unfair Competition, Section 47, does address the issue in the context of fictive works:

“Use of another’s identity in a novel, play or motion picture is also not ordinarily an infringement. … However, if the name or likeness is used solely to attract attention to a work that is not related to the identified person, the user may be subject to liability for a use of the other’s identity in advertising.”

At least in the Third Circuit, the transformative use test provides a basis for analysis, which may be more appropriate in a gaming context where the trademarks are not the focal point of the project or are otherwise licensed.

The Ninth Circuit has taken a different — or at least potentially inconsistent — track in the In re NCAA litigation. The court there found that Electronic Arts had not made sufficient transformation in its likeness of Arizona State University quarterback Samuel Keller to be entitled to involve the fair-use defense and First Amendment as a matter of law. The game figure employed his playing style, facial features, height and weight. The realistic portrayal of the players was found to be the primary attraction of the game. The court refused to find the use protected as a matter of “public interest” and rejected the suggestion of employing a trademark approach as being inappropriate as the publicity right is a right of the celebrity, not a right addressing the public’s interest in not being confused as to sponsorship or affiliation or approval.

On the same day as the decision came down in In re NCAA, the Ninth Circuit decided Brown v. Electronic Arts, No. 09-56675, 2013 U.S. App. LEXIS 15647 (9th Cir. July 31, 2013), affirming the dismissal of Jim Brown’s action alleging that use of his likeness in its Madden NFL video game violated 15 U.S.C. § 1125(a), Section 43(a), of the Lanham Act.

The Ninth Circuit applied the Rogers test in this trademark contest where the claim was that the use of the likeness constituted a false implied endorsement or affiliation. The claim, which sounds in unfair competition rather than strictly on right of publicity, was found deficient because Brown’s likeness was artistically relevant and there were no facts alleged to support the claim that Electronic Arts explicitly misled consumers as to Brown’s involvement in the game. Query whether Electronic Arts knew that the consumers would assume Brown’s endorsement of the product and his cooperation and whether it would matter if a competent survey established such wrong assumption as widely held. In the content of the decision, it is not likely that such additional facts would trump the First Amendment considerations weighed by the court when there were so many players whose likenesses were used and no one or small number were featured or more heavily promoted or otherwise stood out. Query whether the right to use of a player’s likeness without license should depend on the degree of transformation when it is clear what player has been the model for the game avatar.

Query whether the right to use the likeness should depend on whether the matter is cast as an unfair competition claim or a state right-of-publicity claim, when the issue is not a local one and the right of publicity is a state-based right with wide variations in term and applicability across the country and 15 U.S.C. § 1125(a) is and has been used as a vehicle for addressing a wide range of unfair competitive acts without requiring intent as an element where there is a likelihood of confusion created as to endorsement, source or sponsorship. The ball is still in the court. •

Roberta Jacobs-Meadway is a member of Eckert Seamans Cherin & Mellott’s Philadelphia business division, co-chair of the IP practice group and a member of the executive and compensation committees. She focuses her practice on trademarks, trade dress, copyright and unfair competition issues, including litigation in the federal courts and before the Trademark Trial and Appeal Board.