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.