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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