By Sebastien Nguyen on August 21, 2020.

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Introduction

Most big-name athletes in the National Basketball Association (“NBA”) sign shoe deals, have endorsement partners, and advertise products. In fact, these players sometimes receive more income from these sources than from playing in the NBA. Lebron James, for example, is one of the most prominent professional basketball players in the world. In 2018, Lebron agreed to a four-year, $154 million contract to play for the Los Angeles Lakers.[1] However, the salary he earned from the team is a fraction of the income he receives from companies using his name and likeness.[2]

One famous example of Lebron’s supplemental income is his one-billion-dollar lifetime endorsement deal with Nike.[3]Lebron has also signed with many other endorsement partners, including Coca-Cola and Blaze Pizza.[4] These companies contract with Lebron to endorse their products, hoping for better advertisement. Because these companies are willing to pay Lebron a substantial amount of money for his association with their products, it is clear there is a high commercial value attached to Lebron’s name. Other than the fact that Lebron is arguably the greatest player in the history of the NBA, he commands 62.3 million followers on Instagram and 45.7 million followers on Twitter.[5] Companies tap into this large social media following by associating Lebron’s name with their products.

In addition to Nike’s endorsement,[6] Lebron James also endorses video games produced by 2k Sports.[7] 2k Sports developed the NBA 2k Series[8] and published it for a wide variety of gaming formats over time, such as the PlayStation and Xbox series.[9] The NBA 2k series contains accurate depictions of NBA players, ranging from their virtual face to their signature playstyle, recreated for the gaming format. This begs the question: Since this game mimics the NBA as a whole, does 2k Sports have to license each athlete’s name and likeness before being able to publish the 2k series? Generally, the answer is a simple yes because the right of publicity protects against the unauthorized use of a person’s name or likeness for commercial purposes.[10]However, the litigation behind the right becomes complicated with the assertion of the First Amendment as an affirmative defense.

This Article discusses the right of publicity and how it came to be under the common law. Further, this Article analyzes the issue of the First Amendment as applied to the right of publicity, focusing on Comedy III Productions, Inc. v. Gary Saderup, Inc.,[11] the case in which the Court introduced the transformative use factor of the Copyright Fair Use Doctrine. Finally, this Article argues that Comedy III and the transformative use test should be applied through a holistic approach.

I. Why the Right of Publicity Exists

The right of publicity exists due to many underlying rights and causes of action, including privacy rights, property rights, unfair competition, and consumer protectionism.[12] Privacy rights include the tort of misappropriation via the unauthorized appropriation of name or likeness.[13] This privacy right is one of the main reasons why the right of publicity exists.

In 1977, the Supreme Court viewed the right of publicity as a quasi-intellectual property right in Zacchini v. Scripps-Howard Broadcasting Co.[14] The Supreme Court held that a television station had to compensate Zacchini for showing his human cannonball act on air.[15] The Court provided two property-based justifications as to why the right of publicity exists and should be protected.[16] The first is an incentive theory, where the Court noted that “the protection provides an economic incentive for him to make the investment required to produce a performance of interest to the public.”[17] This theory reasons that the right of publicity should be protected, so individuals are economically motivated to produce and invest in more content. The second theory is the natural rights theory, where the “act is the product of petitioner’s own talents and energy, the end result of much time, effort and expense.”[18] This Lockean theory is based on the idea that individuals should be entitled to the fruits of their labor.

Moreover, the right of publicity exists to prevent individuals or entities from unjustly enriching themselves through the use of another’s celebrity commercial value.[19] The right of publicity can be seen as a form of consumer protectionism because it prevents confusion as to the source of a product.[20] Much like trademarks, the right of publicity prevents companies from using athletes to endorse their products without the athletes’ consent. For example, unwanted associations can damage a celebrity’s reputation if the product is defective. With the rise of social media, the importance of the right of publicity is evidenced by athletes and celebrities having tremendous impact on what products the public purchase and consume.

II. Clash Between the Right of Publicity and the First Amendment

The First Amendment is an affirmative defense to a right of publicity claim.[21] In Comedy III Productions, Inc. v. Gary Saderup, Inc., the Supreme Court of California held that an artist may raise the First Amendment as an affirmative defense if the work contains significant transformative elements such that the value of the work does not derive primarily from the celebrity’s fame.[22]

The plaintiff Comedy III Productions (“Comedy”) brought suit against Gary Saderup (“Saderup”) for violating section 3344.1 of the Civil Code.[23] Section 3344.1 states that “[a]ny person who uses a deceased personality’s name, voice, signature, photograph, or likeness, in any manner, on or in products . . . shall be liable for any damages sustained by the person or persons injured as a result thereof.”[24] Comedy owned the rights to The Three Stooges, who were deceased at the time of the litigation.[25] Saderup was an artist who sold unauthorized charcoal drawings of celebrities, including The Three Stooges.[26]

As a defense, Saderup contended that the enforcement of the lower court’s judgment against him violated his right of free speech and expression under the First Amendment.[27] The Court agreed that Saderup’s work was expressive and was eligible to receive the full extent of First Amendment protections despite being expressed as a nonverbal picture on a shirt.[28]

To determine whether Saderup’s work qualified for First Amendment protections, the Court analyzed a factor of the Fair Use Doctrine: whether the new work is transformative.[29] The Court noted that if the work contains significant transformative elements, it is less likely to interfere with the economic interest that the right of publicity protects.[30] However, the Court held that Saderup’s work was not sufficiently transformative because the goal of his work was to create a literal depiction of The Three Stooges to exploit their fame.[31] Furthermore, the economic value of Saderup’s work derived primarily from the fame of the celebrities, rather than Saderup’s artistic drawing abilities.[32]

III. Critique of the Transformative Use Test as Applied

In Comedy III, the Court held a work is protected by the First Amendment if the new work is significantly transformative or the value does not primarily derive from the celebrity’s fame.[33] The Court held that Saderup’s work was not transformative because it was literal.[34] However, there exists a non-frivolous argument that creating charcoal based, hand-drawn depictions of celebrities on shirts is a transformative use. Such depictions are different from a photograph printed onto a shirt, which is a clearer cut non-transformative use that does not require any creativity. Here, the charcoal drawings arguably constitute some transformative use of the portrait of The Three Stooges.

Saderup argued that protecting parodies but not reverential portraits of celebrities is nonsensical.[35] The Court refused to express a value judgement or preference for one type of depiction over another.[36] However, it can be argued that the Court did in fact express a preferential treatment of parodies over Saderup’s work because their decision was mainly influenced by Saderup’s identical and literal depiction of the Three Stooges.[37] Had Saderup added comical aspects to his drawing, the Court may have ruled in his favor. This decision exposes the weaknesses of the transformative use test due to the subjectivity involved in determining whether a work is transformative.

A. Comedy III as Applied to Sports Video Games

Despite Comedy III’s holding that literal depictions do not sufficiently go beyond the commercial exploitation of the celebrity’s image, I argue that sports video games do in fact go beyond this threshold, as it conveys a message of either technological advancement in the realm of video games or is a virtual recreation of a human activity.

Saderup’s drawings at issue in Comedy III appear to share a factual relationship to the sports video game context because most sports video games are literal depictions of athletes and their famous playstyles. For example, the NBA 2k series derives its value primarily from each athlete’s fame. However, there is arguably a strong distinction between Saderup’s work and the 2k series when analyzing transformative use. The 2k series is a video game, meaning there is significant behind-the-scenes work required to develop the game as opposed to the work required by Saderup in drawing celebrities. For example, the 2k series requires the creative and technical work of programmers, graphic designers, artists, and developers, which are all factors that should be considered under the transformative use test. However, courts fail to address the technical aspects behind sports video games and take the game at face value when determining whether it is transformative. In consequence, sports video game developers are unable to assert a valid First Amendment defense. But, if courts were to adopt a more holistic approach, considering the extensive work that goes into creating the game, it would be more likely that a court holds that sports video games are significant transformative works.

Conclusion

The import of the right of publicity is its protection of an individual’s right to exploit their commercial value. However, this right has consistently clashed with the First Amendment and courts have struggled to adequately apply the transformative use test, especially to sports video games. This failure not only stems from courts pushing for an objective test on a highly subjective analysis, but also from the failure to consider other factors such as the technical aspects of game development.