Right of Publicity in Video Games

INTRODUCTION TO THE RIGHT OF PUBLICITY

Under the US law, the right of Publicity has an origin in the acknowledgment of the personal right to privacy. This right was first recognised in the United States in the second circuit court decision of Haelan Laboratories Inc v Topps Chewing Gum Inc [1] which involved dispute pertaining to the use of a well-known ball-players’ photograph in advertising chewing gum companies and then in Zacchini v. Scripps-Howard Broadcasting Co.[2]The right of publicity was recognised as a ‘property right’ and is articulated in the Restatement (Third) of Unfair Competition[3] as follows: ‘[o]ne who appropriates the commercial value ofa person’s identity by using without consent the person’s name, likeness, or other indicia of identity for purposes of trade is subject to liability”.[4]

ELEMENTS IN A RIGHT OF PUBLICITY CLAIM

In order to further analyse the right of publicity claim, it is important to first break down the elements which constitute such claim[5]:

(a) the defendant’s use of the plaintiff’s identity;

(b) the appropriation of plaintiff’s name or likeness to defendant’s advantage, commercially or otherwise;

(c) lack of consent; and

(d) resulting injury

It is evident to note the importance of the value of celebrities and famous individuals in today’s society. Celebrities and people of that stature are part of the society and it is inevitable that such reference to identity will be commercially appropriated while resonating with the public to participate in public discussions and facilitate republican system of self-government. There are two types of rights embedded in the First Amendment of the US Constitution which is the right to free speech and the right to free press.[6]The First Amendment defence is open-ended and various state courts have come up with different tests in order to design this defence under right of publicity claims. The Transformative Elements (“TE”) test comes from the first factor of copyright fair use defence under the US law which refers to the “purpose and character” of the use.[7]

RIGHT OF PUBLICITY IN VIDEO GAMES

The US courts in all three cases: Davis v. Electronic Arts Inc[8], Hart v Electronic Arts Inc(“Hart”)[9]and Keller v Electronic Arts Inc(”Keller”)[10]held that video games constitute protected speech and full protection under the First Amendment.[11] The facts of the case in both Hart and Keller involve action by former college football players against video game developer, alleging misappropriation of likeness and identity of players and others similarly situated for commercial purpose in connection with several college football-related games.[12] The third and the ninth circuit court held that the use of the plaintiff’s identity, in this case, was not protected by the First Amendment defence because the video game setting was the exact same setting as that of the Plaintiff’s in their real life and hence held to be not transformative.[13]The dissent in both the cases also apply the TE test but at the same time favour the defendant on basis of the explanation that the transformation of elements in question should be that of the entire work i.e. the identity of the plaintiff and the video game elements as a whole. In Kirby v Sega of America Inc[14] the court held that the use of identity was transformative in nature because the character was transformed as a whole since the video game was set in an outer space setting unlike real-life setting of the plaintiff.[15]

The question is not whether the market value of the plaintiff was affected. The question is whether the defendant used Plaintiff’s identity to its commercial advantage and if the answer is in affirmative, will such use/expression come under the first amendment defence. It does not seem like the TE test is sufficient to come to the conclusion that avatars used in video games come under the first amendment protection because to reach that conclusion, it is important to look outside the identity of the plaintiff and analyse the creative elements of other aspects of the video games, but in a right of publicity claim, the only scrutiny should be that of the plaintiff’s identity and to fathom whether it is misappropriated or not.

Video Games will of course only use famous characters in order for the target audience to resonate with such games basis the fact that such celebs hold semiotic value and are a means to convey and express certain values. It is also important to look at the target audience. Are they buying video games just because of the use of celeb or are video games an essential form of relevant expression today? In Keller[16], are courts to evaluate how ‘creative and fancifully’ the characters have been transformed? [17]. This determination seems to be outside the ambit of the court. The courts should not be tasked with determining the creativity level of the expression of character portrayal.

The analysis is more quantitative than qualitative, thus ignoring contextual transformation and importance of political speech[18] and it is not for court to decide how creativity and fancifulness have been transformed. There need to be definite yardsticks, which then can be applied to the fact-specific situation.

PERSONALITY RIGHTS AND THE COMMON LAW TORT OF PASSING OFF

The right of publicity is widely treated as a tort with elements as discussed above. This tort, as opposed to a passing-off action, does not require the application of a test of likelihood of confusion. Outside the US, celebrity personalities who have been appropriated for commercial use via appropriation of their name, image, likeness etc. have to resort to the common law tort of passing off or maybe, defamation in some cases(provided the elements of defamation are satisfied in such a claim) for engaging in misleading and deceptive conduct. The three key elements in a passing-off action are (a) goodwill (b) Misrepresentation or deceptive conduct; and (c) damage.

A defendant may escape liability for passing off in such cases wherein such products in question indicate a disclaimer pertaining to their true origin or disclaims any association or connection with the plaintiff, yet commercially misappropriate the semiotic value of such personality rights. In the action of passing off or defamation, the main purpose is to protect the reputation of the individual in this context.

In India, the Right of Publicity is acknowledged as a tortuous right as well as a fundamental right under Article 21 of the Indian Constitution.  The first instance where the Supreme Court of India expressly recognized the right of publicity was in R RajaGopal v State of Tamil Nadu[19], wherein the Apex Court held that “the first aspect of this right must be said to have been violated where, for example, a person’s name or likeness is used, without his consent”. There have been deliberation on publicity rights by the Delhi HC in cases such as ICC Development (International) vs. Arvee Enterprises and Anr[20]and Titan Industries Ltd. vs M/S Ramkumar Jewellers[21]. The Supreme Court in its recent Judgment in the case of Justice KS Puttuswamy v Union of India[22] contemplated on the matters of privacy and laid down publicity as an important element of privacy that needs to be protected as a fundamental right under Article 21 of the Constitution. In the absence of a statutory right to publicity, the decision in this case by a nine-judge bench strengthens the right of publicity in a personal capacity, however,the development of issues pertaining to the commercial misappropriation of personality rights, especially in video games is at a very nascent stage in India.

It would be interesting to see how the courts analyse this set of rights under the common law in future litigations in the context of video games, especially in this era of gaming and rampant technological growth.

Author:  Harleen Sethi, LLM (Intellectual Property and Technology Laws) Student at National University of Singapore, in case of any queries please contact/write back to us at aishani@khuranaandkhurana.com.

References:

[1] 202 F.2d 866 (2nd Cir. 1953)

[2]433 U.S. 562 (1977)

[3]Restatement (Third) of Unfair Competition §§ 46-49 (1995) (“Restatement”)

[4] David Tan, The Commercial Appropriation of Fame: A Cultural Analysis of the Right of Publicity and Passing Off (Cambridge University Press 2017) 39 (“Commercial Appropriation”)

[5] Eastwood v Superior Court for Los Angeles County, 149 Cal App 3d 409 (1983); White v Samsung Electronics America Inc, 971 F.2d 1395 (9th Cir. 1992); Hilton v Hallmark Cards, 599 F.3d 894 (9th Cir. 2010); Keller v Electronic Arts Inc, 724 F 3d 1268 (9th Cir. 2013)

[6] Commercial Appropriation (n 4) 163

[7] Campbell v Acuff-Rose Music Inc, 510 US 569 (1994)

[8] No. 10–cv–03328, 20 12 WL 3860819 (N.D.Cal. Mar. 29, 2012)

[9] 717 F 3d 141, 158-176

[10] 724 F 3d 1268 (9th Cir. 2013)

[11] Commercial Appropriation (n 4) 263

[12] Ibid

[13] No Doubt v. Activision Publishing, Inc [192 Cal.App.4th 1018, 122 Cal.Rptr.3d 397 (2011)]

[14]144 Cal App 4th 47 (2006) (“Kirby”)

[15]Ibid

[16] Ibid

[17]Ibid                                                                                                                 

[18] Commercial Appropriation (n 4) 146

[19] 1995 AIR 264, 1994 SCC (6) 632

[20] 2003 (26) PTC 245

[21] 2012 (50) PTC 486 (Del)

[22] (2017) 10 SCC 1

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