James Brown v. Electronic Arts, Inc.

FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

JAMES “JIM” BROWN, No. 09-56675

Plaintiff-Appellant,

D.C. No.

v. 2:09-cv-01598-

FMC-RZ

ELECTRONIC ARTS, INC., a Delaware

corporation,

Defendant-Appellee. OPINION

Appeal from the United States District Court

for the Central District of California

Florence-Marie Cooper, District Judge, Presiding

Argued and Submitted

February 15, 2011—Pasadena, California

Submission Vacated February 18, 2011

Argued and Resubmitted

July 13, 2012—San Francisco, California

Filed July 31, 2013

Before: Sidney R. Thomas and Jay S. Bybee, Circuit

Judges, and Gordon J. Quist, Senior District Judge.*

Opinion by Judge Bybee

*

The Honorable Gordon J. Quist, Senior District Judge for the U.S.

District Court for Western Michigan, sitting by designation.

2 BROWN V. ELECTRONIC ARTS, INC.

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.

**

This summary constitutes no part of the opinion of the court. It has

been prepared by court staff for the convenience of the reader.

BROWN V. ELECTRONIC ARTS, INC. 3

COUNSEL

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.***

***

The motion of these organizations to file their amicus brief is

GRANTED.

4 BROWN V. ELECTRONIC ARTS, INC.

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), 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

BROWN V. ELECTRONIC ARTS, INC. 5

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

1

See Waits v. Frito-Lay, Inc., 978 F.2d 1093, 1110 (9th Cir. 1992) (“A

false endorsement claim based on the unauthorized use of a celebrity’s

identity is a type of false association claim, for it alleges the misuse of a

trademark, i.e., a symbol or device such as a visual likeness, vocal

imitation, or other uniquely distinguishing characteristic, which is likely

to confuse consumers as to the plaintiff’s sponsorship or approval of the

product.”); see also White v. Samsung Elecs. Am., Inc., 971 F.2d 1395,

1399–1400 (9th Cir. 1992) (“In cases involving confusion over

endorsement by a celebrity plaintiff, ‘mark’ means the celebrity’s

persona.”).

6 BROWN V. ELECTRONIC ARTS, INC.

condition that allow a § 43(a) claim to succeed under the

Rogers test. Brown v. Elec. Arts, Inc., No. 2:09-cv-01598,

2009 U.S. Dist. LEXIS 131387, 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 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

BROWN V. ELECTRONIC ARTS, INC. 7

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, 2009 U.S. Dist. LEXIS 131387,

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.

2

We emphasize that this appeal relates only to Brown’s Lanham Act

claim. Were the state causes of action before us, our analysis may be

different and a different outcome may obtain. See, e.g. Keller v. Elec.

Arts, Inc., No. 10-15387, slip op. at 6 (9th Cir. July 31, 2013) (affirming

a district court’s ruling that EA had no First Amendment defense against

the state-law right-of-publicity claims of former college football player

8 BROWN V. ELECTRONIC ARTS, INC.

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 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. MCA, 296 F.3d at 902.

Although MCA concerned the use of a trademark in the title

of an expressive work, and the language of the MCA opinion

did not make it clear that we were adopting the Rogers test

for cases where the trademark or other identifying material in

question was used in the body of a work rather than in the

title, we clarified in E.S.S. Entertainment 2000, Inc. v. Rock

Star Videos, Inc. that application of the Rogers test was not

Samuel Keller and other former college football and basketball players

related to the use of their likenesses in EA’s college football and college

basketball video games).

BROWN V. ELECTRONIC ARTS, INC. 9

dependent on the identifying material appearing in the title

but “also appl[ies] to the use of a trademark in the body of the

work.” 547 F.3d 1095, 1099 (9th Cir. 2008). We have

consistently employed the Rogers test in § 43(a) cases

involving expressive works since MCA, including where the

trademark or other identifying material in question was used

in the body of a work rather than in the title. See, e.g., id.;

Mattel Inc. v. Walking Mountain Prods., 353 F.3d 792 (9th

Cir. 2003).

The Rogers test is reserved for expressive works. Even if

Madden NFL is not the expressive equal of Anna Karenina or

Citizen Kane, the Supreme Court has answered with an

emphatic “yes” when faced with the question of whether

video games deserve the same protection as more traditional

forms of expression. In Brown v. Entertainment Merchants

Ass’n, the Court said that “[l]ike the protected books, plays,

and movies that preceded them, video games communicate

ideas—and even social messages—through many familiar

literary devices (such as characters, dialogue, plot, and music)

and through features distinctive to the medium (such as the

player’s interaction with the virtual world)” and that these

similarities to other expressive mediums “suffice[ ] to confer

First Amendment protection.” 131 S. Ct. 2729, 2733 (2011).

Although there may be some work referred to as a “video

game” (or referred to as a “book,” “play,” or “movie” for that

matter) that does not contain enough of the elements

contemplated by the Supreme Court to warrant First

Amendment protection as an expressive work, no version of

Madden NFL is such a work. Every version of the game

features characters (players), dialogue (between announcers),

plot (both within a particular simulated game and more

broadly), and music. Interaction between the virtual world of

the game and individuals playing the game is prevalent. Even

10 BROWN V. ELECTRONIC ARTS, INC.

if there is a line to be drawn between expressive video games

and non-expressive video games, and even if courts should at

some point be drawing that line, we have no need to draw that

line here.3 Each version of Madden NFL is an expressive

work, and our precedents dictate that we apply the Rogers test

in § 43(a) cases involving expressive works. Brown

acknowledges that Rogers may apply here, but he argues that

the “likelihood of confusion” test, exemplified by Dr. Seuss

Enterprises, L.P. v. Penguin Books USA, Inc., 109 F.3d 1394

(9th Cir. 1997), or the “alternative means” test, exemplified

by International Olympic Committee v. San Francisco Arts &

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

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

Arts & Athletics, Inc. v. U.S. Olympic Comm., 483 U.S 522

(1987), are also relevant. We disagree. We have previously

rejected the “likelihood of confusion” test as “fail[ing] to

account for the full weight of the public’s interest in free

3

Brown points to several examples of courts suggesting that certain

video games may not warrant First Amendment protection as expressive

works, but all of the cases cited were decided years before the Supreme

Court issued its opinion in Brown v. Entertainment Merchants Ass’n,

131 S. Ct. 2729 (2011). See Am. Amusement Mach. Ass’n v. Kendrick,

244 F.3d 572, 579–80 (7th Cir. 2001); Wilson v. Midway Games, Inc.,

198 F. Supp. 2d 167, 180–81 (D. Conn. 2002); Am.’s Best Family

Showplace Corp. v. City of New York, 536 F. Supp. 170, 173–74

(E.D.N.Y. 1982). Brown argues that EA’s insistence that the Rogers test

governs is an attempt to portray First Amendment law as settled with

regard to video games when it is in fact evolving, but Brown v.

Entertainment Merchants Ass’n demonstrates that any evolution favors

greater protection, a fact Brown ignores by emphasizing these earlier

cases. This evolution in recent years toward greater First Amendment

protection for non-traditional media has not been limited to video games.

See, e.g., Anderson v. City of Hermosa Beach, 621 F.3d 1051, 1055 (9th

Cir. 2010) (holding that “tattooing is a purely expressive activity fully

protected by the First Amendment”).

BROWN V. ELECTRONIC ARTS, INC. 11

expression” when expressive works are involved. MCA,

296 F.3d at 900. The “alternative means” test was rejected

for the same reason in Rogers itself, 875 F.2d at 999, a

position we approved by adopting the Rogers test in MCA.

The only relevant legal framework for balancing the public’s

right to be free from consumer confusion about Brown’s

affiliation with Madden NFL and EA’s First Amendment

rights in the context of Brown’s § 43(a) claim is the Rogers

test.

III

Rogers involved a suit brought by the famous performer

Ginger Rogers against the producers and distributors of

Ginger and Fred, a movie about two fictional Italian cabaret

performers who imitated Rogers and her frequent performing

partner Fred Astaire. Rogers, 875 F.2d at 996–97. Among

Rogers’ 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. Recognizing that

enforcing § 43(a) in this context might constrain free

expression in violation of the First Amendment, the Second

Circuit asserted that the Lanham Act should be “appl[ied] to

artistic works only where the public interest in avoiding

consumer confusion outweighs the public interest in free

expression.” Id. at 999. The Rogers court introduced a two-

pronged test, under which the Lanham Act should 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 [trademark or other identifying material]

explicitly misleads as to the source or the content of the

work.” Id.

12 BROWN V. ELECTRONIC ARTS, INC.

A

As we explained in E.S.S., a case with similar facts to

Brown’s case in which we applied the Rogers test to a § 43(a)

claim related to the use of the likeness of a Los Angeles strip

club in the video game Grand Theft Auto: San Andreas, “the

level of [artistic] relevance [of the trademark or other

identifying material to the work] merely must be above zero”

for the trademark or other identifying material to be deemed

artistically relevant. 547 F.3d at 1100. This black-and-white

rule has the benefit of limiting our need to engage in artistic

analysis in this context.4

We agree with the district court that the use of Brown’s

likeness is artistically relevant to the Madden NFL games. As

Brown points out in trying to undermine the status of the

games as expressive works, EA prides itself on the extreme

realism of the games. As Brown emphasizes in arguing that

it is in fact his likeness in the games: “[I]t is axiomatic the‘65

Cleveland Browns simply, by definition, cannot be the ‘65

Cleveland Browns without the players who played for the ‘65

Cleveland Browns. This fundamental truth applies especially

to that team’s most famous player, Jim Brown.” Given the

acknowledged centrality of realism to EA’s expressive goal,

and the importance of including Brown’s likeness to

realistically recreate one of the teams in the game, it is

obvious that Brown’s likeness has at least some artistic

relevance to EA’s work. The fact that any given version of

4

Cf. Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251

(1903) (Holmes, J.) (“It would be a dangerous undertaking for persons

trained only to the law to constitute themselves final judges of the worth

of pictorial illustrations, outside of the narrowest and most obvious

limits.”).

BROWN V. ELECTRONIC ARTS, INC. 13

Madden NFL includes likenesses of thousands of different

current and former NFL players does not impact this analysis.

In E.S.S., the virtual strip club in question was just one of

many virtual structures included by the designers of Grand

Theft Auto: San Andreas in an attempt to simulate the feel of

East Los Angeles, but we nonetheless concluded that the strip

club was artistically relevant to the work. 547 F.3d at 1100.

There is no significant distinction to be made here.

Brown questions the artistic relevance of his likeness to

Madden NFL in part by pointing us to the Sixth Circuit’s

decision in Parks v. LaFace Records, 329 F.3d 437 (6th Cir.

2003). In Parks, civil rights hero Rosa Parks sued the

musical duo Outkast under § 43(a) after Outkast released a

song called Rosa Parks. Id. at 441. Partially due to the fact

that one of the members of Outkast had said that the song was

not “intended . . . to be about Rosa Parks or the civil rights

movement,” the Sixth Circuit concluded that the district court

should have at least considered additional evidence before

deciding that the use of Ms. Parks’ name was artistically

relevant to the song. Id. at 452–53. Brown alleges that EA

has made similar denials of Jim Brown’s relevance to

Madden NFL, and thus argues that Brown’s likeness is not

artistically relevant to the Madden NFL games. The court in

Parks, however, did not rely solely on the band’s denial that

the song was about Ms. Parks or the civil rights movement in

concluding that there was a factual dispute about artistic

relevance. “The composers did not intend [the song] to be

about Rosa Parks, and the lyrics are not about Rosa Parks,”

the court stated, emphasizing both Outkast’s denials and the

court’s own determination that the song’s lyrics were

unrelated to Ms. Parks or the civil rights movement. Id. at

452. Here, even if EA’s denials regarding Brown are

equivalent to Outkast’s denial regarding Parks, the content of

14 BROWN V. ELECTRONIC ARTS, INC.

the Madden NFL games—the simulation of NFL football—is

clearly related to Jim Brown, one of the NFL’s all-time

greatest players. Moreover, EA’s denials are not equivalent

to Outkast’s denial. EA has denied using the aspects of

Brown’s likeness that may be protected by the Lanham Act

and certain state laws, but such denials are a far cry from

Outkast’s outright denial of relevance. In letters to Brown’s

attorneys, EA officials have claimed that “Brown has not

appeared in any Madden NFL game since 1998,” and that

“Brown’s name and likeness does not appear in Madden NFL

08 or any packaging or marketing materials associated with

the product.” EA has not denied that Brown’s likeness is

relevant to Madden NFL; rather, it has denied that Brown has

appeared in the Madden NFL games released since 1998. If

the denials are true—that is, if Brown’s likeness does not in

fact appear in the games—Brown has no claim at all under

the Lanham Act. We do not understand this to be Brown’s

position. Outkast’s denial did not similarly undermine Ms.

Parks’ Lanham Act claim because Outkast was not denying

the use of Parks’ name. In order to have a valid § 43(a) claim

based on artistic irrelevance, Brown needs to show both that

his likeness was used and that his likeness was artistically

irrelevant to the Madden NFL games. If artistic irrelevance

can only be proven by accepting the truth of EA’s denial of

the use of Brown’s likeness, Brown cannot possibly satisfy

both of these burdens. Moreover, in the context of a motion

to dismiss, we accept Brown’s factual allegations as true, and

Brown alleges that his likeness was used. We must thus

assume that EA’s denials are false, meaning they provide no

support for artistic irrelevance.5

5

In addition to pointing us to Parks, Brown also analogizes his case to

American Dairy Queen Corp. v. New Line Productions, Inc., 35 F. Supp.

2d 727 (D. Minn. 1998), in which the defendant admitted in its briefing

BROWN V. ELECTRONIC ARTS, INC. 15

One of the Sixth Circuit’s animating concerns in Parks

was that a celebrity’s name could be “appropriated solely

because of the vastly increased marketing power of a product

bearing the name of [the celebrity].” 329 F.3d at 454. This is

a legitimate concern, but the facts in Parks—specifically, the

court’s determination that the lyrics of Outkast’s song may

very well have nothing to do with Rosa Parks or the civil

rights movement—made that concern much more realistic in

that case than in this one. EA did not produce a game called

Jim Brown Presents Pinball with no relation to Jim Brown or

football beyond the title; it produced a football game

featuring likenesses of thousands of current and former NFL

players, including Brown. Comparing this case to Parks does

not further Brown’s cause.

Brown also asserts that our interpretation of the Rogers

test in E.S.S. to require artistic relevance to “merely . . . be

above zero,” 547 F.3d at 1100, has rendered the Rogers

test—described in the Rogers opinion itself as seeking to

strike a “balance” between “the public’s interest in free

expression” and “protect[ing] the public against flagrant

deception,” 875 F.2d at 999 —an inflexible and mechanical

rule that more or less automatically protects expressive works

regardless of the deception involved. But a balance need not

that it did not intend its “Dairy Queens” title to refer to plaintiff American

Dairy Queen Corporation. Based on this admission, the district court

found that the defendant could express its ideas in other ways, and thus

that on balance the risk of consumer confusion and trademark dilution

outweighed the public interest in free expression. Id. at 734–35. As

explained in our discussion of Parks, this analogy is inapt because there

is no similar explicit denial of relevance in this case, and because we

presume the truth of Brown’s allegations that EA has used his likeness.

American Dairy Queen also was not a case involving application of the

Rogers test.

16 BROWN V. ELECTRONIC ARTS, INC.

be designed to find each of the sides weightier with equal

frequency. The language in Rogers is clear. “[T]hat balance

will normally not support application of the [Lanham] Act

unless the [use of the trademark or other identifying material]

has no artistic relevance to the underlying work whatsoever

. . . .” 875 F.2d at 999 (emphasis added). The Rogers test is

applicable when First Amendment rights are at their

height—when expressive works are involved—so it is no

surprise that the test puts such emphasis on even the slightest

artistic relevance. “Intellectual property rights aren’t free:

They’re imposed at the expense of future creators and of the

public at large,” White v. Samsung Elecs. Am., Inc., 989 F.2d

1512, 1516 (9th Cir. 1993) (Kozinski, J., dissenting from

denial of rehearing en banc), and the Rogers test applies when

this expense is most significant. Our interpretation of the

“artistic relevance” prong of the Rogers test in E.S.S. is

correct, and Brown fails to allege facts that satisfy that prong

in this case.

B

Even if the use of a trademark or other identifying

material is artistically relevant to the expressive work, the

creator of the expressive work can be subject to a Lanham

Act claim if the creator uses the mark or material to

“explicitly mislead[ ] [consumers] as to the source or the

content of the work.” Rogers, 875 F.2d at 999. It is key here

that the creator must explicitly mislead consumers. “[T]he

slight risk that . . . use of a celebrity’s name might implicitly

suggest endorsement or sponsorship to some people is

outweighed by the danger of restricting artistic expression,

and [in cases where there is no explicit misleading] the

Lanham Act is not applicable.” Id. at 999–1000. This second

prong of the Rogers test “points directly at the purpose of

BROWN V. ELECTRONIC ARTS, INC. 17

trademark law, namely to avoid confusion in the marketplace

by allowing a trademark owner to prevent others from duping

consumers into buying a product they mistakenly believe is

sponsored by the trademark owner.” E.S.S., 547 F.3d at 1100

(internal quotation marks and citation 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] or that [he] sponsors [EA’s]

product,” id., and whether there was an “explicit indication,”

“overt claim,” or “explicit misstatement” that caused such

consumer confusion, Rogers, 875 F.2d at 1001. Brown puts

forth several arguments attempting to show that this second

prong of the Rogers test is satisfied, but each of his arguments

is unsuccessful.

First, Brown argues that the use of his likeness in the

game coupled with a consumer survey demonstrating that a

majority of the public believes that identifying marks cannot

be included in products without permission at least raises a

triable issue of fact as to the second prong of the Rogers test.

It is well established that the use of a mark alone is not

enough to satisfy this prong of the Rogers test. In MCA, we

noted that if the use of a mark alone were sufficient “it would

render Rogers a nullity.” 296 F.3d at 902. We reiterated this

point in E.S.S., asserting that “the mere use of a trademark

alone cannot suffice to make such use explicitly misleading.”

547 F.3d at 1100. Adding survey evidence changes nothing.

The test requires that the use be explicitly misleading to

consumers. To be relevant, evidence must relate to the nature

of the behavior of the identifying material’s user, not the

impact of the use. Even if Brown could offer a survey

demonstrating that consumers of the Madden NFL series

believed that Brown endorsed the game, that would not

support the claim that the use was explicitly misleading to

18 BROWN V. ELECTRONIC ARTS, INC.

consumers. The Sixth Circuit’s decision in ETW Corp. v.

Jireh Publishing, Inc., 332 F.3d 915 (6th Cir. 2003),

demonstrates this point. In that case, Tiger Woods’ licensing

agent, ETW Corporation, brought a Lanham Act claim

against the publisher of artwork commemorating Woods’

1997 victory at The Masters. Id. at 918. A survey was

produced in which participants were shown the artwork and

asked if they thought Tiger Woods was affiliated or

connected with the work or had approved or sponsored it. Id.

at 937 & n.19. Over sixty percent of the participants

answered affirmatively, but the Sixth Circuit asserted:

“[P]laintiff’s survey evidence, even if its validity is assumed,

indicates at most that some members of the public would

draw the incorrect inference that Woods had some connection

with [the work]. The risk of misunderstanding, not

engendered by any explicit indication on the face of the

[work], is so outweighed by the interest in artistic expression

as to preclude application of the [Lanham] Act.” Id. at 937

(footnote omitted). In Rogers itself, the Second Circuit

rejected similar survey data for the same reasons. 875 F.2d

at 1001. The use of Brown’s likeness together with the cited

survey do not provide a valid argument to allow Brown’s case

to go forward based on this prong of the Rogers test.

Second, Brown argues that certain written materials that

accompanied versions of the game demonstrate EA’s

attempts to explicitly mislead consumers about his

endorsement or involvement with the game’s production.

Unlike mere use of the mark or a consumer survey,

statements made in materials accompanying the game are at

least the right kind of evidence to show that EA tried to

explicitly mislead consumers about its relationship with

Brown. Here, however, the statements highlighted by Brown

do not show any attempt to mislead consumers. Brown

BROWN V. ELECTRONIC ARTS, INC. 19

points to materials that say that one of the game’s features

was the inclusion of “[f]ifty of the NFL’s greatest players and

every All-Madden team.” Since Brown is one of the fifty

greatest NFL players of all time and has been named to the

“All Madden, All Millennium” team, Brown argues that the

statement “explicitly represents that Brown was in EA’s

game.” But Brown needs to prove that EA explicitly misled

consumers about Brown’s endorsement of the game, not that

EA used Brown’s likeness in the game; nothing in EA’s

promotion suggests that the fifty NFL players who are

members of the All Madden, All Millennium team endorse

EA’s game. EA’s statement is true and not misleading.

Third, Brown argues that the changes made to Brown’s

likeness for use in certain versions of the game satisfy the

second prong of the Rogers test. EA made changes to certain

versions of the game that might make a consumer of the game

less confident that the player in question was intended to be

Brown. Most notably, EA changed the jersey number on the

Brown avatar from 32 (the number Brown wore in the NFL)

to 37. If these changes had any impact on whether consumers

believed that Brown endorsed the game, however, surely they

made consumers less likely to believe that Brown was

involved. Brown offers various theories about EA’s legal

motives in “scrambling” his likeness for use in the game. It

may be true that EA was trying to protect itself from being

sued for using Brown’s likeness, under the Lanham Act or

otherwise, but an action that could only make consumers less

likely to believe that Brown endorsed Madden NFL cannot

possibly satisfy the second prong of the Rogers test.

Fourth, Brown cites various comments made by EA

officials as evidence that the second prong of the Rogers test

is satisfied. As previously discussed, EA attorneys sent

20 BROWN V. ELECTRONIC ARTS, INC.

letters to Brown’s attorneys stating that “Brown has not

appeared in any Madden NFL game since 1998” and that

“Brown’s name and likeness does not appear in Madden NFL

08 or any packaging or marketing materials associated with

the product.” Brown claims that EA officials contradicted

these statements when they allegedly said at a conference

held at USC Law School that EA was able to use the images

and likenesses of players because it obtained written

authorization from both the NFL players and the NFL. The

statements made in letters to Brown’s attorneys are irrelevant

to this prong of the Rogers analysis. They were not made to

consumers, and they do not say anything about Brown’s

endorsement of the game. The statement allegedly made at

the conference is perhaps the closest Brown comes to offering

evidence that EA acted in an explicitly misleading manner as

to Brown’s endorsement of the game, but again, the statement

was made to a limited audience, not to consumers. If a

similar statement appeared on the back cover of a version of

Madden NFL, that might satisfy the “explicitly misleading”

prong, or at least raise a triable issue of fact, but a statement

made at an academic conference about all of the likenesses

used in the game could not realistically be expected to

confuse consumers as to Brown’s involvement.6

6

Brown argues that a similar statement appearing on the packaging of

the 2007 and 2009 versions of Madden NFL could explicitly mislead

consumers as to Brown’s endorsement. The packaging has the logo for

the NFL Players Association and says “Officially Licensed Product of

NFL PLAYERS.” NFL PLAYERS is the licensing arm of the NFLPA

and manages licensing rights for both current players and retired players,

so Brown contends that the statement on the packaging could be

understood by consumers to mean that retired players, including Brown,

endorse the game. We decline to address this argument because Brown

did not raise it in his opening brief. See Friends of Yosemite Valley v.

Kempthorne, 520 F.3d 1024, 1033 (9th Cir. 2008). For the same reason,

BROWN V. ELECTRONIC ARTS, INC. 21

IV

Brown also argues that the district court improperly

engaged in factfinding in granting EA’s motion to dismiss.

The district court, in Brown’s view, could not possibly have

granted the motion to dismiss if it accepted all of the

allegations in Brown’s complaint as true, as Brown alleges in

his complaint that his likeness is not artistically relevant to

Madden NFL and that EA attempted to mislead consumers

about his involvement with Madden NFL.

Brown is of course correct that “[o]n a motion to dismiss,

the court presumes that the facts alleged by the plaintiff are

true.” Halet v. Wend Inv. Co., 672 F.2d 1305, 1309 (9th Cir.

1982). We will also “draw[ ] all reasonable inferences from

the complaint in [Brown’s] favor.” Mohamed v. Jeppesen

Dataplan, Inc., 614 F.3d 1070, 1073 (9th Cir. 2010) (en banc)

(internal quotation marks omitted). We are not, however,

required to “accept any unreasonable inferences or assume

the truth of legal conclusions cast in the form of factual

allegations.” Ileto v. Glock Inc., 349 F.3d 1191, 1200 (9th

Cir. 2003). Brown asserts that there is no artistic relevance

and that EA attempted to mislead consumers about Brown’s

involvement with Madden NFL, but none of the facts asserted

in support of these legal conclusions actually justify the

conclusions.

With regard to artistic relevance, even presuming that EA

officials have denied the inclusion of Brown’s likeness in the

game, the district court could conclude, having reviewed the

we decline to address Brown’s contention that EA explicitly misled

consumers by using Brown’s likeness on the back covers of the same two

versions of the game.

22 BROWN V. ELECTRONIC ARTS, INC.

versions of Madden NFL provided to the court,7 that the

likeness of a great NFL player is artistically relevant to a

video game that aims to recreate NFL games.

With regard to Brown’s allegation that EA explicitly

misled consumers as to his involvement with the game, the

factual support Brown offers is simply of the wrong type.

Brown would need to demonstrate that EA explicitly misled

consumers as to his involvement. Instead, his allegations, if

taken as true, only demonstrate that (1) the public can

generally be misled about sponsorship when marks are

included in products; (2) EA explicitly stated that Brown’s

likeness appears in Madden NFL; (3) EA tried to disguise its

use of Brown’s likeness, if anything making consumers less

likely to believe that he was involved; (4) EA was dishonest

with Brown’s attorney about the inclusion of his likeness in

the game; and (5) EA suggested to a group of individuals at

an academic conference that the players whose likenesses

were used in Madden NFL had signed licensing agreements

with EA. There is simply no allegation that EA explicitly

misled consumers as to Brown’s involvement, and thus no

problem with the district court deciding this issue in response

to a motion to dismiss.

V

As expressive works, the Madden NFL video games are

entitled to the same First Amendment protection as great

literature, plays, or books. Brown’s Lanham Act claim is

7

The district court properly considered the versions of Madden NFL

submitted to the court as part of the complaint itself through the

“incorporation by reference” doctrine. See Knievel v. ESPN, 393 F.3d

1068, 1076 (9th Cir. 2005). We do the same.

BROWN V. ELECTRONIC ARTS, INC. 23

thus subject to the Rogers test, and we agree with the district

court that Brown has failed to allege sufficient facts to make

out a plausible claim that survives that test. Brown’s likeness

is artistically relevant to the games and there are no alleged

facts to support the claim that EA explicitly misled

consumers as to Brown’s involvement with the games. The

Rogers test tells us that, in this case, the public interest in free

expression outweighs the public interest in avoiding

consumer confusion. The district court’s judgment is thus

AFFIRMED.