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NO DOUBT v. ACTIVISION PUBLISHING, INC.
192 Cal.App.4th 1018 (2011)
NO DOUBT, Plaintiff and Respondent,
v.
ACTIVISION PUBLISHING, INC., Defendant and Appellant.
No. B223996.
Court of Appeals of California, Second District, Division Four.
February 15, 2011.
OPINIONWILLHITE, J.— INTRODUCTIONThe rock band No Doubt brought suit against the video game publisher Activision Publishing, Inc. (Activision), based on Activision's release of the Band Hero video game featuring computer-generated images of the members of No Doubt. No Doubt licensed the likenesses of its members for use in Band Hero, but contends that Activision used them in objectionable ways outside the scope of the parties' licensing agreement. Activision filed a special motion to strike under Code of Civil Procedure section 425.16, contending that No Doubt cannot demonstrate a probability of prevailing on its claims for violation of the right of publicity (Civ. Code, § 3344 and common law) and unfair competition (Bus. & Prof. Code, § 17200) because its use of the No Doubt likenesses is protected by the First Amendment. Activision appeals from the trial court's denial of its motion. Applying the transformative use test first adopted in Comedy III Productions, Inc. v. Gary Saderup, Inc. (2001) 25 Cal.4th 387 [106 Cal.Rptr.2d 126, 21 P.3d 797], we conclude that the creative elements of the Band Hero video game do not transform the images of No Doubt's band members into anything more than literal, fungible reproductions of their likenesses. Therefore, we reject Activision's contention that No Doubt's right of publicity claim is barred by the First Amendment. In addition, we disagree with Activision's contention that No Doubt must demonstrate that Activision used the likenesses of the band members in an "explicitly misleading" way in order to prevail on its unfair competition claim. Accordingly, we affirm the trial court's judgment. FACTUAL AND PROCEDURAL BACKGROUNDBand Hero Dispute Defendant Activision is a leading international video game distributor and the creator and owner of the interactive Band Hero video game. Band Hero is
a version of Activision's Guitar Hero franchise that has sold over 40 million units.1 The game allows players to simulate performing in a rock band in time with popular songs. By choosing from a number of playable characters, known as "avatars," players can "be" a guitarist, a singer, or a drummer. Some of the available avatars are fictional characters created and designed by Activision while others are digital representations of real-life rock stars. Players can also design their own unique fictional avatars. Represented by the avatars of their choosing, players "perform" in various settings, such as venues in Paris and Madrid, a rock show at a shopping mall, and even outer space.
1. The parties submitted DVD's depicting the game, which we have reviewed.
2. Activision initially removed the case to federal court, contending that No Doubt's claims were preempted by the federal Digital Millenium Copyright Act (Pub.L. No. 105-304 (Oct. 28, 1998) 112 Stat. 2860). Activision then answered the complaint and filed cross-claims for breach of contract and unjust enrichment based on No Doubt's alleged failure to provide marketing and promotional services as the band had contracted to do. The federal district court remanded the case to state court, finding that No Doubt's claims as alleged were not preempted by the copyright act. (No Doubt v. Activision Publishing, Inc. (C.D.Cal. 2010) 702 F.Supp.2d 1139.)
3. As Activision observes, in concluding that the challenged claims did not satisfy the first prong, the trial court erred in focusing on whether the First Amendment provided a complete bar to No Doubt's claim. "`The Legislature did not intend that in order to invoke the special motion to strike the defendant must first establish her actions are constitutionally protected under the First Amendment as a matter of law. . . .' [Citations.]" (Navellier, supra, 29 Cal.4th at pp. 94-95.) "`Instead, under the statutory scheme, a court must generally presume the validity of the claimed constitutional right in the first step of the anti-SLAPP analysis, and then permit the parties to address the issue in the second step of the analysis, if necessary. [Citation.] Otherwise, the second step would become superfluous in almost every case, resulting in an improper shifting of the burdens.' [Citations.]" (City of Los Angeles v. Animal Defense League (2006) 135 Cal.App.4th 606, 621 [37 Cal.Rptr.3d 632].)
4. We have previously held that "`[a]lthough section 425.16 places on the plaintiff the burden of substantiating its claims, a defendant that advances an affirmative defense to such claims properly bears the burden of proof on the defense. [Citation.]' [Citation.]" (Premier Medical Management Systems, Inc. v. California Ins. Guarantee Assn. (2006) 136 Cal.App.4th 464, 477 [39 Cal.Rptr.3d 43]; see also Seltzer v. Barnes (2010) 182 Cal.App.4th 953, 969 [106 Cal.Rptr.3d 290].) Other courts have suggested, however, that the burden remains on the plaintiff to overcome the affirmative defenses by demonstrating that the "`"defenses are not applicable to the case as a matter of law or by a prima facie showing of facts which, if accepted by the trier of fact, would negate such defenses."'" (Birkner v. Lam (2007) 156 Cal.App.4th 275, 285 [67 Cal.Rptr.3d 190], quoting Paul for Council v. Hanyecz (2001) 85 Cal.App.4th 1356, 1367 [102 Cal.Rptr.2d 864], disapproved on another ground in Equilon Enterprises v. Consumer Cause, Inc. (2002) 29 Cal.4th 53, 68, fn. 5 [124 Cal.Rptr.2d 507, 52 P.3d 685].) It makes no difference here which party bears the burden on the affirmative defenses, because, as discussed further below, we conclude that Activision's First Amendment defense fails as a matter of law. (See Winter v. DC Comics (2003) 30 Cal.4th 881, 888 [134 Cal.Rptr.2d 634, 69 P.3d 473] (Winter) [holding that courts can often resolve as a matter of law whether a claim is barred by the 1st Amend.].)
5. The test developed in Comedy III "applies equally" to claims under section 3344. (Winter, supra, 30 Cal.4th at p. 888.)
6. An earlier Ninth Circuit decision, Hoffman v. Capital Cities/ABC, Inc. (9th Cir. 2001) 255 F.3d 1180, arguably reached a different conclusion on facts somewhat similar to those in Hilton. In Hoffman, the court found that the First Amendment barred Dustin Hoffman's claim that Los Angeles Magazine (LAM) had violated his right of publicity when it published an article that included a photographic image of the head of Hoffman in his "Tootsie" character superimposed on the body of a cartoon male who was wearing an evening gown and high heels. (Hoffman, supra, 255 F.3d at p. 1183.) The court only briefly addressed the transformative use defense, finding that "[e]ven if we were to consider LAM an `artist' and the altered `Tootsie' photograph `artistic expression' subject to the Comedy III decision, there is no question that LAM's publication of the `Tootsie' photograph contained `significant transformative elements'" because "Hoffman's body was eliminated and a new, differently clothed body was substituted in its place." (Id. at p. 1184, fn. 2.) In Hilton, the Ninth Circuit noted that Hoffman had not addressed the transformative use defense in great depth because the Supreme Court decided Comedy III only after oral argument in the Hoffman case had taken place. Thus, Hilton concluded that Hoffman was not controlling Ninth Circuit authority on the issue of the transformative use defense. (Hilton, supra, 599 F.3d at p. 912, fn. 15.) We similarly do not find Hoffman's brief discussion or application of the transformative use defense compelling.
7. Because we hold that Activision's use of No Doubt's likenesses is not protected by the First Amendment, we need not consider No Doubt's argument that Activision waived its First Amendment rights by entering a licensing agreement that allegedly limits its rights to use the likenesses. The concurring opinion would affirm the trial court's judgment on the basis of the licensing agreement, interpreting it as a waiver by Activision of any First Amendment rights it may have had. The concurrence suggests that we should not reach the question of the validity of Activision's First Amendment defense because of the principle of judicial restraint that counsels against unnecessarily addressing constitutional questions. (Department of Alcoholic Beverage Control v. Alcoholic Beverage Control Appeals Bd. (2006) 40 Cal.4th 1, 17, fn. 13 [50 Cal.Rptr.3d 585, 145 P.3d 462].) This principle of constitutional adjudication is most often relied upon as the justification for refraining from deciding the constitutionality of a statute when the matter can be decided on statutory or other grounds. (E.g., Thompson v. Department of Corrections (2001) 25 Cal.4th 117, 128-129 [105 Cal.Rptr.2d 46, 18 P.3d 1198] [where plaintiff's complaint asserted both statutory and constitutional grounds for invalidating prison regulation, court would address the statutory issue first]; Santa Clara County Local Transportation Authority v. Guardino (1995) 11 Cal.4th 220, 230-231 [45 Cal.Rptr.2d 207, 902 P.2d 225] [where tax was challenged under state statute and state Constitution, it was proper to begin with statutory challenge].) Here, however, we are not being called upon to pass on the constitutionality of legislation, but rather to consider a First Amendment defense to a right of publicity claim in the context of a suit between private citizens. Moreover, while the principle of restraint in deciding constitutional issues has broader application, we are also mindful that courts must "`"`closely scrutinize waivers of constitutional rights'"" and "`"`"indulge every reasonable presumption against a waiver"'"'" of First Amendment rights, which "`"may only be made by a `clear and compelling' relinquishment of them."'" (Sanchez v. County of San Bernardino (2009) 176 Cal.App.4th 516, 528 [98 Cal.Rptr.3d 96]; see Ferlauto v. Hamsher (1999) 74 Cal.App.4th 1394, 1400 [88 Cal.Rptr.2d 843].) Given these circumstances, we believe the best path is to decide this case based upon what we view as a relatively straightforward application of the "transformative use" doctrine, and not on an interpretation of the licensing agreement, an issue on which we express no opinion.
8. Although the "explicitly misleading" requirement of the Rogers test makes obvious sense when the title of an artistic work is at issue, and thus conventional "speech" is involved, we question whether it should apply when the actionable wrong is the misappropriation of a celebrity's likeness in a video game. In any event, no California court has interpreted section 17200 to require a showing that the defendant's actionable conduct was "explicitly misleading" when the First Amendment is implicated. In arguing that such a showing is required under California law, Activision relies solely on E.S.S., in which the Ninth Circuit concluded that the First Amendment defense based on the Rogers test "applies equally to ESS's state law claims," which necessarily included its section 17200 claim. (E.S.S., supra, 547 F.3d at p. 1101.) Of course, we are not bound by the Ninth Circuit's interpretation that the Rogers test applies to section 17200 claims. (Myers Building Industries, Ltd. v. Interface Technology, Inc. (1993) 13 Cal.App.4th 949, 971, fn. 19 [17 Cal.Rptr.2d 242].) Moreover, E.S.S. contains no analysis supporting its conclusion that the Rogers test should apply to section 17200 claims, because the plaintiff conceded that the Rogers test applied, and the Ninth Circuit thus had no cause to discuss the issue. (E.S.S., supra, 547 F.3d at pp. 1099-1100.) Further, E.S.S. did not concern the literal reproduction of a celebrity's likeness, but rather alleged trademark and trade dress infringement by a virtual depiction of a strip club that shared certain characteristics with a real strip club. (Id. at pp. 1097-1098.)
We note that in Kirby, in considering a section 17200 claim based on Sega's use of Kirby's likeness, the Court of Appeal did not apply the Rogers test. Rather, the court used the transformative use test of Comedy III. The court found under that test that the First Amendment barred both the plaintiff's right of publicity claim and her section 17200 claim. (Kirby, supra, 144 Cal.App.4th at p. 61.)
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