CLE Materials for Beebe IP and Virtual Reality Environments...Unlike a traditional fair use scenario, nominative fair use occurs when the de-fendant uses the trademarked term to de-scribe

IntellectualPropertyandVirtualRealityEnvironmentsReunionWeekend2015

CLEMaterialsProf.BartonBeebe

E.S.S.Entertainment2000,Inc.v.RockStarVideos,Inc.,547F.3d1095(9thCir.2008)

Brownv.ElectronicArts,Inc.,724F.3d1235(9thCir.2013)

InreNCAAStudent–AthleteName&LikenessLicensingLitigation,724F.3d1268(9th

Cir.2013)

1095E.S.S. ENTERTAINMENT 2000 v. ROCK STAR VIDEOSCite as 547 F.3d 1095 (9th Cir. 2008)

though § 1015(a) and § 1001(a) were notenacted as part of the ‘‘same Act’’ withinthe meaning of Russello, they are bothlocated within Chapter 47 of Title 18 of theUnited States Code, which deals with‘‘Fraud and False Statements.’’ Section1001(a) explicitly requires a false state-ment to be material. Congress could havewritten a materiality requirement into§ 1015(a) as it did in § 1001(a), but chosenot to do so.

Under the Russello rationale, § 1015(a)should be interpreted as Congress enactedit, without a materiality requirement.Therefore, we do not interpret § 1015 toinclude a materiality requirement.

IV. CONCLUSION

We affirm the district court’s judgment.

AFFIRMED.

,

E.S.S. ENTERTAINMENT 2000, INC.,d/b/a Playpen, Plaintiff–

Appellant,

v.

ROCK STAR VIDEOS, INC., e/s/a MMMRockstar Games, Inc.; Take–Two In-teractive Software, Inc., Defendants–Appellees.

No. 06–56237.

United States Court of Appeals,Ninth Circuit.

Argued and Submitted March 5, 2008.

Filed Nov. 5, 2008.Background: Owner of strip club withname ‘‘Play Pen Gentlemen’s Club’’brought suit against creator of videogames, claiming that depiction of club hav-ing name ‘‘Pig Pen’’ in one video gameviolated club owner’s trademark and tradedress protection under Lanham Act. The

United States District Court for the Cen-tral District of California, Margaret M.Morrow, J., 444 F.Supp.2d 1012, grantedvideo game creator’s motion for summaryjudgment. Strip club owner appealed.

Holdings: The Court of Appeals, O’Scann-lain, Circuit Judge, held that:

(1) nominative fair use defense did notapply to video game creator’s use of‘‘Pig Pen,’’ but

(2) video game creator’s use of ‘‘Pig Pen’’was protected by the First Amend-ment.

Affirmed.

1. Trademarks O1062Trade dress involves the total image

of a product and may include features suchas size, shape, color or color combination,texture, graphics, or even particular salestechnique.

2. Trademarks O1523(3)Nominative fair use defense did not

apply to video game creator’s use of ‘‘PigPen,’’ as a virtual, cartoon-style strip clubin its video game, in trademark infringe-ment action brought by owner of strip cluboperating under the name ‘‘Play Pen Gen-tlemen’s Club;’’ video game creator’s use of‘‘Pig Pen’’ was not identical to owner’s‘‘Play Pen’’ mark, and video game creator’slead map artist testified that goal in de-signing the virtual strip club was not tocomment on the owner’s strip club per se.

3. Trademarks O1523(3)Unlike a traditional fair use scenario,

nominative fair use occurs when the de-fendant uses the trademarked term to de-scribe not its own product, but the plain-tiff’s; the nominative fair use doctrineprotects those who deliberately use anoth-er’s trademark or trade dress for the pur-poses of comparison, criticism, or point ofreference.

1096 547 FEDERAL REPORTER, 3d SERIES

4. Constitutional Law O1604

Trademarks O1524(1)

Video game creator’s use of ‘‘PigPen,’’ as a virtual, cartoon-style strip clubin its video game, was protected by theFirst Amendment from trademark andtrade dress infringement claims broughtby owner of strip club operating under thename ‘‘Play Pen Gentlemen’s Club;’’ in-cluding a strip club in the video game thatwas similar in look and feel to the owner’sstrip club had at least some artistic rele-vance as it helped create a cartoon-styleparody of East Los Angeles, and videogame’s use of ‘‘Pig Pen’’ did not explicitlymislead consumers as to the source orcontent of the work, as there was no evi-dence that the buying public would reason-ably have believed that the strip club own-er produced the video game or that thevideo game creator operated a strip club.U.S.C.A. Const.Amend. 1; Lanham Trade–Mark Act, § 1 et seq., 15 U.S.C.A. § 1051et seq.

5. Trademarks O1524(1)

An artistic work’s use of a trademarkthat otherwise would violate the LanhamAct is not actionable unless the use of themark has no artistic relevance to the un-derlying work whatsoever, or, if it hassome artistic relevance, unless it explicitlymisleads as to the source or the content ofthe work. U.S.C.A. Const.Amend. 1; Lan-ham Trade–Mark Act, § 1 et seq., 15U.S.C.A. § 1051 et seq.

Trademarks O1800

Pig Pen.

Trademarks O1800

Play Pen.

Robert F. Helfing, Sedgwick, Detert,Moran & Arnold LLP, Los Angeles, CA,for the plaintiff-appellant; David A. Schin-der, Sedgwick, Detert, Moran & ArnoldLLP, Los Angeles, CA, and Ernest J.Franceschi, Attorney, Los Angeles, CA,were on the briefs.

Russell Frackman, Mitchell Silberberg& Knupp LLP, Los Angeles, CA, for thedefendants-appellees; Karin G. Pagnanelliand Eric J. German were on the brief.

Appeal from the United States DistrictCourt for the Central District of Califor-nia; Margaret M. Morrow, District Judge,Presiding. D.C. No. CV–05–02966–MMM.

Before: JOHN R. GIBSON,* SeniorCircuit Judge, DIARMUID F.O’SCANNLAIN and SUSAN P.GRABER, Circuit Judges.

O’SCANNLAIN, Circuit Judge:

We must decide whether a producer of avideo game in the ‘‘Grand Theft Auto’’series has a defense under the FirstAmendment against a claim of trademarkinfringement.

I

A

Rockstar Games, Inc. (‘‘Rockstar’’), awholly owned subsidiary of Take–Two In-teractive Software, Inc., manufactures anddistributes the Grand Theft Auto series ofvideo games (the ‘‘Series’’), includingGrand Theft Auto: San Andreas (‘‘SanAndreas’’ or the ‘‘Game’’). The Series isknown for an irreverent and sometimescrass brand of humor, gratuitous violenceand sex, and overall seediness.

* The Honorable John R. Gibson, Senior UnitedStates Circuit Judge for the Eighth Circuit,

sitting by designation.


Each game in the Series takes place inone or more dystopic, cartoonish citiesmodeled after actual American urban ar-eas. The games always include a dis-claimer stating that the locations depictedare fictional. Players control the game’sprotagonist, trying to complete various‘‘missions’’ on a video screen. The plotadvances with each mission accomplisheduntil the player, having passed throughthousands of cartoon-style places along theway, wins the game.

Consistent with the tone of the Series,San Andreas allows a player to experiencea version of West Coast ‘‘gangster’’ cul-ture. The Game takes place in the virtualcities of ‘‘Los Santos,’’ ‘‘San Fierro,’’ and‘‘Las Venturas,’’ based on Los Angeles,San Francisco, and Las Vegas, respective-ly.

Los Santos, of course, mimics the lookand feel of actual Los Angeles neighbor-hoods. Instead of ‘‘Hollywood,’’ ‘‘SantaMonica,’’ ‘‘Venice Beach,’’ and ‘‘Compton,’’Los Santos contains ‘‘Vinewood,’’ ‘‘SantaMaria,’’ ‘‘Verona Beach,’’ and ‘‘Ganton.’’Rockstar has populated these areas withvirtual liquor stores, ammunition dealers,casinos, pawn shops, tattoo parlors, bars,and strip clubs. The brand names, busi-ness names, and other aspects of the loca-tions have been changed to fit the irrever-ent ‘‘Los Santos’’ tone. Not especiallysaintly, Los Santos is complete with gangswho roam streets inhabited by prostitutesand drug pushers while random gunfirepunctuates the soundtrack.

To generate their vision for Los Santos,some of the artists who drew it visited LosAngeles to take reference photographs.The artists took pictures of businesses,streets, and other places in Los Angelesthat they thought evoked the San Andreastheme. They then returned home (toScotland) to draw Los Santos, changingthe images from the photographs as neces-sary to fit into the fictional world of Los

Santos and San Andreas. According toNikolas Taylor (‘‘Taylor’’), the Lead MapArtist for Los Santos, he and other artistsdid not seek to ‘‘re-creat[e] a realistic de-piction of Los Angeles; rather, [they] werecreating ‘Los Santos,’ a fictional city thatlampooned the seedy underbelly of LosAngeles and the people, business andplaces [that] comprise it.’’ One neighbor-hood in the fictional city is ‘‘East LosSantos,’’ the Game’s version of East LosAngeles. East Los Santos contains varia-tions on the businesses and architecture ofthe real thing, including a virtual, cartoon-style strip club known as the ‘‘Pig Pen.’’

B

ESS Entertainment 2000, Inc. (‘‘ESS’’),operates a strip club, which features fe-males dancing nude, on the eastern edge ofdowntown Los Angeles under the namePlay Pen Gentlemen’s Club (‘‘Play Pen’’).ESS claims that Rockstar’s depiction of anEast Los Santos strip club called the PigPen infringes its trademark and tradedress associated with the Play Pen.

The Play Pen’s ‘‘logo’’ consists of thewords ‘‘the Play Pen’’ (and the lower-andupper-case letters forming those words)and the phrase ‘‘Totally Nude’’ displayedin a publicly available font, with a silhou-ette of a nude female dancer inside thestem of the first ‘‘P.’’ Apparently, ESS hasno physical master or precise template forits logo. Different artists draw the nudesilhouette in Play Pen’s logo anew for eachrepresentation, although any final drawingmust be acceptable to Play Pen’s owners.There are several different versions of thesilhouette, and some advertisements andsigns for the Play Pen do not contain thenude silhouettes.

Although the artists took some inspira-tion from their photographs of the PlayPen, it seems they used photographs ofother East Los Angeles locations to design


other aspects of 15148 the Pig Pen. ThePig Pen building in Los Santos, for in-stance, lacks certain characteristics of thePlay Pen building such as a stone facade, avalet stand, large plants and gold columnsaround the entrance, and a six-foot blackiron fence around the parking lot. ThePlay Pen also has a red, white, and bluepole sign near the premises, which in-cludes a trio of nude silhouettes above thelogo and a separate ‘‘Totally Nude’’ signbelow. The Pig Pen does not.

C

[1] On April 22, 2005, ESS filed theunderlying trademark violation action indistrict court against Rockstar. ESS as-serted four claims: (1) trade dress in-fringement and unfair competition undersection 43(a) of the Lanham Act, 15 U.S.C.§ 1125(a); 1 (2) trademark infringementunder California Business and ProfessionsCode § 14320; 2 (3) unfair competition un-der California Business and ProfessionsCode §§ 17200 et seq.; and (4) unfair com-petition under California common law.The heart of ESS’s complaint is thatRockstar has used Play Pen’s distinctivelogo and trade dress without its authoriza-tion and has created a likelihood of confu-sion among consumers as to whether ESShas endorsed, or is associated with, thevideo depiction.

In response, Rockstar moved for sum-mary judgment on all of ESS’s claims,arguing that the affirmative defenses of

nominative fair use and the First Amend-ment protected it against liability. It alsoargued that its use of ESS’s intellectualproperty did not infringe ESS’s trademarkby creating a ‘‘likelihood of confusion.’’

Although the district court rejectedRockstar’s nominative fair use defense, itgranted summary judgment based on theFirst Amendment defense. The districtcourt did not address the merits of thetrademark claim because its finding thatRockstar had a defense against liabilitymade such analysis unnecessary.

II

Rockstar argues that, regardless ofwhether it infringed ESS’s trademark un-der the Lanham Act or related Californialaw, it is entitled to two defenses: oneunder the nominative fair use doctrine andone under the First Amendment.

A

[2, 3] ‘‘Unlike a traditional fair use sce-nario, [nominative fair use occurs when]the defendant TTT us[es] the trademarkedterm to describe not its own product, butthe plaintiff’s.’’ Playboy Enters., Inc. v.Welles, 279 F.3d 796, 801 (9th Cir.2002).The doctrine protects those who deliber-ately use another’s trademark or tradedress ‘‘for the ‘purposes of comparison,criticism[,] or point of reference.’ ’’ Walk-ing Mountain, 353 F.3d at 809 (alteration

1. ‘‘Trade dress involves the total image of aproduct and may include features such assize, shape, color or color combination, tex-ture, graphics, or even particular sales tech-nique.’’ Mattel Inc. v. Walking MountainProds., 353 F.3d 792, 808 n. 13 (9th Cir.2003)(internal quotation marks and citations omit-ted). Because the only relevant similarities atissue in this case involve the use of the ‘‘PigPen’’ mark versus the ‘‘Play Pen’’ mark, dis-position of the trade dress infringement claimfollows resolution of the trademark infringe-ment claim. See Kendall–Jackson Winery,

Ltd. v. E. & J. Gallo Winery, 150 F.3d 1042,1046 (9th Cir.1998) (‘‘Section 43(a) now pro-tects both trademarks and trade dress frominfringement TTT [and] there is no persuasivereason to apply different analysis[sic] to thetwo.’’ (internal quotation marks, alterationand citation omitted)).

2. This section has recently been repealed.Cal. Stats. ch. 711 § 1. Since we hold thatRockstar has a defense to all of ESS’s claims,the repeal is irrelevant to our decision.


omitted) (quoting New Kids on the Blockv. News Am. Publ’g, Inc., 971 F.2d 302,306 (9th Cir.1992)). In this case, however,Rockstar’s use of ‘‘Pig Pen’’ is not ‘‘identi-cal to the plaintiff’s [Play Pen] mark.’’Furthermore, the district court observedthat Rockstar’s Lead Map Artist ‘‘testifiedthe goal in designing the Pig Pen was TTT

not to comment on Play Pen per se.’’Since Rockstar did not use the trade-marked logo to describe ESS’s strip club,the district court correctly held that thenominative fair use defense does not applyin this case. See Welles, 279 F.3d at 801.

B

[4, 5] Rockstar’s second defense asksus to consider the intersection of trade-mark law and the First Amendment. Theroad is well traveled. We have adoptedthe Second Circuit’s approach from Rogersv. Grimaldi, which ‘‘requires courts to con-strue the Lanham Act ‘to apply to artisticworks only where the public interest inavoiding consumer confusion outweighs thepublic interest in free expression.’ ’’ Walk-ing Mountain, 353 F.3d at 807 (emphasisin original) (quoting Rogers v. Grimaldi,875 F.2d 994, 999 (2d Cir.1989)). Thespecific test contains two prongs. An ar-tistic work’s use of a trademark that other-wise would violate the Lanham Act is notactionable ‘‘ ‘unless the [use of the mark]has no artistic relevance to the underlyingwork whatsoever, or, if it has some artisticrelevance, unless [it] explicitly misleads asto the source or the content of the work.’ ’’Mattel, Inc. v. MCA Records, Inc., 296F.3d 894, 902 (9th Cir.2002) (quoting Rog-ers, 875 F.2d at 999). Although this testtraditionally applies to uses of a trademarkin the title of an artistic work, there is noprincipled reason why it ought not alsoapply to the use of a trademark in thebody of the work. See Walking Moun-tain, 353 F.3d at 809 n. 17 (implying that itwould be acceptable to apply the Rogerstest to non-titular trade dress claim). The

parties do not dispute such an extension ofthe doctrine.

1

We first adopted the Rogers test inMCA Records, a case which is instructivefor that reason. MCA Records, 296 F.3dat 902 (‘‘We agree with the Second Cir-cuit’s analysis and adopt the Rogers stan-dard as our own.’’). In MCA Records, themaker of the iconic ‘‘Barbie’’ dolls suedMCA for trademark infringement in thetitle of a song the record company hadreleased, called ‘‘Barbie Girl.’’ Id. at 899–900. The song was a commentary ‘‘aboutBarbie and the values TTT she [supposedly]represents.’’ Id. at 902. Applying Rogers,the court held that the First Amendmentprotected the record company. The firstprong was straightforward. Because thesong was about Barbie, ‘‘the use of Barbiein the song title clearly is relevant to theunderlying work.’’ Id.; see also WalkingMountain, 353 F.3d at 807 (holding thatuse of Barbie doll in photographic parodywas relevant to the underlying work).

Moving to the second prong, we madean important point. ‘‘The only indication,’’we observed, ‘‘that Mattel might be associ-ated with the song is the use of Barbie inthe title; if this were enough to satisfy thisprong of the Rogers test, it would renderRogers a nullity.’’ MCA Records, 296 F.3dat 902 (emphasis in original). This makesgood sense. After all, a trademark in-fringement claim presupposes a use of themark. If that necessary element in everytrademark case vitiated a First Amend-ment defense, the First Amendment wouldprovide no defense at all.

2

Keeping MCA Records and relatedcases in mind, we now turn to the matterbefore us. ESS concedes that the Game isartistic and that therefore the Rogers test


applies. However, ESS argues both thatthe incorporation of the Pig Pen into theGame has no artistic relevance and that itis explicitly misleading. It rests its argu-ment on two observations: (1) the Game isnot ‘‘about’’ ESS’s Play Pen club the waythat ‘‘Barbie Girl’’ was ‘‘about’’ the Barbiedoll in MCA Records; and (2) also unlikethe Barbie case, where the trademark andtrade dress at issue was a cultural icon(Barbie), the Play Pen is not a culturalicon.

ESS’s objections, though factually accu-rate, miss the point. Under MCA Recordsand the cases that followed it, only the useof a trademark with ‘‘ ‘no artistic relevanceto the underlying work whatsoever ’ ’’ doesnot merit First Amendment protection.Id. (emphasis added) (quoting Rogers, 875F.2d at 999). In other words, the level ofrelevance merely must be above zero. Itis true that the Game is not ‘‘about’’ thePlay Pen the way that Barbie Girl wasabout Barbie. But, given the low thresh-old the Game must surmount, that fact ishardly dispositive. It is also true thatPlay Pen has little cultural significance,but the same could be said about most ofthe individual establishments in East LosAngeles. Like most urban neighborhoods,its distinctiveness lies in its ‘‘look andfeel,’’ not in particular destinations as in adowntown or tourist district. And thatneighborhood, with all that characterizesit, is relevant to Rockstar’s artistic goal,which is to develop a cartoon-style parodyof East Los Angeles. Possibly the onlyway, and certainly a reasonable way, to dothat is to recreate a critical mass of thebusinesses and buildings that constitute it.In this context, we conclude that to includea strip club that is similar in look and feelto the Play Pen does indeed have at least‘‘some artistic relevance.’’ See id.

3

ESS also argues that Rockstar’s use ofthe Pig Pen ‘‘ ‘explicitly misleads as to the

source or the content of the work.’ ’’ Id.(quoting Rogers, 875 F.2d at 999). Thisprong of the test points directly at thepurpose of trademark law, namely to‘‘avoid confusion in the marketplace byallowing a trademark owner to preventothers from duping consumers into buyinga product they mistakenly believe is spon-sored by the trademark owner.’’ WalkingMountain, 353 F.3d at 806 (internal quota-tion marks and alteration omitted). Therelevant question, therefore, is whetherthe Game would confuse its players intothinking that the Play Pen is somehowbehind the Pig Pen or that it sponsorsRockstar’s product. In answering thatquestion, we keep in mind our observationin MCA Records that the mere use of atrademark alone cannot suffice to makesuch use explicitly misleading. See MCARecords, 296 F.3d at 902.

Both San Andreas and the Play Penoffer a form of low-brow entertainment;besides this general similarity, they havenothing in common. The San AndreasGame is not complementary to the PlayPen; video games and strip clubs do notgo together like a horse and carriage or,perish the thought, love and marriage.Nothing indicates that the buying publicwould reasonably have believed that ESSproduced the video game or, for that mat-ter, that Rockstar operated a strip club.A player can enter the virtual strip club inLos Santos, but ESS has provided no evi-dence that the setting is anything but ge-neric. It also seems far-fetched thatsomeone playing San Andreas would thinkESS had provided whatever expertise,support, or unique strip-club knowledge itpossesses to the production of the game.After all, the Game does not revolvearound running or patronizing a strip club.Whatever one can do at the Pig Pen seemsquite incidental to the overall story of theGame. A reasonable consumer would notthink a company that owns one strip clubin East Los Angeles, which is not well

1101VASQUEZ v. ASTRUECite as 547 F.3d 1101 (9th Cir. 2008)

known to the public at large, also producesa technologically sophisticated video gamelike San Andreas.

Undeterred, ESS also argues that, be-cause players are free to ignore the story-line and spend as much time as they wantat the Pig Pen, the Pig Pen can be consid-ered a significant part of the Game, lead-ing to confusion. But fans can spend allnine innings of a baseball game at the hotdog stand; that hardly makes Dodger Sta-dium a butcher’s shop. In other words,the chance to attend a virtual strip club isunambiguously not the main selling pointof the Game.

III

Considering all of the foregoing, we con-clude that Rockstar’s modification of ESS’strademark is not explicitly misleading andis thus protected by the First Amendment.Since the First Amendment defense ap-plies equally to ESS’s state law claims asto its Lanham Act claim, the district courtproperly dismissed the entire case onRockstar’s motion for summary judgment.

AFFIRMED.

,

Priscilla VASQUEZ, Plaintiff–Appellant,

v.

Michael J. ASTRUE, Commissionerof Social Security, Defendant–

Appellee.

No. 06–16817.


Argued and Submitted May 15, 2008.

Filed Nov. 5, 2008.Background: Social Security disabilitybenefits and Supplemental Security In-

come (SSI) claimant suffering from lower-back impairment and purported cognitiveimpairment sought judicial review of Com-missioner’s finding of no disability. TheUnited States District Court for theNorthern District of California, JamesWare, J., granted summary judgment forCommissioner, and claimant appealed.

Holdings: The Court of Appeals, JamesV. Selna, District Judge sitting by designa-tion, held that:

(1) ALJ had provided inadequately specif-ic basis for lack-of-credibility finding asto claimant’s reports of pain severity;

(2) application of credit-as-true rule wasappropriate even though there wereoutstanding issues prior to final dis-ability determination;

(3) ALJ should have been afforded oppor-tunity to consider additional cognitive-impairment evidence generated afterALJ’s denial of claim; and

(4) denial of claimant’s previous disabilitybenefits claim could not be given resjudicata effect.

Vacated and remanded.

Michael Daly Hawkins, Circuit Judge, filedconcurring opinion.

O’Scannlain, Circuit Judge, filed dissentingopinion.

1. Social Security and Public WelfareO149.5

Court of Appeals reviews de novo dis-trict court’s order affirming denial of So-cial Security disability benefits. Social Se-curity Act, § 223, 42 U.S.C.A. § 423.

2. Social Security and Public WelfareO148.15

Federal court may set aside SocialSecurity Commissioner’s denial of disabili-ty benefits when ALJ’s findings are based

1235BROWN v. ELECTRONIC ARTS, INC.Cite as 724 F.3d 1235 (9th Cir. 2013)

James ‘‘Jim’’ BROWN, Plaintiff–Appellant,

v.

ELECTRONIC ARTS, INC.,a Delaware corporation,

Defendant–Appellee.

No. 09–56675.


Argued and Submitted Feb. 15, 2011.

Submission Vacated Feb. 18, 2011.

Argued and Resubmitted July 13, 2012.

Filed July 31, 2013.

Background: Former professional foot-ball player sued video game manufacturer,alleging, inter alia, that manufacturer vio-lated Lanham Act by using his likeness inseries of football video games. The UnitedStates District Court for the Central Dis-trict of California, Florence–Marie Cooper,J., 2009 WL 8763151, granted manufactur-er’s motion to dismiss Lanham Act claim.Former player appealed.

Holdings: The Court of Appeals, Bybee,Circuit Judge, held that:

(1) Rogers test governed former player’sfalse endorsement claim under Lan-ham Act;

(2) use of former player’s likeness wasartistically relevant to football videogames under Rogers test;

(3) use of former player’s likeness, coupledwith consumer survey, did not showexplicit misleading conduct requiredunder Rogers test to establish falseendorsement claim under Lanham Act;

(4) manufacturer’s changes to versions ofits games that could make consumersless confident that former player wasplayer being depicted did not misleadconsumers into believing that former

player was involved with or endorsedmanufacturer’s games; and

(5) district court could decide, on motionto dismiss, that former player did notsatisfy Rogers test, as required for himto pursue false endorsement claim un-der Lanham Act.

Affirmed.

1. Antitrust and Trade Regulation O30 Constitutional Law O1604

Provision of Lanham Act addressingfalse designations of origin protects thepublic’s interest in being free from con-sumer confusion about affiliations and en-dorsements, but this protection is limitedby the First Amendment, particularly ifthe product involved is an expressive work.U.S.C.A. Const.Amend. 1; Lanham Act,§ 43(a)(1), 15 U.S.C.A. § 1125(a)(1).

2. Antitrust and Trade Regulation O29 Constitutional Law O1604 Trademarks O1524(1)

Under Rogers test, provision of Lan-ham Act addressing false designations oforigin will not be applied to expressiveworks protected by First Amendment un-less the use of the trademark or otheridentifying material has no artistic rele-vance to the underlying work whatsoever,or, if it has some artistic relevance, unlessthe use of trademark or other identifyingmaterial explicitly misleads as to thesource or the content of the work.U.S.C.A. Const.Amend. 1; Lanham Act,§ 43(a)(1), 15 U.S.C.A. § 1125(a)(1).


Football video games, which featuredcharacters, dialogue, plot, and music, aswell as prevalent interaction betweengames’ virtual worlds and individuals play-ing games, were expressive works entitledto First Amendment protection, and there-


fore Rogers test governed former footballplayer’s false endorsement claim againstgames’ manufacturer under provision ofLanham Act addressing false designationsof origin. U.S.C.A. Const.Amend. 1; Lan-ham Act, § 43(a)(1), 15 U.S.C.A.§ 1125(a)(1).

4. Antitrust and Trade Regulation O29 Constitutional Law O1604 Trademarks O1524(1)

Level of artistic relevance of trade-mark or other identifying material to thework merely must be above zero for trade-mark or other identifying material to bedeemed artistically relevant under Rogerstest used to determine applicability of Lan-ham Act provision addressing false desig-nations of origin to expressive works pro-tected by First Amendment. U.S.C.A.Const.Amend. 1; Lanham Act, § 43(a)(1),15 U.S.C.A. § 1125(a)(1).


Use of likeness of former professionalfootball player was artistically relevant tofootball video games under Rogers testused to determine applicability of LanhamAct provision addressing false designationsof origin to expressive works protected byFirst Amendment; video game manufac-turer prided itself on extreme realism ofgames, and former player’s likeness wasimportant to recreating realistically one ofteams in games. U.S.C.A. Const.Amend.1; Lanham Act, § 43(a)(1), 15 U.S.C.A.§ 1125(a)(1).

6. Constitutional Law O1604 Trademarks O1524(1)

Use of a mark alone is not enough tosatisfy prong of Rogers test used to deter-mine applicability of Lanham Act provisionaddressing false designations of origin toexpressive works protected by FirstAmendment which requires that creator of

expressive work use mark explicitly tomislead consumers as to source or contentof the work. U.S.C.A. Const.Amend. 1;Lanham Act, § 43(a)(1), 15 U.S.C.A.§ 1125(a)(1).


Under prong of Rogers test used todetermine applicability of Lanham Actprovision addressing false designations oforigin to expressive works protected byFirst Amendment that requires creator ofexpressive work to use mark explicitly tomislead consumers as to source or contentof the work, evidence, to be relevant, mustrelate to the nature of the behavior of theidentifying material’s user, not the impactof the use. U.S.C.A. Const.Amend. 1;Lanham Act, § 43(a)(1), 15 U.S.C.A.§ 1125(a)(1).


Use of likeness of former professionalfootball player in football video games didnot, when coupled with consumer surveydemonstrating that majority of the publicbelieved that identifying marks could notbe included in products without permis-sion, did not demonstrate that game manu-facturer explicitly misled consumers intobelieving that former player endorsed orsponsored its games, as required, underRogers test, for former player to establishfalse endorsement claim against manufac-turer under Lanham Act despite games’protected expressive content; survey didnot concern nature of manufacturer’s be-havior in using former player’s likeness,but instead related to effect of that use.U.S.C.A. Const.Amend. 1; Lanham Act,§ 43(a), 15 U.S.C.A. § 1125(a).


Statements included in written mate-rials that accompanied versions of football


video games which contained likeness offormer professional football player did notshow that games’ manufacturer attemptedto mislead consumers about former play-er’s endorsement or involvement in games,as required, under Rogers test, for formerplayer to establish false endorsement claimagainst manufacturer under Lanham Actdespite games’ protected expressive con-tent; statements which indicated thatgames included depictions of 50 of profes-sional football league’s greatest playersand one commentator’s all-star teams weretrue and did not suggest that depictedfootball players endorsed video games.U.S.C.A. Const.Amend. 1; Lanham Act,§ 43(a), 15 U.S.C.A. § 1125(a).

10. Antitrust and Trade RegulationO30

Constitutional Law O1899

Changes made by manufacturer offootball video games to versions of itsgames that could make consumers lessconfident that certain player depicted wasfamous former professional football playercould not have misled consumers into be-lieving that former player was involvedwith or endorsed manufacturer’s games, asrequired, under Rogers test, for formerplayer to establish false endorsement claimagainst manufacturer under Lanham Actdespite games’ protected expressive con-tent. U.S.C.A. Const.Amend. 1; LanhamAct, § 43(a), 15 U.S.C.A. § 1125(a).

11. Antitrust and Trade RegulationO30

Constitutional Law O1899

Comments made by officials for manu-facturer of football video games in lettersand at academic conference regardinggames’ use of likenesses of current andformer professional football players, which

were not made to consumers, could notrealistically be expected to confuse con-sumers about former player’s involvementwith game, as required, under Rogers test,for former player to establish false en-dorsement claim against manufacturer un-der Lanham Act despite games’ protectedexpressive content. U.S.C.A. Const.Amend. 1; Lanham Act, § 43(a), 15U.S.C.A. § 1125(a).

12. Federal Courts O712

Court of Appeals would not considerarguments not raised in appellant’s open-ing brief on appeal in action under Lan-ham Act. Lanham Act, § 43(a), 15U.S.C.A. § 1125(a).

13. Federal Civil Procedure O1829, 1835

On a motion to dismiss, court pre-sumes that the facts alleged by plaintiffare true, and will also draw all reasonableinferences from the complaint in plaintiff’sfavor. Fed.Rules Civ.Proc.Rule 12(b)(6),28 U.S.C.A.

14. Federal Civil Procedure O1835

Court deciding motion to dismiss isnot required to accept any unreasonableinferences or assume the truth of legalconclusions cast in the form of factual alle-gations. Fed.Rules Civ.Proc.Rule 12(b)(6),28 U.S.C.A.


Facts pleaded by former professionalfootball player in support of his assertionsthat his likeness had no artistic relevanceto manufacturer’s football video games andthat manufacturer attempted to misleadconsumers about former player’s involve-ment with those games did not actuallyjustify those asserted conclusions, andtherefore, on manufacturer’s motion to dis-miss for failure to state claim, district


court could decide that former player didnot satisfy Rogers test, as required for himto pursue false endorsement claim underLanham Act despite games’ protected ex-pressive content. U.S.C.A. Const.Amend.1; Lanham Act, § 43(a), 15 U.S.C.A.§ 1125(a); Fed.Rules Civ.Proc.Rule12(b)(6), 28 U.S.C.A.

16. Federal Civil Procedure O1832

In deciding motion to dismiss formerprofessional football player’s false endorse-ment claim under Lanham Act againstmanufacturer of football video games, dis-trict court could consider versions of gamesubmitted to it as part of complaint itselfthrough incorporation by reference doc-trine.

West Codenotes

Limited on Constitutional Grounds

15 U.S.C.A. § 1125(a)(1)

Kelli L. Sager (argued), Alonzo WickersIV, Anna R. Zusman, Lisa J. Kohn andKaren A. Henry, Davis Wright TremaineLLP, Los Angeles, CA; Robert A. VanNest, Steven A. Hirsch and R. JamesSlaughter, Keker & Van Nest, LLP, SanFrancisco, CA, for appellee.

Ronald S. Katz (argued) and Ryan S.Hilbert, Manatt, Phelps & Phillips, LLP,Palo Alto, CA; Mark S. Lee, Craig J. DeRecat and Benjamin G. Shatz, Manatt,Phelps & Phillips, LLP, Los Angeles, CA,for appellant.

Nathan Siegel and Lee Levine, LevineSullivan Koch & Schulz, L.L.P., Washing-ton, D.C., for amici curiae Advance Publi-cations, A & E Television Networks, AlliedDaily Newspapers of Washington, Associa-tion of American Publishers, Activision,California Newspaper Publishers Associa-tion, Capcom USA, Comic Book Legal De-fense Fund, E! Entertainment Television,ESPN, First Amendment Coalition, FirstAmendment Project, Freedom Communi-cations, The Gannett Company, GawkerMedia, Hybrid Films, ITV Studios, Kona-mi Digital Entertainment, The Los Ange-les Times, The McClatchy Company,Namco Bandai Games America, OriginalProductions, The PressEnterprise Compa-ny, Radio Television Digital News Associa-tion, Sirens Media, Take Two InteractiveSoftware, Thq, Viacom, The WashingtonNewspaper Publishers Association, andWenner Media.*

Appeal from the United States DistrictCourt for the Central District of Califor-nia, Florence–Marie Cooper, DistrictJudge, Presiding. D.C. No. 2:09–cv–01598–FMC–RZ.

Before: SIDNEY R. THOMAS andJAY S. BYBEE, Circuit Judges, andGORDON J. QUIST, Senior DistrictJudge.**

OPINION

BYBEE, Circuit Judge:

Plaintiff—Appellant James ‘‘Jim’’ Brownalleges that Defendant—Appellee Elec-tronic Arts, Inc. (‘‘EA’’) has violated§ 43(a) of the Lanham Act, 15 U.S.C.

* The motion of these organizations to file theiramicus brief is GRANTED.

** The Honorable Gordon J. Quist, Senior Dis-trict Judge for the U.S. District Court forWestern Michigan, sitting by designation.


§ 1125(a), through the use of Brown’s like-ness in EA’s Madden NFL series of foot-ball video games. In relevant part,§ 43(a) provides for a civil cause of actionagainst:

[a]ny person who, on or in connectionwith any goods or services, or any con-tainer for goods, uses in commerce anyword, term, name, symbol, or device, orany combination thereof, or any falsedesignation of origin, false or misleadingdescription of fact, or false or misleadingrepresentation of fact, which TTT is like-ly to cause confusion, or to cause mis-take, or to deceive as to the affiliation,connection, or association of such personwith another person, or as to the origin,sponsorship, or approval of his or hergoods, services, or commercial activitiesby another person[.]

15 U.S.C. § 1125(a)(1). Although claimsunder § 43(a) generally relate to the use oftrademarks or trade dress to cause con-sumer confusion over affiliation or en-dorsement, we have held that claims canalso be brought under § 43(a) relating tothe use of a public figure’s persona, like-ness, or other uniquely distinguishingcharacteristic to cause such confusion.1

[1, 2] Section 43(a) protects the pub-lic’s interest in being free from consumerconfusion about affiliations and endorse-ments, but this protection is limited by theFirst Amendment, particularly if the prod-uct involved is an expressive work.Recognizing the need to balance the pub-lic’s First Amendment interest in free ex-

pression against the public’s interest inbeing free from consumer confusion aboutaffiliation and endorsement, the SecondCircuit created the ‘‘Rogers test’’ in Rogersv. Grimaldi, 875 F.2d 994 (2d Cir.1989).Under the Rogers test, § 43(a) will not beapplied to expressive works ‘‘unless the[use of the trademark or other identifyingmaterial] has no artistic relevance to theunderlying work whatsoever, or, if it hassome artistic relevance, unless the [use oftrademark or other identifying material]explicitly misleads as to the source or thecontent of the work.’’ Id. at 999. Weadopted the Rogers test in Mattel, Inc. v.MCA Records, Inc., 296 F.3d 894 (9thCir.2002).

Applying the Rogers test, the districtcourt in this case granted EA’s motion todismiss Brown’s Lanham Act claim, find-ing that Brown had not alleged facts thatsatisfied either condition that allow a§ 43(a) claim to succeed under the Rogerstest. Brown v. Elec. Arts, Inc., No. 2:09–cv–01598, 2009 WL 8763151, at *3–5, 2009U.S. Dist. LEXIS 131387, at *8–15(C.D.Cal. Sept. 23, 2009). Brown appeal-ed, challenging the applicability of theRogers test, the district court’s analysisunder the Rogers test, and the suitabilityof his case for resolution without additionalfactfinding. We affirm the district court’sdecision.

I

Jim Brown is widely regarded as one ofthe best professional football players of all

1. See Waits v. Frito–Lay, Inc., 978 F.2d 1093,1110 (9th Cir.1992) (‘‘A false endorsementclaim based on the unauthorized use of acelebrity’s identity is a type of false associa-tion claim, for it alleges the misuse of a trade-mark, i.e., a symbol or device such as a visuallikeness, vocal imitation, or other uniquelydistinguishing characteristic, which is likely

to confuse consumers as to the plaintiff’ssponsorship or approval of the product.’’); seealso White v. Samsung Elecs. Am., Inc., 971F.2d 1395, 1399–1400 (9th Cir.1992) (‘‘Incases involving confusion over endorsementby a celebrity plaintiff, ‘mark’ means the ce-lebrity’s persona.’’).


time. He starred for the ClevelandBrowns from 1957 to 1965 and was induct-ed into the National Football League(‘‘NFL’’) Hall of Fame after his retire-ment. After his NFL career, Brown alsoachieved success as an entertainer andpublic servant. There is no question thathe is a public figure whose persona can bedeployed for economic benefit.

EA is a manufacturer, distributor andseller of video games and has produced theMadden NFL series of football videogames since 1989. The Madden NFL ser-ies allows users of the games to controlavatars representing professional footballplayers as those avatars participate in sim-ulated NFL games. In addition to thesesimulated games, Madden NFL also en-ables users to participate in other aspectsof a simulated NFL by, for example, creat-ing and managing a franchise. Each ver-sion of Madden NFL includes the currentyear’s NFL teams with the teams’ currentrosters. Each avatar on a current team isdesigned to mirror a real current NFLplayer, including the player’s name, jerseynumber, physical attributes, and physicalskills. Some versions of the game alsoinclude historical and all-time teams. Un-like for players on the current NFL teams,no names are used for the players on thehistorical and all-time teams, but theseplayers are recognizable due to the accura-cy of their team affiliations, playing posi-tions, ages, heights, weights, ability levels,and other attributes. Although EA entersinto licensing agreements with the NFL

and NFL Players Association (‘‘NFLPA’’)for its use of the names and likenesses ofcurrent NFL players, Brown, as a formerplayer, is not covered by those agreementsand has never entered into any otheragreement allowing EA to use his likenessin Madden NFL. Brown asserts that EAhas used his likeness in several versions ofthe game dating back at least to 2001 butthat he has never been compensated.

Brown brought suit in the United StatesDistrict Court for the Central District ofCalifornia, claiming that EA’s use of hislikeness in the Madden NFL games violat-ed § 43(a) of the Lanham Act. Brown alsobrought claims under California law forinvasion of privacy and unfair and unlawfulbusiness practices. EA filed a motion todismiss pursuant to Rule 12(b)(6) of theFederal Rules of Civil Procedure, and thedistrict court applied the Rogers test anddismissed Brown’s Lanham Act claim.Brown, 2009 WL 8763151, at *3–5, 2009U.S. Dist. LEXIS 131387, at *9–15. Thedistrict court declined to exercise supple-mental jurisdiction over the state-lawclaims. Id. at *5–6, 2009 U.S. Dist. LEX-IS 131387, at *15–16. Brown filed a timelyappeal of the dismissal of his Lanham Actclaim.2 We have jurisdiction pursuant to28 U.S.C. § 1291. We review the districtcourt’s dismissal de novo. Kahle v. Gon-zales, 487 F.3d 697, 699 (9th Cir.2007).

II

The legal issues raised by this case arenot novel, but their lack of novelty should

2. We emphasize that this appeal relates onlyto Brown’s Lanham Act claim. Were thestate causes of action before us, our analysismay be different and a different outcome mayobtain. See, e.g. Keller v. Elec. Arts, Inc., 724F.3d 1268, 1271, No. 10–15387, 2013 WL3928293, *1 (9th Cir. July 31, 2013) (affirm-ing a district court’s ruling that EA had no

First Amendment defense against the state-law right-of-publicity claims of former collegefootball player Samuel Keller and other for-mer college football and basketball playersrelated to the use of their likenesses in EA’scollege football and college basketball videogames).


not be mistaken for lack of difficulty. Sig-nificant judicial resources, including theresources of this court, have been expend-ed trying to find the appropriate balancebetween trademark and similar rights, onthe one hand, and First Amendmentrights, on the other. Brown suggests thatthe case law has produced a lack of clarityas to the appropriate legal framework toapply in this case and urges us to considerthe ‘‘likelihood of confusion’’ test and the‘‘alternative means’’ test in addition to theRogers test. We are convinced that theRogers test remains the appropriateframework.

A decade ago, in Mattel, Inc. v. MCARecords, Inc., we adopted the Rogers testas our method for balancing the trademarkand similar rights protected by § 43(a) ofthe Lanham Act against First Amendmentrights in cases involving expressive works.MCA, 296 F.3d at 902. Although MCAconcerned the use of a trademark in thetitle of an expressive work, and the lan-guage of the MCA opinion did not make itclear that we were adopting the Rogerstest for cases where the trademark orother identifying material in question wasused in the body of a work rather than inthe title, we clarified in E.S.S. Entertain-ment 2000, Inc. v. Rock Star Videos, Inc.that application of the Rogers test was notdependent on the identifying material ap-pearing in the title but ‘‘also appl[ies] tothe use of a trademark in the body of thework.’’ 547 F.3d 1095, 1099 (9th Cir.2008).We have consistently employed the Rogerstest in § 43(a) cases involving expressiveworks since MCA, including where thetrademark or other identifying material inquestion was used in the body of a workrather than in the title. See, e.g., id.;Mattel, Inc. v. Walking Mountain Prods.,353 F.3d 792 (9th Cir.2003).

[3] The Rogers test is reserved for ex-pressive works. Even if Madden NFL isnot the expressive equal of Anna Kareni-na or Citizen Kane, the Supreme Courthas answered with an emphatic ‘‘yes’’ whenfaced with the question of whether videogames deserve the same protection asmore traditional forms of expression. InBrown v. Entertainment Merchants Ass’n,the Court said that ‘‘[l]ike the protectedbooks, plays, and movies that precededthem, video games communicate ideas—and even social messages—through manyfamiliar literary devices (such as charac-ters, dialogue, plot, and music) andthrough features distinctive to the medium(such as the player’s interaction with thevirtual world)’’ and that these similaritiesto other expressive mediums ‘‘suffice[ ] toconfer First Amendment protection.’’ –––U.S. ––––, 131 S.Ct. 2729, 2733, 180L.Ed.2d 708 (2011). Although there maybe some work referred to as a ‘‘videogame’’ (or referred to as a ‘‘book,’’ ‘‘play,’’or ‘‘movie’’ for that matter) that does notcontain enough of the elements contem-plated by the Supreme Court to warrantFirst Amendment protection as an expres-sive work, no version of Madden NFL issuch a work. Every version of the gamefeatures characters (players), dialogue (be-tween announcers), plot (both within a par-ticular simulated game and more broadly),and music. Interaction between the virtu-al world of the game and individuals play-ing the game is prevalent. Even if thereis a line to be drawn between expressivevideo games and non-expressive videogames, and even if courts should at somepoint be drawing that line, we have noneed to draw that line here.3 Each ver-sion of Madden NFL is an expressivework, and our precedents dictate that weapply the Rogers test in § 43(a) cases in-

3. Brown points to several examples of courts suggesting that certain video games may not


volving expressive works. Brown ac-knowledges that Rogers may apply here,but he argues that the ‘‘likelihood of confu-sion’’ test, exemplified by Dr. Seuss Enter-prises, L.P. v. Penguin Books USA, Inc.,109 F.3d 1394 (9th Cir.1997), or the ‘‘alter-native means’’ test, exemplified by Inter-national Olympic Committee v. San Fran-cisco Arts & Athletics, 781 F.2d 733 (9thCir.1986), reh’g en banc denied, 789 F.2d1319 (9th Cir.1986), aff’d on other grounds,S.F. Arts & Athletics, Inc. v. U.S. OlympicComm., 483 U.S. 522, 107 S.Ct. 2971, 97L.Ed.2d 427 (1987), are also relevant. Wedisagree. We have previously rejected the‘‘likelihood of confusion’’ test as ‘‘fail[ing]to account for the full weight of the pub-lic’s interest in free expression’’ when ex-pressive works are involved. MCA, 296F.3d at 900. The ‘‘alternative means’’ testwas rejected for the same reason in Rogersitself, 875 F.2d at 999, a position we ap-proved by adopting the Rogers test inMCA. The only relevant legal frameworkfor balancing the public’s right to be freefrom consumer confusion about Brown’saffiliation with Madden NFL and EA’sFirst Amendment rights in the context ofBrown’s § 43(a) claim is the Rogers test.

III

Rogers involved a suit brought by thefamous performer Ginger Rogers against

the producers and distributors of Gingerand Fred, a movie about two fictional Ital-ian cabaret performers who imitated Rog-ers and her frequent performing partnerFred Astaire. Rogers, 875 F.2d at 996–97.Among Rogers’ claims was that the use ofher name in the title of the movie violated§ 43(a) by creating the false impressionthat she was involved with the film. Id. at997. Recognizing that enforcing § 43(a) inthis context might constrain free expres-sion in violation of the First Amendment,the Second Circuit asserted that the Lan-ham Act should be ‘‘appl[ied] to artisticworks only where the public interest inavoiding consumer confusion outweighs thepublic interest in free expression.’’ Id. at999. The Rogers court introduced a two-pronged test, under which the Lanham Actshould not be applied to expressive works‘‘unless the [use of the trademark or otheridentifying material] has no artistic rele-vance to the underlying work whatsoever,or, if it has some artistic relevance, unlessthe [trademark or other identifying mate-rial] explicitly misleads as to the source orthe content of the work.’’ Id.

A

[4] As we explained in E.S.S., a casewith similar facts to Brown’s case in whichwe applied the Rogers test to a § 43(a)

warrant First Amendment protection as ex-pressive works, but all of the cases cited weredecided years before the Supreme Court is-sued its opinion in Brown v. EntertainmentMerchants Ass’n, ––– U.S. ––––, 131 S.Ct.2729, 180 L.Ed.2d 708 (2011). See Am.Amusement Mach. Ass’n v. Kendrick, 244 F.3d572, 579–80 (7th Cir.2001); Wilson v. MidwayGames, Inc., 198 F.Supp.2d 167, 180–81(D.Conn.2002); Am.’s Best Family ShowplaceCorp. v. City of New York, 536 F.Supp. 170,173–74 (E.D.N.Y.1982). Brown argues thatEA’s insistence that the Rogers test governs isan attempt to portray First Amendment law

as settled with regard to video games when itis in fact evolving, but Brown v. EntertainmentMerchants Ass’n demonstrates that any evolu-tion favors greater protection, a fact Brownignores by emphasizing these earlier cases.This evolution in recent years toward greaterFirst Amendment protection for non-tradi-tional media has not been limited to videogames. See, e.g., Anderson v. City of HermosaBeach, 621 F.3d 1051, 1055 (9th Cir.2010)(holding that ‘‘tattooing is a purely expressiveactivity fully protected by the First Amend-ment’’).


claim related to the use of the likeness of aLos Angeles strip club in the video gameGrand Theft Auto: San Andreas, ‘‘the lev-el of [artistic] relevance [of the trademarkor other identifying material to the work]merely must be above zero’’ for the trade-mark or other identifying material to bedeemed artistically relevant. 547 F.3d at1100. This black-and-white rule has thebenefit of limiting our need to engage inartistic analysis in this context.4

[5] We agree with the district courtthat the use of Brown’s likeness is artisti-cally relevant to the Madden NFL games.As Brown points out in trying to under-mine the status of the games as expressiveworks, EA prides itself on the extremerealism of the games. As Brown empha-sizes in arguing that it is in fact his like-ness in the games: ‘‘[I]t is axiomatic the865 Cleveland Browns simply, by defini-tion, cannot be the 865 Cleveland Brownswithout the players who played for the 865Cleveland Browns. This fundamentaltruth applies especially to that team’s mostfamous player, Jim Brown.’’ Given theacknowledged centrality of realism to EA’sexpressive goal, and the importance of in-cluding Brown’s likeness to realistically re-create one of the teams in the game, it isobvious that Brown’s likeness has at leastsome artistic relevance to EA’s work. Thefact that any given version of MaddenNFL includes likenesses of thousands ofdifferent current and former NFL playersdoes not impact this analysis. In E.S.S.,the virtual strip club in question was justone of many virtual structures included bythe designers of Grand Theft Auto: SanAndreas in an attempt to simulate the feel

of East Los Angeles, but we nonethelessconcluded that the strip club was artistical-ly relevant to the work. 547 F.3d at 1100.There is no significant distinction to bemade here.

Brown questions the artistic relevance ofhis likeness to Madden NFL in part bypointing us to the Sixth Circuit’s decisionin Parks v. LaFace Records, 329 F.3d 437(6th Cir.2003). In Parks, civil rights heroRosa Parks sued the musical duo Outkastunder § 43(a) after Outkast released asong called Rosa Parks. Id. at 441. Par-tially due to the fact that one of the mem-bers of Outkast had said that the song wasnot ‘‘intended TTT to be about Rosa Parksor the civil rights movement,’’ the SixthCircuit concluded that the district courtshould have at least considered additionalevidence before deciding that the use ofMs. Parks’ name was artistically relevantto the song. Id. at 452–53. Brown allegesthat EA has made similar denials of JimBrown’s relevance to Madden NFL, andthus argues that Brown’s likeness is notartistically relevant to the Madden NFLgames. The court in Parks, however, didnot rely solely on the band’s denial thatthe song was about Ms. Parks or the civilrights movement in concluding that therewas a factual dispute about artistic rele-vance. ‘‘The composers did not intend[the song] to be about Rosa Parks, and thelyrics are not about Rosa Parks,’’ the courtstated, emphasizing both Outkast’s denialsand the court’s own determination that thesong’s lyrics were unrelated to Ms. Parksor the civil rights movement. Id. at 452.Here, even if EA’s denials regardingBrown are equivalent to Outkast’s denialregarding Parks, the content of the Mad-

4. Cf. Bleistein v. Donaldson Lithographing Co.,188 U.S. 239, 251, 23 S.Ct. 298, 47 L.Ed. 460(1903) (Holmes, J.) (‘‘It would be a dangerousundertaking for persons trained only to the

law to constitute themselves final judges ofthe worth of pictorial illustrations, outside ofthe narrowest and most obvious limits.’’).


den NFL games—the simulation of NFLfootball—is clearly related to Jim Brown,one of the NFL’s all-time greatest players.Moreover, EA’s denials are not equivalentto Outkast’s denial. EA has denied usingthe aspects of Brown’s likeness that maybe protected by the Lanham Act and cer-tain state laws, but such denials are a farcry from Outkast’s outright denial of rele-vance. In letters to Brown’s attorneys,EA officials have claimed that ‘‘Brown hasnot appeared in any Madden NFL gamesince 1998,’’ and that ‘‘Brown’s name andlikeness does not appear in Madden NFL08 or any packaging or marketing materi-als associated with the product.’’ EA hasnot denied that Brown’s likeness is rele-vant to Madden NFL; rather, it has de-nied that Brown has appeared in the Mad-den NFL games released since 1998. Ifthe denials are true—that is, if Brown’slikeness does not in fact appear in thegames—Brown has no claim at all underthe Lanham Act. We do not understandthis to be Brown’s position. Outkast’s de-nial did not similarly undermine Ms.Parks’ Lanham Act claim because Outkastwas not denying the use of Parks’ name.In order to have a valid § 43(a) claimbased on artistic irrelevance, Brown needsto show both that his likeness was usedand that his likeness was artistically irrele-vant to the Madden NFL games. If artis-tic irrelevance can only be proven by ac-cepting the truth of EA’s denial of the useof Brown’s likeness, Brown cannot possibly

satisfy both of these burdens. Moreover,in the context of a motion to dismiss, weaccept Brown’s factual allegations as true,and Brown alleges that his likeness wasused. We must thus assume that EA’sdenials are false, meaning they provide nosupport for artistic irrelevance.5

One of the Sixth Circuit’s animating con-cerns in Parks was that a celebrity’s namecould be ‘‘appropriated solely because ofthe vastly increased marketing power of aproduct bearing the name of [the celebri-ty].’’ 329 F.3d at 454. This is a legitimateconcern, but the facts in Parks—specifical-ly, the court’s determination that the lyricsof Outkast’s song may very well have noth-ing to do with Rosa Parks or the civilrights movement—made that concernmuch more realistic in that case than inthis one. EA did not produce a gamecalled Jim Brown Presents Pinball withno relation to Jim Brown or football be-yond the title; it produced a football gamefeaturing likenesses of thousands of cur-rent and former NFL players, includingBrown. Comparing this case to Parksdoes not further Brown’s cause.

Brown also asserts that our interpreta-tion of the Rogers test in E.S.S. to requireartistic relevance to ‘‘merely TTT be abovezero,’’ 547 F.3d at 1100, has rendered theRogers test—described in the Rogers opin-ion itself as seeking to strike a ‘‘balance’’between ‘‘the public’s interest in free ex-pression’’ and ‘‘protect[ing] the public

5. In addition to pointing us to Parks, Brownalso analogizes his case to American DairyQueen Corp. v. New Line Productions, Inc., 35F.Supp.2d 727 (D.Minn.1998), in which thedefendant admitted in its briefing that it didnot intend its ‘‘Dairy Queens’’ title to refer toplaintiff American Dairy Queen Corporation.Based on this admission, the district courtfound that the defendant could express itsideas in other ways, and thus that on balance

the risk of consumer confusion and trade-mark dilution outweighed the public interestin free expression. Id. at 734–35. As ex-plained in our discussion of Parks, this analo-gy is inapt because there is no similar explicitdenial of relevance in this case, and becausewe presume the truth of Brown’s allegationsthat EA has used his likeness. AmericanDairy Queen also was not a case involvingapplication of the Rogers test.


against flagrant deception,’’ 875 F.2d at999—an inflexible and mechanical rule thatmore or less automatically protects expres-sive works regardless of the deception in-volved. But a balance need not be de-signed to find each of the sides weightierwith equal frequency. The language inRogers is clear. ‘‘[T]hat balance will nor-mally not support application of the [Lan-ham] Act unless the [use of the trademarkor other identifying material] has no artis-tic relevance to the underlying work what-soeverTTTT’’ 875 F.2d at 999 (emphasisadded). The Rogers test is applicablewhen First Amendment rights are at theirheight—when expressive works are in-volved—so it is no surprise that the testputs such emphasis on even the slightestartistic relevance. ‘‘Intellectual propertyrights aren’t free: They’re imposed at theexpense of future creators and of the pub-lic at large,’’ White v. Samsung Elecs.Am., Inc., 989 F.2d 1512, 1516 (9th Cir.1993) (Kozinski, J., dissenting from denialof rehearing en banc), and the Rogers testapplies when this expense is most signifi-cant. Our interpretation of the ‘‘artisticrelevance’’ prong of the Rogers test inE.S.S. is correct, and Brown fails to allegefacts that satisfy that prong in this case.

B

Even if the use of a trademark or otheridentifying material is artistically relevantto the expressive work, the creator of theexpressive work can be subject to a Lan-ham Act claim if the creator uses the markor material to ‘‘explicitly mislead[ ] [con-sumers] as to the source or the content ofthe work.’’ Rogers, 875 F.2d at 999. It iskey here that the creator must explicitlymislead consumers. ‘‘[T]he slight risk thatTTT use of a celebrity’s name might implic-itly suggest endorsement or sponsorship to

some people is outweighed by the dangerof restricting artistic expression, and [incases where there is no explicit mislead-ing] the Lanham Act is not applicable.’’Id. at 999–1000. This second prong of theRogers test ‘‘points directly at the purposeof trademark law, namely to avoid confu-sion in the marketplace by allowing atrademark owner to prevent others fromduping consumers into buying a productthey mistakenly believe is sponsored bythe trademark owner.’’ E.S. S., 547 F.3dat 1100 (internal quotation marks and cita-tion omitted). We must ask ‘‘whether the[use of Brown’s likeness] would confuse[Madden NFL ] players into thinking that[Brown] is somehow behind [the games] orthat [he] sponsors [EA’s] product,’’ id., andwhether there was an ‘‘explicit indication,’’‘‘overt claim,’’ or ‘‘explicit misstatement’’that caused such consumer confusion, Rog-ers, 875 F.2d at 1001. Brown puts forthseveral arguments attempting to show thatthis second prong of the Rogers test issatisfied, but each of his arguments is un-successful.

[6–8] First, Brown argues that the useof his likeness in the game coupled with aconsumer survey demonstrating that a ma-jority of the public believes that identify-ing marks cannot be included in productswithout permission at least raises a triableissue of fact as to the second prong of theRogers test. It is well established that theuse of a mark alone is not enough tosatisfy this prong of the Rogers test. InMCA, we noted that if the use of a markalone were sufficient ‘‘it would render Rog-ers a nullity.’’ 296 F.3d at 902. We reit-erated this point in E.S.S., asserting that‘‘the mere use of a trademark alone cannotsuffice to make such use explicitly mislead-ing.’’ 547 F.3d at 1100. Adding surveyevidence changes nothing. The test re-


quires that the use be explicitly mislead-ing to consumers. To be relevant, evi-dence must relate to the nature of thebehavior of the identifying material’s user,not the impact of the use. Even if Browncould offer a survey demonstrating thatconsumers of the Madden NFL series be-lieved that Brown endorsed the game, thatwould not support the claim that the usewas explicitly misleading to consumers.The Sixth Circuit’s decision in ETW Corp.v. Jireh Publishing, Inc., 332 F.3d 915 (6thCir.2003), demonstrates this point. In thatcase, Tiger Woods’ licensing agent, ETWCorporation, brought a Lanham Act claimagainst the publisher of artwork commem-orating Woods’ 1997 victory at The Mas-ters. Id. at 918. A survey was producedin which participants were shown the art-work and asked if they thought TigerWoods was affiliated or connected with thework or had approved or sponsored it. Id.at 937 & n. 19. Over sixty percent of theparticipants answered affirmatively, butthe Sixth Circuit asserted: ‘‘[P]laintiff’ssurvey evidence, even if its validity is as-sumed, indicates at most that some mem-bers of the public would draw the incorrectinference that Woods had some connectionwith [the work]. The risk of misunder-standing, not engendered by any explicitindication on the face of the [work], is sooutweighed by the interest in artistic ex-pression as to preclude application of the[Lanham] Act.’’ Id. at 937 (footnote omit-ted). In Rogers itself, the Second Circuitrejected similar survey data for the samereasons. 875 F.2d at 1001. The use ofBrown’s likeness together with the citedsurvey do not provide a valid argument toallow Brown’s case to go forward based onthis prong of the Rogers test.

[9] Second, Brown argues that certainwritten materials that accompanied ver-

sions of the game demonstrate EA’s at-tempts to explicitly mislead consumersabout his endorsement or involvement withthe game’s production. Unlike mere useof the mark or a consumer survey, state-ments made in materials accompanying thegame are at least the right kind of evi-dence to show that EA tried to explicitlymislead consumers about its relationshipwith Brown. Here, however, the state-ments highlighted by Brown do not showany attempt to mislead consumers.Brown points to materials that say thatone of the game’s features was the inclu-sion of ‘‘[f]ifty of the NFL’s greatest play-ers and every All–Madden team.’’ SinceBrown is one of the fifty greatest NFLplayers of all time and has been named tothe ‘‘All Madden, All Millennium’’ team,Brown argues that the statement ‘‘explicit-ly represents that Brown was in EA’sgame.’’ But Brown needs to prove thatEA explicitly misled consumers aboutBrown’s endorsement of the game, notthat EA used Brown’s likeness in thegame; nothing in EA’s promotion suggeststhat the fifty NFL players who are mem-bers of the All Madden, All Millenniumteam endorse EA’s game. EA’s statementis true and not misleading.

[10, 11] Third, Brown argues that thechanges made to Brown’s likeness for usein certain versions of the game satisfy thesecond prong of the Rogers test. EAmade changes to certain versions of thegame that might make a consumer of thegame less confident that the player inquestion was intended to be Brown. Mostnotably, EA changed the jersey number onthe Brown avatar from 32 (the numberBrown wore in the NFL) to 37. If thesechanges had any impact on whether con-sumers believed that Brown endorsed thegame, however, surely they made consum-


ers less likely to believe that Brown wasinvolved. Brown offers various theoriesabout EA’s legal motives in ‘‘scrambling’’his likeness for use in the game. It maybe true that EA was trying to protect itselffrom being sued for using Brown’s like-ness, under the Lanham Act or otherwise,but an action that could only make con-sumers less likely to believe that Brownendorsed Madden NFL cannot possiblysatisfy the second prong of the Rogerstest.

[12] Fourth, Brown cites various com-ments made by EA officials as evidencethat the second prong of the Rogers test issatisfied. As previously discussed, EA at-torneys sent letters to Brown’s attorneysstating that ‘‘Brown has not appeared inany Madden NFL game since 1998’’ andthat ‘‘Brown’s name and likeness does notappear in Madden NFL 08 or any packag-ing or marketing materials associated withthe product.’’ Brown claims that EA offi-cials contradicted these statements whenthey allegedly said at a conference held atUSC Law School that EA was able to usethe images and likenesses of players be-cause it obtained written authorizationfrom both the NFL players and the NFL.The statements made in letters to Brown’sattorneys are irrelevant to this prong ofthe Rogers analysis. They were not madeto consumers, and they do not say any-thing about Brown’s endorsement of thegame. The statement allegedly made at

the conference is perhaps the closestBrown comes to offering evidence that EAacted in an explicitly misleading manner asto Brown’s endorsement of the game, butagain, the statement was made to a limitedaudience, not to consumers. If a similarstatement appeared on the back cover of aversion of Madden NFL, that might satis-fy the ‘‘explicitly misleading’’ prong, or atleast raise a triable issue of fact, but astatement made at an academic conferenceabout all of the likenesses used in thegame could not realistically be expected toconfuse consumers as to Brown’s involve-ment.6

IV

Brown also argues that the district courtimproperly engaged in factfinding ingranting EA’s motion to dismiss. The dis-trict court, in Brown’s view, could not pos-sibly have granted the motion to dismiss ifit accepted all of the allegations in Brown’scomplaint as true, as Brown alleges in hiscomplaint that his likeness is not artistical-ly relevant to Madden NFL and that EAattempted to mislead consumers about hisinvolvement with Madden NFL.

[13–15] Brown is of course correct that‘‘[o]n a motion to dismiss, the court pre-sumes that the facts alleged by the plain-tiff are true.’’ Halet v. Wend Inv. Co., 672F.2d 1305, 1309 (9th Cir.1982). We willalso ‘‘draw[ ] all reasonable inferences

6. Brown argues that a similar statement ap-pearing on the packaging of the 2007 and2009 versions of Madden NFL could explicitlymislead consumers as to Brown’s endorse-ment. The packaging has the logo for theNFL Players Association and says ‘‘OfficiallyLicensed Product of NFL PLAYERS.’’ NFLPLAYERS is the licensing arm of the NFLPAand manages licensing rights for both currentplayers and retired players, so Brown con-tends that the statement on the packaging

could be understood by consumers to meanthat retired players, including Brown, en-dorse the game. We decline to address thisargument because Brown did not raise it inhis opening brief. See Friends of YosemiteValley v. Kempthorne, 520 F.3d 1024, 1033(9th Cir.2008). For the same reason, we de-cline to address Brown’s contention that EAexplicitly misled consumers by using Brown’slikeness on the back covers of the same twoversions of the game.


from the complaint in [Brown’s] favor.’’Mohamed v. Jeppesen Dataplan, Inc., 614F.3d 1070, 1073 (9th Cir.2010) (en banc)(internal quotation marks omitted). Weare not, however, required to ‘‘accept anyunreasonable inferences or assume thetruth of legal conclusions cast in the formof factual allegations.’’ Ileto v. Glock Inc.,349 F.3d 1191, 1200 (9th Cir.2003). Brownasserts that there is no artistic relevanceand that EA attempted to mislead consum-ers about Brown’s involvement with Mad-den NFL, but none of the facts asserted insupport of these legal conclusions actuallyjustify the conclusions.

[16] With regard to artistic relevance,even presuming that EA officials have de-nied the inclusion of Brown’s likeness inthe game, the district court could conclude,having reviewed the versions of MaddenNFL provided to the court,7 that the like-ness of a great NFL player is artisticallyrelevant to a video game that aims torecreate NFL games.

With regard to Brown’s allegation thatEA explicitly misled consumers as to hisinvolvement with the game, the factualsupport Brown offers is simply of thewrong type. Brown would need to demon-strate that EA explicitly misled consum-ers as to his involvement. Instead, hisallegations, if taken as true, only demon-strate that (1) the public can generally bemisled about sponsorship when marks areincluded in products; (2) EA explicitlystated that Brown’s likeness appears inMadden NFL; (3) EA tried to disguise itsuse of Brown’s likeness, if anything mak-ing consumers less likely to believe that hewas involved; (4) EA was dishonest withBrown’s attorney about the inclusion of his

likeness in the game; and (5) EA suggest-ed to a group of individuals at an academicconference that the players whose like-nesses were used in Madden NFL hadsigned licensing agreements with EA.There is simply no allegation that EA ex-plicitly misled consumers as to Brown’sinvolvement, and thus no problem with thedistrict court deciding this issue in re-sponse to a motion to dismiss.

V

As expressive works, the Madden NFLvideo games are entitled to the same FirstAmendment protection as great literature,plays, or books. Brown’s Lanham Actclaim is thus subject to the Rogers test,and we agree with the district court thatBrown has failed to allege sufficient factsto make out a plausible claim that survivesthat test. Brown’s likeness is artisticallyrelevant to the games and there are noalleged facts to support the claim that EAexplicitly misled consumers as to Brown’sinvolvement with the games. The Rogerstest tells us that, in this case, the publicinterest in free expression outweighs thepublic interest in avoiding consumer confu-sion. The district court’s judgment is thusAFFIRMED.

,

7. The district court properly considered theversions of Madden NFL submitted to thecourt as part of the complaint itself through

the ‘‘incorporation by reference’’ doctrine.See Knievel v. ESPN, 393 F.3d 1068, 1076 (9thCir.2005). We do the same.


552 F.2d at 1225.2 The Seventh Circuit’sreasoning is directly on point here, and tobe consistent with our sister circuit, weshould apply the California parole statutesat face value and hold that Thornton’schallenges to the GPS requirement andresidency restriction are likewise cogniza-ble only in habeas.

II

In sum, Thornton’s challenges to his pa-role conditions would necessarily imply thepartial invalidity of his sentence becauseparole is a required part of a determinatesentence in California. Therefore, hischallenge cannot be brought under § 1983.I respectfully dissent from the majority’sconclusion to the contrary, which conflictswith Supreme Court precedent and sistercircuit authority.

,

In re NCAA STUDENT–ATHLETENAME & LIKENESS LICENSING

LITIGATION,

Samuel Michael Keller; Edward C.O’bannon, Jr.; Byron Bishop; Mi-chael Anderson; Danny Wimprine;Ishmael Thrower; Craig Newsome;Damien Rhodes; Samuel Jacobson,Plaintiffs–Appellees,

v.

Electronic Arts Inc., Defendant–Appellant,

and

National Collegiate Athletic Asso-ciation; Collegiate Licensing

Company, Defendants.

No. 10–15387.


Argued and Submitted Feb. 15, 2011.

Submission Vacated Feb. 18, 2011.

Argued and Resubmitted July 13, 2012.

Filed July 31, 2013.

Background: Former college footballplayer filed putative class-action againstdeveloper of video games, which allowedusers to control avatars representing col-lege football and basketball players asthose avatars participated in simulatedgames, alleging violations of class mem-bers’ rights of publicity. Developer movedto strike the complaint as a strategic law-suit against public participation (SLAPP)under California’s anti-SLAPP statute.The United States District Court for theNorthern District of California, Claudia A.Wilken, J., 2010 WL 530108, denied themotion, and developer appealed.

2. The majority asserts that Drollinger is distin-guishable because the conditions in that casewere imposed ‘‘as part of a court judgment,’’maj. op. at 1262. But the Supreme Court hasnot indicated that it would make any differ-

ence under Heck whether an agency, ratherthan a court, establishes the parole conditionsthat are imposed as part of a sentence understate law, and the majority does not explainwhy this is significant.

1269IN RE NCAA STUDENT–ATHLETE NAME & LIKENESSCite as 724 F.3d 1268 (9th Cir. 2013)

Holding: The Court of Appeals, Bybee,Circuit Judge, held that video game devel-oper’s use of the likenesses of college ath-letes in its video games was not protectedby the First Amendment, and thereforeformer college football player’s right-of-publicity claims against developer were notbarred by California’s anti-SLAPP statute.

Affirmed.

Thomas, Circuit Judge, filed dissentingopinion.

1. Pleading O358

California’s anti-SLAPP (strategiclawsuit against public participation) statuteis designed to discourage suits that mas-querade as ordinary lawsuits but arebrought to deter common citizens fromexercising their political or legal rights orto punish them for doing so. West’s Ann.Cal.C.C.P. § 425.16(b)(1).

2. Pleading O358, 360

In evaluating an anti-SLAPP (strate-gic lawsuit against public participation)motion under California law, court re-quires that defendant make a prima facieshowing that the plaintiff’s suit arises froman act by the defendant made in connec-tion with a public issue in furtherance ofthe defendant’s right to free speech underthe United States or California Constitu-tion, and then determine whether theplaintiff has established a reasonable prob-ability that the plaintiff will prevail on hisor her claim. U.S.C.A. Const.Amend. 1;West’s Ann.Cal.C.C.P. § 425.16(b)(1).

3. Torts O385

Elements of a right-of-publicity claimunder California common law are: (1) thedefendant’s use of the plaintiff’s identity,(2) the appropriation of plaintiff’s name or

likeness to defendant’s advantage, com-mercially or otherwise, (3) lack of consent,and (4) resulting injury; same claim underCalifornia Civil Code requires a plaintiff toprove all the elements of the common lawcause of action plus a knowing use by thedefendant as well as a direct connectionbetween the alleged use and the commer-cial purpose. West’s Ann.Cal.Civ.Code§ 3344.


Pleading O358

Torts O391

Under California’s transformative usedefense, video game developer’s use of thelikenesses of college athletes in its videogames was not protected by the FirstAmendment, and therefore former collegefootball player’s right-of-publicity claimsagainst developer were not barred by Cali-fornia’s anti-SLAPP (strategic lawsuitagainst public participation) statute; videogame realistically portrayed college foot-ball players in the context of college foot-ball games, and thus developer’s use ofplayer’s likeness did not add significantcreative elements so as to be transformedinto something entitled to First Amend-ment protection. U.S.C.A. Const.Amend.1; West’s Ann.Cal.C.C.P. § 425.16(b)(1);West’s Ann.Cal.Civ.Code § 3344.

5. Federal Courts O383, 390, 391

Where there is no binding precedentfrom the state’s highest court, federalcourt must predict how the highest statecourt would decide issue of state law usingintermediate appellate court decisions, de-cisions from other jurisdictions, statutes,treatises, and restatements as guidance.

6. Torts O384

Under California law, right of publici-ty protects the celebrity, not the consum-er. West’s Ann.Cal.Civ.Code § 3344.


Kelli L. Sager (argued), Alonzo WickersIV, Karen A. Henry, Lisa J. Kohn andAnna R. Buono, Davis Wright TremaineLLP, Los Angeles, CA; Robert A. VanNest, Steven A. Hirsch and R. JamesSlaughter, Keker & Van Nest, LLP, SanFrancisco, CA, for Defendant–Appellant.

Steve W. Berman (argued) and Erin K.Flory, Hagens Berman Sobol ShapiroLLP, Seattle, WA; Robert Carey andLeonard Aragon, Hagens Berman SobolShapiro LLP, Phoenix, AZ, for Plaintiffs–Appellees.

Douglas E. Mirell, Loeb & Loeb LLP,Los Angeles, CA, for Amicus Curiae Mo-tion Picture Association of America, Inc.

Amy E. Margolin, Bien & Summers, SanFrancisco, CA; Michael Rubin and P. Ca-sey Pitts, Altshuler Berzon LLP, SanFrancisco, CA, for Amici Curiae NationalFootball League Players Association, Ma-jor League Baseball Players Association,National Basketball Players Association,National Hockey League Players’ Associa-tion, and Major League Soccer PlayersUnion.

Thomas R. Carpenter and Purvi Patel,American Federation of Television & Ra-dio Artists, AFL–CIO, New York, NY;Duncan Crabtree–Ireland and Danielle S.Van Lier, Screen Actors Guild, Inc., LosAngeles, CA, for Amici Curiae Screen Ac-tors Guild, Inc., American Federation ofTelevision & Radio Artists, AFL–CIO,Writers Guild of America, West, Inc.,Creative Property Rights Alliance, FiftySix Hope Road Music Ltd., LuminaryGroup LLC, Thomas Steinbeck, and GailKnight Steinbeck.

Nathan Siegel and Lee Levine, LevineSullivan Koch & Schulz, L.L.P., Washing-ton, District of Columbia, for Amici CuriaeAdvance Publications, A & E TelevisionNetworks, Allied Daily Newspapers ofWashington, Association of American Pub-lishers, Activision, California NewspaperPublishers Association, Capcom USA,Comic Book Legal Defense Fund, E! En-tertainment Television, ESPN, FirstAmendment Coalition, First AmendmentProject, Freedom Communications, TheGannett Company, Gawker Media, HybridFilms, ITV Studios, Konami Digital Enter-tainment, The Los Angeles Times, TheMcClatchy Company, Namco BandaiGames America, Original Productions, ThePress–Enterprise Company, Radio Televi-sion Digital News Association, Sirens Me-dia, Take Two Interactive Software, Thq,Viacom, The Washington Newspaper Pub-lishers Association, and Wenner Media.

Gregory L. Cutner and Robert J. Wier-enga, Schiff Harden, LLP, Ann Arbor, MI;Rocky N. Unruh, Schiff Hardin, LLP, SanFrancisco, CA, for Amicus Curiae NationalCollegiate Athletic Association.*

Appeal from the United States DistrictCourt for the Northern District of Califor-nia, Claudia A. Wilken, District Judge,Presiding. D.C. No. 4:09–cv–01967–CW.

Before: SIDNEY R. THOMAS andJAY S. BYBEE, Circuit Judges, andGORDON J. QUIST, Senior DistrictJudge.**

OPINION

BYBEE, Circuit Judge:

Video games are entitled to the full pro-tections of the First Amendment, because

* The NCAA’s motion to file its amicus brief isGRANTED.

** The Honorable Gordon J. Quist, Senior Dis-trict Judge for the U.S. District Court for the

Western District of Michigan, sitting by desig-nation.


‘‘[l]ike the protected books, plays, andmovies that preceded them, video gamescommunicate ideas—and even social mes-sages—through many familiar literary de-vices (such as characters, dialogue, plot,and music) and through features distinc-tive to the medium (such as the player’sinteraction with the virtual world).’’Brown v. Entm’t Merchs. Ass’n, ––– U.S.––––, 131 S.Ct. 2729, 2733, 180 L.Ed.2d 708(2011).1 Such rights are not absolute, andstates may recognize the right of publicityto a degree consistent with the FirstAmendment. Zacchini v. Scripps–How-ard Broad. Co., 433 U.S. 562, 574–75, 97S.Ct. 2849, 53 L.Ed.2d 965 (1977). In thiscase, we must balance the right of publici-ty of a former college football playeragainst the asserted First Amendmentright of a video game developer to use hislikeness in its expressive works.

The district court concluded that thegame developer, Electronic Arts (‘‘EA’’),had no First Amendment defense againstthe right-of-publicity claims of the footballplayer, Samuel Keller. We affirm. Underthe ‘‘transformative use’’ test developed bythe California Supreme Court, EA’s usedoes not qualify for First Amendment pro-tection as a matter of law because it liter-ally recreates Keller in the very setting inwhich he has achieved renown. The otherFirst Amendment defenses asserted byEA do not defeat Keller’s claims either.

I

Samuel Keller was the starting quarter-back for Arizona State University in 2005

before he transferred to the University ofNebraska, where he played during the2007 season. EA is the producer of theNCAA Football series of video games,which allow users to control avatars repre-senting college football players as thoseavatars participate in simulated games.In NCAA Football, EA seeks to replicateeach school’s entire team as accurately aspossible. Every real football player oneach team included in the game has acorresponding avatar in the game with theplayer’s actual jersey number and virtuallyidentical height, weight, build, skin tone,hair color, and home state. EA attemptsto match any unique, highly identifiableplaying behaviors by sending detailedquestionnaires to team equipment manag-ers. Additionally, EA creates realistic vir-tual versions of actual stadiums; populatesthem with the virtual athletes, coaches,cheerleaders, and fans realistically ren-dered by EA’s graphic artists; and incor-porates realistic sounds such as the crunchof the players’ pads and the roar of thecrowd.

EA’s game differs from reality in thatEA omits the players’ names on their jer-seys and assigns each player a home townthat is different from the actual player’shome town. However, users of the videogame may upload rosters of names ob-tained from third parties so that the namesdo appear on the jerseys. In such cases,EA allows images from the game contain-ing athletes’ real names to be posted on itswebsite by users. Users can further alter

1. In Brown v. Electronic Arts, Inc., No. 09–56675, 724 F.3d 1235, 1241–42, 2013 WL3927736, at *3 (9th Cir. July 31, 2013), wenoted that ‘‘there may be some work referredto as a ‘video game’ (or referred to as a‘book,’ ‘play,’ or ‘movie’ for that matter) thatdoes not contain enough of the elements con-templated by the Supreme Court [in Brown v.Entertainment Merchants Association ] to war-

rant First Amendment protection as an ex-pressive work,’’ but asserted that ‘‘[e]ven ifthere is a line to be drawn between expressivevideo games and non-expressive video games,and even if courts should at some point bedrawing that line, we have no need to drawthat line here.’’ The same holds true in thiscase.


reality by entering ‘‘Dynasty’’ mode, wherethe user assumes a head coach’s responsi-bilities for a college program for up tothirty seasons, including recruiting playersfrom a randomly generated pool of highschool athletes, or ‘‘Campus Legend’’mode, where the user controls a virtualplayer from high school through college,making choices relating to practices, aca-demics, and social life.

In the 2005 edition of the game, thevirtual starting quarterback for ArizonaState wears number 9, as did Keller, andhas the same height, weight, skin tone,hair color, hair style, handedness, homestate, play style (pocket passer), visorpreference, facial features, and school yearas Keller. In the 2008 edition, the virtualquarterback for Nebraska has these samecharacteristics, though the jersey numberdoes not match, presumably because Kel-ler changed his number right before theseason started.

Objecting to this use of his likeness,Keller filed a putative class-action com-plaint in the Northern District of Califor-nia asserting, as relevant on appeal, thatEA violated his right of publicity underCalifornia Civil Code § 3344 and Californiacommon law.2 EA moved to strike thecomplaint as a strategic lawsuit againstpublic participation (‘‘SLAPP’’) under Cali-fornia’s anti-SLAPP statute, Cal.Civ.Proc.Code § 425.16, and the district court de-nied the motion. We have jurisdiction

over EA’s appeal pursuant to 28 U.S.C.§ 1291. See Batzel v. Smith, 333 F.3d1018, 1024–26 (9th Cir.2003).3

II

[1] California’s anti-SLAPP statute isdesigned to discourage suits that ‘‘mas-querade as ordinary lawsuits but arebrought to deter common citizens fromexercising their political or legal rights orto punish them for doing so.’’ Batzel, 333F.3d at 1024 (internal quotation marksomitted). The statute provides:

A cause of action against a person aris-ing from any act of that person in fur-therance of the person’s right of petitionor free speech under the United StatesConstitution or the California Constitu-tion in connection with a public issueshall be subject to a special motion tostrike, unless the court determines thatthe plaintiff has established that there isa probability that the plaintiff will pre-vail on the claim.

Cal.Civ.Proc.Code § 425.16(b)(1). Wehave determined that the anti-SLAPPstatute is available in federal court.Thomas v. Fry’s Elecs., Inc., 400 F.3d 1206(9th Cir.2005) (per curiam).

[2] We evaluate an anti-SLAPP motionin two steps. First, the defendant must‘‘make a prima facie showing that theplaintiff’s suit arises from an act by thedefendant made in connection with a public

2. There are actually nine named plaintiffs, allformer National Collegiate Athletic Associa-tion (‘‘NCAA’’) football or basketball players:Keller, Edward O’Bannon, Jr. (UCLA), ByronBishop (University of North Carolina), Mi-chael Anderson (University of Memphis), Dan-ny Wimprine (University of Memphis), Ishma-el Thrower (Arizona State University), CraigNewsome (Arizona State University), DamienRhodes (Syracuse University), and Samuel Ja-cobson (University of Minnesota). EA’s

NCAA basketball games are also implicated inthis appeal. Because the issues are the samefor each plaintiff, all of the claims are ad-dressed through our discussion of Keller andNCAA Football.

3. We review de novo the district court’s denialof a motion to strike under California’s anti-SLAPP statute. Mindys Cosmetics, Inc. v. Da-kar, 611 F.3d 590, 595 (9th Cir.2010).


issue in furtherance of the defendant’sright to free speech under the UnitedStates or California Constitution.’’ Batzel,333 F.3d at 1024. Keller does not contestthat EA has made this threshold showing.Indeed, there is no question that ‘‘videogames qualify for First Amendment pro-tection,’’ Entm’t Merchs. Ass’n, 131 S.Ct.at 2733, or that Keller’s suit arises fromEA’s production and distribution of NCAAFootball in furtherance of EA’s protectedright to express itself through videogames.

[3] Second, we must evaluate whetherthe plaintiff has ‘‘establish[ed] a reasonableprobability that the plaintiff will prevail onhis or her TTT claim.’’ Batzel, 333 F.3d at1024. ‘‘The plaintiff must demonstrate thatthe complaint is legally sufficient and sup-ported by a prima facie showing of facts tosustain a favorable judgment if the evi-dence submitted by plaintiff is credited.’’Metabolife Int’l, Inc. v. Wornick, 264 F.3d832, 840 (9th Cir.2001) (internal quotationmarks omitted). The statute ‘‘subjects topotential dismissal only those actions inwhich the plaintiff cannot state and sub-stantiate a legally sufficient claim.’’ Nav-ellier v. Sletten, 29 Cal.4th 82, 124 Cal.Rptr.2d 530, 52 P.3d 703, 711 (2002) (inter-nal quotation marks omitted). EA did notcontest before the district court and doesnot contest here that Keller has stated aright-of-publicity claim under Californiacommon and statutory law.4 Instead, EA

raises four affirmative defenses derivedfrom the First Amendment: the ‘‘transfor-mative use’’ test, the Rogers test, the ‘‘pub-lic interest’’ test, and the ‘‘public affairs’’exemption. EA argues that, in light ofthese defenses, it is not reasonably proba-ble that Keller will prevail on his right-of-publicity claim. This appeal therefore cen-ters on the applicability of these defenses.We take each one in turn.5

A

The California Supreme Court formulat-ed the transformative use defense in Com-edy III Productions, Inc. v. Gary Sader-up, Inc., 25 Cal.4th 387, 106 Cal.Rptr.2d126, 21 P.3d 797 (2001). The defense is ‘‘abalancing test between the First Amend-ment and the right of publicity based onwhether the work in question adds signifi-cant creative elements so as to be trans-formed into something more than a merecelebrity likeness or imitation.’’ Id. 106Cal.Rptr.2d 126, 21 P.3d at 799. The Cali-fornia Supreme Court explained that‘‘when a work contains significant transfor-mative elements, it is not only especiallyworthy of First Amendment protection,but it is also less likely to interfere withthe economic interest protected by theright of publicity.’’ Id. 106 Cal.Rptr.2d126, 21 P.3d at 808. The court rejectedthe wholesale importation of the copyright‘‘fair use’’ defense into right-of-publicityclaims, but recognized that some aspects of

4. The elements of a right-of-publicity claimunder California common law are: ‘‘(1) thedefendant’s use of the plaintiff’s identity; (2)the appropriation of plaintiff’s name or like-ness to defendant’s advantage, commerciallyor otherwise; (3) lack of consent; and (4)resulting injury.’’ Stewart v. Rolling StoneLLC, 181 Cal.App.4th 664, 105 Cal.Rptr.3d98, 111 (internal quotation marks omitted).The same claim under California Civil Code§ 3344 requires a plaintiff to prove ‘‘all the

elements of the common law cause of action’’plus ‘‘a knowing use by the defendant as wellas a direct connection between the allegeduse and the commercial purpose.’’ Id.

5. Just as we did in Hilton v. Hallmark Cards,we reserve the question of whether the FirstAmendment furnishes a defense other thanthose the parties raise. 599 F.3d 894, 909 n.11 (9th Cir.2010).


that defense are ‘‘particularly pertinent.’’Id.; see 17 U.S.C. § 107; see also SOFAEntm’t, Inc. v. Dodger Prods., Inc., 709F.3d 1273, 1277–78 (9th Cir.2013) (discuss-ing the ‘‘fair use’’ defense codified in 17U.S.C. § 107).

Comedy III gives us at least five fac-tors to consider in determining whether awork is sufficiently transformative to ob-tain First Amendment protection. See J.Thomas McCarthy, The Rights of Publici-ty and Privacy § 8:72 (2d ed.2012).First, if ‘‘the celebrity likeness is one ofthe ‘raw materials’ from which an originalwork is synthesized,’’ it is more likely tobe transformative than if ‘‘the depictionor imitation of the celebrity is the verysum and substance of the work in ques-tion.’’ Comedy III, 106 Cal.Rptr.2d 126,21 P.3d at 809. Second, the work is pro-tected if it is ‘‘primarily the defendant’sown expression’’—as long as that expres-sion is ‘‘something other than the likenessof the celebrity.’’ Id. This factor requiresan examination of whether a likely pur-chaser’s primary motivation is to buy areproduction of the celebrity, or to buythe expressive work of that artist.McCarthy, supra, § 8:72. Third, to avoidmaking judgments concerning ‘‘the qualityof the artistic contribution,’’ a courtshould conduct an inquiry ‘‘more quantita-tive than qualitative’’ and ask ‘‘whetherthe literal and imitative or the creativeelements predominate in the work.’’Comedy III, 106 Cal.Rptr.2d 126, 21 P.3dat 809. Fourth, the California SupremeCourt indicated that ‘‘a subsidiary inqui-ry’’ would be useful in close cases: wheth-er ‘‘the marketability and economic valueof the challenged work derive primarilyfrom the fame of the celebrity depicted.’’Id. 106 Cal.Rptr.2d 126, 21 P.3d at 810.Lastly, the court indicated that ‘‘when anartist’s skill and talent is manifestly sub-

ordinated to the overall goal of creating aconventional portrait of a celebrity so asto commercially exploit his or her fame,’’the work is not transformative. Id.

We have explained that ‘‘[o]nly if [a de-fendant] is entitled to the [transformative]defense as a matter of law can it prevailon its motion to strike,’’ because the Cali-fornia Supreme Court ‘‘envisioned the ap-plication of the defense as a question offact.’’ Hilton, 599 F.3d at 910. As aresult, EA ‘‘is only entitled to the defenseas a matter of law if no trier of fact couldreasonably conclude that the [game] [i]snot transformative.’’ Id.

California courts have applied the trans-formative use test in relevant situations infour cases. First, in Comedy III itself, theCalifornia Supreme Court applied the testto T-shirts and lithographs bearing a like-ness of The Three Stooges and concludedthat it could ‘‘discern no significant trans-formative or creative contribution.’’ Id.106 Cal.Rptr.2d 126, 21 P.3d at 811. Thecourt reasoned that the artist’s ‘‘undenia-ble skill is manifestly subordinated to theoverall goal of creating literal, conventionaldepictions of The Three Stooges so as toexploit their fame.’’ Id. ‘‘[W]ere we todecide that [the artist’s] depictions wereprotected by the First Amendment,’’ thecourt continued, ‘‘we cannot perceive howthe right of publicity would remain a viableright other than in cases of falsified celeb-rity endorsements.’’ Id.

Second, in Winter v. DC Comics, theCalifornia Supreme Court applied the testto comic books containing characters John-ny and Edgar Autumn, ‘‘depicted as villai-nous half-worm, half-human offspring’’ butevoking two famous brothers, rockersJohnny and Edgar Winter. 30 Cal.4th881, 134 Cal.Rptr.2d 634, 69 P.3d 473, 476(2003). The court held that ‘‘the comic


books are transformative and entitled toFirst Amendment protection.’’ Id. 134Cal.Rptr.2d 634, 69 P.3d at 480. It rea-soned that the comic books ‘‘are not justconventional depictions of plaintiffs butcontain significant expressive content oth-er than plaintiffs’ mere likenesses.’’ Id.134 Cal.Rptr.2d 634, 69 P.3d at 479. ‘‘Tothe extent the drawings of the Autumnbrothers resemble plaintiffs at all, they aredistorted for purposes of lampoon, parody,or caricature.’’ Id. Importantly, the courtrelied on the fact that the brothers ‘‘arebut cartoon characters TTT in a largerstory, which is itself quite expressive.’’ Id.

Third, in Kirby v. Sega of America, Inc.,the California Court of Appeal applied thetransformative use test to a video game inwhich the user controls the dancing of‘‘Ulala,’’ a reporter from outer space alleg-edly based on singer Kierin Kirby, whose‘‘ ‘signature’ lyrical expression TTT is ‘oohla la.’ ’’ 144 Cal.App.4th 47, 50 Cal.Rptr.3d607, 609–10 (2006). The court held that‘‘Ulala is more than a mere likeness orliteral depiction of Kirby,’’ pointing to Ula-la’s ‘‘extremely tall, slender computer-gen-erated physique,’’ her ‘‘hairstyle and pri-mary costume,’’ her dance moves, and herrole as ‘‘a space-age reporter in the 25thcentury,’’ all of which were ‘‘unlike anypublic depiction of Kirby.’’ Id. at 616.‘‘As in Winter, Ulala is a ‘fanciful, creativecharacter’ who exists in the context of aunique and expressive video game.’’ Id. at618.

Finally, in No Doubt v. Activision Pub-lishing, Inc., the California Court of Ap-peal addressed Activision’s Band Hero vid-eo game. 192 Cal.App.4th 1018, 122 Cal.Rptr.3d 397, 400 (2011), petition for reviewdenied, 2011 Cal. LEXIS 6100 (Cal. June8, 2011) (No. B223996). In Band Hero,users simulate performing in a rock band

in time with popular songs. Id. at 401.Users choose from a number of avatars,some of which represent actual rock stars,including the members of the rock bandNo Doubt. Id. at 401. Activision licensedNo Doubt’s likeness, but allegedly exceed-ed the scope of the license by permittingusers to manipulate the No Doubt avatarsto play any song in the game, solo or withmembers of other bands, and even to alterthe avatars’ voices. Id. at 402. The courtheld that No Doubt’s right of publicityprevailed despite Activision’s First Amend-ment defense because the game was not‘‘transformative’’ under the Comedy IIItest. It reasoned that the video gamecharacters were ‘‘literal recreations of theband members,’’ doing ‘‘the same activityby which the band achieved and maintainsits fame.’’ Id. at 411. According to thecourt, the fact ‘‘that the avatars appear inthe context of a videogame that containsmany other creative elements[ ] does nottransform the avatars into anything otherthan exact depictions of No Doubt’s mem-bers doing exactly what they do as celebri-ties.’’ Id. The court concluded that ‘‘theexpressive elements of the game remainmanifestly subordinated to the overall goalof creating a conventional portrait of NoDoubt so as to commercially exploit itsfame.’’ Id. (internal quotation marks omit-ted).

We have also had occasion to apply thetransformative use test. In Hilton v.Hallmark Cards, we applied the test to abirthday card depicting Paris Hilton in amanner reminiscent of an episode of Hil-ton’s reality show The Simple Life. 599F.3d at 899. We observed some differ-ences between the episode and the card,but noted that ‘‘the basic setting is thesame: we see Paris Hilton, born to privi-lege, working as a waitress.’’ Id. at 911.We reasoned that ‘‘[w]hen we compare


Hallmark’s card to the video game in Kir-by, which transported a 1990s singer(catchphrases and all) into the 25th centu-ry and transmogrified her into a space-agereporter, TTT the card falls far short of thelevel of new expression added in the videogame.’’ Id. As a result, we concluded that‘‘there is enough doubt as to whether Hall-mark’s card is transformative under ourcase law that we cannot say Hallmark isentitled to the defense as a matter of law.’’Id.6

[4] With these cases in mind as guid-ance, we conclude that EA’s use of Keller’slikeness does not contain significant trans-formative elements such that EA is enti-tled to the defense as a matter of law.The facts of No Doubt are very similar tothose here. EA is alleged to have replicat-ed Keller’s physical characteristics inNCAA Football, just as the members ofNo Doubt are realistically portrayed inBand Hero. Here, as in Band Hero, usersmanipulate the characters in the perform-ance of the same activity for which theyare known in real life—playing football inthis case, and performing in a rock band inBand Hero. The context in which the activ-

ity occurs is also similarly realistic—realvenues in Band Hero and realistic de-pictions of actual football stadiums inNCAA Football. As the district courtfound, Keller is represented as ‘‘what hewas: the starting quarterback for ArizonaState’’ and Nebraska, and ‘‘the game’s set-ting is identical to where the public found[Keller] during his collegiate career: onthe football field.’’ Keller v. Elec. Arts,Inc., No. C 09–1967 CW, 2010 WL 530108,at *5 (N.D.Cal. Feb. 8, 2010).

EA argues that the district court erredin focusing primarily on Keller’s likenessand ignoring the transformative elementsof the game as a whole. Judge Thomas,our dissenting colleague, suggests thesame. See Dissent at 1285. We are un-able to say that there was any error, par-ticularly in light of No Doubt, which rea-soned much the same as the district courtin this case: ‘‘that the avatars appear inthe context of a videogame that containsmany other creative elements[ ] does nottransform the avatars into anything otherthan exact depictions of No Doubt’s mem-bers doing exactly what they do as celebri-ties.’’ No Doubt, 122 Cal.Rptr.3d at 411.7

6. We also briefly addressed the transforma-tive use test in a footnote in Hoffman v. Capi-tal Cities/ABC, Inc., 255 F.3d 1180 (9th Cir.2001). We indicated that if we had consid-ered the test, we would have concluded thatan image of Dustin Hoffman from ‘‘Tootsie’’that had been altered to make it appear likehe was wearing fashions from a decade later‘‘contained ‘significant transformative ele-ments.’ ’’ Id. at 1184 n. 2; 1182–83. ‘‘Hoff-man’s body was eliminated and a new, differ-ently clothed body was substituted in itsplace. In fact, the entire theory of Hoffman’scase rests on his allegation that the photo-graph is not a ‘true’ or ‘literal’ depiction ofhim, but a false portrayal.’’ Id. at 1184 n. 2.

7. Judge Thomas argues that the ‘‘sheer num-ber of virtual actors,’’ the absence of ‘‘anyevidence as to the personal marketing power

of Sam Keller,’’ and the relative anonymityof each individual player in NCAA Footballas compared to the public figures in otherCalifornia right-of-publicity cases all mitigatein favor of finding that the EA’s FirstAmendment rights outweigh Keller’s right ofpublicity. See Dissent at 1286–88. Thesefacts are not irrelevant to the analysis—theyall can be considered in the framework ofthe five considerations from Comedy III laidout above—but the fact is that EA elected touse avatars that mimic real college footballplayers for a reason. If EA did not thinkthere was value in having an avatar designedto mimic each individual player, it would notgo to the lengths it does to achieve realismin this regard. Having chosen to use theplayers’ likenesses, EA cannot now hide be-hind the numerosity of its potential offenses


EA suggests that the fact that NCAAFootball users can alter the characteristicsof the avatars in the game is significant.Again, our dissenting colleague agrees.See Dissent at 1286–87. In No Doubt, theCalifornia Court of Appeal noted thatBand Hero ‘‘d[id] not permit players toalter the No Doubt avatars in any re-spect.’’ Id. at 410. The court went on tosay that the No Doubt avatars ‘‘remain atall times immutable images of the realcelebrity musicians, in stark contrast tothe ‘fanciful, creative characters’ in Winterand Kirby.’’ Id. The court explained fur-ther:

[I]t is the differences between Kirby andthe instant case TTT which are determi-native. In Kirby, the pop singer wasportrayed as an entirely new charac-ter—the space-age news reporter Ulala.In Band Hero, by contrast, no matterwhat else occurs in the game during thedepiction of the No Doubt avatars, theavatars perform rock songs, the sameactivity by which the band achieved andmaintains its fame. Moreover, the ava-tars perform those songs as literal re-creations of the band members. Thatthe avatars can be manipulated to per-

form at fanciful venues including outerspace or to sing songs the real bandwould object to singing, or that the ava-tars appear in the context of a video-game that contains many other creativeelements, does not transform the ava-tars into anything other than exact de-pictions of No Doubt’s members doingexactly what they do as celebrities.

Id. at 410–11. Judge Thomas says that‘‘[t]he Court of Appeal cited character im-mutability as a chief factor distinguishing[No Doubt ] from Winter and Kirby.’’Dissent at 1287. Though No Doubt cer-tainly mentioned the immutability of theavatars, we do not read the CaliforniaCourt of Appeal’s decision as turning onthe inability of users to alter the avatars.The key contrast with Winter and Kirbywas that in those games the public figureswere transformed into ‘‘fanciful, creativecharacters’’ or ‘‘portrayed as TTT entirelynew character[s].’’ No Doubt, 122 Cal.Rptr.3d at 410. On this front, our case isclearly aligned with No Doubt, not withWinter and Kirby. We believe No Doubtoffers a persuasive precedent that cannotbe materially distinguished from Keller’scase.8,9

or the alleged unimportance of any one indi-vidual player.

8. EA further argues that No Doubt is distin-guishable because the video game company inthat case entered into a license agreementwhich it allegedly breached. However, theCalifornia Court of Appeal did not rely onbreach of contract in its analysis of whetherthe game was transformative. 122 Cal.Rptr.3d at 412 n. 7. Keller asserts here thatEA contracted away its First Amendmentrights in a licensing agreement with theNCAA that purportedly prohibited the use ofathlete likenesses. However, in light of ourconclusion that EA is not entitled to a FirstAmendment defense as a matter of law, weneed not reach this issue and leave it for thedistrict court to address in the first instance

on remand should the finder of fact determinein post-SLAPP proceedings that EA’s use istransformative.

9. In dissent, Judge Thomas suggests that thiscase is distinguishable from other right-to-publicity cases because ‘‘an individual collegeathlete’s right of publicity is extraordinarilycircumscribed and, in practical reality, non-existent’’ because ‘‘NCAA rules prohibit ath-letes from benefitting economically from anysuccess on the field.’’ Dissent at 1289.Judge Thomas commendably addresses thefairness of this structure, see Dissent at 1289n. 5, but setting fairness aside, the fact is thatcollege athletes are not indefinitely bound byNCAA rules. Once an athlete graduates fromcollege, for instance, the athlete can capitalizeon his success on the field during college in


The Third Circuit came to the sameconclusion in Hart v. Electronic Arts, Inc.,717 F.3d 141 (3d Cir.2013). In Hart, EAfaced a materially identical challenge un-der New Jersey right-of-publicity law,brought by former Rutgers quarterbackRyan Hart. See id. at 163 n. 28 (‘‘Keller issimply [Hart ] incarnated in California.’’).Though the Third Circuit was tasked withinterpreting New Jersey law, the courtlooked to the transformative use test de-veloped in California. See id. at 158 n. 23(noting that the right-of-publicity laws are‘‘strikingly similar TTT and protect similarinterests’’ in New Jersey and California,and that ‘‘consequently [there is] no issuein applying balancing tests developed inCalifornia to New Jersey’’); see also id. at165 (holding that ‘‘the Transformative UseTest is the proper analytical framework toapply to cases such as the one at bar’’).Applying the test, the court held that ‘‘theNCAA Football TTT games at issue TTT donot sufficiently transform [Hart]’s identityto escape the right of publicity claim,’’reversing the district court’s grant of sum-mary judgment to EA. Id. at 170.

As we have, the Third Circuit consid-ered the potentially transformative natureof the game as a whole, id. at 166, 169, andthe user’s ability to alter avatar character-istics, id. at 166–68. Asserting that ‘‘thelack of transformative context is evenmore pronounced here than in No Doubt,’’id. at 166, and that ‘‘the ability to modifythe avatar counts for little where the ap-peal of the game lies in users’ ability toplay as, or alongside[,] their preferredplayers or team,’’ id. at 168 (internal quo-tation marks omitted), the Third Circuitagreed with us that these changes do notrender the NCAA Football games suffi-

ciently transformative to defeat a right-of-publicity claim.

[5] Judge Ambro dissented in Hart,concluding that ‘‘the creative componentsof NCAA Football contain sufficient ex-pressive transformation to merit FirstAmendment protection.’’ Id. at 175 (Am-bro, J., dissenting). But in critiquing themajority opinion, Judge Ambro disregard-ed No Doubt and Kirby because ‘‘theywere not decided by the architect of theTransformative Use Test, the SupremeCourt of California.’’ Id. at 172 n. 4. Hethus ‘‘d[id] not attempt to explain or distin-guish the[se cases’] holdings except to notethat [he] believe[s] No Doubt, which fo-cused on individual depictions rather thanthe work in its entirety, was wrongly de-cided in light of the prior precedent inComedy III and Winter.’’ Id. We recog-nize that we are bound only by the deci-sions of a state’s highest court and not bydecisions of the state’s intermediate appel-late court when considering statelaw issuessitting in diversity jurisdiction. See In reKirkland, 915 F.2d 1236, 1238–39 (9th Cir.1990). Nonetheless, where there is nobinding precedent from the state’s highestcourt, we ‘‘must predict how the higheststate court would decide the issue usingintermediate appellate court decisions, de-cisions from other jurisdictions, statutes,treatises, and restatements as guidance.’’Id. at 1239 (emphasis added). As statedabove, we believe No Doubt in particularprovides persuasive guidance. We do notbelieve No Doubt to be inconsistent withthe California Supreme Court’s relevantdecisions, and we will not disregard a well-reasoned decision from a state’s intermedi-ate appellate court in this context. Likethe majority in Hart, we rely substantially

any number of ways. EA’s use of a collegeathlete’s likeness interferes with the athlete’s

right to capitalize on his athletic success oncehe is beyond the dominion of NCAA rule.


on No Doubt, and believe we are correct todo so.

Given that NCAA Football realisticallyportrays college football players in thecontext of college football games, the dis-trict court was correct in concluding thatEA cannot prevail as a matter of law basedon the transformative use defense at theanti-SLAPP stage. Cf. Hilton, 599 F.3d at910–11.10

B

EA urges us to adopt for right-of-public-ity claims the broader First Amendmentdefense that we have previously adopted inthe context of false endorsement claimsunder the Lanham Act: the Rogers test.11

See Brown v. Elec. Arts, 724 F.3d at 1239–41, 2013 WL 3927736, at *1–2 (applyingthe Rogers test to a Lanham Act claimbrought by former NFL player Jim Brownrelating to the use of his likeness in EA’sMadden NFL video games).

Rogers v. Grimaldi is a landmark Sec-ond Circuit case balancing First Amend-ment rights against claims under the Lan-ham Act. 875 F.2d 994 (2d Cir.1989). Thecase involved a suit brought by the famousperformer Ginger Rogers against the pro-

ducers and distributors of Ginger andFred, a movie about two fictional Italiancabaret performers who imitated Rogersand her frequent performing partner FredAstaire. Id. at 996–97. Rogers allegedboth a violation of the Lanham Act forcreating the false impression that she en-dorsed the film and infringement of hercommon law right of publicity. Id. at 997.

The Rogers court recognized that‘‘[m]ovies, plays, books, and songs are allindisputably works of artistic expressionand deserve protection,’’ but that ‘‘[t]hepurchaser of a book, like the purchaser ofa can of peas, has a right not to be misledas to the source of the product.’’ Id. ‘‘Con-sumers of artistic works thus have a dualinterest: They have an interest in notbeing misled and they also have an inter-est in enjoying the results of the author’sfreedom of expression.’’ Id. at 998. TheRogers court determined that titles of ar-tistic or literary works were less likely tobe misleading than ‘‘the names of ordinarycommercial products,’’ and thus that Lan-ham Act protections applied with less rigorwhen considering titles of artistic or liter-ary works than when considering ordinaryproducts. Id. at 999–1000. The court con-cluded that ‘‘in general the Act should beconstrued to apply to artistic works only

10. Judge Thomas asserts that ‘‘[t]he logicalconsequence of the majority view is that allrealistic depictions of actual persons, no mat-ter how incidental, are protected by a statelaw right of publicity regardless of the crea-tive context,’’ ‘‘jeopardiz[ing] the creative useof historic figures in motion pictures, books,and sound recordings.’’ Dissent at 1290. Wereject the notion that our holding has suchbroad consequences. As discussed above, oneof the factors identified in Comedy III ‘‘re-quires an examination of whether a likelypurchaser’s primary motivation is to buy areproduction of the celebrity, or to buy theexpressive work of that artist.’’ McCarthy,supra, § 8:72; see Comedy III, 106 Cal.

Rptr.2d 126, 21 P.3d at 809. Certainly thisleaves room for distinguishing between thiscase—where we have emphasized EA’s pri-mary emphasis on reproducing reality—andcases involving other kinds of expressiveworks.

11. Keller argues that EA never asked the dis-trict court to apply Rogers and has thereforewaived the issue on appeal. Although itcould have been more explicit, EA’s anti-SLAPP motion did cite Rogers and argue thatKeller had not alleged that his likeness was‘‘wholly unrelated’’ to the content of the videogame or a ‘‘disguised commercial advertise-ment,’’ the two prongs of the Rogers test.


where the public interest in avoiding con-sumer confusion outweighs the public in-terest in free expression.’’ Id. at 999.The court therefore held:

In the context of allegedly misleadingtitles using a celebrity’s name, that bal-ance will normally not support applica-tion of the [Lanham] Act unless the titlehas no artistic relevance to the underly-ing work whatsoever, or, if it has someartistic relevance, unless the title explic-itly misleads as to the source or thecontent of the work.

Id.

We first endorsed the Rogers test forLanham Act claims involving artistic orexpressive works in Mattel, Inc. v. MCARecords, Inc., 296 F.3d 894, 902 (9th Cir.2002). We agreed that, in the context ofartistic and literary titles, ‘‘[c]onsumers ex-pect a title to communicate a messageabout the book or movie, but they do notexpect it to identify the publisher or pro-ducer,’’ and ‘‘adopt[ed] the Rogers stan-dard as our own.’’ Id. Then, in E.S.S.Entertainment 2000, Inc. v. Rock StarVideos, Inc., we considered a claim by astrip club owner that video game makerRock Star incorporated its club logo intothe game’s virtual depiction of East LosAngeles, violating the club’s trademarkright to that logo. 547 F.3d 1095, 1096–98(9th Cir.2008). We held that Rock Star’suse of the logo and trade dress was pro-tected by the First Amendment and that ittherefore could not be held liable underthe Lanham Act. Id. at 1099–1101. In sodoing, we extended the Rogers test slight-ly, noting that ‘‘[a]lthough this test tradi-tionally applies to uses of a trademark inthe title of an artistic work, there is noprincipled reason why it ought not alsoapply to the use of a trademark in thebody of the work.’’ Id. at 1099.

In this case, EA argues that we shouldextend this test, created to evaluate Lan-ham Act claims, to apply to right-of-public-ity claims because it is ‘‘less prone tomisinterpretation’’ and ‘‘more protective offree expression’’ than the transformativeuse defense. Although we acknowledgethat there is some overlap between thetransformative use test formulated by theCalifornia Supreme Court and the Rogerstest, we disagree that the Rogers testshould be imported wholesale for right-of-publicity claims. Our conclusion on thispoint is consistent with the Third Circuit’srejection of EA’s identical argument inHart. See Hart, 717 F.3d at 154–58. Asthe history and development of the Rogerstest makes clear, it was designed to pro-tect consumers from the risk of consumerconfusion—the hallmark element of a Lan-ham Act claim. See Cairns v. FranklinMint Co., 292 F.3d 1139, 1149 (9th Cir.2002). The right of publicity, on the otherhand, does not primarily seek to preventconsumer confusion. See Hart, 717 F.3dat 158 (‘‘[T]he right of publicity does notimplicate the potential for consumer confu-sionTTTT’’). Rather, it primarily ‘‘protectsa form of intellectual property [in one’sperson] that society deems to have somesocial utility.’’ Comedy III, 106 Cal.Rptr.2d 126, 21 P.3d at 804. As the Cali-fornia Supreme Court has explained:

Often considerable money, time and en-ergy are needed to develop one’s promi-nence in a particular field. Years oflabor may be required before one’s skill,reputation, notoriety or virtues are suf-ficiently developed to permit an eco-nomic return through some medium ofcommercial promotion. For some, theinvestment may eventually create con-siderable commercial value in one’sidentity.

Id. 106 Cal.Rptr.2d 126, 21 P.3d at 804–05(internal quotation marks and citationsomitted).


[6] The right of publicity protects thecelebrity, not the consumer. Keller’s pub-licity claim is not founded on an allegationthat consumers are being illegally misledinto believing that he is endorsing EA orits products. Indeed, he would be hard-pressed to support such an allegation ab-sent evidence that EA explicitly misledconsumers into holding such a belief. SeeBrown v. Elec. Arts, 724 F.3d at 1242–43,2013 WL 3927736, at *4 (holding under theRogers test that, since ‘‘Brown’s likeness isartistically relevant to the [Madden NFL ]games and there are no alleged facts tosupport the claim that EA explicitly misledconsumers as to Brown’s involvement withthe games,’’ ‘‘the public interest in freeexpression outweighs the public interest inavoiding consumer confusion’’). Instead,Keller’s claim is that EA has appropriated,without permission and without providingcompensation, his talent and years of hardwork on the football field. The reasoningof the Rogers and Mattel courts—that ar-tistic and literary works should be protect-ed unless they explicitly mislead consum-ers—is simply not responsive to Keller’sasserted interests here. Cf. Hart, 717F.3d at 157 (‘‘Effectively, [EA] argues that[Hart] should be unable to assert a claimfor appropriating his likeness as a footballplayer precisely because his likeness wasused for a game about football. Adoptingthis line of reasoning threatens to turn theright of publicity on its head.’’).

We recognize that Rogers also dealt witha right-of-publicity claim-one under Ore-gon law—and applied a modified version ofits Lanham Act test in order to adapt tothat particular context:

In light of the Oregon Court’s concernfor the protection of free expression, TTT

the right of publicity [would not] bar theuse of a celebrity’s name in a movie title

unless the title was ‘‘wholly unrelated’’to the movie or was ‘‘simply a disguisedcommercial advertisement for the sale ofgoods or services.’’

875 F.2d at 1004. However, the Rogerscourt was faced with a situation in whichthe ‘‘Oregon Courts TTT [had] not deter-mined the scope of the common law rightof publicity in that state.’’ Id. at 1002. Inthe absence of clear state-law precedent,the Rogers court was ‘‘obliged to engage inthe uncertain task of predicting what theNew York courts would predict the Ore-gon courts would rule as to the contours ofa right of publicity under Oregon law.’’Id. In light of Comedy III and its progeny,we are faced with no such uncertain task.

Lastly, we note that the only circuitcourt to import the Rogers test into thepublicity arena, the Sixth Circuit, has doneso inconsistently. In Parks v. LaFaceRecords, the Sixth Circuit indicated thatthe Rogers test was appropriate for right-of-publicity claims, noting that the Re-statement (Third) of Unfair Competitionhad endorsed use of the test in that con-text. 329 F.3d 437, 461 (6th Cir.2003)(citing Restatement (Third) of UnfairCompetition § 47 cmt. c). Subsequently,in ETW Corp. v. Jireh Publishing, Inc.,the court acknowledged the Parks decisionbut did not apply the Rogers test to theOhio right-of-publicity claim in question.332 F.3d at 915, 936 & n. 17 (6th Cir.2003).Instead, the court applied a balancing testfrom comment d in the Restatement (ana-lyzing ‘‘the substantiality and market ef-fect of the use of the celebrity’s image TTT

in light of the informational and creativecontent’’), as well as the transformativeuse test from Comedy III. Id. at 937–38;see Hart, 717 F.3d at 157 (‘‘We find Parksto be less than persuasive [as to the appli-cability of the Rogers test to right-of-pub-


licity cases] given that just over a monthlater another panel of the Sixth Circuitdecided [ETW ], a right of publicity casewhere the Circuit applied the Transforma-tive Use Test.’’). Similarly, the Tenth Cir-cuit in Cardtoons, L.C. v. Major LeagueBaseball Players Ass’n, 95 F.3d 959 (10thCir.1996), and the Eighth Circuit in C.B.C.Distribution and Marketing, Inc. v. MajorLeague Baseball Advanced Media, L.P.,505 F.3d 818 (8th Cir.2007), rejected theRogers test in favor of a flexible case-by-case approach that takes into account thecelebrity’s interest in retaining his or herpublicity and the public’s interest in freeexpression. Therefore, we decline EA’sinvitation to extend the Rogers test toright-of-publicity claims.

C

California has developed two additionaldefenses aimed at protecting the reportingof factual information under state law.One of these defenses only applies to com-mon law right-of-publicity claims while theother only applies to statutory right-of-publicity claims. Montana v. San JoseMercury News, Inc., 34 Cal.App.4th 790,40 Cal.Rptr.2d 639, 640 (1995). Liabilitywill not lie for common law right-of-publici-ty claims for the ‘‘publication of matters inthe public interest.’’ Id. at 640–41. Simi-larly, liability will not lie for statutoryright-of-publicity claims for the ‘‘use of aname, voice, signature, photograph, orlikeness in connection with any news, pub-lic affairs, or sports broadcast or account,or any political campaign.’’ Cal. Civ.Code§ 3344(d). Although these defenses arebased on First Amendment concerns, Gillv. Hearst Publ’g Co., 40 Cal.2d 224, 253P.2d 441, 443–44 (1953), they are not coex-tensive with the Federal Constitution, NewKids on the Block v. News Am. Publ’g,

Inc., 971 F.2d 302, 310 n. 10 (9th Cir.1992),and their application is thus a matter ofstate law.

EA argues that these defenses give itthe right to ‘‘incorporate athletes’ names,statistics, and other biographical informa-tion’’ into its expressive works, as the de-fenses were ‘‘designed to create ‘extrabreathing space’ for the use of a person’sname in connection with matters of publicinterest.’’ Keller responds that the rightof publicity yields to free use of a publicfigure’s likeness only to the extent reason-ably required to report information to thepublic or publish factual data, and that thedefenses apply only to broadcasts or ac-counts of public affairs, not to EA’s NCAAFootball games, which do not contain orconstitute such reporting about Keller.

California courts have generally ana-lyzed the common law defense and thestatutory defense separately, but it is clearthat both defenses protect only the act ofpublishing or reporting. By its terms,§ 3344(d) is limited to a ‘‘broadcast oraccount,’’ and we have confirmed that thecommon law defense is about a publicationor reporting of newsworthy items. Hilton,599 F.3d at 912. However, most of thediscussion by California courts pertains towhether the subject matter of the commu-nication is of ‘‘public interest’’ or related to‘‘news’’ or ‘‘public affairs,’’ leaving littleguidance as to when the communicationconstitutes a publication or reporting.

For instance, in Dora v. Frontline Vid-eo, Inc., a wellknown surfer sued the pro-ducer of a documentary on surfing entitled‘‘The Legends of Malibu,’’ claiming misap-propriation of his name and likeness. 15Cal.App.4th 536, 18 Cal.Rptr.2d 790, 791(1993). The court held that the documen-tary was protected because it was ‘‘a faircomment on real life events which have


caught the popular imagination.’’ Id. at792 (internal quotation marks omitted).The court explained that surfing ‘‘has cre-ated a lifestyle that influences speech, be-havior, dress, and entertainment,’’ has had‘‘an economic impact,’’ and ‘‘has also had asignificant influence on the popular cul-ture,’’ such that ‘‘[i]t would be difficult toconclude that a surfing documentary doesnot fall within the category of public af-fairs.’’ Id. at 794–95. Similarly, in Gion-friddo v. Major League Baseball, retiredprofessional baseball players alleged thatMajor League Baseball violated their rightof publicity by displaying ‘‘factual dataconcerning the players, their performancestatistics, and verbal descriptions and vid-eo depictions of their play’’ in game pro-grams and on its website. 94 Cal.App.4th400, 114 Cal.Rptr.2d 307, 314 (2001). Thecourt reasoned that ‘‘[t]he recitation anddiscussion of factual data concerning theathletic performance of these plaintiffscommand a substantial public interest,and, therefore, is a form of expression duesubstantial constitutional protection.’’ Id.at 315. And in Montana v. San JoseMercury News, Inc., former NFL quarter-back Joe Montana brought a right-of-pub-licity action against a newspaper for sell-ing posters containing previously published

pages from the newspaper depicting themany Super Bowl victories by Montanaand the San Francisco 49ers. Montana, 40Cal.Rptr.2d at 639–40. The court foundthat ‘‘[p]osters portraying the 49’ers’ [sic]victories are TTT a form of public interestpresentation to which protection must beextended.’’ Id. at 641 (internal quotationmarks omitted).

We think that, unlike in Gionfriddo,Montana, and Dora, EA is not publishingor reporting factual data. EA’s videogame is a means by which users can playtheir own virtual football games, not ameans for obtaining information aboutreal-world football games. Although EAhas incorporated certain actual player in-formation into the game (height, weight,etc.), its case is considerably weakened byits decision not to include the athletes’names along with their likenesses and sta-tistical data. EA can hardly be consideredto be ‘‘reporting’’ on Keller’s career atArizona State and Nebraska when it is noteven using Keller’s name in connectionwith his avatar in the game. Put simply,EA’s interactive game is not a publicationof facts about college football; it is a game,not a reference source. These state lawdefenses, therefore, do not apply.12

12. We similarly reject Judge Thomas’s argu-ment that Keller’s right-of-publicity claimshould give way to the First Amendment inlight of the fact that ‘‘the essence of NCAAFootball is founded on publicly availabledata.’’ Dissent at 1288. Judge Thomas com-pares NCAA Football to the fantasy baseballproducts that the Eighth Circuit deemed pro-tected by the First Amendment in the face of aright-of-publicity claim in C.B.C. Distributionand Marketing, 505 F.3d at 823–24. Dissentat 1288. But there is a big difference be-tween a video game like NCAA Football andfantasy baseball products like those at issue inC.B.C. Those products merely ‘‘incorporate[d]the names along with performance and bio-graphical data of actual major league baseballplayers.’’ Id. at 820. NCAA Football, on the

other hand, uses virtual likenesses of actualcollege football players. It is seemingly truethat each likeness is generated largely frompublicly available data—though, as JudgeThomas acknowledges, EA solicits certain in-formation directly from schools—but findingthis fact dispositive would neuter the right ofpublicity in our digital world. Computer pro-grammers with the appropriate expertise cancreate a realistic likeness of any celebrity us-ing only publicly available data. If EA cre-ates a virtual likeness of Tom Brady usingonly publicly available data—public imagesand videos of Brady—does EA have free reignto use that likeness in commercials withoutviolating Brady’s right of publicity? We thinknot, and thus must reject Judge Thomas’s


III

Under California’s transformative usedefense, EA’s use of the likenesses of col-lege athletes like Samuel Keller in itsvideo games is not, as a matter of law,protected by the First Amendment. Wereject EA’s suggestion to import the Rog-ers test into the right-of-publicity arena,and conclude that statelaw defenses forthe reporting of information do not pro-tect EA’s use.

AFFIRMED.

THOMAS, Circuit Judge, dissenting:

Because the creative and transformativeelements of Electronic Arts’ NCAA Foot-ball video game series predominate overthe commercial use of the athletes’ like-nesses, the First Amendment protects EAfrom liability. Therefore, I respectfullydissent.

I

As expressive works, video games areentitled to First Amendment protection.Brown v. Entm’t Merchs. Ass’n, ––– U.S.––––, 131 S.Ct. 2729, 2733, 180 L.Ed.2d 708(2011). The First Amendment affords ad-ditional protection to NCAA Football be-cause it involves a subject of substantialpublic interest: collegiate football. Moorev. Univ. of Notre Dame, 968 F.Supp. 1330,1337 (N.D.Ind.1997). Because football is a

matter of public interest, the use of theimages of athletes is entitled to constitu-tional protection, even if profits are in-volved. Montana v. San Jose MercuryNews, Inc., 34 Cal.App.4th 790, 40 Cal.Rptr.2d 639, 643 n. 2 (1995); see also Cal.Civ.Code § 3344(d) (exempting from liabil-ity the ‘‘use of a name TTT or likeness inconnection with any TTT public affairs, orsports broadcast or account’’).

Where it is recognized, the tort of ap-propriation is a creature of common law orstatute, depending on the jurisdiction.However, the right to compensation forthe misappropriation for commercial use ofone’s image or celebrity is far from abso-lute. In every jurisdiction, any right ofpublicity must be balanced against the con-stitutional protection afforded by the FirstAmendment. Courts have employed a va-riety of methods in balancing the rights.See, e.g., Doe v. TCI Cablevision, 110S.W.3d 363, 374 (Mo.2003) (en banc). TheCalifornia Supreme Court applies a ‘‘trans-formative use’’ test it formulated in Come-dy III Productions, Inc. v. Gary Saderup,Inc., 25 Cal.4th 387, 106 Cal.Rptr.2d 126,21 P.3d 797 (2001).1

As the majority properly notes, thetransformative use defense is ‘‘a balancingtest between the First Amendment andthe right of publicity based on whether thework in question adds significant creativeelements so as to be transformed intosomething more than a mere celebrity like-

point about the public availability of much ofthe data used given that EA produced andused actual likenesses of the athletes involved.

1. I agree with the majority that the test artic-ulated in Rogers v. Grimaldi, 875 F.2d 994 (2dCir.1989), should not be employed in thiscontext. The Rogers test is appropriately ap-plied in Lanham Act cases, where the primaryconcern is with the danger of consumer con-fusion when a work is depicted as something

it is not. 15 U.S.C. § 1125(a)(1). However,the right of publicity is an economic right touse the value of one own’s celebrity. Zacchi-ni v. Scripps–Howard Broad. Co., 433 U.S.562, 576–77, 97 S.Ct. 2849, 53 L.Ed.2d 965(1977). Therefore, a more nuanced balancingis required. In our context, I believe thetransformative use test—if correctly appliedto the work as a whole—provides the properanalytical framework.


ness or imitation.’’ Comedy III, 106 Cal.Rptr.2d 126, 21 P.3d at 799. The rationalefor the test, as the majority notes, is that‘‘when a work contains significant transfor-mative elements, it is not only especiallyworthy of First Amendment protection,but it is also less likely to interfere withthe economic interest protected by theright of publicity.’’ Id. 106 Cal.Rptr.2d126, 21 P.3d at 808.

The five considerations articulated inComedy III, and cited by the majority, arewhether: (1) the celebrity likeness is oneof the raw materials from which an origi-nal work is synthesized; (2) the work isprimarily the defendant’s own expressionif the expression is something other thanthe likeness of the celebrity; (3) the literaland imitative or creative elements predom-inate in the work; (4) the marketabilityand economic value of the challenged workderives primarily from the fame of thecelebrity depicted; and (5) an artist’s skilland talent has been manifestly subordinat-ed to the overall goal of creating a conven-tional portrait of a celebrity so as to com-mercially exploit the celebrity’s fame. Id.106 Cal.Rptr.2d 126, 21 P.3d at 809–10.

Although these considerations are oftendistilled as analytical factors, Justice Moskwas careful in Comedy III not to labelthem as such. Indeed, the focus of Come-dy III is a more holistic examination ofwhether the transformative and creativeelements of a particular work predominateover commercially based literal or imita-tive depictions. The distinction is critical,because excessive deconstruction of Come-dy III can lead to misapplication of thetest. And it is at this juncture that I mustrespectfully part ways with my colleaguesin the majority.

The majority confines its inquiry to howa single athlete’s likeness is represented inthe video game, rather than examining thetransformative and creative elements inthe video game as a whole. In my view,this approach contradicts the holistic anal-ysis required by the transformative usetest. See Hart v. Elec. Arts, Inc., 717 F.3d141, 170–76 (3d Cir.2013) (Ambro, J., dis-senting).2 The salient question is whetherthe entire work is transformative, andwhether the transformative elements pre-dominate, rather than whether an individu-al persona or image has been altered.

When EA’s NCAA Football video gameseries is examined carefully, and put inproper context, I conclude that the crea-tive and transformative elements of thegames predominate over the commercialuse of the likenesses of the athletes withinthe games.

A

The first step in conducting a balancingis to examine the creative work at issue.At its essence, EA’s NCAA Football is awork of interactive historical fiction. Al-though the game changes from year toyear, its most popular features predomi-nately involve role-playing by the gamer.For example, a player can create a virtualimage of himself as a potential collegefootball player. The virtual player decideswhich position he would like to play, thenparticipates in a series of ‘‘tryouts’’ orcompetes in an entire high school season togauge his skill. Based on his performance,the virtual player is ranked and availableto play at select colleges. The playerchooses among the colleges, then assumesthe role of a college football player. He

2. I agree fully with Judge Ambro’s excellentdissent in Hart, which describes the analytic

flaws of applying a transformative use testoutside the context of the work as a whole.


also selects a major, the amount of time hewishes to spend on social activities, andpractice—all of which may affect the virtu-al player’s performance. He then playshis position on the college team. In someversions of the game, in another mode, thevirtual player can engage in a competitionfor the Heisman Trophy. In another pop-ular mode, the gamer becomes a virtualcoach. The coach scouts, recruits, anddevelops entirely fictional players for histeam. The coach can then promote theteam’s evolution over decades of seasons.

The college teams that are supplied inthe game do replicate the actual collegeteams for that season, including virtualathletes who bear the statistical and phys-ical dimensions of the actual college ath-letes. But, unlike their professional foot-ball counterparts in the Madden NFLseries, the NCAA football players in thesegames are not identified.

The gamers can also change their abili-ties, appearances, and physical characteris-tics at will. Keller’s impressive physicallikeness can be morphed by the gamer intoan overweight and slow virtual athlete,with anemic passing ability. And the gam-er can create new virtual players out ofwhole cloth. Players can change teams.The gamer could pit Sam Keller againsthimself, or a stronger or weaker version ofhimself, on a different team. Or the gam-er could play the game endlessly withoutever encountering Keller’s avatar. In thesimulated games, the gamer controls notonly the conduct of the game, but theweather, crowd noise, mascots, and otherenvironmental factors. Of course, onemay play the game leaving the playersunaltered, pitting team against team. But,in this context as well, the work is one ofhistoric fiction. The gamer controls theteams, players, and games.

Applying the Comedy III considerationsto NCAA Football in proper holistic con-text, the considerations favor FirstAmendment protection. The athletic like-nesses are but one of the raw materialsfrom which the broader game is construct-ed. The work, considered as a whole, isprimarily one of EA’s own expression.The creative and transformative elementspredominate over the commercial use oflikenesses. The marketability and eco-nomic value of the game comes from thecreative elements within, not from thepure commercial exploitation of a celebrityimage. The game is not a conventionalportrait of a celebrity, but a work consist-ing of many creative and transformativeelements.

The video game at issue is much akin tothe creations the California SupremeCourt found protected in Winter v. DCComics, 30 Cal.4th 881, 134 Cal.Rptr.2d634, 69 P.3d 473, 476 (2003), where the twofabled guitarists Johnny and Edgar Win-ter were easily identifiable, but depicted aschimeras. It is also consistent with theCalifornia Court of Appeal’s decision inKirby v. Sega of America, Inc., 144 Cal.App.4th 47, 50 Cal.Rptr.3d 607, 609–10(2006), where a character easily identifiedas singer Kierin Kirby, more popularlyknown as Lady Miss Kier, was trans-formed into a ‘‘ ‘fanciful, creative charac-ter’ who exists in the context of a uniqueand expressive video game.’’ Id. at 618.So, too, are the virtual players who popu-late the world of the NCAA Football ser-ies.

No Doubt v. Activision Publishing, Inc.,192 Cal.App.4th 1018, 122 Cal.Rptr.3d 397(2011), is not to the contrary. The literalrepresentations in No Doubt were not, andcould not be, transformed in any way. In-deed, in No Doubt, the bandmembers


posed for motion-capture photography toallow reproduction of their likenesses, id.at 402, and the Court of Appeal under-scored the fact that the video game did not‘‘permit players to alter the No Doubtavatars in any respect’’ and the avatarsremained ‘‘at all times immutable imagesof the real celebrity musicians,’’ id. at 410.The Court of Appeal cited character im-mutability as a chief factor distinguishingthat case from Winter and Kirby. Id.Unlike the avatars in No Doubt, the virtualplayers in NCAA Football are completelymutable and changeable at the whim of thegamer. The majority places great relianceon No Doubt as support for its propositionthat the initial placement of realistic ava-tars in the game overcomes the FirstAmendment’s protection, but the Court ofAppeal in No Doubt rejected such acramped construction, noting that ‘‘evenliteral reproductions of celebrities may be‘transformed’ into expressive works basedon the context into which the celebrityimage is placed.’’ Id. at 410 (citing Come-dy III, 106 Cal.Rptr.2d 126, 21 P.3d at797).3

Unlike the majority, I would not punishEA for the realism of its games and forthe skill of the artists who created realisticsettings for the football games. Majorityop. at 1279 n. 10. That the lifelike roar ofthe crowd and the crunch of pads contrib-ute to the gamer’s experience demon-strates how little of NCAA Football isdriven by the particular likeness of SamKeller, or any of the other plaintiffs, rath-er than by the game’s artistic elements.

In short, considering the creative ele-ments alone in this case satisfies the trans-formative use test in favor of First Amend-ment protection.

B

Although one could leave the analysiswith an examination of the transformativeand creative aspects of the game, a truebalancing requires an inquiry as to theother side of the scales: the publicity rightat stake. Here, as well, the NCAA Foot-ball video game series can be distinguishedfrom the traditional right of publicitycases, both from a quantitative and a quali-tative perspective.

As a quantitative matter, NCAA Foot-ball is different from other right of publici-ty cases in the sheer number of virtualactors involved. Most right of publicitycases involve either one celebrity, or afinite and defined group of celebrities.Comedy III involved literal likenesses ofthe Three Stooges. Hilton v. HallmarkCards, 599 F.3d 894, 909–12 (9th Cir.2009),involved the literal likeness of Paris Hil-ton. Winter involved the images of therock star brother duo. Kirby involved thelikeness of one singer. No Doubt focusedon the likenesses of the members of aspecific legendary band.

In contrast, NCAA Football includes notjust Sam Keller, but thousands of virtualactors. This consideration is of particularsignificance when we examine, as instruct-ed by Comedy III, whether the source ofthe product marketability comes fromcreative elements or from pure exploita-tion of a celebrity image. 106 Cal.Rptr.2d126, 21 P.3d at 810. There is not, at thisstage of the litigation, any evidence as tothe personal marketing power of Sam Kel-ler, as distinguished from the appeal of thecreative aspects of the product. Regard-less, the sheer number of athletes involved

3. Of course, to the extent that the Court ofAppeal’s opinion in No Doubt may be read tobe in tension with the transformative use test

as articulated by the California SupremeCourt in Comedy III and Winter, it must yield.


inevitably diminish the significance of thepublicity right at issue. Comedy III in-volved literal depictions of the ThreeStooges on lithographs and T-shirts. Win-ter involved characters depicted in a comicstrip. Kirby and No Doubt involved pivot-al characters in a video game. The com-mercial image of the celebrities in eachcase was central to the production, and itscontact with the consumer was immediateand unavoidable. In contrast, one couldplay NCAA Football thousands of timeswithout ever encountering a particularavatar. In context of the collective, anindividual’s publicity right is relatively in-significant. Put another way, if an anony-mous virtual player is tackled in an imagi-nary video game and no one notices, isthere any right of publicity infringed atall?

The sheer quantity of the virtual playersin the game underscores the inappropri-ateness of analyzing the right of publicitythrough the lens of one likeness only.Only when the creative work is consideredin complete context can a proper analysisbe conducted.

As a qualitative matter, the essence ofNCAA Football is founded on publiclyavailable data, which is not protected byany individual publicity rights. It is truethat EA solicits and receives informationdirectly from colleges and universities.But the information is hardly proprietary.Personal vital statistics for players arefound in college programs and mediaguides. Likewise, playing statistics areeasily available. In this respect, the in-formation used by EA is indistinguishable

from the information used in fantasy ath-letic leagues, for which the First Amend-ment provides protection, C.B.C. Distri-bution & Mktg., Inc. v. Major LeagueBaseball Advanced Media, L.P., 505 F.3d818, 823–24 (8th Cir.2007), or much be-loved statistical board games, such asStrat–O–Matic. An athlete’s right ofpublicity simply does not encompass pub-licly available statistical data. See, e.g.,IMS Health Inc. v. Sorrell, 630 F.3d 263,271–72 (2d Cir.2010) (‘‘The First Amend-ment protects ‘[e]ven dry information, de-void of advocacy, political relevance, orartistic expression.’ ’’ (quoting UniversalCity Studios, Inc. v. Corley, 273 F.3d429, 446 (2d Cir.2001)) (alteration in origi-nal)).4

Further, the structure of the game isnot founded on exploitation of an individu-al’s publicity rights. The players are un-identified and anonymous. It is true thatthird-party software is available to quicklyidentify the players, but that is not part ofthe EA package. And the fact that theplayers can be identified by the knowl-edgeable user by their position, team, andstatistics is somewhat beside the point.The issue is whether the marketability ofthe product is driven by an individual ce-lebrity, or by the game itself. ComedyIII, 106 Cal.Rptr.2d 126, 21 P.3d at 810.Player anonymity, while certainly not acomplete defense, bears on the question ofhow we balance the right of publicityagainst the First Amendment. This fea-ture of the game places it in stark contrastwith No Doubt, where the whole point ofthe enterprise was the successful commer-cial exploitation of the specifically identi-fied, world-famous musicians.

4. Contrary to the majority’s suggestion, I donot claim that any use of a likeness foundedon publicly available information is transfor-mative. Majority op. 1283–84 n. 12. The ma-jority’s analogy to a commercial featuring

Tom Brady is inapposite for at least two rea-sons: (1) a commercial is not interactive inthe same way that NCAA Football is, and (2)Brady’s marketing power is well established,while that of the plaintiffs is not.


Finally, as a qualitative matter, the pub-licity rights of college athletes are re-markably restricted. This consideration iscritical because the ‘‘right to exploit com-mercially one’s celebrity is primarily aneconomic right.’’ Gionfriddo v. MajorLeague Baseball, 94 Cal.App.4th 400, 114Cal.Rptr.2d 307, 318 (2001). NCAA rulesprohibit athletes from benefitting econom-ically from any success on the field.NCAA Bylaw 12.5 specifically prohibitscommercial licensing of an NCAA ath-lete’s name or picture. NCAA, 2012–13NCAA Division I Manual § 12.5.2.1(2012). Before being allowed to competeeach year, all Division I NCAA athletesmust sign a contract stating that they un-derstand the prohibition on licensing andaffirming that they have not violated anyamateurism rules. In short, even if anathlete wished to license his image to EA,the athlete could not do so without de-stroying amateur status. Thus, an indi-vidual college athlete’s right of publicity is

extraordinarily circumscribed and, in prac-tical reality, nonexistent.5

In sum, even apart from consideration oftransformative elements, examination ofthe right of publicity in question also re-solves the balance in favor of the FirstAmendment. The quantity of players in-volved dilutes the commercial impact ofany particular player and the scope of thepublicity right is significantly reduced bythe fact that: (1) a player cannot own theindividual, publicly available statistics onwhich the game is based; (2) the playersare not identified in the game; and (3)NCAA college athletes do not have theright to license their names and likenesses,even if they chose to do so.6

II

Given the proper application of thetransformative use test, Keller is unlikelyto prevail. The balance of interests fallssquarely on the side of the First Amend-

5. The issue of whether this structure is fair tothe student athlete is beyond the scope of thisappeal, but forms a significant backdrop tothe discussion. The NCAA received revenuesof $871.6 million in fiscal year 2011–12, with81% of the money coming from television andmarketing fees. However, few college ath-letes will ever receive any professional com-pensation. The NCAA reports that in 2011,there were 67,887 college football players.Of those, 15,086 were senior players, and only255 athletes were drafted for a professionalteam. Thus, only 1.7% of seniors receivedany subsequent professional economic com-pensation for their athletic endeavors.NCAA, Estimated Probability of Competing inAthletics Beyond the High School Interscholas-tic Level (2011), available at http://www.ncaa.org/wps/wcm/connect/public/ncaa/pdfs/2011/2011vprobabilityvofvgoingvpro.

And participation in college football cancome at a terrible cost. The NCAA reportsthat, during a recent five-year period, collegefootball players suffered 41,000 injuries, in-cluding 23 non-fatal catastrophic injuries and

11 fatalities from indirect catastrophic inju-ries. NCAA, Football Injuries: Data From the2004/05 to 2008/09 Seasons, available at http://www.ncaa.org/wps/wcm/connect/public/ncaa/healthvandvsafety/sportsvinjuries/resources/footballvinjuries.

6. While acknowledging that these consider-ations are relevant to the Comedy III analysis,the majority says EA’s use of realistic like-nesses demonstrates that it sees ‘‘value inhaving an avatar designed to mimic each indi-vidual player.’’ Majority op. at 1276 n. 7. Butthe same is true of any right of publicity case.The defendants in Winter saw value in usingcomic book characters that resembled theWinter brothers. Andy Warhol—whose por-traits were discussed in Comedy III—saw val-ue in using images of celebrities such as Mari-lyn Monroe. In those cases, the products’marketability derives primarily from the crea-tive elements, not from a pure commercialexploitation of a celebrity image. The same istrue of NCAA Football.


ment. The stakes are not small. Thelogical consequence of the majority view isthat all realistic depictions of actual per-sons, no matter how incidental, are pro-tected by a state law right of publicityregardless of the creative context. Thislogic jeopardizes the creative use of histor-ic figures in motion pictures, books, andsound recordings. Absent the use of actu-al footage, the motion picture ForrestGump might as well be just a box ofchocolates. Without its historical charac-ters, Midnight in Paris would be reducedto a pedestrian domestic squabble. Themajority’s holding that creative use of real-istic images and personas does not satisfythe transformative use test cannot be rec-onciled with the many cases affording suchworks First Amendment protection.7 I re-spectfully disagree with this potentiallydangerous and out-of-context interpreta-tion of the transformative use test.

For these reasons, I respectfully dissent.

,

UNITED STATES of America,Plaintiff–Appellee,

v.

Victor Manuel VALENZUELA–AR-ISQUETA, aka Victor Valenzuela–

Arisqueta, Defendant–Appellant.

No. 12–10596.


Argued and Submitted June 12, 2013.

Filed Aug. 1, 2013.Background: Defendant appealed fromorder of the United States District Court

for the District of Arizona, Jennifer G.Zipps, J., which rejected his guilty plea toillegal reentry into the United States.

Holding: The Court of Appeals, Callahan,Circuit Judge, held that defendant was notsubjected to double jeopardy.

Affirmed.

1. Criminal Law O1023(3)

A pretrial order rejecting a claim ofdouble jeopardy may be immediately ap-pealable under the collateral order doc-trine, as long as the double jeopardy claimis colorable. U.S.C.A. Const.Amend. 5.

2. Sentencing and Punishment O794

For a court to impose an enhancementfor illegal reentry into the United Statesbased on a prior conviction, the felonyconviction must precede the defendant’sremoval from the country. Immigrationand Nationality Act, §§ 276(b), 8 U.S.C.A.§ 1326(b).

3. Double Jeopardy O57

District court did not subject defen-dant to double jeopardy by rejecting hisguilty plea to illegal reentry into the Unit-ed States and offering him the choice ofagain pleading guilty or proceeding to tri-al; plea colloquy was defective, in thatdefendant was not advised of maximumpenalty for the offense for which he wascharged, and even if jeopardy had attachedwhen magistrate judge accepted defen-dant’s guilty plea without an adequate col-loquy, it did not terminate with rejection ofhis plea, since he retained options of pro-ceeding to trial, pleading guilty, or seeking

7. See, e.g., ETW Corp. v. Jireh Publ’g, Inc., 332F.3d 915 (6th Cir.2003) (affording FirstAmendment protection to an artist’s use ofphotographs of Tiger Woods); J. Thomas

McCarthy, The Rights of Publicity and Privacy§ 8.65 (2013 ed.) (collecting cases); Hart, 717F.3d at 173 (Ambro, J., dissenting) (describingcases). Football.

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