By: Cameron Verbeke
A longstanding feud between the NCAA and its student-athletes may finally be coming to an end. Recently, the NCAA Board of Governors’ voted to recommend that student-athletes be allowed compensation for use of their name and likeness.  This battle has frequently come through litigation in various courts. The crux of these disputes often centers on whether use of a student-athlete’s likeness without their consent violations the student-athlete’s right of publicity. 
The right of publicity is primarily a creature of state law – be it by statute or common law. The right does not fall neatly within the purview of any one area of intellectual property law. Courts have looked to differing areas of intellectual property law in order to define and analyze the scope of one’s right of publicity. Some have applied the Transformative Use Test originating from copyright law. Others have applied the Rogers Test derived from trademark law. Finally, some courts have foregone applying intellectual property doctrines entirely. In order to fully understand what is at issue in litigation like that mention above, it is important to look at how various intellectual property considerations have influenced the right of publicity’s development.
Origins of the Right to Publicity
The right of publicity developed as an offshoot of another common law right – the right of privacy. The right of privacy in the United States itself originated out of the 1890 Harvard Law Review publication authored by Samuel Warren and future Supreme Court Justice Louis Brandeis.  Warren and Brandeis likened the right to privacy as an intangible property right akin to all others afforded protection through intellectual property laws.  Following Warren and Brandeis’ publication, the right to privacy continued to develop throughout the courts for decades. In 1939, the American Law Institute recognized the right to privacy in the First Restatement of Torts. Some courts began to recognize that there was a distinction between one’s right to protect his private reputation and one’s right to profit off his public image.  Seven years after Haelan, William Prosser wrote that the right to privacy is composed of not two, but four subtorts.  One of the four Prosser named was the right to protection against appropriation of one’s likeness.  Years later the American Law Institute adopted these four subcategories in the Second Restatement (on which Prosser served as Reporter). 
The Supreme Court adopted the distinction between privacy and publicity in Zacchini v. Scripps-Howard Broadcasting Co..  Zacchini involved a plaintiff seeking damages after a broadcasting company taped and broadcasted the entirety of the plaintiff’s “human cannonball act” on television.  The Court balanced two conflicting interests: (1) the plaintiffs commercial interest in profiting from his work, and (2) the broadcasting company’s first amendment rights.  The Court noted that it was in the public interest to not only compensate performers for their prior efforts, but also, to incentivize future works by ensuring said compensation.  The Court held that simply compensating plaintiff for his work would not deprive the media, nor the public, of anything.  As of 2019, Zacchini remains the only time the Supreme Court elaborated on the right of publicity.
While the right to publicity originates in the common law it has been adopted by statute in over twenty states.  The right bears similarities to rights protected by both trademarks and copyrights, yet no one area of intellectual property law adequately covers the right entirely.  This has led courts to appropriate tests from other areas of intellectual property law with little consistency. The fact that there is no federal statute which protects the right to publicity only furthers the inconsistencies among courts in how to approach the right. Perhaps the most significant consequence of this inconsistency in definitions is that it led to inconsistencies in how the right should be analyzed against the First Amendment.
The Supreme Court has not touched on the right of publicity since 1977, but the right has developed in various state and federal courts. Three primary approaches to the right have emerged.
The Rogers Test
The Rogers Test originated out of trademark law. The Second Circuit first articulated the test in the eponymous Rogers v. Grimaldi.  Rogers dealt with the issue of whether filmmakers violated Ginger Rogers’ rights under the Lanham Act in producing a film entitled “Fred and Ginger”.  In addition to appropriating Ginger Rogers’ name in the title, the film focused on fictional Italian cabaret stars who imitated Rogers in their act.  The film focused on the reunion of two Italian cabaret performers who were known for their imitation of Fred Astaire and Ginger Rogers.  Ultimately, the court found for the filmmakers.  The Second Circuit held that the dispositive inquiry was whether the title had any artistic relevance to the underlying work.  Rogers brought a right of publicity claim in addition to the Lanham Act claim and the Second Circuit found that the balance favored the First Amendment’s right of expression.  The court held that the use of Rogers’ likeness did not violate her publicity rights, as the use had a fair amount of artistic relevance to the film.  Though the Second Circuit was restrained in applying its test to the right of publicity, other Circuits have expanded on it.
In Matthews v. Wozencraft , the Fifth Circuit applied Rogers to a right to publicity claim against an author who incorporated portions of the plaintiff’s life into her novel. Plaintiff was an undercover narcotics officer who was arrested and imprisoned for false testimony and other acts of corruption.  Plaintiff’s trial was a highly publicized event.  While defendant’s novel was a work of fiction it incorporated many events from the plaintiff’s trial in it.  The Fifth Circuit denied plaintiff relief, focusing largely on the public nature of the plaintiff’s image.  The court concluded that because plaintiff’s name and appearance were open to public observation through a highly publicized trial, plaintiff could not claim protection in either.  The court’s analysis in Matthews strayed from the typical Rogers analysis in that it centered more on how public an individual’s image was rather than its artistic relevance to the underlying work.
In Parks v. LaFace Records , the Sixth Circuit considered whether the defendants (Outkast) violated Rosa Park’s right of publicity by using Park’s name in the title of their song: “Rosa Parks”. The district court, applying Rogers, dismissed the case on summary judgement finding there was no issue of material fact as to the artistic relevance of the use.  While the Sixth Circuit agreed with the district court’s use of the Rogers Test, they disagreed that there was no issue of material fact.  Thus, the Sixth Circuit remanded the case to the district court for further application of the Rogers test. 
In addition to the Fifth and Sixth Circuits, the American Law Institute adopted application of Rogers to right of publicity cases in the Third Restatement. 
Even though the Rogers test has been applied to right of publicity cases by two circuits, it is only one of the tests courts have turned to.
The Transformative Use Test
The Transformative Use Test originated out of copyright law. The idea of a “transformative use” developed out of the common law and was eventually codified in the Copyright Act of 1976.  Section 107 of the Copyright Act lists the four factors a defendant must show for a defense of Fair Use.  The first factor is “the purpose and character of the use”.  In Campbell , Justice Souter stated that the purpose and character of the use must be “transformative” in order to support a finding of fair use.  Use is transformative when it adds something rather than merely superseding the original work.  While Justice Souter did not go so far as to say that a transformative use is presumptively fair, a transformative use will put less weight on the other three Section 107 factors.  Encouraging transformative uses of prior works is right in line with goal of copyright law: to promote science and the arts.  The idea of a transformative use developed in a purely copyright-based context, but that has not stopped courts from applying it to other areas of the law, such as the right to privacy.
The California Court of Appeals has twice applied the transformative use test to right of publicity cases, both of which dealt with video games specifically. In Kirby v. Sega of America, Inc. , the plaintiff alleged the defendant misappropriated the use of her likeness in their video game.  The plaintiff, a singer and dancer, alleged that the main character in defendant’s game shared many of her mannerisms and other features constituting her likeness.  The California Court of Appeals rephrased the transformative test; considering whether the use of the likeness was one of the raw materials synthesized in the original work or if the imitation was the very substance of the work in question.  In finding the defendant’s use was transformative, the court noted a number of differences including: height, physique, dance moves, and the setting of the game. 
In No Doubt v. Activision , the band No Doubt alleged the defendant violated their publicity rights in their game Band Hero.  In the game, players could choose from a number of predesigned avatars including avatars that imitated members of No Doubt.  The court found the defendant’s use of No Doubt’s likeness was not transformative in that the use was merely a digital recreation of the band members’ likeness.  Moreover, players did not have the ability to change the appearance of the avatars.  The court did not say whether editing the avatars would constitute a transformative use. The court further distinguished the defendant’s use from the use in Kirby in that the recreation of No Doubt members are in the very setting that makes them famous (music), as opposed to a fanciful adventure like in Kirby. 
The California Court of Appeals is not the only court to apply the Transformative Use Test for right of publicity cases related to video games. In fact, both the Third Circuit and the Ninth Circuit applied the test in cases specifically related to use of student-athletes’ likeness in the NCAA Football games. The Third Circuit did so in Hart v. Electronic Arts  , while the Ninth Circuit did so in Keller v. Electronic Arts  .
Many courts have applied the Transformative Use Test. Yet, it is still only the second of three primary tests used in right of publicity cases.
The Predominant Use Test
In Doe v. TCI Cablevision  , former NHL player “Tony Twist” alleged the defendant violated his right of publicity in using the plaintiff’s name and likeness for a villain in their comic books.  The Supreme Court of Missouri first considered applying the Third Restatement’s test (Rogers).  The court believed the Rogers test to be too simplistic in that it failed to account for works that have both commercial and expressive value.  Specifically, the court did not think it was practical that a use could only be actionable when it was solely commercial and otherwise unrelated to the person whose likeness the defendant used. The court then turned to the Transformative Use Test. The court similarly dismissed the Transformative Use Test finding that it would not provide a cause of action for a solely commercial use of a person’s likeness.  Finding neither test satisfactory, the court turned to legal commentary for a solution – finding it from a Loyola (California) Law Review note. 
The Predominant Use Test specifically weighs the commercial value and the expressive value of a given use.  Any use that predominantly exploits the commercial value of a person’s likeness is not granted protection under the First Amendment.  Conversely, any use that is predominantly expressive is protected.  The court then found that the defendants’ use of Tony Twist’s likeness was predominantly commercial and therefore the use was not protected by the First Amendment. 
The Supreme Court of Missouri lauded the Predominant Use Test for its realism in recognizing that any given work has both commercial and expressive value. Nevertheless, to this date it is the only court to adopt the Predominant Use Test for right of publicity cases.
While the NCAA’s battle over the right of publicity might be coming to an end, the battle within the judicial system over how to analyze the right will likely continue for the foreseeable future.
NCAA board supports athlete compensation rule change (Apr. 29, 2020), https://247sports.com/Article/College-football-NCAA-athlete-compensation-rule-change-Mark-Emmert–146612206/.
See O’Bannon v. National Collegiate Athletic Association, 7 F.Supp.3d 955, 965 (N.D. Cal. 2014), Keller v. Electronic Arts, 724 F.3d 1268 (9th Cir. 2013), and Hart v. Electronic Arts, 717 F.3d 141 (3d Cir. 2013).
See Samuel D. Warren & Louis D. Brandeis, The Right to Privacy, 4 Harv. L. Rev. (1890).
Id. at 194-95 (“From corporeal property arose the incorporeal rights issuing out of it; and then there opened the wide realm of intangible property, in the products and processes of the mind, as works of literature and art, goodwill, trade secrets, and trademarks.”).
Restatement (First) of Torts §867 (1939) (“A person who unreasonably and seriously interferes with another’s interest in not having his affairs known to others or his likeness exhibited to the public is liable to the other.”).
Haelan Laboratories, Inc. v. Topps Chewing Gum, Inc. , 202 F.2d 866, 868 (1953) (“We think that, in addition to and independent of that right to privacy… a man has a right in the publicity value of his photograph, i.e. the right to grant the exclusive privilege of publishing his picture, and that such a grant may validly be made ‘in gross,’ i.e.. without an accompanying transfer of a business or of anything else.”).
William L. Prosser, Privacy, 48 CALIF 383, 389 (1960).
Restatement (Second) of Torts §652(B)-(E) (1977).
433 U.S. 562, 573 (1977) (“In ‘false light’ cases the only way to protect the interest involved is to attempt to minimize publication of the damaging matter, while in ‘right of publicity’ cases the only question is who gets to do the publishing. An entertainer such as petitioner usually has no objection to the widespread publication of his act as long as he gets the commercial benefit of such publication.”).
Id. at 562.
Id. at 578.
J. Thomas McCarthy & Roger E. Schechter, The Rights of Publicity and Privacy §6:4 (2d ed. 2019).
875 F.2d 994, 999 (2nd Cir. 1989).
Id. at 996.
Id. at 996-97.
Id. at 996-97.
Id. at 1001.
Id. at 999 (“In the context of allegedly misleading titles using a celebrity’s name, that balance will normally not support application of the [Lanham] Act unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.”).
Id. at 1004.
Id. at 1004-05.
15 F.3d 432, 435 (5th Cir. 1994).
Id. at 439.
Id. at 436.
Id. at 439.
329 F.3d 437 (6th Cir. 2003).
Id. at 444.
Id. at 458.
Id. at 461.
Restatement (Third) of Unfair Competition §47 (1995).
Campbell v. Acuff-Rose Music, Inc. , 510 U.S. 569, 578 (1994).
17 U.S.C. § 107 (2019).
Id. at § 107(1).
Campbell, 510 U.S.
Id. at 578-79.
Id. at 579 (“The central purpose of this investigation, is to see, in Justice Story’s words, whether the new work merely ‘supersede[s] the objects” of the original creation… or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is ‘transformative.’”).
144 Cal.App.4th 47 (Cal. Ct. App. 2006).
Id. at 50-53.
Id. at 58.
Id. at 59.
192 Cal.App.4th 1018 (Cal. Ct. App 2011).
Id. at 1022.
Id. at 1023-24.
Id. at 1033.
Id. (“The game does not permit players to alter the No Doubt avatars in any respect; they remain at all times immutable images of the real celebrity musicians, in stark contrast to the ‘fanciful creative characters’ in Winter and Kirby.”).
Id. at 1034.
Hart v. Electronic Arts, 717 F.3d 141 (3d Cir. 2013).
Keller v. Electronic Arts, 724 F.3d 1268 (9th Cir. 2013).
110 S.W.3d 363 (Mo. 2003).
Id. at 366-67.
Id. at 373.
Id. at 374.