Is it a right of publicity violation or copyright infringement?

LEGAL ENTERTAINMENT

When dealing with the likeness of athletes, a third party creating goods for consumers must consider the different laws that could be violated. As I have discussed before, a violation of the right of publicity is a difficult claim to prove.

California law is very specific about what is considered a violation and what would be preempted by federal law. Specifically, California law prohibits someone from knowingly using a person's likeness on or in connection with goods for the purpose of advertising or selling of the goods without consent. The courts look for a direct connection between the use and the commercial aspect of the goods. The federal law most connected to the types of goods created within these right of publicity cases is the Copyright Act. This is because the likeness of the athlete is embedded in an arguably protected creative work. However, as current litigation has shown, the line between what is a right of publicity claim and a copyright claim can be difficult to identify.

To decide whether a claim is preempted by the Copyright Act, the court looks to a two-part preemption test. First, the court will decide whether the subject matter of the plaintiff's state claim falls within the subject matter of the Copyright Act. To fall under the latter, the contested subject matter must be an original work of authorship fixed in a tangible medium of expression. Second, the court must determine whether the rights asserted under state law are equivalent to the exclusive rights contained in Section 106 of the Copyright Act: the right to reproduce, display, distribute, create derivative works, and perform the protected subject matter.

In Davis v. Electronic Arts, four former NFL players are suing EA for the use of their likeness in the "Madden NFL" video games. This case has been ongoing for almost eight years and is still in the beginning phases -- the latest decision released in December of last year was for a second motion to dismiss. The motion was an attempt to have the case dismissed as preempted by the Copyright Act. The defendants cited a previous NFL case where the defendants were sued for the use of the players likeness in photographs that were licensed and distributed to the public by the defendants. In that case, the court found that the subject matter was the fixed copyrighted image of the players that was being distributed for personal use. As the image and the likeness instilled in that image was protected by copyright, the court found that this claim was preempted by federal copyright as the claim sought to hold the copyright holder accountable for exercising his exclusive rights granted by the Copyright Act.

In the current litigation against EA, the court denied the motion to dismiss, finding that the use of the players in the video game was not the subject matter of the Copyright Act. The court differentiated the former decision mentioned above with the current litigation focusing on the element of fixation. For the subject matter to be "fixed" as defined by the Copyright Act, the work must be fixed so that is can be perceived, reproduced or otherwise communicated for a period longer than a transitory duration either directly or by a machine.

The court did not deny the copyrightability of the entire game as a whole, but looked closer at the specific content that is the base of the litigation which is the actual player game play. The game play itself is "dynamic, interactive, variable, and in the hands of the consumer" of the game. The plaintiffs allege that the likeness comes from the performance of the avatars in the game mirroring the capabilities of the players when they were actively playing for the NFL. Since the game play is variable rather than fixed the court found that this subject matter was not fixed in the copyrightable content thus not preempted by the Copyright Act.

The court further distinguished this case from a 2016 decision in Dryer v. NFL, where the 8th U.S. Circuit Court of Appeals confirmed the lower court decision that the state claims where preempted by the Copyright Act. In that case, the plaintiffs brought a right of publicity claim against the NFL for films of historic game footage that displayed the performances of the players. The court found that the performances were fixed in the video and could not be altered, which is in contrast to the "Madden" video games. Since it is well recognized that recordings of such live footage are protected by copyright and the content is fixed, the rights of publicity claims were preempted by federal law.

The decision in Davis provides further reinforcement to the protection of the players' likeness in the case of video games. This final outcome of this case could give the players some leverage to insist on agreements and licensing fees for the use of their likeness in these well-known and popular video games. Video game companies need to be a lot more careful in the content they use for each game and ensure that they acquire releases for the use of the players likeness. This case is an important step towards players having further control over their likeness as this is one of their main sources of income that relates to their chosen profession.