No Doubt wins claim against video game publisher Activision: claim is not barred by the First Amendment and the use in the video game violates band members’ right of publicity
The band No Doubt has secured a significant ruling against video game publisher Activision. The ruling also appears to send a clear message to the video game industry that video games are indeed commercial products, are not entitled to right of publicity exemptions, and are not to be afforded special First Amendment treatment.
Video games would seem to be a prime example of why the right of publicity exists in the first place. Nevermind the long-standing course of conduct whereby video game companies routinely have secured permission and licensed the use of third-party intellectual property in its games; if a video game is not a commercial product, and is exempt from right of publicity liability when a person is included in the game’s content and programming, one would have to wonder why the right of publicity exists at all. This ruling gives some assurance that the video game industry is not going to secure the sweeping shield from right of publicity compliance that it has been seeking.
No Doubt licensed Activision for inclusion in its popular Rock Band video game subject to specific limitations in the license agreement. The use of the band went beyond the contractual allowances, and allowed users to unlock features and manipulate the No Doubt avatars into performing songs that were not approved by the band, among other things.
It would seem like this claim was really just a contract dispute at its core. If the contract precisely defined how the band could be included in the video game, then anything that goes beyond those parameters would seem to exceed, and thus breach, the license agreement.
Activision asserted that No Doubt’s claim was barred by the First Amendment, and that the use was sufficiently transformative (under the Comedy III decision) and therefore not a violation of the band members’ right of publicity. The Court disagreed, and added that the band did not need to show that the use was “explicitly misleading” in order to support its unfair competition claim.
The video game industry would like to believe that its commercial products should be exempt under right of publicity legislation, receiving the same treatment as books or news reporting. This ruling, at least, would seem to indicate that the Courts aren’t buying the video game industry’s view.
Here is a link to the ruling: http://www.courtinfo.ca.gov/opinions/documents/B223996.PDF
I never really quite understand why people hide behind a first amendment defense when they are engaged in such profitable ventures. I can understand an artist seeking protection of his or her artistic expression, and that a work is transformative.
In my opinion, the first amendment argument in IP cases is just a sort of last-ditch effort when others fail. It’s a weak argument. I think it should be a FACTOR in determining the ultimate outcome, but a small one that should be pitted against a barrage of other factors that are much more important, like the intent of the infringer (profitability? REAL artistic expression?) and other factors that impact the work. It seems that the courts follow some of these thoughts (Comedy III is a good example).
I find this to be a ruling that follows a long tradition of precedent, and is quite sound in its reasoning.
JG
Jeff,
I can’t say I fully agree that profitability should weaken first amendment protections. It would seem to create a legal presumption that the only good artist is a starving artist. Many of the more traditional creative avenues (books, movies, television programs, and music) are also done for a profit. If profitability were a bar, there would be barely any first amendment protection at all.
I’m also skeptical of the use of intent as a factor in analyzing these cases. For one thing, artists are most likely frequently motivated by both profitability AND artistic expression. Beyond that, proving which one motivated the artist would be problematic. You can’t reliably obtain an answer by asking them, both because they’d like to avoid liability and because they are unlikely to publicly admit to being sell-outs. Looking at the work itself can also be tricky, as artistic expression can contain a fair amount of subtlety and nuance. I can’t say that when I first saw Warhol’s prints, I thought “Ah, this is clearly an ironic statement on the dehumanization of celebrities.” A judge or jury might just conclude that he liked Marilyn Monroe and he liked bright colors. They might also be reluctant to believe that a bloody zombie massacre is really a criticism of American consumerism.
Although I don’t think video games generally do contain much artistic expression, the medium is certainly capable of it, and I don’t think that profits undermine that, particularly since, in an ideal world, a valuable artistic work would earn a substantial profit.
That being said, this case probably came out the right way. I don’t think Activision was really trying to “say” anything by using No Doubt; they seem to have just been trying to exploit them.
Good points, Jeff and Will, and thanks for the posts. To the point regarding profitability, I don’t think that aspect alone would typically weaken First Amendment protections. There are various sources supporting the idea that just because a newspaper, for example, seeks to make a profit does not diminish the publisher’s usual First Amendment safeguards. I might be content with the possibility that a Judge would make a case by case determination as to whether a given video game contains enough artistic expression so as to overcome the presumption that it is a product which must typically abide by right of publicity laws, but I do not think it is appropriate to set a default rule that video games are categorically exempt.
agreed. factor it is 🙂
Despite being removed from Federal court for lack of Copyright claims, the court in the opinion seems to subversively follow Copyright’s factors for fair use (with a slight twist).
The factors: 1) Purpose and character of the use 2) Nature of the copyrighted work 3) Amount and substantiality of the work used and 4) Market Effect.
However, I propose the court twist the idea of factor four, market effect, and instead uses it as a “Likelihood of Context/Venue” factor. The court made several points regarding the venues at which the No doubt characters would perform in the game as well as comparing that to the case of Kirby, which had a “reporting” dancing in outerspace.
In No Doubt, the venue’s the avatars played in did not outweigh factors 2 and 3 which indicated the avatars were substantially copyrighted likenesses of No Doubt individually. In Kirby, the venue factor was given more weight when the court found factors 2 and 3 to have more qualities of transformation and less likeness taken from Ms. Kirby.
While overall, I feel Right of Publicity aligns more with trademark law, the No Doubt decision spent much time discussing factors that more closely matched that of copyright law.
I could not say that I totally agree with the decision of the court. I need to consider other facts of this case, such as the caracteristic of the video game. However, if I consider only a general idea, I think it is a good decision. In my view, one cannot take advantage from other people’s fame, especially, using their name for commercial benefits and without their permission. I agree that vedio game companies should not get exemption under right of publicity legistation because they make vedio games for their own money not for social knowledge; like news reporting, books. Therefore, in order to avoid conflicts, vedio game companies should ask for celebrity’s permission before using his name.
In response to Jeff Gorham^^:
While I agree with the ruling, as well as the long line of precedent, my comment unfortunately is going to deviate from the immediate facts/circumstances that were the basis of the case because I feel compelled to play devil’s advocate in response to the assertion that the First Amendment defense is a last resort when it comes to uses that teeter on the line of infringement or free expression.
Foremost, from my exposure to these cases in law school it seems to me that, while the First Amendment defense may be raised last, it is done so because it is one of the tougher defenses to sustain. As a future lawyer, I too would be more inclined to attack the elements of a test and/or the requirements of a statute used as the basis of a claim before anything else. In my opinion, just because that is the case does not make the First Amendment defense any less of a legitimate defense to assert, just one that you don’t want to have to assert if you don’t have to b/c of its high burden of proof.
Furthermore, based off of my practical experience working for a company that pursues right of publicity/trademark infringements for celebrities and their estates, many times the First Amendment defense is the very first defense/explanation we receive from infringers that we are pursuing.
I concede that the vast majority of those assertions I have encountered did not have any potential to be afforded First Amendment protection because they were not transformative whatsoever, and thus, as you’ve pointed out, become last ditch, weak arguments in those cases. However, in my mind, just because some use it in such a way does/should not minimize the legitimacy and role it can and does play in the defense of infringements. I’ve taken a liking to famous street artists (some would refer to them as graffiti artists or vandals) such as Banksy and Shepard Fairy (the guy who did the Obama red/blue Hope poster) and it is these two I had in mind when reading your post/responding to it. Much of their style and many of their works rely on the use of celebrity likeness and its incorporation into their works – think Warhol-ish. While I won’t go as far to defend any particular use by artists such as these, I feel inclined to defend their First Amendment defenses to their uses as something much more significant than last-ditch.
For example, Banksy created a piece depicting Samuel L. Jackson and John Travolta from the scene known as Divine Intervention in the movie “Pulp Fiction.” Banksy only changed a small feature, adding two yellow bananas to the characters hands instead of the guns as originally held. (seen here http://www.nerdbanite.com/2009/06/mantis-creates-a-banksy-banana-parody/). It has been reported that this was an attempt by Banksy, coupled together w/ the context of the scene and Samuel L. Jackson’s comment that “this was divine intervention” when just missing being shot and killed, to comment on the futility of weapons, and more generally power-wielding devices, in the face of uncontrollable and unforeseen events. As a modern art consumer I not only expect to see works like this, but I also want to see them and not have them be enjoined when they should not have been. So in my mind, works that raise questions regarding freedom of expression defenses shouldn’t be seen as last-ditch efforts and subordinate to other factors such as intent and REAL artistic expression because that would risk depriving society of artistically valuable works. Instead it seems as if this should be the dominant factor if/when it comes down to a First Amendment analysis for a particular use since ultimately if Freedom of Expression interests are threatened then those will most certainly trump the celebrity’s interests and also render the artist’s intent moot. After all, the purpose of IP protection is to promote creativity, invention and the useful arts, so if we lose sight of the importance freedom of expression defenses can/should play then we’ve effectively subordinated our First Amendment interests to the commercial interests of celebrities, expanding RoP to a place where it was never intended to go.
In Summary: (1) misappropriation is bad; (2) right of publicity is good and ND vs. Activision was decided logically; and (3) freedom of expression is much more significant than a last ditch defense to IP infringement claims b/c First Amendment rights > RoP rights.
– JBH
I am more persuaded by Judge Epstein’s concurring opinion. There was in this case a licensing agreement the bounds of which were ignored by the Defendant. I don’t know why resolution of this matter required the court to even get into the transformative test. Would, for example, a party to a non-disclosure agreement be bale to reasonably claim first amendment protection after violating the terms of the NDA? Perhaps in an extreme whistleblower type circumstance but not in more routine commercial setting.
I also think the case has echoes of the Midler and Waits cases.
“When No Doubt complained about the additional exploitation of their likenesses, Activision admitted that it hired actors to impersonate No Doubt in order to create the representations of the band members‟ performances of the additional musical works other than the No Doubt songs licensed for the game.”
Here the Defendant hired actors to facilitate creation of the No Doubt band member avatars, at least the “unlocked” capable avatars. That is not much different than defendants who hired voice impersonators to imitate Midler and Waits in order to simulate the types of endorsements Midler and Waits had refused to authorize. The only difference is No Doubt members had OK’d a limited use of their likenesses and the Defendant used actors (imitators) to go beyond that limited use.
I am not sure that this decision has such a sweeping impact on the entire video game industry. But it definitely has a huge impact on video games like Band Hero that are capitalizing on the popularity of particular songs and the fame of particular bands/singers.
In light of Comedy III’s sufficiently transformative test, I think that Activision’s defense is basically obliterated by the fact that they actually had No Doubt band members participate in a full day motion capture photography so that the avatars could precisely imitate the actual artists. It is hard for me to see how they can later claim that they transformed the avatars into something sufficiently different from their original forms. I think their defense would be a lot stronger if they had simply licensed No Doubt’s songs without having the bad members pose for the avatars. However they would still have a problem if they used the songs and created avatars that obviously were meant to represent the band members.
Having never played Band Hero, I am not exactly sure how the game works with unlocking different avatars, etc. and how the game would function without those functions or whether people who be as interested in buying the game without those features. But it seems to me that Activision could have let players just create their own avatars and a player could have created their own No Doubt replicas. I don’t think that No Doubt would have a claim against Activision for allowing combinations of features that could potentially allow players to create an avatar that resembles the band members.
JBH
I agree with your pointing out that there ARE legitimate 1st amendment defenses. I whole-heartedly agree that there are people out there who are ACTUALLY expressing themselves. I think the point I was trying to make was that a lot of people try to use it as a defense when it shouldn’t be (another excellent point you made). You seemed to articulate my point in a little better way with more examples, and I, in a poor attempt to get straight to the point, didn’t really spend enough (or any) time exploring the other option. I agree with your post almost in its entirety.
Jeff
Personally, I am very in favor of wide First Amendment protections. As a society, I feel we all benefit from a public discourse that touches on many topics. When reading this case, I kept trying to justify Activision’s actions as coming under First Amendment protection, but I simply could not. One of the important points was the original contract/license agreement between No Doubt and Activision. The fact that the Band Hero game required No Doubt to come in and perform so it could mimic their voices and movements defeats the “transformative” defense Activision tried to raise. It almost seems as if Activision knew No Doubt would not approve of the unlocking features in the game and would not want their band members singing other songs and would certainly not want Gwen Stefani singing like a man. Activision should have pursued this in the license agreement, and because they did not it appears they just skirted their agreement with No Doubt to include a feature that the band would not have approved of.
Another issue I think weighs heavily in favor of No Doubt is public confusion. It is entirely possible that players of the game or members of the general public would think that No Doubt had approved of the band performing other songs in the game and of Stefani singing like a man. These are things that No Doubt should be able to control. The court mentions trademark law several times and the Lanham Act, both of which are concerned with what the public thinks is the source of the action. Activision has went beyond the original license agreement and consumers will not know that No Doubt didn’t approve of the changes made in the game.
I also feel the concurrence raises a valid point about not having to reach the “transformative” defense. All use of No Doubt’s likenesses were subject to their control and the unlocking feature of the game clearly went beyond that agreement. While the First Amendment is a strong defense, parties should be able to contract away those rights, something Activision clearly did here.
I think Activision’s First Amendment argument was a bit of a stretch. It seemed like a last ditch effort to make a case that did not hold much weight. The fact that Activision entered into a licensing agreement with No Doubt indicates they were aware that there were limits to the use of the band’s image, likeness, etc. For them to now try to claim that they have a First Amendment right to exceed the limits of that agreement seems more like a last ditch attempt to make a case rather than a truly valid argument. If Activision was so confident that they had a right to expand the band’s usage in the game, why bother getting a license in the first place?
Activision could have been more successful had they tried to argue that their expanded use of the band in the game did not exceed the terms of the licensing agreement. Activision could have made several arguments as to why they did not breach their contract with No Doubt. The use of the band members in the upper levels was limited. It was merely their images that were used, not their voices or their songs. Simply allowing the avatars to appear in later levels does not seem to be that great of a deviation from the terms that were originally agreed upon. Rather than trying to argue that the avatars appearing in the game’s upper levels was somehow a transformative use, Activision may have had a better chance had they focused on how minimal the additions and changes were from the usage that the two parties had already agreed to.
I apparently forgot to comment on this before now, so here it is:
First, as I read the opinion, I wonder why it is that No Doubt is having such a fit over the fact that their avatars can sing songs that are not from the band No Doubt.
Second, it seems a bit ridiculous to make this into a Right of Publicity claim when what really happened was that Activision overstepped their contractual bounds. Why couldn’t this have been brought as only a breach of contract claim? The court seems to think that this is more than a contract dispute, and I get the feeling it’s because video games are classified as expressive works.
Third, I completely concur that video games are “expressive works,” but they are expressive works created to garner a profit, and are mass produced and sold, like t-shirts, instead of original paintings or other such expressive works. So, while they surely have some First Amendment protections, the actual use of the avatars created to look exactly like the No Doubt, and even programmed to move just like No Doubt, don’t seem very “expressive” in that there is no statement being made about the band, simply a representation that is intended to be as close to the actual style, movement, and essential being as possible. So in this case, First Amendment would apply, but on the scale of purely First Amendment to purely created for profit, this falls on the for-profit side.