Recent disputes involving Electronic Arts (EA) have divided district courts in the Third and Ninth Circuits over whether the First Amendment insulates designers of video games from lawsuits when they use an athlete’s likeness without permission and, if so, under what law.

This line of decisions began in 2009 in the Central District of California, where Jim Brown, a retired professional football player, filed an action claiming that EA violated the Lanham Act by wrongfully misappropriating his name, identity, and likeness when it included him as a player in the video game Madden NFL without his consent. Brown v. Electronic Arts, Inc., No. 09-CV-1598, Doc. No. 43 (Order), at 3 (C.D.Cal. Sept. 23, 2009). While the game did not use Brown’s name or jersey number, he alleged that the character in the video game had “nearly identical” statistics to his own and thus created a false endorsement. Id. at 3. The Court disagreed, holding that Madden NFL was an “expressive work” protected from his federal false endorsement claim. Id. at 6, 7. Because Madden NFL manifested enough creativity to be deemed an “expressive work,” it triggered the two-pronged test established by Rogers v. Grimaldi: (1) that the relevance of the defendant’s use of the plaintiff’s likeness is relevant to the work; and (2) that the use does not explicitly mislead consumers. Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). The Court concluded that use of Brown’s likeness was not irrelevant to the game’s content, and that EA’s use of his likeness (if his “likeness” was used at all)—in the form of an anonymous, mis-numbered video game character—could not be understood by the public as an “explicit attempt” to signify Brown’s endorsement of the game. Brown, No. 09-CV-1598, Doc. No. 43 (Order), at 6-8.

Less than five months later, in addressing a state-law claim, a court in the Northern District of California came to an arguably different outcome. In Keller v. Electronic Arts, Inc., plaintiff Samuel Keller, a former college quarterback, alleged that EA’s depiction of a football player in its game NCAA Football used his and other college players’ likenesses without compensation, violating California’s right of publicity law. Keller v. Electronic Arts, Inc., No. C 09-1967 CW, 2010 WL 530108, at *1-3 (N.D. Cal. Feb. 8, 2010). While EA claimed that its use was protected by the First Amendment, the Court disagreed, holding that EA’s use was “not sufficiently transformative” to implicate First Amendment protection. Id. at *3-5. The Court reasoned that, rather than depicting the player “in a different form,” EA represented him as “what he was: the starting quarterback for Arizona State University” in a setting “identical to where the public” would have found him during his collegiate career—that is, on a football field. Id. at *5.

Finally, one year later, a court in the District of New Jersey reached the opposite conclusion. In Hart v. Electronic Arts, Inc., a former college football player brought a claim under New Jersey’s right of publicity law for using his likeness in NCAA Football—the same video game addressed in Keller. Hart v. Electronic Arts, Inc., 808 F. Supp. 2d 757, 760-61 (D.N.J. 2011). The Court held that EA’s use of Hart’s likeness was sufficiently transformative to warrant First Amendment protection. Id. at 784 . In so holding, the Court asserted that Keller ignored one of the key components of NCAA Football: that “the virtual image” representing the football player could be altered by the user in “various formulations.” Id. at 786-87. The Court found “this aspect of the game significant because it suggests that the goal of the game is not for the user to ‘be’ the player,” but instead to be a “starting point for the game playing experience.” Id. at 787. The Court concluded that players’ images in NCAA Football is “one of the raw materials from which an original work is synthesized, [and] the depiction or imitation of the celebrity is [not] the very sum and substance of the work in question,” id. (citations and quotation marks omitted), rendering its use transformative, and thus protected by the First Amendment. While the Rogers test typically is applied to Lanham Act claims, the Court nonetheless suggested that it may also apply to right-of-publicity claims, and stated that NCAA Football would be protected under the two-prong Rogers test if the Court were to apply it. Id. at 793.

This trio of cases reflects significant confusion in case law over the use of athletes in video games—specifically, whether (1) the proper standard is the two-pronged Rogers test or the “transformative use” test and (2) when the use of an athlete’s likeness satisfies those tests. While all three cases are currently on appeal, their outcomes will likely have implications for the design of future video games bearing an athlete’s likeness.