                                       PRECEDENTIAL

    UNITED STATES COURT OF APPEALS
         FOR THE THIRD CIRCUIT
              _____________

                  No. 11-3750
                 _____________

        RYAN HART, individually and on
       behalf of all others similarly situated

                         v.

          ELECTRONIC ARTS, INC.,
       a Delaware Corporation; DOES 1-50

                    Ryan Hart,
                          Appellant
                 ______________

APPEAL FROM THE UNITED STATES DISTRICT
 COURT FOR THE DISTRICT OF NEW JERSEY
    (D.C. Civ. Action Number 3-09-cv-05990)
   District Judge: Honorable Freda L. Wolfson
                ______________

           Argued: September 19, 2012
                ______________
        Before: AMBRO, GREENAWAY, JR., and
               TASHIMA*, Circuit Judges.

              (Opinion Filed: May 21, 2013)
                    ______________

Michael Rubin, Esq. [ARGUED]
Altshuler, Berzon, Nussbaum & Rubin
177 Post Street, Suite 300
San Francisco, CA 94108

Timothy J. McIlwain, Esq.
McIlwain & Mullen
P.O. Box #1538
Hoboken, NJ 07030

Keith A. McKenna, Esq.
96 Park Street
Montclair, NJ 07042
      Counsel for Appellant Ryan Hart

Elizabeth A. McNamara, Esq. [ARGUED]
Davis, Wright & Tremaine
1633 Broadway, 27th Floor
New York, NY 10019




*
 Honorable A. Wallace Tashima, Senior United States Circuit
Judge for the Ninth Circuit, sitting by designation.




                            2
Bruce S. Rosen, Esq.
McCusker, Anselmi, Rosen & Carvelli
210 Park Avenue, Suite 301
Florham Park, NJ 07932
      Counsel for Appellee Electronic Arts, Inc.

P. Casey Pitts, Esq.
Michael Rubin, Esq.
Altshuler, Berzon, Nussbaum & Rubin
177 Post Street, Suite 300
San Francisco, CA 94108
      Counsel for Major League Baseball Players
      Association, Major League Soccer Players Union,
      NFL Players Association, NHL Players Association,
      and National Basketball Players Association, Amici
      Appellant

Duncan W. Crabtree-Ireland, Esq.
Screen Actors Guild
5757 Wilshire Boulevard, 7th Floor
Los Angeles, CA 90036
      Counsel for Screen Actors Guild, Inc., American
      Federation of Television and Radio Artists, AFL-CIO,
      and Luminary Group LLC, Amici Appellant




                             3
Nathan E. Siegel, Esq.
Levine, Sullivan, Koch & Schulz
1899 L Street, N.W., Suite 200
Washington, DC 20036
      Counsel for Advance Publications, Inc., A&E
      Television Networks, Inc., Activision Blizzard, Inc.,
      Bloomberg News, Capcom U.S.A., Inc., Comic Book
      Legal Defense Fund, Daily News, L.P., Dow Jones
      Local Media Group, ESPN, Inc., First Amendment
      Coalition, Forbes, Inc., Freedom Communications,
      Inc., Gannett Co., Inc., Gawker Media, Hybrid Films,
      Inc., The McClatchy Company, National Public
      Radion, Inc., The New York Times Co., North Jersey
      Media Group Inc., Pennsylvania Newspaper
      Association, Press-Enterprise Company, The Radio
      Television Digital News Association, Reporters
      Committee for Freedom of the Press, Square-Enix,
      Inc., Take-Two Interactive Software, Inc., THQ, Inc.,
      The Washington Post Co., and Wenner Media, Amici
      Appellee

Douglas E. Mirell, Esq.
Eric B. Schwartz, Esq.
Loeb & Loeb
10100 Santa Monica Boulevard, Suite 2200
Los Angeles, CA 90067
       Counsel for Motion Picture Association of America,
       Inc., Amicus Appellee




                             4
Julie A. Ahrens, Esq.
Stanford Law School
559 Nathan Abbott Way
Standord, CA 94305
       Counsel for the Organization for Transformative
       Works, International Documentary Association,
       International Documentary Association, Digital Media
       Law Project, Irene Calboli, Danielle M. Conway, Jon
       M. Garon, Deborah R. Gerhardt, Greg Lastowka,
       Mark A. Lemley, Yvette Joy Liebesman, Phillip R.
       Malone, Jason M. Schultz, Jessica Silbey, Amici
       Appellee
                      ______________

                         OPINION
                      ______________

GREENAWAY, JR., Circuit Judge.

       In 2009, Appellant Ryan Hart (“Appellant” or “Hart”)1
brought suit against Appellee Electronic Arts, Inc.
(“Appellee” or “EA”) for allegedly violating his right of
publicity as recognized under New Jersey law. Specifically,
Appellant‟s claims stemmed from Appellee‟s alleged use of
his likeness and biographical information in its NCAA
Football series of videogames. The District Court granted
summary judgment in favor of Appellee on the ground that its
1
  Appellant‟s action purports to be a class action on behalf of
similarly situated individuals. Because the putative class
members all face the same issues with regard to the First
Amendment we will focus our attention and analysis on
Appellant in particular.




                              5
use of Appellant‟s likeness was protected by the First
Amendment. For the reasons set forth below, we will reverse
the grant of summary judgment and remand the case back to
the District Court for further proceedings.

                           I.   Facts

        Hart was a quarterback, player number 13, with the
Rutgers University NCAA Men‟s Division I Football team
for the 2002 through 2005 seasons. As a condition of
participating in college-level sports, Hart was required to
adhere to the National Collegiate Athletic Association‟s
(“NCAA”) amateurism rules as set out in Article 12 of the
NCAA bylaws. See, e.g., NCAA, 2011-12 NCAA Division I
Manual § 12.01.1 (2011) (“Only an amateur student-athlete is
eligible for inter-collegiate athletics participation in a
particular sport.”). In relevant part, these rules state that a
collegiate athlete loses his or her “amateur” status if (1) the
athlete “[u]ses his or her athletics skill (directly or indirectly)
for pay in any form in that sport,” id. § 12.1.2, or (2) the
athlete “[a]ccepts any remuneration or permits the use of his
or her name or picture to advertise, recommend or promote
directly the sale or use of a commercial product or service of
any kind,” id. § 12.5.2.1.2 In comporting with these bylaws,

2
  The NCAA Manual also states that where a collegiate
athlete‟s

       name or picture appears on commercial
       items . . . or is used to promote a commercial
       product sold by an individual or agency without
       the student-athlete‟s knowledge or permission,
       the student athlete (or the institution acting on
       behalf of the student-athlete) is required to take




                                6
Hart purportedly refrained from seizing on various
commercial opportunities.3 On the field, Hart excelled. At
6‟2”, weighing 197 pounds, and typically wearing a visor and
armband on his left wrist, Hart amassed an impressive list of
achievements as the Scarlet Knights‟ starting quarterback. As
of this writing, Hart still holds the Scarlet Knights‟ records
for career attempts, completions, and interceptions.4 Hart‟s
skill brought success to the team and during his senior year
the Knights were invited to the Insight Bowl, their first Bowl
game since 1978.

       Hart‟s participation in college football also ensured his
inclusion in EA‟s successful NCAA Football videogame
franchise. EA, founded in 1982, is “one of the world‟s
leading interactive entertainment software companies,” and
“develops, publishes, and distributes interactive software
worldwide” for consoles, cell phones, and PCs. (App. at 529-
30.) EA‟s catalogue includes NCAA Football, the videogame
series at issue in the instant case. The first edition of the


       steps to stop such an activity in order to retain
       his or her eligibility for intercollegiate athletics.

NCAA, 2011-12 NCAA Division I Manual § 12.5.2.2 (2011).
3
  NCAA bylaws limit college athletes like Hart to receiving
only non-athletic financial aid, either through academic
scholarships or need-based aid, or athletic scholarships, which
cover only tuition and various school-related expenses. See
NCAA, 2011-12 NCAA Division I Manual § 15 (2011).
4
  Until his recent displacement by Mike Teel, Hart also held
the team records for career yards and touchdowns.




                                7
game was released in 1993 as Bill Walsh College Football.
EA subsequently changed the name first to College Football
USA (in 1995), and then to the current NCAA Football (in
1997). New editions in the series are released annually, and
“allow[] users to experience the excitement and challenge of
college football” by interacting with “over 100 virtual teams
and thousands of virtual players.” (Id. at 530.)

       A typical play session allows users the choice of two
teams. “Once a user chooses two college teams to compete
against each other, the video game assigns a stadium for the
match-up and populates it with players, coaches, referees,
mascots, cheerleaders and fans.”5 (Id.) In addition to this
“basic single-game format,” EA has introduced a number of
additional game modes that allow for “multi-game” play. (Id.
at 530-31.) Thus, with the release of NCAA Football 98, EA
introduced the “Dynasty Mode,” which allows users to
“control[] a college program for up to thirty seasons,”
including “year-round responsibilities of a college coach such
as recruiting virtual high school players out of a random-
generated pool of athletes.” (Id. at 531.) Later, in NCAA
Football 2006, EA introduced the “Race for the Heisman”
(later renamed “Campus Legend”), which allows users to
“control a single [user-made] virtual player from high school
through his collegiate career, making his or her own choices


5
  Appellee licenses, from the Collegiate Licensing Company
(the NCAA‟s licensing agent), “the right to use member
school names, team names, uniforms, logos, stadium fight
songs, and other game elements.” (App. at 532.) Unlike
certain of its other videogame franchises, EA does not license
the likeness and identity rights for intercollegiate players.




                              8
regarding practices, academics and social activities.” (Id. at
531-32.)

        In no small part, the NCAA Football franchise‟s
success owes to its focus on realism and detail — from
realistic sounds, to game mechanics, to team mascots. 6 This
focus on realism also ensures that the “over 100 virtual
teams” in the game are populated by digital avatars that
resemble their real-life counterparts and share their vital and
biographical information. Thus, for example, in NCAA
Football 2006, Rutgers‟ quarterback, player number 13, is
6‟2” tall, weighs 197 pounds and resembles Hart. Moreover,
while users can change the digital avatar‟s appearance and
most of the vital statistics (height, weight, throwing distance,
etc.), certain details remain immutable: the player‟s home
state, home town, team, and class year.

       Appellant filed suit against EA in state court for,
among other things, violation of his right of publicity.
Appellant‟s first amended complaint, filed in October 2009,
alleged that Appellee violated his right of publicity by
appropriating his likeness for use in the NCAA Football series
of videogames. Appellee subsequently removed the action to
federal court, and the District Court subsequently dismissed



6
  For example, an article on the EA Sports blog explained that
“[e]ach year, NCAA Football playbook designer Anthony
White strives to make each team‟s playbook accurately
represent their system and play style. . . . [E]ach year,
Anthony adds in actual plays run by teams that can only be
found in specific playbooks.” (App. at 663.)




                               9
all but one of the claims.7 Thereafter, on October 12, 2010,
Appellant filed his second amended complaint, again alleging
a claim pursuant to the right of publicity based on Appellee‟s
purported misappropriation of Appellant‟s identity and
likeness to enhance the commercial value of NCAA Football.
Specifically, Appellant alleges that (1) Appellee replicated his
likeness in NCAA Football 2004, 2005, and 2006 (complete
with biographical and career statistics)8 and that (2) Appellee
used Appellant‟s image “in the promotion for [NCAA
Football] wherein [Appellant] was throwing a pass with
actual footage from Rutgers University‟s Bowl Game against
Arizona State University.”9 (App. at 370.)

      On November 12, 2010, Appellee filed a motion to
dismiss the claim pursuant to Federal Rule of Civil Procedure

7
 The District Court had diversity jurisdiction over the case
pursuant to 28 U.S.C. § 1332(a)(1).
8
  Appellant alleges that the physical attributes exhibited by
the virtual avatar in NCAA Football are his own (i.e., he
attended high school in Florida, measures 6‟2” tall, weighs
197 pounds, wears number 13, and has the same left wrist
band and helmet visor) and that the avatar‟s speed, agility,
and passer rating reflected actual footage of Appellant during
his tenure at Rutgers. (App. at 369-71.)
9
  It is unclear from the complaint what exactly this allegation
covers. However, Appellee concedes that “[a] photograph of
[Appellant] is included in a photo montage of actual players
within NCAA Football 09 which is visible only when the
game is played on certain game platforms by those users who
select Rutgers as their team.” (App. at 475.)




                              10
12(b)(6) or, in the alternative, summary judgment pursuant to
Federal Rule of Civil Procedure 56(c). While conceding, for
purposes of the motion only, that it had violated Appellant‟s
right of publicity, Appellee argued that it was entitled to
dismissal or summary judgment on First Amendment
grounds. Hart v. Elec. Arts, Inc., 808 F. Supp. 2d 757, 766
(D.N.J. 2011). The motion was accompanied by a Statement
of Undisputed Fact and various supporting materials,
including declarations. Appellant opposed the motion,
arguing that “discovery [was] still in it‟s [sic] infancy.”
(App. at 9.) The court below rejected this argument, noting
that Appellant had “fail[ed] to identify how discovery would
assist the Court in deciding this speech-based tort case.”
Hart, 808 F. Supp. 2d at 764. The District Court then
construed the motion as one for summary judgment, citing its
intent to “rely on the affidavits and exhibits submitted by the
parties,” id., and ruled in favor of Appellee, holding that
NCAA Football was entitled to protection under the First
Amendment. Appellant timely appealed, arguing that the
District Court erred in granting summary judgment
prematurely and, in the alternative, erred in holding that
NCAA Football was shielded from right of publicity claims
by the First Amendment. The matter is now before us for
review.

        II.   Jurisdiction and Standard of Review

        We have jurisdiction to hear this appeal pursuant to 28
U.S.C. § 1291. Our review of the District Court‟s order
granting summary judgment is plenary. Azur v. Chase Bank,
USA, Nat’l Ass’n, 601 F.3d 212, 216 (3d Cir. 2010). “To that
end, we are „required to apply the same test the district court
should have utilized initially.‟” Chambers ex rel. Chambers
v. Sch. Dist. of Phila. Bd. of Educ., 587 F.3d 176, 181 (3d Cir.




                              11
2009) (quoting Oritani Sav. & Loan Ass’n v. Fidelity &
Deposit Co. of Md., 989 F.2d 635, 637 (3d Cir. 1993)).

        Summary judgment is appropriate “where the
pleadings, depositions, answers to interrogatories, admissions,
and affidavits show there is no genuine issue of material fact
and that the moving party is entitled to judgment as a matter
of law.” Azur, 601 F.3d at 216 (quoting Nicini v. Morra, 212
F.3d 798, 805-06 (3d Cir. 2000) (en banc) (citing Fed. R. Civ.
P. 56(c))).10 To be material, a fact must have the potential to
alter the outcome of the case. See Kaucher v. Cnty. of Bucks,
455 F.3d 418, 423 (3d Cir. 2006). “Once the moving party
points to evidence demonstrating no issue of material fact
exists, the non-moving party has the duty to set forth specific
facts showing that a genuine issue of material fact exists and
that a reasonable factfinder could rule in its favor.” Azur, 601
F.3d at 216. In determining whether summary judgment is
warranted “[t]he evidence of the nonmovant is to be believed,
and all justifiable inferences are to be drawn in his favor.”
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986);
see also Chambers ex rel. Chambers, 587 F.3d at 181.
“Further, [w]e may affirm the District Court on any grounds
supported by the record.” Kossler v. Cristani, 564 F.3d 181,


10
    Fed. R. Civ. P. 56 was revised in 2010. The standard
previously set forth in subsection (c) is now codified as
subsection (a). The language of this subsection is unchanged,
except for “one word — genuine „issue‟ bec[ame] genuine
„dispute.‟” Fed. R. Civ. P. 56 advisory committee‟s note,
2010 amend.




                              12
186 (3d Cir. 2009) (en banc) (internal quotation marks
omitted).

       In connection with Appellant‟s request for additional
discovery, we review “[w]hether a district court prematurely
grant[ed] summary judgment . . . for abuse of discretion.”
Radich v. Goode, 886 F.2d 1391, 1393 (3d Cir. 1989) (citing
Dowling v. City of Phila., 855 F.2d 136 (3d Cir. 1988)). “To
demonstrate an abuse of discretion, [an appellant] must show
that the District Court‟s decision was arbitrary, fanciful or
clearly unreasonable.” Moyer v. United Dominion Indus.,
Inc., 473 F.3d 532, 542 (3d Cir. 2007) (internal quotation
marks omitted); see also Hanover Potato Prods., Inc. v.
Shalala, 989 F.2d 123, 127 (3d Cir. 1993) (“An abuse of
discretion arises when „the district court‟s decision rests upon
a clearly erroneous finding of fact, an errant conclusion of
law or an improper application of law to fact.” (internal
quotation marks omitted)).

                      III.   Discussion

        We begin our analysis by noting the self-evident:
video games are protected as expressive speech under the
First Amendment. Brown v. Entm’t Merchs. Ass’n, 131 S. Ct.
2729, 2733 (2011). As the Supreme Court has noted, “video
games communicate ideas — and even social messages —
through many familiar literary devices (such as characters,
dialogue, plot, and music) and through features distinctive to
the medium (such as the player‟s interaction with the virtual
world).” Id. As a result, games enjoy the full force of First
Amendment protections. As with other types of expressive
conduct, the protection afforded to games can be limited in
situations where the right of free expression necessarily
conflicts with other protected rights.




                              13
        The instant case presents one such situation. Here,
Appellee concedes, for purposes of the motion and appeal,
that it violated Appellant‟s right of publicity; in essence,
misappropriating his identity for commercial exploitation.
(Appellant‟s Br. at 8, 34; Tr. at 50:12-:16.) However,
Appellee contends that the First Amendment shields it from
liability for this violation because NCAA Football is a
protected work. To resolve the tension between the First
Amendment and the right of publicity, we must balance the
interests underlying the right to free expression against the
interests in protecting the right of publicity. See Zacchini v.
Scripps-Howard Broad. Co., 433 U.S. 562, 574-75 (1977).11

       Courts have taken varying approaches in attempting to
strike a balance between the competing interests in right of
publicity cases, some more appealing than others. In our
discussion below, we first consider the nature of the interests
we must balance and then analyze the different approaches
courts have taken to resolving the tension between the First
Amendment and the right of publicity.

            A.   The Relevant Interests at Issue

       Before engaging with the different analytical schemes,
we first examine the relevant interests underlying the rights of
free expression and publicity.


11
   While it is true that the right of publicity is a creature of
state law and precedent, its intersection with the First
Amendment presents a federal issue, and, thus, permits us to
engage in the sort of balancing inquiry at issue here. See,
e.g., Zacchini, 433 U.S. at 566-68.




                              14
                 1.   Freedom of Expression

       Freedom of expression is paramount in a democratic
society, for “[i]t is the function of speech to free men from the
bondage of irrational fears.” Whitney v. California, 274 U.S.
357, 376 (1927) (Brandeis, J., concurring). As Justice Louis
Brandeis wrote nearly a century ago:

       Those who won our independence believed that
       the final end of the state was to make men free
       to develop their faculties . . . . They valued
       liberty both as an end and as a means. They
       believed liberty to [be] the secret of happiness
       and courage to be the secret of liberty. They
       believed that freedom to think as you will and
       to speak as you think are means indispensable
       to the discovery and spread of political truth;
       that without free speech and assembly
       discussion would be futile; that with them,
       discussion     affords     ordinarily   adequate
       protection against the dissemination of noxious
       doctrine; that the greatest menace to freedom is
       an inert people; that public discussion is a
       political duty; and that this should be a
       fundamental principle of the American
       government.

Id. at 375.

       In keeping with Justice Brandeis‟ eloquent analysis,
the great legal minds of generations past and present have
recognized that free speech benefits both the individual and
society. The Supreme Court in Procunier v. Martinez noted
that the protection of free speech serves the needs “of the




                               15
human spirit — a spirit that demands self-expression,” adding
that “[s]uch expression is an integral part of the development
of ideas and a sense of identity.” 416 U.S. 396, 427 (1974),
overruled on other grounds by Thornburgh v. Abbott, 490
U.S. 401 (1989). Suppressing such expression, therefore, is
tantamount to rejecting “the basic human desire for
recognition and [would] affront the individual‟s worth and
dignity.” Id. Indeed, First Amendment protections have been
held applicable to not only political speech, but to
“entertainment [including, but certainly not limited to,]
motion pictures, programs broadcast by radio and television,
and live entertainment, such as musical and dramatic works.”
Tacynec v. City of Phila., 687 F.2d 793, 796 (3d Cir. 1982).
Thus, “[t]he breadth of this protection evinces recognition
that freedom of expression is not only essential to check
tyranny and foster self-government but also intrinsic to
individual liberty and dignity and instrumental in society‟s
search for truth.” Dun & Bradstreet, Inc. v. Greenmoss
Builders, Inc., 472 U.S. 749, 787 (1985) (Brennan, J.,
dissenting).

        The interest in safeguarding the integrity of these
protections therefore weighs heavily in any balancing inquiry.
Still, instances can and do arise where First Amendment
protections yield in the face of competing interests. See, e.g.,
Eldred v. Ashcroft, 537 U.S. 186, 219-20 (2003) (discussing
the interplay between copyright law and First Amendment
protections); Dun & Bradstreet, Inc., 472 U.S. at 757-61
(determining that a state may allow recovery of damages in
certain defamation cases after balancing “the State‟s interest
in compensating private individuals for injury to their
reputation against the First Amendment interest in protecting
this type of expression”). Ultimately, we must determine




                              16
whether the interest in safeguarding the right of publicity
overpowers the interest in safeguarding free expression.

                2.   The Right of Publicity12

         The right of publicity grew out of the right to privacy
torts, specifically, from the tort of “invasion of privacy by
appropriation.” J. THOMAS MCCARTHY, THE RIGHTS OF
PUBLICITY AND PRIVACY §1:23 (2d ed. 2012). Thus, when
New Jersey first recognized the concept in 1907, its analysis
looked to the “so-called right of privacy” and the limits on
that concept. Edison v. Edison Polyform Mfg. Co., 67 A. 392,
394 (N.J. Ch. 1907) (enjoining a company from using the
name or likeness of Thomas Edison to promote its products).
Additionally, we note that, even at this early stage the New
Jersey court recognized that an individual enjoyed a property
interest in his or her identity. Id. (“[I]t is difficult to
understand why the peculiar cast of one‟s features is
not . . . one‟s property, and why its pecuniary value, if it has
one, does not belong to its owner, rather than to the person
seeking to make an unauthorized use of it.”).

        However, this early conceptualization had limitations,
particularly when it came to protecting the property interests
of celebrities and people already in the public eye. See id.
(“It is certain that a man in public life may not claim the same

12
   As we have noted, Appellee concedes that NCAA Football
infringes on the right of publicity as recognized in New
Jersey. Our inquiry, therefore, does not concern the elements
of the tort or whether Appellee‟s actions satisfy this standard.
Rather, we are concerned only with whether the right to
freedom of expression overpowers the right of publicity.




                              17
immunity from publicity that a private citizen may.”); see
also MCCARTHY, supra, at § 1:25. Faced with this limitation
on the legal doctrine, courts began to recognize a “right of
publicity,” which protected publicly known persons from the
misappropriation of their identities. The first case to describe
this protection as a “right of publicity” was Haelan Labs., Inc.
v. Topps Chewing Gum, Inc., 202 F.2d 866 (2d Cir. 1953)
(concerning baseball cards in gum packages). There, the
Second Circuit held that “in addition to and independent of
that right of privacy . . . , a man has a right in the publicity
value of his photograph . . . . This right might be called a
„right of publicity.‟” Id. at 868. New Jersey courts, which
had long recognized a “right of privacy [and] a right of
property,” were not far behind in voicing their support for this
concept. Ettore v. Philco Television Broad. Corp., 229 F.2d
481, 491 (3d Cir. 1956).

        In the seminal case of Palmer v. Schonhorn Enters.,
Inc., the Superior Court of New Jersey noted that

       [p]erhaps the basic and underlying theory is that
       a person has the right to enjoy the fruits of his
       own industry free from unjustified interference.
       It is unfair that one should be permitted to
       commercialize or exploit or capitalize upon
       another‟s name, reputation or accomplishments
       merely because the owner‟s accomplishments
       have been highly publicized.

232 A.2d 458, 462 (N.J. Super. Ct. Ch. Div. 1967) (citations
omitted) (finding an infringement of property rights where a
golfer‟s name was used in connection with a golf game); see
also Canessa v. J.I. Kislak, Inc., 235 A.2d 62, 76 (N.J. Super.
Ct. Law Div. 1967) (“[T]he reality of a case such as we have




                              18
here is, in the court‟s opinion, simply this: plaintiffs‟ names
and likenesses belong to them. As such they are property.
They are things of value.”).

       The current incarnation of the right of publicity in New
Jersey is that set forth in the RESTATEMENT (SECOND) OF
TORTS (1977). See, e.g., Bisbee v. John C. Conover Agency,
Inc., 452 A.2d 689, 690-91 (N.J. Super. Ct. App. Div. 1982)
(looking to the Restatement (Second) of Torts for the “four
areas of invasion of privacy,” including “appropriation of the
other‟s name or likeness”); see also G.D. v. Kenny, 15 A.3d
300, 311 (N.J. 2011). According to the Restatement, “[o]ne
who appropriates to his own use or benefit the name or
likeness of another is subject to liability to the other for
invasion of privacy.” RESTATEMENT (SECOND) OF TORTS §
652C. The comments also make clear that “the right created
by [the rule in §652C] is in the nature of a property right.” Id.
§ 652C cmt a.13

      New Jersey law therefore recognizes that “[t]he right
to exploit the value of [an individual‟s] notoriety or fame

13
     In 1995 the RESTATEMENT (THIRD) OF UNFAIR
COMPETITION set forth the elements of a free-standing right
of publicity claim, unconnected to the right of privacy torts.
See RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 46-49
(1995). While we discuss this version of the tort further
below, we decline to address it here because New Jersey has
yet to adopt the Restatement (Third)‟s version of the tort and
the accompanying comments.           Accord Castro v. NYT
Television, 851 A.2d 88, 96-97 (N.J. Super. Ct. App. Div.
2004) (citing to RESTATEMENT (SECOND) OF TORTS § 652C
(1977) in discussing a right of publicity claim).




                               19
belongs to the individual with whom it is associated,” for an
individual‟s “name, likeness, and endorsement carry value
and an unauthorized use harms the person both by diluting the
value of the name and depriving that individual of
compensation.” McFarland v. Miller, 14 F.3d 912, 919, 923
(3d Cir. 1994). As such, the goal of maintaining a right of
publicity is to protect the property interest that an individual
gains and enjoys in his identity through his labor and effort.
Additionally, as with protections for intellectual property, the
right of publicity is designed to encourage further
development of this property interest. Accord Zacchini, 433
U.S. at 573 (“[T]he State‟s interest in permitting a „right of
publicity‟ . . . is closely analogous to the goals of patent and
copyright law, focusing on the right of the individual to reap
the reward of his endeavors . . . .”).

        Since neither the New Jersey courts nor our own
circuit have set out a definitive methodology for balancing the
tension between the First Amendment and the right of
publicity, we are presented with a case of first impression.
We must therefore consult the approaches of other courts in
the first instance.

          B.    How Courts Balance the Interests

       We begin our inquiry by looking at Zacchini v.
Scripps-Howard Broadcasting Co., the only Supreme Court
case addressing the First Amendment in a right of publicity
context. In this case, the Court called for a balancing test to
weigh the interest underlying the First Amendment against
those underpinning the right of publicity. 433 U.S. at 574-75.
This decision sets the stage for our analysis of three
systematized analytical frameworks that have emerged as




                              20
courts struggle with finding a standardized way for
performing this balancing inquiry.

          1.    Zacchini and the Need for Balance

      In Zacchini, an Ohio television news program recorded
and subsequently broadcast Mr. Hugo Zacchini‟s entire
“human cannonball” act from a local fair. The daredevil
brought suit alleging a violation of his right of publicity as
recognized by Ohio law. Id. at 563-66. The Ohio courts held
that Zacchini‟s claim was barred on First Amendment
grounds, and the case then came before the Supreme Court.

        In setting out the interests at issue in the case, the
Supreme Court noted (as we did above) that “the State‟s
interest in permitting a „right of publicity‟ is in protecting the
proprietary interest of the individual in his act in part to
encourage such entertainment.” Id. at 573. This aspect of the
right, the Court noted, was “analogous to the goals of patent
and copyright law,” given that they too serve to protect the
individual‟s ability to “reap the reward of his endeavors.” Id.
In Zacchini, the performance was the “product of [Zacchini‟s]
own talents and energy, the end result of much time, effort
and expense.” Id. at 575. Thus much of its economic value
lay “in the right of exclusive control over the publicity given
to his performance.” Id. Indeed, while the Court noted that
“[a]n entertainer such as petitioner usually has no objection to
the widespread publication of his act as long as [he] gets the
commercial benefit of such publication,” id. at 573, the claim
at issue in the Zacchini concerned “the strongest case for a
„right of publicity,‟” because it did not involve the
“appropriation of an entertainer‟s reputation to enhance the
attractiveness of a commercial product,” but instead involved
“the appropriation of the very activity by which the




                               21
entertainer acquired his reputation in the first place,” id. at
576.

      Ultimately, the Court ruled in favor of the human
cannonball, and held that

       [w]herever the line in particular situations is to
       be drawn between media reports that are
       protected and those that are not, we are quite
       sure that the First and Fourteenth Amendments
       do not immunize the media when they
       broadcast a performer‟s entire act without his
       consent. The Constitution no more prevents a
       State from requiring respondent to compensate
       petitioner for broadcasting his act on television
       than it would privilege respondent to film and
       broadcast a copyrighted dramatic work without
       liability to the copyright owner.

Id. at 574-75. Thus, while the Court did not itself engage in
an explicit balancing inquiry, it did suggest that the respective
interests in a case should be balanced against each other.

       In the wake of Zacchini, courts began applying a
balancing inquiry to resolve cases where a right of publicity
claim collided with First Amendment protections. While
early cases approached the analysis from an ad hoc
perspective, see, e.g., Guglielmi v. Spelling-Goldberg Prods.,
603 P.2d 454 (Cal. 1979) (en banc), courts eventually began
developing       standardized      balancing      frameworks.
Consequently, we now turn our attention to more
standardized balancing tests to see whether any of them offer




                               22
a particularly compelling methodology for resolving the case
at hand and similar disputes.14



14
   We reject as inapplicable in this case the suggestion that
those who play organized sports are not significantly
damaged by appropriation of their likeness because “players
are rewarded, and handsomely, too, for their participation in
games and can earn additional large sums from endorsement
and sponsorship arrangements.” C.B.C. Distrib. & Mktg.,
Inc. v. Major League Baseball Advanced Media, L.P., 505
F.3d 818, 824 (8th Cir. 2007) (discussing Major League
Baseball players); see also, e.g., Cardtoons, L.C. v. Major
League Baseball Players Ass’n, 95 F.3d 959, 974 (10th Cir.
1996) (“[T]he additional inducement for achievement
produced by publicity rights are often inconsequential
because most celebrities with valuable commercial identities
are already handsomely compensated.”). If anything, the
policy considerations in this case weigh in favor of Appellant.
As we have already noted, intercollegiate athletes are
forbidden from capitalizing on their fame while in school.
Moreover, the NCAA most recently estimated that “[l]ess
than one in 100, or 1.6 percent, of NCAA senior football
players will get drafted by a National Football League (NFL)
team.” NCAA, Estimated Probability of Competing in
Athletics Beyond the High School Interscholastic Level,
available at http://www.ncaa.org/wps/wcm/connect/public/
ncaa/pdfs/2012/estimated+probability+of+competing+in+athl
etics+beyond+the+high+school+interscholastic+level.
Despite all of his achievements, it should be noted that Ryan
Hart was among the roughly ninety-nine percent who were
not drafted after graduation.




                              23
             2.    The Modern Balancing Tests

       Following Zacchini, courts began developing more
systematized balancing tests for resolving conflicts between
the right of publicity and the First Amendment. Of these,
three tests are of particular note: the commercial-interest-
based Predominant Use Test, the trademark-based Rogers
Test, and the copyright-based Transformative Use Test. The
Rogers and Transformative Use tests are the most well-
established, while the Predominant Use Test is addressed
below only because Appellant argues in favor of its adoption.
We consider each test in turn, looking at its origins, scope of
application, and possible limitations.       For the reasons
discussed below, we adopt the Transformative Use Test as
being the most appropriate balancing test to be applied here.

                  a.   Predominant Use Test

       Appellant urges us to adopt the Predominant Use Test,
which first appeared in Doe v. TCI Cablevision, 110 S.W.3d
363 (Mo. 2003) (en banc), a case that considered a hockey
player‟s right of publicity claim against a comic book
publishing company. In TCI, Anthony “Tony” Twist, a
hockey player, brought suit against a number of individuals
and entities involved in producing and publishing the Spawn
comic book series after the introduction of a villainous
character named Anthony “Tony Twist” Twistelli.

       In balancing Twist‟s property interests in his own
name and identity against the First Amendment interests of
the comic book creators, the TCI court rejected both the
Transformative Use and Rogers tests, noting that they gave
“too little consideration to the fact that many uses of a
person‟s name and identity have both expressive and




                              24
commercial components.” Id. at 374. The Supreme Court of
Missouri considered both tests to be too rigid, noting that they
operated “to preclude a cause of action whenever the use of
the name and identity is in any way expressive, regardless of
its commercial exploitation.” Id. The court instead applied
what it called a “sort of predominant use test”:

       If a product is being sold that predominantly
       exploits the commercial value of an individual‟s
       identity, that product should be held to violate
       the right of publicity and not be protected by the
       First Amendment, even if there is some
       „expressive‟ content in it that might qualify as
       „speech‟ in other circumstances. If, on the other
       hand, the predominant purpose of the product is
       to make an expressive comment on or about a
       celebrity, the expressive values could be given
       greater weight.

Id. (quoting Mark S. Lee, Agents of Chaos: Judicial
Confusion in Defining the Right of Publicity-Free Speech
Interface, 23 LOY. L.A. ENT. L. REV. 471, 500 (2003)). The
TCI court considered this to be a “more balanced balancing
test [particularly for] cases where speech is both expressive
and commercial.” Id. After applying the test, the court ruled
for Twist, holding that “the metaphorical reference to Twist,
though a literary device, has very little literary value
compared to its commercial value.” Id.

        We decline Appellant‟s invitation to adopt this test.
By our reading, the Predominant Use Test is subjective at
best, arbitrary at worst, and in either case calls upon judges to
act as both impartial jurists and discerning art critics. These
two roles cannot co-exist. Indeed, Appellant suggests that




                               25
pursuant to this test we must evaluate “what value [Appellee
is] adding to the First Amendment expressiveness [of NCAA
Football] by appropriating the commercially valuable
likeness?” (Tr. at 14:15-:18.) Since “[t]he game would have
the exact same level of First Amendment expressiveness if
[Appellee] didn‟t appropriate Mr. Hart‟s likeness,” Appellant
urges us to find that NCAA Football fails the Predominant
Use Test and therefore is not shielded by the First
Amendment. (Tr. at 7:10-12.) Such reasoning, however,
leads down a dangerous and rightly-shunned road: adopting
Appellant‟s suggested analysis would be tantamount to
admitting that it is proper for courts to analyze select
elements of a work to determine how much they contribute to
the entire work‟s expressiveness. Moreover, as a necessary
(and insidious) consequence, the Appellant‟s approach would
suppose that there exists a broad range of seemingly
expressive speech that has no First Amendment value.15

        Appellee rightly argues that the Predominant Use Test
is antithetical to our First Amendment precedent, (Tr. at 25:2-
:9), and we likewise reject the Test.16 We instead turn our


15
   This concept is almost wholly foreign to free expression
save for highly circumscribed categories of speech: obscenity,
incitement, and fighting words. See Brown v. Entm’t Merchs.
Ass’n, 131 S. Ct. 2729, 2733 (2011).
16
   We also agree with Chief Justice Bird‟s rejection of an
identical argument: “The right of publicity derived from
public prominence does not confer a shield to ward off
caricature, parody and satire. Rather, prominence invites
creative comment.” Guglielmi, 603 P.2d at 460.




                              26
attention to the Rogers Test, which was proposed by Appellee
and which draws its inspiration from trademark law.

                    b.   The Rogers Test

       The Rogers Test looks to the relationship between the
celebrity image and the work as a whole.17 As the following
discussion demonstrates, however, adopting this test would
potentially immunize a broad swath of tortious activity. We
therefore reject the Rogers Test as inapposite in the instant
case.

         i.   Origins and Scope of the Rogers Test

       Various commentators have noted that right of
publicity claims — at least those that address the use of a
person‟s name or image in an advertisement — are akin to
trademark claims because in both instances courts must
balance the interests in protecting the relevant property right
against the interest in free expression. See, e.g., ETW Corp.
v. Jireh Publ’g, Inc., 332 F.3d 915, 924 (6th Cir. 2003)
(noting that “a Lanham Act false endorsement claim is the
federal equivalent of the right of publicity” (citing Bruce P.
Keller, The Right of Publicity: Past, Present, and Future,
1207 PLI CORP. LAW & PRAC. HANDBOOK 159, 170 (2000))).

17
   The various cases and scholarly sources refer to this test in
three different ways: the Relatedness Test, the Restatement
Test, and the Rogers Test. The “Relatedness” moniker should
be self-explanatory even at this early point in our discussion;
the propriety of the other two names will become clear
shortly. For our purposes, we will refer to the test as the
Rogers Test.




                              27
It is little wonder, then, that the inquiry championed by
Appellee originated in a case that also focused upon alleged
violations of the trademark-specific Lanham Act. Rogers v.
Grimaldi, 875 F.2d 994 (2d Cir. 1989).

       In that case, Ginger Rogers brought suit against the
producers and distributors of, Ginger and Fred, a film that
was alleged to infringe on Rogers‟ right of publicity and
confuse consumers in violation of the Act. (Despite its title,
the film was not about either Ginger Rogers or Fred Astaire.)
In analyzing the right of publicity claim under Oregon law,
the Second Circuit noted Oregon‟s “concern for the
protection of free expression,” and held that Oregon would
not “permit the right of publicity to bar the use of a
celebrity‟s name in a movie title unless the title was wholly
unrelated to the movie or was simply a disguised commercial
advertisement for the sale of goods or services.” Id. at 1004
(internal quotation marks omitted).18 After applying this test,
the Rogers court concluded that the right of publicity claim
merited dismissal because “the title „Ginger and Fred‟ is
18
   For support, the Rogers court looked to California and New
York case law. Frosch v. Grosset & Dunlap, Inc., 427
N.Y.S.2d 828, 829 (App. Div. 1980) (“It is enough that the
book is a literary work and not simply a disguised
commercial advertisement for the sale of goods or services.”);
Guglielmi v. Spelling-Goldberg Prods., 603 P.2d 454, 457 n.6
(Cal. 1979) (“Such statements establish that this is not a case
in which the use is wholly unrelated to the
individual. . . . [T]his is not a case in which a celebrity‟s name
is used to promote or endorse a collateral commercial product
or is otherwise associated with a product or service in an
advertisement.”).




                               28
clearly related to the content of the movie and is not a
disguised advertisement for the sale of goods and services or
a collateral commercial product.” Id. at 1004-05.19

       But while the test, as articulated in Rogers, arguably
applied only to the use of celebrity identity in a work‟s title,
Appellee suggests that the test can — and should — be
applied more broadly. For support, Appellee looks to the
Restatement (Third) of Unfair Competition, released in 1995,
which characterizes the tort as follows:

       One who appropriates the commercial value of
       a 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 for [appropriate relief].

RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 46. In
explaining the term “use for purposes of trade,” the
Restatement notes that it does not “ordinarily include the use
of a person‟s identity in news reporting, commentary,
entertainment, works of fiction or nonfiction, or in advertising
that is incidental to such uses.” Id. § 47.


19
   Still, it bears noting that while the Rogers Test was
arguably forged in the crucible of trademark law — and the
Rogers court appeared to consult trademark principles for
inspiration — the court also pointed out that “the right of
publicity, unlike the Lanham Act, has no likelihood of
confusion requirement” and is therefore “potentially more
expansive than the Lanham Act.” Rogers v. Grimaldi, 875
F.2d 994, 1004 (2d Cir. 1989).




                              29
       Moreover, the comments to Section 47 of the
Restatement also note that:

     [t]he right of publicity as recognized by statute
     and common law is fundamentally constrained
     by the public and constitutional interest in
     freedom of expression. The use of a person‟s
     identity     primarily     for       purpose      of
     communicating information or expressing ideas
     is not generally actionable as a violation of the
     person‟s right of publicity. . . . Thus the use of a
     person‟s name or likeness in news reporting,
     whether in newspapers, magazines, or broadcast
     news, does not infringe the right of publicity.
     The interest in freedom of expression also
     extends to use in entertainment and other
     creative works, including both fiction and
     nonfiction. The use of a celebrity‟s name or
     photograph as part of an article published in a
     fan magazine or in a feature story broadcast on
     an entertainment program, for example, will not
     infringe the celebrity‟s right of publicity.
     Similarly, the right of publicity is not infringed
     by the dissemination of an unauthorized print or
     broadcast biography. Use of another‟s identity
     in a novel, play, or motion picture is also not
     ordinarily an infringement. . . . However, if the
     name or likeness is used solely to attract
     attention to a work that is not related to the
     identified person, the user may be subject to
     liability for a use of the other’s identity in
     advertising.




                             30
Id. at § 47 cmt. c (emphasis added). Appellee argues that the
above language adopts the Rogers Test and applies it to right
of publicity claims dealing with any part of a work, not only
its title. Appellee also cites to a number of cases purportedly
supporting its position. See, e.g., Parks v. LaFace Records,
329 F.3d 437 (6th Cir. 2003); Matthews v. Wozencraft, 15
F.3d 432 (5th Cir. 1994). We do not find any of these cases
particularly persuasive.

       In Matthews, for example, the Fifth Circuit considered
whether a fictional novel incorporating events from the life of
an undercover narcotics officer violated the officer‟s right of
publicity. In setting out the legal standard for a right of
publicity claim, the court noted that it made no difference
“whether [the book] is viewed as an historical or a fictional
work, so long as it is not simply a disguised commercial
advertisement for the sale of goods or services.” Matthews,
15 F.3d at 440 (quotation marks and internal citations
omitted). This single, cryptic quotation notwithstanding, the
court ultimately held in favor of the book‟s author after
applying a wholly different — and seemingly inapposite —
First Amendment analysis: actual malice.20            See id.
(“[A]bsent a showing of actual malice . . . [the book] is
protected by the First Amendment.”).



20
   In Hustler Magazine, Inc. v. Falwell, 485 U.S. 46 (1988),
the Supreme Court clarified its holding in Zacchini v.
Scripps-Howard Broadcasting Co., 433 U.S. 562 (1977), as
standing for the proposition that “the „actual malice‟ standard
does not apply to the tort of appropriation of a right of
publicity.” Hustler, 485 U.S. at 52.




                              31
        But where Matthews took an ambivalent position, the
Sixth Circuit seemed — at least for a short time — to
embrace the Rogers Test. In Parks v. LaFace Records, the
Sixth Circuit was asked to determine whether a rap song
entitled Rosa Parks infringed on the Civil Rights icon‟s right
of publicity. Parks, 329 F.3d at 441-42. After noting that
Rogers was decided in the context of a movie, the Sixth
Circuit held that an expansion of the test to “the context of
other expressive works [was supported] by comment c of § 47
of the Restatement (Third) of Unfair Competition.” Id. at
461. Consequently, the Sixth Circuit ruled that there was an
issue of material fact as to whether the title of the song
(“Rosa Parks”) was “wholly unrelated” to the lyrics. Id. We
find Parks to be less than persuasive given that just over a
month later another panel of the Sixth Circuit decided ETW
Corp. v. Jireh Publishing, Inc., a right of publicity case where
the Circuit applied the Transformative Use Test. See 332
F.3d 915, 937 (6th Cir. 2003).21

       Interestingly, this is not the first time that we have
considered the proper scope of the Rogers Test. Indeed, we
expressed doubt (albeit in dicta) over whether the Test could
apply beyond the title of a work in Facenda v. N.F.L. Films,
Inc., 542 F.3d 1007 (3d Cir. 2008), a case centering on a suit
21
   To be fair, the ETW court did briefly mention the Rogers
decision before engaging in a lengthy discussion of the
RESTATEMENT (THIRD) OF UNFAIR COMPETITION, ultimately
concluding that the Restatement stood for the rather mundane
principle that a right of publicity implicates a balancing test.
ETW Corp., 332 F.3d at 930-36. As we noted above, the
balancing utilized by the ETW court was the Transformative
Use Test.




                              32
by the estate of a well-known sports narrator against a sports
film production company for Lanham Act violations and
breach of the narrator‟s right of publicity. In analyzing the
trademark claim, we expressed hesitation at extending the
Rogers Test beyond the title of a work, adding that few other
courts had done so at the time of our decision. Id. at 1018.
Nothing in Appellee‟s argument has swayed us from this
position and we thus remain skeptical that the Rogers Test
applies to the general contents of a work when analyzing right
of publicity claims.

              ii.   Analysis of the Rogers Test

       Ultimately, we find that the Rogers Test does not
present the proper analytical approach for cases such as the
one at bar. While the Test may have a use in trademark-like
right of publicity cases, it is inapposite here. We are
concerned that this test is a blunt instrument, unfit for
widespread application in cases that require a carefully
calibrated balancing of two fundamental protections: the right
of free expression and the right to control, manage, and profit
from one‟s own identity.

        The potential problem with applying the Rogers Test
in this case is demonstrated by the following statement from
Appellee‟s brief:

      Because, as a former college football player,
      Hart‟s likeness is not „wholly unrelated‟ to
      NCAA Football and the game is not a
      commercial advertisement for some unrelated
      product, Hart . . . does not try to meet
      the . . . test.




                              33
(Appellee‟s Br. at 24.) Effectively, Appellee argues that
Appellant should be unable to assert a claim for appropriating
his likeness as a football player precisely because his likeness
was used for a game about football. Adopting this line of
reasoning threatens to turn the right of publicity on its head.

        Appellant‟s career as a college football player suggests
that the target audience for his merchandise and performances
(e.g., his actual matches) would be sports fans. It is only
logical, then, that products appropriating and exploiting his
identity would fare best — and thereby would provide ne‟er-
do-wells with the greatest incentive — when targeted at the
sports-fan market segment. Given that Appellant played
intercollegiate football, however, products targeting the
sports-fan market would, as a matter of course, relate to him.
Yet under Appellee‟s approach, all such uses would be
protected. It cannot be that the very activity by which
Appellant achieved his renown now prevents him from
protecting his hard-won celebrity. We decline to endorse
such a conclusion and therefore reject the Rogers test as
inapplicable.22

       On the other hand, we do agree with the Rogers court
in so far as it noted that the right of publicity does not
implicate the potential for consumer confusion and is
therefore potentially broader than the protections offered by

22
   We recognize that in Brown v. Elec. Arts, No. 2:09-cv-
01598-FMC-RZ, 2009 WL 8763151 (C.D. Cal. Sept. 23,
2009), the District Court applied the Rogers test in analyzing
another EA sports game: Madden NFL. Note, however, that
the case did not involve a right of publicity claim, but a claim
under the Lanham Act. Id. at *1-2.




                              34
the Lanham Act. Rogers, 875 F.2d at 1004. Indeed, therein
lies the weakness of comparing the right of publicity to
trademark protections: the right of publicity is broader and,
by extension, protects a greater swath of property interests.
Thus, it would be unwise for us to adopt a test that hews so
closely to traditional trademark principles. Instead, we need a
broader, more nuanced test, which helps balance the interests
at issue in cases such as the one at bar. The final test — the
Transformative Use Test — provides just such an approach.

             c.   The Transformative Use Test

       Looking to intellectual property law for guidance on
how to balance property interests against the First
Amendment has merit. We need only shift our gaze away
from trademark, to the broader vista of copyright law. Thus,
we come to the case of Comedy III Prods., Inc. v. Gary
Saderup, Inc., which imported the concept of
“transformative” use from copyright law into the right of
publicity context. 21 P.3d 797, 804-08 (Cal. 2001). This
concept lies at the core of a test that both Appellant and
Appellee agree is applicable to this case: the Transformative
Use Test.23


23
   Unlike in New Jersey, California‟s right of publicity is a
matter of both the state‟s statutory law and its common law.
Laws v. Sony Music Entm’t, Inc., 448 F.3d 1134, 1138 (9th
Cir. 2006) (discussing both the statutory and the common law
cause of action); see also Cal. Civ. Code § 3344; Eastwood v.
Superior Court, 198 Cal. Rptr. 342, 347 (Cal. Ct. App. 1983).
This difference notwithstanding, the laws are strikingly
similar — and protect similar interests. Under California law,
“any person who knowingly uses another‟s name . . . or




                              35
        i.   Genesis of the Transformative Use Test

       The Transformative Use Test was first articulated by
the Supreme Court of California in Comedy III. That case
concerned an artist‟s production and sale of t-shirts and prints
bearing a charcoal drawing of the Three Stooges. The
California court determined that while “[t]he right of
publicity is often invoked in the context of commercial
speech,” it could also apply in instances where the speech is
merely expressive. Id. at 802-803. The court also noted,
however, that when addressing expressive speech, “the very
importance of celebrities in society means that the right of
publicity has the potential of censoring significant expression
by suppressing alternative versions of celebrity images that
are iconoclastic, irreverent or otherwise attempt to redefine
the celebrity‟s meaning.” Id. at 803. Thus, while the “the
right of publicity cannot, consistent with the First
Amendment, be a right to control the celebrity‟s image by
censoring disagreeable portrayals,” id. at 807, the right, like

likeness, in any manner, or in any products, merchandise, or
goods, or for the purposes of advertising or selling, or
soliciting purchases of . . . shall be liable for any damages
sustained by the person or persons injured as a result thereof.”
Cal. Civ. Code § 3344(a). In the words of the California
Supreme Court, “the right of publicity is essentially an
economic right. What the right of publicity holder possesses
is not a right of censorship, but a right to prevent others from
misappropriating the economic value generated by the
celebrity‟s fame . . . .” Comedy III, 21 P.3d at 807. This is
analogous to the conceptualization of the right of publicity in
New Jersey, and we consequently see no issue in applying
balancing tests developed in California to New Jersey.




                              36
copyright, nonetheless offers protection to a form of
intellectual property that society deems to have social utility,
id. at 804.

       After briefly considering whether to import the “fair
use” analysis from copyright, the Comedy III court decided
that only the first fair use factor, “the purpose and character
of the use,” was appropriate. Id. at 808. Specifically, the
Comedy III court found persuasive the Supreme Court‟s
holding in Campbell v. Acuff-Rose Music, Inc. that

       the central purpose of the inquiry into this fair
       use factor „is to see . . . whether the new work
       merely “supercede[s] the objects” of the
       original creation, or instead adds something
       new, with a further purpose or different
       character, altering the first with new expression,
       meaning, or message; it asks, in other words,
       whether and to what extent the new work is
       “transformative.”

Id. (emphasis added) (citing Campbell v. Acuff-Rose Music,
Inc., 510 U.S. 569, 579 (1994)).

        Going further, the court explained that works
containing “significant transformative elements” are less
likely to interfere with the economic interests implicated by
the right of publicity. For example, “works of parody or other
distortions of the celebrity figure are not, from the celebrity
fan‟s viewpoint, good substitutes for conventional depictions
of the celebrity and therefore do not generally threaten
markets for celebrity memorabilia that the right of publicity is
designed to protect.” Id. The court was also careful to
emphasize that “the transformative elements or creative




                              37
contributions” in a work may include — under the right
circumstances — factual reporting, fictionalized portrayal,
heavy-handed lampooning, and subtle social criticism. Id. at
809 (“The inquiry is in a sense more quantitative than
qualitative, asking whether the literal and imitative or the
creative elements predominate in the work.”).24

       Restating its newly-articulated test, the Supreme Court
of California held that the balance between the right of
publicity and First Amendment interests turns on

      [w]hether the celebrity likeness is one of the
      “raw materials” from which an original work is
      synthesized, or whether the depiction or
      imitation of the celebrity is the very sum and
      substance of the work in question. We ask, in
      other words, whether the product containing a
      celebrity’s likeness is so transformed that it has
      become primarily the defendant’s own
      expression rather than the celebrity’s likeness.
      And when we use the word “expression,” we
      mean expression of something other than the
      likeness of the celebrity.


24
   The court in Comedy III also added an ancillary question to
its inquiry: “does the marketability and economic value of the
challenged work derive primarily from the fame of the
celebrity depicted?” Comedy III, 21 P.3d at 810. If not, then
“there would generally be no actionable right of publicity.”
Id. However, the inverse is not necessarily true: even if the
work does derive its value principally from the celebrity‟s
depiction, “it may still be a transformative work.” Id.




                             38
Id. (emphasis added).

       Applying this test, the court concluded that charcoal
portraits of the Three Stooges did violate the Stooges‟ rights
of publicity, holding that the court could “discern no
significant transformative or creative contribution” and that
“the marketability and economic value of [the work] derives
primarily from the fame of the celebrities depicted.” Id. at
811.

     ii.   Application of the Transformative Use Test

       Given its relative recency, few courts have applied the
Transformative Use Test, and consequently there is not a
significant body of case law related to its application.
Nonetheless, a handful of cases bear mention as they help
frame our inquiry.

        In 2003, the Supreme Court of California revisited the
Transformative Use Test when two musicians, Johnny and
Edgar Winter, who both possessed long white hair and albino
features, brought suit against a comic book company over
images of two villainous half-man, half-worm creatures, both
with long white hair and albino features, named Johnny and
Edgar Autumn. Winter v. DC Comics, 69 P.3d 473, 476 (Cal.
2003). As the brothers‟ right of publicity claims necessarily
implicated DC Comics‟ First Amendment rights, the Winter
court looked to the Transformative Use Test. In summarizing
the test, the court explained that “[a]n artist depicting a
celebrity must contribute something more than a „merely
trivial‟ variation, [but must create] something recognizably
„his own,‟ in order to qualify for legal protection.” Id. at 478
(alteration in original) (quoting Comedy III, 21 P.3d at 810-
11). Thus, in applying the test, the Winter court held that




                              39
       [a]lthough the fictional characters Johnny and
       Edgar Autumn are less-than-subtle evocations
       of Johnny and Edgar Winter, the books do not
       depict plaintiffs literally. Instead, plaintiffs are
       merely part of the raw materials from which the
       comic books were synthesized. To the extent
       the drawings of the Autumn brothers resemble
       plaintiffs at all, they are distorted for purposes
       of lampoon, parody, or caricature. And the
       Autumn brothers are but cartoon characters —
       half-human and half-worm — in a larger story,
       which is itself quite expressive.

Id. at 479. The court therefore found that “fans who want to
purchase pictures of [the Winter brothers] would find the
drawing of the Autumn brothers unsatisfactory as a substitute
for conventional depictions.” Id.25 Consequently, the court
rejected the brothers‟ claims for a right of publicity violation.

       Also in 2003, the Sixth Circuit decided ETW, a case
focusing on a photograph of Tiger Woods set among a
collage of other, golf-related photographs. As we previously
noted, while ETW mentioned both the Rogers case and the
Restatement (Third) of Unfair Competition, the test it
ultimately applied was a combination of an ad-hoc approach

25
   The Winter court also found unpersuasive arguments that
the comic books were marketed by “trading on [the brothers‟]
likenesses and reputations to generate interest in the comic
book series.” Winter v. DC Comics, 69 P.3d 473, 479 (Cal.
2003). The court held that considerations of marketing
strategy were “irrelevant” because the “question is whether
the work is transformative, not how it is marketed.” Id.




                               40
and the Transformative Use Test. See ETW, 332 F.3d at 937-
38. In holding that the collage “contain[ed] significant
transformative elements,” id. at 938, the court compared it to
the Three Stooges portraits from Comedy III, and noted that
the collage “does not capitalize solely on a literal depiction of
Woods.” Id. Instead, the “work consists of a collage of
images in addition to Woods‟s image which are combined to
describe, in artistic form, a historic event in sports history and
to convey a message about the significance of Woods‟s
achievement in that event.” Id.; see also Comedy III, 21 P.3d
at 809 (noting that “transformative elements or creative
contributions . . . can take many forms”).

        ETW presents an archetypical example of a case falling
somewhere in the middle of Transformative Use Test
jurisprudence, given that it focuses on the use of photographs
(literal depictions of celebrities), but adds a transformative
aspect to the work, thereby altering the meaning behind the
use of the celebrity‟s likeness. Arguably, the Comedy III and
Winter decisions bookend the spectrum of cases applying the
Transformative Use Test. Where Comedy III presents a clear
example of a non-transformative use (i.e., mere literal
depictions of celebrities recreated in a different medium),
Winter offers a use that is highly transformative (i.e., fanciful
characters, placed amidst a fanciful setting, that draw
inspiration from celebrities). As with ETW, however, most of
the cases discussed below (along with the instant case), fall
somewhere between these two decisions.              This same
analytical approach — focusing on whether and how the
celebrity‟s likeness is transformed — appears in decisions by
courts applying the Transformative Use Test to video games,
an area of law which we consider next.




                               41
  iii.   The Transformative Use Test and Video Games

        In mid-2006, the California Court of Appeal decided
Kirby v. Sega of America, Inc., 50 Cal. Rptr. 3d 607 (Cal. Ct.
App. 2006), which addressed a musician‟s right of publicity
claim against a video game company. Specifically, the
musician (Kierin Kirby) had claimed that Sega
misappropriated her likeness and signature phrases for
purposes of creating the character of Ulala, a reporter in the
far flung future. In applying the Transformative Use Test, the
court noted that not only did Kirby‟s signature phrases
included “ooh la la” but that both she and the videogame
character would often use phrases like “groove,” “meow,”
“dee-lish,” and “I won‟t give up.” Id. at 613. The court also
found similarities in appearance between Kirby and Ulala,
based on hair style and clothing choice. Id. At the same
time, the court held that differences between the two did exist
— both in appearance and movement — and that Ulala was
not a mere digital recreation of Kirby. Id. Thus, the court
concluded that Ulala passed the Transformative Use Test,
rejecting Kirby‟s argument that the differences between her
and the character added no additional meaning or message to
the work. Id. at 616-17 (“A work is transformative if it adds
„new expression.‟ That expression alone is sufficient; it need
not convey any „meaning or message.‟”); see also id. at 617
(“[A]ny imitation of Kirby‟s likeness or identity in Ulala is
not the sum and substance of that character.”).

       Several years later, in early 2011, the California courts
again confronted the right of publicity as it related to video
games in No Doubt v. Activision Publishing, Inc., 122 Cal.
Rptr. 3d 397 (Cal. Ct. App. 2011). The case centered on
Band Hero, a game that allows player to “simulate
performing in a rock band in time with popular songs” by




                              42
selecting digital avatars to represent them in an in-game band.
Id. at 401. Some of the avatars were digital recreations of
real-life musicians, including members of the band No
Doubt.26 After a contract dispute broke off relations between
the band and the company, No Doubt sued, claiming a
violation of their rights of publicity. The California Court of
Appeal applied the Transformative Use Test.

       The No Doubt court began by noting that “in stark
contrast to the „fanciful creative characters‟ in Winter and
Kirby,” the No Doubt avatars could not be altered by players
and thus remained “at all times immutable images of the real
celebrity musicians.” Id. at 410. But this fact, by itself, did
not end the court‟s inquiry since “even literal reproductions of
celebrities can be „transformed‟ into expressive works based
on the context into which the celebrity image is placed.” Id.

26
     According to the decision,

         members of No Doubt participated in a full-day
         motion capture photography session at
         Activision‟s studios so that the band members‟
         Band Hero avatars would accurately reflect
         their appearances, movements, and sounds. No
         Doubt then closely reviewed the motion capture
         photography and the details related to the
         appearance and features of their avatars to
         ensure the representations would meet with
         approval. The end results are avatars that
         closely match the appearance of each of the No
         Doubt band members.

No Doubt, 122 Cal. Rptr. 3d at 402.




                                  43
(citing Comedy III, 21 P.3d at 811). Looking to the context of
the Band Hero game, the court found that “no matter what
else occurs in the game during the depiction of the No Doubt
avatars, the avatars perform rock songs, the same activity by
which the band achieved and maintains its fame.” Id. at 410-
11 (emphasis added). The court explained:

       [T]he avatars perform [rock] songs as literal
       recreations of the band members. That the
       avatars can be manipulated to perform at
       fanciful venues including outer space or to sing
       songs the real band would object to singing, or
       that the avatars appear in the context of a
       videogame that contains many other creative
       elements, does not transform the avatars into
       anything other than the exact depictions of No
       Doubt‟s members doing exactly what they do as
       celebrities.

Id. at 411 (emphasis added).27 As a final step in its analysis,
the court noted that Activision‟s use of highly realistic digital

27
    For support, the No Doubt court relied on the Ninth
Circuit‟s decision in Hilton v. Hallmark Cards, where our
sister court held that a greeting card depicting Paris Hilton‟s
head on a cartoon waitress accompanied by the line “that‟s
hot” was not transformative and thus infringed on Hilton‟s
right of publicity. 599 F.3d 894, 911 (9th Cir. 2010) (“While
a work need not be phantasmagoric as in Winter or fanciful as
in Kirby in order to be transformative, there is enough doubt
as to whether Hallmark‟s card is transformative under our
case law that we cannot say Hallmark is entitled to the
defense . . . .”).




                               44
depictions of No Doubt was motivated by a desire to
capitalize on the band‟s fan-base, “because it encourages
[fans] to purchase the game so as to perform as, or alongside,
the members of No Doubt.” Id. (emphasis added). Given all
this, the court concluded that Activision‟s use of No Doubt‟s
likenesses did infringe on the band‟s rights of publicity. Id. at
411-12.28

       iv.   Analysis of the Transformative Use Test

       Like the Predominant Use and Rogers tests, the
Transformative Use Test aims to balance the interest
protected by the right of publicity against those interests
preserved by the First Amendment. In our view, the
Transformative Use Test appears to strike the best balance
because it provides courts with a flexible — yet uniformly

28
   Before moving on, it behooves us to mention a pair of cases
decided in the Northern District of California: Davis v. Elec.
Arts Inc., No. 10-cv-03328, 2012 WL 3860819 (N.D. Cal.
Mar. 29, 2012); Keller v. Elec. Arts, Inc., No. 09-cv-01967,
2010 WL 530108 (N.D. Cal. Feb. 8, 2010). Both cases
concern right of publicity claims asserted against EA for use
of football players‟ likenesses in their game franchises. Davis
related to EA‟s Madden NFL games while Keller is simply
our own case incarnated in California. In both disputes the
court applied the Transformative Use Test, and in both
instances the court decided that EA‟s use of the players‟
likenesses failed the Test. Davis, 2012 WL 3860819, at *5-6;
Keller, 2010 WL 530108, at *3-5. We note these cases in
passing only because they are both currently on appeal before
the Ninth Circuit and we feel it imprudent to rely too heavily
on decisions that our sister court is still considering.




                               45
applicable — analytical framework.            Specifically, the
Transformative Use Test seems to excel precisely where the
other two tests falter.        Unlike the Rogers Test, the
Transformative Use Test maintains a singular focus on
whether the work sufficiently transforms the celebrity‟s
identity or likeness, thereby allowing courts to account for the
fact that misappropriation can occur in any market segment,
including those related to the celebrity.

       On the other hand, unlike the Predominant Use Test,
applying the Transformative Use Test requires a more
circumscribed inquiry, focusing on the specific aspects of a
work that speak to whether it was merely created to exploit a
celebrity‟s likeness. This test therefore recognizes that if
First Amendment protections are to mean anything in right of
publicity claims, courts must begin by considering the extent
to which a work is the creator‟s own expression.29

        Additionally, the Transformative Use Test best
comports with the cautionary language present in various
right of publicity cases. Specifically, we believe that an
initial focus on the creative aspects of a work helps address
our own concern from Facenda, where we noted that “courts
must circumscribe the right of publicity.” Facenda, 542 F.3d

29
   While we acknowledge that the test in Comedy III included
a question as to whether the “marketability and economic
value of [the work] derive primarily from the fame of the
celebrities depicted,” Comedy III, 21 P.3d at 810, we note that
this is a secondary question. The court in Comedy III rightly
recognized that the balancing inquiry suggested by the
Supreme Court in Zacchini cannot start and stop with
commercial purpose or value.




                              46
at 1032.     As our discussion below demonstrates, the
Transformative Use Test effectively restricts right of publicity
claims to a very narrow universe of expressive works.
Moreover, we believe that the Transformative Use Test best
exemplifies the methodology suggested by Justice Powell‟s
dissent in Zacchini:

       Rather than begin with a quantitative analysis of
       the performer‟s behavior — is this or is this not
       his entire act? — we should direct initial
       attention to the actions of the news media: what
       use did the station make of the film footage?
       When a film is used, as here, for a routine
       portion of a regular news program, I would hold
       that the First Amendment protects the station
       from a “right of publicity” or “appropriation”
       suit, absent a strong showing by the plaintiff
       that the news broadcast was a subterfuge or
       cover for private or commercial exploitation.

Zacchini, 433 U.S. at 581 (Powell, J., dissenting). Consistent
with Justice Powell‟s argument, the Transformative Use Test
begins by asking “what use did the [defendant] make of the
[celebrity identity]?” Id.30

       Finally, we find that of the three tests, the
Transformative Use Test is the most consistent with other
courts‟ ad hoc approaches to right of publicity cases. For

30
   While the Predominant Use Test may appear to accomplish
the same task, we think it does not. In point of fact, it merely
looks to the expressive “value” of a celebrity‟s identity, not
its use, vis-à-vis the challenged work.




                              47
example, a majority of the Supreme Court of California in
Guglielmi v. Spelling-Goldberg Productions argued31 that the
“fictionalized version” of a late actor‟s life, “depicting the
actor‟s    name,       likeness  and      personality    without
obtaining . . . prior consent” was entitled to protection from a
right of publicity claim. 603 P.2d at 455, 457-59.32 In



31
  The Supreme Court of California affirmed the lower court‟s
decision to dismiss the case without engaging with the right
of publicity claim beyond noting that the right “expires upon
the death of the person so protected.” Guglielmi, 603 P.2d at
455. The Chief Justice‟s concurring opinion, joined by a
majority of the court, provided a full analysis of the issue, and
in subsequent years has been treated as the Court‟s majority
opinion. See Comedy III, 21 P.3d at 803 (citing the Guglielmi
concurrence while noting that “[a] majority of this court” had
agreed to its reasoning); see also Guglielmi, 603 P.2d at 464
(Newman, J., concurring) (“I concur in the discussion in the
Chief Justice‟s opinion that sets forth principles for
determining whether an action based on the invasion of an
individual's right of publicity may be maintained in the face
of a claim that the challenged use is an exercise of freedom of
expression.”).
32
   After noting that the movie was protected despite being a
work of fiction that was made for profit, Guglielmi, 603 P.2d
at 458-59, Chief Justice Bird rejected the contention that
defendants “could have expressed themselves without using
[the actor‟s] name and likeness,” arguing that “[n]o author
should be forced into creating mythological worlds or
characters wholly divorced from reality. The right of
publicity derived from public prominence does not confer a




                               48
essence, the actor‟s identity was sufficiently transformed by
the fictional elements in the book so as to tip the balance of
interests in favor of the First Amendment. See id. at 457
(Bird, C.J., concurring). Likewise, in Estate of Presley v.
Russen, 513 F. Supp. 1339 (D.N.J. 1981), the United States
District Court for the District of New Jersey held that an Elvis
impersonator‟s act was subject to right of publicity claims
because “entertainment that is merely a copy or imitation,
even if skillfully and accurately carried out, does not really
have its own creative component and does not have a
significant value as pure entertainment.”         Id. at 1359
(emphasis added).         Seen through the lens of the
Transformative Use Test, the Russen decision demonstrates
that where no additional transformative elements are present
— i.e., the work contains “merely a copy or imitation” of the
celebrity‟s identity — then there can be no First Amendment
impediment to a right of publicity claim.33 Additionally, in
Cardtoons, L.C. v. Major League Baseball Players Ass’n, 95
F.3d 959 (10th Cir. 1996), which focused on the use of
baseball players‟ identities for parody trading cards, the

shield to ward off caricature, parody and satire. Rather,
prominence invites creative comment.” Id. at 459-60.
33
   The court‟s “recognition that defendant‟s production has
some [First Amendment] value,” did not diminish its
conclusion that “the primary purpose of defendant‟s activity
[was] to appropriate the commercial value of the likeness of
Elvis Presley.” Russen, 513 F. Supp. at 1360. In this regard
the court analogized the case to Zacchini, holding that the
Elvis impersonator had “appropriated the „very activity [live
stage show] by which [Presley initially] acquired his
reputation.” Id. at 1361 (alteration in original).




                              49
transformative nature of the caricatures on the cards (and the
parodic text about the players‟ “statistics”) was sufficient to
quash any right of publicity claim. Id. at 972-73 (“Because
celebrities are an important part of our public vocabulary, a
parody of a celebrity does not merely lampoon the celebrity,
but exposes the weakness of the idea or value that the
celebrity symbolizes in society.”).34

       It is little wonder, then, that the Comedy III decision
looked to all three of these cases for guidance in defining the
Transformative Use Test. See Comedy III, 21 P.3d at 806-
09.35 The fact that such prior holdings can be reconciled with
the Test not only bolsters our views as to its propriety, but

34
   The Tenth Circuit also considered the economic incentives
underlying the right of publicity. See Cardtoons, 95 F.3d at
973-74. After a close examination, the court recognized only
one principal benefit for celebrities from having control over
works of parody: “control over the potential effect the parody
would have on the market for nonparodic use of one‟s
identity.” Id. at 974. However, the court quickly added that
parody “rarely acts as a market substitute for the original.”
Id. As a consequence, the court ruled in favor of the card
manufacturer.
35
   We note here that, by our reading, the Transformative Use
Test best comports with the language in RESTATEMENT
(THIRD) OF UNFAIR COMPETITION § 47 cmt. c. While we
acknowledge that other courts have read the Restatement as
adopting the Rogers Test, we believe that the various
examples listed in Comment C all exemplify the sort of
transformative uses that would generally pass the analysis set
forth in Comedy III.




                              50
also ensures that adopting the Transformative Use Test does
not result in the sort of backward-looking jurisprudential
revision that might disturb prior protections for expressive
speech.36 Quite to the contrary, adopting the Test ensures that
already-existing First Amendment protections in right of
publicity cases apply to video games with the same force as to
“biographies, documentaries, docudramas, and other
expressive works depicting real-life figures.” (Dissent Op. at
6.)

       In light of the above discussion, we find that the
Transformative Use Test is the proper analytical framework
to apply to cases such as the one at bar. Consequently, we
now apply the test to the facts of the instance case.

                      C.   Application

        In applying the Transformative Use Test to the instant
case, we must determine whether Appellant‟s identity is
sufficiently transformed in NCAA Football. As we mentioned
earlier, we use the term “identity” to encompass not only
Appellant‟s likeness, but also his biographical information. It
is the combination of these two parts — which, when




36
    Indeed, in compiling its non-exhaustive list of
“transformative elements or creative components,” the
Comedy III court looked for examples from previous
decisions — including Guglielmi, Cardtoons, and even Parks.
See Comedy III, 21 P.3d at 809-10.




                              51
combined, identify the digital avatar as an in-game recreation
of Appellant — that must be sufficiently transformed.37

       Having thus cabined our inquiry to the appropriate
form of Appellant‟s identity, we note that — based on the
combination of both the digital avatar‟s appearance and the
biographical and identifying information — the digital avatar
does closely resemble the genuine article. Not only does the
digital avatar match Appellant in terms of hair color, hair
style and skin tone, but the avatar‟s accessories mimic those
worn by Appellant during his time as a Rutgers player. The
information, as has already been noted, also accurately tracks
Appellant‟s vital and biographical details. And while the
inexorable march of technological progress may make some
of the graphics in earlier editions of NCAA Football look
dated or overly-computerized, we do not believe that video
game graphics must reach (let alone cross) the uncanny valley
to support a right of publicity claim.38 If we are to find some

37
    This joint focus on both likeness and identifying
information avoids a conflict with C.B.C. Distribution &
Mktg., Inc. v. Major League Baseball Advanced Media, L.P.,
505 F.3d 818 (8th Cir. 2007), which held that use of major
league baseball players‟ records in a fantasy baseball game
was protected by the First Amendment even against right of
publicity claims because such information was publicly
available. Id. at 823-24. The presence of a digital avatar that
recreates Appellant in a digital medium differentiates this
matter from C.B.C.
38
   It remains an open question, however, whether right of
publicity claims can extend into the bygone days of 8-bit
graphics and pixilated representations.




                              52
transformative element, we must look somewhere other than
just the in-game digital recreation of Appellant.39 Cases such
as ETW and No Doubt, both of which address realistic digital
depictions of celebrities, point to the next step in our analysis:
context.

        Considering the context within which the digital avatar
exists — effectively, looking at how Appellant‟s identity is
“incorporated into and transformed by” NCAA Football,
(Dissent Op. at 6) — provides little support for Appellee‟s
arguments. The digital Ryan Hart does what the actual Ryan
Hart did while at Rutgers: he plays college football, in digital
recreations of college football stadiums, filled with all the
trappings of a college football game.            This is not
transformative; the various digitized sights and sounds in the
video game do not alter or transform the Appellant‟s identity
in a significant way. See No Doubt, 122 Cal. Rptr. 3d at 410-
11 (“[N]o matter what else occurs in the game during the
depiction of the No Doubt avatars, the avatars perform rock
39
   It is no answer to say that digitizing Appellant‟s appearance
in and of itself works a transformative use. Recreating a
celebrity‟s likeness or identity in some medium other than
photographs or video cannot, without more, satisfy the test;
this would turn the inquiry on its head — and would
contradict the very basis for the Transformative Use Test.
See, e.g., Comedy III, 21 P.3d at 809 (applying the
Transformative Use Test to charcoal drawings of the Three
Stooges); see also Estate of Presley v. Russen, 513 F. Supp.
1339, 1359 (D.N.J. 1981) (“[E]ntertainment that is merely a
copy or imitation, even if skillfully and accurately carried out,
does not really have its own creative component and does not
have a significant value as pure entertainment.”).




                               53
songs, the same activity by which the band achieved and
maintains its fame.”). Indeed, the lack of transformative
context is even more pronounced here than in No Doubt,
where members of the band could perform and sing in outer
space.

       Even here, however, our inquiry is not at an end. For
as much as the digital representation and context evince no
meaningful transformative element in NCAA Football, a third
avatar-specific element is also present: the users‟ ability to
alter the avatar‟s appearance. This distinguishing factor
ensures that we cannot dispose of this case as simply as the
court in No Doubt. See No Doubt, 122 Cal. Rptr. 3d at 410
(noting that the digital avatars representing No Doubt were
“at all times immutable images of the real celebrity
musicians”). Indeed, the ability for users to change the avatar
accounted, in large part, for the District Court‟s deciding that
NCAA Football satisfied the Transformative Use Test. See
Hart, 808 F. Supp. 2d at 785.40 We must therefore consider

40
   To be clear, the District Court focused specifically on the
ability to alter the digital avatars, not on the alterations
themselves:

       [I]t is not the user's alteration of Hart's image
       that is critical. What matters for my analysis of
       EA's First Amendment right is that EA created
       the mechanism by which the virtual player may
       be altered, as well as the multiple permutations
       available for each virtual player image.

Hart, 808 F. Supp. 2d at 785. That is, the court below did not
look to the users‟ creations as proxies for Appellee‟s
expression. While we disagree with its final decision, we




                              54
to what extent the ability to alter a digital avatar represents a
transformative use of Appellant‟s identity.

       At the outset, we note that the mere presence of this
feature, without more, cannot satisfy the Transformative Use
Test. True, interactivity is the basis upon which First
Amendment protection is granted to video games in the first
instance.41 See Brown, 131 S. Ct. at 2733. However, the
balancing test in right of publicity cases does not look to
whether a particular work loses First Amendment protection.
Rather, the balancing inquiry looks to see whether the
interests protected by the right of publicity are sufficient to
surmount the already-existing First Amendment protections.
See, e.g., Guglielmi, 603 P.2d at 458 (considering whether
right of publicity protections “outweigh[] any protection [the]
expression would otherwise enjoy under the [First
Amendment]”). As Zacchini demonstrated, the right of
publicity can triumph even when an essential element for
First Amendment protection is present. In that case, the
human cannonball act was broadcast as part of the newscast.
See Zacchini, 433 U.S. at 563. To hold, therefore, that a
video game should satisfy the Transformative Use Test
simply because it includes a particular interactive feature




agree with the District Court‟s careful navigation of this
point.
41
   We note, too, that all games are interactive — that is a
product of the medium. Identifying an interactive feature that
acts upon the celebrity‟s likeness, therefore, is only the first
step in the analysis.




                               55
would lead to improper results. Interactivity cannot be an end
onto itself.42

       Moreover, we are wary of converting the ability to
alter a digital avatar from mere feature to talisman, thereby
opening the door to cynical abuse. If the mere presence of the
feature were enough, video game companies could commit
the most blatant acts of misappropriation only to absolve
themselves by including a feature that allows users to modify
the digital likenesses. We cannot accept that such an outcome
would adequately balance the interests in right of publicity
cases. As one amicus brief noted:

       [U]nder [Appellee‟s] application of the
       transformative test [sic], presumably no
       infringement would be found if individuals such
       as the Dalai Lama and the Pope were placed
       within a violent “shoot-em-up” game, so long
       as the game include[d] a “mechanism” by
       which the user could manipulate their
       characteristics.

(Screen Actors Guild, Inc. et al., Amicus Br. at 21.43) With
this concern in mind, therefore, we consider whether the type

42
   The other side of this coin is equally true: interactivity is
not the sine qua non of transformative use. Works involving
video games may still be transformative even where no
specific interactive features affect the celebrity likeness. See,
e.g., Kirby v. Sega of Am., Inc., 50 Cal. Rptr. 3d 607 (Cal. Ct.
App. 2006).
43
   We do not discount the possibility that such a game —
given the juxtaposition of spiritual leaders and the hyper




                               56
and extent of interactivity permitted is sufficient to transform
the Appellant‟s likeness into the Appellee‟s own expression.
We hold that it does not.

        In NCAA Football, Appellee seeks to create a realistic
depiction of college football for the users. Part of this realism
involves generating realistic representations of the various
college teams — which includes the realistic representations
of the players. Like Activision in No Doubt, therefore,
Appellee seeks to capitalize on the respective fan bases for
the various teams and players. Indeed, as the District Court
recognized, “it seems ludicrous to question whether video
game consumers enjoy and, as a result, purchase more EA-
produced video games as a result of the heightened realism
associated with actual players.” Hart, 808 F. Supp. 2d at 783
(quoting James J.S. Holmes & Kanika D. Corley, Defining
Liability for Likeness of Athlete Avatars in Video Games,
L.A. LAW., May 2011, at 17, 20). Moreover, the realism of
the games — including the depictions and recreations of the
players — appeals not just to home-team fans, but to bitter
rivals as well. Games such as NCAA Football permit users to
recreate the setting of a bitter defeat and, in effect, achieve
some cathartic readjustment of history; realistic depictions of
the players are a necessary element to this.44               That


violence of certain modern video games — could still pass
the Transformative Use Test on other grounds.
44
   We set aside the “Dynasty” and “Campus Legends” game
modes in this inquiry. We see no legally significant
difference between these modes and the ability in Band Hero
to select alternative avatars to represent the players or to
allow members of No Doubt to play with other bands or sing




                               57
Appellant‟s likeness is the default position only serves to
support our conclusion that realistic depictions of the players
are the “sum and substance” of these digital facsimiles.45 See
Kirby, 50 Cal. Rptr. 3d at 617-18. Given that Appellant‟s
unaltered likeness is central to the core of the game
experience, we are disinclined to credit users‟ ability to alter
the digital avatars in our application of the Transformative
Use Test to this case.

        We are likewise unconvinced that NCAA Football
satisfies the Transformative Use Test because Appellee
created various in-game assets to support the altered avatars
(e.g., additional hair styles, faces, accessories, et al.). In the
first instance, the relationship between these assets and the
digital avatar is predicated on the users‟ desire to alter the
avatar‟s appearance, which, as we have already noted, is
insufficient to satisfy the Test. The ability to make minor
alterations — which substantially maintain the avatar‟s
resemblance to Appellant (e.g., modifying only the basic
biographical information, playing statistics, or uniform
accessories) — is likewise insufficient, for “[a]n artist
depicting a celebrity must contribute something more than a
„merely trivial‟ variation.” Winter, 69 P.3d at 478-79.
Indeed, the ability to modify the avatar counts for little where

other musicians‟ songs. See No Doubt, 122 Cal. Rptr. 3d at
401.
45
   Admittedly, just as the presence of a photorealistic
depiction of a celebrity cannot be the end of the inquiry, the
mere fact that Appellant‟s likeness is the default appearance
of the avatar cannot, without more, end our analysis. It is
merely another factor to consider in the balancing exercise.




                               58
the appeal of the game lies in users‟ ability to play “as, or
alongside” their preferred players or team. See No Doubt,
122 Cal. Rptr. 3d at 411. Thus, even avatars with superficial
modifications to their appearance can count as a suitable
proxy or market “substitute” for the original. See Comedy III,
21 P.3d at 808; Winter, 69 P.3d at 479; Cardtoons, 95 F.3d at
974. For larger potential changes, such as a different body
type, skin tone, or face, Appellant‟s likeness is not
transformed; it simply ceases to be. Therefore, once a user
has made major changes to the avatar, it no longer represents
Appellant, and thus it no longer qualifies as a “use” of the
Appellant‟s identity for purposes of our inquiry. Such
possibilities therefore fall beyond our inquiry into how
Appellant’s likeness is used in NCAA Football. That the
game may lend itself to uses wholly divorced from the
appropriation of Appellant‟s identity is insufficient to satisfy
the Transformative Use Test. See No Doubt, 122 Cal. Rptr.
3d 397 (focusing on the use of the No Doubt avatars, not
alternative avatars or custom-made characters).

       In an attempt to salvage its argument, Appellee
suggests that other creative elements of NCAA Football,
which do not affect Appellant‟s digital avatar, are so
numerous that the videogames should be considered
transformative. We believe this to be an improper inquiry.
Decisions applying the Transformative Use Test invariably
look to how the celebrity’s identity is used in or is altered by
other aspects of a work. Wholly unrelated elements do not
bear on this inquiry. Even Comedy III, in listing potentially
“transformative or creative contributions” focused on
elements or techniques that affect the celebrity identity. See
Comedy III, 21 P.3d at 809 (discussing factual reporting,
fictionalized portrayal, heavy-handed lampooning, and subtle




                              59
social criticism); see also Winter, 69 P.3d at 478-79 (noting
that “[a]n artist depicting a celebrity must contribute
something more than a „merely trivial‟ variation” before
proceeding to discuss how the Winter brothers‟ likenesses
were altered directly and through context); Kirby, 50 Cal.
Rptr. 3d at 616-18. To the extent that any of these cases
considered the broader context of the work (e.g., whether
events took place in a “fanciful setting”), this inquiry was
aimed at determining whether this context acted upon the
celebrity identity in a way that transformed it or imbued it
with some added creativity beyond providing a “merely
trivial variation.”46 Thus, while we recognize the creative
energies necessary for crafting the various elements of NCAA
Football that are not tied directly to reality, we hold that they
have no legal significance in our instant decision.

        To hold otherwise could have deleterious
consequences for the state of the law. Acts of blatant
misappropriation would count for nothing so long as the
larger work, on balance, contained highly creative elements in
great abundance. This concern is particularly acute in the
case of media that lend themselves to easy partition such as
video games. It cannot be that content creators escape
liability for a work that uses a celebrity‟s unaltered identity in
one section but that contains a wholly fanciful creation in the
other, larger section.


46
   As we have already discussed, the broader context of
NCAA Football does not transform Appellant‟s likeness into
anything other than a digital representation of Appellant
playing the sport for which he is known, while surrounded by
the trappings of real-world competition.




                               60
       For these reasons, we hold that the broad application
of the Transformative Use Test represents an inappropriate
application of the standard. Consequently, we shall not credit
elements of NCAA Football that do not, in some way, affect
the use or meaning of Appellant‟s identity.

       As a final point, we note that the photograph of
Appellant that appears in NCAA Football 2009 does not bear
on our analysis above. On that subject, we agree with the
District Court that the photograph is “but a fleeting
component part of the montage” and therefore does not render
the entire work nontransformative. Hart, 808 F. Supp. 2d at
786. The reasoning from ETW is sufficiently applicable: the
context of Appellant‟s photograph — the montage — imbues
the image with additional meaning beyond simply being a
representation of the player. See ETW, 332 F.3d at 938
(holding that the photographs in a collage were “combined to
describe, in artistic form, a historic event in sports history and
to convey a message about the significance of [Tiger]
Woods‟s achievement in that event”). Consequently, this
particular use of Appellant‟s likeness is shielded by the First
Amendment and therefore can contribute nothing to
Appellant‟s claim for violation of his right of publicity.

                       IV.    Conclusion

       We therefore hold that the NCAA Football 2004, 2005
and 2006 games at issue in this case do not sufficiently
transform Appellant‟s identity to escape the right of publicity
claim and hold that the District Court erred in granted
summary judgment in favor of Appellee.47 While we do hold

47
  There can be no doubt that video games such as NCAA
Football are the product of great effort, skill, and creative and




                               61
that the only apparent use of Appellant‟s likeness in NCAA
Football 2009 (the photograph) is protected by the First
Amendment, Appellant‟s overall claim for violation of his
right of publicity should have survived Appellee‟s motion for
summary judgment. Consequently, we need not address
Appellant‟s desire for additional discovery. We shall reverse
the District Court‟s grant of summary judgment and remand
this case back to the court below for further proceedings
consistent with this opinion.




technical prowess. As the Supreme Court noted in Brown,
video games convey messages and expressive content in a
way that is similar to prior media for expression. Brown v.
Entm’t Merchs. Ass’n, 131 S. Ct. 2729, 2733 (2011). At the
same time, games open new avenues through which artists
and speakers can express their opinions and observations —
by playing the game, a user is integrated into the expressive
work in a way that has never before been achieved. Surely,
then, the First Amendment protects video games in the first
instance, and nothing in our decision today should be read to
diminish this fact. Rather, our inquiry looked to whether
other interests may surmount the First Amendment protection
— as they can surmount protections for other modes of
expression. In finding that NCAA Football failed to satisfy
the Transformative Use Test, we do not hold that the game
loses First Amendment protection. We merely hold that the
interest protected by the right of publicity in this case
outweighs the Constitutional shield.




                             62
AMBRO, Circuit Judge, dissenting

       My colleagues and I take the same road but read the
signs differently. Hence we stop at different places. I wish I
was with them; I am not. I recognize that Electronic Arts,
Inc. (―EA‖) has taken for the 2005 version of NCAA Football
what most good Rutgers fans during Ryan Hart‘s playing
days know—the Rutgers quarterback is Hart—and parlayed
that recognition into commercial success.1 A key to the
profitability of NCAA Football is consumers‘ desire to
experience a realistic football playing experience with their
favorite teams. EA‘s use of actual college athletes‘ likenesses
motivates buyers to purchase a new edition each year to keep
up with their teams‘ changing rosters. The burn to Hart and
other amateur athletes is that, unlike their active professional
counterparts, they are not compensated for EA‘s use of their
likenesses in its video games. Were this case viewed strictly
on the public‘s perception of fairness, I have no doubt Hart‘s
position would prevail.2

1
    That said, most outside Rutgers do not know that
quarterback #13 is Ryan Hart. They did not know that in
2005, and even today many, if not most, Rutgers fans no
longer connect #13 with Hart. Fame fades so quickly we call
it fleeting. Even nostalgic memories nod off. For example,
name the BYU quarterback when it was college football‘s
national champion in 1984. (Hint: it wasn‘t Ty Detmer.)
2
  See generally Taylor Branch, The Shame of College Sports,
The Atlantic, Oct. 2011, at 80–110 (lambasting NCAA
―amateurism‖ and ―student-athlete‖ policies as ―legalistic
confections propagated by the universities so they can exploit
the skills and fame of young athletes,‖ and discussing



                               1
       Hart claims that he has under New Jersey law a right
of publicity to prevent others from unfairly appropriating the
value of his likeness for their commercial benefit, and that the
First Amendment does not shield EA‘s infringement of this
right. This claim requires us to balance the competing
interests implicated by the right of publicity and the First
Amendment.        I agree with my colleagues that the
Transformative Use Test is the preferred approach for
balancing these interests, but we part ways on its
interpretation and application. The result is that they side
with Hart, and I with EA.

        The Transformative Use Test gives First Amendment
immunity where, in an expressive work, an individual‘s
likeness has been creatively adapted in some way. Correctly
applied, this test strikes an appropriate balance between
countervailing rights—the publicity interest in protecting an
individual‘s right to benefit financially when others use his
identifiable persona for their own commercial benefit versus
the First Amendment interest in insulating from liability a
creator‘s decision to interweave real-life figures into its
expressive work.

       My colleagues limit effectively their transformative
inquiry to Hart‘s identity alone, disregarding other features of
the work. This approach, I believe, does not find support in
the cases on which they rely. Further, my colleagues penalize
EA for the realism and financial success of NCAA Football, a


lawsuits challenging these policies); see also Alexander
Wolff, When Worlds Collide, Sports Illustrated, Feb. 11,
2013, at 18; Joe Nocera, Pay Up Now, N.Y. Times Mag., Jan.
1, 2012, at 30–35 (advocating payment of college athletes to
alleviate ―[t]he hypocrisy that permeates big-money college
sports‖ arising from amateurism rules).




                               2
position I find difficult to reconcile with First Amendment
protections traditionally afforded to true-to-life depictions of
real figures and works produced for profit. Because I
conclude that the Transformative Use Test protects EA‘s use
of Hart‘s likeness in NCAA Football, I respectfully dissent.

      I. Formulation of the Transformative Inquiry

       To determine whether an individual‘s identity has been
―transformed‖ for purposes of the Transformative Use Test, I
believe it is necessary to review the likeness in the context of
the work in its entirety, rather than focusing only on the
individual‘s likeness. This interpretation is in line with the
approach taken in Comedy III Productions, Inc. v. Gary
Saderup, Inc., 21 P.3d 797 (Cal. 2001), in which the Supreme
Court of California first put in play the Transformative Use
Test. Per Comedy III, the right of publicity prevails over
competing First Amendment interests ―[w]hen artistic
expression takes the form of a literal depiction or imitation of
a celebrity for commercial gain.‖ Id. at 808 (citing Zacchini
v. Scripps-Howard Broad. Co., 433 U.S. 562, 575–76
(1977)).      To determine whether a work qualifies as
―transformative‖ and not simply ―literal,‖ the Comedy III
Court explained that ―the inquiry is whether the celebrity
likeness is one of the ‗raw materials‘ from which an original
work is synthesized, or whether the depiction or imitation of
the celebrity is the very sum and substance of the work in
question.‖ Id. at 809 (emphases added).

       Likewise, when applying the Transformative Use Test
two years later in Winter v. DC Comics, 69 P.3d 473 (Cal.
2003), the California Supreme Court explained that the
defendant‘s use was transformative because it could ―readily
ascertain that [the portrayals] are not just conventional
depictions of plaintiffs but contain significant expressive
content other than plaintiffs’ mere likenesses.‖ Id. at 479




                               3
(emphasis added).       The Court also observed that the
characters were placed in a ―larger story, which is itself quite
expressive.‖ Id.3 The repeated focus on the use of an
individual‘s likeness in the context of the work as a whole
leaves me little doubt that we must examine the creative work
in the aggregate to determine whether it satisfies the
Transformative Use Test and merits First Amendment
protection.

       My colleagues correctly recite the Transformative Use
Test set out in Comedy III and Winter [Majority Op. at 35–
40], but later disregard that recitation. When addressing
Hart‘s claim, their analysis proceeds by analyzing, on a step-
by-step basis, the digital avatar based on Hart, the context in
which that avatar is set in NCAA Football, and the users‘
ability to alter the avatar‘s appearance, concluding at each
step that Hart‘s likeness is not sufficiently changed to qualify
as ―transformative.‖ In the last instance, my colleagues reject
as immaterial the myriad other creative elements of the video
game on the ground that ―[d]ecisions applying the
Transformative Use Test invariably look to how the
celebrity’s identity is used,‖ and that ―[w]holly unrelated
elements do not bear on this inquiry.‖ [Majority Op. at 59
(emphasis in original).] But by cabining their inquest to

3
  While the Winter decision makes several references to the
physical differences between the plaintiffs and their
likenesses, these statements were made with respect to the
Court‘s conclusion that ―the portrayals do not greatly threaten
plaintiffs‘ right of publicity‖ insofar as they were unlikely to
decrease their commercial value. 69 P.3d at 479. Similarly,
there is no real contention that NCAA Football is harming
ticket sales of college football games or decreasing Hart‘s
commercial value; if anything, it seems more likely that both
have been augmented by the popularity of EA‘s video games.




                               4
Hart‘s likeness alone, their approach is at odds with
California Supreme Court decisions on the Transformative
Use Test.4

        The infirmity of this approach is highlighted by ETW
Corp. v. Jireh Publishing, Inc., 332 F.3d 915 (6th Cir. 2003),
in which the Sixth Circuit Court of Appeals concluded that an
artist‘s use of several photographs of Tiger Woods in a
commemorative collage was ―transformative,‖ and thus
shielded from Woods‘ right-of-publicity suit. My colleagues
do not—and, in my view, cannot—explain how the
photographic images of Woods were transformed if they limit
their analysis to ―how the celebrity’s identity is used.‖
[Majority Op. at 59 (emphasis in original).] Instead, their
discussion of ETW recognizes that the Sixth Circuit held that
the artist‘s use qualified for First Amendment protection
under the Transformative Use Test because ―the collage
‗contain[ed] significant transformative elements,‘‖ and the
combination of images ―‗describe[d], in artistic form, a
historic event in sports history[—the 1997 Masters golf
tournament—]and . . . convey[ed] a message about the
significance of Woods‘ achievement in that event.‘‖

4
   The majority opinion relies heavily on two lower court
decisions in California considering the right of publicity in
the video game context, No Doubt v. Activision Publishing,
Inc., 122 Cal. Rptr. 3d 397 (Ct. App. 2011), and Kirby v. Sega
of America, Inc., 50 Cal. Rptr. 3d 607 (Ct. App. 2006). I do
not consider these cases particularly instructive, as they were
not decided by the architect of the Transformative Use Test,
the Supreme Court of California. Thus, I do not attempt to
explain or distinguish their holdings except to note that I
believe No Doubt, which focused on individual depictions
rather than the work in its entirety, was wrongly decided in
light of the prior precedent in Comedy III and Winter.




                              5
[Majority Op. at 41 (first alteration in original) (emphasis
added) (quoting ETW, 332 F.3d at 938; citing Comedy III, 21
P.3d at 809).] No doubt the use at issue here—creating
digital avatars of football teams and placing them in an
interactive medium designed for user interaction and
manipulation—is significantly more ―transformative‖ than the
use in ETW, which simply combined several photographs into
a photomontage.

       To me, a narrow focus on an individual‘s likeness,
rather than how that likeness is incorporated into and
transformed by the work as a whole, is a flawed formulation
of the transformative inquiry. The whole—the aggregate of
many parts (including, here, many individuals)—is the better
baseline for that inquiry.
    II. Harmonization of the Transformative Use Test with
                First Amendment Precedent
        Transformative use must mesh with existing
constitutional protections for works of expression. The First
Amendment         extends      protection    to    biographies,
documentaries, docudramas, and other expressive works
depicting real-life figures, whether the accounts are factual or
fictional. See, e.g., Matthews v. Wozencraft, 15 F.3d 432,
439–40 (5th Cir. 1994) (biographical novel); Ruffin-Steinback
v. dePasse, 82 F. Supp. 2d 723, 730–31 (E.D. Mich. 2000)
(television miniseries), aff ’d, 267 F.3d 457, 461–62 (6th Cir.
2001); Seale v. Gramercy Pictures, 949 F. Supp. 331, 337
(E.D. Pa. 1996); Hicks v. Casablanca Records, 464 F. Supp.
426, 433 (S.D.N.Y. 1978) (docudrama and novel); Guglielmi
v. Spelling-Goldberg Prods., 603 P.2d 454, 458–59 (Cal.
1979) (docudrama).5          ―That books, newspapers, and

5
  While my colleagues acknowledge the need for uniform
First Amendment treatment of different mediums in the




                               6
magazines are published and sold for profit does not prevent
them from being a form of expression whose liberty is
safeguarded by the First Amendment.‖ Joseph Burstyn, Inc.
v. Wilson, 343 U.S. 495, 501 (1952). Accordingly, courts
have rejected as counter to free expression the claim that
constitutional protection is diminished because a celebrity‘s
name or likeness was used to increase a product‘s value and
marketability. See Guglielmi, 603 P.2d at 460–62 (Bird, C.J.,
concurring).6

       The protection afforded by the First Amendment to
those who weave celebrities into their creative works and sell
those works for profit applies equally to video games. See
Brown v. Entm’t Merchs. Ass’n, 131 S. Ct. 2729, 2733
(2011). Thus EA‘s use of real-life likenesses as ―characters‖
in its NCAA Football video game should be as protected as
portrayals (fictional or nonfictional) of individuals in movies
and books. I do not suggest that all digital portrayals of an
individual are entitled to First Amendment protection.
Rather, the work should be protected if that likeness, as
included in the creative composition, has been transformed
into something more or different than what it was before.
And in any event the profit that flows from EA‘s realistic
depiction of Hart (and the myriad other college football
players portrayed in NCAA Football) is not constitutionally

abstract [Majority Op. at 51], it is difficult to reconcile their
actual application of the Transformative Use Test to the video
game here with the above-cited cases.
6
  As recognized by my colleagues, then-Chief Justice Bird‘s
views in Guglielmi commanded the support of the majority of
the California Supreme Court, and were relied on by the
Comedy III Court to guide its definition of the Transformative
Use Test. [Majority Op. at 48 n.31.]




                               7
significant, nor even an appropriate consideration, when
applying the Transformative Use Test.7

       My colleagues‘ understanding of the Transformative
Use Test underplays the creative elements of NCAA Football
by equating its inclusion of realistic player likenesses to
increase profits with the wrongful appropriation of Hart‘s
commercial value. This approach is at odds with the First
Amendment protection afforded to expressive works
incorporating real-life figures. That protection does not
depend on whether the characters are depicted realistically or
whether their inclusion increases profits. See Guglielmi, 603
P.2d at 460–62 (Bird, C.J., concurring) (concluding that

7
  In devising the Transformative Use Test, the California
Supreme Court borrowed from ―the purpose and character of
the use‖ factor relevant to a copyright fair use defense, see 17
U.S.C. § 107(1), yet it rejected ―a wholesale importation of
the fair use doctrine into right of publicity law,‖ Comedy III,
21 P.3d at 807. Nonetheless, it appears my colleagues permit
another fair use factor to creep into their transformative
analysis. Namely, their focus on the marketability of NCAA
Football seems colored by the factor considering ―the effect
of the use upon the potential market for or value of the
copyrighted work,‖ see 17 U.S.C. § 107(4), notwithstanding
that this element was expressly excluded from Comedy III‘s
articulation of the Transformative Use Test, see 21 P.3d at
808 n.10. Further, even if consideration of ―market effect‖
were appropriate in a transformative analysis, I do not believe
this factor would weigh in favor of finding an infringing use
here because, as pointed out supra note 3, there is no
contention that EA‘s inclusion of Hart‘s likeness in NCAA
Football has caused a decline in the commercial value of his
identity or persona.




                               8
acceptance of this argument would chill free expression and
mean ―the creation of historical novels and other works
inspired by actual events and people would be off limits to the
fictional author‖).

        In sum, applying the Transformative Use Test in the
manner done by my colleagues creates a medium-specific
metric that provides less protection to video games than other
expressive works. Because the Supreme Court‘s decision in
Brown forecloses just such a distinction, see 131 S. Ct. at
2740, my colleagues‘ treatment of realism and profitability in
their transformative use analysis puts us on a different course.

              III. Application to Hart’s Claim

       With this understanding of the Transformative Use
Test, I conclude EA‘s use of avatars resembling actual
players is entitled to First Amendment protection. NCAA
Football transforms Hart‘s mere likeness into an avatar that,
along with the rest of a digitally created college football team,
users can direct and manipulate in fictional football games.
With the many other creative features incorporated
throughout the games, sufficient expressive transformation
takes place to merit First Amendment protection.

        NCAA Football involves myriad original graphics,
videos, sound effects, and game scenarios. These artistic
aspects permit a user to direct the play of a college football
team whose players may be based on a current roster, a past
roster, or an entirely imaginary roster comprised of made-up
players. Users are not reenacting real games, but rather are
directing the avatars in invented games and seasons. Further,
the ―Campus Legend‖ and ―Dynasty Mode‖ features permit
users to control virtual players and teams for multiple
seasons, creating the means by which they can generate their
own narratives. Such modes of interactive play are, I submit,




                               9
imaginative transformations of the games played by real
players.

       As noted by the District Court, it is not only the user
that contributes to the interactivity; EA has created ―multiple
permutations available for each virtual player image.‖ Hart v.
Elec. Arts, Inc., 808 F. Supp. 2d 757, 785 (D.N.J. 2011). This
furthers the game‘s transformative interactivity. In fact, the
majority opinion expressly approves the District Court‘s
analysis on this point. [Majority Op. at 54–55 n.40.]

       By limiting their inquiry to the realistic rendering of
Hart‘s individual image, my colleagues misapply the
Transformative Use Test. Contrary to their assertion that the
other creative elements of NCAA Football are ―[w]holly
unrelated‖ [Majority Op. at 59], those elements are, in fact,
related to its use of Hart‘s likeness. If and when a user
decides to select the virtual 2005 Rutgers‘ football team as a
competitor in a game, and to the extent that user does not alter
the characteristics of the avatar based on Hart‘s likeness, the
numerous creative elements of the video games discussed
above are part of every fictional play a user calls. Any
attempt to separate these elements from the use of Hart‘s
likeness disregards NCAA Football‘s many expressive
features beyond an avatar having characteristics similar to
Hart. His likeness is transformed by the artistry necessary to
create a digitally rendered avatar within the imaginative and
interactive world EA has placed that avatar.

       I am thus convinced that, as used in NCAA Football,
Hart‘s ―likeness is one of the ‗raw materials‘ from which
[the] original work is synthesized . . . [rather than] the very
sum and substance of the work in question.‖ Comedy III, 21
P.3d at 809. EA bases its NCAA Football characters on
countless real-life college football players, and it certainly
seeks to depict their physical and biographical characteristics




                              10
realistically. Yet these ―are not just conventional depictions
of [Hart] but contain significant expressive content other than
[his] mere likeness[].‖ Winter, 69 P.3d at 479. NCAA
Football uses creative means to achieve its overall goal of
realistically replicating a college football experience in which
users may interact, direct, and control the players‘ avatars,
including the one based on Hart‘s likeness. I find this use
transformative.

                       *   *   *    *   *

       The Transformative Use Test I support would prevent
commercial exploitation of an individual‘s likeness where the
work at issue lacks creative contribution that transforms that
likeness in a meaningful way. I sympathize with the position
of Hart and other similarly situated college football players,
and understand why they feel it is fair to share in the
significant profits produced by including their avatar
likenesses into EA‘s commercially successful video game
franchise. I nonetheless remain convinced that the creative
components of NCAA Football contain sufficient expressive
transformation to merit First Amendment protection. Thus I
respectfully dissent, and would affirm the District Court‘s
grant of summary judgment in favor of EA.




                               11
