CommLawBlog : Broadcast & Communications Lawyers & Attorneys : Fletcher Heald & Hildreth Law Firm : Telecommunications, FCC Regulation, Communications Act

On July 29, Michael E. Davis (a/k/a Tony Davis), a former NFL running back, sued EA Sports for its use of his likeness as part of a “historical team” contained in the 2009 edition of the Madden NFL series. 

Tony Davis played six years in the NFL. He was with the Cincinnati Bengals from 1976-1978 and the Tampa Bay Buccaneers from 1979-1981.  He claims that EA sports – which posted revenues of $3.67 billion in 2008 and $4.2 billion for fiscal year 2009 – profited from his likeness when it included his 1979 Tampa Bay team as one of 140 “historic teams” in Madden ‘09 (The Buccaneers? We can’t figure it out either). 

When it comes to current NFL players featured in its games, EA Sports bothers to represent them by name and provide their video game avatars with characteristics and attributes which are identical to their real life personae. And EA Sports pays handsomely for the right to do so: it has a deal with the NFL Players Union to license those likenesses, a deal that costs EA nearly $35 million per year, if you believe public reports. 

But neither Tony Davis nor any of the thousands of other retired players on these 140 historic teams are identified by name because they don’t have a similar agreement. But the digital players on these historic teams have likenesses eerily similar to their real life counterparts: there are real teams (if, that is, you view the Buccaneers as a “real team”) featuring players with the same height, weight, years of experience and physical characteristics as the real life player on that team. 

Note that we said “similar”, not “identical”. According to Davis’s complaint filed in the United State District Court for the Northern District of California:

EA attempted to avoid license fees for use of retired players’ likenesses by placing on the “avatar” of each retired player a different uniform number than that worn by the player when he was actually on that historic team. Similarly in some circumstances but not others, EA made certain trivial challenges in a player’s characteristics, such as changing a player’s weight by a few pounds. These changes reflect a calculated and underhanded attempt to avoid having to pay any license or royalty – but nonetheless readily invoke the likeness of the player in the mind of the consumer. In this way, EA has exploited the retired players by using their valuable likenesses and publicity rights.

An example, using Mr. Davis himself:                                                                

Characteristic               Tony Davis (real life)        EA Player Who Looks Like Tony Davis

Position                                   Halfback                                             Halfback

Pro Experience                     4 years                                                4 years

Uniform Number                   27                                                        37

Height                                        5’11”                                                    5'11"

Weight                                      215 pounds                                       215 pounds

This situation – where the only substantive change is the player’s jersey number and the absence of the player’s name – is pretty common. But there’s a feature within the game that allows the user to “customize” the teams by editing the rosters to change each player’s name or number.

Mr. Davis alleges that EA has violated his Right of Publicity under a California statute and California common law; he also relies on a theory of Unjust Enrichment. Plus, obviously trying to raise the ante, he is seeking to create a “class” for purposes of a class action lawsuit consisting of approximately 6,000 retired NFL players. The class would be limited to those players who appear in the video game with a height within two inches of the player’s real life height and within ten percent of his real life weight. Davis seeks damages, including actual damages, statutory damages and punitive damages, disgorgement of all profits earned by EA through the use of these players’ likenesses, and attorneys’ fees and other costs.

All we’ve got right now, of course, is a complaint filed in court which offers the most basic argument in favor of the retired NFL’ers. And though many similar lawsuits have been filed in the recent past, none has yet been resolved. So the result here is still very much in doubt. But if you’re keeping score at home (with past results being no indication of future performance, either in sports or the legal world), check out our scorecard to see where we’re at in terms of the major right of publicity cases in the sports world.

The two cases – O’Bannon/Newsome on the one hand, Keller on the other – adopted different legal strategies. Keller claimed that the NCAA and EA violated his “right of publicity”, i.e., the right to profit from the use of his name and/or likeness. O’Bannon/Newsome, on the other hand, claimed that the NCAA is engaging in “anti-competitive” practices by unduly restricting the rights of college athletes. From the court’s initial rulings – the Keller decision is here, the O’Bannon/Newsome decision here – both arguments appear to have gotten traction.

While Keller’s claims were dismissed with respect to the NCAA, they stuck with respect to EA. Because of the particular statutory language of the “right of publicity” laws in Indiana (one of the two jurisdictions at issue in Keller’s suit, mainly because the NCAA happens to be headquartered in Indiana), the court held that the NCAA itself did not “use” Keller’s name/likeness in a way which would make the NCAA directly liable under those laws. But as to EA, well, that’s another story entirely.

Conceding, at least for the sake of its motion to dismiss, that Keller could establish all he needed to in order to establish that EA had violated his right of publicity, EA argued that it had engaged merely in “transformative fair use”. In other words, the image of the football player that was included in EA’s video game was really EA’s own expression, and not Keller’s true likeness. 

To be successful, the transformative fair use defense requires a demonstration that the defendant has contributed “significantly distinctive and expressive content” which might be protected by the First Amendment. Cases where the defense is successful often involve taking an individual’s recognizable likeness and adding to it distinct new elements, or placing it in a completely novel setting. For instance, albino rocker brothers Johnny and Edgar Winter were portrayed in comic book form as brothers Johnny and Edgar Autumn, with pale faces and long white hair reminiscent of albinism. Transformative? If the changes had been limited to the name change alone, probably not. But in that case the Autumn brothers were also depicted as half-human, half-worm characters with green tentacles sprouting from their chests. Now that’s transformative. In another case, a musician and dancer known for uttering the phrase “ooh-la-la” was depicted with similar physical features and named “ulala” – but, instead of singing and dancing, she was shown as a “news reporter in the 25th century, ‘dispatched to investigate an invasion of earth by dance-loving aliens’.” That, too, is what they’re talking about what they talk about “transformative fair use”.

In Keller’s case, the court concluded that EA’s depiction of Keller contained no such “distinctive content”. Rather, EA simply presented Sam Keller as the college football quarterback for Arizona State.

Result: EA’s motion to dismiss Keller’s suit was denied, and the case proceeds to trial. Along the way, the judge also agreed that Keller’s additional claim – that EA conspired with the NCAA to violate his image rights – could also proceed to trial. So while the NCAA dodged one bullet (i.e., the claim that it had directly violated the right to publicity), it will still remain under the gun because of its involvement with EA in the development of EA’s videogames.

As to O’Bannon/Newsome, the same judge gave a similar thumbs up to the “anti-competition” theory. O’Bannon/Newsome’s claim was based primarily on a provision that the NCAA apparently requires all of its student-athletes to sign:

You authorize the NCAA [or a third party acting on behalf of the NCAA (e.g., host institution, conference, local organizing committee)] to use your name or picture to generally promote NCAA championships or other NCAA events, activities or programs

The plaintiffs claimed that this provision allows the NCAA to enter into licensing agreements which financially benefit the NCAA without conveying a benefit to the athletes.

To prevail in an anti-competition claim along these lines, O’Bannon/Newsome had to establish (a) the existence of a contract, combination or conspiracy that (b) unreasonably restrains trade in a way which (c) affects interstate commerce. The judge concluded that O’Bannon’s claim was sufficient to go to trial. After all, the NCAA’s own constitution which requires member schools to agree to abide by the organization's constitution, bylaws and rules (Factor (a)); the NCAA and its affiliates control the collegiate licensing market to such an extent that the average individual athlete is precluded from having any chance to enter the market for himself (Factor (b)); and the NCAA and its affiliates control the collegiate licensing market to such an extent that the average individual athlete is precluded from having any chance to enter the market for himself (Factor (c)). 

(Interestingly, Newsome’s claim was dismissed because he failed to make a sufficiently strong allegation of unreasonable restraint of trade (i.e., Factor (b)). No worries, though – the judge granted him to leave to amend his complaint to patch up that hole.)

The judge also ruled on a number of other ancillary arguments, but the bottom line here is that both the Keller and the O’Bannon/Newsome cases will proceed. While that does not necessarily mean that any of the athlete-plaintiffs will ultimately prevail, it’s at least a strong indication that their respective theories of liability are valid. It just remains for them to prove that the underlying facts support those theories.

Perhaps more importantly, though, the fact that the cases are proceeding – with the NCAA, in particular, as a defendant – means that discovery will go forward. And that in turn means that considerable light may now be shed on the various contractual arrangements which NCAA has made, and the wads of cash the NCAA has pocketed, in connection with the marketing of athlete-related merchandise. It is entirely possible that the revelation of the details of that enterprise could lead to substantial changes in the relationship between the NCAA, its members, and the student-athletes whose performance is the real key to the profit-generating machine that is college athletics. Attention should be paid.

1996:  The NBA sues to prevent Motorola and “Stats, Inc.” from distributing information from basketball arenas in real time, alleging violations of, among other things, copyright, trademark and right of publicity (commercial misappropriation). Verdict: Motorola/Stats, Inc. win, as the United States Court of Appeals for the Second Circuit rules that the NBA does not “own” the factual information about its games.

2008:  Major League Baseball falls to C.B.C. Distribution and Marketing, a fantasy sports purveyor, when the U.S. Court of Appeals for the Eighth Circuit rules that players’ names, biographies and statistics can be freely used because they’re akin to news that’s generally available. The Court rejects the notion that names, bios and stats are subject to overall “image right” that can be claimed, and commercially marketed, by the player, team or league alone.  This opens the door for all fantasy sports providers to drop their existing marketing contracts with major sports leagues, costing those leagues millions in licensing revenues.

2008: CBS Interactive grabs a page out of C.B.C. Distribution and Marketing’s playbook and sues the NFL, seeking a declaratory judgment allowing it to use these same types of player information (names/backgrounds/ stats) in its NFL fantasy football game.   CBS files its suit in Minnesota. Why Minnesota?  Because that’s in the same 8th Circuit that was so kind to C.B.C. Distribution and Marketing.  Guess what?  It works.  The District Court rules in favor of C.B.S Interactive in April 2009. 

Meanwhile, we also have a number of games still in progress, as big-name players – presumably prevented from recouping image rights (either directly or through the leagues or player associations supposed to represent them) for the use of the names, etc., in fantasy sports – began to find new ways to try to monetize their commercial images . . .

May, 2009:  Several former college football players file a class action  lawsuit in federal court in California, alleging that EA Sports, the maker of several popular sports video games, is using their images without permission (even though the players’ real names appear nowhere in the game). This case is pending trial.

June, 2009: Several more former college players file another lawsuit against EA Sports.  They “get in the game” in a state court in New Jersey.   This case is also pending trial. 

July, 2009:  Former UCLA basketballer Ed O’Bannon (last seen selling cars outside Las Vegas) files a lawsuit against EA Sports.  Yep, still pending. 

So, let’s see, we've got: 

• Lawsuits between the leagues and the fantasy sports companies, with a clean sweep by the fantasy sports companies to date;
• Lawsuits by former college athletes against video game makers, with no resolution thus far;
• Leagues continuing to represent their current players with regard to use of those players image rights in all manner of commercial formats.

What’s missing?   As we see, about the only permutations or combinations we haven’t seen yet involve (a) former pro players getting getting back into the action and (b) lawsuits by athlete(s) against his/her/their league. 

That's why we're so happy to report that former NFL’ers John Dryer, Jim Marshall, Joe Senser,  Elvin Bethea, Dan Pastorini, and Ed White have filed a class action lawsuit against their former league, alleging that their images are being used in NFL films and other products  without their permission or any compensation.  Former pro players suing their former league! Two for the price of one!

The lawsuit alleges that the NFL “trades on the ‘glory days’ of the NFL as a marketing and advertising technique”, netting the NFL big bucks while the players get nothing.  The NFL, through its NFL Films website, offers hundreds of productions for $50 each, using the names and likeness of over 450 former players in the films and for promotion purposes. According to the players, such uses constitute: “false endorsement” (a violation of the Lanham Act); appropriation of the “right of publicity” under Minnesota, California and Texas law; and violations of the common law “right of publicity” under just about every other state’s laws. The players also allege that the league has engaged in unjust enrichment at their expense. 

The players seek all damages allowed under law and equity (and, for good measure, reimbursement of attorneys’ fees and court costs). 

What’s really interesting about this one – other than the fact that the players are now biting the very hand that once fed them (even if you believe the meals were of less than adequate size and, ultimately, extremely unhealthy) – is that the players’ complaint was filed in the United States District Court for the District of Minnesota.

But wait! Isn’t that the same court that has already declined to protect the names and likenesses of NFL players from use in fantasy sports? (Sure, that suit pitted the league’s marketing arm, not the players themselves, against the fantasy sportsters, but the same basic likenesses, images, etc., were at issue.) And isn't that in the same 8th Circuit that ruled against MLB player seeking compensation (again, through their league's marketing arm) for use of their names and likenesses in fantasy sports as well? Yes and Yes.

So what’s the deal? Have these players simply taken one too many blows to the head?  Surely they must know that the Court will bat this one down at the line of scrimmage once again!  Perhaps, but there’s plenty of reason to think they’ll emerge victorious as well. 

First, they know that the Court will not move the case for lack of jurisdiction, having ruled in the earlier NFL case that jurisdiction in Minnesota is proper due to sufficient minimum contacts there. So that’s one major procedural matter they don’t have to worry about.

Substantively, we think that the players’ lawyers have read between the lines of the earlier NFL and MLB cases and believe that the judges in each of those earlier cases ruled for the fantasy sports companies because the information used was so factual in nature that it could be obtained anywhere.  The court essentially viewed the player names, backgrounds and statistics as “news” to which the leagues could not claim any exclusive right. That would be distinct from using commercial images in which somebody – perhaps the players, perhaps the teams, perhaps the league – could properly assert a proprietary claim.  

If the earlier courts did rest their verdicts on that side of a “commercial/noncommercial” line, it would make sense for them to do the same here. But in this latest case, the courts could easily conclude that the material in question – featuring overtly commercial use of particular players’ readily-identifiable images – is entitled to precisely the kind of protection that the broader, noncommercial, informational name/background/stats stuff did not merit.  

One thing is for sure: the younger generation of college players who have sued EA Sports will be watching these elder statesmen closely, as we’ll likely see similar results for young and old.

The fact that the CBS Interactive, Inc. v. National Football League Players Association, Inc. and National Football League Players Incorporated case is entering overtime after the NFLPA, NFL and Players, inc. filed an appeal to the Eighth Circuit actually kicked off this latest pigskin classic.  

Yahoo! has been offering its fantasy football game for several years.  Until March 1, 2009, Yahoo! had licensing agreements with Players, inc. which allowed Yahoo! to use the likenesses of NFL players.  Yahoo! decided not to renew these agreements after that date (presumably for the same reason that CBS Interactive did not renew its agreements with Players, Inc.: because of the earlier ruling by the United States Court of Appeals that permission was not required to use Major League Baseball player likeness and information). 

Players, Inc. had threatened to sue Yahoo! when the licensing agreement was not renewed.  Emboldened by the CBS Interactive decision, Yahoo! went on the offensive in late May, asking Players, Inc. whether it had changed its tactics in light of Minnesota decision. Yahoo! received no response to a May 21 request for information.  Players, Inc. refused to reveal its playbook then, or when asked again on May 26.

Instead, Players, Inc. and the NFL Players Association filed a notice of appeal in the CBS Interactive case on May 28, 2009.  Yahoo! took this as a sign that Players Inc. and the NFLPA intended to protect their house.  It requested a conversation by June1 and, receiving no response, again filed its complaint in District Court. Specifically, Yahoo! makes seeks three declarations:

1. Declaratory Judgment that Yahoo! does not violate any right of publicity owned or controlled by NFL players.
    
2. Declaratory Judgment that a Right of Publicity interpreted broadly enough to encompass Yahoo!'s actions is superseded by the First Amendment to the United States Constitution.
    
3. Declaratory Judgment that a Right of Publicity Interpreted Broadly Enough to Encompass Yahoo!'s actions are preempted by federal copyright law.

Given the earlier decisions in this District Court and the United States Court of Appeals, you really have to bet (not that we advocate betting on sports or law) on Yahoo! and on CBS Interactive in their respective cases. But one wonders whether the 2009-2010 Supreme Court schedule will feature a Publicity Rights Bowl in an attempt to settle this simmering rivalry.

Sam Keller played quarterback for three years at Arizona State before transferring and playing his final season at Nebraska.  Despite a moderately successful college career, he wasn't drafted by an NFL team. 

Keller is the named plaintiff in a class action lawsuit filed against Electronic Arts, a/k/a "EA Sports" ("It's in the Game"), the maker of the popular college football video game series "NCAA Football [insert year here]".  Other defendants include the NCAA  and the Collegiate Licensing Company, which administers the contracts regarding college athlete likenesses.  According to his complaint, Not-So-Slingin' Sammy represents "all NCAA football and basketball players listed on the official opening-day roster of  a school whose team was included in any interactive software produced by Electronic Arts, and whose assigned jersey number appears on a virtual player in the software." 

Now I really don't follow college football all that closely (the dual result of attending a college without a truly big-time football program  and  the NCAA's refusal to dump the bogus BCS system in favor of a college football playoff leading to a true national champion).  I'm also not all that into video games; even though EA's line of "NCAA Football [insert year here]" is insanely popular, I can't say that I've ever played one. 

So it's a good thing that the folks at the Above The Law blog (I do follow them) do a good recitation of the NCAA policies and video game characteristics, which I'll further boil down to about four key points:

1. College athletes are basically indentured servants, with major football and basketball programs generating substantial revenue for their schools in exchange for the athlete receiving a free education (that he/she largely can't take advantage of because of team practice, conditioning and related activities requiring a time commitment similar to that of a pro athlete). 
    
2. Similar pro football and basketball video games (think about the highly successful "Madden" and "NBA Live" games here), use the real names, uniforms, numbers, likenesses (which get increasingly more real -- and scary -- with every new version), statistics and backgrounds.   The game makers had previously used fake names and players until an agreement was reached with each league's players association for the image rights. 
    
3. No similar agreement exists between the NCAA (through the Collegiate Licensing Company) and Electronic Arts, so fake names continue to be used in the college-based video games. The uniforms look real (so the JMU Dukes, if the Football Championship Subdivision powerhouse is represented, will be identified by its ever-intimidating Purple-and-Gold), and the  virtual players' statistical characteristics correspond to their real life counterparts.  In Keller's case, that meant the NCAA Football '08 version of the Nebraska Cornhuskers wore red and white and featured a quarterback wearing # 9 who threw for 2,422 years and 14 touchdowns, while completing 63.1 percent of his passes, strikingly similar -- indeed, identical, to his own personal stats.
    
4. Die-hard fans have created programs that allow users of this game to upload the true names of each player to replace the fake ones. EA Sports knows about this, but does not promote it.  Both EA and the NCAA have maintained that EA sports does not and cannot use the players' names or actual pictures.

The post in Above the Law suggests that Keller should win, but does it unduly discount an interesting decision from federal district court in Minnesota that was issued on April 28, 2009, involving the use of NFL player names, likeness and information in conjunction with CBS Interactive's fantasy football games? 

Granted, there are some major differences between the recently-decided Minnesota case and the case which Keller brought in California: aside from the fact that we're now talking pro sports rather than college, the recent Minnesota decision affected the use of player information and licenses in the fantasy sports, not video game, context.  And pro sports leagues have a bad history in this area:

• It's been more than ten years since United States Court of Appeals held that the National Basketball Association could not prevent a company called Stats, Inc. from distributing statistics and other in-game information in real time via Motorola pagers.
   
• A little over two years ago, in a case we blogged about, the United States Court of Appeals for the Eighth Circuit ruled against the Major League Baseball Players Association and declared that pro baseball players' names and likenesses could be freely used in a fantasy baseball game. 

The NFL decision is a direct descendant of the more recent MLB case.  CBS Interactive runs one of the more popular fantasy football games, which makes extensive use of NFL player names, likenesses, pictures, photographs, voices, and biographical information.  Through the 2007 NFL season, the player information was obtained via a licensing agreement with the NFL Player's Association that controls the image rights of the players and distributes any revenues obtained through such games to them. 

After the 2007 season, CBS Interactive took note of the decision against the MLB in the 8th Circuit.  It did not renew its licensing agreement with the NFL and instead sprinted to the District Court of Minnesota.  You see, the District of Minnesota is located in...the 8th Circuit.  CBS Interactive sought a declaratory judgment from the court that would apply the MLB ruling to NFL player information as well.  This kicked off the case of CBS Interactive, Inc. v. National Football League Players Association, Inc. and National Football League Players Incorporated. 

After a brief -- but very informative -- recitation of how image rights of NFL players were previously licensed and how fantasy football is played, District Court Judge Ann Montgomery spent the majority of the first half of her opinion knocking down, one by one, motions by the NFL/NFLPA to either dismiss the case for lack of personal jurisdiction in MInnesota or transfer the case to Florida (where the only other case involving a similar sports image rights issue was decided the other way). 

Compressing all of this Civil Procedure 101 stuff into an ESPN "Two Minute Drill" highlight reel cuts to the chase:  the Court ruled that there is personal jurisdiction over the NFL/NFLPA in Minnesota  and the transfer was not proper because there was no proof that hearing the case in Minnesota would be inconvenient for the parties, to witnesses or contrary to the interests of justice.  At least no more so than Florida.

As is often the case, all that procedural posturing proved dispositive.  The NFL/NFLPA made a brief goal line stand, getting one of CBS Interactive's causes of action dismissed  when the judge ruled that the NFL/NFLPA's control over player image rights do not constitute an antitrust violation.  The next play was the winning touchdown, as the court granted summary judgment in favor of CBS Interactive, finding little to no difference between this case and the MLB case. 

So is that it?  Game over for the NFL/NFLPA?  Well, the NFL/NFLPA still has two levels of court to which to appeal, though their prospects seem unlikely given the 8th Circuit's ruling in the MLB case and the Supreme Court's later refusal to hear that case.

As for Keller, he's still got a chance.  It's pretty clear by now  that the use of statistics and other game-related facts are protected by the First Amendment, at least with regard to professional sports (though we see no reason why there would be any difference here just because the statistics come from college games).  For Keller to win, the Court will have to find that: (a) video games are inherently more commercial than the now multi-million dollar fantasy sports industry and (b) that EA Sports has made its games "too real" to the point where using this First Amendment protected background information in conjunction with wink-wink, nudge-nudge virtual players makes it all but impossible to separate those virtual players from the real ones.

And if he doesn't win?  Well, there's always the NHL, MLS (yes, fantasy soccer does exist) and NASCAR (perhaps the biggest one of them all), waiting in the wings.   But, more importantly, it opens up another avenue for broadcasters, print media, bloggers, etc. to more freely (and accurately) use player information and even photos in conjunction with sports reporting and perhaps even some overtly promotional contest-type events.