Intellectual Property Report

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If It's Sort Of In The Game, Is It In The Game?:1 New Complaint Challenges Uncompensated Use Of Video Game Virtual Athlete Representations

Jeffrey Sullivan

Artists in the modern era have debated at almost endless length the issue of whether art should serve a purely representational, or a more broadly figurative, purpose.

Today’s art scene contains no answers to this question. Some artists continue to espouse the virtues of abstract or expressionist modes of portrayal. Others have advocated hyper-realism.

But those who paint on a commercial, digital canvas have largely fallen into the latter camp. Video game auteurs have, as technology has increasingly enabled them to, opted for a hyper-realistic rendering of the subjects/participants of their games, including games modeled on real world sports. Commercial viability for a video game no longer equates with the representation of a quarterback as a red LED dash, as it did in the days of Mattel/Coleco’s Electronic Quarterback. Nor would the eight-bit renderings of red and blue blobs as representative portrayals of New York Giants linebacker Lawrence Taylor or San Francisco 49ers quarterback Joe Montana, so successful in the canonical Tecmo Bowl series of games for the Nintendo NES, prove likely to attract today’s increasingly-demanding gamer population.

Fans of sports-themed video games today are also generally knowledgeable fans of the underlying sports and their stars and want to see games populated by the actual players of actual teams. Early moves toward personalizing the sports video game market included branding by an individual associated with the sport, who would license his own name to games that still used comparatively generic, fictitious or unrecognizable individual players. Examples in this genre are the early versions of the highly successful, perennial series of football-themed games sponsored by former National Football League coach John Madden or the blockbuster boxing arcade game Mike Tyson’s Punch-Out.

But none of these early personality-branded sports games contained realistic portrayals of actual athletes. For instance, with the exception of Mr. Tyson, the opponents in Punch-Out are cartoonish characters bearing names such as Piston Honda and King Hippo. Nor did anything in the game as implemented come close to conveying what the result of actually being “punched out” by Mr. Tyson in his prime would look like.

Today’s game designers and consumers demand, instead, a sports game experience that is as close to the real world, and real players, as possible. They will pay more for a game that meets this objective.

Game manufacturers have largely succeeded in delivering on this demand. For instance, a large number of professional league-licensed video games contain playable teams and characters whose names, images, statistics and even play abilities correspond with a great degree of accuracy to their real-world counterparts in the National Football League, National Basketball Association and Major League Baseball. These realistic portrayals not only help sell the games in their own right; they also lend an evergreen quality to the game company’s game franchise, as frequent player movements from team to team and player career and ability progressions from year to year provide a constant incentive for gamers to buy each season’s new installment of the series.

It would seem that everyone is a winner in this scenario: the gamers need never leave the basement for want of new sports titles; the leagues and players’ unions, who license the use of team and player names and likenesses on a collective basis, have a new and significant revenue stream for their respective constituencies; and the game companies have lucrative titles to offer year in and year out.

But at least one man is not happy with this situation. That man is Sam Keller. Mr. Keller is a former and successful NCAA Division I quarterback. At the conclusion in 2008 of his athletic and academic career at Arizona State University and the University of Nebraska, Mr. Keller was not selected in the professional football draft and chose not to pursue a career as a professional football player. But he still has some unfinished business with respect to his career in college football, business that raises issues at the heretofore-little-explored junction of collegiate sports, video games and intellectual property.

On May 5, 2009, Mr. Keller filed in the United States District Court for the Northern District of California a detailed complaint, seeking class action certification against the NCAA, its licensing arm Collegiate Licensing Company (“CLC”) and Electronic Arts, Inc. (“EA”). The action, alleging a variety of state tort claims under federal diversity jurisdiction,2 is based principally upon the contention that EA’s sale of a series of successful NCAA/CLC licensed college football themed video games containing allegedly-highly-realistic portrayals of actual college athletes, without compensation to or permission of the players, violates the rights of those college athletes under state law granting individuals control over their “rights of publicity.”

The facts Mr. Keller alleges revolve around how EA portrays players on various NCAA teams in its annual NCAA Football game (the “EA Game”) for various home gaming platforms. Unlike the various licensed professional league sports games, the EA Game as sold does not designate individual players by name. It does not do so pursuant to the NCAA’s (arguably diminished in recent years) policies relating to amateurism, and specifically, to an NCAA Bylaw prohibiting the commercial licensing of any student athlete’s “name, image, or likeness.” This prohibition is reflected in agreements that NCAA athletes are obliged to sign with the NCAA each year, agreeing to refrain from licensing their own names or images commercially, and also in the license between CLC and EA.

But, Mr. Keller alleges, EA does everything except use actual player names in the depiction of its video game athletes, and, he alleges, EA, CLC and the NCAA do nothing to discourage player configuration and use of the EA Game so as to represent actual individual players by their true name, image and likeness. Mr. Keller’s complaint provides detailed examples arguing that EA actively tries to portray every member of every included virtual NCAA team in a way that mirrors the real-life appearance, vital statistics and playing tendencies of the respective corresponding real life NCAA player on the team in question. The complaint provides several examples, starting with the quarterback, wearing jersey no. 5, on the virtual “University of Nebraska” team corresponding to the year in which Mr. Keller started the season as a quarterback, wearing jersey no. 5, for Nebraska.

The complaint alleges that EA takes great pains to ensure verisimilitude of its virtual rosters, going so far (the complaint alleges) as to contact team equipment managers to determine what type of idiosyncratic equipment accessories (visors, arm braces) particular players should be portrayed as wearing, as well as matching all the basic details (height, weight, ethnicity, hometown region, statistics, playing tendencies) for respective virtual player counterparts.

But that is not all that bothers Mr. Keller. He alleges that, notwithstanding EA’s nominal omission of the actual player names for these alleged virtual doppelgangers, EA subverts even this nod to the NCAA non-commercialization policy by enabling gamers to easily custom-configure their rosters so that the real names of the real-life counterpart players can readily be populated and saved into the gamers’ customized roster, either by downloading from one of numerous custom roster lists on websites or by exchange of rosters with other gamers in the EA-sponsored multiplayer chat room “EA Locker.”

Mr. Keller’s claims include statutory claims under, respectively, the right of publicity laws of Indiana (where the NCAA is headquartered) and California (where EA is based), a common law right of publicity under the law of California, civil conspiracy allegations against all defendants, unfair competition claims against EA, unjust enrichment claims against EA and CLC and a breach of contract claim against the NCAA.

Other than the breach of contract claim, which is based upon the arguably-difficult premise that NCAA athletes are intended beneficiaries of their affirmative agreement with the NCAA not to commercialize their own images (the complaint is silent as to whether these agreements contain reciprocal undertakings by the NCAA), or of the CLC agreement with EA not to use player names, images or likenesses, the claims generally relate to the same theory: EA had no right to use allegedly highly-realistic portrayals of virtual counterparts having actual NCAA players’ same jersey numbers and physical and athletic attributes; it had no right to encourage the ready linking in the aftermarket of their actual names with these virtual counterparts; and the NCAA and CLC have allegedly been complicit in allowing and encouraging EA’s supposed clear circumvention of the NCAA policies on amateurism, to the detriment of players’ interests and to the vast enrichment of all the defendants.

The complaint seeks certification for a class comprising all NCAA football and basketball players whose jersey numbers have been included in an EA game (except players whose jersey number may have been included, but for whom the corresponding EA game counterpart was listed at a height more than one inch different from the player’s real life listed roster height or whose EA counterpart’s listed weight was more than 10% higher or lower than the player’s real life listed roster weight).

There is not much room for dispute that the stakes are high in the relevant market. Video games, including realistic sports titles, remain a highly popular, highly competitive and highly lucrative market. If the allegations of Mr. Keller’s complaint are accurate, EA alone reported net revenues of $3.67 billion in fiscal 2008; the NCAA garnered $614 million from television and marketing activities (including video game licensing) over a similar period; and the corresponding licensed professional football video game, EA’s NFL Football series, generated almost $35 million dollars in revenue for the NFL players’ union’s consent to use NFL player names and likenesses.

Will Mr. Keller succeed (in obtaining class action certification and on his underlying claim)? This will depend on how the court applies the respective “right of publicity” law of California and Indiana (and also on what implications a claim for compensation would have in view of the longstanding NCAA policy prohibiting direct payments to student athletes while they are in college).

“Right to publicity” laws have developed on a state by state basis over the past three or four decades. Over half the states have now recognized a more or less robust right of individuals (and in some cases, their estates) to control the way in which their names, images or likenesses are used commercially. The right to publicity is sometimes discussed as a mirror image of a right to privacy or as reflective of a larger principle that individuals, and perhaps especially individuals who have gained renown, visibility or even infamy, ought to be able to control, to some extent, when, where and how they and their image or fame are discussed, portrayed or used in a commercial context.

There are at least three policy bases for such laws. The first is respect for privacy. If Philadelphia Phillies pitcher Steve Carlton decided, as he did early in his career, to have no interaction with the public or the media off the baseball diamond, respect for this personal decision is not consistent with allowing a tobacco company to market Steve Carlton Menthols cigarettes with his photograph on the package without his consent. A second basis is analogous to the trademark policies against false denominations of origin. If early baseball star Honus Wagner was (as he was) virulently opposed to the use of tobacco on health grounds, it would be wrong to suggest that he was a sponsor of, or the originator of, tobacco products by including a trading card with his likeness and statistics with tobacco products. Finally, there is a policy of respect for each individual’s commercial self-interest. If money is to be made by marketing Jackie Chan cigarettes (an untested proposition), the argument goes, the financial benefits thereof should accrue, if to anyone, to a consenting Mr. Chan.

In implementing right of publicity policies, though, balances need to be struck, and the various state legislatures and courts that have addressed right of publicity issues have generally done so from a common sense approach. Public figures are, after all, inherently public and cannot be given blanket veto over any use of their name, pictures, personalities, characteristics or achievements.

It would not be practical for Mr. Keller, for instance, to claim that he could have control over, or demand money for, the ability of football fans to watch his performance on the field at a game or via a television broadcast or over the use of his photograph and statistics in a gameday roster or team media guide. After all, playing football for public entertainment is what a scholarship athlete agrees to do in exchange for his scholarship. Similarly, the right to publicity almost certainly does not limit a prominent politician from being portrayed going about his duties in news broadcasts or satirized by a look-alike on late night television comedy shows.

Generally speaking, use of a real world individual’s name, likeness or characteristics is most likely to be permitted under right of publicity laws when it is made for purposes of news, public commentary or debate, or otherwise conveying, in a not purely for-profit fashion, information or opinion of general public interest. Uses that are less likely to pass muster, absent the permission and/or compensation of the individual or his estate, are ones in which it is clear that another individual or company is trading on the other individual’s celebrity or reputation for purely profit-driven reasons, to sell a product or service with which the individual has no other association.

How do these general principles apply in the context of Mr. Keller’s claims? A look at the respective statutes, and brief consideration of the governing Ninth Circuit Court of Appeals law on right to publicity, may provide some broad insight.

California Civil Code Section 3344, first enacted in 1971, provides as follows:

Use of another's name, voice, signature, photograph or likeness in advertising or soliciting without prior consent

(a) Any person who knowingly uses another's name, voice, signature, photograph, or likeness, in any manner on or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of products, merchandise, goods or services, without such person's prior consent, or, in the case of a minor, the prior consent of his parent or legal guardian, shall be liable for any damages sustained by the person or persons injured as a result thereof. In addition, in any action brought under this section, the person who violated the section shall be liable to the injured party or parties in an amount equal to the greater of seven hundred fifty dollars ($750) or the actual damages suffered by him or her as a result of the unauthorized use, and any profits from the unauthorized use that are attributable to the use and are not taken into account in computing the actual damages. In establishing such profits, the injured party or parties are required to prove his or her deductible expenses. Punitive damages may also be awarded to the injured party or parties. The prevailing party in any action under this section shall also be entitled to attorney's fees and costs.

Indiana Code Section 32-36-1 provides in pertinent part:

Consent to commercial purpose use of personality's right of publicity; duration of right

Sec. 8. (a) A person may not use an aspect of a personality's right of publicity for a commercial purpose during the personality's lifetime or for one hundred (100) years after the date of the personality's death without having obtained previous written consent from [the person or his assignee].

While none of the defendants has yet filed an answer to Mr. Keller’s complaint, it seems likely at a minimum that all will focus on attempting to establish that EA has not used, respectively, the “likeness” or “aspect of a personality” of real life NCAA players when it portrayed unnamed, animated players in the EA Game.

It is also possible that defendants will argue that the consent, if any, for the representation of an individual that is required by the respective statutes was already conveyed by the respective scholarship athletes’ signatures on their letters of intent and scholarship papers, in consideration of their tuition, board and opportunity to play on the university’s team. The argument would be, perhaps, that college sports (at least men’s basketball and football) are hardly non-commercial endeavors, and university sports programs routinely use star athletes’ names and likenesses not only in the highly-remunerative broadcasts of their games but in media guides and television, radio and print advertisements for ticket sales and merchandise. Why, defendants may argue, should the use of an alleged crypto “Vince Young like” no. 10 jersey-wearing, unnamed University of Texas quarterback in a video game be treated any differently from the sale, for profit, by the University Athletic Department of a gameday program with a photograph of Mr. Young on the cover or various other Mr. Young-themed paraphernalia?

The particular language of and case-law applying the respective statutes will also play a role in the analysis of whether the defendants can avoid liability. For instance, the Indiana statute contains a carve-out exempting from liability: “[p]romotional material or an advertisement for . . . an entertainment medium that . . . does not convey or reasonably suggest that a personality endorses the . . . entertainment medium.” Could defendants attempt to prove that college football itself is an entertainment medium, and licensed video games thus qualify as an exempted promotional material that generates further interest in and audience for that medium? The notion does not seem ridiculous on its face.

At the same time, some of the case law applying right to publicity concepts in the Ninth Circuit does not support sweeping exemptions or legalistically-based workarounds to individual rights to publicity. While early right to publicity cases dealt with literal appropriation of photographic or filmed portrayals of famous entertainers, EA is unlikely to rely, for instance, solely upon the fact that animated video renderings of particular athletes’ physical appearance and attributes cannot, as a matter of law, constitute a likeness simply because they are not true, photographic portrayals.

First, this argument would render the California statute’s language, which includes reference to both photographs and “likenesses,” surplusage. Equally cogently, there is substantial Ninth Circuit law finding a violation of the statute when all that was used was a “look-alike” (or in the first major cases, involving singers Bette Midler and Tom Waits, a “sound-alike”) mimic/actor to impersonate the look, appearance or characteristic artistic impression of the celebrity in question.3 Clearly, a “likeness” can exist under Ninth Circuit jurisprudence even when there is some abstraction from or non-identity with the real individual. Nonetheless, defendants may focus on the differences between their computerized characters and respective real life players, not least the computerized players’ lack of a manufacturer-designated name.

Finally, defendants will argue that gamers would always be free to name their customized players whatever they want and that none of the defendants are responsible, or should be liable, for what individual gamers do in the aftermarket. Mr. Keller, of course, argues in anticipation of this defense that defendants know of, intend and provide incentives for the likelihood that gamers will combine the nameless game characters as provided by EA with real life rosters to create near-exact simulacra of the entire NCAA player population. The complaint specifically alleges, for instance, that EA does have the ability to prevent the replication of real-life rosters because EA software is already enabled with filters to prevent the use of certain profane words in custom roster player names.

Mr. Keller, who in addition to his athletic exploits graduated from the University of Nebraska with a degree in political science, has initiated what may turn into a factually and legally complex issue of first impression under the intellectual property laws, and he seems determined to push outward the boundaries not only of the NCAA’s amateurism rules but of statutory and common law right to publicity concepts. It remains unclear who, beyond the fortunate law firm associate to whom fell the task of extensive billable PlayStation 3 engagement in the researching of the complaint, will be the beneficiary of the substantial revenue generated by the ongoing popularity of college-sports-themed video games. The courts of California, which have been the crucible for the testing of more than a few novel sports-related legal claims,4 may have the chance to play this role again.

1 One of the early marketing slogans of defendant EA was: “If it’s in the [real sports] game, it’s in the [EA video version] game.”

2 Under the diversity of citizenship rules as applied in class action jurisprudence, only the named parties need be completely diverse, and the presence of citizens of the same state within the unnamed putative class population does not defeat diversity, according to longstanding precedent.

3 See, e.g., Waits v. Frito-Lay, Inc., 978 F.2d 1093 (9th Cir. 1992), cert. denied, 506 U.S. 1080 (1993); Midler v. Ford Motor Co., 849 F.2d 460, 463 (9th Cir. 1988) ("[W]hen a distinctive voice of a professional singer is widely known and is deliberately imitated in order to sell a product, the sellers have appropriated what is not theirs and have committed a tort in California."); White v. Samsung, 971 F.2d 1395 (9th Cir. 1992) (finding violation of California common law right to publicity based upon print advertisement containing allegedly-humorous portrayal of a robotic game show hostess portrayed with an appearance substantially similar to real-life game show hostess Vanna White), cert. denied, 113 S. Ct. 2443 (1993).

4 See, e.g., Hill v. NCAA, 865 P.2d 633 (Cal. 1994), in which a collegiate athlete challenged NCAA drug testing policies, as implemented by university, as impinging upon his inalienable right under the California constitution, Article I, Section I to “acquir[e], possess[], and protect[] [his] property, and to pursu[e] and obtain[] safety, happiness, and privacy.” (emphasis supplied). The NCAA policy was upheld largely on a rule-of-reason analysis that treated the state constitutional right to privacy as qualified and subject to supervening policy interests.