TABLE OF CONTENTS I. INTRODUCTION II. BACKGROUND A. Origins of the Right of Publicity B. Current Law C. Justifying the Right of Publicity III. THE RIGHT OF PUBLICITY APPLIED TO GAMES A. Licensing Rising B. Licensing Victorious 1. Palmer v. Schonhorn Enterprises, Inc. (N.J. Super. Ct. 1967) 2. Uhlaender v. Henricksen (D. Minn. 1970) 3. Rosemont Enterprises, Inc. v. Urban Systems, Inc. (N.Y. Sup. Ct. 1973) C. The Settled Order of Things D. Licensing Falling IV. GAMES AS AN EXPRESSIVE MEDIUM A. The Gaming Medium Is More than Monopoly 1. Wargames 2. Role-Playing Games 3. Eurogames 4. Video Games B. Game Designers Have Something to Say 1. Wargames 2. Role-Playing Games C. Games Can Be Serious D. Game Processes Can Contribute to the Expressive Value of Games V. APPLYING THE FIRST AMENDMENT TO GAMES AND THE RIGHT OF PUBLICITY A. The Rogers Test B. Applying Rogers C. Zacchini's Limiting Principle VI. CONCLUSION
Are games more like coffee mugs, posters, and T-shirts, or are they more like books, magazines, and films? For purposes of the right of publicity, the answer matters. The critical question is whether games should be treated as merchandise or as expression. Three classic judicial decisions, decided in 1967, 1970, and 1973, held that the defendants needed permission to use the plaintiffs' names in their board games. (1) These decisions judicially confirmed that games are merchandise, not something equivalent to more traditional media of expression. (2) As merchandise, games are not like books; instead, they are akin to celebrity-embossed coffee mugs. To borrow a British term, games are "mere image carriers." (3) Although the last of these three judicial decisions disclaimed any intent of offering a "hard and fast rule," (4) three consecutive losses in three different courts offered a plausible basis for predicting how future courts would respond to similar claims involving games. (5) These three decisions confirmed the "settled order of things": a license is required to use someone's name or likeness (or identity) in a game. (6) The leading treatise on the right of publicity (7) and the Restatement (Third) of Unfair Competition (8) subsequently endorsed the results in these cases.
In 2007 the United States Court of Appeals for the Eighth Circuit upset the settled order of things. In C.B.C. Distribution and Marketing v. Major League Baseball Advanced Media, (9) the Eighth Circuit held that the use of professional baseball players' names and statistics in fantasy baseball games is protected by the First Amendment, the right of publicity notwithstanding. (10) Some courts are resisting further erosions of the right of publicity. (11) The issue remains substantially unsettled with multiple courts now considering whether permission is needed to use the identities of athletes in video games. (12)
We argue that the rule produced by the three classic cases is an anachronism. The licensing custom created--or at least reinforced--by these decisions should carry no weight. These cases were questionable when decided. They are even more so now.
The gaming medium has evolved significantly over the past four decades, calling into question the longstanding treatment of games for purposes of the right of publicity. One early case described the defendant's game as a mere "commodity familiar to us all," "an entertaining game of chance, the outcome of which is determined by maneuvering tokens on a game board by the throw of the dice." (13) Until recently, the leading treatise, McCarthy's The Rights of Publicity and Privacy, agreed. McCarthy suggested that commercially produced games are largely unexpressive and mostly childish. (14) Chutes & Ladders and Candy Land are the models for this understanding of the medium. (15) Tedious, uncreative games marketed to children may not evoke much First Amendment sympathy against right of publicity claims, but since the three cases were decided in the late 1960s and early 1970s, several categories of commercial games have become significant, including historical wargames, role-playing games, video games, Eurogames, (16) and other "hobby" games. Games in these categories do not constitute a few odd counter-examples to the same well-known games seen on retail shelves year after year, but many thousands of counter-examples. And unlike outmoded stereotypes of games, adults play these games too.
These games communicate ideas, allowing players to interact with fiction and non-fiction, fantasy and history. Game designer Jane McGonigal thinks games can change the world. (17) Her claim is unlikely to have ever been made about coffee mugs, but one need not go as far as McGonigal to recognize that games are a significant medium of expression. The Supreme Court's recent decision in Brown v. Entertainment Merchants Association recognized the expressive similarities of video games to books, plays, and movies. (18) Arguably, Brown moved at least video games out of the merchandise category and into the same category as more traditional media of expression. (19) Games in general, however, are ready to be considered alongside other expressive works. While it is possible for a particular game to be a mere image or identity carrier, games are often much more. For purposes of the right of publicity, games are not like coffee mugs and should not be treated as such.
A. Origins of the Right of Publicity
The standard account of the right of publicity begins with Samuel Warren and Louis Brandeis' 1890 article in the Harvard Law Review, "The Right to Privacy." (20) Warren and Brandeis were worried about changes in the newspaper business and claimed that these changes led to the press exceeding "the obvious bounds of propriety and of decency" by reporting the private details of peoples' lives, details with no connection to any legitimate public interest. (21) They noted that developments in photography led to the unauthorized publication of images of private persons. (22) They claimed the proliferation of gossip lowers social standards and crowds out coverage of more important matters. (23) In response to these problems, Warren and Brandeis argued that a "right to be let alone" or a right of privacy could be distilled from the case law to protect people from the publication of private matters with no public relevance. (24) Much of Warren and Brandeis' article was a "strained and historically sterile reading of a single decision," (25) but in taking this approach, they found a judicial hook for courts to provide some protection for privacy, beyond that already provided under property and contract law. (26) There were limits, however. Among the most important limitations, Warren and Brandeis said, "The right to privacy does not prohibit any publication of matter which is of public or general interest." (27) They also said the right does not apply to facts individuals publish about themselves or consent to have published about themselves. (28)
Warren and Brandeis' article was a success. Multiple courts referenced their article. (29) Although the New York Court of Appeals rejected their argument, (30) other courts accepted it. (31) As evidenced by legislative enactments in California (1899) (32) and New York (1903), (33) Warren and Brandeis likely tapped into a wider public sympathy to place some restrictions on the press. Courts, however, still needed to extract the right of publicity from the right of privacy. The critical step occurred when courts acknowledged that some appropriations of a person's identity are not offensive to a person's privacy interests, but instead to a person's economic interests.
In 1953 in Haelan Laboratories, Inc. v. Topps Chewing Gum, Inc., (34) the United States Court of Appeals for the Second Circuit explicitly recognized that many famous people are more concerned about controlling their publicity than protecting their privacy. (35) Professional baseball players granted Haelan Laboratories an exclusive right to use their photographs on baseball cards marketed with chewing gum. (36) Haelan claimed Topps Chewing Gum infringed on its exclusive rights when Topps produced competing baseball cards to sell with its gum. (37) New York law controlled, but New York's statutory right of privacy could not be assigned to a third party. (38) If players could not assign their rights to Haelan, then Haelan could not claim an injury against Topps. (39)
In Haelan, Judge Jerome Frank's opinion for the court recognized that many famous people are not trying to maintain private lives free of publicity; publicity usually does not cause these people any mental distress. (40) Although these people want publicity, they want to be paid for the public uses of their names and likenesses. (41) Judge Frank noted that celebrities seek to receive money for "authorizing advertisements," (42) but celebrities will not have much luck licensing their identities unless they have the right to prevent unauthorized uses. (43) In a prediction that proved inaccurate, (44) Judge Frank said New York common law recognized an assignable right outside of the New York's Civil Rights Law, one that "might be called a 'right of publicity.'" (45)
Haelan not only provided the name for the right of publicity, it also treated baseball cards as merchandise rather than as expression. (46) Judge Frank's opinion actually described the case largely in terms of advertising, (47) suggesting the court viewed baseball cards as secondary to the chewing gum, a dated view of baseball cards even in 1953. Originally, baseball cards may have been a promotional gimmick to sell gum, (48) but gum ceased to be the primary product long ago, maybe even before the Haelan decision. According to one study of baseball cards, "Cards produced after World War II were not used to sell another product but were sold as products in and of themselves." (49) Many years later, the gum largely disappeared. (50) Whatever Judge Frank's view of the case might have been had he viewed baseball cards as desirable purchases by themselves rather than as promotional incentives to sell gum, Haelan is now understood as a case about merchandise. (51) As such, Haelan supports treating merchandise like advertisements.
While the rights of privacy and publicity often blur together, (52) with the right of …