Plaintiff Gilbert J. Arenas, Jr., a professional basketball player for the Orlando Magic, brought this action against defendants Shed Media, the producer of the Basketball Wives television series, as well as Laura Govan, his former girlfriend, who is scheduled to appear on the Basketball Wives: Los Angeles (BWLA) version of the show. The Basketball Wives series comprises a cast of women, most of whom have or have had relationships with professional basketball players, and the show is about the women’s relationships with one another and their lives. While the players are mentioned as part of the storyline to the extent that they are part of the women’s lives, the players do not appear on the show as cast members and are not themselves the focus of the storyline. Plaintiff brought suit against defendants alleging, among other things, trademark infringement and common law and statutory misappropriation of likeness and right of publicity under California law. Plaintiff also sought a preliminary injunction enjoining defendants from using his alleged trademarks in association with any reality television show and, if his former girlfriend appears in the show, using “Basketball Wives” or any other term that would suggest affiliation with basketball players in the title, promotional text, or the show itself.
Defendants moved to strike plaintiff’s complaint under California’s statute prohibiting Strategic Lawsuits Against Public Participation (the Anti-SLAPP statute). Under the Anti-SLAPP statute, the court would grant a special motion to strike a cause of action 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. To establish a probability of prevailing on a claim, the plaintiff must show that the complaint is legally sufficient and supported by a prima facie showing of facts to sustain a favorable judgment if the evidence submitted by the plaintiff is credited. If the plaintiff fails to present a sufficient legal basis for the claims or if the evidence offered is insufficiently substantial to support a judgment in favor of the plaintiff, then the defendant’s anti-SLAPP motion should be granted.
To merit a grant of injunctive relief, plaintiff also must show that he is likely to succeed on the merits. He must also show he is likely to suffer irreparable harm in the absence of preliminary relief, that the balance of equities tips in his favor and that an injunction is in the public interest. An injunction also would be appropriate when a plaintiff raises serious questions going to the merits of his claims, shows that the balance of hardships tips sharply in his favor and that there is a likelihood of irreparable injury, and that the injunction is in the public interest.
The court denied Arenas’ request for a preliminary injunction and granted defendants’ Anti-SLAPP motion, concluding that Arenas was unlikely to succeed on the merits of his claims for common law misappropriation of identify and trademark.
California common law recognizes the right of a person whose identity has commercial value – most often a celebrity – to control the commercial use of his identity. To sustain a common law claim for commercial misappropriation, plaintiff must prove the defendants’ use of the plaintiff’s identity, the appropriation of plaintiff’s name or likeness to defendants’ advantage, commercially or otherwise; that plaintiff did not consent, and resulting injury. Because defendant Shed Media did not dispute that it lacked Arenas’ consent, the court focused on plaintiff’s potential injury in the context of irreparable harm and confined its analysis to the first two elements of the claim – defendants’ use of plaintiff’s identity to its advantage, as well as Shed Media’s asserted First Amendment defense to the claim.
While the court acknowledged that, based on the record that did not include an episode of BWLA, it had difficulty determining that defendant Shed Media would use Arena’s name and likeness, the court reasoned that Govan would likely refer to Arenas in the context of their former relationship, given that the reason for the show was the participants’ relationships with professional basketball players. The court concluded that Govan’s likely on-air conversations about Arenas – and any future promotional materials relating to them – would constitute the use of Arenas’ identity as a celebrity under California law.
Appropriation of a celebrity’s identity requires that the publication identify the celebrity, either by directly using his name or image or by emphasizing signs or symbols associated with him. Noting that even the direct use of the celebrity’s name wouldn’t violate his right of publicity if the use does not appropriate his identity as a celebrity, the court concluded that defendants’ likely use of Arenas’ name is in the context of a show about “Basketball Wives” that features famous basketball players’ current and former wives and girlfriends, and that Govan’s likely mentioning of Arenas by name on BWLA would be in the context of his status as a famous basketball player. Plaintiff was likely to prove the first two elements of commercial misappropriation.
The court rejected defendant Shed Media’s argument it could not be found to have appropriated Arena’s identity, given that Govan was participating in the show as the sister of another “basketball wife” and that Shed Media’s publicity about the show had only highlighted Govan’s identity as a sister and not as Arenas’ former girlfriend. The court found it both unsurprising and relevant that, within the same day of the official press release, other media outlets caught on to the connection between Govan and Arenas, and disseminated plaintiff’s name, to defendants’ benefit. Acknowledging that if Govan did not mention her former relationship with plaintiff, her inclusion in the show was insufficient to invoke plaintiff’s identity as a celebrity, the court also found that the assumption that Govan would not mention Arenas was improbable. Given that Govan was likely to mention Arenas at some point during her appearances on the show, defendants were likely to appropriate his identity for their commercial gain. The court also found it immaterial that the show focused on the women’s relationships with one another and their lives rather than on Arenas, reasoning that whether defendant appropriated the plaintiff’s identity, not how defendant had done so, was important.
After determining that Govan’s appearance on BWLA would likely result in an appropriation of Arenas’ name, however, the court concluded that Shed Media’s First Amendment transformative use and public interest defenses prevented Arenas from succeeding on his misappropriation claim.
To be entitled to the defense of transformative use, defendants must show that the work contained significant transformative elements or that the value of the work does not derive primarily from the celebrity's fame, and was therefore protected by the First Amendment. The transformative use defense is a balancing test between the First Amendment and the right of publicity that requires the court to examine and compare the allegedly expressive work with defendant’s use of the plaintiff’s identity to discern if the work contributes significantly distinctive and expressive content. If the value of the work comes principally from some source other than the fame of the celebrity – from the creativity, skill and reputation of the artist – sufficient transformative elements are presumed and warrant First Amendment protection. If, however, the creator’s skill and talent is subordinated to the overall goal of creating a conventional portrait of the celebrity to exploit commercially his fame, then the creator’s right of free expression is outweighed by the celebrity’s right of publicity. The court concluded that any reference to Arenas would be incidental to BWLA’s plot as a whole, since the show was about the women who have or have had relationships with basketball players rather than the players themselves, and that the show was transformative.
The court likewise concluded that Shed Media was also entitled to the public interest defense, which extends to almost all reporting of recent events, as well as to publications about celebrities – people like professional athletes who have achieved a marked reputation or notoriety by appearing before the public and may legitimately be mentioned and discussed in print or on radio and television.
The court rejected Arenas’ argument that any discussion of his family life was not sufficiently related to his celebrity to make the show’s use of his identity a matter of public concern, noting that the “tens of thousands” of Twitter followers who follow Arenas as he tweeted about a variety of daily, mundane occurrences clearly indicated a public interest in him and his activities. The court also rejected Arenas’ argument that defendants acted with actual malice, finding that plaintiff had not shown any defamatory statements that Govan was likely to make about him on the show, thereby failing to meet his burden of establishing by clear and convincing evidence that defendants published any defamatory statements with either knowledge of their falsity or with reckless disregard for the truth.
Finally, the court declined to take Arenas’ suggestion that the court issue an injunction preventing defendants from using his name in BWLA promotional materials, holding that the analysis was the same. BWLA advertising was not actionable under an appropriation of publicity theory so long as the advertising does not falsely claim that the public figure endorses BWLA.
The court likewise held that Arenas likely would not succeed on his trademark claims, noting that his trademark infringement claim was muddled and that he failed to articulate a coherent theory of infringement or clearly identify the marks that allegedly infringe his own. Arenas asserted ownership in a variety of marks and claimed that Govan’s presence and the title of the show was an obvious reference to him and the use of plaintiff’s likeness. Arenas also alleged that defendants are using or have threatened to use his marks in commerce in connection with BWLA advertising and promotion.
To succeed on a claim of trademark infringement under the Lanham Act, Arena must prove that the defendants’ use of his alleged mark is likely to cause consumer confusion, based on the case-by-case application of the eight nonexclusive factors, including (1) the similarity of the marks; (2) the strength of the plaintiff’s mark; (3) the proximity or relatedness of the goods or services; (4) the defendant’s intent in selecting the mark; (5) evidence of actual confusion; (6) the marketing channels used; (7) the likelihood of expansion into other markets; and (8) the degree of care likely to be exercised by purchasers of the defendant’s product.
The court “easily dismissed” Arenas’ argument that Shed Media was infringing his marks through the title of its show, holding that Arenas has virtually no chance of succeeding on an infringement claim based on the mark “Basketball Wives.” While Arenas’ own marks are strong, they are completely dissimilar to the Basketball Wives title – no one would confuse Arenas with a basketball wife and Arenas provided no evidence of actual confusion. Arenas provided no evidence that he competes for celebrity endorsements with Shed Media or that he has plans to develop a reality television series about women who date basketball players.
The court likewise concluded that Arenas was also unlikely to succeed on his trademark claim based on defendants’ direct use of his name. “Nominative fair use” – where defendant uses the mark to refer to the trademarked good itself – does not constitute infringement. To determine nominative fair use, the court considers whether the “product” was readily identifiable without use of the mark, defendant used more of the mark than necessary, or defendant falsely suggested he was sponsored or endorsed by the trademark holder. The court reasoned that it would be virtually impossible for defendants to refer to Arenas without using his name. Defendants had not yet used any of Arenas’ marks in commerce, so the court could not predict whether they would eventually use more of Arenas’ marks than necessary. Finally, and most importantly, the court reasoned that allowing Govan to talk about her relationship with Arenas on BWLA and permitting Shed Media to advertise that the show would feature these discussions would in no way suggest that Arenas endorsed the show. In fact, common sense would suggest that a celebrity may not agree with his former girlfriend’s opinion of him.
Finding that Arenas had failed to show a likelihood of success or even serious questions going to the merits of his claims, and that the rest of the factors did not support his request, the court held that plaintiff was not entitled to injunctive relief. Specifically, the court rejected Arenas’ contention that being associated with a “disreputable” show that featured “cat fights” and “infidelity issues” would cause irreparable reputational harm, given his highly publicized behavior that included pulling a gun on a teammate over a gambling debt, pleading guilty to carrying a pistol without a license, and publicizing on Twitter views of women and other groups that would be characterized by many, if not most, people as crude and offensive. The court also noted that Arenas had undermined his claim that he would be injured by an association with the show by his own tweets calling attention to Govan’s upcoming appearance on BWLA.
The court also found that the balance of equities also tipped “sharply” in defendants’ favor, given that the potential reputational harm to Arenas was slight but that Shed Media would face tremendous hardship if it were subjected to an injunction, including a claim by the television station that defendant was in breach of their agreement to timely deliver the show, causing Shed Media to lose payments, subject it to liability for lost advertising revenues, and injure its reputation in the industry. Similarly, the court noted that the significant public interest in upholding First Amendment principles outweighed the any “highly attenuated” public interest in protecting intellectual property.
Given that Arenas was unlikely to prevail on his right of publicity claim, the court granted Shed Media’s Anti-SLAPP motion to strike, finding that defendants’ conduct – producing BWLA – was in furtherance of defendants’ free speech rights in connection with a matter of public concern.