by Scott Hervey

The rock band No Doubt had serious doubts about the way they were being portrayed in Activision’s video game Band Hero. No Doubt had licensed the likeness of its members for use in the video game but ultimately objected to Activision’s use and claimed that such use was outside of the scope of the license agreement between the Parties.

The agreement between the parties set for the terms upon which No Doubt gave Activision the right to utilize the band members’ name and likeness in the video game. Each band member had the right to approve their likeness as implemented in the game, as well as all other uses of use their name and/or likeness in the marketing and exploitation of the game. After signing the license agreement, the band members participated in a full day photography and data capture session at Activision’s studios so that the band members’ avatars in the video game would accurately reflect their appearances, movements and sounds. No Doubt reviewed the photography and the details related to the appearance and feature of their avatars and ultimately gave their approval.

Approximately two weeks prior to the release of Band Hero, No Doubt became aware of certain features in the game that would permit players to manipulate No Doubt’s avatars in ways that were not previously disclosed. For Example, a feature allowed users to have a No Doubt avatar perform any of the songs included in the game, including songs that No Doubt did not record and No Doubt maintained it would never have performed. Additional features allowed users to manipulate the female lead singer Gwen Stefani’s avatar to sing in a male voice and manipulate the male band members’ avatars to sing songs in female voices. No Doubt contended that Activision never disclosed these game features and complained about the additional exploitation of their likenesses.  Activision admitted that it had hired actors to impersonate No Doubt in order to create the additional No Doubt avatar features. No Doubt demanded that Activision remove the complained of features for No Doubt’s avatars but Activision refused, noting that the programming for the video game had been finalized and the manufacturer had approved the game for manufacture.

No Doubt filed a complaint against Activision seeking injunctive relief and damages for, among other claims, Activision’s violation of No Doubt’s right of publicity. Activision filed an anti-SLAPP (“Strategic Lawsuit Against Public Participation”) motion to strike No Doubt’s claims for violation of the right of publicity. The Superior Court denied Activision’s anti-SLAPP motion; Activision timely appealed.

California’s anti-SLAPP statute provides that a complaint which arises from the defendant’s right of petition or free speech under the United States or California Constitution in connection with a public issue shall be subject to a special motion to strike, unless the court determines that the plaintiff has established that there is a probability that the plaintiff will prevail on the claim. The terms, "act in furtherance of a person’s right of petition or free speech under the United States or California Constitution in connection with a public issue," includes:

(1) any written or oral statement or writing made before a legislative, executive, or judicial proceeding, or any other official proceeding authorized by law;
(2) any written or oral statement or writing made in connection with an issue under consideration or review by a legislative, executive, or judicial body, or any other official proceeding authorized by law;
(3) any written or oral statement or writing made in a place open to the public or a public forum in connection with an issue of public interest;
(4) or any other conduct in furtherance of the exercise of the constitutional right of petition or the constitutional right of free speech in connection with a public issue or an issue of public interest.

The Court of Appeals found that Activision satisfied its initial burden under the anti-SLAPP statute by demonstrating that the complained of activities fits the category of “free speech in connection with a public issue or an issue of public interest.” The court noted that prior decisions have held that video games generally are considered expressive works subject First Amendment protection and that Activision’s use of No Doubt’s likeness in Band Hero is a matter of public interest because of the Band’s wide spread fame. Having established that the complained of action arose out of First Amendment speech the court then had to consider whether No Doubt had a probability of success on the merits of its right of publicity claim. 

The California Supreme court previously addressed the tension between right of publicity and the First Amendment in Comedy Three Productions, Inc. v. Gary Saderup, Inc. and recognized that the right of publicity has a potential for frustrating the fulfillment of the First Amendment’s interest in preserving an uninhibited marketplace for ideas and prohibiting efforts to limit uninhibited, robust and wide open debate on public issues. The California Supreme court noted that celebrities take on a special public meaning and the appropriation of their likeness may have important uses in uninhibited debate on public issues, particularly, debates about culture and values. However, not all expressions with respect to celebrities are insulated by the First Amendment; only those that have social utility. The California Supreme Court stated that the test to determine whether an appropriation of a celebrity’s likeness is protected by the First Amendment is whether the work contains significant transformative elements or when the value of the work does not derive primarily from the celebrities’ fame. If the celebrity’s likeness is “the very sum and substance” of the work in question, then the work is not transformative.

Applying the Supreme Court’s test to the matter at hand, the Appellate Court found that Activision’s use of the band’s likeness was not transformative. Although the literal interpretation of a celebrity’s likeness have in the past been found to create a transformative use, here the court found that the context in which Activision used the literal likeness of No Doubt’s members does not qualify the use for First Amendment protection. The court did not agree with Activision’s claim that the ability to show the No Doubt band members in surroundings and circumstances that were unique, creative and fanciful (i.e., having them sing songs that they have never sung before, or perform at made up venues such as outer space) is a transformative use. Although the avatars can be manipulated to perform at fanciful venues and sing songs that they never would have sung, this does not transform these avatars into anything other than exact depictions of No Doubt’s band members doing exactly what they do as celebrities. They are not portrayed as different characters and they are not portrayed engaging in activities that are substantially different from those activities that they perform as part of their professional lives. 

Further, the Court found that Activision’s use of the life like No Doubt avatars is motivated by the commercial interest in using the band’s fame to market Band Hero because it encourages the band’s fans to purchase the game in order to perform with/or alongside the members of No Doubt. The court further commented that nothing in the creative elements of Band Hero elevates the depiction of the No Doubt members to something more than conventional images that No Doubt should have the right to control and exploit.

An interesting position is taken by the concurring justice who agreed and concurred with the result and judgment. This judge opined that the contract between the parties precluded Activision’s First Amendment claim making it unnecessary to reach the transformative issue. The concurring justice noted that the difference in this case and the other right of publicity cases cited in the majority opinion is that Activision’s entire right to formulate the No Doubt avatars is based on its license agreement with the band. The concurring judge took the position that Activision having agreed to the terms of the license agreement cannot claim that its use of the licensed property in ways expressly prohibited by the license agreement is protected by the First Amendment. This justice would have this case hold for the proposition that where a dispute arises as to whether or not the use of an individual’s likeness is used outside of the scope prescribed in an agreement between the parties, the defendant licensee is precluded from relying on the transformative use doctrine to defend a breach of the agreement.  A position that certainly is not without logic and appeal.