The Supreme Court will soon consider whether it should grant the cert petition in Electronic Arts v. Davis, a Ninth Circuit case involving whether a football video game manufacturer is liable for using the numbers and likenesses of retired football players.  The manufacturer, Electronic Arts, already pays the NFL to use the names, likenesses, and numbers of current football players.  However, Madden NFL, the game at issue, also features historic teams with the numbers and descriptions of former players.  Around 6,000 of these former NFL athletes have now sued EA, claiming that the game infringes their right to publicity.   (If EA instead has a First Amendment right to use the public information about former players, it likely can use current players’ names and numbers as well, and its current licenses may be overly cautious.) Although Madden NFL isn’t a perfect vehicle for deciding when free speech rights trump the right to publicity, it’s a good enough case for the court to at least articulate what test should apply. The Court should grant certiorari in Davis. The time to resolve the circuit split on free speech versus the right to publicity is long overdue.

The Supreme Court has never clearly articulated how the right to publicity – popularized in the 1950s to protect some hybrid of privacy rights plus intellectual property rights in one’s image – intersects with free speech rights.  As a result, courts across the country have created divergent and often conflicting tests for determining whether the First Amendment protects a defendant’s ability to use the name or likeness of someone else without her permission.  The Ninth Circuit has adopted the “transformative use” test.  The court of appeals thus held that the First Amendment doesn’t protect EA as a matter of law.  The court held that Madden NFL doesn’t add significant creative expression to the names and likenesses of players, but just employs them in exactly the context in which they usually appear.  The work is not transformed into something more than a mere celebrity imitation, even though video gamers can interact with these former football players and create new plays for them, choose-your-own adventure-style.

Other courts applying the transformative use test have held that a charcoal drawing of The Three Stooges is not sufficiently transformative but that Andy Warhol’s famous Marilyn series is transformative enough to warrant First Amendment protection (imagine if Warhol had to pay Marilyn to artistically comment on her celebrity).  Because it is not obvious how the transformative use test would come out in many cases as a matter of law, juries end up deciding if a work adds enough creative expression to transcend a mere celebrity imitation or likeness.  That’s what will happen to Madden NFL if certiorari is not granted.  There will be a trial, and a jury will decide whether Madden NFL is a transformative use as an affirmative defense to liability (as opposed to the court holding that it is a transformative use as a matter of First Amendment law and denying a trial to plaintiff). But jury unpredictability means that creators of video games, books, movies, and T shirts often won’t know in advance whether they have to pay those featured in their works, or whether they have a First Amendment right to showcase a given figure.  Consider the movie The Social Network.  Does that fictionalized movie transform Mark Zuckerberg enough to merit First Amendment protection, or is it merely a depiction of Zuckerberg, wearing a hoodie sitting in front of a computer, in his original setting doing the work he has established as core to his persona?  My instinct is that, yes, The Social Network is more creative/transformative than Madden NFL because it represents a fully realized story and commentary on Zuckerberg and the creation of Facebook.  However, this instinct may reflect my own bias against video games as expressive – but prioritizing some media as more valuable/expressive is something courts should not be doing in First Amendment analysis. The uncertainty surrounding whether a movie producer, author, or video game manufacturer can use an individual’s likeness, and how much work they have to do to transform that likeness to receive First Amendment protection, means many creators will err on the side of not producing the speech at all, or of removing the figure, or of paying for speech it needn’t pay for, stymieing the creative process.

Not only is the transformative use test unpredictable in ways that will chill expression, but courts around the country use completely different tests to resolve the clash between the right of publicity and the First Amendment.  The divergence over what test a court will apply further adds to the unpredictability of our First Amendment rights. The Second Circuit uses a much more speech-protective test, where free speech trumps the right to publicity unless the use of someone’s name of likeness would confuse consumers into thinking the celebrity had endorsed the product.  All other uses except basically nonconsensual commercial endorsements are protected speech.  The Supreme Court of Missouri uses a test that matches my intuitions in this area – it asks whether a work mostly exploits the commercial value of an individual’s identity or has as its predominant purpose making an expressive comment about a celebrity.  While the transformative use test focuses on whether there is added creation (borrowing from intellectual property law), the Missouri test inquires about the driving force behind using an individual’s image. For example, a Missouri court held that the use of a hockey player character in a comic book modeled after a real NHL player was predominantly a ploy to sell comic books and related products rather than an artistic or literary expression.” Unfortunately, divining a defendant’s purpose may be an exercise in futility, especially when these purposes are often mixed.  Many other courts simply do an ad hoc case-by-case balancing of the First Amendment interests involved versus how much a plaintiff is harmed by the use of the likeness.  (In many cases, there isn’t great harm because, unlike in intellectual property law, which protects the actual expression at issue, the celebrity can still engage in his primary activity and receive endorsements despite some expressive work depicting him.)

Because important First Amendment rights are at stake (although, as one of my students pointed out, we should query whether fictionalized accounts that confuse viewers about the truth add much to cultural dialog – although the fictionalization includes important social commentary), and because the right of publicity is also valuable and deserved in many cases, the Supreme Court must resolve this clash.  But perhaps Davis isn’t the best vehicle for this case.  The Ninth Circuit relied mostly on its previous ruling in Electronic Arts v. Keller, and there’s been almost no discovery in this case yet. This means the factual record isn’t fully developed about how the video game works and was created.  However, Davis is a good enough vehicle to choose an abstract test that the lower courts should apply, and a uniform test is desperately needed.  My own view is that any test should err on the side of protecting speech because these tests will unavoidably contain subjectivity that chills speech. The Supreme Court should favor something akin to the Second Circuit’s test, although perhaps give a little more deference to the right of publicity, because the Second Circuit’s test is concerned primarily with consumer confusion. Perhaps a test that asks whether the use of an individual’s image (1) would make audiences believe the individual endorsed the product or (2) bears no narrative relationship to the speech at issue. This would ultimately protect Madden NFL and Marilyn, but not protect The Three Stooges (although, again, the subjectivity in application is unavoidable).