Does Rogers v. Grimaldi apply to false advertising claims?

Dickinson v. Ryan Seacrest Enterprises, Inc., No. CV 18-2544-GW(JPRx), 2019 WL 3035090 (C.D. Cal. Mar. 26, 2019)

This dispute over alleged supermodel Janice Dickinson’s appearance in a reality show is going up to the 9^th Circuit.  Here, the district court kicked out Lanham Act claims for false endorsement, false advertising, and trademark dilution and declined to exercise supplemental jurisdiction over the related state law claims.

Dickinson has been a producer, judge, contestant, and/or guest star in America’s Next Top Model, The Janice Dickinson Agency, I’m a Celebrity ... Get Me Out of Here!, Celebrity Rehab with Dr. Drew, and Celebrity Big Brother. She allegedly attends charity runway shows and photoshoots without a fee for the dual purpose of serving charity and “maintaining and building goodwill in her mark and brand,” and doesn’t voluntarily appear on reality television shows pro bono.

Rosette is a designer and the founder of Art Hearts Fashion, a charitable organization that produces runway shows during fashion events. Dickinson appeared as a runway model pro bono during Los Angeles Fashion Week for Rosette each year between 2010 and 2016, and Rosette allegedly knew that she wouldn’t do this if she knew that Rosette was planning to exploit her “celebrity” without her consent to facilitate a reality television show. In 2016, that’s allegedly what happened: Dickinson’s appearance at the fashion show became part of an episode of the Shahs of Sunset series that allegedly made it look like she “intentionally stole or bullied her way into wearing a romper that had supposedly been previously selected for Golnesa Gharachedaghi, a lead character.”  The episode was allegedly scripted so that Gharacedaghi would falsely act as though she was experiencing “trauma and consternation,” and Gharachedaghi would “intentionally, maliciously and falsely disparage” Dickinson on camera.  Adding to the intrigue, defendants apparently say they have a signed release, but Dickinson alleged that she didn’t sign any release (and thus that defendants faked the release to reassure others in the corporate hierarchy/insurers; she alleged that the purported signature doesn’t match her own), or that if she did, it was as a result of deception leaving her unaware that she was signing anything at all or that she was signing a release. Alleged fraud in the factum!

Defendants allegedly falsely advertised that the series was an “unscripted” “docuseries” rather than a largely scripted or fictional series, and traded off Dickinson’s fame to promote the series.  The use of “True Entertainment” as the name of a credited production entity associated with the series was also allegedly false, and “[f]eaturing this credit on the screen at the end of the programming is intended to make viewers believe that the Series tells ‘true stories.’” [OK, I’m not a huge fan of Twiqbal, but how do we feel about the plausibility of this allegation?]  

The promotional material allegedly falsely portrayed her as a “fashion runway ‘thief’ ” who stole Gharachedaghi’s outfit, causing negative public reaction, including in YouTube comments. [Is there anything a woman can do that won’t cause negative YouTube comments?] Two of the marketing clips for the relevant episode on Bravo TV’s website allegedly used Dickinson’s mark [her name] to make false statements about the content of the episode to encourage consumers to “commercially engage with” the episode.

One clip includes the statement: “Did Janice Dickinson Just Steal GG’s Look?! Evidently she took the outfit GG was supposed to wear on the runway, and GG is pissed .... ”  [The alleged falsity of this statement is based on the allegation that Dickinson didn’t “steal” the look; First Amendment doctrine (outside of TM) generally protects advertising about the content of noncommercial speech to the same extent as the content of the underlying noncommercial speech, and thus you can’t usually turn your defamation claim into a false advertising claim by challenging the advertising of the noncommercial speech.] Another clip says: “Did we mention Janice Dickinson makes an appearance?” Dickinson alleged that, given her fame, fans would believe that she would only “appear” on the series voluntarily, and that as such, she endorsed the show. [Showing the importance of Rogers v. Grimaldi as a speech-protective test!]  Similar “interstitial” ads ran during the episode itself to “tease viewers about upcoming content,” which allegedly “explicitly” falsely “impl[ied] that if consumers continue to tune in they will be shown documentary footage of a controversy between Plaintiff and Gharachedaghi.” In one clip, a cast member says “It’s about to go down,” but the episode never shows any confrontation  and none occurred.

False endorsement: From an earlier ruling: Rogers v. Grimaldi applies. The use of Dickinson’s persona was artistically relevant.  And the use wasn’t explicitly misleading.  Dickinson unsurprisingly cited Gordon v. Drape to say that there was a factual issue about that, but even Gordon talks about TV programs as being different from greeting cards.  The Ninth Circuit has already found that the following allegations don’t suffice as evidence of explicit falsity:  “mere use of the plaintiff’s likeness,” “a consumer data survey showing confusion,” and written materials accompanying the work that didn’t explicitly mislead.  The complaint didn’t allege any “explicit indication, overt claim, or explicit misstatement” relating to endorsement.  The beginning credits list cast members, producers, and companies behind the episode, and Dickinson’s not on that list. And nothing else “suggest[s]” that Dickinson, the nemesis in one scene of one episode, endorsed or backed the episode.  “Though the Episode’s allegedly false narrative portraying Plaintiff as ‘stealing’ the romper may be unethical or violate some other law, that narrative does not sustain the Rogers explicitly misleading prong as to Plaintiff’s Lanham Act claims.”  Nor were there any statements outside the episode that Dickinson was behind the episode. And many of the statements Dickinson cited were outside of defendants’ control.

False advertising: Under Lexmark, Dickinson needed to “allege an injury to a commercial interest in reputation or sales.” In the light most favorable to her, she did so, alleging harm to her reputation, thereby diminishing the “desirability of Dickinson’s appearance on other media projects, and her $75,000 appearance fee value.” Did the economic or reputational injury flow directly from the deception wrought by the advertising? The court found this a “closer call.” Dickinson alleged that the episode’s “false narrative” deceived consumers into believing that she was unprofessional, and thus diminished the value of her celebrity brand.  But that was about the content of the episode, rather than about the alleged falsity of the “unscripted” advertising claim. Thus, she didn’t properly allege that the advertising was the proximate cause of her injury.

Also, false advertising is only actionable under the Lanham Act when it’s in “commercial advertising or promotion.”  But there are special rules for commercial speech where ads promote expressive works. Under governing law, “[f]or private actions, such as tort suits, advertisements that are ‘adjunct’ to a protected work are entitled to the same immunity from as the underlying work.” All the ads that Dickinson cited were clips from the episode itself, a few with short descriptions. They were noncommercial speech for Lanham Act purposes.  Thus, the court applied Rogers to the false advertising claim.  [Note that this step is entirely unnecessary if you agree with the idea that the episode promos aren’t “commercial speech”; the inquiry is over for §43(a)(1)(B) purposes at this point. That’s unlike §43(a)(1)(A), which courts have held applicable to noncommercial speech, which was the reason they needed to invent Rogers in the first place. The court thus expressed some uncertainty about how to apply Rogers to false advertising about the content of an expressive work, but that’s a self-created difficulty.]

In a footnote, the court declined to find that Gordon counseled in favor of finding a factual issue here.  This isn’t a “minimally expressive” work like a greeting card. [Sigh.]  Gordon contrasted use “in the creation of a song, photograph, video game, or television show” with “just past[ing]” a mark into greeting cards, which could be explicitly misleading. Here, the use of Dickinson’s likeness, image, and name in the episode, and concomitant promotional materials obviously had artistic relevance above zero.

Explicit misleadingness: Dickinson alleged that the “docuseries” advertising misled as to content because the show was scripted, but that wasn’t enough under Rogers because Rogers requires the use of the mark to be explicitly misleading. “Plaintiff’s mark has no bearing on whether or not Bravo advertises their show as a scripted series or reality television.” [Which is why proximate cause might be the better move here if you insist on going further than “not commercial speech.”]

Second, Dickinson argued that the ads explicitly misled about the content of the episode by making her look bad/promising a fight. Not so.  The ads were all clips of the episode itself: “A clip of a television episode could not possibly mislead as to the content of the episode, as it is itself a portion of the content.” And the additional descriptive statement: “Did Janice Dickinson Just Steal GG’s Look?! Evidently she took the outfit GG was supposed to wear on the runway and GG is pissed ....” wasn’t explicitly misleading; it wasn’t even unequivocal. The short descriptions of the clips “both accurately preview the controversy portrayed on the Episode, whether the controversy itself was contrived by Defendants or not.”  “Did we mention Janice Dickinson makes an appearance?” is also not misleading, since she does.

Dilution: Not commercial speech, no claim.