The California federal district court, in Davis v. Electronic Arts Inc., recently issued the latest in a series of decisions involving athletes’ right of publicity (“ROP”) claims aimed at Electronic Arts’ (“EA”) popular sports videogame franchise. The plaintiffs in Davis are retired NFL players and allege that that EA violated their publicity rights by using their likenesses in EA’s Madden videogame series without authorization. EA moved to dismiss the operative complaint, arguing that the plaintiffs’ state-based ROP claims were preempted by federal copyright law. On December 11, 2017, the district court denied EA’s motion.

The Davis case previously garnered considerable attention in 2015, when the U.S. Court of Appeals for the Ninth Circuit affirmed the lower court’s denial of EA’s bid to dismiss the action under California’s statute prohibiting strategic lawsuits against public participation (or anti-SLAPP statute). Similar to other states, California’s anti-SLAPP statute permits early dismissal of actions that challenge speech or activities protected by the First Amendment. The Ninth Circuit in Davis, however, held that no theory of First Amendment protection proffered by EA necessarily immunizes it from alleged ROP violations related to the Madden videogame. When the U.S. Supreme Court subsequently declined to review the Ninth Circuit’s decision in 2016, First Amendment scholars and practitioners debated whether the Court squandered an ideal opportunity to impose a uniform standard for balancing ROP claims against First Amendment concerns.

On remand, EA again sought dismissal of the Davis plaintiffs’ common law ROP claims, turning to copyright preemption as its next line of defense. Indeed, sports-media producers have enjoyed some recent success invoking the copyright preemption doctrine to overcome athletes’ ROP claims. In Dryer v. Nat’l Football League, for example, retired NFL players asserted ROP claims directed to NFL Films productions that featured plaintiffs’ likenesses in historic game footage. Both the Minnesota district court and Eighth Circuit Court of Appeals held that Dryer’s ROP claims were preempted by the Copyright Act. But Davis represents the first significant attempt by ROP defendants to extend copyright preemption to the sports videogame setting.

The district court in Davis analyzed EA’s motion under the standard two-part test required to establish a copyright preemption defense. First, plaintiff’s state law claim must “fall[] within the subject matter of copyright as described in [the Copyright Act].” Among other things, this requires that the challenged publication be an “original work[] of authorship fixed in any tangible medium of expression.” Second, the plaintiff’s asserted state law rights must be “equivalent to the rights contained in [the Copyright Act],” e.g. to reproduce, distribute, display, or publicly perform the copyrighted work. The Davis court focused exclusively on the first copyright preemption factor.

As a threshold matter, the court recognized that videogames are generally copyright protectable works. The court acknowledged, however, that not every element of a videogame is copyrightable (and the same is true for most other original works of authorship). Specifically, the court reasoned that athletes’ likenesses depicted in Madden game play are not fixed in a tangible medium of expression, because such “game play is dynamic, interactive, variable, and in the hands of the consumer.” Accordingly, the court determined that the heart of plaintiffs’ ROP claims do not fall within the subject matter of copyright, and thus are not preempted by the Copyright Act.

The recent Davis decision reinforces that courts treat ROP claims directed to sports videogames differently from game footage, both from a First Amendment and copyright preemption perspective. In the aforementioned Dryer case, for example, free speech and copyright preemption principles shielded the NFL’s documentary-style films from ROP liability, where the challenged works reproduced plaintiffs’ likenesses in recorded and rebroadcasted game footage. But neither the First Amendment nor the Copyright Act have effectively insulated EA’s sports videogames from ROP claims brought by featured athletes. From a copyright preemption standpoint, the Davis court identified the Copyright Act’s “fixation” requirement as the key distinguishing factor between game footage and videogames. Specifically, in attempting to reconcile its decision with the outcome of Dryer, the Davis court reasoned that “[w]hile recordings of actual football games are subject to copyright notwithstanding the independent actions of players during the course of the games, such recordings satisfy the requirement of copyright that the work be ‘fixed’ in a tangible medium of expression,” in contrast to Madden’s user-dependent, interactive game play.

(With contribution from Michael Varrige)