1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 ZACHARY MILLER, an individual, Case No. 20cv02187-LAB-DEB
12 Plaintiff, ORDER:
13 v. (1) GRANTING IN PART AND 14 EASY DAY STUDIOS PTY LTD, an DENYING IN PART DEFENDANTS’ REQUEST Australian proprietary limited 15 FOR JUDICIAL NOTICE; company; REVERB
16 COMMUNICATIONS, INC., a (2) GRANTING PLAINTIFF’S California corporation; and DOES 1- REQUEST FOR JUDICIAL 17 25 INCLUSIVE, NOTICE; 18 Defendants. (3) GRANTING IN PART AND
19 DENYING IN PART MOTION
TO DISMISS; AND 20
21 (4) DENYING MOTION TO 22 STRIKE.
23 24 Plaintiff Zachary Miller, a professional skateboarder, was paid by Defendants 25 Easy Day Studios Pty Ltd (“Easy Day”) and Reverb Communications, Inc. 26 (“Reverb”) (collectively, “Defendants”) to assist in developing a video game, called 27 Skater XL. Miller believed that the extent of his agreement with Defendants was to 28 model various clothing outfits, which would then be captured by a technique called 1 photogrammetry and applied to a generic character in the video game. Miller 2 alleges that he didn’t consent to the use of his image or likeness in the game, yet 3 one of the characters in it appears to be his exact replica. 4 Miller has sued Defendants, alleging unauthorized use of his image and 5 likeness in the video game and its marketing and promotion. On January 15, 2021, 6 Easy Day filed a Motion to Dismiss (Dkt. 13) and Motion to Strike the Complaint 7 (Dkt. 12). Reverb joined in Easy Day’s motions. (Dkt. 15–16.) The Court has read 8 and considered the motion, opposition, and reply documents submitted in 9 connection with these motions, and finds that Miller fails to state a claim under the 10 Lanham Act. The Court GRANTS Defendants’ Motion to Dismiss and DENIES as 11 moot Defendants’ Motion to Strike. 12 I. REQUEST FOR JUDICIAL NOTICE 13 In ruling on a Rule 12(b)(6) motion, courts generally may not look beyond 14 the four corners of the complaint, with the exceptions of documents incorporated 15 by reference into the complaint and any relevant matters subject to judicial notice. 16 See Swartz v. KPMG LLP, 476 F.3d 756, 763 (9th Cir. 2007). Under the doctrine 17 of incorporation by reference, courts may consider not only documents attached 18 to the complaint, but also documents whose contents are alleged therein, provided 19 the complaint “necessarily relies” on those documents or their contents, and the 20 documents’ authenticity and relevance are undisputed. Coto Settlement v. 21 Eisenberg, 593 F.3d 1031, 1038 (9th Cir. 2010) (internal citations omitted). This 22 rule “prevent[s] plaintiffs from surviving a Rule 12(b)(6) motion by deliberately 23 omitting documents upon which their claims are based.” Swartz, 476 F.3d at 763 24 (alterations and internal quotation marks omitted). 25 Courts may also “judicially notice a fact that is not subject to reasonable 26 dispute because it: (1) is generally known within the trial court’s territorial 27 jurisdiction; or (2) can be accurately and readily determined from sources whose 28 accuracy cannot reasonably be questioned.” Fed. R. Evid. 201(b). Proper subjects 1 of judicial notice include court records in a related litigation, see United States ex 2 rel. Robinson Rancheria Citizens Council v. Borneo, Inc., 971 F.2d 244, 248 (9th 3 Cir. 1992), legislative documents, see Anderson v. Holder, 673 F.3d 1089, 1094 4 n.1 (9th Cir. 2012), and publicly accessible websites, see Daniels-Hall v. Nat’l 5 Educ. Ass’n, 629 F.3d 992, 998–99 (9th Cir. 2010). 6 A. Defendants’ Request 7 Defendants request that the Court take judicial notice of the following: (1) the 8 contents of the Skater XL videogame; (2) text messages exchanged between 9 Miller and Easy Day’s Director of Marketing, Jeff Goforth; (3) screenshots on 10 Instagram related to user “@cyread”; (4) screenshots on Facebook related to user 11 “@tylurgrom”; and (5) Skater XL’s sales webpage on the Steam videogame 12 platform. (Dkt. 12-2.) Miller doesn’t dispute the authenticity of any of these items. 13 Here, Miller’s claims center on the alleged inclusion of his image and likeness 14 in the Skater XL video game. He refers to the contents of Skater XL and attaches 15 various digital images from the video game within his Complaint. Because Skater 16 XL is the focal point of Miller’s entire Complaint and its contents as described in 17 Paragraphs 3 through 5 of the Declaration of Dain Hedgpeth are undisputed, the 18 Court GRANTS Defendants’ request for judicial notice of Skater XL. See Keller v. 19 Elecs. Arts, Inc., No. C 09-1967 CW, 2010 WL 530108, at *5 n.2 (N.D. Cal. Feb. 8, 20 2010), aff’d sub nom. In re NCAA Student-Athlete Name & Likeness Licensing 21 Litig., 724 F.3d 1268 (9th Cir. 2013) (“Because Plaintiff refers to the video games 22 in his complaint, the Court GRANTS EA’s request for judicial notice of them.”). 23 The Court similarly GRANTS Defendants’ request as to the text message 24 exchange between Miller and Jeff Goforth included in the Declaration of Jeff 25 Goforth. (Dkt. 12-4, Exs. 1–2.) Miller references this exchange in his Complaint 26 (Dkt. 1 (“Compl.”) ¶ 10), and necessarily relies on it for his allegations of 27 Defendants’ wrongdoing. See Abe v. Hyundai Motor Am., Inc., No. 28 SACV19699JVSADSX, 2019 WL 6647938, at *3 (C.D. Cal. Aug. 27, 2019) (“[T]he 1 Court grants Hyundai’s request for judicial notice of the full text message exchange 2 with Plaintiff, . . . as the FAC necessarily relies upon its contents.”). 3 Defendants also seek judicial notice of two Instagram screenshots evincing 4 Miller’s connection to user “@cyread,” as well as a Facebook post by Miller in 5 which he tags user “@tylurgrom” in a photograph. (Dkt. 12-5 (“Freund Decl.”), Exs. 6 1–3.) Defendants contend that because users “@cyread” and “@tylurgrom” are 7 referenced in the Complaint, these exhibits are the proper subject of judicial notice. 8 (Dkt. 12-2 ¶¶ 4–5.) But the specific screenshots and posts that Defendants ask the 9 Court to judicially notice were never referenced or described in the Complaint. 10 Defendants cite to Young v. Greystar Real Estate Partners, LLC, No. 3:18-cv- 11 02149-BEN MSB, 2019 WL 4169889, at *2 (S.D. Cal. Sept. 3, 2019), and Wright 12 v. Buzzfeed, Inc., No. 2:18-cv- 02187-CAS (AFMx), 2018 WL 2670642, at *1 n.1 13 (C.D. Cal. June 4, 2018), for the proposition that photographs and social media 14 posts can be judicially noticed, but overlook the fact that those cases concerned 15 photos and posts on social media that were specifically referenced and described 16 in the complaint. Young, 2019 WL 4169889, at *2 (“Moreover, ‘the complaint 17 specifically describes the posts (and photograph) by reference to a social media 18 caption . . .); Wright, 2018 WL 2670642, at *1–2 (taking judicial notice of the 19 disputed “subject photographs” in the complaint over which the plaintiff allegedly 20 had a copyright and “were initially published on plaintiff’s Instagram account”). Nor 21 are these screenshots and posts “generally known within the trial court’s territorial 22 jurisdiction” or capable of “accurate[ ] and read[y] determin[ation] from sources 23 whose accuracy cannot reasonably be questioned.” Fed. R. Evid. 201(b). The 24 Court DENIES Defendants’ request as to these exhibits. 25 Finally, the Court GRANTS Defendants’ request for judicial notice of the 26 Skater XL sales webpage on the Steam website. Miller doesn’t oppose this request 27 or otherwise contend that the document is inaccurate. See Pac. Overlander, LLC 28 v. Kauai Overlander, No. 18-cv-2142-KAW, 2018 WL 3821070, at *2 (N.D. Cal. 1 Aug. 10, 2018) (“[I]n general, websites and their contents may be judicially 2 noticed.”); Wible v. Aetna Life Ins. Co., 375 F. Supp. 2d 956, 965–66 (C.D. Cal. 3 2005) (taking judicial notice of the contents of Amazon.com web pages describing 4 books related to the case). 5 B. Miller’s Request 6 In his Opposition, Miller requests that the Court take judicial notice of various 7 screenshots from Easy Day’s and Reverb’s respective websites. (Dkt. 18-6 ¶¶ 1– 8 3; Dkt. 18-2, Exs. 1–3.) Public websites are the proper subjects of judicial notice if 9 their contents are related to the disputed issues and their authenticity is not in 10 question. See Caldwell v. Caldwell, 2006 WL 618511, at *4 (N.D. Cal. 2006) (“The 11 court agrees with the proposition that, as a general matter, websites and their 12 contents may be proper subjects for judicial notice.”). The Court GRANTS Miller’s 13 request for judicial notice of Exhibits 1 through 3 of the Declaration of Matthew 14 Miller. 15 II. BACKGROUND 16 Miller is a “well-known professional skateboarder and has been for over 17 thirteen (13) years.” (Compl. ¶ 8.) Throughout his career, he has been hired to 18 “appear[ ] in promotional campaigns and magazine editorial photographs” for 19 various high-profile companies, including Quicksilver, DC Shoes, and Nixon. (Id. 20 ¶¶ 8–9.) In April 2019, Defendants proposed to Miller that he model different 21 clothing outfits for motion capture and use in a skateboarding-themed video game. 22 (Id. ¶ 10.) Defendants explained that the motion capture was for a “generic” 23 character in the video game that wouldn’t resemble Miller or have any identifiable 24 characteristics. (Id.) Defendants assured Miller that the video game “won’t have 25 your name anywhere or anything if you’re worried about that.” (Id.) On July 13, 26 2019, following the motion capture session, Easy Day’s Director of Marking, Jeff 27 Goforth, asked Miller via text message about his height, explaining that he “[j]ust 28 need[ed] to make sure the scaling of the character is correct.” (Dkt. 12-4, Ex. 2.) 1 Miller responded that his height is 5’8” and asked, “What does it look like? Haha,” 2 to which Mr. Goforth responded, “Thanks man. Let me see if I can get a screenshot 3 for you.” (Id.) Defendants paid Miller two hundred and fifty dollars for his work. 4 (Compl. ¶ 10.) 5 Defendants’ video game, named Skater XL, was released a short time later. 6 (Compl. ¶ 11.) In the game, users can simulate skateboarding tricks and 7 techniques in a realistic skateboarding environment. (Dkt. 12-3 ¶ 3.) Users can 8 select to play as one of five different skater characters, including as professional 9 skateboarders Tiago Lemos, Evan Smith, Tom Asta, and Brandon Westgate, as 10 well as a nameless “generic” skater avatar. (Id. ¶ 4.) The first four characters are 11 explicitly identified by name and image in the game, while the latter generic 12 character has no name or identifying characteristics. (Id.) This generic character 13 can be customized according to user preference, including customizing its gender, 14 race, hair color, clothing, and accessories. (Id.) 15 On November 9, 2020, Miller sued Defendants for the use of his image and 16 likeness in Skater XL without his consent, asserting that the “generic” avatar is not, 17 in fact, generic, but rather an “exact copy of Plaintiff.” (Id. ¶ 10.) And despite 18 Defendants’ assurances that the avatar would look nothing like him, Miller alleges 19 that the character is easily identifiable as him. (Id. ¶ 12.) The Complaint alleges 20 the following four causes of action: (1) False Endorsement, 15 U.S.C. § 1125(a); 21 (2) False Advertising, 15 U.S.C. § 1125(a); (3) Violation of Cal Civ. Code § 3344; 22 (4) Violation of Common Law Right of Publicity. Defendants have moved to dismiss 23 Miller’s first and second causes of action under the Lanham Act, and to strike his 24 third and fourth causes of action for statutory and common law right of publicity. 25 III. LEGAL STANDARD 26 A Rule 12(b)(6) motion tests the sufficiency of a complaint. Navarro v. Block, 27 250 F.3d 729, 732 (9th Cir. 2001). “To survive a motion to dismiss, a complaint 28 must contain sufficient factual matter, accepted as true, to ‘state a claim to relief 1 that is plausible on its face.’” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting 2 Twombly, 550 U.S. at 547). A claim is facially plausible when the factual allegations 3 permit “the court to draw the reasonable inference that the defendant is liable for 4 the misconduct alleged.” Id. While a plaintiff need not give “detailed factual 5 allegations,” a plaintiff must plead sufficient facts that, if true, “raise a right to relief 6 above the speculative level.” Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 545 7 (2007). “The plausibility standard is not akin to a ‘probability requirement,’ but it 8 asks for more than a sheer possibility that a defendant has acted unlawfully.” Id. 9 (quoting Twombly, 550 U.S. at 556). The Court need not accept legal conclusions 10 couched as factual allegations. See Twombly, 550 U.S. at 555. 11 IV. MOTION TO DISMISS 12 A. Notice Requirements of Rules 8(a) and 9(b) 13 As a general rule, when a complaint fails “to allege what role each 14 [d]efendant played in the alleged harm,” this “makes it exceedingly difficult, if not 15 impossible, for individual [d]efendants to respond to [p]laintiffs’ allegations.” In re 16 iPhone Application Litig., No. 11–MD–02250–LHK, 2011 WL 4403963, at *8 (N.D. 17 Cal. Sept. 20, 2011). “[A] complaint which lumps together multiple defendants in 18 one broad allegation fails to satisfy the notice requirement of Rule 8(a)(2).” Adobe 19 Sys. Inc. v. Blue Source Grp., Inc., 125 F. Supp. 3d 945, 964 (N.D. Cal. 2015) 20 (quoting Gen-Probe, Inc. v. Amoco Corp., Inc., 926 F. Supp. 948, 961 (S.D. Cal. 21 1996) (internal quotation marks omitted). However, claims that are collectively 22 asserted against “Defendants” are not automatically deficient. Id. Instead, the 23 Complaint must identify the respective wrongdoing of each defendant “without 24 resort to generalized allegations against Defendants as a whole.” Id. (quoting In re 25 iPhone, 2011 WL 4403963, at *3). 26 Additionally, a plaintiff’s claims are governed by Rule 9(b) if those claims 27 sound in fraud. Vess v. Ciba–Geigy Corp. USA, 317 F.3d 1097, 1102 (9th Cir. 28 2003). Rule 9(b) requires that “[i]n alleging fraud or mistake, a party must state 1 with particularity the circumstances constituting fraud or mistake.” To meet Rule 2 9(b)’s requirements, a complaint alleging fraud must be “specific enough to give 3 defendants notice of the particular misconduct which is alleged to constitute the 4 fraud charged so that they can defend against the charge and not just deny that 5 they have done anything wrong.” Semegen v. Weidner, 780 F.2d 727, 731 (9th Cir. 6 1985); Vess, 317 F.3d at 1106 (“Averments of fraud must be accompanied by ‘the 7 who, what, when, where, and how’ of the misconduct charged.”) (internal citation 8 omitted). Courts in the Ninth Circuit regularly apply Rule 9(b) to Lanham Act claims. 9 See, e.g., Ely Holdings Ltd. v. O’Keeffe’s, Inc., No. 18-CV-06721-JCS, 2019 WL 10 3779197, at *4 (N.D. Cal. Aug. 12, 2019) (internal citations and quotation marks 11 omitted) (“[T]he majority of district courts within the Ninth Circuit have extended 12 the Ninth Circuit’s application of Rule 9(b) pleading standards in Kearns and Vess 13 to false advertising claims under the Lanham Act.”); Julian Bakery, Inc. v. 14 Healthsource Int’l, Inc., No. 16CV2594-JAH (KSC), 2018 WL 1524499, at *4 (S.D. 15 Cal. Mar. 28, 2018) (“[T]here is an abundance of relevant and persuasive case law 16 standing for the proposition that Rule 9(b) should be applied to Section 43 claims 17 when they are ‘grounded in fraud.’”); Bobbleheads.com, LLC v. Wright Bros., Inc., 18 259 F. Supp. 3d 1087, 1095 (S.D. Cal. 2017) (“As to this threshold matter, the Court 19 agrees with the weight of authority that Rule 9(b) applies to Lanham Act claims 20 that are grounded in fraud.”). 21 Here, Defendants argue that Miller’s entire Complaint should be dismissed 22 under Rule 8(a) because it refers to them collectively as “Defendants” in each of 23 the allegations and makes no distinction as to their respective actions or alleged 24 wrongdoing. (Dkt. 13-1 at 3.) In this case, “Defendants” include both Easy and 25 Reverb. Easy Day is an Australia-based company that allegedly develops, 26 publishes, and sells Skater XL (Compl. ¶ 6.), while Reverb is a California-based 27 company that allegedly distributes, publishes, and markets Skater XL. (Id. ¶ 7.) 28 Miller has sued both for their alleged “unauthorized use and commercial 1 exploitation of the likeness and other identifying attributes of Plaintiff in a video 2 game.” (Id. ¶ 1). 3 In his Opposition to the Motion to Dismiss, Miller argues that the Complaint 4 doesn’t impermissibly lump Defendants together in the pleadings and both parties 5 have received fair notice of their alleged wrongdoing. Miller argues that Reverb’s 6 status as a publisher of Skater XL, like Easy Day, means that both parties are 7 responsible for the content of the video game. (Dkt. 19 at 2.) Construing the 8 pleadings in the light most favorable to Miller, the Court agrees. Although 9 Defendants are referred to collectively as “Defendants” throughout the Complaint, 10 the Complaint is clear that both entities are responsible for the publication of Skater 11 XL. (Compl. ¶¶ 6–7.) Here, the gravamen of Miller’s allegations is that 12 Defendants—both Easy Day and Reverb—published a video game with a 13 character that looks just like him without his consent. See Adobe Sys. Inc. v. Blue 14 Source Grp., Inc., 125 F. Supp. 3d 945, 965 (N.D. Cal. 2015) (“Put another way, 15 the gravamen of Adobe’s allegations in the instant lawsuit are that all the 16 Defendants infringed on Adobe’s trademarks and copyrights . . .”). Because both 17 Defendants are responsible for publishing the contents of the game, and Miller’s 18 claims all center around this alleged harm, the allegations are sufficient to provide 19 proper notice. 20 Miller’s Complaint also satisfies the Rule 9(b) requirement of pleading 21 allegations of fraud with particularity. See Vess, 317 F.3d at 1106. As previously 22 discussed, Miller sufficiently alleges “who” was responsible for the alleged 23 misconduct, and the fact that the Complaint refers to both Defendants collectively 24 does not mean the claims automatically fail. Furthermore, the Complaint 25 sufficiently alleges “how” Defendants carried out the purported fraud. The 26 Complaint details the parties’ agreement, how Miller’s image was motion captured, 27 and how his image and likeness were ultimately used on a character in Skater XL 28 without his consent. (Compl. ¶¶ 8–12.) 1 The Court DENIES Defendants’ Motion to Dismiss for failure to satisfy Rules 2 8(a) and 9(b). 3 B. Lanham Act Claims, 15 U.S.C. § 1125(a) 4 Miller’s first and second causes of action are for false endorsement and false 5 advertising under Section 43(a) of the Lanham Act, as codified in 15 U.S.C 6 § 1125(a). He alleges that Defendants “have made false and misleading 7 statements of fact in commercial advertising efforts in connection with the 8 promotion” of Skater XL (Compl. ¶ 29), and that Defendants’ “unauthorized uses 9 of Plaintiff’s persona [are] likely to confuse and deceive consumers as to Plaintiff’s 10 sponsorship and/or endorsement” of the game (id. ¶ 23). 11 The purpose of the Lanham Act is to make “actionable the deceptive and 12 misleading use of marks,” and “to protect persons engaged in . . . commerce 13 against unfair competition.” 15 U.S.C. § 1127. Section 43(a) of the Lanham Act 14 provides, in relevant part: 15 (1) Any person who, on or in connection with any goods or 16 services . . . uses in commerce any . . . false designation of origin, false or misleading description of fact, or false or 17 misleading representation of fact, which-- 18 (A) is likely to cause confusion, or to cause mistake, or to 19 deceive as to the affiliation, connection, or association of 20 such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or 21 commercial activities by another person, or 22 (B) in commercial advertising or promotion, misrepresents 23 the nature, characteristics, qualities, or geographic origin 24 of his or her or another person’s goods, services, or commercial activities, 25
26 shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act. 27 28 1 15 U.S.C § 1125(a)(1). There are two bases of liability created under Section 2 1125(a): false association under § 1125(a)(1)(A), and false advertising under 3 § 1125(a)(1)(B). Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 4 118, 122 (2014). The Ninth Circuit recognizes a cause of action for false 5 endorsement as one type of false association claim. Waits v. Frito-Lay, Inc., 978 6 F.2d 1093, 1110 (9th Cir. 1992), abrogated on other grounds by Lexmark Int’l, Inc., 7 572 U.S. 118 (2014) (“A false endorsement claim based on the unauthorized use 8 of a celebrity’s identity is a type of false association claim . . .). Defendants move 9 to dismiss the false endorsement and false advertisement claims. 10 i. False Endorsement 11 Courts recognize false endorsement claims “brought by plaintiffs, including 12 celebrities, for the unauthorized imitation of their distinctive attributes, where those 13 attributes amount to an unregistered commercial ‘trademark.’” Waits, 978 F.2d at 14 1106. The Lanham Act “prohibits only false endorsement, not mere use of an image 15 or name.” Cairns v. Franklin Mint Co., 107 F. Supp. 2d 1212, 1214 (C.D. Cal. 2000) 16 (citing 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, 17 § 28:14 (4th ed. 1996)). In other words, not all uses of a celebrity’s image or 18 likeness are actionable under § 1125(a)—only those which “suggest sponsorship 19 or approval are prohibited.” Id. The key inquiry for a false endorsement claim is 20 whether the unauthorized use of the plaintiff’s distinctive attributes is “likely to 21 confuse consumers as to the plaintiff’s sponsorship or approval of the product.” Id. 22 at 1110. This means “show[ing] more than simply a possibility of confusion.” 23 Rearden LLC v. Rearden Com., Inc., 683 F.3d 1190, 1209 (9th Cir. 2012). 24 The Ninth Circuit applies an eight-factor test modeled after the factors set 25 forth in AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979), in determining 26 whether there exists a likelihood of confusion in celebrity cases. Downing v. 27 Abercrombie & Fitch, 265 F.3d 994, 1007 (9th Cir. 2001). These factors include: 28 1. Strength of the plaintiff’s mark; 1 2. Relatedness of the goods; 2 3. Similarity of the marks; 3 4. Evidence of actual confusion; 4 5. Marketing channels used; 5 6. Likely degree of purchaser care; 6 7. Defendant’s intent in selecting the mark; and 7 8. Likelihood of expansion of the product lines. 8 AMF, Inc., 599 F.2d at 348-49. “Although these are all factors that are appropriate 9 for consideration in determining the likelihood of confusion, they are not 10 necessarily of equal importance, nor do they necessarily apply to every case.” 11 Downing, 265 F.3d at 1008. Defendants don’t address the Sleekcraft factors, but 12 instead argue the merits of whether there is a likelihood of consumer confusion 13 and ask the Court to resolve that issue. 14 Here, Defendants contend that Miller can’t maintain a claim for false 15 endorsement under the Lanham Act because his claim doesn’t meet the test set 16 forth by the Second Circuit in Rogers v. Grimaldi, 875 F.2d 994 (2nd Cir. 1989), 17 and later adopted by the Ninth Circuit. See Gordon v. Drape Creative, Inc., 909 18 F.3d 257, 264 (9th Cir. 2018) (“We have adopted the Second Circuit’s Rogers test 19 to strike an appropriate balance between First Amendment interests in protecting 20 artistic expression and the Lanham Act’s purposes to secure trademark rights.”). 21 For the Rogers test to apply, Defendants must “make a threshold legal showing 22 that [their] allegedly infringing use is part of an expressive work protected by the 23 first amendment.” Dickinson v. Ryan Seacrest Enterprises Inc., 839 F. App’x 110, 24 111 (9th Cir. 2020) (quoting Gordon, 909 F.3d at 264) (internal quotations omitted). 25 Here, Defendants correctly contend, and Plaintiff doesn’t dispute, that videogames 26 such as Skater XL are expressive works subject to constitutional protection under 27 the First Amendment. See Brown v. Ent. Merchants Ass’n, 564 U.S. 786, 790 28 (2011) (“California correctly acknowledges that video games qualify for First 1 Amendment protection.”); Brown v. Elec. Arts, Inc. (“Brown II”), 724 F.3d 1235, 2 1241 (9th Cir. 2013) (“[T]he Supreme Court has answered with an emphatic ‘yes’ 3 when faced with the question of whether video games deserve the same protection 4 as more traditional forms of expression.”). 5 Under the Rogers test, Miller must then meet his burden of demonstrating 6 that Defendants’ use of the mark either: (1) is not artistically relevant to the 7 underlying work, or (2) explicitly misleads consumers as to the source or content 8 of the work. VIP Prods. LLC v. Jack Daniel’s Props., Inc., 953 F.3d 1170, 1174 (9th 9 Cir. 2020). “Neither of these prongs is easy to meet.” Dr. Seuss Enterprises, L.P. 10 v. ComicMix LLC, 983 F.3d 443, 462 (9th Cir. 2020). 11 The first prong requires that “the level of relevance must merely be above 12 zero.” E.S.S. Entm’t 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1100 (9th Cir. 13 2008); see Brown II, 724 F.3d at 1245 (“The Rogers test is applicable when First 14 Amendment rights are at their height—when expressive works are involved—so it 15 is no surprise that the test puts such emphasis on even the slightest artistic 16 relevance.”). The video game at issue here offers a virtual medium by which users 17 can choose to play as one of various skateboarding characters to create and 18 master skateboarding tricks in a realistic skateboarding environment. (Dkt. 12-3 19 ¶ 3.) Users can choose to play as one of four world-renowned skateboarders 20 (Tiago Lemos, Evan Smith, Tom Asta, or Brandon Westgate), or they may select 21 the generic, customizable avatar. (Id. ¶¶ 3–4.) The latter option functions as a 22 creative outlet for users to customize the character as they see fit, including by 23 choosing such aspects as the character’s hair color, gender, and clothing apparel. 24 (Id. ¶ 4.) Plaintiff alleges, however, that the generic character, which is “an almost 25 exact copy of Plaintiff” (Compl. ¶ 11), “figur[es] prominently . . . as a main character 26 in the Game” (id. ¶ 10). He acknowledges that “the videogame character bearing 27 his likeness is performing the similar [sic] athletic actions for which he is known,” 28 and that, because the game endeavors to portray skateboarders in realistic 1 environments, “a player can literally have the Miller character skate in his home 2 skatepark.” (Dkt. 18 at 7.) 3 Creating a realistic skateboarding environment is central to the theme in 4 Skater XL. And there can be no doubt that including the likeness of a real-life 5 skateboarder in a video game seeking to simulate real-world skateboarders and 6 skateboarding environments obviously has at least some artistic relevance to the 7 work. Brown II, 724 F.3d 1235, 1243 (9th Cir. 2013); see Twentieth Century Fox 8 Television v. Empire Distribution, Inc., 875 F.3d 1192, 1199 (9th Cir. 2017) (holding 9 that the defendant’s use of the mark had “artistic relevance by supporting the 10 themes and geographic setting of the work”); Brown v. Elec. Arts, Inc. (“Brown I”), 11 No. 2:09-CV-01598-FMC, 2009 WL 8763151, at *4 (C.D. Cal. Sept. 23, 2009), 12 aff’d, 724 F.3d 1235 (9th Cir. 2013) (“Use of a legendary NFL player’s likeness in 13 a game about NFL football is clearly relevant.”). Miller doesn’t dispute this, and the 14 Court finds that the first prong has not been satisfied. 15 The second prong of the Rogers test requires that the Court evaluate 16 whether the use of Miller’s likeness “explicitly misleads” consumers as to the 17 source or content of the work. Rogers, 875 F.2d at 999. The relevant inquiry is 18 whether people playing Skater XL would be misled into thinking Miller endorses or 19 sponsors the game. E.S.S. Entm’t 2000, Inc., 547 F.3d at 1100. The mere use of 20 the likeness, without more, is insufficient to make the use explicitly misleading. 21 Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 902 (9th Cir. 2002). 22 In Skater XL, the generic avatar allegedly bearing Miller’s likeness is one of 23 five characters that users can select when playing the video game. (Dkt. 18 at 13.) 24 Four of the five characters are well-known skateboarders who are clearly identified 25 by name and likeness in the game and are intentionally used as a selling point in 26 the game’s advertising. (Dkt. 12-3 ¶ 4.) In contrast to these four characters, the 27 fifth skater player is completely anonymous—he’s not identified by name or 28 backstory and it’s associated with no identifying markers. Indeed, the generic 1 avatar is intended to be something of a blank slate upon which users can 2 customize the character according to their own preferences, including choosing 3 the character’s gender, race, and hair color. (Id.) Although Miller’s character is 4 displayed in at least one of the promotional images for the game (Compl. ¶ 11), he 5 is never identified by name, nor does he suggest Defendants made any statement 6 identifying him or remotely suggesting that he endorses the game. (Dkt. 21 at 6– 7 7.) 8 Miller argues that Defendants’ actions were explicitly misleading because at 9 least two individuals contacted him after recognizing his character in the video 10 game. (Dkt. 19 at 5.) But this misses the point. The issue here isn’t whether other 11 consumers could simply recognize Miller’s likeness in the game, but rather whether 12 they would be misled into believing his association with the game means he is 13 somehow endorsing it. Although the issue of customer confusion is factual in 14 nature, it’s simply not plausible that the inclusion of the only anonymous 15 skateboarder in the game, among four other explicitly identified skateboarders, 16 would convince consumers that Miller endorsed their video game. Miller doesn’t 17 dispute that the generic avatar can be customized in several ways. That at least 18 one of the customization combinations in the generic avatar may look like Miller is 19 not enough to make the alleged use of his likeness explicitly misleading. Brown I, 20 2009 WL 8763151, at *5 (“Although a Madden NFL consumer could assume from 21 the circumstances that player number 37 represents [Plaintiff], it would require a 22 leap of logic to conclude that the anonymous, mis-numbered player’s presence in 23 the games equates to [Plaintiff]’s endorsement of the games.”). The anonymous 24 character’s mere presence in Skater XL doesn’t equate to “an explicit attempt to 25 convince consumers that [Plaintiff] endorsed the game[ ].” Id. (emphasis in 26 original). 27 Even assuming that all material factual allegations in the Complaint are true, 28 and viewing those allegations in the light most favorable to Miller, Defendants’ use 1 of his likeness doesn’t equate to an attempt to explicitly mislead consumers into 2 believing that he endorsed the game. Where Defendants have made no explicit 3 representation to suggest endorsement or sponsorship by Miller, the Court cannot 4 conclude that the use was explicitly misleading to consumers. Defendant’s motion 5 to dismiss the false endorsement claim is GRANTED with leave to amend. 6 ii. False Advertising 7 A plaintiff asserting a false advertising claim “must demonstrate standing 8 beyond the typical Article III requirements.” Bobbleheads.com, LLC v. Wright Bros., 9 Inc., 259 F. Supp. 3d 1087, 1097 (S.D. Cal. 2017) (citing Lexmark Int’l, Inc. v. Static 10 Control Components, Inc., 572 U.S. 118, 131 (2014)). First, a plaintiff must 11 demonstrate that his claim is within the “zone of interests protected by the Lanham 12 Act.” Id. at 131–32. “[T]o come within the zone of interests in a suit for false 13 advertising under § 1125(a), a plaintiff must allege an injury to a commercial 14 interest in reputation or sales.” Id. Second, a plaintiff must demonstrate that his 15 injuries were “proximately caused” by the defendant’s violation of the Lanham Act. 16 Id. at 132. This requires that a plaintiff “show economic or reputational injury 17 flowing directly from the deception wrought by the defendant’s advertising; and that 18 occurs when deception of consumers causes them to withhold trade from the 19 plaintiff.” Id. at 133. 20 Defendants move to dismiss Miller’s false advertising claim for failure to 21 allege statutory standing. Defendants claim that Miller has not—and cannot— 22 establish competitive commercial injury because, as a skateboarder, he doesn’t 23 compete in the same market as Easy Day or Reverb, a game developer and 24 marking agency, respectively. (Dkt. 13-1 at 6.) Defendants also contend that 25 “[b]ecause Plaintiff has not alleged and cannot present any evidence that he lost 26 endorsement agreements or suffered other competitive injury, the claim fails.” (Id.) 27 Miller hasn’t pled any facts to establish that he meets either one of the Lexmark 28 requirements. Noticeably absent from the Complaint, for example, are any 1 allegations that Miller suffered a financial loss or reputational injury of any kind as 2 a result of Defendant’s alleged unauthorized use of his image and likeness in 3 Skater XL. Other than one conclusory allegation in his Complaint that Defendants’ 4 actions “have injured and will continue to injure Plaintiff” (Compl. ¶ 33), Miller hasn’t 5 supported his cause of action with any facts suggesting that he was actually 6 harmed by Defendants’ alleged wrongdoing, and his Opposition to Defendants’ 7 Motion to Dismiss fails entirely to respond to this issue. See Bobbleheads.com, 8 LLC v. Wright Bros., Inc., 259 F. Supp. 3d 1087, 1097 (S.D. Cal. 2017) (“There are 9 no more specific allegations of, at the very least, lost sales or damage to its 10 reputation. This is insufficient to plead proximate causation to support a Lanham 11 Act claim.”); Luxul Tech. Inc. v. Nectarlux, LLC, 78 F. Supp. 3d 1156, 1170 (N.D. 12 Cal. 2015) (quoting Lexmark, 572 U.S.131–32) (“At the pleading stage, a plaintiff 13 must allege ‘an injury to a commercial interest in sales or business reputation 14 proximately caused by the defendant's misrepresentations.’”). 15 The Court GRANTS Defendants’ motion to dismiss Miller’s false advertising 16 claim with leave to amend. 17 V. Motion to Strike 18 The Court hasn’t considered the merits of Miller’s common law and statutory 19 right of publicity claims, nor has the Court considered whether punitive damages 20 are available under these causes of action. The Court’s jurisdiction in this case is 21 predicated on the existence of claims arising under federal law, namely the 22 Lanham Act. Miller improperly invokes the diversity jurisdiction statute, 28 U.S.C. 23 § 1332 (Compl. ¶ 2), but § 1332 requires complete diversity, i.e. every plaintiff must 24 be diverse from every defendant, and Miller, a California citizen, is not diverse from 25 Reverb, also a California citizen. See Hunter v. Philip Morris USA, 582 F.3d 1039, 26 1043 (9th Cir. 2009). 27 A district court “‘may decline to exercise supplemental jurisdiction’ if it ‘has 28 dismissed all claims over which it has original jurisdiction.’” Sanford v. 1 MemberWorks, Inc., 625 F.3d 550, 561 (9th Cir. 2010) (quoting 28 U.S.C. 2 ||§ 1367(c)(3)). Because the Court has dismissed all federal claims over which it 3 ||has original jurisdiction, it has discretion to decline to exercise supplemental 4 ||jurisdiction over any remaining state law claims. 28 U.S.C. § 1367(c); Sanford v. 5 || MemberWorks, Inc., 625 F.3d 550, 561 (9th Cir. 2010) (“[I]n the usual case in which 6 federal-law claims are eliminated before trial, the balance of factors to be 7 considered under the pendent jurisdiction doctrine . . . will point toward declining 8 || to exercise jurisdiction over the remaining state-law claims.”). The Court exercises 9 discretion here and dismisses Miller's common law and statutory right of 10 || publicity claims for lack of jurisdiction. 11 VI. CONCLUSION 12 For the foregoing reasons, the Court GRANTS IN PART AND DENIES IN 13 PART Defendants’ Request for Judicial Notice, and GRANTS Plaintiff's Request 14 ||for Judicial Notice. Plaintiff's Lanham Act claims are DISMISSED WITHOUT 15 || PREJUDICE. Pursuant to § 1367(c), the Court declines to exercise supplemental 16 ||jurisdiction over Plaintiff's statutory and common law right of publicity claims and 17 || DISMISSES THOSE CLAIMS WITHOUT PREJUDICE. All other pending motions 18 ||and requests are DENIED AS MOOT. 19 Plaintiff shall file an amended complaint on or before October 1, 2021. 20 IT IS SO ORDERED. 21 22 ||Dated: September 16, 2021 laud A (Buywy 23 Honorable Larry Alan Burns 24 United States District Judge 25 26 27 28