In re: NCAA Student-Athlete Name & Likeness Licensing Litigation

U.S. District Court for the Northern District of California

Case Number: 4:09-cv-01967

On Thursday, June 21, 2013, a group of current and former NCAA athletes sought class action status from a California federal judge.  They allege that the NCAA violated anti-trust laws (as well as their right of publicity) by using their names and likenesses in television broadcasts and videogames without providing any form of compensation.  District Court Judge Claudia Wilken asked attorneys for the plaintiffs to, "disprove the NCAA's arguments that the players" had different levels of ability and fame which would create a conflict within the class.  Attorneys for the NCAA also alleged that class status could not be granted in regards to broadcasts because the broadcasts do not feature every athlete on a team's roster.

            Michael D. Hausfeld (of Hausfeld LLP) argued that the first argument was invalid because student athletes receive the same scholarships regardless of ability, and compensation from broadcasts could be distributed equally in the same manner.  Hausfeld stated, "[d]istributing revenue from the conveyance of image and likeness, would correlate to that fairness principle by maintaining the equality of all the athletes."  Furthermore, it would not be difficult to establish which athletes appear in the broadcasts because in other industries there are those who keep track of appearances.  Gregory Curtner (of Schiff Hardin), arguing on behalf of the NCAA, stated it would be an arduous task, and that, "[a]scertainability is a big issue and [the plaintiffs] have no solution for it."  Counsel for the players goes on to argue that the NCAA, by requiring players to participate as amateurs and prohibiting them from being compensated, for a, "horizontal agreement to not compete."

            The various lawsuits name the NCAA, game publisher EA Sports, and Collegiate Licensing Co. (a trademark licensing and marketing company).  Trial is currently scheduled for February 2014.  This case could be significant for EA because the NCAA players are seeking injunctive relief to prevent EA from continuing to make its NCAA series without providing compensation.  In the event that this happens, EA will need to decide whether to continue making its NCAA franchise without using the likenesses of current players to market the game, or start paying a new license fee.

            We will update accordingly as more details come up.

Antonick v. Electronic Arts, Inc.

United States District Court for the District of Northern California

Case No: 3:11-cv-01543

On Friday, June 21, 2013, a one-week trial culminated in a jury finding that Robin Antonick (the programmer for the original "Madden NFL" game released in the late 1980s) was not barred from suing for millions in royalties by the statute of limitations.

Back in 1988, Antonick was responsible for programming the first iteration of Electronic Arts Madden NFL series for the Apple II.  Antonick alleges that EA owes him royalties stemming from their Madden NFL game released on the Sega Genesis.  The jury, specifically, found that Antonick did not become aware of EA's alleged breach until 2009 at EA's 20th anniversary celebration of the franchise.  Whereas Antonick's version of the game took four years to make, multiple EA employees involved with the franchise reminisced how the Sega version only took six months to make, even though none of the lead developers had ever created a videogame before.  Antonick alleges that he then began to realize that there was no way the game could have been developed in that amount of time without relying on the source code he wrote.  Leonard Aragon, Antonick's attorney, goes on to allege that the Sega version of the game used a football field 80 yards wide, whereas a typical field is 53 yards wide.  This is significant because, in Antonick's original game, the field was 80 yards wide, and there is, "no reason to have it that size unless you take it from the previous game; [because] if you put [Antonick's] plays on a 53-yard field half the team would be off the field."  Electronic Arts alleges that Antonick could have discovered this information back in 2004 when the publisher was celebrating the franchise's 15th anniversary.

Trial is scheduled to being on July 1, 2013, to determine if, and to what extent, EA owes royalties to Antonick.  The verdict could be substantial.  Under the original contract, EA agreed to pay Antonick royalties on any works that are either derivative of the original 1988 game or any other works stemming from those derivative works.

We will continue to update as more information becomes available.

Hart v. Electronic Arts, Inc.

U.S. District Court, District of New Jersey

Case No: 3-09-cv-05990

           

This case was recently remanded to the United States District Court for the District of New Jersey by the Third Circuit Court of Appeals after the Court of Appeals held that the grant of summary judgment was in error and that further proceedings were necessary.  The case arises from Plaintiff Ryan Hart (individually and on behalf of all others similarly situated) alleging that Electronics Arts (EA) NCAA Football series of games violated his right of publicity by appropriating his likeness in NCAA Football 2004, 2005, and 2006.  Hart was a successful quarterback for Rutgers University from 2002 through the 2005 season, taking his team to their first Bowl game since 1978.  The case was originally dismissed after EA filed a motion for summary judgment; the district court held that EA NCAA games were protected under the First Amendment.

The Third Circuit, in determining that the District Court erred conducted a balancing test when coming to its decision to decide whether First Amendment rights superseded the right of publicity.  In conducting this analysis, the court looked to three tests: the predominant use test, the Rogers test, and the transformative use test.  The predominant use test maintains that, "If a product is being sold that predominantly exploits the commercial value of an individual's identity, that product should be held to violate the right of publicity and not be protected by the First Amendment."  The court did not, however, that if the predominant purpose is to comment on or about a celebrity (such as parody) more weight would be given to the expressive values.  The court ultimately declined this test stating that at best is was very subjective, but at worst is was arbitrary forcing judges to not only be, "impartial jurists" but also, "discerning art critics."  The court then turned to the Rogers Test from Rogers v. Grimaldi.  This test relies on a theory of trademark law, specifically false endorsement, and it holds that the use of celebrity likeness is acceptable as long as it is not simply, "a disguised commercial advertisement for the sale of goods and services".  The court also rejected this test stating that it would be unwise to determine that Hart was unable to retain his right of publicity because his likeness was being used in the very same arena from which it was derived.  The court reasoned that it made sense that any use of Hart's likeness would be in a football setting since that is where his celebrity came from.  After rejecting the predominant use and Rogers test, the court adopted the transformative use test.  This test requires that an artist adopting the likeness of another must contribute something more than a "merely trivial" variation to be protected under the First Amendment.  However, the threshold to meet this test is rather low, a work is transformative if it adds "new expression".  That alone is sufficient to fall within the boundaries of the transformative use test.  Ultimately, the Court of Appeals decided that NCAA Football was not sufficiently transformative to attain First Amendment protection because it adds nothing creative to Hart's likeness.  EA argued that all player avatars could be customized, therefore satisfying the transformation requirement.  However, the court held that the main appeal of Hart's likeness was maintaining it as is so that fans could play as him.  Furthermore, any customization was not a transformation of Hart's likeness allowing the use, but was instead a new creative product that caused the use to cease to exist. 

This case is still pending in the District Court of New Jersey after the Third Circuit's opinion was filed on May 21, 2013.  If, after further proceedings, the District Court determines that Hart's right to publicity was affected, it could have a substantial effect on EA NCAA series.  Because NCAA athletes cannot receive compensation that in any way relates to their athleticism, it is unlikely that players would sign away their likenesses to EA as there is little benefit to be gained.  This would make the game series a potentially huge liability for the company, putting them in a position that would require they either risk litigation or lose the distinctiveness of the athletes that fans of the series purchase the game for.

We will continue to monitor this case and provide any relevant updates as they become available.