F OR P UBLICATION



### UNIT E D ST AT E S CO URT O F APPE AL S FO R T H E NINT H CIRCUIT

J A M E S “J I M ” B R

O W N , Plaintiff-Appellant

,

v

.

E L E C T R O N I C A R

T S , I N C ., a Delaware corporation, Defendant-Appellee

. N o. 09-56675

D.C. No. 2:09-cv-01598- F MC-RZ

OPI NI ON

A ppeal from the United States District Court for the Central District of California F lorence-Marie Cooper, District J udg e, Presiding

Arg ued and Submitted F ebruary 1 5, 2011—Pasadena, California Submission Vacated F ebruary 18, 2011 Arg ued and Resubmitted J uly 13, 2012—San F rancisco, California

F iled J uly 31, 2013

B efore: Sidney

R. Thomas and J ay

S. B y bee, Circuit J udg es, and Gordon J . Quist, Senior District J udg e. *

Opinion by

J udg e B y bee

* T h e Ho n o rab le Go rd o n J

. Q u i st, S en io r D istrict J u d g e f or th e U .S. District Co u

rt f o r W estern Mich ig an , sittin g b y d esig n atio n

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SUMMARY * *

Lanham Act

The panel a ffirmed the d istrict court’s dismissal of retired
p rofessional football play er J im’s B r o wn’s action alleg ing that E lectronic Arts, I n c., violated § 43 of the L anham A ct throug h the use o f his likeness in its Madden NFL series o f video g ames.

The panel held that because the video g a m e s were

ex p ressive w orks, the d istrict c o urt correctly appli ed the Rogers test for balancin g b etween trademark and similar ri gh t s , o n the one hand, and F irst Amendment rig hts, on the other. The panel held that n eith er t he “likelihood o f confusion” test nor the “alternative mea n s ” test was the appropriate framework. Apply ing the R ogers test, the panel concluded that B rown’s likeness was artistically relev an t t o the g a mes and that there were no alleg ed facts to support the claim that Electronic Arts e x plicitly misled c o n s u mers as to B rown’s involvement with the g ames. According ly

, the
pu b lic interest in free ex pression outweig hed the public interest in avoiding consumer confusion.

** T h is su m m ary co n stitu

t es n o p ar t o f t h e o p in io n o f th e co u rt. It h as b een p rep ared b y

co u rt staf

f f o r th e co n v en i en ce o f

th e read er.B R O W N V

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COUNSEL

Kelli L

. Sag er (argued), Alonz o W ickers I V, Anna R. Z u sman, L isa J

. Kohn and Karen A. Henry
, Davis W rig ht Tremaine L L P, L os Ang eles, California; Robert A. Van Nest, Steven A

. Hirsch and R. J ames Slaug hter, Keker & Van Nest, L L P, San F r ancisco, California, for appellee.

Ronald S. Katz (arg

ued) and Ry an S. Hilbert, Manatt, Phelps & Phillips, L L P, Palo Alto, California; Mark S. L e e, Craig J

. De Recat and B enjamin G. Shatz

, Manatt, Phelps & Phillips, L L P, L os Ang eles, California, for appellant.

Nathan S i e g el and L ee L evine, L e vine Sullivan Koch & Schulz

, L .L .P., W ashing ton, District of Columbia, for amici curiae Advance Publications

, A& E Television Networks, Allied Daily Newspapers of W ashing to n , Association o f American Publishers, A ctivision, California N e w spaper Publishers As s o ciation, Capcom USA, Comic B ook L eg al D efense F und, E! Entertainment Television, ESPN, F irst Amendment Coalition

, First Amendment Project, F reedom Communications, T he Gannett Comp an y , Gawker Media, Hy brid F ilms, I TV Studios, Konami Dig ital Entertain ment, The L os Ang eles Times, The McClatchy C o m p a ny , Namco B andai Games America, O rig inal Prod u c t i ons, The PressEnterprise Company
, Radio T e levision Dig ital News Association, Sirens Media, Take T w o I n teractiv e Software, Thq, Viacom, The W ashing ton Newspaper Publishers Association, and W enner Media. * * *

*** T h e m o tio n o f t h e s e o r g an izatio n s to f ile th eir am icu s brief is G RANTED

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OP INION

B YB EE, Circuit J udg e:

Plaintiff–Appellant J ames “ J im” B rown alleg es that D e f e n d a nt–Appellee E lectronic Arts, I n c. (“EA”) has v i o l a t e d § 43(a) of the L anham Act, 15 U.S.C. § 1125(a), throug h the

use of B rown’s likeness in E A’s M adden NFL ser ies o f fo o t b a l l v ideo g ames. I n r elevant part, § 43(a) provides for a civil cause of action ag ainst:

[ a] n y p e r son who, on or in connection with
any g oods or ser vices, o r any container for
g oods, us e s i n commerce any word, term, name, sy mbol, or device, or any

combination thereof, o r any false desig n at i o n of orig in, false or misleading description of fact, or false

or misleading representation of fact, which

. . . is likely to cause c o nfusion, or to cause mistake, or t o deceive as to the affiliation, connection, or association o f such person with another p e r s on, or as to the orig in, sponsorship, or a

pproval of h is or her g oo d s , services, or commercia l activities by another person[ .]

1 5 U.S.C. § 1125(a)(1). Althoug h c laims under § 4 3 ( a )
g enerally relat e t o t h e use o f trademarks or trade dress to

c a u s e c o n s u m er confusion over affiliation or endorsement, w e have held that claims can also be b r oug ht u n d e r § 43(a) relating to the u s e of a p ublic fig ure’s persona, likeness, o rB R O W N V

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o t h e r uniquely disting uishing characteristic to cause suc h confusion. 1

Section 43(a) protects the public’s interest in being free f r o m c o n s u m e r c o n f

u s i o n a b o u t a f

f i l i a t i o n s a n d endorsements, but this pr o t ection is limited by the F irst A m e n dment, particularly if the product involved is a n

ex p ressi v e w o rk. Recog niz ing the need to balance the public’s F irst Amendment interest in free ex pression ag ainst the public ’s interest in being free from consumer confusion about affiliation and endorsement, the Second Circuit created the “ Rogers test” in Rogers v. G r imaldi

, 875 F .2d 994 (2d Cir. 1989). Under the Rogers test, § 43(a) will not be a pplied
to ex pressive works “unless the [ use of the trademark or other identify ing material] has no artistic relevance to the underly ing work whatsoever, o r , if it has some artistic

r e levance, unless the [ use of trademark or other identify i n g material] ex plicitly misleads as to the source or the content o f the work.” Id. at 999. W e adopted the Rogers test in Mattel, Inc. v. MCA Records, Inc. , 296 F .3d 894 (9th Cir. 2002).

Apply ing the Rogers test, the district co u r t in this case g ranted E A’s motion to d ismiss B rown’s L anham Act c laim, finding that B rown had n ot alleg ed facts that satisfied either

1 See W aits v. Frito -La

y, In c. , 9 7 8 F.2 d 1 09 3
, 1 1 1 0 (9 th Cir. 1 9 9 2 ) (“ A f alse en d o rsem en t claim based o n t h e u n au th o rized u s e o f a celeb rity ’ s id en tity is a ty

p e o f f alse asso ciatio n claim

, f

o r it alleg es th e m isu s e o f a trad em ark

, i.e.
, a s y

m b o l o r d ev ice su ch as a v isu al lik en ess, v o cal im itatio n , o r o th er u n iq u ely d i s tin g u ish in g ch aracteristic, w h i ch is lik ely
to co n f u se co n su m ers as to th e plain tif

f ’ s sp o n so rsh i p or ap p ro v al o f th e p ro d u ct.”); see a lso W

h ite v. S a msu n g E l ecs. Am., In c. , 9 7 1 F.2 d 1 3 9 5
, 1 3 9 9

– 1 4 0 0 (9 t h Cir. 1 9 9 2 ) (“ In cases i n v o lv in g co n f u sio n ov er

en d o rsem en t b y a celeb rity p lain t if f

, ‘m a r k ’ m ean s th e celeb rity ’ s p erso n a.”).B R O W N V

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condition that allow a § 43(a) claim to succeed u nder the Rogers test. Brown v. Elec. Arts, I n c

. , No. 2:09-cv-01598, 2009 U.S. Dist. L EXI S 131387, a t *8–15 (C.D. Cal. Sept. 23, 2009). B rown appealed, challeng ing the applicability of the Rogers test, the district court’s analy sis under the Rogers test, and the suitability of his case for resolution without additional factfinding . W e affirm the district court’s decision.

I

J im B rown is wide l y r e ga rded as one of the best
pr o f e s sional f ootball play ers of all time. He starred for the Cleveland B r owns from 1957 to 1965 and was inducted into the National F ootball L eag ue (“NF L ”) Hall of F ame after his retirement. After h i s N FL career, B rown also achieved

success a s an entertainer a n d public serva n t. There is no question that he is a public f ig u r e w hose persona can be deploy ed for economic benefit.

EA is a manufacturer, distributor and seller of video
g ames and has produced the Madden NFL series o f football video g ames since 1989. The M a d d e n NFL series a llows

u s e rs of the g ames to control avatars represent i n g professional f

ootba l l play e rs a s those avatars participate in simulated NF L g ames. I n a ddition to these simulated g ames, Madden NFL a lso enables u sers to participate in other aspects of a simulated NF L by

, for ex ample, creating a n d m a n a g ing

a franchise. Each v ersion of Madden NFL includes the
current y ear’s NF L teams with the teams’ current rosters. Each avatar on a current tea m i s desig n ed to mirror a real
current NF L play er, including the play er’s n a me , j ersey

n u mber, phy sical attributes, and phy sical skills. S o m e versions of the g ame also include historical and all

- t i m e teams. Unlike for play ers on the current NF L teams, noB R O W N V

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n a m e s are used for the play e rs on the historical and all-t i m e teams, but these play e rs a re r e c og n iz able due to the accuracy of their team affiliations, play ing p osition s , a g es, heig hts, weig hts, a

bility levels, a

nd o ther attributes. Althoug h EA
enters into licensing ag reements w ith the NF L and N F L Play ers Association (“NF L PA”) for its use of the names and likenesses of current NF L p lay e rs, B rown, as a former p lay er, is not covered by those ag reements and has n ever entered into
any o ther ag reement a llowing EA t o u s e his likeness in Madden NFL

. B r own asserts that EA has used his likeness in several versions of the g ame dating back at least to 2001 but that he has never been compensated.

B r own broug ht suit in the United States D istrict Court for the Central D istrict o f C a l i fornia, claiming that EA’s use o f his likeness in the M

adden NFL g ames violated § 43(a) of the L anham Act. B r own also broug ht c l a i m s under California law for invasion of privacy and u nfair and unlawful business practices. EA filed a motion to dismi s s p u r suant to Rule 12(b)(6) of the F e d eral Rules of Civil P r o c e d u re, and the district court applied the Rogers test and dismissed B rown’s L anham Act c laim. B rown , 2009 U.S. Dist. L E X I S 131387,
at *9–15. The d istrict court declined to ex ercise supplemental jurisdiction over the state-law claims. Id. at *15–16. B rown f i l e d a timely appeal of the d ismissal of his L anham A ct claim

. 2 W e have jurisdiction pursuant to 28 U.S.C. § 1291.

2 W e em p h asize t h at th is ap p eal relates o n ly t o B r o w n ’s La n h am A ct claim

. W er e t h e s tate cau s es o f actio n bef o re u s, o u r an aly sis m ay b e d if f eren t an d a dif

f eren t o u tco m e m ay o b tain

. S

ee, e.g

. Keller v. Elec. Arts, In c. , No . 1 0

- 1 5 3 8 7
, slip o p

. at 6 (9 th Cir. Ju ly 3 1
, 2 0 1 3 ) (af f i rm in g a d istrict co u rt’ s ru lin g th at EA h ad n o First A m en d m en t d ef en se ag ain st th e state- law rig h t- o f

- p u b licity claim s of f

o r m e r c o lleg e f

o o tb all p lay erB R O W N V

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W e r eview the district court’s dismis s a l de novo. Kahle v

. Gonzales

, 487 F

. 3d 697, 699 (9th Cir. 2007).

II

The leg al issues raised by this case are not novel, but their lack of novelty

should not be mistaken f or lack of difficulty

. Sig nificant judicial resources, including the resources of this court, ha ve been ex pended try ing to find the appropriate balance between trademark and similar rig hts, on the o ne hand, and F irst Amendment r ig hts, on the othe r

. Br o wn sug g ests that the case law h as p roduced a lack of c larity as to the appropriate leg al framework t o a p p l y in this case a nd
urg es us to consider the “likelihood of confusion” test and the “altern a t i v e means” test in addition to the Rogers test. W e

are convinced that the Rogers test remains t h e appropriate framework.

A d ecade ag o, in Mattel, Inc. v. MCA Records, I n c

. , we adopted the Rogers test as our method for balan c i ng the trademark and similar r ig hts protected by § 43(a) of the L anham Act ag ainst F irst A mendme n t rig hts in cases involving e x pressive works. MCA
, 296 F .3d a t 9 02. Althoug h MCA c oncerned the use of a trademark in the title of an e x pressive work, and the lang uag e of the MCA opinion did not make it clear t h a t w e were adopting the Rogers test for cases w here the trademark or other identify ing material in question was used in the body o f a work rather than in the title, we clarified in E.S.S. Enter t a i n m ent 2000, Inc. v

. Rock Star V ideos, Inc. that application of the Rogers test was not

Sam u el Keller an d oth er f

orm er co lleg e f

o o tb all an d b ask etb all p lay ers related to th e u se o f

th eir lik en esses in EA ’ s co l leg e f o o tb all an d co lleg e b ask etb all v id eo g am es).B R O W N V

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dependent o n the i d entify ing material appearing in the title but “also appl[ ies] to the use of a trademark in the body of the work.” 547 F .3d 1 0 9 5
, 1 0 99 (9th Cir. 2008). We have consistently employ ed the Rogers test in § 43(a) c a ses involving e x pressive works since MCA
, including where the trademark or other identify ing material in question was used in the body of a work rather than in the title. Se e , e.g. , id. ; Mattel Inc. v. W

alking Moun t a i n Prods.

, 353 F

. 3d 792 (9th Cir. 2003).

The Rogers test is reserved for ex pressive works. Even if Madden NFL is not the ex pressive equal of Anna Karenina o r Citizen Kane
, the Supreme Court has answered with an emphatic “y e s ” w h en faced w ith the question of whether video g ames deserve the same protection as more traditional forms of ex pression. I n Brown v. E n t e r t a inment Merchants Ass’n
, the Court sa i d t h at “ [ l] ike the protected books, p lay s, and movies that preceded them, video g am e s communicate ideas—and e v e n social messag e s—throug h many familiar literary devices (such as characters, dialog ue, plot, and music) and throug h features distinctive to t h e medium (such as the play er’s interaction with the vi rt u a l world)” a nd that these similarities to other ex pressive mediums “suffice[ ] to confer F irst Amendment protection.” 131 S. Ct. 2729, 2733 (2011). Althoug h there may be some work referred to as a “video
g ame” (or referred to as a “book,” “play ,” or “movie” for that matter) that d oes not contain e n oug h of the elements contemplated by the Su p r e m e Court to w arrant F irst Amendment protection as an ex pressive work, no version o f M a d den NFL is such a work. Every v ersion of th e ga m e features characters ( play ers), dialog ue (between announcers), plot (both within a particular s i m u lated g ame and more broadly ), a nd music. I nteraction between the virtual world o f the g a me a

nd individuals play ing the g a me is prevalent. EvenB R O W N V

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if there is a line to be drawn between ex pressive video g ames and non-ex p ressive video g ames, and e ven if courts should at

some p oint be drawing that line, we h ave no need to draw that line here. 3 Each v e r sion o f Madden NFL is an ex pres s i v e work, and our precedents dictate that we apply the Rogers test in § 43 ( a ) cases involving ex p ressive works. B rown acknowledg es that Rogers may apply here, but he arg ues that the “likelihood of confusion” test, ex e mpl i fied by Dr. Seuss Enterprises, L.P. v. Penguin Books U SA, Inc.
, 109 F

. 3d 1394 (9th Cir. 1997), o r the “alternative means” test, ex empl ified by International O lympic Committee v

. S an Francisco Arts & Athletics

, 781 F .2d 733 (9th Cir. 1986), reh’g en banc denied

, 7 8 9 F .2d 1319 (9th Cir. 1986), aff’d on other grounds

, S.F. Arts & A thletics, Inc. v. U.S. O l ym p i c C o mm. , 483 U.S 522 (1987), are also relevant. We disag ree. W e have previously rejected the “ likelihood of confusion” test as “fail[ ing ] to

a c c o u n t for the full weig ht of the public’s interest in f r e e

3 B ro w n p o in ts to sev eral ex am

p l es o f co u rts su g g e st i n g t h at certain

v id eo g am es m ay

n o t w arran t First A m en d m en t p ro tectio n as ex p ressiv e

w o rk s, bu t all o f th e cases c i t e d w ere d ecid ed y ears b ef o re th e S u

p rem e Co u rt issu ed its op in io n in Bro wn v. En terta in men t M erch a nts Ass’n
, 1 3 1 S. Ct. 2 7 2 9 (2 0 1 1 )

. S e e Am. Amu semen t Ma ch

. Ass’n v. Ken d rick

, 2 4 4 F.3 d 5 7 2, 5 7 9

– 8 0 (7 th C ir. 2 0 01 ); W ilso n v. Mid

wa y Ga mes, In c. , 1 9 8 F

. Su

p p

. 2 d 1 6 7
, 1 8 0

– 81 (D. Co n n

. 2 0 0 2 ); Am.’s Best Fa mily S h o wp l a ce Co rp

. v. City o

f New Yo rk

, 5 3 6 F

. Su p p

. 1 7 0
, 1 7 3

– 7 4 (E.D.N.Y. 1 9 8 2 ). B ro w

n arg u es th at EA ’ s in sisten ce th at th e Ro g ers test g o v ern s is an attem

p t to p o rtray Fi r s t A m en d m en t law as settled w i th
reg a rd to v i d eo g am es w h en it is in f

act ev o lv in g , b u t Bro wn v. En terta in men t Merch a n t

s Ass’n d em o n strates th at an y ev o lu tio n f av o rs g reater pro tectio n , a f

act B ro w n ig n o res b y em

p h asi zin g th ese earlier

cases. T h i s ev o l u tio n in recen t y ears to w ard g reater First A m en d m en t p ro tectio n f

o r n o n

- trad itio n al m ed ia h as n o t b een lim ited to v id eo g am es. S ee, e.g

. , An d

erso n v. City o

f Hermo sa Bea ch

, 6 2 1 F.3 d 1 0 5 1
, 10 5 5 (9 th Cir. 2 0 1 0 ) (h old in g th a t “t a t to o in g is a p u rely ex p ressiv e activ ity f u lly
p ro tected b y

th e First A m en d m en t”).B R O W N V

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e x p r e ssion” when ex pressive works are involved. MC A
, 296 F .3d at 9 00. The “alternative m e a n s” test was rejected for the same reason in Rogers itself, 875 F .2d a t 9 9 9, a p osition we approved by a dopting the Rogers test i n M C A

. The only relevant leg al framework f or balancing the p ublic’s rig ht to b e free from consumer confusion about B rown’s affiliation with Madden NFL and EA’ s First A mendment rig hts in the contex t of B rown’s § 43(a) c laim is the Rogers
test.

III

Rogers involved a suit broug ht by the famous performer Ging er Rog ers ag ai n s t the producers and distributors o f Ginger and Fred

, a movie about two fictional I talian cabaret performers who imitated Rog ers and her frequent p erforming partner F red Astaire. R ogers , 875 F. 2 d a t 9 96–97. Among Rog ers’ claims was that the use of her name in the title of the movie violated § 43(a) by creating the false impression that she was involved with the film. Id. at 997. Recog niz ing that enforcing § 43(a) in this contex t mig ht constrain free

ex p ression in violation o f the F irst A m e n d ment, the Second Circuit asserted that the L anham A ct should be “ appl[ ied] to artistic works only where the public intere s t i n avoiding

c o nsumer confusion outweig hs the public interest in free

ex p ression.” Id. at 999. The Rogers court introduced a twop r o ng ed test, under which the L anham Act should n o t b e applied to ex pressive works “unless the [ use of the trademark

or other identify ing material] has no artistic relevance to the underly ing work whatsoever, o r, if it has s o m e artistic relev a n c e , unless the [ trademark o r other identify ing material]

ex p licitly misleads as to t h e s o u r ce or the c ontent o f the work.” Id.B R O W N V

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A

As we e x plained i n E

. S

. S

. , a case with similar facts to B rown’s case in which we applied the R ogers test to a § 43(a) claim related to the use of the likeness of a L os Ang eles strip club in the video g ame Grand Theft Auto: San Andreas

, “the lev e l o f [ artistic] relevance [ o f the trademark o r other identify ing material to the work] merely must be above z ero” for the trademark or o ther identify ing material to be deemed artistically relevant. 5 47 F

. 3d a t 1100. This black-and-white rule has the benefit o f limiting our need to eng ag e in artistic analy sis in this contex t. 4

W e ag ree with the d istri c t court that the use of B rown’s likeness is artistically relevant to the Madden NFL g ames. A s B rown points out in try ing to under m i ne the status of the
g ames as ex pressive w orks, EA prides itse l f o n t he e x treme realism of the g ames. As B rown emphasiz es in arg uing that it is in fact his likeness in the g ames: “[ I ] t is a x iomatic the‘65 Cleveland B rowns simply

, b y definition, cannot be the ‘65 Cleveland B r o wns w ithout the play ers who play ed f or the ‘65 Cleveland B rowns. This fundamental truth applies especially
to that team’s most famous p lay er, J im B ro w n

. ” Given the acknowledg ed centrality

of realism to EA’s ex pressive g oal,

a n d t h e importance of including B rown’s likeness t o realistically recreate one of th e t e a m s in the g ame, it is obvious t h at B rown’s likeness has a t least some artistic relevance to EA ’ s w ork. T he fact that any g iven version o f

4 Cf. Bleistein v. Do n ald so n Lith og ra

p h in g Co

. , 1 88 U.S. 2 39
, 2 5 1 (1 9 0 3) (Ho lm es, J .) (“ It w ou ld b e a d a n g ero u s u n d ertak i n g f o r p erso n s train ed o n ly

to th e law

to co n stitu

t e th em selv es f

in al j u d g es o f th e w orth

o f p icto rial illu st r atio n s, o u t sid e o f th e n arro w est an d m o st o b v io u s lim its.”).B R O W N V

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Madden NFL includes likenesses of thousan d s of different
current and former NF L play ers d oes not impact this analy sis. I n E.S.S.
, the virtual strip club in questio n w a s just o ne o f
many virtual structures included by the desig ners of G rand Theft A uto: San Andreas in an attempt to simulate the feel o f East L os Ang eles, but we nonetheless concluded that the strip club was artistically

relevant to the work. 547 F .3d at 1100. There is no sig nificant distinction to be made here.

B r own questions the artistic r elevance of his likeness to Madden NFL in p ar t b y pointing us to the Six th Circuit’s decision in Parks v. LaFace Records

, 329 F .3d 437 (6th Cir. 2003). I n P a r k

s , civil rig hts hero Rosa Parks sued the musical duo Outkast under § 43(a) after Outk a s t r el e ased a song called R osa Parks

. Id. at 441. Partially due to the fact that one of the members of Outkast had said that the song was not “intended

. . . t o b e about Rosa Parks or the c ivil rig hts movement,” the Six th Circuit concluded that the district court should have at least considered additio n a l evidence before deciding that the use of Ms. Parks’ nam e was artistically relevant to the song

. Id. at 452–53. Br o w n alleg e s that EA has made similar denials of J im B rown’s rele v a nce to Madden NFL
, and thus a r g ues that B r own’s likeness i s n o t artistically relevant to the Madden NFL g ames. The court in Parks , however, did not rely solely on the band’s denial that the song was about Ms. Parks or the c ivil rig h ts movement in concluding that there was a fac t u al dispute about artistic relevance. “The composers did not intend [ the song ] to be about Rosa P a r k s, and the ly rics are not about Rosa Parks,” the court stated, emphasiz ing both Outkast’s denials and the

cou r t ’ s o w n determination that the song ’s ly rics were unrelated to Ms. Parks or the civil rig hts m o v e m e n t. Id. at 452. Her e , even if EA’s denials reg arding B rown a re equivalent to Outkast’s denial reg arding Parks, the content o fB R O W N V

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the M a dden NFL g ames—the simulation of NF L football—is clearly related to J im B rown, one of the NF L ’s all-time
g reates t play ers. Moreover, EA’s denials are not equivalent
t o Outkast’s denial. E A has denied u sing the aspe c t s o f B rown’s likeness that may be protected by the L anham Act and certain state laws, but such d enials are a far cry from Outkast’s o utrig ht denial of relevance. I n letters to B rown’s
attorn e y s, EA officials have claimed that “B rown has not appeared in any M

a d d en NFL g ame since 1998,” and that “B rown’s name a

nd likeness does not a

ppear in Madden NFL 08 or any packag ing or marketing materials asso c i ated with the product.” EA has not denie d that B rown’s likeness is relevant to Madden NFL ; rather, it has denied that B rown has appeared in the Madden NFL g ames released since 1998. I f the denials are true— t h at is, if B rown’s likeness does not in fact appear in the g ames—B rown h a s n o claim at all under the L anham Act. W e do not understand this to be B rown’s position. Outkast’s denial did not similarly u n dermine Ms. Parks’ L anham Act claim b ecause Outkast wa s not deny ing the u se of Parks’ name. I n order to have a valid § 43(a) claim based o n artistic irrelevance, B rown needs to show both that his likeness was used and that h is likeness was artistically irrelevant to the Madden NF L ga m e s. I f artistic irrelevance

can only be proven by accep t i n g the truth of EA’s denial o f the use of B rown’s likeness, B row n ca n not possibly satisfy both of these burdens. Moreover, in the contex t of a motion
to dismiss, we accept B rown’s factual alleg ations a s true, a nd B rown alleg es that his likeness was used. W e must thus

assume that EA’s d enials are false, meaning they provide no support for artistic irrelevance. 5

5 In ad d itio n

to p o in tin g u s to Pa rks , B ro w n also an alo g izes h is case to America n Da iry Qu een C o rp

. v. New Lin e Pro d

u ctio n s, In c. , 3 5 F. Su

p p

. 2 d 7 2 7 (D. Min n

. 1 99 8 ), in w h ich th e d ef

en d an t ad m itted in its b rief in gB R O W N V

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One of the Six th Circuit’s an i m a ting concerns in P a rks

was that a celebrity ’ s n a me could be “appropriated solely because of the vastly increased marketing power of a product bearing the name of [ the c e lebrity ] .” 329 F .3d at 454. This is

a leg itimate concern, but the facts in Parks— specifically

, the court’s determination t h a t the ly rics o f Outkast’s song may very well have nothing to d o with Rosa Parks or the civil rig hts movement—made that concern much more realistic in that case than in this one. EA did n ot produce a g ame called Jim Brown P resents Pinball with no relation to J im B rown o r football b ey ond the title; it p roduced a foot b a l l game featuring likenesses of thousands of current and former N F L play ers, including B rown. Comparing this case to P a rks does not further B rown’s cause.

B r own also asserts that our in t e rpretation of the Rogers
test in E.S.S. to require artistic relevance to “ m e r e l y

. . . be above z ero,” 547 F

. 3d at 1100, has rende r e d the Rogers test—described in the Rogers o pinion i t s e l f as seeking to strike a “balance” between “the public’ s i nterest in free

ex p ression” a

nd “protect[ ing ] the public aga inst flag rant deception,” 875 F .2d a t 999 —an inflex ibl e a n d mechanical rule that more or less a

utomatically protects ex pressive works
reg ardless of the deception involved. B ut a balance need not

th at it d id n ot in ten d its “ Dairy Qu een s” title to ref er to plain tif

f A m erican Dairy Qu een Co rp o ratio n

. B ased on th is a d m i s s i o n , th e d istrict co u rt f o u n d t h at th e d ef

en d a n t co u ld ex p ress i ts id eas in o t h er w ay s, an d th u s th at o n balan ce t

h e risk o f co n su

m er co n f u sio n an d trad em ark d ilu tio n

o u tw eig h ed th e p u

b lic in terest in f

ree ex p ressio n

. I

d

. at 7 3 4

– 3 5

. A s

ex p lain ed i n o u r discu ssio n o f Pa rks

, th is an alo g y is in ap t b ecau s e th ere is n o sim ilar ex p licit d en ial of relev a n c e i n t h i s case, an d b ecau se w e p resu m e th e tru t

h o f B ro w

n ’ s alleg atio n s th at EA h as u sed h i s l i ke n e ss

. America n Da iry Q u ee n a l s o w as n o t a case in v o lv in g ap p licatio n o f th e Ro g ers test.B R O W N V

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b e d e sig ned to find each of the sides w eig htier with equa l frequency

. The lang uag e in Rogers is clear. “[ T] hat balance will normally not support application of the [L anham] A ct unless the [ use of the trademark or other identify ing material] has no artistic relevance to the underlying work whatsoever

. . . .” 8 75 F .2d at 999 (emphasis added). The Rogers test is applicable when F irs t A mendment rig hts are at their heig ht—w h e n e x pressive works are involved—so it is no surprise that the test puts such e mphasis on even the slig htest artistic relevance. “I ntellectual property righ t s aren’t f ree: They ’re imposed at the ex pense of future creators and of the public at larg e,” W

hite v. Samsung Elecs. Am., Inc.
, 989 F .2d 1512, 1 516 (9th Cir. 1993) (Koz i n s k i

, J
., dissenting from denial of rehearing en b a

n c), a nd the R o gers test applies when this ex p e n se is most sig nificant. Our interpretation of the “artistic relevance” p rong of the Rogers t e s t in E.S.S. is correct, and B rown fails to alleg e facts that satisfy that prong in this case.

B

Even if the u s e o f a trademark or other identify ing material is artistically r e l e vant to the ex pressive work, the
creator of the ex pressive work can be subject to a L anham Ac t c l a i m if the creator uses the mark or material to “ex p licitly mislead[ ] [ consumer s ] a s to the source or the
content of the work.” Rogers
, 875 F .2d at 999. I t is key here that the creato r m u st explicitly mislead consumers. “[ T] he slig ht risk that

. . . use of a celebrity ’s name mig ht implicitly
sug g est endorsement or spons o r ship to some people is outweig hed by the dang e r of restricting artisti c ex pression, and [ in cases where th er e i s n o ex plicit misleading ] the L anham Act is not applicable.” Id. at 999–1000. This second
p r o n g of the Rogers test “points directly at the purpose o fB R O W N V

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trademark law, namely to avoid c onfusion in the marketplace by allowing a trademark owner to prevent others from duping

consumers into buy ing a product they mistakenly believe is sponsored by the trademark owner.” E.S.S.
, 547 F .3d at 1100 (internal quotation marks and citation o mitted). W e must ask “whether the [ use of B ro w n ’ s likeness] would confuse [ Madden NFL ] play e rs into thinking that [ B rown] is somehow behind [ the g ames] or that [ h e] sp o n sors [ EA’s] product,” id.

, and w hether there w as an “ ex plicit indication,” “overt claim,” or “ex plicit misstatement” that ca u s ed such

consumer confusion, Rogers
, 875 F .2d at 1001. B rown puts fort h s everal arg uments attempting to show that this second
prong of the R ogers test is satisfied, but each of his arg uments is unsuccessful.

F irst, B rown arg ues that th e u s e of his likeness in the
g ame coupled with a c onsumer surv e y d e m onstrating that a majority of the public believes that identify ing marks cannot be included in products w ithout permission at l e a s t r a ises a triable issue of fact as to the second p rong of the Rogers test. I t is well established that the use o f a m ark alone is not enoug h to satisfy this prong of the R ogers test. I n MCA
, we noted that if the use o f a mark a lone were sufficient “it would render Rogers a nullity

. ” 296 F

. 3d at 902. W e reiterated this point in E.S.S.
, a sserting that “the mere use o f a trademark alone cannot suffice to make such u se ex plicitly misleading

. ” 547 F .3d at 1100. Adding survey evidence chang es nothing

. The test requires that the u se b e e x p licitly misleading to

consumers. T o be relevant, evidence must relate to the nature of the be h a v i o r of the identify ing material’s user, not the impact of the use. E ven if B rown c ould offer a survey demonstratin g that consumers of the Madden NFL series believed that B rown en d o r s e d the g ame, that would not

s u p p ort the claim that the use was ex plicitly misleading t oB R O W N V

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consumers. T he Six th Circuit’s decision i n E T W Corp. v

. Jireh P u b lishing, Inc.
, 332 F .3d 9 15 (6th Cir. 2003), demonstrates this point. I n that case, Tig er W oods’ licensing
ag ent, ETW C o r

p o ration, broug ht a L anham A ct claim
ag ainst the publisher of artwork c o mmemorating W oods’ 1997 victory a t The Masters. Id

. at 918. A survey was produced in which particip a n ts were shown the artwork a nd asked if they thoug ht Tig er W o ods w a s affiliated o r connected with the work or had a pproved or sponsored it. Id.
at 937 & n.19. Over six ty p ercent of t h e participants

an swered a ffirmatively

, but the Six th Circuit asserted: “[ P] laintiff’s survey evidence, e v en if its validity is a ssumed, indicates at m o st that some members of the public would draw the incorrect inference that W oods had some connection with [ the w ork]

. The r i s k o f misunderstanding

, not eng endered by any ex plicit ind i c a t i on on the face of the [ work]

, is so o utweig hed by the interest in artistic ex pression

as to p reclude application of the [ L a nham] A ct.” Id

. at 937 (footnote o mitted). I n Rogers itself, t he Second Circuit rejected similar survey d a ta for the same reasons. 875 F .2d
at 1001. The use of B rown’s likeness tog ether with the cited
survey do not provide a valid arg ument to allow B rown’s case to g o forward based on this prong of the Rogers test.

Second, B rown arg ues that certain written materials that accompanied versions of t h e g ame demonstrate EA’s attempt s to ex plicitly mislead consumers about his

en d o r sement o r involvement with the g ame’s production. Unlike mere use of the mark o r a consumer survey , statements made in materials accompany ing the g am e a

re at l east the rig ht kind of evidence to show that EA t r i e d t o

ex p licitly mislead con sumers about its relationship with B rown. Here, however, the statements h ig hlig hted b y B rown do not show any atte m p t to mislead consumers. B rownB R O W N V

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points to materials that say that one o f the g ame’s features

was the inclusion of “[ f

]ifty of the NF L ’s g reatest p lay ers a nd
every All-Madden team.” Since B rown is one of t h e fifty
gr e a t est NF L play e rs of all time and has been named to t h e “All Madden, All Millennium” team, B rown arg ues that t he
statement “ex plicitly represents t h a t B rown w as in EA’s
g ame.” B ut B rown needs to prove that E A ex plicitly misled

consumers about B rown’s e n dorsement o f the g ame, not that EA u sed B rown’s l ikeness in the g a me; nothing in EA’s promotion sug g e sts that th e fifty NF L play ers who a re members of the All Madden, A ll Millennium tea m e ndorse EA’s g ame. EA’s statement is true and not misleading

.
Third, Br o w n arg ues that the c hang e s made to B rown’s likenes s f o r use in certain versions of the g ame satisfy the second p rong of the Rogers test. EA made chang es to c ertain versions of the g ame that mig ht make a c onsumer of the g ame l e s s c onfident that the play er in question was intended to be B rown. Most notably

, EA chang ed the jersey number on the B rown avatar f

rom 32 (the number B rown wore in the NF L )
to 37. I f these chang e s had any impact on whether consumers believed that B rown endorsed the g ame, however, surely they made consumers less likely to believe that B rown was involved. B rown offers various theories ab o u t E A ’s leg al motives in “scrambling ” his likeness f or use in the g ame. I t may be true that EA w a s t r y i n g to protect itself f rom being sued fo r u s i ng B rown’s likeness, under the L a nham Act o r otherwise, but an action that could only make consumers less likely to believe that B rown endorsed M adden NFL cannot possibly satisfy the second prong

of the Rogers test.

F ourth, B r own cites various comment s m ade by EA officials as evidence that the second prong of the R ogers test is satisfied. As previously discussed, EA attorney s s e n tB R O W N V

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letters to B r own’s attorney s stating that “ Brown h as not appeared in any Madden NFL g ame s ince 1998” and that “B rown’s name and likeness does not appear in Madden NFL 08 or any packag ing or marketing materials associated w i th the product.” B rown claims that EA officials contrad i c t e d these statements when the y alleg edly said at a conference held at U SC L a

w School that EA was able to use the imag e s and like n esses of play ers because it obtained written authoriz ation from both the N FL play ers and the N F L

. The
statements made in letters to B rown’s a ttorney s are irrelevant to this prong o f the Rogers analy sis. They were not made to
consumers, and they do not say any thing abou t Br o wn’s endorsement of the g ame. The st at e m ent alleg edly made at the c onference is perhaps the closest B rown comes to offering evidence that EA acted in an ex plicitly misleading manner a s to B rown’s endorsement of the g ame, but ag ain, the statement

was made to a limited audience, n o t to consumers. I f a similar statement appeared on the back cover of a version of Madden NFL
, that mig ht satisfy the “ex p l i citly misleading ”
prong , or at least raise a triable issue of fact, but a statement made at an academic conference a bout a l l o f the likenesses

us e d in the g ame could not r e a listically be ex pected to confuse consumers as to B rown’s involvement. 6

6 B ro w n arg u es th at a sim ilar statem en t ap p earin g o n th e p ack ag i n g of
t h e 2 0 07 an d 20 0 9 v ersio n s o f Ma d d en NFL co u ld ex p l icitly m i sle a d

co n su m ers as to B ro w

n ’ s en d orsem en t

. T h e p ack ag in g h as th e lo g o f or th e NFL P lay ers A sso ciatio n an d say s “ Of f i cially L icen sed P ro d u ct of NFL P L A YER S

. ” NFL P L A YERS is th e licen sin g arm of th e NFL P A

an d m an ag es licen sin g rig h t s f o r b o th cu rren t p lay ers an d retired p lay ers,

so B ro w n co n ten d s th at th e statem en t o n th e p ack ag i n g c o uld b e

u n d ersto o d b y

co n su m ers to m ean th at retired p lay ers, in clu d i n g B ro w n , e n d o r se th e g am e. We d eclin e t o ad d ress th is arg u m en t b ecau se B r o w n d id n o t raise i t in h is o p en in g b rief

. See Frien d

s o f Yo semite Va lley v. Kemp th o rn e , 5 2 0 F.3 d 1 02 4
, 10 3 3 (9 th Cir. 2 0 0 8). Fo r th e sam e reaso n ,B R O W N V

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IV

B r own also arg ues that the district court i m p r o p erly

e ng ag ed in factfinding in g ranting EA’s motion to dism i s s

. The district court, in B rown’s view, could not possibly have
g ranted the motion to dismiss if i t ac cepted all of the alleg ations in B rown’s complaint as true, as B rown a lleg es in his co m plaint that his likeness is not artistically relevant to Madden NFL and th a t EA attempted to mislead consumers about his involvement with Madden NFL

.

B r own is of course correct that “[ o] n a motion to dismiss, the court presumes that the facts a lleg ed by the plaint i ff a r e true.” Halet v. W

end Inv. Co.
, 672 F .2d 1305, 1309 ( 9th Cir. 1982). W e will also “draw[ ] all reasonable inferences from the complaint in [ B r own’s] f av o r.” Mohamed v. Jeppesen Dataplan, I

nc. , 614 F .3d 1 070, 1073 (9th Cir. 2010) (en banc) (internal quotation marks omitted). W e a r e n ot, however, required to “accept any unreasonable i nferences o r a ssume the truth of leg al conclusions cast in t h e f o rm o f f actual alleg ations.” I

leto v. G lock Inc.
, 3 4 9 F. 3d 1191, 1200 (9th Cir. 2003). B rown asserts that ther e is no artistic relevance and that EA attempted to mislead consumers about B rown’s involvement w ith Madden NFL
, but none of the facts asserted in support of these leg al conclus i o n s actually justify the conclusions.

W ith reg ard to artistic r elevance, even presuming that EA officials have denied the inclusion of B rown’s likeness in the
g ame, the district court c ould conclude, having reviewed the

w e d ecli n e t o a d d ress B ro w n ’ s co n t en t io n th at EA ex p licitly m isled

co n su m ers b y u sin g B ro w

n ’ s l ik en ess o n th e b ack co v ers o f th e sam e tw o

v ersio n s o f

th e g am e.B R O W N V

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versions of Madden N

F L p r o v ided to the court, 7 that the likeness of a g reat NF L play er is a r tistically relevant to a video g ame that aims to recreate NF L g a mes.

W ith reg a

rd t o B rown’s alleg ation that EA ex plicitly misled consumers as to h i s i n volvement with the g ame, the factual support B rown offe rs is simply of the wrong ty pe. B rown w ould need to demonst rate that EA explicitly misled

consumers as to his involveme n t

. I n stead, his alleg ations, if
t a ken as true, o nly demonstrate that (1) the p ublic c a n g enerally be misled about s p o n s o rship when marks a re incl u d e d i n products; ( 2) EA ex plicitly stated that B rown’s likeness appears in Madden NFL ; (3) E A tried to d isg uise its

use of B rown’s likeness, if any thing making c o nsumers less likely to believe that he was involved; (4) EA was dishonest wi th B rown’s attorney about the inclusion of h is likeness in the g ame; and (5) EA sug g ested to a g roup of ind i v i d u a l s at

an academic conference that the play e r s whose likenesses

were used in Madden NFL had sig ned licensi n g ag reements with EA. There is simply n o alleg atio n that EA ex plicitly misled consumers as to B r own’s involvement, and thus no problem with the district court deciding this issue in response to a motion to dismiss.

V

As ex pressive works, the M adden NFL video g ames a re entitled t o t he same F irst Amendment protection a s g reat literature, play s, or books. B rown’s L anham A ct claim is

7 T h e d istrict co u rt p ro p erly co n s i d ered t h e v ersio n s o f Ma d

den NFL

su b m itte d t o t h e co u rt as p art o f th e co m p lain t itself th ro u g h th e

“ i n co rp o ratio n b y r e fe r e nc e” d o ctrin e. S ee Kn ievel v. ES

PN
, 3 93 F.3 d 1 0 6 8 , 1 0 7 6 (9 th

Cir. 2 0 0 5). W e d o th e sam e.B R O W N V

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thus subject to the Rogers test, and we ag ree with the district
court that B rown has failed to a lleg e sufficient facts to make
out a plausible claim that survives that test. B rown’s likeness is a r tistica l l y r e l evant to the g ames and there are no alleg ed facts to supp o r t the claim that E A ex plicitly misled

consumers as to B rown’s involvement with the g ames. The Rogers test tells u s that, in this case, the public interest in free

ex p ression outweig hs the p ublic interest in av oiding

consumer confusion. The district court’s judg ment is thus AF F IRMED

.