Michael E. DAVIS, aka Tony Davis; Vince Ferragamo; Billy Joe Dupree; Samuel Michael Keller, Plaintiffs-Appellees, v. ELECTRONIC ARTS INC., Defendant-Appellant.
No. 12-15737
United States Court of Appeals, Ninth Circuit
Filed Jan. 6, 2015
Argued and Submitted Sept. 11, 2014
1172
I am perplexed by the majority‘s decision to exceed the permissible scope of our review by rewriting a condition of supervised release that is substantively identical to those that we and our sister courts have affirmed on a number of occasions.
For these reasons, I respectfully concur only with the judgment.
Alonzo Wickers IV (argued), Kelli L. Sager, Karen Henry, Kathleen Cullinan and Brendan Charney, Davis Wright Tremaine LLP, Los Angeles, CA; Robert Van Nest, R. James Slaughter and Adam Lauridsen, Keker & Van Nest LLP, San Francisco, CA, for Defendant-Appellant.
Brian D. Henri (argued), Henri Law Group, Palo Alto, CA, for Plaintiffs-Appellees.
Duncan W. Crabtree-Ireland and Danielle S. Van Lier, Screen Actors Guild-American Federation of Television and Radio Artists, Los Angeles, CA, for Amicus Curiae Screen Actors Guild-American Federation of Television and Radio Artists.
Before: STEPHEN REINHARDT, RAYMOND C. FISHER and MARSHA S. BERZON, Circuit Judges.
FISHER, Circuit Judge:
We are called upon to balance the right of publicity of former professional football players against Electronic Arts’ (EA) First Amendment right to use their likenesses in its Madden NFL series of video games. We previously held EA‘s unauthorized use of a former college football player‘s likeness in the NCAA Football series of video games was not, as a matter of law, protected by the First Amendment. See Keller v. Elec. Arts (In re NCAA Student-Athlete Name & Likeness Licensing Litig.), 724 F.3d 1268 (9th Cir.2013). In Keller, we rejected several of the First Amendment defenses EA raises here on materially indistinguishable grounds. EA advances one additional argument in this appeal—its use of former players’ likenesses is protected under the First Amendment as “incidental use.” We disagree. We hold EA‘s use of the former players’ likenesses is not incidental, because it is central to EA‘s main commercial purpose—to create a realistic virtual simulation of football games involving current and former NFL teams.
I. Background
EA is a developer and publisher of video games, including Madden NFL, which EA publishes annually. Madden NFL allows users to play virtual football games between National Football League (NFL) teams by controlling virtual players, or avatars. EA‘s graphic artists and programmers create the avatars, as well as virtual stadiums, coaches, referees, fans and other audio and visual elements that allow users to experience a realistic simulation of an NFL game. Users control the movements of the avatars and the outcome of the game through the users’ inputs to the game system.
Each annual version of Madden NFL includes all current players for all 32 NFL teams, along with accurate player names, team logos, colors and uniforms. EA has paid National Football Players Inc.—the licensing arm of the National Football League Players Association—annual licensing fees in the millions of dollars to use current players’ likenesses.
From 2001 through 2009, Madden NFL also included certain particularly successful or popular “historic teams.” EA did not obtain a license to use the likenesses of the former players on these historic teams. Although the players on the historic teams are not identified by name or photograph, each is described by his position, years in the NFL, height, weight, skin tone and relative skill level in different aspects of
The plaintiffs alleged that Madden NFL similarly includes, without authorization, accurate likenesses of plaintiffs Michael Davis and Billy Joe Dupree, as well as roughly 6,000 other former NFL players who appear on more than 100 historic teams in various editions of Madden NFL. The plaintiffs asserted claims for right of publicity under
II. Standard of Review
We review de novo the denial of a motion to strike under California‘s anti-SLAPP statute. See Keller, 724 F.3d at 1272 n. 3.
III. Discussion
A. Anti-SLAPP motion
California‘s anti-SLAPP statute is “designed to allow courts ‘to promptly expose and dismiss meritless and harassing claims seeking to chill protected expression.‘” Mindy‘s Cosmetics, Inc. v. Dakar, 611 F.3d 590, 595 (9th Cir.2010) (quoting Bosley Med. Inst., Inc. v. Kremer, 403 F.3d 672, 682 (9th Cir.2005)). Under the statute, “a party may file a motion to strike a cause of action against it if the complaint ‘aris[es] from any act of that person in furtherance of the person‘s right of petition or free speech under the United States Constitution or the California Constitution in connection with a public issue.‘” Id. (alteration in original) (quoting
The plaintiffs concede that their suit arises from an act by EA in furtherance of its right of free speech under the First Amendment. Indeed, “[v]ideo games are entitled to the full protections of the First Amendment, because ‘[l]ike the protected books, plays, and movies that preceded them, video games communicate ideas—and even social messages.‘” Keller, 724 F.3d at 1270-71 (quoting Brown v. Entm‘t Merchs. Ass‘n, 564 U.S. 786, 131 S.Ct. 2729, 2733, 180 L.Ed.2d 708 (2011)).
EA does not challenge the plaintiffs’ ability to state or support any substantive element of their claims. Instead, EA argues it is not reasonably probable the plaintiffs will prevail, because their claims are barred by five affirmative defenses under the First Amendment—the transformative use defense, the public interest defense, the public affairs exemption of
B. Transformative use
EA contends the plaintiffs’ claims are barred by the transformative use defense formulated by the California Supreme Court in Comedy III Productions, Inc. v. Gary Saderup, Inc., 25 Cal.4th 387, 106 Cal.Rptr.2d 126, 21 P.3d 797 (2001). “The defense is ‘a balancing test between the First Amendment and the right of publicity based on whether the work in question adds significant creative elements so as to be transformed into something more than a mere celebrity likeness or imitation.‘” Keller, 724 F.3d at 1273 (quoting Comedy III, 106 Cal.Rptr.2d 126, 21 P.3d at 799).
In Keller, we rejected EA‘s transformative use defense. We held the use of college athletes’ likenesses in the NCAA Football video game series was not, as a matter of law, transformative use. See
Keller concluded No Doubt “offers a persuasive precedent that cannot be materially distinguished from Keller‘s case.” 724 F.3d at 1277. As in No Doubt, the NCAA Football game “replicated Keller‘s physical characteristics” and allowed “users [to] manipulate [him] in the performance of the same activity for which [he is] known in real life” in “[t]he context in which the activity occurs.” Id. at 1276. Consequently, “[g]iven that NCAA Football realistically portrays college football players in the context of college football games, the district court was correct in concluding that EA cannot prevail as a matter of law based on the transformative use defense at the anti-SLAPP stage.” Id. at 1279.
The same is true here. Like NCAA Football, Madden NFL replicates players’ physical characteristics and allows users to manipulate them in the performance of the same activity for which they are known in real life—playing football for an NFL team. Neither the individual players’ likenesses nor the graphics and other background content are transformed more in Madden NFL than they were in NCAA Football. Indeed, EA does not attempt to distinguish Madden NFL from NCAA Football. Instead, EA contends the court erred in Keller by focusing on whether the individual avatars were transformed, rather than whether the work as a whole was transformative. Absent “intervening higher authority,” however, we are bound by the factually indistinguishable holding in Keller. Miller v. Gammie, 335 F.3d 889, 893 (9th Cir.2003) (en banc).3 Thus, EA has not shown that the transformative use defense applies to the plaintiffs’ claims.4
C. The public interest defense
EA next contends the plaintiffs’ common law right of publicity claim is barred by the public interest defense, and their statutory right of publicity claim is barred by the “public affairs” exemption of
Although California courts typically analyze the statutory and common law defenses separately, both defenses “protect only the act of publishing or reporting.” Keller, 724 F.3d at 1282. In Keller, we rejected EA‘s reliance on these defenses, explaining that, unlike the cases on which EA relied, involving a documentary, a newspaper photograph and a game program, EA was “not publishing or reporting factual data.” Id. at 1283. See Dora v. Frontline Video, Inc., 15 Cal.App.4th 536, 18 Cal.Rptr.2d 790, 791-92 (1993) (holding a documentary on surfing featuring a well-known surfer was “a fair comment on real life events“); Montana, 40 Cal.Rptr.2d at 640-41 (holding posters containing previously published newspaper images portraying Joe Montana‘s football victories were “a form of public interest presentation to which [First Amendment] protection must be extended“); Gionfriddo v. Major League Baseball, 94 Cal.App.4th 400, 114 Cal.Rptr.2d 307, 314-15 (2001) (holding “factual data concerning the players, their performance statistics ... and video depictions” were a “recitation and discussion of factual data” protected by the First Amendment). “Put simply, EA‘s interactive game is not a publication of facts about college football; it is a game, not a reference source.” Keller, 724 F.3d at 1283. “It is a means by which users can play their own virtual football games, not a means for obtaining information about real-world football games.” Id.
Madden NFL is indistinguishable in this regard from NCAA Football. Like NCAA Football, although Madden NFL contains some factual data about current and former NFL teams and players, it is “a game, not a reference source” or a “publication of facts” about professional football. Id. Again, in the absence of intervening higher authority, our holding in Keller controls. See Miller, 335 F.3d at 899. Thus, EA has not established a probability of prevailing on either the common law public interest defense or the “public affairs” exemption of
D. The Rogers test
EA next contends Madden NFL is entitled to First Amendment protection under the test formulated by the Second Circuit in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir.1989). Rogers held that a literary title does not violate the Lanham Act “unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.” Id. at 999. In Keller, we rejected EA‘s argument that the Rogers test should be extended to right-of-publicity claims. See 724 F.3d at 1279-82. We explained that the Rogers test “was designed to protect consumers from the risk of consumer confusion—the hallmark element of a Lanham Act claim.” Id. at 1280. In contrast, the right of publicity “does not primarily seek to prevent consumer confusion.” Id. “Rather, it primarily ‘protects a form of intellectual property [in one‘s person] that society deems to have some social utility.‘” Id. (alteration in original) (quoting Comedy III, 106 Cal.Rptr.2d 126, 21 P.3d at 804). Thus, the Rogers test does not apply to the plaintiffs’ right-of-publicity claims.
Finally, EA contends the plaintiffs’ claims are barred by the incidental use defense. EA did not assert this defense in the district court. “We apply a general rule against entertaining arguments on appeal that were not presented or developed before the district court.” In re Mercury Interactive Corp. Sec. Litig., 618 F.3d 988, 992 (9th Cir.2010) (internal quotation marks omitted). That rule, however, is “discretionary, not jurisdictional.” Id. We have recognized three circumstances in which we have discretion to reach waived issues, including “when the issue presented is purely one of law and either does not depend on the factual record developed below, or the pertinent record has been fully developed.” Id. (quoting Bolker v. Comm‘r, 760 F.2d 1039, 1042 (9th Cir.1985)). Under the circumstances of this case, whether EA has established a probability of prevailing on its incidental use defense is a question of law that we can address on the existing record. We therefore exercise our discretion to address the issue.
The parties agree that the incidental use defense exists under California law. We therefore assume, for purposes of this opinion, that it does.5 The parties also rely on the same cases and treatises to define the scope of the defense. Under those authorities, “[a] number of factors are relevant,” such as “(1) whether the use has a unique quality or value that would result in commercial profit to the defendant; (2) whether the use contributes something of significance; (3) the relationship between the reference to the plaintiff and the purpose and subject of the work; and (4) the duration, prominence or repetition of the name or likeness relative to the rest of the publication.” Aligo v. Time-Life Books, Inc., No. C 94-20707 JW, 1994 WL 715605, at *3 (N.D.Cal. Dec. 19, 1994) (internal citations omitted). See also 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 28:7.50 (4th ed. 2014) (“The mere trivial or fleeting use of a person‘s name or image in an advertisement will not trigger liability when such a usage will have only a de minimis commercial implication.“); Stayart v. Google Inc., 710 F.3d 719, 723 (7th Cir.2013) (“‘For use of a person‘s name for advertising or trade purposes to be actionable ... there must be a substantial rather than an incidental connection between the use and the defendant‘s commercial purpose.‘” (internal quotation marks omitted)); Yeager v. Cingular Wireless, LLC, 673 F.Supp.2d 1089, 1100 (E.D.Cal.2009) (“The rationale underlying this doctrine is that an incidental use has no commercial value.“); Preston v. Martin Bregman Prods., Inc., 765 F.Supp. 116, 119 (S.D.N.Y.1991) (“Whether a use falls within this exception to liability is determined by the role that the use of the plaintiff‘s name or likeness plays in the main purpose and subject of the work at issue.“). These factors support the plaintiffs’ position here.
Having acknowledged the likenesses of current NFL players carry substantial commercial value, EA does not offer a persuasive reason to conclude otherwise as to the former players. EA argues that, because there are several thousand players depicted in Madden NFL, any individual player‘s likeness has only a de minimis commercial value. There is no basis for such a sweeping statement. EA includes only a small number of particularly successful or popular historic teams. EA also advertises the inclusion of those historic teams in its promotional materials.6 Indeed, we rejected EA‘s similar reasoning in Keller: “If EA did not think there was value in having an avatar designed to mimic each individual player, it would not go to the lengths it does to achieve realism in this regard. Having chosen to use the players’ likenesses, EA cannot now hide behind the numerosity of its potential offenses or the alleged unimportance of any one individual player.” 724 F.3d at 1276 n. 7.
Under the third and fourth factors, the former players’ likenesses are featured prominently in a manner that is substantially related to the main purpose and subject of Madden NFL—to create an accurate virtual simulation of an NFL game. See Preston, 765 F.Supp. at 119; Ladany v. William Morrow & Co., Inc., 465 F.Supp. 870, 881 (S.D.N.Y.1978). EA has stated publicly it is dedicated to “creating the most true-to life NFL simulation experience as possible ... We want to accurately deliver an amazing NFL experience in our game.” Accurate depictions of the players on the field are central to the creation of an accurate virtual simulation of an NFL game. Cf. Lohan, 924 F.Supp.2d at 455-56 (holding the incidental use defense applied when the plaintiff‘s name was mentioned once in 104 lines of a song and the mention was “entirely incidental to the theme of the Song“). Therefore, EA has not established a probability of prevailing on its incidental use defense.
IV. Conclusion
EA has not shown that its unauthorized use of former players’ likenesses in the Madden NFL video game series qualifies for First Amendment protection under the transformative use defense, the public interest defense, the Rogers test or the incidental use defense. Accordingly, we affirm the district court‘s denial of EA‘s motion to strike.7
AFFIRMED.
RAYMOND C. FISHER
UNITED STATES CIRCUIT JUDGE