In its thorough recent opinion in Ryan Hart v. Electronic Arts, Inc., the Third Circuit Court of Appeals weighed in for the first time on when a celebrity’s right of publicity outweighs the First Amendment right to free speech and expression. In so ruling, the Third Circuit joined a fractious debate among the federal courts about the best approach to balancing these two competing interests.
The legal issue at the center of Hart, as the Third Circuit formulated it, was “whether the interest in safeguarding the right of publicity overpowers the interest in safeguarding free expression.” The case involved Ryan Hart, an NCAA quarterback for Rutgers University from 2002 to 2005, and Electronic Arts, a leading video game developer. One of Electronic Arts’ successful video games was the NCAA Football series, which allows users to play simulated football games with virtual college football teams and virtual players.
In its NCAA Football 2006 video game, Electronic Arts included Hart as one of its players. The digital avatar that Electronic Arts created for its Rutgers quarterback was the same height and weight as Hart, looked like Hart, wore Hart’s Rutgers’ jersey and number 13, hailed from the same hometown, and had the same college graduation year. The video game allowed users to change some of these characteristics, but made others immutable.
Hart sued Electronic Arts under New Jersey law for violating his right of publicity by misappropriating his likeness and identity, including biographical information and career statistics, for commercial purposes. The United States District Court for the District of New Jersey granted Electronic Arts summary judgment on the grounds that the video games were protected under the First Amendment. The Third Circuit, having not previously established a test for considering this issue, took an exhaustive look at how other federal courts have considered the right of publicity in the context of First Amendment protections and, adopting the relatively recent Transformative Use Test, reversed the District Court’s decision.
The right of publicity is defined by state law and there is no federal cause of action. Under New Jersey law, the right of publicity states that one “who appropriates to his own use or benefit the name or likeness of another is subject to liability to the other for invasion of his privacy.” The purpose of recognizing a right of publicity is to protect an individual’s property interest in his own identity.
The law regarding when the right of publicity trumps the First Amendment depends on which federal court’s test is being used. While there is disagreement as to which specific test should control in this context, most courts agree that a balancing inquiry of some sort is appropriate.
The Third Circuit in Hart examined the only Supreme Court decision to consider the First Amendment and right of publicity. In Zacchini v. Scripps-Howard Broadcasting Co., a local news program recorded and broadcast plaintiff’s performance of his human cannonball act without his consent. The Court did not create a balancing test, but suggested that balancing the two interests should be done when they were in competition with each other. Since then, federal courts have differed on the proper balancing test.
The Third Circuit in Hart then considered three balancing tests that had since been formulated by lower federal courts after Zacchini: the Rogers test, the Predominant Use test, and the Transformative Use test.
Sometimes called the relevance test or the related use test, the Rogers test was first enunciated by the Second Circuit. The test asks whether the allegedly infringing material is related to the underlying work and, next, whether the material explicitly misleads consumers as to the source or content of the work. The Second Circuit held that the use of a celebrity’s name in a movie title is not barred unless the title was “wholly unrelated” to the movie or was “simply a disguised commercial advertisement for the sale of goods or services.” Most, though not all, courts have limited the Rogers test to the use of a celebrity’s identity in a work’s title rather than any other expressive content.
The Third Circuit rejected this test in Hart, finding it “a blunt instrument, unfit for widespread application in cases that require a carefully calibrated balancing of two fundamental protections: the right of free expression and the right to control, manage, and profit from one’s own identity.”
Predominant Use Test
In Doe v. TCI Cablevision, the Missouri Supreme Court created the Predominant Use test to determine when a defendant could use the First Amendment as a defense against a right of publicity claim. The case involved a hockey player’s right of publicity claim against a comic book publishing company that created a character in one of its books with an almost identical name to the hockey player. In the Predominant Use test, the court determines the predominate use of the person’s likeness or identity: whether it is primarily to “exploit the commercial value of an individual’s identity” or “to make an expressive comment on or about a celebrity.”
It appears that no other federal court has cited to Doe for the purpose of adopting the Predominant Use test to balance First Amendment rights and the right of publicity. The Third Circuit declined to adopt this test in Hart as “subjective at best, arbitrary at worst, and in either case calls upon judges to act as both impartial jurists and discerning art critics.”
Transformative Use Test
The Transformative Use test was first introduced by the California Supreme Court in Comedy III Productions, Inc. v. Gary Saderup, Inc. The case involved an artist’s use of the likeness of the Three Stooges in charcoal drawings. The test balances the First Amendment rights of a defendant against a celebrity’s right of publicity by deciding whether a new work “merely ‘supersede[s] the objects of the original creations, or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message.” The key issue is “whether a product containing a celebrity’s likeness is so transformed that it has become primarily the defendant’s own expression rather than the celebrity’s likeness.” Such transformative elements may include parody, factual reporting, or fictionalized portrayal.
In applying the Transformative Use test, the court found that the Three Stooges’ right of publicity was violated because the court could “discern no significant transformative or creative contribution” and “the marketability and economic value of Saderup’s works derives primarily from the fame of the celebrities depicted.”
The Third Circuit ultimately adopted the Transformative Use test. It found that the test:
appears to strike the best balance because it provides courts with a flexible – yet uniformly applicable – analytical framework. Specifically, the Transformative Use Test seems to excel precisely where the other two tests falter. Unlike the Rogers test, the Transformative Use Test maintains a singular focus on whether the work sufficiently transforms the celebrity’s identity or likeness, thereby allowing courts to account for the fact that misappropriation can occur in any market segment, including those related to the celebrity. On the other hand, unlike the Predominant Use Test, applying the Transformative Use Test requires a more circumscribed inquiry, focusing on the specific aspects of a work that speak to whether it was merely created to exploit a celebrity’s likeness. This test therefore recognizes that if First Amendment protections are to mean anything in right of publicity claims, courts must begin by considering the extent to which a work is the creator’s own expression.
To satisfy the Transformative Use test, Electronic Arts had to transform Hart’s identity, which, according to the Third Circuit, included both his likeness and biographical information. However, the character in the NCAA Football 2006 video game matched Hart’s actual physical characteristics, including his height, weight, and hair and skin color. The character’s biographical information also matched Hart’s biographical details. Thus, there was no meaningful transformative context.
Significantly, the court also rejected the argument that the video game sufficiently transformed Hart’s identity based on the video game user’s ability to alter the digital avatar’s appearance. Despite this feature, Hart’s “unaltered likeness is central to the core of the game experience.” Thus, to hold “that a video game should satisfy the Transformative Use Test simply because it includes a particular interactive feature would lead to improper results. Interactivity cannot be an end onto itself.”
While the Hart decision is only one of various approaches and does not settle the question that has divided many federal courts of how the right of publicity should be balanced against the First Amendment, it is significant in its extensive analysis and reasons for adopting the relatively new Transformative Use test. The key points from Hart include:
 No. 11-3750, 2013 WL 2161317 (3d Cir. May 21, 2013).
 Id. at *5.
 Hart v. Electronic Arts, Inc., 808 F. Supp. 2d 757 (D. N.J. 2011).
 Restatement (Second) of Torts § 652C (2012).
 433 U.S. 562 (1977).
 Id. at 574-75.
 Rogers v. Grimaldi, 875 F. 2d 994, 1004 (2d Cir. 1989).
 Hart, 2013 WL 2161317, at *12. Even prior to dismissing this test in Hart, the Third Circuit did not previously endorse the Rogers test beyond limited circumstances. See Facenda v. N.F.L. Films, Inc., 542 F. 3d 1007, 1017 (3d Cir. 2008) (hesitating to extend the Rogers test beyond the title of a work and refusing to extend it to a promotional work). While Facenda involved a Lanham Act claim, the court noted that the analysis would be the same for a right of publicity claim. Id. at 1026, n.11.
 110 S.W. 3d 363, 374 (Mo. 2003).
 Hart, 2013 WL 2161317, at *9.
 Comedy III Prods., Inc. v. Gary Saderup, Inc., 21 P.3d 797 (Cal. 2001).
 Id. at 808 (citing Campbell v. Acuff-Rose Music, 510 U.S. 569, 579 (1994)).
 Id. at 809. The Sixth and Ninth Circuits have adopted this test, and it is also treated positively in the Tenth Circuit. See ETW Corp. v. Jireh Publ’g, Inc., 332 F.3d 915, 937-38 (6th Cir. 2003) (holding that a collage of a celebrity’s image, not just one picture of him, was sufficiently transformative); Hoffman v. Capital Cities/ABC, Inc., 255 F.3d 1180, 1186 (9th Cir. 2001) (holding that a magazine editorial with a digitally altered photograph was sufficiently transformative to receive First Amendment protection, absent plaintiff showing defendant had “actual malice” in misleading the public to think it was actually the plaintiff); Cardtoons v. Major League Baseball Players Ass’n, 95 F.3d 959, 971 (10th Cir. 1996).
 Id. at 811.
 Hart, 2013 WL 2161317, at *17.
 Id. at *20.
Michael C. Lynch is a Partner and Litigator in the New York office of Kelley Drye & Warren LLP. He has extensive experience in complex, high-stakes litigation, including cases involving securities law, false advertising, antitrust, fraud, white-collar criminal defense, internal investigations, and other business and commercial related claims. Lystra Batchoo is an Associate in the New York City office of Kelley Drye & Warren LLP. She focuses her practice on several aspects of civil litigation, including complex and commercial litigation, contract disputes, fraud and securities litigation.