Free speech vs. athletes’ right of publicity: The Supreme Court’s Madden NFL decision

Published 22 April 2016 By: Frank W. Ryan, Melissa Reinckens, Matthew Ganas


On March 21, 2016, the United States Supreme Court, without opinion, denied Electronic Arts, Inc.’s (“EA”) petition for certiorari (i.e. a petition to have the Supreme Court hear the case) in Davis v. Electronic Arts, Inc.1 In doing so, they declined to provide any further guidance on how to balance the First Amendment right of free speech principles against an individuals’ state-law rights of publicity (which prevent the unauthorized commercial use of an individual's name, likeness, or other recognizable aspects of one's persona).

The Davis case involved a California State right of publicity claim asserted by former NFL player Michael Davis, relating to EA’s unauthorized use of his name and persona in its popular Madden NFL videogame series. The California federal district court ruled that EA could not establish, as a matter of law, that its activity was protected by the First Amendment (right of freedom of speech), and that consequently Davis could pursue a right of publicity claim.

In the U.S., there is no federally granted right of publicity, and no universal standard for analyzing right of publicity claims brought under state statutory or common law. As a result, courts across U.S. jurisdictions have developed various tests for evaluating right of publicity claims when faced with free speech concerns. This approach was affirmed in the earlier decision by the Ninth Circuit Court of Appeals in Keller v. Electronic Arts, Inc.,2 which involved similar right of publicity claims directed to EA’s ‘NCAA Football’ videogame series.

In Davis, EA argued that its use of player names, images, and likenesses in the virtual-reality videogame context was shielded from right of publicity liability under multiple, alternative tests and theories that have emerged over time. Specifically, EA argued First Amendment protection under:

  1. The “transformative use” test, balances the First Amendment right and the right of publicity based on whether the work in question adds significant creative elements so as to be transformed into something more than a mere celebrity likeness or imitation;
  2. The “public interest” exception, exempts the publication of matters in the public interest from right of publicity liability;
  3. The “Rogers” test, is grounded in trademark law principles and focuses on the “artistic relevance” of the defendant’s use of the plaintiff’s name, image or likeness in the context of the challenged work; and
  4. The “incidental use” test, which, under California law, asks a series of questions aimed at evaluating the level of connection between defendant’s complained-of use and overall work as a whole.3

The Ninth Circuit, in Keller, already addressed and rejected each of EA’s arguments, except for the “incidental use” defense. Accordingly, Davis reaffirmed the Court’s reasoning in Keller to reject EA’s first three arguments, and then determined that the incidental use defense did not apply.4 Thus, because the Davis appeal touched numerous bases for applying First Amendment principles to right of publicity claims, EA’s request for Supreme Court review was considered as an ideal opportunity to resolve discrepancies among lower courts’ approaches.


Comment: a missed opportunity?

Many U.S. practitioners and scholars view the Supreme Court’s decision to refuse the petition as a missed opportunity to provide clarity to a murky area of constitutional law, complicated by the existence of multiple competing judicial tests.5

A uniformly applicable test for balancing the right of publicity with the First Amendment rights would be valuable for litigants from a predictability standpoint.  However, recent case outcomes in the sports-media field are beginning to align, notwithstanding the availability and application of differing tests. Arguably, Supreme Court review of this videogame-related right of publicity case is not necessary to resolve any fundamental circuit split or wildly different lower court results in analogous cases. 

With respect to videogame avatars, for example, the Ninth Circuit (Keller and Davis) and Third Circuit (Hart6) are consistent – both courts agree that a state law cause of action for a right of publicity violation may lie for the unauthorized use of athletes’ names, images and likenesses in virtual-reality sports videogames, pursuant to the “transformative use” tests. 

At the other end of the spectrum, courts seem to agree that a right of publicity claim does not exist for unauthorized uses of player names, images and likeness in connection with game broadcast footage.   One California district court7 suggested that the First Amendment and Copyright Act do not preempt sporting-event participants’ right of publicity claims as a matter of law.8 However, this position is apparently an outlier expressed in dicta from a decision that did not directly address any of the plaintiffs’ right of publicity claims.

The Eighth Circuit Court of Appeals recently expressed the opposite view in Dryer v. NFL,9 reasoning that the defendant-broadcasters’ valid federal copyrights in the published material preempt any state-based publicity right claims.  The Sixth Circuit Court of Appeals will be the next to address this issue, on appeal of the district court’s decision in Marshall v. ESPN,10 which similarly dismissed collegiate athletes’ Tennessee right of publicity claims directed to the use of their names, images and likenesses in broadcast footage.11 

The anticipated decision in Marshall v. ESPN, however, may provide for further discussion concerning the assertion of publicity rights in the sports-media context.  In addition to live telecasts, Marshall also involves Tennessee right of publicity claims directed to the use of student-athletes’ names, images and likenesses in advertising and promotion of game broadcasts.  The broadcaster-defendants maintain that the Tennessee statute’s express exemption for sports broadcasts naturally extends to advertisements of such broadcasts, because the statute is intended to apply only to advertisements in the first place.  The Sixth Circuit’s treatment of this issue, if any, could potentially open or close another avenue for athletes to pursue right of publicity claims in the sports-media context, although the revenue stream associated with game advertisements and promotions pales in comparison to the live telecast and videogame industries.

To the extent there is an overriding concern for more clarity in the legal intersection between right of publicity and the First Amendment right of freedom of speech, it is unsurprising that the Supreme Court declined to offer such guidance through the Davis case. The relatively consistent outcomes in recent sports-media right of publicity actions relating to videogames and broadcast footage may explain this.  But depending on its outcome, the Marshall appeal could present an opportunity to revisit similar issues in the near future.


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Frank W. Ryan

Frank W. Ryan

Frank Ryan is a Partner and Head of Intellectual Property - New York

Frank Ryan has a broad-based practice with a particular emphasis on litigation and counseling clients in intellectual property, media and sports, and complex commercial matters.

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Melissa ReinckensMelissa Reinckens is a member of DLA Piper's Intellectual Property and Technology, Trademark, Copyright and Media practice. Ms. Reinckens has extensive experience with intellectual property litigation matters involving patents, trademarks

Melissa Reinckens

Melissa Reinckens is a member of DLA Piper's Intellectual Property and Technology, Trademark, Copyright and Media practice. Ms. Reinckens has extensive experience with intellectual property litigation matters involving patents, trademarks, copyrights, trade dress, theft of trade secrets and false advertising. She actively represents a variety of clients, among them ESPN, ABC, Caché, Inc., Tyco Healthcare Group LP, the Home Depot, Destination Maternity Corp., Macy's and PAC-12 Conference.

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Matthew Ganas

Matthew Ganas

Matt Ganas is an associate in DLA Piper's Intellectual Property and Technology group, based in New York. He focuses his practice in the area of intellectual property litigation with an emphasis on patent and trademark law.

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