District court dismisses without prejudice plaintiff’s Lanham Act and state unfair competition claims, finding that defendants’ allegedly inaccurate and unauthorized use of plaintiff’s name and likeness in reality series did not explicitly mislead as to source of episode or series.Model and talent agent Janice Dickinson sued NBCUniversal, Ryan Seacrest Enterprises, fashion designer Erik Rosette and others involved in producing the reality television series “Shahs of Sunset” for false endorsement, false advertising, trademark dilution and violation of California’s unfair competition statute. Dickinson alleged that defendants exploited her name and likeness in an episode of the Bravo series without her authorization and portrayed her in a false and misleading manner. On defendants’ motion, the district court dismissed Dickinson’s claims without prejudice.
Dickinson knew defendant Rosette, who, in addition to designing clothing under the label Mister Triple X, organized Los Angeles Fashion Week for many years. Dickinson appeared as a runway model for Rosette during Los Angeles Fashion Week, without compensation, each year from 2010 to 2016. According to plaintiff’s complaint, prior to Dickinson’s 2016 appearance in the Los Angeles Fashion Week runway show, Rosette agreed and arranged with the other defendants to exploit her appearance in an episode of the reality show without her knowledge, and conspired to create a narrative for the episode that portrayed her in a negative manner. The narrative made it appear — falsely, according to Dickinson — that she had intentionally worn an outfit for the runway appearance that had previously been selected by Rosette for Golnesa Gharachedaghi, one of the lead characters on the reality series.
Dickinson also alleged that she had been unaware that “Shahs of Sunset” was filming and producing an episode at the Los Angeles Fashion Week runway show, and that a staff member backstage had offered her a choice of two outfits to wear for the appearance, but had strongly encouraged Dickinson to select the one that had been “promised” to Gharachedaghi as part of defendants’ intentional manipulation. Dickinson never signed a contract or release for her appearance on the reality show and became aware of her portrayal only when the episode publicly aired the following summer. The resulting controversy between Dickinson and Gharachedaghi was reported in various online articles and media. After becoming aware of the portrayal, Dickinson reached out to the “Shahs of Sunset” producers, who claimed that she had authorized the appearance in a signed written release, which Dickinson alleged was a forgery.
Defendants argued that Dickinson’s Lanham Act claims for false endorsement, false advertising and dilution were barred by the First Amendment balancing test derived from the Second Circuit decision in Rogers v. Grimaldi. Dickinson countered that the First Amendment does not protect knowingly false speech made with actual malice and that the Rogers test, which applies to “expressive” works, did not govern the parts of defendants’ speech that could be categorized as “commercial.” The district court noted that the Ninth Circuit adopted the Second Circuit’s Rogers test “to strike an appropriate balance between First Amendment interests in protecting artistic expression and the Lanham Act’s purposes to secure trademark rights.”
The Rogers test protects the use of a trademark in an expressive work that otherwise would violate the Lanham Act, unless (1) the use of the mark has absolutely no artistic relevance to the underlying work, or (2) if there is some artistic relevance, unless the work explicitly misleads as to its source or content. The level of artistic relevance does not need to be great, as any level of relevance above zero is enough to trigger the protection of the first prong of the test. The court concluded the “Shahs of Sunset” episode was an expressive work, the Rogers test was applicable, and the inclusion of Dickinson’s name and likeness in the episode, even if done without her consent, had a sufficient level of artistic relevance to bar these claims under the first prong of the test. The court noted that the narrative’s portrayal of Dickinson as stealing the outfit, whether true or not, made the use of her name and likeness artistically relevant to the work.
Under the second prong of the Rogers test, the court began its analysis by noting that Ninth Circuit precedent deems the use of a mark alone insufficient to establish explicit misleading. Instead, courts look to whether there was an “explicit indication,” “overt claim” or “explicit misstatement,” and whether that affirmative act by the alleged infringer caused consumer confusion. The district court concluded that Dickinson’s complaint failed to adequately allege that use of her name and image in connection with the episode would confuse viewers into thinking Dickinson was somehow behind the episode or had sponsored the show. The court found that the cast members, producers and companies behind the show were listed in the episode’s opening credits, with no mention of Dickinson’s name among them. The court further noted a lack of any explicit or overt statement or claim regarding any affiliation between Dickinson and the reality series, and ultimately decided that these failures rendered Dickinson’s showing insufficient to proceed under the second prong of the Rogers test.
In a footnote to its tentative opinion (subsequently adopted as a final decision), the court observed that neither party thoroughly addressed whether the second prong of the Rogers test requires a separate inquiry to address use of a person’s name or likeness in a manner that explicitly misleads as to content, rather than as to source. Although the court found that the alleged falsity of the depicted altercation between Dickinson and Gharachedaghi did not explicitly mislead as to whether Dickinson sponsored or endorsed the episode or series, the court questioned whether the false narrative allegations might be relevant to an analysis of whether the content of the episode was explicitly misleading. In light of the court’s adoption of its tentative ruling as a final decision, it appears that defendants prevailed on this issue during oral argument.
Turning to Dickinson’s dilution claim, the court acknowledged that the Ninth Circuit has not explicitly applied the Rogers test to trademark dilution claims. Further, the Ninth Circuit has construed the Lanham Act to prohibit dilution claims based on use of a trademark in connection with speech that is not “purely commercial in nature.” Since the court determined that use of Dickinson’s name and likeness bore some artistic relevance for its role in the episode’s narrative, it concluded that the use was not purely commercial, and therefore could not form the basis of a dilution claim. The court dismissed all three Lanham Act claims without prejudice, giving Dickinson an opportunity to cure the deficiencies in her complaint, if possible.
Finally, the court quickly disposed of Dickinson’s claim under California unfair competition law, which requires either an unlawful, unfair or fraudulent act in order to establish liability. Dickinson’s complaint expressly limited the state claim to the unlawful prong, rather than to the unfair or fraudulent prongs. The complaint failed to sufficiently allege the violation of another law as a basis for the “unlawful” unfair competition claim, including by using only vague references to the California Penal Code without explaining how defendants’ alleged behavior amounted to a violation. Nor could the Lanham Act claims serve as a proper basis to support the unlawful prong, since the court had already determined that those claims failed on the merits. The court dismissed the state claim, though likewise without prejudice, granting Dickinson an opportunity to amend to add an underlying violation or a claim based on the unfair or fraudulent prongs of the California statute.
Summary by Melanie Howard and Jordan Meddy