724 F.3d 1235 (9th Cir. 2013), 09-56675, Brown v. Elec. Arts, Inc.

Docket Nº:09-56675
Citation:724 F.3d 1235
Opinion Judge:BYBEE, Circuit Judge.
Party Name:JAMES " JIM" BROWN, Plaintiff-Appellant, v. ELECTRONIC ARTS, INC., a Delaware corporation, Defendant-Appellee
Attorney:Kelli L. Sager (argued), Alonzo Wickers IV, Anna R. Zusman, Lisa J. Kohn and Karen A. Henry, Davis Wright Tremaine LLP, Los Angeles, California; Robert A. Van Nest, Steven A. Hirsch and R. James Slaughter, Keker & Van Nest, LLP, San Francisco, California, for appellee. Ronald S. Katz (argued) and...
Judge Panel:Before: Sidney R. Thomas and Jay S. Bybee, Circuit Judges, and Gordon J. Quist, Senior District Judge.[*]
Case Date:July 31, 2013
Court:United States Courts of Appeals, Court of Appeals for the Ninth Circuit
 
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724 F.3d 1235 (9th Cir. 2013)

JAMES " JIM" BROWN, Plaintiff-Appellant,

v.

ELECTRONIC ARTS, INC., a Delaware corporation, Defendant-Appellee

No. 09-56675

United States Court of Appeals, Ninth Circuit

July 31, 2013

Argued and Resubmitted July 13, 2012 San Francisco, California

Argued and Submitted February 15, 2011, Pasadena, California.

Submission Vacated February 18, 2011.

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[Copyrighted Material Omitted]

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Appeal from the United States District Court for the Central District of California. D.C. No. 2:09-cv-01598-FMC-RZ. Florence-Marie Cooper, District Judge, Presiding.

Kelli L. Sager (argued), Alonzo Wickers IV, Anna R. Zusman, Lisa J. Kohn and Karen A. Henry, Davis Wright Tremaine LLP, Los Angeles, California; Robert A. Van Nest, Steven A. Hirsch and R. James Slaughter, Keker & Van Nest, LLP, San Francisco, California, for appellee.

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

Nathan Siegel and Lee Levine, Levine Sullivan Koch & Schulz, L.L.P., Washington, District of Columbia, for amici curiae Advance Publications, A& E Television Networks, Allied Daily Newspapers of Washington, Association of American Publishers, Activision, California Newspaper Publishers Association, Capcom USA, Comic Book Legal Defense Fund, E! Entertainment Television, ESPN, First Amendment Coalition, First Amendment Project, Freedom Communications, The Gannett Company, Gawker Media, Hybrid Films, ITV Studios, Konami Digital Entertainment, The Los Angeles Times, The McClatchy Company, Namco Bandai Games America, Original Productions, The Press-Enterprise Company, Radio Television Digital News Association, Sirens Media, Take Two Interactive Software, Thq, Viacom, The Washington Newspaper Publishers Association, and Wenner Media.[***]

Before: Sidney R. Thomas and Jay S. Bybee, Circuit Judges, and Gordon J. Quist, Senior District Judge.[*]

SUMMARY[**]

Lanham Act

The panel affirmed the district court's dismissal of retired professional football player Jim's Brown's action alleging that Electronic Arts, Inc., violated § 43 of the Lanham Act through the use of his likeness in its Madden NFL series of video games.

The panel held that because the video games were expressive works, the district court correctly applied the Rogers test for balancing between trademark and similar rights, on the one hand, and First Amendment rights, on the other. The panel held that neither the " likelihood of confusion" test nor the " alternative means" test was the appropriate framework. Applying the Rogers test, the panel concluded that Brown's likeness was artistically relevant to the games and that there were no alleged facts to support the claim that Electronic Arts explicitly misled consumers as to Brown's involvement with the games. Accordingly, the public interest in free expression outweighed the public interest in avoiding consumer confusion.

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OPINION

BYBEE, Circuit Judge.

Plaintiff--Appellant James " Jim" Brown alleges that Defendant--Appellee Electronic Arts, Inc. (" EA" ) has violated § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a),

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through the use of Brown's likeness in EA's Madden NFL series of football video games. In relevant part, § 43(a) provides for a civil cause of action against:

[a]ny person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which . . . is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person[.]

15 U.S.C. § 1125(a)(1). Although claims under § 43(a) generally relate to the use of trademarks or trade dress to cause consumer confusion over affiliation or endorsement, we have held that claims can also be brought under § 43(a) relating to the use of a public figure's persona, likeness, or other uniquely distinguishing characteristic to cause such confusion.1

Section 43(a) protects the public's interest in being free from consumer confusion about affiliations and endorsements, but this protection is limited by the First Amendment, particularly if the product involved is an expressive work. Recognizing the need to balance the public's First Amendment interest in free expression against the public's interest in being free from consumer confusion about affiliation and endorsement, the Second Circuit created the " Rogers test" in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). Under the Rogers test, § 43(a) will not be applied to expressive works " unless the [use of the trademark or other identifying material] has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the [use of trademark or other identifying material] explicitly misleads as to the source or the content of the work." Id. at 999. We adopted the Rogers test in Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002).

Applying the Rogers test, the district court in this case granted EA's motion to dismiss Brown's Lanham Act claim, finding that Brown had not alleged facts that satisfied either condition that allow a § 43(a) claim to succeed under the Rogers test. Brown v. Elec. Arts, Inc., No. 2:09-cv-01598, at *8-15 (C.D. Cal. Sept. 23, 2009). Brown appealed, challenging the applicability of the Rogers test, the district court's analysis under the Rogers test, and the suitability of his case for resolution without additional factfinding. We affirm the district court's decision.

I

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

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time. He starred for the Cleveland Browns from 1957 to 1965 and was inducted into the National Football League (" NFL" ) Hall of Fame after his retirement. After his NFL career, Brown also achieved success as an entertainer and public servant. There is no question that he is a public figure whose persona can be deployed for economic benefit.

EA is a manufacturer, distributor and seller of video games and has produced the Madden NFL series of football video games since 1989. The Madden NFL series allows users of the games to control avatars representing professional football players as those avatars participate in simulated NFL games. In addition to these simulated games, Madden NFL also enables users to participate in other aspects of a simulated NFL by, for example, creating and managing a franchise. Each version of Madden NFL includes the current year's NFL teams with the teams' current rosters. Each avatar on a current team is designed to mirror a real current NFL player, including the player's name, jersey number, physical attributes, and physical skills. Some versions of the game also include historical and all-time teams. Unlike for players on the current NFL teams, no names are used for the players on the historical and all-time teams, but these players are recognizable due to the accuracy of their team affiliations, playing positions, ages, heights, weights, ability levels, and other attributes. Although EA enters into licensing agreements with the NFL and NFL Players Association (" NFLPA" ) for its use of the names and likenesses of current NFL players, Brown, as a former player, is not covered by those agreements and has never entered into any other agreement allowing EA to use his likeness in Madden NFL. Brown asserts that EA has used his likeness in several versions of the game dating back at least to 2001 but that he has never been compensated.

Brown brought suit in the United States District Court for the Central District of California, claiming that EA's use of his likeness in the Madden NFL games violated § 43(a) of the Lanham Act. Brown also brought claims under California law for invasion of privacy and unfair and unlawful business practices. EA filed a motion to dismiss pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure, and the district court applied the Rogers test and dismissed Brown's Lanham Act claim. Brown, at *9-15. The district court declined to exercise supplemental jurisdiction over the state-law claims. Id. at *15-16. Brown filed a timely appeal of the dismissal of his Lanham Act claim.2 We have jurisdiction pursuant to 28 U.S.C. § 1291. We review the district court's dismissal de novo. Kahle v. Gonzales, 487 F.3d 697, 699 (9th Cir. 2007).

II

The legal issues raised by this case are not novel, but their lack of novelty should

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not be mistaken for lack of difficulty. Significant judicial resources, including the resources of this court, have been expended trying to find the appropriate balance between trademark and similar rights, on the one hand, and First Amendment rights, on the other. Brown suggests that the case law has produced a lack of clarity as to the appropriate legal framework to apply in this case and urges us to consider the " likelihood of confusion" test and the " alternative means" test in addition to the Rogers test. We are convinced that the Rogers test remains the appropriate framework.

A decade ago, in Mattel, Inc. v. MCA Records, Inc., we adopted the Rogers test as our method for balancing the trademark and similar rights protected by § 43(a) of the Lanham Act against First Amendment rights in cases involving expressive works. M...

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