Fumbling the First Amendment: the right of publicity goes 2-0 against freedom of expression.

• Author: Kadri, Thomas E.

Two circuits in one summer found in favor of college athletes in right-of-publicity suits filed against the makers of the NCAA Football videogame. Both panels split 2-1; both applied the transformative use test; both dissenters predicted chilling consequences. By insisting that the likeness of each player be "transformed," the Third and Ninth Circuits employed a test that imperils the use of realistic depictions of public figures in expressive works. This standard could have frosty implications for artists in a range of media: docudramas, biographies, and works of historical fiction may be at risk. This Comment examines the tension between the right of publicity and the First Amendment and argues for a bright-line test that ensures greater protection for creators of expressive works.

TABLE OF CONTENTS INTRODUCTION I. THE RIGHT OF PUBLICITY VS. FREEDOM OF EXPRESSION II. HART, KELLER, AND THE TRANSFORMATIVE USE TEST III. A BRIGHT LINE: PROTECTING REALISM IN EXPRESSIVE WORKS CONCLUSION INTRODUCTION

Prominence has its pitfalls. A rich respect for commentary on public figures pervades our First Amendment tradition. (1) As Justice Frankfurter observed, "One of the prerogatives of American citizenship is the right to criticize public men and measures." (2) We hold dear the "free flow of ideas" (3) and insist that expression must remain "uninhibited, robust, and wide-open." (4) Behind these ideals lies a simple principle: limits on the content of speech must be scrutinized. (5) When creators of expressive works fret about the content of those works, we all suffer from the chilling effects. Judges must proceed with care when they restrict an artist's ability to engage with a particular subject.

Two circuits in one summer faced an identical question: When an expressive work contains a realistic portrayal of a public figure without that person's permission, does the First Amendment protect the creator against a right-of-publicity claim? (6) Both courts essentially said that it does not. If artists wish to depict public figures, they must now sufficiently "transform" the person's likeness or obtain consent. (7)

This Comment argues that these courts erred in requiring that a likeness be "transformed" when used in an expressive work. Courts should instead shield creators of expressive works from right-of-publicity claims unless the creators use a realistic portrayal that is wholly unrelated to the content of their work or is simply a disguised commercial advertisement. Part I introduces the friction between the right of publicity and freedom of expression. Part II chronicles the haphazard balancing tests that laid the shaky foundations for both decisions last summer. Finally, Part III argues for a bright-line test that leaves artists unencumbered when they use realistic portrayal, while still preserving the right of publicity to combat false endorsement.

1. THE RIGHT OF PUBLICITY VS. FREEDOM OF EXPRESSION

   The right of publicity emerged, paradoxically, from the right to privacy. (8) States began to fashion statutory and common law remedies to protect the property interests of people already in the public eye. (9) Now, over half of the states have laws granting people a "right of publicity," or "the right to prevent the unauthorized use of their names, likenesses, and other indicia of identity." (10) The right of publicity advances a variety of societal interests, including "fostering creativity, safeguarding the individual's enjoyment of the fruits of her labors, preventing consumer deception, and preventing unjust enrichment." (11)

   But the right of publicity creates problems for free speech. Friction between two competing ideals--a right to control the use of one's identity and a right to create expressive works--presents a constitutional dilemma. This friction increases because the First Amendment protects not only political speech but also "[e]ntertainment ... motion pictures, programs broadcast by radio and television, and live entertainment, such as musical and dramatic works." (12) Moreover, the fact that many media are "published and sold for profit does not prevent them from being a form of expression whose liberty is safeguarded by the First Amendment." (13) Thus, a right to protect the commercial worth of one's identity and a right for others to comment expressively on that identity are natural foes, often at loggerheads.

   The Supreme Court skimmed the surface of this issue in Zacchini v. Scripps-Howard Broadcasting Co., its only foray into parsing the First Amendment in a right-of-publicity context. (14) Mr. Zacchini was a "human cannonball" who performed his stunt at a local fair. (15) When a news outlet aired footage of the daredevil's entire act, he sued, claiming the broadcast violated his right of publicity. (16) The news outlet sought refuge under the First Amendment, but to no avail; Zacchini's claim could proceed. (17) The Court demanded a balancing test to weigh the interests underpinning the right of publicity and the right to free speech, although it failed to dictate precisely how that balancing should occur. (18)

   As a result of Zacchini's vague demands, lower courts haphazardly speculated about what test to apply. Chaotic application of these disparate standards left both courts and artists in a state of confusion and uncertainty.

2. HART, KELLER, AND THE TRANSFORMATIVE USE TEST

   Last summer's two decisions emerged from the shaky foundations laid by Zucchini. The plaintiffs in both lawsuits were former college athletes. Ryan Hart and Sam Keller filed essentially identical complaints against Electronic Arts ("EA"), the creator of the NCAA Football videogame. The players alleged that the videogame violated their right of publicity by featuring their virtual avatars. (19) EA sought protection under the First Amendment. (20) The main issue presented in each case was which test the court should apply to balance EA's First Amendment rights and the players' right of publicity.

   Hart and Keller championed the transformative use test. (21) Created by the California Supreme Court, this test considers five factors: first, whether the likeness is one of the "raw materials" from which an original work is synthesized; second, whether the work is primarily the defendant's own expression; third, whether the literal and imitative or the creative elements predominate in the work; fourth, whether the marketability and economic value of the challenged work derives primarily from the fame of the person depicted; and fifth, whether an artist's skill and talent have been manifestly subordinated to the overall goal of creating a conventional portrait of a public figure so as to commercially exploit the person's fame. (22)

   In principle, the transformative use test asks whether the expressive work adds significant creative elements "so as to be transformed into something more than a mere celebrity likeness or imitation." (23) The test recognizes--at least in theory--that "[w]hat the right of publicity holder possesses is not a right of censorship, but a right to prevent others from misappropriating the economic value generated by the celebrity's fame." (24) The inquiry is "more quantitative than qualitative, asking whether the literal and imitative or the creative elements predominate in the work." (25) The rationale behind the test is that "when a work contains significant transformative elements, it is not only especially worthy of First Amendment protection, but it is also less likely to interfere with the economic interest protected by the right of publicity." (26) At least according to the court that created it, the test should leave breathing room for creative contributions that engage with factual reporting and fictionalized portrayal. (27)

   In practice, however, the test has not proved so forgiving. In No Doubt v. Activision Publishing--a case that heavily influenced the Hart and Keller courts (28)--a videogame creator was unable to present a successful First Amendment defense because its game did not "transform" the members of a famous band into anything other than "exact depictions" of them doing "exactly what they do as celebrities." (29) The very fact that the portrayals were realistic led the court to deny protection to the artists.

   Although two California state courts applied the transformative use test to protect expressive works that featured portrayals of public figures, those characters were unrealistic depictions. The first court protected a comic book featuring two "villainous half-worm, half-human offspring" named Johnny and Edgar Autumn, parodies of sibling rock duo Johnny and Edgar Winter. (30) Although the Winter brothers clearly inspired the mutant cartoons, the parody was enough to "transform" their likeness and earn the comic books First Amendment protection. Similarly, the second court protected a videogame starring a character easily identified as singer Kierin Kirby. (31) Kirby's avatar was "fanciful" and appeared "in outer space in the 25th Century." (32) Again, unrealism served as a proxy for transformation.

   Against this backdrop, Hart and Keller pitched their twin cases to the Third and Ninth Circuits. The players were armed with No Doubt and launched a blunt attack on realistic portrayal in expressive works. Although the game's virtual avatars are nameless, the physical attributes and statistical data leave no doubt as to their identity. For example, Hart's digital persona sports his number 13 jersey, stands at 6'2"...