In a tight game between First Amendment rights and the right of publicity for a former college quarterback before the Third U.S. Circuit Court of Appeals, the QB pulled off the W.

Ryan Hart sued video game maker Electronic Arts for violating his right of publicity in the "NCAA Football" game series for multiple years. Hart, a record-setting quarterback who played for Rutgers from 2002 to 2005, argued that his digital avatar appropriated his likeness by using his image, his vital and biographical information like his height and weight, the accessories he wore (a wristband and helmet visor) and his agility and passer rating.

A federal court sided with EA, but in a 62-page decision detailing the history of the right of publicity and the tension between the relevant interests underlying both the First Amendment right of free expression and the right of publicity, the Third Circuit reversed.

Identifying three balancing tests used in other jurisdictions, the panel declined to adopt the predominant use test (based on commercial interests) and the trademark-based Rogers test, from a Second Circuit decision in Rogers v. Grimaldi, 875 F.2d 994 (1989). Instead, it adopted a test first articulated by the California Supreme Court and derived from copyright law, the transformative use test.

The test focuses on the first fair use factor, "the purpose and character of the use," and requires the court to analyze "whether and to what extent the new work is transformative." After working its way through existing case law since the 2001 case that established the test (Comedy III Prods., Inc. v. Gary Saderup, Inc., 21 P.3d 797), the court determined that EA did not sufficiently transform Hart's identity to warrant First Amendment protection.

"In no small part, the 'NCAA Football' franchise's success owes to its focus on realism and detail," wrote Judge Joseph A. Greenaway for the 2-1 majority. Not only did the digital avatar "closely resemble the genuine article" in hair color and skin tone, but the accessories also match those worn by Hart as a Rutgers player.

"The digital Ryan Hart does what the actual Ryan Hart did while at Rutgers: he plays college football, in digital re-creations of college football stadiums, filled with all the trappings of a college football game," the court said. "This is not transformative; the various digitized sights and sounds in the video game do not alter or transform [Hart's] identity a significant way."

The decision noted that the game allowed users to alter the avatar's appearance, but the court said these "minor alterations – which substantially maintain the avatar's resemblance to [Hart]" were insufficient. "Indeed, the ability to modify the avatar counts for little where the appeal of the game lies in users' ability to play 'as, or alongside' their preferred players or team," the court said. And sweeping, major changes to the avatar – like a different skin tone or face – do not transform Hart's avatar, but instead cause it to cease being him entirely, as it no longer represents Hart.

Finally, the court said the other creative elements of the game did not tip the scales in EA's favor. "Wholly unrelated elements do not bear on this inquiry," the court said. To hold otherwise could lead to acts of blatant misappropriation as long as the larger work contained highly creative elements – an outcome with "deleterious consequences for the state of the law."

A dissenting opinion reached a different result when applying the transformative use test, arguing that the majority penalized EA for its realism and focused too narrowly on the plaintiff's likeness, rather than how that likeness is incorporated into and transformed by the work as a whole, with "myriad original graphics, videos, sound effects, and game scenarios."

To read the opinion in Hart v. Electronic Arts, click here.

Why it matters: Has the celebrity's image been so transformed that it has become primarily the defendant's own expression, rather than the celebrity's likeness? This is the central question of the transformative use test adopted by the Third Circuit when determining whether a plaintiff's right of publicity has been violated. The panel was careful to note that it recognized the First Amendment protections given to video games, and said that "nothing in our decision today should be read to diminish this fact. Rather, our inquiry looked to whether other interests may surmount the First Amendment protection – as they surmount protections for other modes of expression." The game itself did not lose protection, the Third Circuit explained, but the right of publicity played the better game.