By Marcelo Barros, of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Zachary Miller, a well-known professional skateboarder, was paid by Easy Day Studios Pty. Ltd. and Reverb Communications, Inc. to help develop a video game, which was ultimately called Skater XL. Miller agreed to model various clothing outfits for the game, but only with the understanding that the outfits he wore would be applied to a generic, unidentifiable character. But when the game came out, Miller’s reaction was that the character was neither generic nor unidentifiable, but an “exact copy” of him. As a result, Miller sued Easy Day and Reverb in the Southern District of California, alleging false endorsement and false advertising under the federal Lanham Act. The district court, however, dashed the skateboarder’s hopes of recovery when it granted the defendants’ motion to dismiss—though with leave to amend.
Skater XL allows players to perform numerous skateboarding tricks. Players can either play singly, mastering their skills alone, or online in what the game calls “multiplayer mode,” where they share skateboarding sessions in simulated environments. Players choose from among five possible characters. Four of these characters are explicitly identified famous skateboarders—Tiago Lemos, Evan Smith, Tom Asta, and Brandon Westgate. However, the last character, which is the generic character that Miller modeled his clothing outfits for, is completely anonymous and not identified by name or backstory. Indeed, this character was intended (at least according to the defendants) “to be something of a blank slate upon which users can customize the character according to their own preferences, including choosing the character’s gender, race, and hair color.”
But Miller’s central allegation in the case was that while he had been told that the game’s generic character would not be identifiable as him, that is not how things turned out. Rather, Miller alleged that the defendants had made the generic character in a way that was readily identifiable as him—and had used his “image and likeness”—without his consent. Flowing from this central allegation, Miller’s legal argument under the Lanham Act was straightforward. First, he contended that the Defendants’ conduct violated the Act because it was likely to create confusion in the minds of the consumers playing Skater XL by making them think—falsely—that he had endorsed or sponsored the game. Second, he contended that the Defendants’ conduct amounted to false advertising under the Act.
Addressing Miller’s false-endorsement claim, the court first explained that the Lanham Act protects against the “unauthorized imitation of [a celebrity’s] distinctive attributes, where those attributes amount to an unregistered trademark.” This occurs, the court recognized, when an infringer mimics a famous person’s distinctive attributes in a manner that causes consumers to be confused as to whether the person is endorsing a particular product. The key inquiry, though, is not whether there is a possibility of confusion, but rather whether there is a likelihood of confusion.
The court recognized, however, that in assessing likelihood of confusion, there are First Amendment concerns when expressive content is involved. To account for these concerns, courts (including the Ninth Circuit) have employed a burden-shifting test known as the Rogers test, after the Second Circuit’s decision in Rogers v. Grimaldi. Under this test, the defendant bears the threshold burden of showing that the use of an allegedly infringing mark is part of an “expressive work.” Here, as in most cases, this was an easy burden to overcome, something akin to performing an ollie, a basic skateboarding move. In fact, because the underlying work was a video game, and the law was clear that video games are expressive works protected by the First Amendment, Miller did not even dispute that the defendants met their threshold burden. As a result, the burden shifted under the Rogers test to Miller, who had to show that the defendants’ use of his likeness either (1) was “not artistically relevant to the underlying [expressive] work” or (2) “explicitly misle[d] consumers” regarding the work’s “source or content.” However, this burden was, in the court’s view, a difficult trick to land, more akin to attempting a 900, the 2-1/2 revolution aerial spin.
Addressing the first possibility—that Miller could show no artistic relevance—the court noted that all the defendants needed to establish was an amount of artistic relevance “above zero.” Given that the game purported to create a realistic simulated environment, the court concluded that the likeliness to a real-life skateboarder met this nonzero threshold. Moving on to the second possibility—that Miller could show that the defendants misled consumers—the court underscored that neither mere use of Miller’s likeliness nor the recognition of Miller by some consumers would be sufficient. Rather, the court said, there must be some “explicit representation to suggest [Miller’s] endorsement or sponsorship.” But even accepting the allegations in Miller’s complaint as true and construing the complaint favorably to him, as the court was required to do in the context of a motion to dismiss, it did not find it plausible that the use of a single anonymous character, in stark contrast to four identifiable ones, would explicitly mislead consumers into thinking that Miller had endorsed the game.
Miller’s false advertising claim similarly ended in a face plant. False advertising claimants, the court said, “must demonstrate standing beyond the typical Article III requirements.” Specifically, Miller had to show both that he was in “the zone of interests” protected by the Lanham Act and that his alleged injuries were proximately caused by the defendants’ infringing use. To be in the zone of interests, however, Miller had to show “an injury to a commercial interest in reputation or sales.” But Miller was a skateboarder and did not compete “in the same market” as the defendants, nor had Miller alleged that he had lost endorsement opportunities or suffered some other competitive injury. Indeed, the court noted, while Miller had alleged that the defendants had “injured” him, he had alleged no facts to support that allegation, and he had simply ignored the issue in responding to the defendants’ motion to dismiss. Accordingly, the court sided with the defendants and granted their motion.
Having dismissed all of Miller’s claims under the Lanham Act, the court declined, in its discretion, to exercise supplemental jurisdiction over the remaining state law claims (which were described as common law and statutory right of publicity claims). Miller had argued that there was diversity jurisdiction over these claims, but as the court noted, that requires complete diversity, and one of the defendants (Reverb) and Miller were both California citizens.
But this might not be the end of the parties’ dispute. Because all of Miller’s claims were dismissed without prejudice, if he can overcome the deficiencies the court identified in his complaint, there may be more yet to come.
The case is Miller v. Easy Day Studios Pty. Ltd., No. 20cv02187-LAB-DEB, 2021 U.S. Dist. LEXIS 176582, at *1 (S.D. Cal. Sep. 16, 2021)This article originally published in Finnegan’s INCONTESTABLE Blog on Febr