Video Games, the Right of Publicity, and Transformative Use: Formulating an Objective Standard

Several recent cases—including two prominent cases affecting the video game industry—have highlighted the tension between a celebrity’s right of publicity and the First Amendment. The primary purpose of the right of publicity is to ensure that individuals can protect against the unauthorized, commercial use of their name or likeness. ¹The right of publicity, which was initially a common law right, has now been codified in many states. In California, where many right of publicity cases are filed, to maintain a cause of action for violation of the right of publicity a plaintiff must establish that the defendant appropriated the plaintiff’s name or likeness, without consent, to the defendant’s advantage, and caused injury to the plaintiff. See Hilton v. Hallmark Cards, 599 F.3d 894, 909, 92 USPQ2d 1178 (9th Cir. 2009) (78 PTCJ 565, 9/4/09).

The tension arises where a celebrity’s name or image is used in connection with a First Amendment-protected work. In response to concerns that the right of publicity could be used to restrain speech in violation of the First Amendment—including with respect to artistic works, parodies, and other protected speech—California courts have fashioned the transformative use test to assess the viability of a First Amendment preemption defense to a right of publicity claim. ²The transformative use test was adopted from the fair use analysis, which is a defense to claims of copyright infringement. If a work qualifies as transformative under this test, the use of a name or likeness in the work is protected under the First Amendment, and any right of publicity claim is therefore preempted.

In order to attain such protection, a work must satisfy one of the following two criteria: (1) the work in question adds significant creative elements so as to be transformed into something more than a mere celebrity likeness or imitation; or (2) the economic value of the defendant’s work does not derive primarily from the celebrity’s fame. See Comedy III Productions Inc. v. Gary Saderup Inc., 25 Cal. 4th 387, 58 USPQ2d 1823 (Cal. 2001).

This article analyzes several recent cases in which the transformative use test has been applied, and concludes that the transformative use test is inherently flawed, because it places the judge in the role of “art critic,” and requires the judge to determine whether a work is creative or why it is valuable—something which First Amendment jurisprudence forbids. This problem appears to be particularly acute in the video game context.

Transformative Use as Applied to Right of Publicity Claims

The California Supreme Court first established the transformative use test as a defense to right of publicity claims in Comedy III Productions Inc. v. Gary Saderup Inc., 25 Cal. 4th 387, 58 USPQ2d 1823 (Cal. 2001). In Comedy III, the court formulated “what is essentially a balancing test between the First Amendment and the right of publicity based on whether the work in question adds significant creative elements so as to be transformed into something more than a mere celebrity likeness or imitation.” Id. at 391.

In Comedy III, the defendant created a charcoal drawing of the Three Stooges, and sold lithographs and T-shirts bearing that image. Id. at 393. Although the depiction of the Three Stooges constituted expression under the First Amendment, the court found that “the marketability and economic value … derives primarily from the fame of the celebrities depicted,” not the artist’s creative endeavors. Id. at 410.

This determination, combined with the court’s inability to discern any “significant transformative or creative contribution,” led to a ruling that the work was not transformative, and that the right of publicity claim was not barred by the First Amendment. Id.

In an attempt to distinguish protectable artistic expression from those uses of a celebrity’s likeness that violate the right of publicity, the court noted that the right of publicity “prevent[s] others from misappropriating the economic value generated by the celebrity’s fame through the merchandising of the name, voice, signature, photograph, or likeness of the celebrity.” Id. at 404 (emphasis added). The court thus determined that the key to balancing the right of publicity with the First Amendment is whether the work is “transformative,” because a transformative work is “less likely to interfere with the economic interest protected by the right of publicity.” Id. at 405.

The court in Comedy III emphasized that the standard focuses primarily on a “quantitative” analysis, in that it requires a determination of “whether the literal and imitative or the creative elements predominate the work.” Id. at 407. However, the analysis includes a qualitative component as well, in that it also allows for a determination of whether “the value of the work … derive[s] primarily from the celebrity’s fame.” Id. (emphasis added).

The subjective nature of the transformative use test thus can be traced directly to this qualitative economic value judgment, which, as discussed below, should not bear on whether a work is protected under the First Amendment.

Application of the Transformative Use Test

The transformative use test, as set forth in Comedy III, has been applied in several instances. A classic example of transformative use is presented in Winter v. DC Comics, 30 Cal. 4th 881, 66 USPQ2d 1954 (Cal. 2003) (66 PTCJ 210, 6/13/03), which was decided shortly after Comedy III.

In Winter, the defendant created a comic book mini-series featuring the villains Johnny and Edgar Autumn, whose pale complexion and long white hair were reminiscent of the plaintiffs, Johnny and Edgar Winter. However, unlike the real-life Winter brothers, who were famous musicians, the Autumn brothers were “villainous half-worm, half-human[s].” Id. at 886.

The Autumn brothers, therefore, were not “conventional depictions” of the Winter brothers, but rather were “distorted for purposes of lampoon, parody, or caricature.” Id. at 479. Accordingly, the court found that the works were transformative, because the plaintiffs were not depicted literally, but were “merely part of the raw materials from which the comic books were synthesized.” Id.

Recognizing that the right of publicity centers on the economic value of the plaintiff’s likeness, and relying upon the standards set forth in Comedy III, the court in Winter supported its finding that the work was transformative by noting that the economic value derived from “fanciful, creative characters, not pictures of the Winter brothers.” Id. at 892. The court also noted that, as a general matter, the determination of whether a use is transformative can often be resolved as a matter of law “simply by viewing the work in question, and, if necessary, comparing it to an actual likeness of the person or persons portrayed.” Id. at 891-92.

In Kirby v. Sega of America, 144 Cal. App. 4th 47, 81 USPQ2d 1172 (Cal Ct. App. 2006) (73 PTCJ 77, 11/24/06), the defendant created a video game called “Space Channel 5,” which was set in outer space in the 25th century. The protagonist of this game was a young woman named Ulala, who worked as a news reporter, had pink hair, and wore futuristic outfits.

The game required Ulala to match the dance moves of dance-loving aliens to save planet Earth. Id. at 52. The plaintiff, on the other hand, was a professional singer and dancer, allegedly known for her unique fashion styles and saying the phrase “ooh la la” in some of her songs. Id. at 51.

In finding that the First Amendment provided a complete defense to the plaintiff’s claims, the court held that Ulala was not a literal depiction or mere imitation of the plaintiff, and that the video game’s setting of the 25th Century “added creative elements to create a new expression,” thus making the alleged use transformative. Id. at 59-60.

The court also resisted the plaintiff’s suggestions to focus on the predominant use or message conveyed by the work—i.e., the “predominant purpose” test applied in other jurisdictions—and noted that while the transformative use test “continues to shield celebrities from literal depictions or imitations for commercial gain by works which do not add significant new expression,” Id. at 58, “[t]he test simply requires the court to examine and compare the allegedly expressive work with the images of the plaintiff to discern if the defendant’s work contributes significantly distinctive and expressive content.” Id. at 61.

Where courts applying the transformative use test have refused to find the right of publicity claim preempted by the First Amendment, they generally have found that the defendant did nothing more than reproduce the plaintiff’s image or likeness in the same context or setting with which the public associates the plaintiff. For example, in Hilton v. Hallmark Cards, 599 F.3d 894, 92 USPQ2d 1178 (9th Cir. 2009) (78 PTCJ 565, 9/4/09), the defendant created a birthday card depicting Paris Hilton’s head super-imposed on a cartoon body of a waitress. The card utilized Hilton’s catch-phrase “That’s hot,” and alluded to her stint as a waitress on the television show The Simple Life.

After establishing that “the only question is whether the card is transformative,” the court declined to rule that the use was transformative as a matter of law, pointing out that the body on the card was that of a generic woman, and that the card portrayed Hilton as engaging in the same activities in which she engaged on The Simple Life. Id. at 910-11. In other words, this depiction of Hilton fell short of the transformative nature of the video game in Kirby. Id. at 911.

Subsequently, in Keller v. Electronic Arts Inc., 94 USPQ2d 1130 (N.D. Cal. 2010) (79 PTCJ 446, 2/19/10), the plaintiff—a former quarterback at Arizona State University—alleged that the defendant’s “NCAA Football” video game violated his right of publicity, because the quarterback for ASU in the game was virtually identical to plaintiff, (e.g., the virtual player had the same jersey number, height, weight, and home state as plaintiff.) Id. at *5. Contrasting this representation with “the transmogrification of the Winter brothers,” the court found no transformation of the plaintiff, but rather a mere depiction of the plaintiff as the quarterback for ASU in an identical setting to that with which the public associated him. Id.

Most recently, in No Doubt v. Activision Publishing Inc., 98 USPQ2d 1728 (Cal. Ct. App. 2011) (81 PTCJ 532, 2/25/11), the California Court of Appeals determined that the defendant’s portrayal of the plaintiffs in a video game was not transformative, and accordingly their right of publicity claim was not barred by the First Amendment. Id. at *1.

As with Keller, this case involved a video game in which the likenesses of the plaintiffs—the band No Doubt—were reproduced in a setting in which they would be found in real life (in this case performing rock music). The avatars of the plaintiffs were “painstakingly designed to mimic their likenesses” and remained “at all times immutable images of the real celebrity musicians.” Id. at *9.

The court held that the commercial value of the game was derived from conventionally portraying the plaintiffs (i.e., by reproducing the plaintiffs in the context in which the public would normally find them), and therefore the use was not transformative and did “not qualify the use of the likeness for First Amendment protection.” Id. at *10-11. ³This ruling is currently pending appeal. In so holding, the court discounted the fact that the plaintiffs’avatars could be made to play songs by other musical acts, or to perform with other musicians.

The Judge as Art Critic

The cases discussed above reveal an intrinsic problem with the application of the transformative use test in right of publicity cases: determining the source from which a creative work derives its value requires an inherently subjective analysis.

The problems associated with the subjective nature of the transformative use test are readily apparent in the majority and dissenting opinions of ETW Corp. v. Jireh Publishing Inc., 332 F.3d 915, 67 USPQ2d 1065 (6th Cir. 2003) (66 PTCJ 256, 6/27/03). ETW involved a painting commemorating Tiger Woods’s 1997 victory at the Masters golf tournament. The painting depicted three different views of Woods in the foreground, with the likenesses of other famous golfers in the background. Id. at 918.

Woods claimed that the work violated, among other things, his right of publicity. However, the court held that the work “consists of much more than a mere literal likeness of Woods,” and accordingly found in favor of the defendant. Id. at 936.

In so holding, the majority applied the transformative use test. In finding the painting transformative, the court noted that the defendant’s “work consists of a collage of images in addition to Woods’s image which are combined to describe, in artistic form, a historic event in sports history and to convey a message about the significance of Woods’s achievement in that event.” Id. at 938.

Reasoning that the artwork “communicates and celebrates the value our culture attaches” to historic sporting events and conveys the message that Woods will one day join the group of golf legends in the background, the majority concluded that the painting had “substantial informational and creative content which outweighs any adverse effect on [Woods’s] market,” and thus did not violate his right of publicity. Id. at 937-38.

In his dissenting opinion, Judge Eric L. Clay also applied the transformative use test, but reached the exact opposite conclusion, finding it “difficult to discern any appreciable transformative or creative contribution in Defendant’s prints”—which, like the use in Keller and No Doubt, depict the plaintiff in his usual setting (here, playing golf)—“so as to entitle them to First Amendment protection.” Id. at 959. According to the dissent, the prints only derived commercial value from “exploiting the fame and celebrity status that Woods has worked to achieve.” Id. at 960.

The two opinions in ETW illustrate the inherent subjectivity of applying the transformative use test to right-of-publicity cases (i.e., that the judge effectively becomes an art critic who must independently determine whether the value of the work comes from the artist’s creative expression or the celebrity’s fame, or whether the artist has been creative enough). In other words, the transformative use test, as it currently exists, allows cases to be determined based upon the individual artistic sensibilities of the judge, as opposed to an objective legal standard.

Such subjective value judgments have no place in First Amendment analysis because the First Amendment protects all speech, including speech that is inherently valueless (e.g., hate speech). See Comedy III, 25 Cal. 4th at 407. Moreover, copyright law, from which the transformative use test was co-opted, protects all “expression,” as objectively defined, not merely a subset of expression that has been determined to have value. See, e.g., Feist Publishing Inc. v. Rural Telephone Service Co. , 499 U.S. 340, 345, 18 USPQ2d 1275 (1991) (41 PTCJ 443, 3/28/91) (noting that copyright protects original works that possess “at least some minimal degree of creativity”).

Qualitative value judgments of this sort are reminiscent of the vague and unworkable “I know it when I see it” standard for identifying obscenity that was espoused by Justice Potter Stewart in Jacobellis v. Ohio, 378 U.S. 184 (1964).

The transformative use test thus creates an unpredictable and unworkable standard. When First Amendment protection depends on a court’s subjective determination about the work’s creativity or value, there is little predictability as to whether the judge will attribute the value of the work to the celebrity’s likeness or the artist’s creativity. This leaves artists without a clear guideline for avoiding liability for right of publicity violations.

The transformative use test is unreliable precisely because there are no clear criteria for what is actually “transformative.” For example, Clay made a convincing argument in his dissent in ETW that the painting was not a transformative use because its value derived primarily from Tiger Woods’s fame, and his famous victory. The majority opinion in ETW, on the other hand, attributed the value in the work to the artist’s creative blending of Woods with other famous golfers to convey a message of historical significance.

In addition to the subjectivity problem, the transformative use test also appears to favor certain mediums over others. Video games unquestionably are protected by the First Amendment. See Brown v. Entertainment Merchant’s Association, 131 S. Ct. 2729, 2733 (2011). Although the courts in No Doubt and Keller recognized this fact, they appear to have heavily discounted the medium’s expressive and transformative capacity.

Although the games at issue reproduced the plaintiffs in their “natural setting,” there are contextual elements of the video games that easily can be considered expressive, and indeed, transformative. In fact, the very elements that the No Doubt plaintiffs challenged—the fact that the game allowed band avatars to play the music of other bands, alongside other performers, or to even have a male voice emanate from a female avatar—are all forms of expression within the video game that go beyond a mere reproduction of a celebrity’s likeness.

In this regard, if a group of actors decided to re-enact a football game in which Keller had played, or created a fictionalized account of No Doubt playing a Rolling Stones cover or performing with Taylor Swift (both of which occur in the video game at issue), a court would almost certainly conclude that the First Amendment preempts a right of publicity challenge to the works at issue—notwithstanding the fact that those uses appear to be no more transformative than representations in video games.

Thus, the transformative use test proves inapt for reconciling the right of publicity with the First Amendment not only because it subjective, but also because it has the potential to discriminate against certain mediums of expression. Given its highly subjective nature, the transformative use test provides no practical guidance or insight into where the First Amendment must yield to the right of publicity.