Can the right of publicity (a state-law right) be reconciled (in a legitimate and nonarbitrary way) with the First Amendment’s prohibition against state laws that “suppress” speech? Ever since the Supreme Court said that commercial speech deserves First Amendment protection, defendants have used it as a defense when accused of misappropriating celebrity fame for profit. The analysis has morphed in the case law to the point that the controlling issue seems to be whether the challenged use is “sufficiently transformative” to justify the taking. The use of a transformation construct to manage the conflict has been dubious at best and misleading at worst. It has spawned an inconsistent and increasingly arbitrary body of law.
After decades of sitting on the sidelines, the Supreme Court was set to squarely address the problem in a case involving a college football videogame; however, by stipulation of the parties, the Court dismissed the petition for writ of certiorari. Former college athletes (who are contractually limited from commercial exploitation of their likenesses while in school) sued the NCAA and Electronic Arts (“EA”), claiming that videogames made under NCAA licensing deals violated their rights of publicity by misappropriating their likenesses. The defense claimed that any such uses of their likenesses—even though blatantly commercial—were protected by the First Amendment freedom of speech. It would have been the first time in almost forty years that the Supreme Court addressed the right of publicity and may have been the last opportunity to reconcile an otherwise inconsistent and unpredictable body of law for the digital age.
Most courts that have addressed similar issues have attempted some sort of “balancing” of the right of publicity (conceived as a property right) against the First Amendment (usually conceived as a right to freely express oneself, albeit for profit in this instance by using a famous person’s persona or likeness). The profit motive, it is often said, does not strip the use of First Amendment protection because the Supreme Court has made clear that commercial speech, whatever that is, still deserves significant First Amendment protection.
This Article argues that the courts’ conceptualization of the conflict—as a property right against a speech right—is askew. We argue that the conflict is really about allocating competing economic claims: the right of the plaintiff to prevent commercial use of her image versus the right of the defendant to make commercial use of that image. The transformative use test essentially turns the inquiry into an attempt, albeit not transparent, to allocate the economic value created by, or attributable to, the celebrity plaintiff against the add-on value created by the defendant who took the celebrity image and allegedly transformed it into a new product with new economic value attributable to the defendant’s own work or creativity.
