Although Doug Flutie's 1984 Hail Mary pass to secure a last-second victory for Boston College over the University of Miami continues to receive widespread TV play as one of the greatest moments in college sports, neither Flutie nor any of the other student-athletes on the field have received payment for use of the footage.

That's just part of life as a student-athlete. But former UCLA basketball star Ed O'Bannon and former Arizona State and University of Nebraska quarterback Sam Keller aim to change that. And if they succeed, their efforts could have a similarly game-changing effect for athletes in the big-business world of collegiate sports.

In consolidated suits pending in the U.S. District Court for the Northern District of California (09-cv-01967) and currently on appeal to the 9th Circuit (10-15387), O'Bannon and Keller argue that the National Collegiate Athletic Association (NCAA) and its licensees, including video game producer Electronic Arts Inc., have infringed upon student-athletes' right of publicity by requiring all student-athletes to forever relinquish all future rights in the NCAA's licensing of their likenesses as a condition of participating in college sports.

While the lawsuit specifically addresses the use of student-athletes' likenesses, it promises to have broad implications for sports and other entertainment industries in defining the limits of the right of publicity and the degree to which the First Amendment affords protection against such claims.

The right of publicity generally prohibits appropriating a person's name or likeness for commercial gain without that person's consent. The right bears certain parallels to trademark law by preventing customer confusion regarding a person's association with commercial goods or services.

A person's "likeness" is an intangible asset that is broader than a literal image of the person and can extend to other aspects associated with that person. For example, in one of the more notable right of publicity cases, Woody Allen successfully brought suit against a video chain whose advertising featured a Woody Allen celebrity look-alike claiming to be a satisfied customer. In another case, a professional race-car driver brought a successful right of publicity claim where the defendant's cigarette advertising featured an image of a race car with remarkably similar pinstriping and coloring to the driver's and, thus, implied that the plaintiff endorsed the cigarettes.  

NCAA-licensed products, such as commemorative DVD sets or EA Sports video games, are part of a multibillion-dollar industry generated from uncompensated student-athletes. Footage of college championship games or memorable plays is often used decades after the event, whether in commercials or ESPN replays.

O'Bannon and Keller argue that students are in essence forced to sign away their likenesses and that the NCAA thereby unfairly capitalizes off of the student-athletes even after they have left their colleges or universities. To be eligible to play college sports, student-athletes must sign certain authorizations, such as Form 08-3a, which authorizes the NCAA "to use your name or picture to generally promote NCAA championships or other NCAA events, activities or programs." Based on the player's execution of such documents, the NCAA claims entitlement to license use of the student-athletes' images in perpetuity without offering them compensation.

At least theoretically, the NCAA's amateurism rules, however, seek to avoid commercially exploiting an individual student-athlete's likeness.  Specifically, NCAA Bylaw 12.5 prohibits commercial licensing of a student-athlete's "name, picture or likeness."  

Whether the NCAA follows this bylaw is open to debate. For example, in licenses granted to Electronic Arts, the maker of the popular EA Sports video games, Electronic Arts is given free reign to feature virtual players with undeniable resemblances to their real-life student-athlete counterparts, though without their actual names. The virtual players feature the same jersey numbers, heights, weights, home states, playing styles and even highly individual traits such as tattoos as the actual student-athletes.  

The plaintiffs argue that there can be no mistaking that the virtual players feature the likenesses of the real-life student-athletes and that Electronic Arts intentionally violates not only the spirit of the NCAA's amateurism rule but also its unambiguous terms, since a video game player can download rosters to assign the real student-athletes' names and personal information to their virtual personas. Electronic Arts also contracts with the in-game play-by-play announcers so the actual student-athletes' names will be spoken after the roster download.  

Electronic Arts counters that its use of the players' likenesses is protected speech under the First Amendment - specifically, that its use of the players' likenesses is constitutionally protected as "transformative." Under the transformative use test, courts consider whether a product containing a person's likeness is so transformed that it has become primarily the defendant's own expression rather than the person's likeness.  

In denying Electronic Arts' motion to dismiss, the district court looked to the video games' depictions of the individual student-athletes and noted that the games depict the virtual players as close to their real-life counterparts as possible. The court concluded that this was not sufficiently transformative to provide a First Amendment defense as a matter of law.  

Electronic Arts argued before the 9th Circuit that the district court should have looked at the video game "as a whole" to see that it contained enough creative elements to be considered transformative. It also argues on appeal that the district court's application of the transformative-use test by looking at the individual depictions of the student-athletes, as opposed to the work as a whole, would, if affirmed, have widespread repercussions on the use of famous persons' likenesses in other entertainment. Specifically, the game maker notes that if courts look solely to the individual depiction of those persons, as opposed to the works as a whole, the transformative use test would afford no protection to widely popular works of historical fiction such as "Forrest Gump" or "The Social Network."

Additionally, Electronic Arts argues that the 9th Circuit should adopt the more stringent "Rogers test" applied by the Second Circuit in determining whether the First Amendment affords protection against right of publicity claims. Under that test, the First Amendment provides protection unless the use of the person's likeness "is wholly unrelated" to the content of the work or was "simply a disguised advertisement for the sale of goods."  

While the plaintiffs contest Electronic Arts' interpretation of the First Amendment, they also argue that the 9th Circuit need not address the constitutional issue because Electronic Arts contractually waived its First Amendment rights. The plaintiffs point to Electronic Arts' licensing agreement, which - consistent with NCAA Bylaw 12.5 - prohibits "the use of NCAA athlete names and/or likenesses in NCAA branded video games."  Plaintiffs argue that after having entered in such a licensing agreement, Electronic Arts cannot now turn to the First Amendment to "recapture surrendered rights."  

An NCAA loss in the NCAA Student-Athlete Name & Likeness Litigation could essentially mandate payment to student-athletes. Footage of plays such as Flutie's "Miracle in Miami" or former Duke basketball star Christian Laettner's three-point buzzer-beater in 1992 has been repeatedly recycled for commercial use for decades without payment to the players, such that any damages could be huge.  

Additionally, a victory by O'Bannon and Keller would pose many practical questions: Would Carmelo Anthony-like star players be entitled to greater compensation than other players on their college teams, or would compensation be equal? If student-athletes are entitled to damages, to what extent is the NCAA or its licensees on the hook? Are individual colleges, which indirectly receive much of the licensing fees collected by the NCAA, liable to their student-athletes and, if so, how will colleges afford to cover those damages?  

Alternatively, if the defendants prevail on their argument that the use of the student-athletes' likenesses is transformative, this would cast doubt on the need for Electronic Arts to secure expensive licenses for the depiction of professional players in games such as NBA Live or Tiger Woods PGA Tour. Currently, Electronic Arts pays large sums to secure licenses to feature professional players' likenesses, and such players have a vested financial interest in the current arrangement. Indeed, several of the professional players' associations have submitted a joint amicus brief supporting the plaintiffs in the NCAA action.  

The full extent of this case's potential repercussions remain to be seen, but one thing is for sure - its legal and economic impacts could be significant and far-reaching.

Joseph Hanna is a partner in the sports and entertainment, business/commercial and construction practice group at Goldberg Segalla LLP (jhanna@goldbergsegalla.com). Daniel Moar is an associate in the firm's appellate, business/commercial and intellectual property litigation practice groups (dmoar@goldbergsegalla.com).