Bobby Brown’s failed ROP claim shows some of the cracks in the current ROP tests

Brown v. Showtime Networks, Inc., No. 18 Civ. 11078 (CM)
(JLC), 2019 BL 290214 (S.D.N.Y. Aug. 02, 2019)
Bobby Brown and the Estate of Bobbi Kristina Brown sued Showtime
and the BBC (which got out of the case on jurisdictional grounds) and some
other defendants, claiming they used allegedly unauthorized footage of the
Browns in a documentary film on the life of Whitney Houston, Whitney: Can I
Be Me
. They alleged violations of 43(a) of the Lanham Act, as well as state
law claims of right of publicity violations and tortious interference with
contractual relations; the court dismissed the Lanham Act claim on grounds that
applied to the ROP claims and declined to exercise supplemental jurisdiction
over the tortious interference claim.
Brown is a famous singer and also well-known for being Houston’s
ex-husband; they had a daughter, Bobbi, who died in 2015 in Georgia. Brown pled
that information about him, Houston, and Bobbi Kristina is “very valuable and
of interest to the public.” Defendants Tracey Baker-Simmons and Wanda Shelley were
the executive producers of the reality television program Being Bobby Brown,
which starred Brown and aired on Bravo for one season in 2005. An agreement
with Brown’s company Brownhouse authorized the filming and included a confidentiality
Brown declined a request to be interviewed for the Showtime/BBC
documentary.  “The film, which lasts one
hour and forty-four minutes, contains approximately thirty minutes of footage
depicting Brown and his late daughter Bobbi Kristina, all of which was derived
from Being Bobby Brown.”
Brown and the Estate alleged that Showtime and BBC wrongfully
used their names, likenesses and personas without their consent in the film;
the credits of the film; and the marketing and promotion of the film. The film
allegedly contained unauthorized footage of musical performances of Brown and
Bobbi Kristina. The film’s end credits listed “B2 Brownhouse Entertainment in
Association with Simmons Shelley Entertainment LLC,” which Brown argued falsely
suggested that he consented and authorized the use of his image and voice in
the film.  Brown submitted as exhibits
reviews of the film that mentioned him, arguing that this demonstrated confusion
as to the origin, sponsorship, and approval of the film.
Brown’s ROP claim was under California statutory and common
law. But “Whitney: Can I Be Me is an expressive work and a report on a
matter of public interest, such that it is immune from suit under both the
First Amendment and California law.” The documentary was not commercial speech;
“[u]nder the First Amendment, a right of publicity cause of action may not be
maintained against ‘expressive works, whether factual or fictional.’” [But see Comedy
, sigh. Later, the court says that “[c]elebrities have successfully
pursued right of publicity claims for the usage of their images, likenesses,
and catchphrases, but only in the limited context of commercial advertisements
and product sales,” without noting the contradiction between saying that the
right of publicity is limited to commercial speech and saying that it extends
to “products” that incorporate celebrity likenesses.] 
This wasn’t a hard case. The First Amendment “safeguards the
storytellers and artists who take the raw materials of life—including the
stories of real individuals, ordinary or extraordinary—and transform them into
art, be it articles, books, movies, or plays.”  Likewise, “[t]he appropriation of a celebrity’s likeness
may be important to uninhibited debate on public issues, particularly debates
about culture and values.” The court noted that one of Brown’s own cited
reviews commented on “the film’s important role in ‘preserving a necessary
account of the truth behind the tabloids.’” Another review stated that the film
“delivers…[a] tragic lesson in the toxic mix of fame, talent and children; it
should be required viewing for all those who seek to follow this diva’s path to
fame and fortune.”
Brown argued that he never signed a release form authorizing
the use of his likeness. “However, no such agreement is necessary where, as
here, the film and its portrayal of Brown are protected under the First
Amendment.” Any industry custom of paying for such releases was not relevant to
the legal standard.  The court (not at
all uniquely!) uses the idea of “appropriation” to hide a legal conclusion in
what sounds like a factual claim: “Here, Brown’s name, likeness, and persona
were not appropriated to sell products, were not used in commercial
advertisements, and did not appropriate the economic value of Brown’s performance
or persona.”  Well… not exactly: they did
use his image in advertising the film, but that’s ok because the film itself
was constitutionally protected. “The fact that expressive works, including
films, plays, books, and television shows [but not greeting cards, lithographs,
or T-shirts], generate income for their creators does not diminish their
constitutional protection.”
The Estate’s claim was brought under Georgia law.  I find it rather puzzling that a federal
court would use the underlying state’s idea of what the First Amendment
requires to determine the constitutional scope of that state’s ROP.  Nonetheless, the court proceeded to do a
slightly different First Amendment analysis, following the Supreme Court of
Georgia’s holding that “where an incident is a matter of public interest, or
the subject matter of a public investigation, a publication in connection
therewith can be a violation of no one’s legal right of privacy.”  The Georgia ROP claim had to be dismissed
because the use here was newsworthy under Georgia law. Likewise, advertising a
protected use is also protected under Georgia law.
The Lanham Act claim failed under Rogers. The use
plainly had artistic relevance.  Brown tried to use Gordon v. Drape Creative, Inc., 909 F.3d 257 (9th Cir. 2018),
to argue otherwise. Not only was Gordon not binding, that case found
artistic relevance present even when the defendant “recreated plaintiff’s
trademarked catchphrases on the front covers of greeting cards, without any
other text” and went off instead on part 2 of Rogers.  (In an unfortunate and likely-to-be-repeated
shorthand, the court described this case as holding that the use of the “mark”
alone was “sufficient” to find explicit misleadingness, but didn’t note that
even Gordon said there was a triable fact issue.)  Anyway, the use here was artistically
Was there explicit misleadingness?  Sadly, we’ve now arrived at the same kinds of
gyrations courts sometimes perform with explicit/implicit falsity in §43(a)(1)(B)
cases: “Although this determination is based on the same considerations as the
likelihood of confusion factors for trademark infringement, only a ‘particularly
compelling’ finding of likelihood of confusion can overcome the First Amendment
interests.”  A couple of comments: First,
this formulation comes from Twin Peaks, a case about expressive work-v-expressive
work contests, which the Second Circuit doesn’t actually apply Rogers to;
instead it tightens the usual LOC test to account for First Amendment concerns.  Twin Peaks shouldn’t have been relevant here, because Brown is a performer in exactly the same position as Ginger Rogers and should have gotten pure Rogers treatment. Second, and relatedly, this formulation makes
a mockery of the “explicit” requirement in Rogers.  
Despite all this, courts can still get rid of trademark
claims “where simply looking at the work itself, and the context in which it
appears, demonstrates how implausible it is that a viewer will be confused into
believing that the plaintiff endorsed the defendant’s work.”  Brown argued that the film’s credits were
explicitly misleading. This wasn’t plausible, let alone “particularly
compelling.”  The end credits listed “B2
Brownhouse Entertainment in Association with Simmons Shelley Entertainment LLC”
as one of dozens of archival sources for the film. The credit was visible on
screen for about eight seconds. “It is not plausible that a significant number
of people watching the film would pay much attention to the end credits of the
film, let alone the long list of archival sources presented near the very end
of the end credits. … It is even more implausible that viewers of the film
interpreted ‘B2 Brownhouse Entertainment in Association with Simmons Shelley
Entertainment’ as understanding that Bobby Brown endorsed, produced,
sanctioned, or approved of the film.”
Brown alleged that defendants’ “marketing strategy” capitalized
on his fame by providing advance copies of the films to members of the press,
giving the press the opportunity to view the film and write reviews before the
release date, allegedly in the hopes that the reviews would mention Brown and
thus would draw more attention to the film. But that wasn’t sufficient to plead
explicit misleadingness. “Put otherwise, Defendants specifically identify the
persons responsible for the film, and Bobby Brown is not among them.” None of
the reviews Brown identified even stated the mistaken belief that Brown
endorsed the film. As Rogers held, “[t]he slight risk that…use of a
celebrity’s name might implicitly suggest endorsement or sponsorship to some
people is outweighed by the danger of restricting artistic expression.”
With all that out of the way, the court turned to tortious
interference. The non-B2 defendants allegedly tortiously interfered with Brown’s
confidentiality agreement with B2 after he declined the interview, negotiating to
use footage from Being Bobby Brown in the film.  Though choice of law wasn’t clear, the elements
of a tortious interference with contract claim under New York and California
law were, for all practical purposes, identical: “(1) the existence of a valid
contract between the plaintiff and a third party; (2) the defendant’ knowledge
of the contract; (3) the defendant’s intentional procurement of the third-party’s
breach of the contract without justification; (4) actual breach of the
contract; and (5) damages resulting therefrom.”
(3) was ambiguous. Brown specifically alleged that he
notified defendants of the existence of the agreement in 2017, after the film
already began airing, which would mean the alleged breach necessarily occurred
before Brown notified them of the agreement.  The court was troubled by whether defendants
could have intended to procure a breach of a contract they did not know existed,
but at this stage it declined to grant the motion to dismiss, which would have
to be without prejudice anyway. Discovery was a better place to hash this out.
However, without the Lanham Act claim there was no longer a
basis for federal jurisdiction (complete diversity was lacking).  The court declined to exercise its
supplemental jurisdiction.  

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