The Sports Law & Policy Centre | Transformative Use in Video Games and Player Attributes: The ‘Hart’ of the Matter
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Transformative Use in Video Games and Player Attributes: The ‘Hart’ of the Matter

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By Roshan Gopalakrishna

Copyright law protects original works of authorship that are expressed in a tangible form, which includes writings, drawings, video games, movies, songs, etc. and restricts others from using such protected work. However, there are a few exceptions which limit the monopoly of authors over their creations. The doctrine of ‘Fair Use’ is one such exception which enables use of copyright protected work for non-commercial and educational purposes. In general, ‘Fair Use’ policy allows use of copyrighted material for the purpose of research, criticism, commentary etc.  The doctrine of transformative use,   which comes under the purview of the ‘Fair Use’ policy, allows the use of all or any part of a copyrighted work in a work where the final product is a completely new creation achieved by the inclusion of new content, expression, substance, etc. The use of an athlete’s attributes in a video game is one such illustration.

The “right of publicity” or “personality rights” is nothing but the right of an individual to control the commercial use and exploitation of his/her name, image, likeness, or other facets of one’s personality in order to prevent the unauthorised profiteering from the use of his/her name and identity.

The Doctrine of Transformative Use

Mere duplication of a protected work amounts to violation of the rights of the author but under U.S. copyright law, there exists the concept of transformative use which allows reproduction with a certain degree of originality and novelty.  It is out of the “fair use” concept that the idea of “transformative use” arises.  The purpose of this concept is to allow usage of another’s expressive content to make something new and different.  U.S. Courts have been applying this test to cases on the right to publicity.

In Comedy III Productions Inc. v. Gary Saderup Inc., [25 Cal. 4th 387, 58 USPQ2d 1823 (Cal. 2001)], the court stated that the accepted test for resolving right to publicity cases is whether the raw material or data in question has been transformed into an original creation. In other words, to attain such protection, a work must satisfy one of the following two criteria:

  1. The work in question adds significant creative elements or substance to the copyrighted work so as to be transformed into something more than a mere likeness of the celebrity or his/her imitation; or
  2. The economic value of the defendant’s work does not derive primarily from the celebrity’s.

Courts have accorded the defence of transformative use in cases where the new product containing the likeness of a celebrity is the author’s own individual expression and has an identity of its own.

In Kirby v. Sega of America, Inc. (50 Cal. Rptr. 3d 607, 610, 616, 618 (Cal. 2006), the plaintiff, a famous American singer alleged that the character of “Ulala” in a video game distributed by the defendants infringed her right to publicity and misappropriated her likeness. Ulala who was a female reporter in the video game in fact resembled certain characteristics of the plaintiff with respect to certain physical attributes and style of dressing. However, the creators of the game had only used the celebrity as an inspiration for the character and Ulala was unique in its own way and not merely a recreation of the likeness of the celebrity. In addition, the video game was set up in a very distinct futuristic environment. Thus, the Court of Appeals in California held the fictional video game character to be a transformative work as it had considerable features to distinguish it from a depiction of celebrity likeness.

Further, in Cardtoons v. MLBPA [95 F.3d 959, 970-76 (10th Cir. 1996)], baseball trading cards which parodied famous players were protected under the First Amendment as were held not to come within the scope of ‘commercial speech’. Other items like greeting cards, T-shirts, fantasy sports websites, etc. have also been found to be protected as non-commercial, expressive free speech.

However, in No Doubt v. Activision, Inc., 192 Cal. App. 4th 1018 (Cal. App. 2011), the rock band No Doubt filed a lawsuit against game-developers, Activision over its use of the band member’s avatars in the game Band Hero. The use of the band members in the game did not amount to transformative use as there was hardly any creative touch applied to the game’s characters. According to the court, the game characters were considered to be ‘immutable images of the real celebrity musicians’. These judgments amply demonstrate that the final position in relation to the right to publicity and transformative use is far from settled.

NCAA, EA and Ryan Hart

The National Collegiate Athletic Association (“NCAA”) Football series is an American football video game (“Game”) developed by Electronic Arts (“EA”). The Game was first launched in 1993 and thereafter various upgraded and advanced versions of the Game have been introduced ever since. The Game essentially allows the users to take control of teams and players and compete against their computer or other users. Each virtual player’s height, weight, physical appearance, biographical data, skill level along with the jersey number and the team to which the player belongs reflects the attributes and characteristics of an actual player.

One of the striking elements of the Game is that users can edit various game data like player names, accessories, physical features, etc. EA is permitted to replicate team logos, uniforms, stadiums, etc. as it is the exclusive licensee of the NCAA for college football. However, player names cannot be used in the Game as that would require an authorisation from the National College Players Association (“NCPA”).  Since the NCAA’s amateur policy prohibits college players from entering into agreements of a commercial nature, such players are restricted from commercialising their publicity rights and hence EA cannot enter into direct understanding with such players with regard to the use of their images and likeness.

However, this is not the same in other EA sports titles like the FIFA series, wherein players’ names can be used after acquiring a license from a country’s league player association or International Federation of Professional Footballers. For example, to use the names of players from the English Premier League, the license has to be obtained from the Professional Footballers’ Association.

In the prominent case of Hart v. Electronic Arts 808 F. Supp 2d 757 (DNJ 2011), Ryan Hart, a former Rutgers Scarlet Knights quarter-back, brought in a class action suit in a New Jersey state court alleging that his right of publicity had been violated by EA. The plaintiff contended that his likeness and that of other players had been used in the Games from 2004-2006 without permission or approval from him and the other players. In September 2011, the New Jersey Federal District Court, to which the case was later moved, rejecting Hart’s plea of a class action suit against EA on behalf of all college players whose likenesses featured in NCAA Football games, granted a summary judgment. The Court held that Hart’s publicity rights were overridden by the free speech rights guaranteed to EA under the First Amendment to the Constitution of the U.S. and that EA’s depiction and portrayal of the plaintiff and other players in the video game was a ‘transformative work’ as every detail and information of the player could be altered, changed and edited by the user. Dissatisfied with the judgement, the plaintiff filed an appeal in the US Court of Appeals for the Third Circuit.

In Hart’s case the court determined that EA’s use of player likenesses was sufficiently transformative as it allowed users to edit physical aspects of the ‘virtual players’.  But the court failed to appreciate the fact that the player representations in the video games were nothing but replicas of actual payers and could be easily identified as such by connoisseurs. The virtual players did not constitute a new creation and moreover, it could be argued that the video games were receiving economic mileage from using player likeness.

The facts of Hart’s case are similar to the No Doubt case; however, the justification the Federal Court gave in upholding a decision contrary to that in the latter was that the Game allowed player data to be edited by users. The reasoning used by the court seems to be fallacious.

Conclusion

When an existing expression is used in another work it can stimulate criticism, commentary, and discussion of the original expression. The transformative expression is important not only as a new expression, but as in the case of transformative artistic works like Marcel Duchamp’s ‘The Mona Lisa With a Moustache’, it can provide for debate and the questioning of cultural hierarchy. In addition, whether a work broadly based on copyrighted expression is a transformative work or an infringement would have to be determined on the facts of the case and it is important that courts while adjudicating a matter before it refrain from being superficial. In Hart’s case which is presently under appeal, the plaintiff has a strong case to succeed in a claim for violation of his publicity rights as the Game which uses his identity, without his consent and for a commercial purpose does not really qualify as a transformative work. So far, the NCAA and EA have escaped any sort of legal liability but no one can guarantee an immunity as such activities are clearly exploitative in nature.

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