What Do Peter Pan And The NCAA Have In Common? A Primer On Student-Athlete Images, The NCAA And Video Games

In the story Peter Pan, Peter loses his shadow and is forced to chase it down in order to reattach it. A shadow isn't very substantive, but like any person, Peter wants his back because it is his shadow and his property. We take our shadows for granted - that we have them and they're ours and they can't be taken - and nobody expects to lose his or her shadow in the same way that Peter does. But what about our images? Like Peter, our names and likenesses cast a sort of shadow, ethereal but still substantive in that they can have value.

Peter's loss of shadow is somewhat analogous to what student-athletes have been losing to the NCAA - their collegiate images. In a consolidated class-action, Ed O'Bannon (UCLA basketball) and Sam Keller (Arizona State/Nebraska football) (among others) are taking the NCAA and Electronic Arts, Inc. to task for allegedly using, without compensation, the images of former student-athletes. And now, basketball great Oscar Robertson (University of Cincinnati) has joined the fray by filing a lawsuit against the NCAA and others, seeking damages for the use of his collegiate image on trading cards.

Below is a list of cases consolidated with lead consolidated action 4:09cv1967, Keller v. Electronic Arts Inc et al, U.S. District - California Northern:

• 3:09cv1967, Keller v. Electronic Arts Inc et al, U.S. District - California Northern
• 4:09cv4882, Newsome v. National Collegiate Athletic Association et al, U.S. District - California Northern
• 4:09cv3329, O'Bannon, Jr v. National Collegiate Athletic Association Et A, U.S. District - California Northern
• 4:09cv5134, Wimprine v. National Collegiate Athletic Association et al, U.S. District - California Northern
• 4:09cv4128, Bishop v. Electronic Arts, Inc, et al, U.S. District - California Northern
• 4:09cv5100, Anderson v. National Collegiate Athletic Association et al, U.S. District - California Northern
• 4:09cv5378, Rhodes v. National Collegiate Athletic Association et al, U.S. District - California Northern
• 4:09cv5372, Jacobson v. National Collegiate Athletic Association et al, U.S. District - California Northern

A General Overview of the Multiple Complaints

As argued and alleged by the various plaintiffs:

The NCAA earns licensing revenues by using images of former student-athletes who once competed for NCAA member colleges or universities. The NCAA and its entities continue to enjoy commercial benefits from the sale and use of these images without sharing revenue with the former student-athletes. Revenue comes from several ventures, including:

• Television contracts
• Rebroadcasts of "classic" games
• DVD game and highlight film sales and rentals
• On-demand streaming and sales of games and clips
• "Stock footage" sales to corporate advertisers and others
• Photograph sales
• Video game sales
• Trading card sales
• Jersey and other apparel sales

It is argued that the NCAA attempts to cause student-athletes to release in perpetuity their rights to obtain compensation in connection with the NCAA's use (or use by the NCAA's designated "third parties") of a student-athlete's name or picture to generally promote NCAA championships or other NCAA events, activities or programs. The release in perpetuity arises from a combination of NCAA bylaws and required signatory-forms and covers likenesses that are created during the time period that a person is a student-athlete. NCAA Bylaw 12.5.1.1 contains several opportunities (loopholes if read another way) regarding the use of a student-athlete's "likeness" in that a member institution may use a student-athlete's name, picture or appearance to support charitable/educational activities or activities "incidental to" the student-athlete's athletic participation, provided certain conditions are met, including:

(g) The student-athlete's name, picture or appearance is not used to promote the commercial ventures of any nonprofit agency;

(h) Any commercial items with names, likenesses or pictures of multiple student-athletes . . . may be sold only at the member institution at which the student-athletes are enrolled, the institution's conference, institutionally controlled (owned and operated) outlets or outlets controlled by the charitable, educational or nonprofit organization . . . . Items that include an individual student-athlete's name, picture or likeness (e.g., name on jersey, name or likeness on a bobblehead doll), other than informational items (e.g., media guide, schedule cards, institutional publications), may not be sold . . . .

(emphasis added)

In addition, the NCAA is accused of sanctioning, facilitating and profiting from Electronic Arts, Inc.'s use of student-athletes' names, pictures and likenesses. Electronic Arts, the maker of NCAA basketball and football videogames, allegedly replicates student-athletes by reproducing, among other things, jersey numbers, physical measurements, skin tone, hair color, and hair styles. Furthermore, Electronic Arts allegedly allows third parties to create and market modifications to the NCAA games that allow players to upload complete roster information for various teams, including player names.

The legal arguments against the NCAA and/or Electronic Arts, Inc. follow three major tracks. They are:

Violation of Section 1 of the Sherman Act - 15 U.S.C. § 1

Unreasonable Restraint of Trade

Defendants entered into a continuing contract, combination, and conspiracy in restraint of trade to artificially depress, fix, maintain, and/or stabilize the prices paid (specifically, depressing, fixing, maintaining and stabilizing them at zero dollars) to Antitrust Class members for the use of, and to limit supply for, licensing and sale of their images, likenesses and/or names.

Violation of Section 1 of the Sherman Act - 15 U.S.C. § 1

Unreasonable Restraint of Trade - Group Boycott / Refusal to Deal

Defendants entered into a continuing contract, combination, and conspiracy in restraint of trade to effectuate a horizontal group boycott of Antitrust Class Members. Defendants' group boycott / refusal to deal encompasses Defendants' concerted refusal to compensate Antitrust Class Members for use of their images, likenesses and/or names.

Deprivation of Rights of Publicity (Violation of Indiana Code § 32-36-1-1 / California Civil Code § 3344)

Plaintiffs' names, voices, signatures, photographs, images, likenesses, distinctive appearances, gestures, and mannerisms have commercial value. For commercial purposes, Defendants have used and continues to use plaintiffs' and class members' names, images, likenesses and distinctive appearances without their consent.

A fourth claim, though not as prominent as the aforementioned claims, is for breach of contract:

Breach of Contract

Defendant NCAA entered into uniform or substantially similar contracts with class members, imposing specified duties on Defendant NCAA and requiring it to fulfill certain obligations to class members, including a duty to deal fairly and in good faith with Plaintiff and class members. NCAA breached its contracts with class members by, among other things, seeking to accomplish indirectly through its relationship and agreements with Defendant Electronic Arts that which it could not do directly (profit from class members' likenesses).

How the defendants might answer:

While the NCAA/Electronic Arts, Inc. have yet to file an answer, certain arguments can be gleaned from articles, motions and appellate briefs (an interlocutory appeal is pending). Possible arguments include:

• the uses are constitutionally protected as expressive and transformative works
• the uses are constitutionally protected because of the public's strong interest in information about sports and athletes
• the uses are exempt from liability under section Cal. Civ. Code 3344(d)'s "public affairs" exemption
• the NCAA owns the copyright to a student-athlete's performance (as 17 USCS 201(b) "works made for hire"), which results in federal copyright preemption of the state-granted rights of publicity
• student-athletes expressly or implicitly consent to abide by all NCAA regulations, including image policies
• the NCAA does not "use" (as required by Ind. Code § 32-36-1-8) an image when it allows someone else to use it
• plaintiffs' likenesses lack "commercial value" as required by Ind. Code § 32-36-1-6
• in response to an assertion of licensee estoppel, Electronic Arts, as the NCAA's licensee, might argue that it is not estopped from challenging any licensing restrictions assuming a strong federal policy favoring the full and free use of ideas in the public domain that outweighs the public interest against the competing demands of intellectual property and contract law

The NCAA's recent actions regarding student-athlete images

Despite the recent flurry of lawsuits, the NCAA might soon take action to increase its scope of image use. In January, the Division I Legislative Council sought membership comment on Proposal 2010-26, which, if passed, will change the rules regarding images and likenesses. Under existing rules, companies are generally restricted from using an athlete's name, image, or likeness in advertisements, promotions, or other ventures. Proposal 2010-26 would change this by allowing greater use of student-athlete images/likenesses in a corporate sponsor's promotions. The original proposal as well as any amended versions will be considered in April.

Recent Complaints and Orders

• Complaint: Oscar Robertson, et al. v. NCAA, et al., 11-388 (ND Cal 1-26-2011) (pdf)
• Consolidated Amended Class Action Complaint: In re NCAA, 2010 U.S. Dist. Ct. Pleadings LEXIS 2189 (pursuant to the order granting plaintiffs Samuel Michael Keller's and Edward C. O'Bannon, Jr.'s joint motion to consolidate actions)
  • Most Recent Order: In re NCAA Student-Athlete Name & Likeness Litig., 2010 U.S. Dist. LEXIS 139724 (N.D. Cal. Dec. 17, 2010) [enhanced version available to lexis.com subscribers]
• Complaint: Keller v. Electronic Arts, Inc., 2009 U.S. Dist. Ct. Pleadings LEXIS 33785
  • Final Order before Consolidation: O'Bannon v. NCAA, 2010 U.S. Dist. LEXIS 19170 (N.D. Cal. Feb. 8, 2010) [enhanced version]
  • Final Order before Consolidation: Keller v. Elec. Arts, Inc., 2010 U.S. Dist. LEXIS 10719 (N.D. Cal. Feb. 8, 2010) [enhanced version]
• Complaint: Brown v. Electrontic, 2009 U.S. Dist. Ct. Pleadings 418078 (C.D. Cal. July 22, 2009)
  • Final Order on Attorney's Fees: Brown v. Elec. Arts, Inc., 722 F. Supp. 2d 1148, 1151 (C.D. Cal. 2010) [enhanced version]

• Interlocutory Appeal: Ninth Circuit, 10-15387 - Appeal by Electronic Arts Inc. from order denying its motions to dismiss and to strike
  • View appellant's brief, appellee's brief and amicus briefs
  • View motions to dismiss/motions to strike and related filings

Related Resources

Case Law

• Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562 (U.S. 1977) [enhanced version / unenhanced version available from lexisONE Free Case Law] (holding that infringement of entertainer's right of publicity was not constitutionally privileged free speech, where television station broadcast entertainer's entire act during its newscast without entertainer's permission)
• Facenda v. N.F.L. Films, Inc., 542 F.3d 1007, 1026 (3d Cir. Pa. 2008) [enhanced version / unenhanced version] (holding that Pennsylvania's right-of-publicity statute protected plaintiff's voice in a way that did not conflict with the NFL's federal copyright)
• C.B.C. Distrib. & Mktg. v. Major League Baseball Advanced, L.P., 505 F.3d 818 (8th Cir. Mo. 2007) [enhanced version / unenhanced version] (holding that Major League Baseball players' right of publicity had to give way to seller's constitutional because players' names and information were in the public domain)
• Kirby v. Sega of America, Inc., 144 Cal. App. 4th 47 (Cal. App. 2d Dist. 2006) [enhanced version / unenhanced version] (holding that video game character was more than a mere likeness or literal depiction of the celebrity and contained sufficient expressive content to constitute a transformative work)
• ETW Corp. v. Jireh Publ'g, Inc., 332 F.3d 915 (6th Cir. Ohio 2003) [enhanced version / unenhanced version] (holding that artist's work had substantial informational and creative content and did not violate golfer's right of publicity and that the work, as expression, was entitled to the full protection of the First Amendment)
• Gionfriddo v. Major League Baseball, 94 Cal. App. 4th 400 (Cal. App. 1st Dist. 2001) [enhanced version / unenhanced version] (stating that Major League Baseball's  " . . .  records and statistics remain of interest to the public because they provide context that allows fans to better appreciate (or deprecate) today's performances.")
• Cardtoons, L.C. v. Major League Baseball Players Ass'n, 95 F.3d 959 (10th Cir. Okla. 1996) [enhanced version] (holding that parody baseball cards constituted protected speech because they provided social commentary on public figures involved in significant commercial enterprise)
• Abdul-Jabbar v. GMC, 85 F.3d 407 (9th Cir. Cal. 1996) [enhanced version] (refusing to apply Cal. Civ. Code 3344(d)'s "news" exception and stating that "While Lew Alcindor's basketball record may be said to be 'newsworthy,' its use is not automatically privileged.")
• Montana v. San Jose Mercury News, Inc., 34 Cal. App. 4th 790 (Cal. App. 6th Dist. 1995) [enhanced version] (holding that truthful use of a public figure's name and likeness in advertising to promote a news medium is generally not actionable under an appropriation of publicity theory)
• White v. Samsung Electronics America, Inc., 1992 U.S. App. LEXIS 19253 (9th Cir. Aug. 19, 1992) [enhanced version] (discussing the use of recognizable/cumulative traits to support a common law right of publicity claim)
• Baltimore Orioles, Inc. v. Major League Baseball Players Asso., 805 F.2d 663 (7th Cir. Ill. 1986) [enhanced version] (holding that Major League baseball teams owned the copyright in telecasts as works made for hire and that the copyright preempted players' rights of publicity in their performances)
• Motschenbacher v. R. J. Reynolds Tobacco Co., 498 F.2d 821 (9th Cir. Cal. 1974) [enhanced version] (holding that race car driver's unrecognizable identity was entitled to protection because image of car contained decorations peculiar to the driver's cars)
• Haelan Laboratories, Inc. v. Topps Chewing Gum, Inc., 202 F.2d 866 (2d Cir. N.Y. 1953) [enhanced version] (stating that man has a right in the publicity value of his photograph)
• O'Brien v. Pabst Sales Co., 124 F.2d 167 (5th Cir. 1941) [enhanced version] (affirming decision that right of privacy claim failed because plaintiff, a college football player, was an outstanding national football figure and had completely publicized his name and his pictures)

Law Reviews (lexis.com customers can access the articles directly)

• Bill Cross, The NCAA as Publicity Enemy Number One, 58 Kan. L. Rev. 1221 (2010)
• Leslie E. Wong, Our Blood, Our Sweat, Their Profit: Ed O'Bannon Takes on the NCAA for infringing on the former student-athlete's right of publicity, 42 Tex. Tech L. Rev. 1069 (2010)
• Brandon Johansson, Pause the Game: Are Video Game Producers Punting away the Publicity Rights of Retired Athletes? 10 Nev. L.J. 784 (2010)
• Beth A. Cianfrone and Thomas A. Baker III, The Use of Student-Athlete Likenesses in Sport Video Games: An Application of the Right of Publicity, 20 J. Legal Aspects Of Sport 35 (2010)
• Anastasios Kaburakis, David A. Pierce, Olivia M. Fleming, Galen E. Clavio, Heather J. Lawrence, and Dawn A. Dziuba, NCAA Student-Athletes' Rights of Publicity, EA Sports, and The Video Game Industry: The Keller Forecast, 27 Ent. & Sports Law. 1 (2009)
• Christian Dennie, Tebow Drops Back to Pass: Videogames Have Crossed the Line, But Does the Right of Publicity Protect a Student-Athlete's Likeness When Balanced Against the First Amendment?, 62 Ark. L. Rev. 645 (2009)
• Sean Hanlon and Ray Yasser, "J.J. Morrison" and his Right of Publicity Lawsuit against the NCAA, 15 Vill. Sports & Ent. L.J. 241 (2008)
• Kristine Mueller, No Control Over their Rights of Publicity: College Athletes Left Sitting the Bench, 2 DePaul J. Sports L. Contemp. Probs. 70 (2004)
• Matthew G. Matzkin, Gettin' Played: How the Video Game Industry Violates College Athletes' Rights of Publicity by not Paying for their Likenesses, 21 Loy. L.A. Ent. L. Rev. 227 (2001)
• James S. Thompson, University Trading Cards: Do College Athletes Enjoy A Common Law Right To Publicity?, 4 Seton Hall J. Sports L. 143 (1994)

Treatises (lexis.com customers can access the treatises directly)

• Gilson on Trademarks: Chapter 2B, The Right of Publicity (Purchase this treatise at the LexisNexis Store)
• 1-1 Nimmer on Copyright § 1.01 Federalism in the Law of Copyright (discussing the intersection of federal copyright law and the right of publicity) (Purchase this treatise at the LexisNexis Store)

• Intellectual Property Counseling & Litigation Chapter 28 Privacy, Publicity and Intellectual Property  (Purchase this treatise at the LexisNexis Store)

• Trademark and Unfair Competition Deskbook § 8.05 Right of Publicity (Purchase this treatise at the LexisNexis Store)
• 1-12 CA Antitrust and Unfair Competition Law § 12.09 Preemption of State Law Unfair Competition and Antitrust Claims by the Copyright Act of 1978 (Purchase this treatise at the LexisNexis Store)
• 1-1 California Intellectual Property Handbook § 9 Artists' and Authors' Rights in Their Works (Apart From Patent and Copyright) (Purchase this treatise at the LexisNexis Store)
• 10-209 Entertainment Industry Contracts FORM 209-8; PART VII SPORTS CONTRACTS, CHAPTER 209 ENDORSEMENT LICENSE AGREEMENTS - PLAYER HIGHLIGHT AGREEMENT (Purchase this treatise at the LexisNexis Store)

• The Law of Advertising § 29.02 Use of Unauthorized Testimonials, Endorsements or Affiliations (Purchase this treatise at the LexisNexis Store)
• Restatement of the Law, Third, Unfair Competition, § 46: Appropriation of the Commercial Value of a Person's Identity: the Right of Publicity 
• Restatement 2d of Torts, § 652C: Appropriation of Name or Likeness
• Telephonic CLE for "Ads That Should Not Have Run: How to Avoid the Legal Pitfalls in Creating Ads" (includes privacy, right of publicity) (Purchase this CLE at the LexisNexis Store)

LexisNexis Communities

• LaFrance on Right of Publicity and False Endorsement: Armstrong v. Eagle Rock - Mary LaFrance analyzes Armstrong v. Eagle Rock Entm't, Inc., 2009 U.S. Dist. LEXIS 82368 (E.D. Mich. Sept. 10, 2009), which addressed the interrelationship of federal copyright law, the First Amendment, and federal and state law claims arising . . . .
• Naming Rights -- and Wrongs: A Road Map to Protecting Personal Names - In this Analysis, Anne Gilson LaLonde surveys why and how personal name marks receive special treatment in trademark law, how personal name marks can be valid, enforceable marks, and how one can register them with . . . .
• Podcast: Comments on the Lindsay Lohan suit against ETrade & the right of publicity - Community Member Andrew Beckerman-Rodau, Professor of Law & Co-Director IP Concentration a the Suffolk University Law School, contributed the following podcast to the community.
• Ninth Circuit finds publicity claim preempted by Copyright Act and grants infringement standing to performer as company's sole employee: Jules Jordan v. 144942 Canada Inc. (Aug. 16, 2010) - Gasper, an adult movie actor, was the president and sole shareholder of Jules Jordan Video (JJV), the creator of the videos in which Gasper appeared. Gasper and JJV filed a copyright action against defendants, alleging . . . .

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