No Doubt vs Activision Band Hero lawsuit to fight on

A US appeal court has given No Doubt permission to continue their lawsuit against Activision over Band Hero.  The rock band argue that Activision has misused their likenesses and music within Band Hero in a breach of a contract that Activision entered into with them.

This lawsuit has been going since around November 2009 (see previous posts about the No Doubt/Activision lawsuit here and here), so here’s a quick summary of the story so far.
NO DOUBT SAYS…

(1) They contracted with Activision for their avatars to appear in Band Hero and sing a maximum of three No Doubt songs only. 
(2) They agreed to be photographed and have motion-capture video taken of them (to make game avatars for each of them) and to assist with marketing the game (e.g. press interviews).  In return, they received an undisclosed payment.
(3) BUT, the band argue, without their permission Activision designed the game so that players can: (i) have No Doubt avatars play over sixty songs from other bands; and (ii) have No Doubt avatard sing other bands’ songs in other bands’/singers’ voices, whether male or female (they give the example of Gwen Stefani singing the ‘Stones song “Honky Tonk Woman” in a man’s voice). This, they argued previously, has “transformed No Doubt band members into a virtual karaoke circus act”.  
(4) Essentially, No Doubt were pretty angry that Activision allegedly told them their likenesses and songs would be used only for a limited purpose, but actually then used them in a much more expansive way than No Doubt would ever have agreed to.  Or so they say.
ACTIVISION SAYS…
(1) It did have the contractual rights to allow players to use No Doubt avatars to sing non-No Doubt songs.
(2) In any event, it was “publicly known” that players can unlock in-game characters in Band Hero and then use them to play potentially any song within the game.
(3) Activision also counterclaimed against No Doubt for allegedly failing to provide marketing assistance as it was contractually obliged to do.
CURRENT STATE OF PLAY
Originally, Activision advanced a pretty straightforward contract-based argument: they said they had the rights to do what they did and therefore No Doubt can have no complaint.  But, more recently, it seems that Activision ran a more sophisticated constitutional law argument, relying on the US First Amendment – which among other things protects freedom of expression.
It was essentially this issue which went before the courts just now.  Activision argued that its use of No Doubt’s likenesses in Band Hero is protected by the First Amendment and therefore No Doubt had no case.  No Doubt of course rejected that argument, arguing that Activision could not now claim wide ranging constitutional protections when as a matter of contract it had already agreed with No Doubt only to use the No Doubt likenesses and music under limited condititions. 
At first instance, the trial court rejected Activision’s argument.  Activision then appealed the case to the Californian Court of Appeal.  Now that Court of Appeal has again rejected Activision’s argument and effectively allowed No Doubt to continue the lawsuit against Activision.
THE COURT’S REASONING
The court found against Activision for two main reasons (full ruling HERE):
(1) Activision’s freedom of expression/First Amendment argument failed
In order for Activision to claim a freedom of expression protection, it first had to prove that the ‘expression’ in question deserves to be legally protected.  In this case, the ‘expression’ that Activision wanted to protect is its use of the No Doubt band’s likenesses and music in Band Hero
But think about that for a second.  It’s not enough for Activision to just copy No Doubt’s likenesses and music wholesale, stick it in Band Hero and then claim First Amendment protection.  If that was the case, then anyone could stick anyone else in a game (or a film etc) and then avoid being sued by relying on the First Amendment.  To get around this problem, US case law has established that you have to do something expressive with the work in order to obtain First Amendment protection.  There has to have been a “transformative use” of what you want to protect.  Put simply, you can’t just copy someone else, you have to actually do something new if you want First Amendment protection.
Example: Alan takes a photo of Bob and sells it to someone else = arguably not protected by the First Amendment.  Alan takes a photo of Bob and turns it into a mural painting featuring Bob  = potentially protected by the First Amendment.  Why?  Because turning the photo into the painting is the ‘transformative use’.
[American readers: I think that works, but tell me if I’m wrong!]
So, the court applied that logic to Band Hero.  Was the appearance of No Doubt and everything a player can do with them once they unlocked a ‘transformative use’ of the work?  Answer: NO.  The Court said:
We conclude that the creative elements of the Band Hero videogame do not transform the images of No Doubt’s band members into anything more than literal, fungible reproductions of their likenesses. Therefore, we reject Activision’s contention that No Doubt’s right of publicity claim is barred by the First Amendment.”
In other words, taking a celebrity from the real world and putting them in avatar form within your game isn’t enough to give you First Amendment protection, because you haven’t done enough to their likenesses to have made something new which deserves First Amendment protection.
(2) The contractual argument
One of the three judges, Justice Epstein, also found against Activision but using different reasoning.  He essentially agreed with No Doubt’s argument that Activision had agreed in the contract to a limited use of No Doubt’s likenesses and music so it could now turn around and argue wide-ranging contractual protection.
WHAT NEXT?
No Doubt has been given permission to continue its lawsuit and we’ll have to see what it decides to do next.  If it continues, it certainly will have had a substantial boost thanks to the Court of Appeal.  By contrast, Activision has suffered a real setback: its consitutitional law argument failed and, maybe more damagingly, the court did not seem particularly impressed with Activision’s conduct or its views of the contract.
WHY THIS CASE IS IMPORTANT
A number of games companies have profited from associating themselves with celebrities, or even including celebrities within the games themselves.  But now the games industry is facing a backlash: EA is facing claims from throngs of sports stars from (American) football to basketball.  Activision is facing claims over its music games – not just No Doubt over Band Hero, but also from Axl Rose over Guitar Hero.  And in the background there are a whole host of other celebrity vs games companies disputes on the boil.    Late last year, for example, a Cypress Hill singer sued Rockstar Games over Grand Theft Auto.
You can argue back and forth how genuine these claims by rich celebrities against rich games companies really are.  But what the No Doubt/Activision lawsuit is showing us so far is this:
  • Games companies can’t just take someone else’s image or intellectual property and do what they want with them.
  • In fact, games companies can’t even just take a real person’s likeness and turn it into a game avatar without permission.
  • As always, a properly drafted licence agreement is key: you need to obtain rights for what you want to do with someone else’s likeness or intellectual property and you need to be absolutely clear what you can and cannot do with them.
  • So far, there is nothing to discourage more cases like this in the future – watch this space…
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Image credit: Wikimedia/Activision

1 comment

  1. When I play a Fall Out Boy song using Gwen Stefani as the lead singer, I start to feel dieefrfnt about No Doubt and less likely to ever purchase their music in the future, so I totally see their point. You know, because of how I can relate to the way my video game likeness is portrayed in a game celebrating music. This demeans No Doubt, and now I don’t think I can like them anymore is usually my first thought when this happens. As a die hard fan of both bands, I just cannot wrap my brain around why this is occuring. Gwen doesn’t even know how to sing that song, I can’t help but think to myself. It really ruins the overall experience. Allowing band members to perform songs by ::gasp!!:: another band in a video game meant to be fun, is so distateful and classless. Overall it ruins the legacy of influential artists like No Doubt who in no way should have known to ask important questions like how will my likeness be used? because really, these games haven’t been around for very long and are in no way ubiquitous.

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