United States: Free Expression? The Limits Of Personality Rights

Cases brought under US state right of publicity laws often draw on concepts in trademark and copyright law. Roxana Sullivan of Dennemeyer & Associates explains more.

The right of publicity, also called personality rights, prevents the unauthorised commercial use of a person's likeness, name, or other recognisable aspect of his or her persona. As a result, it gives an individual the exclusive right to license the use of his or her identity for commercial gain. In the US, state law governs the right of publicity and only about half of the states have specific right of publicity statutes.

US courts have a long history of reviewing right of publicity cases in a variety of media, and over the years they have applied a variety of tests to balance publicity rights with the First Amendment (right of free speech). The only Supreme Court case to address that balance is Zacchini, which involved appropriation of the 'Human Cannonball' act created by the daredevil plaintiff. A news programme broadcast the entirety of Zacchini's performance, thereby stripping him of the economic value that lay in it.

Over the years, right of publicity cases have extended beyond traditional media such as television, advertising, books, or comics. A more recent group of cases focusing on the use of plaintiffs' likeness in video games has shifted right of publicity case law and the balancing test that courts apply.

This article will focus on the most recent three cases dealing with athletes depicted in sports video games. These cases, brought against Electronic Arts (EA) for allegedly violating the athletes' right of publicity, have pushed and developed the balancing tests that courts use in such cases.

Brown v EA

In Brown v EA, from July 31, 2013, National Football League (NFL) great Jim Brown asserted that EA used his likeness in several versions of its popular video game Madden NFL. Brown, as a retired player, was not covered by the licensing agreements EA had signed with the NFL and the NFL Players Association, and as a result did not receive compensation for the use of his likeness. Brown did not assert his right of publicity; instead, he asserted Lanham Act trademark claims.

The US Court of Appeals for the Ninth Circuit applied the 'Rogers' test. Under this test, liability will not be found under the Lanham Act "unless the [use of the trademark or other identifying material] has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the [use of trademark or other identifying material] explicitly misleads as to the source or the content of the work".

This test was first established in the case of Rogers v Grimaldi, which the US Court of Appeals for the Second Circuit ruled on in 1989. Ginger Rogers, the late actress, filed suit against the producers and distributors of Ginger and Fred, a film that allegedly infringed her right of publicity and confused consumers, in violation of the Lanham Act. Despite its title, the movie was not about either Rogers or late actor Fred Astaire.

The court dismissed the claim because the title clearly related to the content of the movie and was not a disguised advertisement for the sale of goods and services or a collateral commercial product.

In Brown, the ninth circuit held that because video games were expressive works, the district court correctly applied the Rogers test. Applying this test, the court concluded that Brown's likeness was artistically relevant to the games and that there were no facts to support the claim that EA explicitly misled consumers about Brown's involvement in the games. The court reasoned that the public interest in free expression outweighed the public interest in avoiding consumer confusion.

The two cases that came after the Brown decision applied a different analysis because they were based on rights of publicity instead of the Lanham Act. The courts in these college sports cases applied the transformative use test instead of the author-friendly Rogers test.

Hart v EA

The first such case was Hart v EA, decided by the US Court of Appeals for the Third Circuit in May 2013, when Ryan Hart sued EA for allegedly violating his right of publicity under New Jersey law. Hart was a quarterback at Rutgers University.

EA's popular NCAA Football video game featured a Rutgers quarterback with the same number, same height, weight, throwing distance, and physical appearance as Hart in its 2006 version of the game. Because of National Collegiate Athletic Association (NCAA) rules governing college players, EA did not sign any licensing deals with any college players.

In this case, the Third Circuit chose to apply the transformative use test, which is rooted in copyright law. Under this test, a court examines "whether the product containing a celebrity's likeness is so transformed that it has become primarily the defendant's own expression rather than the celebrity's likeness".

This test finds its roots in the Comedy III Productions v Gary Saderup case, which looked at a defendant's unadorned drawings of the comedy act The Three Stooges and whether those drawings manifested the artist's skill and talent or whether they exploited the plaintiff's rights in order to achieve fame.

Applying the transformative use test to the facts in Hart, the court concluded that EA failed the test because the digital Hart was doing what the actual Hart did—that is, he played college football. In an analysis similar to the one applied in another video game case, No Doubt v Activision, the court ruled that while the game allowed users to literally transform (ie, modify the Hart avatar), that was insufficient to satisfy the transformative use test.

Keller v EA

The second college sports case was Keller v EA, ruled on in July 2013 by the US Court of Appeals for the Ninth Circuit. In a case very similar to Hart, Samuel Keller accused EA of violating his right of publicity under California Civil Code 3344 and California common law by using his likeness as part of the NCAA Football video game series.

The ninth circuit also applied the transformative use test to balance Keller's right of publicity with EA's First Amendment rights. Under this test, the court held that EA's use did not qualify for First Amendment protection as a matter of law because it literally recreated Keller "in the very setting in which he had achieved renown".

Based on the EA cases, it seems that courts may have shifted towards the plaintiffs and against the defendants in video game disputes. However, those cases also presented sympathetic plaintiffs, ones who had worked hard to become excellent athletes but were not compensated under the NCAA student-athlete system. The growing criticism of that system for allegedly exploiting student athletes may have created a bad environment for EA's defence.

It will be interesting to see whether courts will revert to being more sympathetic to authors when the plaintiffs are less sympathetic, or as more video games come over the horizon.

This article was originally published in World Intellectual Property Review Annual 2015 and on the worldipreview website.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

*** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.