Tuesday, July 31, 2012

Attempt to stop reality show with TM/publicity claims leads to fee award

Arenas v. Shed Media U.S. Inc., 2011 WL 8427612 (C.D. Cal.)
Gilbert Arenas plays basketball for the Orlando Magic.  He was previously in a relationship with a woman named Govan, with whom he has four children.  Basketball Wives, a Shed Media production on VH1, is about the lives and relationships of a group of women, “most of whom have or have had a romantic relationship with a professional basketball player.”  Basketball Wives: Los Angeles (BWLA), a spinoff, included Govan in the cast.  The promotional materials describe her as the sister of Gloria Govan, the fiancée of Los Angeles Lakers player Matt Barnes, and mention her children, but don’t mention Arenas. 
Arenas sued for trademark infringement, trademark dilution, false advertising, and false endorsement under federal law, as well as violations of California’s common law and statutory right of publicity and violation of the UCL.  He sought a preliminary injunction against the use of any of his alleged trademarks in the show; if he appears in the show, the use of “Basketball Wives” or any other term that would suggest affiliation with basketball players; or the use of “any other means to suggest affiliation with basketball players, such as including more than two participants who are known to be affiliated with basketball players.”  (Comment: wow.  Basically, Arenas sounds like he’s taken instruction from the Olympics in asking that his delicate commercial sensibilities be protected from any unapproved hint that he exists!)
Defendants moved to dismiss and brought a special motion to strike under the anti-SLAPP statute.
Such motions are to be granted if (1) the cause of action arises from any act by the defendants in furtherance of their free speech rights under the federal or state constitution; (2) the act is “in connection with a public issue”; and (3) the plaintiff fails to establish a probability that he will prevail on the claim.
The court began with the common-law commercial misappropriation claim.  The court first asked whether the show would appropriate Arenas’s identity.  Without episodes on hand, the court could only speculate based on Shed Media’s declarations and promotional materials, which didn’t explicitly refer to Arenas.  Shed Media, however, recognizing its long-term interest in freedom to operate (that is, to speak), took the position that “future promotional materials could certainly refer to Govan’s prior relationship with Plaintiff.”  The court found that it was likely that Govan would discuss Arenas on the show. 
The court then turned to the question of whether such on-air discussions would constitute “use” of Arenas’s identity as a celebrity, and answered in the affirmative.  The old Here’s Johnny case said that there wouldn’t be any violation of the right of publicity if a defendant’s use didn’t appropriate the celebrity’s “identity as a celebrity,” for example the “John William Carson Portable Toilet.”  Here, by contrast, Arenas’s name would be used in the context of a show about “Basketball Wives,” and would refer to his status as a famous basketball player.  However, the court conceded that Govan’s inclusion on the show alone wouldn’t invoke Arenas’s identity, since she was the sister of one of the other “wives,” and her appearance on the show was therefore “explicable” without reference to Arenas.  (I take it then that Kato Kaelin violates OJ Simpson’s right of publicity by existing, under this analysis.)  True, the court continued, other media outlets made the connection with Arenas, but that’s only to be expected from “an age of tabloid journalism and celebrity obsession,” when “news outlets frequently uncover and publicize connections between celebrities.” As was widely reported in 2008, President Obama was distantly related to former V.P. Cheney.  But the court wasn’t willing to make the “improbable” assumption that Govan would refrain from discussing her relationship with Arenas onscreen.  This would constitute appropriation of Arenas’s identity for commercial gain.  That he wasn’t the focus of the show, but rather the women were, was immaterial.  (Citing, inappositely, White, which held that it didn’t matter what aspect of the plaintiff’s identity—image, voice, etc.—the defendant appropriated; in White the song was a central element of the ad, not an incidental part, so the court is making new law—though that will soon be mostly eaten by the rest of the analysis; still, clever plaintiffs will like this statement for incidental uses.)
Fortunately for Shed Media, the court found this commercial appropriation to be protected by the First Amendment both under the transformative use test and the public interest test.  Transformativeness: when the value of the work comes principally from the defendant, the First Amendment protects against liability.  But “when an artist’s skill and talent is manifestly subordinated to the overall goal of creating a conventional portrait of a celebrity so as to commercially exploit his or her fame, then the artist’s right of free expression is outweighed by the right of publicity.”  Saderup.  (Consider, in this regard, why a “conventional” biography—say, an hour of television in a series of celebrity profiles, following a standardized format—wouldn’t flunk this test.  Saderup relies on dishonesty about art.  But that doesn’t matter here.)  On the current record, the court found that references to Arenas would be incidental to the show’s plot.  “At its core, the show is about the women who have or have had relationships with basketball players rather than the players themselves. Thus, the show appears to be transformative.”
Arenas argued that BWLA used his identity solely to attract attention to the show because the show wasn’t related to him.  “This is simply untrue. Unlike Vanna White and Samsung videocassette recorders or Bette Midler and Ford cars, there is an obvious connection between Arenas and BWLA.  Shed Media's show is about women who have dated or married basketball players. Arenas is a basketball player who dated one of BWLA’s cast members. While the show is not predominantly about Arenas, it is not so unconnected to him as to vitiate Shed Media's First Amendment defense.” 
In a footnote, the court pointed out that, even if the show were predominantly about Arenas, it would still be protected by the First Amendment, as unauthorized biographies are.  Importantly, the court’s reasoning was not that this hypothetical show would be transformative—see the Saderup quote above—but rather that a contrary result would chill lots of expression.  But of course this is why Saderup is (at least on its own) a terrible rule.  It sets up inherent conflicts with the other popular First Amendment test, Rogers v. Grimaldi: a Saderup-transformative use of a celebrity may seem to lack artistic relevance (Rosa Parks), while an accurate portrayal, which is artistically relevant by definition once you’ve chosen to depict a particular celebrity, seems nontransformative (Saderup).  But we’re ok with chilling the expression of visual artists.
On to the public interest defense: the public has a right to know things!  This includes reporting on recent events, even ones in the entertainment field, and people legitimately in the public eye.  Arenas argued that discussion of his family life wasn’t sufficiently related to his celebrity to render BWLA’s use of his identity a matter of public concern.  Best use of Twitter I’ve seen in a legal opinion yet: “This contention is belied by the tens of thousands of Twitter users who follow Arenas as he tweets about a variety of mundane occurrences. (See, e.g., “dont u hate waking up doing the same thing..wash face.. brush teeth..pee..take shower(well sum of us) ... put on clothes ... eat ... etc”).”  He’s a celebrity and thus the public has an interest in him.
Arenas then argued that there could be no First Amendment defense because Shed Media acted with actual malice.  This picks up on a problem I had with Stewart v. Rolling Stone, which was that the case imported the concept of actual malice into the right of publicity context with no coherent explanation of what exactly had to be malicious—the best candidate seemed to be the commercial use.  But if that’s so, Shed Media would almost certainly have acted with malice according to what the court said above, since it obviously knew it was going to evoke Arenas’s identity and wanted to make money, which apparently counts as “commercial.”  But since the public interest defense contemplates that for-profit publishers can report on celebrities because of the beneficial effects for public discourse, it can’t be “malicious” to do so deliberately.  In the absence of any coherent explanation of what one must be actually malicious about, the court here closed the circle: delightfully, it applied the actual malice standard from NYT v. Sullivan.  Because Arenas alleged neither defamation nor even falsehood, there was no way that defendants could have acted with knowledge of falsity or reckless disregard for the truth.
Arenas’s counsel said he’d be satisfied with an injunction against using his name in promotional materials, but the court was having none of that.  If you can constitutionally make a show about someone, you can tell your potential audience what it’s about.  As long as it doesn’t falsely claim that Arenas endorses BWLA, the advertising is also safe.
Notice that all this pain could have been avoided by a simple, and I believe constitutionally compelled, rule: the right of publicity can only be violated by commercial speech.  “Commercial” in California’s “commercial appropriation” tort should mean the same thing it does in First Amendment law.  BWLA is not an ad and could not constitute commercial appropriation.  There, I fixed it.
Turning to trademark, the court described Arenas’s infringement claim as “muddled,” lacking a theory of infringement.  He claimed trademarks in his name and variants thereof, and then added that the very presence of Govan and the show’s title was an obvious reference to him and a use of his likeness.  He further alleged that defendants were going to use his marks in commerce in connection with advertising BWLA.  But “Basketball Wives” and “Gilbert Arenas” (etc.) are not likely to be confused under the standard multifactor test. 
Arenas argued that the court should instead use the variant multifactor test of Downing for his false endorsement claim, but the court declined because defendants weren’t using Arenas’s “likeness,” in the sense of his “image—either actual or suggested.”  I have no idea what this means.  Is “image” metaphorical?  I would have thought that Downing applies to the use of a name without a picture. And would this argument disappear if BWLA shows him in a picture taken by Govan and displayed by her? This strange statement is just another manifestation of the fact that trademark law has metastized without figuring out how to make sense of its defenses: Arenas shouldn’t have a false endorsement claim based on a TV show whose characters talk about him, but somehow the case law doesn’t make clear why that is so.
Arenas also argued infringement based on use of his name.  That’s nominative fair use.  Defendants have to use his name to talk about him.  Given the prospective nature of the claims, the court couldn’t predict whether they’d eventually “use more of his marks than necessary,” whatever that could possibly mean (after Mattel v. MCA, I would suggest it places no particular limit on what an expressive production like a song or TV show can do).  “[M]ost importantly, allowing Govan to talk about her relationship with Arenas on BWLA and permitting Shed Media to advertise that its show will feature such discussions in no way suggests that Arenas endorses the show. To the contrary, common sense suggests that a celebrity may not agree with his ex-girlfriend's opinion of him.”
Arenas argued that he’d suffer irreparable harm without an injunction because of harm to his reputation, given that the Basketball Wives franchise “prides itself on its coarse brand of drama,” featuring “cat fights” and “infidelity issues.”  Though there are obvious First Amendment problems with counting this as harm, the court instead hit Arenas in the ego: “Shed Media provides a treasure trove of newspaper articles about and tweets by Arenas that, taken as a whole, convince the Court that Plaintiff's reputation will suffer no serious blow if BWLA airs as scheduled.… [I]t is difficult to see how an association with ‘cat fights’ will tarnish Arenas' reputation when he has been publicly associated with potential gunfights…. Arenas has publicized on Twitter his views of women and other groups—opinions that would be characterized by many, if not most, people as crude and offensive.”  (So if he’d been known as a model citizen without a Twitter account, would the court have accepted that he could suffer irreparable harm from a show that, on this record, was neither defamatory nor even wrong about him?  The next Tiger Woods might like an answer.)  Further, Arenas already associated himself with the show “by tweeting directly or indirectly about Govan’s appearance on it…. Arenas’ own tweets calling attention to Govan's upcoming appearance on BWLA undermine his claim that he will be injured by an association with the show.”  True, even a man with a bad reputation may be libeled, but that doesn’t go to irreparable injury.
The balance of equities also tipped sharply in Shed Media’s favor, given the potential harm to timely broadcast.  And there was a significant public interest in protecting First Amendment rights.
All this meant that Shed Media prevailed on its anti-SLAPP motion, since its conduct was in furtherance of its free speech rights in connection with a matter of public concern.
Arenas v. Shed Media U.S. Inc., No. 2:11-cv-05279-DMG -PJW (C.D. Cal. June 6, 2012)
Shed Media moved for the attorneys’ fees to which it was entitled based on its successful anti-SLAPP motion.  Arenas argued that Shed Media wasn’t a prevailing defendant because the court dismissed the complaint with leave to amend.  The potential for amendment wasn’t enough to take Shed Media out of “prevailing defendant” status.  Its victory was on the merits, even though the court was not completely certain that Arenas couldn’t state a claim with additional allegations; the court’s ruling “greatly reduced the potential scope of any amended claim,” and indeed Arenas ultimately chose not to file an amended complaint. 
Shed Media was awarded a bit over $32,000 in attorneys’ fees.  Arenas was, however, allowed to dismiss his claims without prejudice.

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