ea video games used ex-ncaa athletes' images without permision: 9th cir

7/27/2019 EA Video Games Used Ex-NCAA Athletes' Images Without Permision: 9th Cir

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FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

IN RE:NCAASTUDENT-ATHLETENAME &LIKENESS LICENSINGLITIGATION,

SAMUEL MICHAEL KELLER;EDWARDC.OBANNON,JR.;BYRON BISHOP;MICHAEL ANDERSON;DANNYWIMPRINE;ISHMAEL THROWER;CRAIGNEWSOME;DAMIEN RHODES;

SAMUEL JACOBSON,Plaintiffs-Appellees,

v.

ELECTRONIC ARTS INC.,Defendant-Appellant,

and

NATIONAL COLLEGIATE ATHLETICASSOCIATION;COLLEGIATELICENSING COMPANY,

Defendants.

No. 10-15387

D.C. No.

4:09-cv-01967-CW

OPINION

Appeal from the United States District Courtfor the Northern District of California

Claudia A. Wilken, District Judge, Presiding


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IN RE:NCAALICENSING LITIG.2

Argued and Submitted

February 15, 2011Pasadena, CaliforniaSubmission Vacated February 18, 2011

Argued and ResubmittedJuly 13, 2012San Francisco, California

Filed July 31, 2013

Before: Sidney R. Thomas and Jay S. Bybee, CircuitJudges, and Gordon J. Quist, Senior District Judge.*

Opinion by Judge Bybee;Dissent by Judge Thomas

SUMMARY**

Anti-SLAPP/Video Games

The panel affirmed the district courts denial of a motionto strike a complaint as a strategic lawsuit against public

participation under Californias anti-SLAPP statute, Cal. Civ.Proc. Code 425.16, and held that video game developerElectronic Arts had no First Amendment defense against theright-of-publicity claims of former college football player,Samuel Keller.

* The Honorable Gordon J. Quist, Senior District Judge for the U.S.District Court for the Western District of Michigan, sitting by designation.

** This summary constitutes no part of the opinion of the court. It hasbeen prepared by court staff for the convenience of the reader.


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IN RE:NCAALICENSING LITIG. 3

Keller filed a putative class-action complaint asserting

that Electronic Arts (EA) violated his right of publicity underCalifornia Civil Code 3344 and California common law byusing his likeness as part of theNCAA Footballvideo series.The panel held that under the transformative use testdeveloped by the California Supreme Court, EAs use did notqualify for First Amendment protection as a matter of lawbecause it literally recreated Keller in the very setting in

which he had achieved renown. The panel rejected EAssuggestion to import the balancing test set forth by theSecond Circuit in Rogersv. Grimaldi, 875 F.2d 994 (2nd Cir.1989), which had been created to evaluate Lanham Actclaims, into the right-of-publicity arena. The panel furtherheld that the state-law defenses for the reporting of factualinformation did not protect EAs use.

Dissenting, Judge Thomas stated that because the creativeand transformative elements of EAsNCAA Footballvideogame series predominated over the commercial use of theathletes likenesses, the First Amendment protects EA fromliability.

COUNSEL

Kelli L. Sager (argued), Alonzo Wickers IV, Karen A. Henry,Lisa J. Kohn and Anna R. Buono, Davis Wright TremaineLLP, Los Angeles, California; Robert A. Van Nest, Steven A.

Hirsch and R. James Slaughter, Keker & Van Nest, LLP, SanFrancisco, California, for Defendant-Appellant.


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Steve W. Berman (argued) and Erin K. Flory, Hagens

Berman Sobol Shapiro LLP, Seattle, Washington; RobertCarey and Leonard Aragon, Hagens Berman Sobol ShapiroLLP, Phoenix, Arizona, for Plaintiffs-Appellees.

Douglas E. Mirell, Loeb & Loeb LLP, Los Angeles,California, for Amicus Curiae Motion Picture Association ofAmerica, Inc.

Amy E. Margolin, Bien & Summers, San Francisco,California; Michael Rubin and P. Casey Pitts, AltshulerBerzon LLP, San Francisco, California, for Amici CuriaeNational Football League Players Association, Major LeagueBaseball Players Association, National Basketball PlayersAssociation, National Hockey League Players Association,

and Major League Soccer Players Union.

Thomas R. Carpenter and Purvi Patel, American Federationof Television & Radio Artists, AFL-CIO, New York, NewYork; Duncan Crabtree-Ireland and Danielle S. Van Lier,Screen Actors Guild, Inc., Los Angeles, California, for AmiciCuriae Screen Actors Guild, Inc., American Federation of

Television & Radio Artists, AFL-CIO, Writers Guild ofAmerica, West, Inc., Creative Property Rights Alliance, FiftySix Hope Road Music Ltd., Luminary Group LLC, ThomasSteinbeck, and Gail Knight Steinbeck.

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 ofAmerican Publishers, Activision, California NewspaperPublishers Association, Capcom USA, Comic Book LegalDefense Fund, E! Entertainment Television, ESPN, First


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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, NamcoBandai Games America, Original Productions, The Press-Enterprise Company, Radio Television Digital NewsAssociation, Sirens Media, Take Two Interactive Software,Thq, Viacom, The Washington Newspaper Publishers

Association, and Wenner Media.

Gregory L. Cutner and Robert J. Wierenga, Schiff Harden,LLP, Ann Arbor, Michigan; Rocky N. Unruh, Schiff Hardin,LLP, San Francisco, California, for Amicus Curiae NationalCollegiate Athletic Association.***

OPINION

BYBEE, Circuit Judge:

Video games are entitled to the full protections of theFirst Amendment, because [l]ike the protected books, plays,

and movies that preceded them, video games communicateideasand even social messagesthrough many familiarliterary devices (such as characters, dialogue, plot, and music)and through features distinctive to the medium (such as theplayers interaction with the virtual world). Brown v. EntmtMerchs. Assn, 131 S. Ct. 2729, 2733 (2011).1 Such rights are

*** The NCAAs motion to file its amicus brief is GRANTED.

1 InBrown v. Electronic Arts, Inc., No. 09-56675, slip op. at 910 (9thCir. July 31, 2013), we noted that there may be some work referred to asa video game (or referred to as a book, play, or movie for that


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not absolute, and states may recognize the right of publicity

to a degree consistent with the First Amendment.Zacchini v.Scripps-Howard Broad. Co., 433 U.S. 562, 57475 (1977). Inthis case, we must balance the right of publicity of a formercollege football player against the asserted First Amendmentright of a video game developer to use his likeness in itsexpressive works.

The district court concluded that the game developer,Electronic Arts (EA), had no First Amendment defenseagainst the right-of-publicity claims of the football player,Samuel Keller. We affirm. Under the transformative usetest developed by the California Supreme Court, EAs usedoes not qualify for First Amendment protection as a matterof law because it literally recreates Keller in the very setting

in which he has achieved renown. The other FirstAmendment defenses asserted by EA do not defeat Kellersclaims either.

I

Samuel Keller was the starting quarterback for Arizona

State University in 2005 before he transferred to theUniversity of Nebraska, where he played during the 2007season. EA is the producer of theNCAA Footballseries ofvideo games, which allow users to control avatarsrepresenting college football players as those avatars

matter) that does not contain enough of the elements contemplated by the

Supreme Court [inBrown v.Entertainment Merchants Association] towarrant First Amendment protection as an expressive work, but assertedthat [e]ven if there is a line to be drawn between expressive video gamesand non-expressive video games, and even if courts should at some pointbe drawing that line, we have no need to draw that line here. The sameholds true in this case.


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participate in simulated games. InNCAA Football, EA seeks

to replicate each schools entire team as accurately aspossible. Every real football player on each team included inthe game has a corresponding avatar in the game with theplayers actual jersey number and virtually identical height,weight, build, skin tone, hair color, and home state. EAattempts to match any unique, highly identifiable playingbehaviors by sending detailed questionnaires to team

equipment managers. Additionally, EA creates realisticvirtual versions of actual stadiums; populates them with thevirtual athletes, coaches, cheerleaders, and fans realisticallyrendered by EAs graphic artists; and incorporates realisticsounds such as the crunch of the players pads and the roar ofthe crowd.

EAs game differs from reality in that EA omits theplayers names on their jerseys and assigns each player ahome town that is different from the actual players hometown. However, users of the video game may upload rostersof names obtained from third parties so that the names doappear on the jerseys. In such cases, EA allows images fromthe game containing athletes real names to be posted on its

website by users. Users can further alter reality by enteringDynasty mode, where the user assumes a head coachsresponsibilities for a college program for up to thirty seasons,including recruiting players from a randomly generated poolof high school athletes, or Campus Legend mode, wherethe user controls a virtual player from high school throughcollege, making choices relating to practices, academics, and

social life.

In the 2005 edition of the game, the virtual startingquarterback for Arizona State wears number 9, as did Keller,and has the same height, weight, skin tone, hair color, hair


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style, handedness, home state, play style (pocket passer),

visor preference, facial features, and school year as Keller. Inthe 2008 edition, the virtual quarterback for Nebraska hasthese same characteristics, though the jersey number does notmatch, presumably because Keller changed his number rightbefore the season started.

Objecting to this use of his likeness, Keller filed a

putative class-action complaint in the Northern District ofCalifornia asserting, as relevant on appeal, that EA violatedhis right of publicity under California Civil Code 3344 andCalifornia common law.2 EA moved to strike the complaintas a strategic lawsuit against public participation (SLAPP)under Californias anti-SLAPP statute, Cal. Civ. Proc. Code 425.16, and the district court denied the motion. We have

jurisdiction over EAs appeal pursuant to 28 U.S.C. 1291.See Batzel v. Smith, 333 F.3d 1018, 102426 (9th Cir. 2003).3

2 There are actually nine named plaintiffs, all former National CollegiateAthletic Association (NCAA) football or basketball players: Keller,Edward OBannon, Jr. (UCLA), Byron Bishop (University of NorthCarolina), Michael Anderson (University of Memphis), Danny Wimprine(University of Memphis), Ishmael Thrower (Arizona State University),Craig Newsome (Arizona State University), Damien Rhodes (SyracuseUniversity), and Samuel Jacobson (University of Minnesota). EAs NCAAbasketball games are also implicated in this appeal. Because the issues are

the same for each plaintiff, all of the claims are addressed through ourdiscussion of Keller andNCAA Football.

3 We review de novo the district courts denial of a motion to strikeunder Californias anti-SLAPP statute.Mindys Cosmetics, Inc. v. Dakar,611 F.3d 590, 595 (9th Cir. 2010).


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II

Californias anti-SLAPP statute is designed to discouragesuits that masquerade as ordinary lawsuits but are brought todeter common citizens from exercising their political or legalrights or to punish them for doing so. Batzel, 333 F.3d at1024 (internal quotation marks omitted). The statuteprovides:

A cause of action against a person arisingfrom any act of that person in furtherance ofthe persons right of petition or free speechunder the United States Constitution or theCalifornia Constitution in connection with apublic issue shall be subject to a special

motion to strike, unless the court determinesthat the plaintiff has established that there is aprobability that the plaintiff will prevail on theclaim.

Cal. Civ. Proc. Code 425.16(b)(1). We have determined thatthe anti-SLAPP statute is available in federal court. Thomas

v. Frys Elecs., Inc., 400 F.3d 1206 (9th Cir. 2005) (percuriam).

We evaluate an anti-SLAPP motion in two steps. First,the defendant must make a prima facie showing that theplaintiffs suit arises from an act by the defendant made inconnection with a public issue in furtherance of the

defendants right to free speech under the United States orCalifornia Constitution. Batzel, 333 F.3d at 1024. Kellerdoes not contest that EA has made this threshold showing.Indeed, there is no question that video games qualify forFirst Amendment protection, Entmt Merchs. Assn,


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131 S. Ct. at 2733, or that Kellers suit arises from EAs

production and distribution ofNCAA Footballin furtheranceof EAs protected right to express itself through video games.

Second, we must evaluate whether the plaintiff hasestablish[ed] a reasonable probability that the plaintiff willprevail on his or her . . . claim.Batzel, 333 F.3d at 1024.The plaintiff must demonstrate that the complaint is legally

sufficient and supported by a prima facie showing of facts tosustain a favorable judgment if the evidence submitted byplaintiff is credited. Metabolife Intl, Inc. v. Wornick,264 F.3d 832, 840 (9th Cir. 2001) (internal quotation marksomitted). The statute subjects to potential dismissal onlythose actions in which the plaintiff cannot state andsubstantiate a legally sufficient claim.Navellier v. Sletten,

52 P.3d 703, 711 (Cal. 2002) (internal quotation marksomitted). EA did not contest before the district court and doesnot contest here that Keller has stated a right-of-publicityclaim under California common and statutory law.4 Instead,EA raises four affirmative defenses derived from the FirstAmendment: the transformative use test, the Rogers test,the public interest test, and the public affairs exemption.

EA argues that, in light of these defenses, it is not reasonablyprobable that Keller will prevail on his right-of-publicity

4 The elements of a right-of-publicity claim under California commonlaw are: (1) the defendants use of the plaintiffs identity; (2) theappropriation of plaintiffs name or likeness to defendants advantage,

commercially or otherwise; (3) lack of consent; and (4) resulting injury.Stewart v. Rolling Stone LLC, 105 Cal. Rptr. 3d 98, 111 (internalquotation marks omitted). The same claim under California Civil Code 3344 requires a plaintiff to prove all the elements of the common lawcause of action plus a knowing use by the defendant as well as a directconnection between the alleged use and the commercial purpose.Id.


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claim. This appeal therefore centers on the applicability of

these defenses. We take each one in turn.5

A

The California Supreme Court formulated thetransformative use defense in Comedy III Productions, Inc. v.Gary Saderup, Inc., 21 P.3d 797 (Cal. 2001). The defense is

a balancing test between the First Amendment and the rightof publicity based on whether the work in question addssignificant creative elements so as to be transformed intosomething more than a mere celebrity likeness or imitation.Id. at 799. The California Supreme Court explained thatwhen a work contains significant transformative elements,it is not only especially worthy of First Amendment

protection, but it is also less likely to interfere with theeconomic interest protected by the right of publicity.Id. at808. The court rejected the wholesale importation of thecopyright fair use defense into right-of-publicity claims,but recognized that some aspects of that defense areparticularly pertinent. Id.; see 17 U.S.C. 107; see alsoSOFA Entmt, Inc. v. Dodger Prods., Inc., 709 F.3d 1273,

127778 (9th Cir. 2013) (discussing the fair use defensecodified in 17 U.S.C. 107).

Comedy IIIgives us at least five factors to consider indetermining whether a work is sufficiently transformative toobtain First Amendment protection. SeeJ. Thomas McCarthy,The Rights of Publicity and Privacy 8:72 (2d ed. 2012).

First, if the celebrity likeness is one of the raw materials

5 Just as we did inHilton v. Hallmark Cards, we reserve the question ofwhether the First Amendment furnishes a defense other than those theparties raise. 599 F.3d 894, 909 n.11 (9th Cir. 2009).


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from which an original work is synthesized, it is more likely

to be transformative than if the depiction or imitation of thecelebrity is the very sum and substance of the work inquestion. Comedy III, 21 P.3d at 809. Second, the work isprotected if it is primarily the defendants ownexpressionas long as that expression is something otherthan the likeness of the celebrity.Id. This factor requires anexamination of whether a likely purchasers primary

motivation is to buy a reproduction of the celebrity, or to buythe expressive work of that artist. McCarthy,supra, 8:72.Third, to avoid making judgments concerning the quality ofthe artistic contribution, a court should conduct an inquirymore quantitative than qualitative and ask whether theliteral and imitative or the creative elements predominate inthe work. Comedy III, 21 P.3d at 809. Fourth, the California

Supreme Court indicated that a subsidiary inquiry would beuseful in close cases: whether the marketability andeconomic value of the challenged work derive primarily fromthe fame of the celebrity depicted. Id. at 810. Lastly, thecourt indicated that when an artists skill and talent ismanifestly subordinated to the overall goal of creating aconventional portrait of a celebrity so as to commercially

exploit his or her fame, the work is not transformative.Id.

We have explained that [o]nly if [a defendant] is entitledto the [transformative] defense as a matter of law can itprevail on its motion to strike, because the CaliforniaSupreme Court envisioned the application of the defense asa question of fact.Hilton, 599 F.3d at 910. As a result, EA

is only entitled to the defense as a matter of law if no trier offact could reasonably conclude that the [game] [i]s nottransformative.Id.


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California courts have applied the transformative use test

in relevant situations in four cases. First, in Comedy IIIitself,the California Supreme Court applied the test to T-shirts andlithographs bearing a likeness of The Three Stooges andconcluded that it could discern no significant transformativeor creative contribution.Id. at 811. The court reasoned thatthe artists undeniable skill is manifestly subordinated to theoverall goal of creating literal, conventional depictions of The

Three Stooges so as to exploit their fame.Id. [W]ere we todecide that [the artists] depictions were protected by the FirstAmendment, the court continued, we cannot perceive howthe right of publicity would remain a viable right other thanin cases of falsified celebrity endorsements.Id.

Second, in Winter v. DC Comics, the California Supreme

Court applied the test to comic books containing charactersJohnny and Edgar Autumn, depicted as villainoushalf-worm, half-human offspring but evoking two famousbrothers, rockers Johnny and Edgar Winter. 69 P.3d 473, 476(Cal. 2003). The court held that the comic books aretransformative and entitled to First Amendment protection.Id. at 480. It reasoned that the comic books are not just

conventional depictions of plaintiffs but contain significantexpressive content other than plaintiffs mere likenesses.Id.at 479. To the extent the drawings of the Autumn brothersresemble plaintiffs at all, they are distorted for purposes oflampoon, parody, or caricature. Id. Importantly, the courtrelied on the fact that the brothers are but cartoon characters. . . in a larger story, which is itself quite expressive.Id.

Third, inKirby v. Sega of America, Inc., the CaliforniaCourt of Appeal applied the transformative use test to a videogame in which the user controls the dancing of Ulala, areporter from outer space allegedly based on singer Kierin


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Kirby, whose signature lyrical expression . . . is ooh la

la. 50 Cal. Rptr. 3d 607, 60910 (Ct. App. 2006). The courtheld that Ulala is more than a mere likeness or literaldepiction of Kirby, pointing to Ulalas extremely tall,slender computer-generated physique, her hairstyle andprimary costume, her dance moves, and her role as aspace-age reporter in the 25th century, all of which wereunlike any public depiction of Kirby. Id. at 616. As in

Winter, Ulala is a fanciful, creative character who exists inthe context of a unique and expressive video game. Id. at618.

Finally, in No Doubt v. Activision Publishing, Inc., theCalifornia Court of Appeal addressed ActivisionsBand Herovideo game. 122 Cal. Rptr. 3d 397, 400 (Ct. App. 2011),

petition for review denied, 2011 Cal. LEXIS 6100 (Cal. June8, 2011) (No. B223996). In Band Hero, users simulateperforming in a rock band in time with popular songs.Id. at401. Users choose from a number of avatars, some of whichrepresent actual rock stars, including the members of the rockband No Doubt.Id. at 401. Activision licensed No Doubtslikeness, but allegedly exceeded the scope of the license by

permitting users to manipulate the No Doubt avatars to playany song in the game, solo or with members of other bands,and even to alter the avatars voices. Id. at 402. The courtheld that No Doubts right of publicity prevailed despiteActivisions First Amendment defense because the game wasnot transformative under the Comedy IIItest. It reasonedthat the video game characters were literal recreations of the

band members, doing the same activity by which the bandachieved and maintains its fame.Id. at 411. According to thecourt, the fact that the avatars appear in the context of avideogame that contains many other creative elements[ ] doesnot transform the avatars into anything other than exact


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depictions of No Doubts members doing exactly what they

do as celebrities. Id. The court concluded that theexpressive elements of the game remain manifestlysubordinated to the overall goal of creating a conventionalportrait of No Doubt so as to commercially exploit its fame.Id. (internal quotation marks omitted).

We have also had occasion to apply the transformative

use test. InHilton v. Hallmark Cards, we applied the test toa birthday card depicting Paris Hilton in a mannerreminiscent of an episode of Hiltons reality show The SimpleLife. 599 F.3d at 899. We observed some differences betweenthe episode and the card, but noted that the basic setting isthe same: we see Paris Hilton, born to privilege, working asa waitress.Id. at 911. We reasoned that [w]hen we compare

Hallmarks card to the video game in Kirby, whichtransported a 1990s singer (catchphrases and all) into the 25thcentury and transmogrified her into a space-age reporter, . . .the card falls far short of the level of new expression added inthe video game.Id. As a result, we concluded that there isenough doubt as to whether Hallmarks card is transformativeunder our case law that we cannot say Hallmark is entitled to

the defense as a matter of law.Id.6

6 We also briefly addressed the transformative use test in a footnote in

Hoffman v. Capital Cities/ABC, Inc., 255 F.3d 1180 (9th Cir. 2001). Weindicated that if we had considered the test, we would have concluded thatan image of Dustin Hoffman from Tootsie that had been altered to make

it appear like he was wearing fashions from a decade later containedsignificant transformative elements. Id.at 1184 n.2; 118283.Hoffmans body was eliminated and a new, differently clothed body wassubstituted in its place. In fact, the entire theory of Hoffmans case restson his allegation that the photograph is not a true or literal depiction ofhim, but a false portrayal.Id. at 1184 n.2.


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With these cases in mind as guidance, we conclude that

EAs use of Kellers likeness does not contain significanttransformative elements such that EA is entitled to thedefense as a matter of law. The facts ofNo Doubtare verysimilar to those here. EA is alleged to have replicated Kellersphysical characteristics in NCAA Football, just as themembers of No Doubt are realistically portrayed in BandHero. Here, as inBand Hero, users manipulate the characters

in the performance of the same activity for which they areknown in real lifeplaying football in this case, andperforming in a rock band in Band Hero. The context inwhich the activity occurs is also similarly realisticrealvenues in Band Hero and realistic depictions of actualfootball stadiums in NCAA Football. As the district courtfound, Keller is represented as what he was: the starting

quarterback for Arizona State and Nebraska, and thegames setting is identical to where the public found [Keller]during his collegiate career: on the football field.Keller v.Elec. Arts, Inc., No. C 09-1967 CW, 2010 WL 530108, at *5(N.D. Cal. Feb. 8, 2010).

EA argues that the district court erred in focusing

primarily on Kellers likeness and ignoring the transformativeelements of the game as a whole. Judge Thomas, ourdissenting colleague, suggests the same. See Dissent at 34.We are unable to say that there was any error, particularly inlight ofNo Doubt, which reasoned much the same as thedistrict court in this case: that the avatars appear in thecontext of a videogame that contains many other creative

elements[ ] does not transform the avatars into anything otherthan exact depictions of No Doubts members doing exactlywhat they do as celebrities.No Doubt, 122 Cal. Rptr. 3d at


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411.7 EA suggests that the fact thatNCAA Footballusers can

alter the characteristics of the avatars in the game issignificant. Again, our dissenting colleague agrees. SeeDissent at 3637. In No Doubt, the California Court ofAppeal noted that Band Hero d[id] not permit players toalter the No Doubt avatars in any respect. Id. at 410. Thecourt went on to say that the No Doubt avatars remain at alltimes immutable images of the real celebrity musicians, in

stark contrast to the fanciful, creative characters in WinterandKirby.Id. The court explained further:

[I]t is the differences betweenKirby and theinstant case . . . which are determinative. InKirby, the pop singer was portrayed as anentirely new characterthe space-age news

reporter Ulala. InBand Hero, by contrast, nomatter what else occurs in the game during thedepiction of the No Doubt avatars, the avatarsperform rock songs, the same activity bywhich the band achieved and maintains its

7

Judge Thomas argues that the sheer number of virtual actors, theabsence of any evidence as to the personal marketing power of SamKeller, and the relative anonymity of each individual player in NCAA

Footballas compared to the public figures in other California right-of-publicity cases all mitigate in favor of finding that the EAs FirstAmendment rights outweigh Kellers right of publicity. See Dissent at3740. These facts are not irrelevant to the analysisthey all can beconsidered in the framework of the five considerations from Comedy IIIlaid out abovebut the fact is that EA elected to use avatars that mimic

real college football players for a reason. If EA did not think there wasvalue in having an avatar designed to mimic each individual player, itwould not go to the lengths it does to achieve realism in this regard.Having chosen to use the players likenesses, EA cannot now hide behindthe numerosity of its potential offenses or the alleged unimportance of anyone individual player.


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fame. Moreover, the avatars perform those

songs as literal recreations of the bandmembers. That the avatars can bemanipulated to perform at fanciful venuesincluding outer space or to sing songs the realband would object to singing, or that theavatars appear in the context of a videogamethat contains many other creative elements,

does not transform the avatars into anythingother than exact depictions of No Doubtsmembers doing exactly what they do ascelebrities.

Id. at 41011. Judge Thomas says that [t]he Court ofAppeal cited character immutability as a chief factor

distinguishing [No Doubt] from WinterandKirby. Dissentat 37. Though No Doubt certainly mentioned theimmutability of the avatars, we do not read the CaliforniaCourt of Appeals decision as turning on the inability of usersto alter the avatars. The key contrast with WinterandKirbywas that in those games the public figures were transformedinto fanciful, creative characters or portrayed as . . .

entirely new character[s]. No Doubt, 122 Cal. Rptr. 3d at410. On this front, our case is clearly aligned withNo Doubt,not with WinterandKirby. We believeNo Doubtoffers apersuasive precedent that cannot be materially distinguishedfrom Kellers case.8,9

8 EA further argues thatNo Doubtis distinguishable because the video

game company in that case entered into a license agreement which itallegedly breached. However, the California Court of Appeal did not relyon breach of contract in its analysis of whether the game wastransformative. 122 Cal. Rptr. 3d at 412 n.7. Keller asserts here that EAcontracted away its First Amendment rights in a licensing agreement withthe NCAA that purportedly prohibited the use of athlete likenesses.


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The Third Circuit came to the same conclusion inHart v.

Electronic Arts, Inc., 717 F.3d 141 (3d Cir. 2013). InHart,EA faced a materially identical challenge under New Jerseyright-of-publicity law, brought by former Rutgers quarterbackRyan Hart. See id. at 163 n.28 (Keller is simply [Hart]incarnated in California.). Though the Third Circuit wastasked with interpreting New Jersey law, the court looked tothe transformative use test developed in California. See id. at

158 n.23 (noting that the right-of-publicity laws arestrikingly similar . . . and protect similar interests in NewJersey and California, and that consequently [there is] noissue in applying balancing tests developed in California toNew Jersey); see also id. at 165 (holding that theTransformative Use Test is the proper analytical frameworkto apply to cases such as the one at bar). Applying the test,

the court held that theNCAA Football. . . games at issue . . .do not sufficiently transform [Hart]s identity to escape the

However, in light of our conclusion that EA is not entitled to a FirstAmendment defense as a matter of law, we need not reach this issue andleave it for the district court to address in the first instance on remand

should the finder of fact determine in post-SLAPP proceedings that EAsuse is transformative.

9 In dissent, Judge Thomas suggests that this case is distinguishable fromother right-to-publicity cases because an individual college athletes rightof publicity is extraordinarily circumscribed and, in practical reality, non-existent because NCAA rules prohibit athletes from benefittingeconomically from any success on the field. Dissent at 41. Judge Thomascommendably addresses the fairness of this structure,see Dissent at 4142

n.5, but setting fairness aside, the fact is that college athletes are notindefinitely bound by NCAA rules. Once an athlete graduates fromcollege, for instance, the athlete can capitalize on his success on the fieldduring college in any number of ways. EAs use of a college athleteslikeness interferes with the athletes right to capitalize on his athleticsuccess once he is beyond the dominion of NCAA rule.


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right of publicity claim, reversing the district courts grant

of summary judgment to EA.Id. at 170.

As we have, the Third Circuit considered the potentiallytransformative nature of the game as a whole, id. at 166, 169,and the users ability to alter avatar characteristics, id. at16668. Asserting that the lack of transformative context iseven more pronounced here than in No Doubt, id. at 166,

and that the ability to modify the avatar counts for littlewhere the appeal of the game lies in users ability to play as,or alongside[,] their preferred players or team, id. at 168(internal quotation marks omitted), the Third Circuit agreedwith us that these changes do not render theNCAA Footballgames sufficiently transformative to defeat a right-of-publicity claim.

Judge Ambro dissented in Hart, concluding that thecreative components ofNCAA Football contain sufficientexpressive transformation to merit First Amendmentprotection. Id. at 175 (Ambro, J., dissenting). But incritiquing the majority opinion, Judge Ambro disregardedNoDoubt and Kirby because they were not decided by the

architect of the Transformative Use Test, the Supreme Courtof California.Id. at 172 n.4. He thus d[id] not attempt toexplain or distinguish the[se cases] holdings except to notethat [he] believe[s]No Doubt, which focused on individualdepictions rather than the work in its entirety, was wronglydecided in light of the prior precedent in Comedy III andWinter. Id. We recognize that we are bound only by the

decisions of a states highest court and not by decisions of thestates intermediate appellate court when considering state-law issues sitting in diversity jurisdiction. See In re Kirkland,915 F.2d 1236, 123839 (9th Cir. 1990). Nonetheless, wherethere is no binding precedent from the states highest court,


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we must predict how the highest state court would decide the

issue using intermediate appellate court decisions, decisionsfrom other jurisdictions, statutes, treatises, and restatementsas guidance. Id. at 1239 (emphasis added). As stated above,we believe No Doubt in particular provides persuasiveguidance. We do not believeNo Doubtto be inconsistent withthe California Supreme Courts relevant decisions, and wewill not disregard a well-reasoned decision from a states

intermediate appellate court in this context. Like the majorityinHart, we rely substantially onNo Doubt, and believe weare correct to do so.

Given thatNCAA Footballrealistically portrays collegefootball players in the context of college football games, thedistrict court was correct in concluding that EA cannot

prevail as a matter of law based on the transformative usedefense at the anti-SLAPP stage. Cf. Hilton, 599 F.3d at91011.10

10 Judge Thomas asserts that [t]he logical consequence of the majorityview is that all realistic depictions of actual persons, no matter howincidental, are protected by a state law right of publicity regardless of thecreative context, jeopardiz[ing] the creative use of historic figures inmotion pictures, books, and sound recordings. Dissent at 43. We rejectthe notion that our holding has such broad consequences. As discussedabove, one of the factors identified in Comedy III requires an

examination of whether a likely purchasers primary motivation is to buya reproduction of the celebrity, or to buy the expressive work of thatartist. McCarthy, supra, 8:72; see Comedy III, 21 P.3d at 809.Certainly this leaves room for distinguishing between this casewhere wehave emphasized EAs primary emphasis on reproducing realityandcases involving other kinds of expressive works.


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B

EA urges us to adopt for right-of-publicity claims thebroader First Amendment defense that we have previouslyadopted in the context of false endorsement claims under theLanham Act: theRogers test.11See Brown v. Elec. Arts, No.09-56675, slip op. at 56 (applying the Rogers test to aLanham Act claim brought by former NFL player Jim Brown

relating to the use of his likeness in EAs Madden NFL videogames).

Rogers v. Grimaldi is a landmark Second Circuit casebalancing First Amendment rights against claims under theLanham Act. 875 F.2d 994 (2d Cir. 1989). The case involveda suit brought by the famous performer Ginger Rogers against

the producers and distributors ofGinger and Fred, a movieabout two fictional Italian cabaret performers who imitatedRogers and her frequent performing partner Fred Astaire.Id.at 99697. Rogers alleged both a violation of the Lanham Actfor creating the false impression that she endorsed the filmand infringement of her common law right of publicity.Id. at997.

TheRogerscourt recognized that [m]ovies, plays, books,and songs are all indisputably works of artistic expression anddeserve protection, but that [t]he purchaser of a book, likethe purchaser of a can of peas, has a right not to be misled as

11 Keller argues that EA never asked the district court to applyRogersand has therefore waived the issue on appeal. Although it could have beenmore explicit, EAs anti-SLAPP motion did cite Rogers and argue thatKeller had not alleged that his likeness was wholly unrelated to thecontent of the video game or a disguised commercial advertisement, thetwo prongs of theRogers test.


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to the source of the product. Id. Consumers of artistic

works thus have a dual interest: They have an interest in notbeing misled and they also have an interest in enjoying theresults of the authors freedom of expression.Id. at 998. TheRogers court determined that titles of artistic or literary workswere less likely to be misleading than the names of ordinarycommercial products, and thus that Lanham Act protectionsapplied with less rigor when considering titles of artistic or

literary works than when considering ordinary products.Id.at 9991000. The court concluded that in general the Actshould be construed to apply to artistic works only where thepublic interest in avoiding consumer confusion outweighs thepublic interest in free expression. Id. at 999. The courttherefore held:

In the context of allegedly misleading titlesusing a celebritys name, that balance willnormally not support application of the[Lanham] Act unless the title has no artisticrelevance to the underlying work whatsoever,or, if it has some artistic relevance, unless thetitle explicitly misleads as to the source or the

content of the work.

Id.

We first endorsed theRogers test for Lanham Act claimsinvolving artistic or expressive works inMattel, Inc. v. MCARecords, Inc., 296 F.3d 894, 902 (9th Cir. 2002). We agreed

that, in the context of artistic and literary titles, [c]onsumersexpect a title to communicate a message about the book ormovie, but they do not expect it to identify the publisher orproducer, and adopt[ed] theRogers standard as our own.Id. Then, in E.S.S. Entertainment 2000, Inc. v. Rock Star


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Videos, Inc., we considered a claim by a strip club owner that

video game maker Rock Star incorporated its club logo intothe games virtual depiction of East Los Angeles, violatingthe clubs trademark right to that logo. 547 F.3d 1095,109698 (9th Cir. 2008). We held that Rock Stars use of thelogo and trade dress was protected by the First Amendmentand that it therefore could not be held liable under theLanham Act.Id. at 10991101. In so doing, we extended the

Rogers test slightly, noting that [a]lthough this testtraditionally applies to uses of a trademark in the title of anartistic work, there is no principled reason why it ought notalso apply to the use of a trademark in the body of the work.Id. at 1099.

In this case, EA argues that we should extend this test,

created to evaluate Lanham Act claims, to apply to right-of-publicity claims because it is less prone to misinterpretationand more protective of free expression than thetransformative use defense. Although we acknowledge thatthere is some overlap between the transformative use testformulated by the California Supreme Court and theRogerstest, we disagree that the Rogers test should be imported

wholesale for right-of-publicity claims. Our conclusion onthis point is consistent with the Third Circuits rejection ofEAs identical argument in Hart. See Hart, 717 F.3d at15458. As the history and development of the Rogers testmakes clear, it was designed to protect consumers from therisk of consumer confusionthe hallmark element of aLanham Act claim. See Cairns v. Franklin Mint Co., 292 F.3d

1139, 1149 (9th Cir. 2002). The right of publicity, on theother hand, does not primarily seek to prevent consumerconfusion. See Hart, 717 F.3d at 158 ([T]he right ofpublicity does not implicate the potential for consumerconfusion . . . .). Rather, it primarily protects a form of


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intellectual property [in ones person] that society deems to

have some social utility. Comedy III, 21 P.3d at 804. As theCalifornia Supreme Court has explained:

Often considerable money, time and energyare needed to develop ones prominence in aparticular field. Years of labor may berequired before ones skill, reputation,

notoriety or virtues are sufficiently developedto permit an economic return through somemedium of commercial promotion. For some,the investment may eventually createconsiderable commercial value in onesidentity.

Id. at 80405 (internal quotation marks and citationsomitted).

The right of publicity protects the celebrity, not theconsumer. Kellers publicity claim is not founded on anallegation that consumers are being illegally misled intobelieving that he is endorsing EA or its products. Indeed, he

would be hard-pressed to support such an allegation absentevidence that EA explicitly misled consumers into holdingsuch a belief. SeeBrown v. Elec. Arts, No. 09-56675, slip op.at 23 (holding under the Rogers test that, since Brownslikeness is artistically relevant to the [Madden NFL] gamesand there are no alleged facts to support the claim that EAexplicitly misled consumers as to Browns involvement with

the games, the public interest in free expression outweighsthe public interest in avoiding consumer confusion). Instead,Kellers claim is that EA has appropriated, withoutpermission and without providing compensation, his talentand years of hard work on the football field. The reasoning of


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theRogers andMattelcourtsthat artistic and literary works

should be protected unless they explicitly misleadconsumersis simply not responsive to Kellers assertedinterests here. Cf. Hart, 717 F.3d at 157 (Effectively, [EA]argues that [Hart] should be unable to assert a claim forappropriating his likeness as a football player preciselybecause his likeness was used for a game about football.Adopting this line of reasoning threatens to turn the right of

publicity on its head.).

We recognize that Rogers also dealt with a right-of-publicity claimone under Oregon lawand applied amodified version of its Lanham Act test in order to adapt tothat particular context:

In light of the Oregon Courts concern for theprotection of free expression, . . . the right ofpublicity [would not] bar the use of acelebritys name in a movie title unless thetitle was wholly unrelated to the movie orwas simply a disguised commercialadvertisement for the sale of goods or

services.

875 F.2d at 1004. However, theRogers court was faced witha situation in which the Oregon Courts . . . [had] notdetermined the scope of the common law right of publicity inthat state. Id. at 1002. In the absence of clear state-lawprecedent, the Rogers court was obliged to engage in the

uncertain task of predicting what the New York courts wouldpredict the Oregon courts would rule as to the contours of aright of publicity under Oregon law. Id. In light ofComedyIIIand its progeny, we are faced with no such uncertain task.


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Lastly, we note that the only circuit court to import the

Rogers test into the publicity arena, the Sixth Circuit, hasdone so inconsistently. InParks v. LaFace Records, the SixthCircuit indicated that the Rogers test was appropriate forright-of-publicity claims, noting that the Restatement (Third)of Unfair Competition had endorsed use of the test in thatcontext. 329 F.3d 437, 461 (6th Cir. 2003) (citingRestatement (Third) of Unfair Competition 47 cmt. c).

Subsequently, in ETW Corp. v. Jireh Publishing, Inc., thecourt acknowledged theParks decision but did not apply theRogers test to the Ohio right-of-publicity claim in question.332 F.3d at 915, 936 & n.17 (6th Cir. 2003). Instead, thecourt applied a balancing test from comment d in theRestatement(analyzing the substantiality and market effectof the use of the celebritys image . . . in light of the

informational and creative content), as well as thetransformative use test from Comedy III.Id. at 93738;seeHart, 717 F.3d at 157 (We find Parks to be less thanpersuasive [as to the applicability of theRogers test to right-of-publicity cases] given that just over a month later anotherpanel of the Sixth Circuit decided [ETW], a right of publicitycase where the Circuit applied the Transformative Use

Test.). Similarly, the Tenth Circuit in Cardtoons, L.C. v.Major League Baseball Players Assn, 95 F.3d 959 (10th Cir.1996), and the Eighth Circuit in C.B.C. Distribution andMarketing, Inc. v. Major League Baseball Advanced Media,

L.P., 505 F.3d 818 (8th Cir. 2007), rejected theRogers test infavor of a flexible case-by-case approach that takes intoaccount the celebritys interest in retaining his or her

publicity and the publics interest in free expression.Therefore, we decline EAs invitation to extend theRogerstest to right-of-publicity claims.


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C

California has developed two additional defenses aimedat protecting the reporting of factual information under statelaw. One of these defenses only applies to common law right-of-publicity claims while the other only applies to statutoryright-of-publicity claims. Montana v. San Jose MercuryNews, Inc., 40 Cal. Rptr. 2d 639, 640 (Ct. App. 1995).

Liability will not lie for common law right-of-publicityclaims for the publication of matters in the public interest.Id. at 64041. Similarly, liability will not lie for statutoryright-of-publicity claims for the use of a name, voice,signature, photograph, or likeness in connection with anynews, public affairs, or sports broadcast or account, or anypolitical campaign. Cal. Civ. Code 3344(d). Although

these defenses are based on First Amendment concerns, Gillv. Hearst Publg Co., 253 P.2d 441, 44344 (Cal. 1953), theyare not coextensive with the Federal Constitution,New Kidson the Block v. News Am. Publg, Inc., 971 F.2d 302, 310n.10 (9th Cir. 1992), and their application is thus a matter ofstate law.

EA argues that these defenses give it the right toincorporate athletes names, statistics, and otherbiographical information into its expressive works, as thedefenses were designed to create extra breathing space forthe use of a persons name in connection with matters ofpublic interest. Keller responds that the right of publicityyields to free use of a public figures likeness only to the

extent reasonably required to report information to the publicor publish factual data, and that the defenses apply only tobroadcasts or accounts of public affairs, not to EAsNCAAFootball games, which do not contain or constitute suchreporting about Keller.


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California courts have generally analyzed the common

law defense and the statutory defense separately, but it isclear that both defenses protect only the act of publishing orreporting. By its terms, 3344(d) is limited to a broadcast oraccount, and we have confirmed that the common lawdefense is about a publication or reporting of newsworthyitems. Hilton, 599 F.3d at 912. However, most of thediscussion by California courts pertains to whether the subject

matter of the communication is of public interest or relatedto news or public affairs, leaving little guidance as towhen the communication constitutes a publication orreporting.

For instance, in Dora v. Frontline Video, Inc., a well-known surfer sued the producer of a documentary on surfing

entitled The Legends of Malibu, claiming misappropriationof his name and likeness. 18 Cal. Rptr. 2d 790, 791 (Ct. App.1993). The court held that the documentary was protectedbecause it was a fair comment on real life events which havecaught the popular imagination.Id. at 792 (internal quotationmarks omitted). The court explained that surfing has createda lifestyle that influences speech, behavior, dress, and

entertainment, has had an economic impact, and has alsohad a significant influence on the popular culture, such that[i]t would be difficult to conclude that a surfingdocumentary does not fall within the category of publicaffairs. Id. at 79495. Similarly, in Gionfriddo v. MajorLeague Baseball, retired professional baseball players allegedthat Major League Baseball violated their right of publicity

by displaying factual data concerning the players, theirperformance statistics, and verbal descriptions and videodepictions of their play in game programs and on its website.114 Cal. Rptr. 2d 307, 314 (Ct. App. 2001). The courtreasoned that [t]he recitation and discussion of factual data


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concerning the athletic performance of these plaintiffs

command a substantial public interest, and, therefore, is aform of expression due substantial constitutional protection.Id. at 315. And inMontana v. San Jose Mercury News, Inc.,former NFL quarterback Joe Montana brought a right-of-publicity action against a newspaper for selling posterscontaining previously published pages from the newspaperdepicting the many Super Bowl victories by Montana and the

San Francisco 49ers. Montana, 40 Cal. Rptr. 2d at 63940.The court found that [p]osters portraying the 49ers [sic]victories are . . . a form of public interest presentation towhich protection must be extended. Id. at 641 (internalquotation marks omitted).

We think that, unlike in Gionfriddo,Montana, and Dora,

EA is not publishing or reporting factual data. EAs videogame is a means by which users can play their own virtualfootball games, not a means for obtaining information aboutreal-world football games. Although EA has incorporatedcertain actual player information into the game (height,weight, etc.), its case is considerably weakened by itsdecision not to include the athletes names along with their

likenesses and statistical data. EA can hardly be consideredto be reporting on Kellers career at Arizona State andNebraska when it is not even using Kellers name inconnection with his avatar in the game. Put simply, EAsinteractive game is not a publication of facts about collegefootball; it is a game, not a reference source. These state lawdefenses, therefore, do not apply.12

12 We similarly reject Judge Thomass argument that Kellers right-of-publicity claim should give way to the First Amendment in light of thefact that the essence ofNCAA Footballis founded on publicly availabledata. Dissent at 40. Judge Thomas compares NCAA Football to the


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III

Under Californias transformative use defense, EAs useof the likenesses of college athletes like Samuel Keller in itsvideo games is not, as a matter of law, protected by the FirstAmendment. We reject EAs suggestion to import theRogerstest into the right-of-publicity arena, and conclude that state-law defenses for the reporting of information do not protect

EAs use.

AFFIRMED.

fantasy baseball products that the Eighth Circuit deemed protected by theFirst Amendment in the face of a right-of-publicity claim in C.B.C.

Distribution and Marketing, 505 F.3d at 82324. Dissent at 40. But thereis a big difference between a video game likeNCAA Footballand fantasybaseball products like those at issue in C.B.C. Those products merely

incorporate[d] the names along with performance and biographical dataof actual major league baseball players. Id. at 820.NCAA Football, onthe other hand, uses virtual likenesses of actual college football players.It is seemingly true that each likeness is generated largely from publiclyavailable datathough, as Judge Thomas acknowledges, EA solicitscertain information directly from schoolsbut finding this fact dispositivewould neuter the right of publicity in our digital world. Computerprogrammers with the appropriate expertise can create a realistic likenessof any celebrity using only publicly available data. If EA creates a virtual

likeness of Tom Brady using only publicly available datapublic imagesand videos of Bradydoes EA have free reign to use that likeness incommercials without violating Bradys right of publicity? We think not,and thus must reject Judge Thomass point about the public availability ofmuch of the data used given that EA produced and used actual likenessesof the athletes involved.


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THOMAS, Circuit Judge, dissenting:

Because the creative and transformative elements ofElectronic Arts NCAA Football video game seriespredominate over the commercial use of the athleteslikenesses, the First Amendment protects EA from liability.Therefore, I respectfully dissent.

I

As expressive works, video games are entitled to FirstAmendment protection. Brown v. Entmt Merchs. Assn,131 S. Ct. 2729, 2733 (2011). The First Amendment affordsadditional protection toNCAA Footballbecause it involves asubject of substantial public interest: collegiate football.

Moore v. Univ. of Notre Dame, 968 F. Supp. 1330, 1337(N.D. Ind. 1997). Because football is a matter of publicinterest, the use of the images of athletes is entitled toconstitutional protection, even if profits are involved.Montana v. San Jose Mercury News, Inc., 40 Cal. Rptr. 2d639, 643 n.2 (Cal. Ct. App. 1995);see also Cal. Civ. Code 3344(d) (exempting from liability the use of a name . . . or

likeness in connection with any . . . public affairs, or sportsbroadcast or account).

Where it is recognized, the tort of appropriation is acreature of common law or statute, depending on thejurisdiction. However, the right to compensation for themisappropriation for commercial use of ones image or

celebrity is far from absolute. In every jurisdiction, any rightof publicity must be balanced against the constitutionalprotection afforded by the First Amendment. Courts haveemployed a variety of methods in balancing the rights. See,e.g., Doe v. TCI Cablevision, 110 S.W.3d 363, 374 (Mo.


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2003) (en banc). The California Supreme Court applies a

transformative use test it formulated in Comedy IIIProductions, Inc. v. Gary Saderup, Inc., 21 P.3d 797 (Cal.2001).1

As the majority properly notes, the transformative usedefense is a balancing test between the First Amendmentand the right of publicity based on whether the work in

question adds significant creative elements so as to betransformed into something more than a mere celebritylikeness or imitation. Comedy III, 21 P.3d at 799. Therationale for the test, as the majority notes, is that when awork contains significant transformative elements, it is notonly especially worthy of First Amendment protection, but itis also less likely to interfere with the economic interest

protected by the right of publicity. Id. at 808.

The five considerations articulated in Comedy III,andcited by the majority, are whether: (1) the celebrity likenessis one of the raw materials from which an original work issynthesized; (2) the work is primarily the defendants ownexpression if the expression is something other than the

likeness of the celebrity; (3) the literal and imitative orcreative elements predominate in the work; (4) the

1 I agree with the majority that the test articulated inRogers v. Grimaldi,875 F.2d 994 (2d Cir. 1989), should not be employed in this context. The

Rogers test is appropriately applied in Lanham Act cases, where theprimary concern is with the danger of consumer confusion when a work

is depicted as something it is not. 15 U.S.C. 1125(a)(1). However, theright of publicity is an economic right to use the value of one ownscelebrity. Zacchini v. Scripps-Howard Broad. Co., 433 U.S. 562, 57677(1977). Therefore, a more nuanced balancing is required. In our context,I believe the transformative use testif correctly applied to the work asa wholeprovides the proper analytical framework.


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marketability and economic value of the challenged work

derives primarily from the fame of the celebrity depicted; and(5) an artists skill and talent has been manifestlysubordinated to the overall goal of creating a conventionalportrait of a celebrity so as to commercially exploit thecelebritys fame. Id. at 80910.

Although these considerations are often distilled as

analytical factors, Justice Mosk was careful in Comedy IIInot to label them as such. Indeed, the focus ofComedy IIIisa more holistic examination of whether the transformativeand creative elements of a particular work predominate overcommercially based literal or imitative depictions. Thedistinction is critical, because excessive deconstruction ofComedy IIIcan lead to misapplication of the test. And it is at

this juncture that I must respectfully part ways with mycolleagues in the majority.

The majority confines its inquiry to how a single athleteslikeness is represented in the video game, rather thanexamining the transformative and creative elements in thevideo game as a whole. In my view, this approach

contradicts the holistic analysis required by thetransformative use test. See Hart v. Elec. Arts, Inc., 717 F.3d141, 17076 (3d Cir. 2013) (Ambro, J., dissenting).2 Thesalient question is whether the entire work is transformative,and whether the transformative elements predominate, ratherthan whether an individual persona or image has been altered.

2 I agree fully with Judge Ambros excellent dissent in Hart, whichdescribes the analytic flaws of applying a transformative use test outsidethe context of the work as a whole.


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When EAs NCAA Football video game series is

examined carefully, and put in proper context, I conclude thatthe creative and transformative elements of the gamespredominate over the commercial use of the likenesses of theathletes within the games.

A

The first step in conducting a balancing is to examine thecreative work at issue. At its essence, EAsNCAA Footballis a work of interactive historical fiction. Although the gamechanges from year to year, its most popular featurespredominately involve role-playing by the gamer. Forexample, a player can create a virtual image of himself as apotential college football player. The virtual player decides

which position he would like to play, then participates in aseries of tryouts or competes in an entire high schoolseason to gauge his skill. Based on his performance, thevirtual player is ranked and available to play at selectcolleges. The player chooses among the colleges, thenassumes the role of a college football player. He also selectsa major, the amount of time he wishes to spend on social

activities, and practiceall of which may affect the virtualplayers performance. He then plays his position on thecollege team. In some versions of the game, in another mode,the virtual player can engage in a competition for theHeisman Trophy. In another popular mode, the gamerbecomes a virtual coach. The coach scouts, recruits, anddevelops entirely fictional players for his team. The coach

can then promote the teams evolution over decades ofseasons.

The college teams that are supplied in the game doreplicate the actual college teams for that season, including


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virtual athletes who bear the statistical and physical

dimensions of the actual college athletes. But, unlike theirprofessional football counterparts in theMaddenNFL series,the NCAA football players in these games are not identified.

The gamers can also change their abilities, appearances,and physical characteristics at will. Kellers impressivephysical likeness can be morphed by the gamer into an

overweight and slow virtual athlete, with anemic passingability. And the gamer can create new virtual players out ofwhole cloth. Players can change teams. The gamer could pitSam Keller against himself, or a stronger or weaker versionof himself, on a different team. Or the gamer could play thegame endlessly without ever encountering Kellers avatar. Inthe simulated games, the gamer controls not only the conduct

of the game, but the weather, crowd noise, mascots, and otherenvironmental factors. Of course, one may play the gameleaving the players unaltered, pitting team against team. But,in this context as well, the work is one of historic fiction. Thegamer controls the teams, players, and games.

Applying the Comedy III considerations to NCAA

Footballin proper holistic context, the considerations favorFirst Amendment protection. The athletic likenesses are butone of the raw materials from which the broader game isconstructed. The work, considered as a whole, is primarilyone of EAs own expression. The creative and transformativeelements predominate over the commercial use of likenesses.The marketability and economic value of the game comes

from the creative elements within, not from the purecommercial exploitation of a celebrity image. The game isnot a conventional portrait of a celebrity, but a workconsisting of many creative and transformative elements.


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The video game at issue is much akin to the creations the

California Supreme Court found protected in Winter v. DCComics, 69 P.3d 473, 476 (Cal. 2003), where the two fabledguitarists Johnny and Edgar Winter were easily identifiable,but depicted as chimeras. It is also consistent with theCalifornia Court of Appeals decision in Kirby v. Sega ofAmerica, Inc.,50 Cal. Rptr. 3d 607, 60910 (Cal. Ct. App.2006), where a character easily identified as singer Kierin

Kirby, more popularly known as Lady Miss Kier, wastransformed into a fanciful, creative character who existsin the context of a unique and expressive video game. Id. at618. So, too, are the virtual players who populate the worldof theNCAAFootballseries.

No Doubt v. Activision Publishing, Inc.,122 Cal. Rptr. 3d

397 (Cal. Ct. App. 2011), is not to the contrary. The literalrepresentations in No Doubt were not, and could not be,transformed in any way. Indeed, in No Doubt, thebandmembers posed for motion-capture photography to allowreproduction of their likenesses, id. at 402, and the Court ofAppeal underscored the fact that the video game did notpermit players to alter the No Doubt avatars in any respect

and the avatars remained at all times immutable images ofthe real celebrity musicians, id. at 410. The Court of Appealcited character immutability as a chief factor distinguishingthat case from WinterandKirby. Id. Unlike the avatars inNo Doubt, the virtual players in NCAA Football arecompletely mutable and changeable at the whim of the gamer.The majority places great reliance onNo Doubtas support for

its proposition that the initial placement of realistic avatars inthe game overcomes the First Amendments protection, butthe Court of Appeal in No Doubtrejected such a crampedconstruction, noting that even literal reproductions ofcelebrities may be transformed into expressive works based


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on the context into which the celebrity image is placed. Id.

at 410 (citing Comedy III, 21 P.3d at 797).3

Unlike the majority, I would not punish EA for therealism of its games and for the skill of the artists whocreated realistic settings for the football games. Majority op.at 21 n.10. That the lifelike roar of the crowd and the crunchof pads contribute to the gamers experience demonstrates

how little of NCAA Football is driven by the particularlikeness of Sam Keller, or any of the other plaintiffs, ratherthan by the games artistic elements.

In short, considering the creative elements alone in thiscase satisfies the transformative use test in favor of FirstAmendment protection.

B

Although one could leave the analysis with anexamination of the transformative and creative aspects of thegame, a true balancing requires an inquiry as to the other sideof the scales: the publicity right at stake. Here, as well, the

NCAA Footballvideo game series can be distinguished fromthe traditional right of publicity cases, both from aquantitative and a qualitative perspective.

As a quantitative matter,NCAA Footballis different fromother right of publicity cases in the sheer number of virtualactors involved. Most right of publicity cases involve either

one celebrity, or a finite and defined group of celebrities.

3 Of course, to the extent that the Court of Appeals opinion inNo Doubtmay be read to be in tension with the transformative use test as articulatedby the California Supreme Court in Comedy IIIand Winter, it must yield.


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Comedy IIIinvolved literal likenesses of the Three Stooges.

Hilton v. Hallmark Cards, 599 F.3d 894, 90912 (9th Cir.2009), involved the literal likeness of Paris Hilton. Winterinvolved the images of the rock star brother duo. Kirbyinvolved the likeness of one singer. No Doubtfocused on thelikenesses of the members of a specific legendary band.

In contrast,NCAA Footballincludes not just Sam Keller,

but thousands of virtual actors. This consideration is ofparticular significance when we examine, as instructed byComedy III, whether the source of the product marketabilitycomes from creative elements or from pure exploitation of acelebrity image. 21 P.3d at 810. There is not, at this stage ofthe litigation, any evidence as to the personal marketingpower of Sam Keller, as distinguished from the appeal of the

creative aspects of the product. Regardless, the sheer numberof athletes involved inevitably diminish the significance ofthe publicity right at issue. Comedy III involved literaldepictions of the Three Stooges on lithographs and T-shirts.Winterinvolved characters depicted in a comic strip. KirbyandNo Doubtinvolved pivotal characters in a video game.The commercial image of the celebrities in each case was

central to the production, and its contact with the consumerwas immediate and unavoidable. In contrast, one could playNCAA Footballthousands of times without ever encounteringa particular avatar. In context of the collective, anindividuals publicity right is relatively insignificant. Putanother way, if an anonymous virtual player is tackled in animaginary video game and no one notices, is there any right

of publicity infringed at all?

The sheer quantity of the virtual players in the gameunderscores the inappropriateness of analyzing the right ofpublicity through the lens of one likeness only. Only when


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the creative work is considered in complete context can a

proper analysis be conducted.

As a qualitative matter, the essence ofNCAA Footballisfounded on publicly available data, which is not protected byany individual publicity rights. It is true that EA solicits andreceives information directly from colleges and universities.But the information is hardly proprietary. Personal vital

statistics for players are found in college programs and mediaguides. Likewise, playing statistics are easily available. Inthis respect, the information used by EA is indistinguishablefrom the information used in fantasy athletic leagues, forwhich the First Amendment provides protection, C.B.C.Distribution & Mktg., Inc. v. Major League Baseball

Advanced Media, L.P., 505 F.3d 818, 82324 (8th Cir. 2007),

or much beloved statistical board games, such as Strat-O-Matic. An athletes right of publicity simply does notencompass publicly available statistical data. See, e.g., IMSHealth Inc. v. Sorrell, 630 F.3d 263, 271-72 (2d Cir. 2010)(The First Amendment protects [e]ven dry information,devoid of advocacy, political relevance, or artisticexpression. (quoting Universal City Studios, Inc. v. Corley,

273 F.3d 429, 446 (2d Cir. 2001)) (alteration in original)).4

Further, the structure of the game is not founded onexploitation of an individuals publicity rights. The playersare unidentified and anonymous. It is true that third-party

4 Contrary to the majoritys suggestion, I do not claim that any use of a

likeness founded on publicly available information is transformative.Majority op. 3031 n.12. The majoritys analogy to a commercialfeaturing Tom Brady is inapposite for at least two reasons: (1) acommercial is not interactive in the same way thatNCAA Footballis, and(2) Bradys marketing power is well established, while that of theplaintiffs is not.


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software is available to quickly identify the players, but that

is not part of the EA package. And the fact that the playerscan be identified by the knowledgeable user by their position,team, and statistics is somewhat beside the point. The issueis whether the marketability of the product is driven by anindividual celebrity, or by the game itself. Comedy III,21 P.3d at 810. Player anonymity, while certainly not acomplete defense, bears on the question of how we balance

the right of publicity against the First Amendment. Thisfeature of the game places it in stark contrast withNo Doubt,where the whole point of the enterprise was the successfulcommercial exploitation of the specifically identified, world-famous musicians.

Finally, as a qualitative matter, the publicity rights of

college athletes are remarkably restricted. This considerationis critical because the right to exploit commercially onescelebrity is primarily an economic right. Gionfriddo v.Major League Baseball, 114 Cal. Rptr. 2d 307, 318 (Cal. Ct.App. 2001). NCAA rules prohibit athletes from benefittingeconomically from any success on the field. NCAA Bylaw12.5 specifically prohibits commercial licensing of an NCAA

athletes name or picture. NCAA, 201213 NCAA DivisionI Manual 12.5.2.1 (2012). Before being allowed to competeeach year, all Division I NCAA athletes must sign a contractstating that they understand the prohibition on licensing andaffirming that they have not violated any amateurism rules.In short, even if an athlete wished to license his image to EA,the athlete could not do so without destroying amateur status.

Thus, an individual college athletes right of publicity is


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extraordinarily circumscribed and, in practical reality, non-

existent.5

In sum, even apart from consideration of transformativeelements, examination of the right of publicity in questionalso resolves the balance in favor of the First Amendment.The quantity of players involved dilutes the commercialimpact of any particular player and the scope of the publicity

right is significantly reduced by the fact that: (1) a playercannot own the individual, publicly available statistics onwhich the game is based; (2) the players are not identified inthe game; and (3) NCAA college athletes do not have the

5 The issue of whether this structure is fair to the student athlete isbeyond the scope of this appeal, but forms a significant backdrop to thediscussion. The NCAA received revenues of $871.6 million in fiscal year201112, with 81% of the money coming from television and marketingfees. However, few college athletes will ever receive any professionalcompensation. The NCAA reports that in 2011, there were 67,887 college

football players. Of those, 15,086 were senior players, and only 255athletes were drafted for a professional team. Thus, only 1.7% of seniorsreceived any subsequent professional economic compensation for theirathletic endeavors. NCAA, Estimated Probability of Competing in

Athletics Beyond the High School Interscholastic Level(2011), availableat http://www.ncaa.org/wps/wcm/connect/public/ncaa/pdfs/2011/2011+probability+of+going+pro.

And participation in college football can come at a terrible cost. The

NCAA reports that, during a recent five-year period, college footballplayers suffered 41,000 injuries, including 23 non-fatal catastrophicinjuries and 11 fatalties from indirect catastrophic injuries. NCAA,

Football Injuries: Data From the 2004/05 to 2008/09 Seasons, availablea t h t tp : / /www.n caa .o r g /wp s /wcm/co n n ec t /p u b l i c /n caa /health+and+safety/sports+injuries/resources/football+injuries.


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right to license their names and likenesses, even if they chose

to do so.6

II

Given the proper application of the transformative usetest, Keller is unlikely to prevail. The balance of interestsfalls squarely on the side of the First Amendment. The stakes

are not small. The logical consequence of the majority viewis that all realistic depictions of actual persons, no matter howincidental, are protected by a state law right of publicityregardless of the creative context. This logic jeopardizes thecreative use of historic figures in motion pictures, books, andsound recordings. Absent the use of actual footage, themotion pictureForrest Gump might as well be just a box of

chocolates. Without its historical characters, Midnight inParis would be reduced to a pedestrian domestic squabble.The majoritys holding that creative use of realistic imagesand personas does not satisfy the transformative use testcannot be reconciled with the many cases affording such

6 While acknowledging that these considerations are relevant to theComedy IIIanalysis, the majority says EAs use of realistic likenessesdemonstrates that it sees value in having an avatar designed to mimiceach individual player. Majority op. at 17 n.7. But the same is true ofany right of publicity case. The defendants in Wintersaw value in using

comic book characters that resembled the Winter brothers. AndyWarholwhose portraits were discussed in Comedy IIIsaw value inusing images of celebrities such as Marilyn Monroe. In those cases, theproducts marketability derives primarily from the creative elements, notfrom a pure commercial exploitation of a celebrity image. The same istrue ofNCAA Football.


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works First Amendment protection.7 I respectfully disagree

with this potentially dangerous and out-of-contextinterpretation of the transformative use test.

For these reasons, I respectfully dissent.

7See, e.g., ETW Corp. v. Jireh Publg, Inc., 332 F.3d 915 (6th Cir.2003) (affording First Amendment protection to an artists use ofphotographs of Tiger Woods); J Thomas McCarthy The Rights of

ea video games used ex-ncaa athletes' images without permision: 9th cir

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