On January 6, 2015, Electronic Arts, Inc. (“EA”), maker of Madden NFL video games, lost its appeal to dismiss claims by approximately 6,000 retired professional football players in Michael Davis, et. al v. Electronic Arts, Inc., case number 12-15737. The Ninth Circuit affirmed U.S. District Judge Richard Seeborg’s 2012 holding that the players’ likenesses in the video games are not sufficiently different or transformative to confer protection.

The allegations, that EA owes the former players money for using their likeness and images in video games featuring avatars with their height, weight, positions and playing abilities, are virtually identical to two prior lawsuits against EA (Keller v. Electronic Arts, Inc., 724 F.3d 1268 (9th Cir. 2013) and Hart v. Electronic Arts, Inc., 808 F. Supp. 2d 757 (2011)), which involved federal courts applying the “transformative use” test to EA’s NCAA Football video game and ultimately finding right of publicity violations.

The “right of publicity” purports to protect against uncompensated commercial exploitation of one’s likeness or identity by another. The landmark ruling of Comedy III Products v. Gary Saderup, Inc., 106 Cal. 2d, 126 (2001) sets forth the “transformative use” test, which asks whether the challenged work or product “contains significant transformative elements [that] does not derive primarily from the celebrity’s fame.” According to the California Supreme Court, the strongest case for a right of publicity claim occurs where the work appropriates “the very activity by which the entertainer acquired his reputation in the first place“ [and] “any artist depicting a celebrity must contribute more than a merely trivial variation, but create something recognizably his own, in order to qualify for legal protection.”

Similar to its decision in Keller, which relied on the California appellate decision in No Doubt v, Activision Publishing, 192 Cal. App. 4th 1018 (2011), the Ninth Circuit was unmoved by EA’s arguments pertaining to other creative elements within the game’s virtual world. In No Doubt, the Court found that “other creative elements, d[o] not transform the avatars into anything other than exact depictions of No Doubt’s members doing exactly what they do as celebrities.” Similarly, “[t]he same is true here. Like NCAA Football, Madden NFL replicates players’ physical characteristics and allows users to manipulate them in the performance of the same activity for which they are known in real life – playing football for an NFL team. Neither the individual players’ likenesses nor the graphics and other background content are transformed more in Madden NFL than they were in NCAA Football.”

As has been the case with the transformative use doctrine in copyright law (see here for past article on the fair use doctrine) there has been significant criticism regarding the vague, subjective and unpredictable nature relating to right of publicity cases. While this Davis decision, along with Keller and No Doubt, seem to represent a trend for which media companies must be careful, they also appear to add some clarity to the analysis by focusing on the degree to which the celebrity depictions are identical to the real life activity for which the celebrity fame was acquired, and away from a judge’s role as subjective art critic.

Moreover, beyond the transformative use analysis and ramifications, another significant aspect from this decision is the Ninth Circuit’s discussion and dismissal of EA’s argument that its use of former players’ likeness is protected under the First Amendment as “incidental use.” As the court articulates, a number of factors are relevant, including (1) whether the use has a unique quality or value that would result in commercial profit to defendant; (2) whether the use contributes something of significance; (3) the relationship between the reference to plaintiff and the purpose and subject of the work; and (4) the duration, prominence or repetition of the name of likeness relative to the rest of the publication.

In shutting the door on this argument, the court found that the first and second factors weigh against incidental use, because the former players’ likenesses have unique value that add to the commercial value of Madden NFL. EA admitted that Madden is successful because it allows gamers to simulate play involving current players on any of the 32 NFL teams, and having acknowledged that current players’ likenesses carry substantial value, the court concluded that EA failed to persuade that the same isn’t true for former players. Further, the court held that the third and fourth factors also weigh against incidental use because the former players’ likenesses are prominently shown and featured in a way that is substantially related to the primary purpose of the video game – to create an accurate virtual simulation of an NFL game.

All in all, as much as this decision arguably adds some clarity to the right of publicity tug-o-war between media companies and talent, there is still little guidance as to what specific creative transformations will and will not provide protection. For now, creators of video games, movies, books, or similar works, that use public figures’ names and likenesses, must be wary as it will be interesting to see how this area of law develops in the age of Apps and Software Technology.