Before there was NIL there was ROP. In fact, long before. The basic principles of what came to be known as the Right Of Publicity (i.e., ROP) were set forth in a passionate dissenting opinion in the 1902 case of Roberson v. Rochester Folding Box Co., in which the plaintiff was held to have no claim against the unauthorized commercial use of her likeness, since there was no statutory support for such a claim. A year later, the state of New York adopted the nation’s first right of privacy statute, part of which included the very right proposed in the dissent in Roberson, in which Judge John Clinton Gray argued that all people have an inherent economic right in the value of their name, image, or likeness that could not be commercially exploited without their consent.
From Privacy to Property: The Emergence of ROP as a Licensable Property Right
Today the Right of Publicity is recognized and protected by statute in more than half of the states of the U.S. and by case law in most of the others. But it wasn’t until the 1960s that the notion of ROP as a licensable property right appeared. Dean Prosser’s On Torts included the right as the fourth of four privacy torts, adding to the rights against intrusion, disclosure of private facts, and portrayal in a false light a right against the unpermitted use of name, image, or likeness for commercial benefit. In Haelan Laboratories v. Topps Chewing Gum, the Second Circuit became the first court to use the term “right of publicity” and recognized such commercial use as licensable property. Succeeding cases found the right to include commercial depiction of a race car associated with a specific driver, use of a celebrity lookalike in advertising, use of a soundalike to imitate a celebrity voice for a television commercial, broadcast of news footage of a circus performer’s act, and unique occupations or character portrayals that point to specific identifiable individuals.
The Bridge to NIL: Athletes, Video Games, and the NCAA
It was a series of ROP cases that laid the groundwork for what we now call NIL. Short for “Name, Image, andLikeness”, NIL is, briefly, the acknowledged right of college (and possibly high school) athletes to enjoy compensation for their performance in non-professional sports. The recognition of this right of non-professional athletes resulted from a class action brought against the NCAA, which had been prompted by the success of several groups of former NCAA athletes in suing Electronic Arts for using their images and performance records as the basis for football and basketball players in its series of NCAA-based video games. Despite the strong First Amendment protection of video game content asserted by the U.S. Supreme Court in Brown v. Merchants, EA’s First Amendment defenses consistently fell to the former athletes’ assertion of their publicity rights, ultimately providing fuel for the attack on the NCAA itself ending its historical restriction of college athletes’ ability to profit from their performances and achievements.
The First Amendment and the “Transformative Use” Test
The victory of the former athletes over EA came about largely because of two important California Right of Publicity cases. In Comedy III v. Saderup, the combined estates of the Three Stooges sued charcoal sketch artist Gary Saderup over the commercial sale of merchandise featuring his rendition of the famous comedy trio. Saderup interposed a First Amendment defense, arguing that his artistic renderings were expressive speech. The court, borrowing a page from copyright law, devised a balancing test for determining whether such allegedly expressive works merit First Amendment protection: Depictions of persons’ images are protected expression only to the extent that they are “transformative”, imparting new meaning or value to the image. The closer the images come to being mere rote depictions of the individual’s appearance, the more they will be regarded as commercial exploitation rather than artistic expression. Although its rationale and analysis were specifically limited to images and likenesses, not names and identities generally, this state law holding became the test of choice for adjudicating right of publicity claims against First Amendment defenses not only in California and the Ninth Circuit but throughout the nation.
One of many cases applying the Saderup Test to deny First Amendment protection was No Doubt v. Activision, which upheld rock group No Doubt’s right of publicity claim against computer game company Activision for use of their images in an edition of the game Guitar Hero beyond the limits provided in the group’s license agreement with the game maker. The court held that the First Amendment did not apply because Activision’s uses of the band’s likenesses were not “transformative” but rather portrayed the musicians as musicians, “doing exactly what they do as celebrities.” This same analysis was what enabled groups of former NCAA athletes to overcome the First Amendment defense of Electronic Arts: the use of the athletes could not be “transformative” because the games depicted the athletes doing “exactly what they did”—playing football.
NIL and Right of Publicity: What’s the Difference?
As one of a handful of intellectual property lawyers who have followed, spoken on, written about, and taught Right of Publicity during its most transformative years (roughly 2000-2016), I am often asked “Isn’t NIL the same thing as the Right of Publicity?” Well, yes and no. NIL is a subset of Right of Publicity law. We might say that all NIL is ROP but not all ROP is NIL. ROP is broader than NIL, which focuses solely on college athletes’ right to commercially exploit their identities and achievements as athletes in the same ways that professional athletes do.
The Right of Publicity is fundamentally a defensive right, a right to protect one’s name, image, and likeness from unauthorized commercial exploitation by others; while NIL is an assertive right, focusing on enabling athletes to promote themselves commercially and enjoy the benefits of such promotion. NIL and ROP don’t always coincide. They may sometimes collide as states have rushed to enact NIL statutes to help educational institutions and their athletes exercise this new promotional right.
What comes Next for NIL
In a subsequent edition of this blog, my partner Max Forer will illuminate this new world of NIL, what things it is making possible, and what difficulties and unanswered questions it still faces. Subscribe to our IP & Technology Law Trends blog to stay apprised. If you have questions about ROP or NIL please contact me, Max, or any of our Intellectual Property or Sports, Entertainment & Media attorneys.
This article is provided for informational purposes only—it does not constitute legal advice and does not create an attorney-client relationship between the firm and the reader. Readers should consult legal counsel before taking action relating to the subject matter of this article.
