A change of Hart: an argument favoring the transformative use test in right-of-publicity cases.

Author:Rosenzweig, Benjamin J.

    The First Amendment of the U.S. Constitution guarantees the freedom of expression and seeks to foster an environment where individual ideas can freely flourish and develop. (2) While the right of free expression is imperative in a democratic society, it is not an absolute right. (3) The objective of safeguarding the integrity of free expression must be constantly balanced against competing interests. (4) One interest that has clashed with the freedom of expression over the last half-century is the right of publicity. (5)

    The modern day right of publicity, which protects against the misappropriation of an individual's identity, recognizes that an individual should have control over the commercial value of his image. (6) Courts, however, have struggled to develop a consistent framework to measure this interest against the substantial weight of the First Amendment. (7) Initially defined in Comedy III Productions, Inc. v. Gary Saderup, Inc., (8) the transformative use test seeks to balance an individual's right of publicity with the interests protected by the First Amendment. (9) Specifically, the transformative use test examines whether a particular expressive work sufficiently transforms a celebrity's identity, or "likeness," into something more. (10)

    Recently, the transformative use test has been applied to college athletes suing the National Collegiate Athletic Association (NCAA) and Electronic Arts (EA) for using their likeness to develop video games that seemingly replicate their identities. (11) In Hart v. Electronic Arts, Inc., (12) the Third Circuit ruled in a split decision that EA's game did not sufficiently transform a college athlete's likeness so as to outweigh his publicity rights. (13) In the case In re NCAA Student-Athlete Name & Likeness Licensing Litigation, (14) the Ninth Circuit echoed the Third Circuit's sentiment, agreeing that under the transformative use test, EA's use of a college athlete's likeness in its "NCAA Football" games did not deserve First Amendment protection. (15) If, however, EA's own creative and interactive elements are not considered sufficiently transformative, the question remains: what constitutes a transformative use worthy of First Amendment protection? (16)

    This Note will analyze the tension between the right of publicity and freedom of expression, particularly as it relates to the recent alleged misappropriation of the images of college athletes. (17) Part II.A examines the development of the right of publicity, including its evolution from the right of privacy and its interplay with the First Amendment. (18) Part II.B outlines the trajectory of the balancing tests used by courts before arriving at the transformative use test, which is emerging as the most effective way to resolve the tension between the two competing interests. (19) Part II.C explores the Hart and In re NCAA Student-Athlete Name & Likeness Licensing Litigation decisions, discussing the Third and Ninth Circuits' preference for the transformative use test in order to arrive at an equitable result. (20) Finally, Part III will analyze Hart and In re NCAA Student-Athlete Name & Likeness Licensing Litigation and suggest that the courts' willingness to strike the balance in favor of the right of publicity reflects a preference for economic prosperity. (21) Moreover, this Part argues that the transformative use test is the appropriate test to resolve conflicts between the First Amendment and the right of publicity. (22) In favoring the right of publicity in the context of college athletes, courts are not promoting censorship. (23) Rather, courts are allowing college athletes, as public individuals, to capitalize on their commercial value by preventing others from exploiting their image. (24)


    1. The Right of Publicity's Foundation

      Before the right of publicity emerged as a means of preventing the appropriation of one's image, individuals were confined to asserting the right of privacy. (25) One form of the right of privacy was the invasion of privacy by appropriation: the unauthorized use of an individual's likeness or image. (26) In Pavesich v. New England Life Insurance Co., (27) the court examined whether an advertiser could use the plaintiff's photograph without obtaining his consent. (28) Though previous courts were unwilling to formally recognize a right of privacy, the court in Pavesich adopted the right, concluding that the publication of an individual's likeness without his or her consent unequivocally violates his or her privacy. (29) The invasion of privacy by appropriation right, however, merely accorded the individual the "right to be left alone." (30) By appreciating this right, courts recognized invasion of privacy could lead to emotional injury, but did not acknowledge the potential economic harm caused by the commercial exploitation of one's likeness. (31) As such, publically-known plaintiffs had extreme difficulty maintaining an invasion of privacy action because courts were skeptical that such plaintiffs had actually suffered emotional distress or indignity when their identities were already widely known. (32)

      The court in Haelan Laboratories, Inc. v. Topps Chewing Gum, Inc., (33) was confronted with solving this enigma and examined whether an individual has a right in the public value of his or her own image, outside the inevitable possibility of mental distress or emotional injury. (34) Interestingly, this issue arose in Haelan Laboratories, Inc. indirectly, as the suit initially emerged as one between two rival chewing gum manufacturers. (35) In Haelan Laboratories, Inc., the plaintiff contracted with a famous baseball player, giving the plaintiff exclusive rights to use the player's photograph in connection with the plaintiff's gum sales. (36) The defendant then induced the player to authorize him in a separate contract to use the player's photograph in connection with the defendant's sale of gum. (37) The defendant argued that because the right of privacy is personal and not assignable, the player's contract with the plaintiff merely relieved the plaintiff of liability he otherwise would have incurred had he used the player's photograph without consent. (38) Moreover, the defendant asserted he could not be liable because the plaintiff's contract with the player did not vest the plaintiff with any property rights. (39)

      Though the defendant's argument conformed to the then current law governing the right of privacy, the court rejected the defendant's position; the court instead found the player had a property right in his own image, and accordingly, he could legally assign the right to his image to the plaintiff in an exclusive contract. (40) Thus, as the legal possessor of the player's interest, the plaintiff could enforce that interest against the defendant. (41) By instilling a property right in an individual's identity, the Haelan Laboratories, Inc. court created the right of publicity. (42) The basic rationale underlying the Haelan Laboratories, Inc. court's decision was that an individual has a right to control and benefit from the public use of his or her identity, rather than merely prohibit impermissible uses of it. (43) Moreover, the right of publicity protects against the fundamentally unfair practice of exploiting an individual's accomplishments solely because he or she is publically known. (44)

      Though the Haelan Laboratories, Inc. decision is significant in that it was the first to articulate the right of publicity, its reach is not comprehensive. (45) One particular limitation the Haelan Laboratories, Inc. court does not discuss is the need to balance the interest in protecting the publicity of one's image with the interest of free expression. (46) In Zacchini v. Scripps-Howard Broadcasting Co., (47) the only United States Supreme Court case to examine the right of publicity, the Court examined whether an Ohio news station had the right to broadcast a performer's entire "human cannonball" stunt act from a local fair without the performer's permission. (48) While the Ohio courts initially barred the performer's claim against the news station on First Amendment grounds, the Supreme Court sought to balance the performer's right of publicity with the news station's First Amendment rights; and the Court eventually recognized the performer should have the right to control his own publicity. (49) In surveying the interests at issue, the Court noted the interest in recognizing a right of publicity "is in protecting the proprietary interest of the individual in his act in part to encourage such entertainment." (50) Moreover, as the performer's act was the product of his own hard work and talents, the economic value of his performance was grounded in his right to control the publicity of the performance. (51) Most notably, the Court illuminated the fact that the performer did not seek to suppress the broadcast of his performance entirely; he simply sought to receive his commercial stake. (52) Although the news enjoys considerable First Amendment protection, the Court recognized the public would not be deprived of the benefit of the performer's act if the news station had merely obtained his consent. (53)

      In essence, the Court in Zacchini concluded that a news station's broadcast of a performer's entire act violates the performer's right of publicity and the broadcast is not entitled to any First Amendment protection. (54) While the Court recognized the tension between the right of publicity and the First Amendment, it did not formulate a uniform balancing test to resolve the conflict. (55) As such, in the wake of Zacchini, courts have advanced varying balancing tests in search of a more systematic approach to resolving the discord between the right of publicity and the First Amendment. (56) Three tests of significance that have emerged are the predominant use test, the Rogers test, and the transformative use test. (57)

    2. Modern Balancing...

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