Valencia v. Universal Studios Productions, Inc. et al
Filing
22
ORDER granting, with respect to all claims, Defendants' 8 Motion to Dismiss. Defendants' 10 Request for Oral Argument is DENIED as moot. Signed by Judge Richard W. Story on 12/18/2014. (cem)
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF GEORGIA
ATLANTA DIVISION
EREINA “HONEY ROCKWELL”
VALENCIA,
Plaintiff,
v.
UNIVERSAL CITY STUDIOS
LLC and MARC PLATT
PRODUCTIONS,
Defendants.
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CIVIL ACTION NO.
1:14-CV-00528-RWS
ORDER
This case comes before the Court on Defendants’ Universal City Studios
LLC and Marc Platt Productions Motion to Dismiss Amended Complaint [8]
and Request for Oral Argument [10]. After reviewing the record, the Court
enters the following Order.
Background
Plaintiff Ereina “Honey Rockwell” Valencia brings this action against
Defendants Universal City Studios LLC (“Universal City”) and Marc Platt
Productions (“Marc Platt”) (collectively, the “Defendants”) alleging invasions
of privacy; fraud, false advertising, and unfair competition; and trademark
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dilution. Plaintiff alleges diversity jurisdiction under 28 U.S.C. § 1332 as the
basis for this Court’s subject matter jurisdiction.1 Because this matter is before
the Court on a motion to dismiss, the Court accepts as true the allegations in
Plaintiff’s Amended Complaint [5].
Plaintiff is a hip hop dancer and dance teacher who has performed under
the stage name “Honey Rockwell” since 1994. Plaintiff, a native of the Bronx
and of Hispanic descent, performed and taught dance at various community
dance centers and theaters in the Bronx, New York. In addition to performing
and teaching hip hop dance in the Bronx, Plaintiff appeared in various
international and domestic dance productions; created, produced, and released a
music video; and appeared in various dance magazines.
In 2003, Defendants released the film Honey, which chronicles the
dreams and struggles of Honey Daniels, a native of the Bronx of Hispanic
descent who performs and teaches hip hop dance in the Bronx. In 2011,
Defendants released the film Honey 2, a sequel in which a hip hop dancer
1
Defendants are residents of Delaware and California. The Amended
Complaint does not indicate Plaintiff’s state of residence. However, Defendants do
not challenge the basis of diversity jurisdiction. The Court assumes for purposes of
this Order that Plaintiff is a citizen of either Georgia or New York.
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inspired by Honey Daniels achieves success and fame. At the core of her
Amended Complaint, Plaintiff alleges that these films misappropriated and
exploited her persona and life story.
Defendant Universal City2 owns the copyrights and exclusive rights
under copyright in Honey and Honey 2 (collectively, the “Honey films”).
Plaintiff alleges that Defendants appropriated Plaintiff’s name, picture, likeness,
and identity through their release of the Honey films. In support, Plaintiff
points to the following facts: 1) Plaintiff assumed the stage name of “Honey”3
in 1994; 2) both Plaintiff and “Honey Daniels” are Hispanic women; (3) both
teach hip hop dance in the Bronx and appear in hip hop music videos; and (4)
both were affiliated with dance studios the Bronx Dance Theater and Hunts
Point. Plaintiff further alleges that a producer for the film was notified of
“Honey Daniels’s” similarity to Plaintiff. Finally, Plaintiff alleges that she has
been approached and identified as the dancer depicted in Honey and on one
2
Plaintiff does not specifically allege a separate basis for naming Marc Platt
Productions as a co-defendant, and treats the Defendants as a single entity for the
purposes of the Amended Complaint. Because Defendant Universal City and
Defendant Marc Platt Productions move together to dismiss the Amended Complaint,
the Court will treat the Defendants as a unified entity for the purposes of this Order.
3
The Court notes, more precisely, that Plaintiff assumed the stage name
“Honey Rockwell.” This distinction will be discussed further, infra, at Part II.B.
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occasion was contacted to appear at a movie release party as “the real [H]oney.”
Plaintiff claims that these similarities and alleged confusion has damaged her
personal brand as dancer. Plaintiff alleges that it appears that Plaintiff has
copied the likeness of Defendants’ character rather than vice versa, and that
Defendants’ actions have thus undermined her reputation and the value of her
name and image.
Plaintiff filed suit on February 21, 2014 and amended her Complaint on
April 3, 2014. The Amended Complaint asserts seven claims. Count I alleges
commercial appropriation and relief for right of publicity violations. Count II
alleges intrusion upon Plaintiff’s seclusion and solitude. Count III alleges
deceptive trade practices under O.C.G.A. § 10-1-372. Count IV alleges false
advertising and unfair competition under 15 U.S.C. § 1125(a) and O.C.G.A.
§ 10-1-390. Count V alleges fraud and unfair competition under O.C.G.A.
§ 23-2-55. Count VI alleges trademark dilution in violation of O.C.G.A. § 101-451(B). Count VII alleges unjust enrichment. Plaintiff seeks actual and
punitive damages, a disgorgement of Defendants’ profits, costs, and attorneys’
fees.
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Defendants have since filed a Motion to Dismiss the Amended Complaint
in its entirety [8] and Plaintiff responded [13]. The Court now considers
Defendants’ motion.
Discussion
I.
Legal Standard
Federal Rule of Civil Procedure 8(a)(2) requires that a pleading contain a
“short and plain statement of the claim showing that the pleader is entitled to
relief.” While this pleading standard does not require “detailed factual
allegations,” “labels and conclusions” or “a formulaic recitation of the elements
of a cause of action will not do.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009)
(quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007)). In order to
withstand a motion to dismiss, “a complaint must contain sufficient factual
matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’”
Id. (quoting Twombly, 550 U.S. at 570). A complaint is plausible on its face
when the plaintiff pleads factual content necessary for the court to draw the
reasonable inference that the defendant is liable for the conduct alleged. Id.
At the motion to dismiss stage, “all-well pleaded facts are accepted as
true, and the reasonable inferences therefrom are construed in the light most
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favorable to the plaintiff.” Bryant v. Avado Brands, Inc., 187 F.3d 1271, 1273
n.1 (11th Cir. 1999). However, the same does not apply to legal conclusions set
forth in the complaint. Sinaltrainal v. Coca-Cola Co., 578 F.3d 1252, 1260
(11th Cir. 2009) (citing Iqbal, 556 U.S. at 678). “Threadbare recitals of the
elements of a cause of action, supported by mere conclusory statements, do not
suffice.” Iqbal, 556 U.S. at 678. Furthermore, the court does not “accept as
true a legal conclusion couched as a factual allegation.” Twombly, 550 U.S. at
555.
“The district court generally must convert a motion to dismiss into a
motion for summary judgment if it considers materials outside the complaint.”
D.L. Day v. Taylor, 400 F.3d 1272, 1275-76 (11th Cir. 2005); see also Fed. R.
Civ. P. 12(d). However, documents attached to a complaint are considered part
of the complaint. Fed. R. Civ. P. 10(c). Documents “need not be physically
attached to a pleading to be incorporated by reference into it; if the document’s
contents are alleged in a complaint and no party questions those contents, [the
court] may consider such a document,” provided it is central to the plaintiff’s
claim. D.L. Day, 400 F.3d at 1276. At the motion to dismiss phase, the Court
may also consider “a document attached to a motion to dismiss . . . if the
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attached document is (1) central to the plaintiff’s claim and (2) undisputed.” Id.
(citing Horsley v. Feldt, 304 F.3d 1125, 1134 (11th Cir. 2002)). “‘Undisputed’
means that the authenticity of the document is not challenged.” Id.
In this case, Plaintiff brings claims against Defendants arising out of
Defendants production and marketing of the films Honey and Honey 2 as stated
in the Background section, supra. Using the framework articulated above, the
Court considers Defendants’ Motion to Dismiss.
II.
Analysis
As stated, Defendants move to dismiss the Amended Complaint in its
entirety. In support of their motion, Defendants argue that: (1) Plaintiff’s
claims are barred by the applicable statutes of limitations and the equitable
doctrine of laches; (2) Plaintiff’s claims are barred by the First Amendment as
attacking works of artistic expression; and (3) Plaintiff’s claims fail as a matter
of law because she does not have a protectable interest in her life story or any
valid trademark interest in the word or mark “Honey.” The Court considers
each basis for dismissal in turn.
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A.
Statutes of Limitation and the Doctrine of Laches
Defendants first move to dismiss Plaintiff’s claims on the basis of statutes
of limitations.
1.
Privacy Torts (Counts I and II)
In Georgia, causes of action for privacy torts must be brought within two
years of the injury’s occurrence. O.C.G.A. § 9-3-33; Hudson v. Montcalm Pub.
Corp., 379 S.E.2d 572, 577 (Ga. App. 1989). The cause of action accrues when
the tortious act occurs. See Rivell v. Private Health Care Sys., Inc., 887 F.
Supp. 2d 1277, 1284-85 (S.D. Ga. 2012) (citing Everhart v. Rich's, Inc., 194
S.E.2d 425, 428 (Ga. 1972)); Hudson, 379 S.E.2d at 577.
Defendants assert that the statute of limitations on Plaintiff’s causes of
action for the privacy torts asserted in Counts I and II expired in 2013, two
years after the release of Honey 2. (Mem. of Law Supporting Defs.’ Mot. to
Dismiss Am. Compl. (“Defs.’ Mem.”), Dkt. [8-1] at 7-8.) Plaintiff first relies
on the “discovery rule” to argue that her claims are not time-barred because she
was “only able to ascertain, after seeking the advice of counsel, the true identity
of the entities responsible for the production of [the Honey] films.” (Pl.’s Resp.
to Defs.’ Mot. to Dismiss Am. Compl. (“Pl.’s Resp.”), Dkt. [13] at 7.) Next,
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Plaintiff argues that the statute of limitations was tolled under the continuing
tort doctrine because Defendants continued to act tortiously through their
licensing of the Honey films. (Id. at 8.) Finally, Plaintiff argues that the Court
should invoke the doctrine of equitable tolling to allow her claim to move
forward, again relying on the “intricacies and nuances associated with the
movie industry” that “shielded” Defendants’ identities. (Id. at 9.)
A Rule 12(b)(6) dismissal on statute of limitations grounds is
appropriate if it is apparent from the face of the complaint that the claim is
time-barred. Gonsalvez v. Celebrity Cruises Inc., 750 F.3d 1195, 1197 (11th
Cir. 2013), cert. denied 135 S. Ct. 58 (2014) (internal citation omitted). A
statute of limitations defense can support dismissal under Rule 12(b)(6) only if
it is clear from the face of the complaint that the statute of limitations has run,
and it appears beyond doubt that the plaintiff can prove no set of facts that toll
the statute. F.D.I.C. v. Cameron, 986 F. Supp. 2d 1337, 1339-40 (N.D. Ga.
2013) (citing Bhd. of Locomotive Eng'rs & Trainmen Gen. Comm. of
Adjustment CSX Transp. N. Lines v. CSX Transp., Inc., 522 F.3d 1190, 1194
(11th Cir. 2008); Tello v. Dean Witter Reynolds, Inc., 410 F.3d 1275, 1288 n.
13 (11th Cir. 2005) (internal quotation marks and citations omitted)).
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The Court finds that the privacy torts as alleged by Plaintiff in Counts I
and II of the Amended Complaint are barred by Georgia law’s statute of
limitations, codified at O.C.G.A. § 9-3-33, and thus subject to dismissal. First,
the discovery rule does not apply to privacy torts. Sletto v. Hosp. Auth., 521
S.E.2d 199, 202 (Ga. App. 1999) (declining to apply the discovery rule to
claims for invasion of privacy and emotional distress because “that rule has
been confined to cases of bodily injury which develop only over an extended
period of time”). Accordingly, Plaintiff’s claims should have been brought
within two years of the alleged tortious act–the release of the Honey films.
Further, the Court is not persuaded by Plaintiff’s argument that she could not
have brought suit earlier due to her unfamiliarity with the film industry. The
law is well-established that “mere ignorance of the existence of a right of
action, absent the element of fraud, does not toll a statute of limitation.”
Everhart, 194 S.E.2d at 429. Here, Plaintiff has not alleged that Defendants
acted fraudulently, merely that she was unable to ascertain their identities
without the advice of counsel. The Court finds that these facts are also
insufficient to toll the statute of limitations under Plaintiff’s alternative
argument of equitable tolling.
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Nor does the continuing tort doctrine operate to toll the statute of
limitations in this case. Georgia law provides that “[t]he test to be applied in
determining when the statute of limitations begins to run against an action
sounding in tort is in whether the act causing the damage is in and of itself an
invasion of some right of the plaintiff, and thus constitutes a legal injury and
gives rise to a cause of action.” Adams v. Emory Univ. Clinic, 347 S.E.2d 670,
672 (Ga. App. 1986) (quoting Hoffman v. Ins. Co., 245 S.E.2d 287, 289 (Ga.
1978)). Even if the initial tortious act continues to cause subsequent damage, if
the act is a completed wrong, then the statute of limitations begins to run at the
time of the act. Id. The theory of continuing tort “applies ‘where any negligent
or tortious act is of a continuing nature and produces injury in varying degrees
over a period of time.’” Mears v. Gulfstream Aerospace Corp., 484 S.E.2d 659,
664 (Ga. App. 1997) (quoting Everhart, 194 S.E.2d 425). While Georgia courts
recognize the theory of continuing tort, they “have been reluctant to apply this
theory broadly.” Id. Further, the “discovery rule” applies to continuing torts –
the cause of action “accrues when a plaintiff discovers, or with reasonable
diligence should have discovered, both the injury and the cause thereof.”
Waters v. Rosenbloom, 490 S.E.2d 73, 75 (Ga. 1997).
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The tortious acts alleged here–right of publicity violations and intrusion
upon seclusion and solitude–do not belong in the narrow category of torts to
which courts apply the continuing tort doctrine. Cf., e.g., Mears, 484 S.E. 2d at
664 (“a series of acts allegedly causing emotional distress should be viewed
cumulatively”); accord Master Mind Music, Inc. v. Block Enters., LLC, No.
1:12-cv-162-RWS, 2012 WL 6625754 (Dec. 18, 2012) (holding that the
continuing tort doctrine did not apply because the complete harm occurred
when plaintiff’s albums were released without crediting plaintiff as co-producer
or copyright owner). Plaintiff alleges no facts and provides no authority to
support her position that “Defendants have continued their tortious conduct
through, inter alia, continued licensing of the Honey films.” (Pl.’s Resp., Dkt.
[13] at 8.) What is more, Plaintiff expressly acknowledges in her Amended
Complaint that she has been aware of the release of the Honey films since 2003.
(Am. Compl., Dkt. [5] ¶ 14.) As such, even if the continuing tort doctrine were
to apply in this case, Plaintiff’s claims would still be barred by the discovery
rule, discussed supra. See also Thomason v. Gold Kist, Inc., 200 Ga. App. 246,
248, 407 S.E.2d 472, 475 (1991) (affirming summary judgment for defendants
where evidence showed that plaintiffs had suspected that chemical sold by
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defendants was the cause of their alleged injuries more than two years before
they filed suit). Her privacy claims enumerated in Counts I and II are therefore
DISMISSED.
2.
Statutory Causes of Action (Counts III–VI)
A four year statute of limitations applies to the statutory causes of action
enumerated in Counts III, IV, V, and VI. As such, these claims are timely to the
extent they are based on Honey 2 and are not subject to dismissal pursuant to a
statute of limitations. The Court further finds that consideration of the
affirmative defense of laches is inappropriate at the motion to dismiss stage of
this case. See Conagra, Inc. v. Singleton, 743 F.2d 1508, 1517 (11th Cir. 1984)
(for Lanham Act claims, "[t]he test for laches or estoppel is flexible, requiring a
careful examination of both the delay and the prejudice caused by that delay.");
Seaboard Fin. Co. v. Martin, 244 F.2d 329, 332 (5th Cir. 1957) (finding that
while “the defense of laches, though affirmative, may now be raised by motion
to dismiss,” the issue “should be tried on the proofs rather than the pleadings.”).
The Court now considers whether the remaining claims are subject to dismissal
on alternate grounds.
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B.
Failure to State a Claim
Defendants also move to dismiss the remaining claims in the Amended
Complaint on grounds that Plaintiff’s claims fail as a matter of law.
1.
Unjust Enrichment (Count VII)
As an initial matter, Count VII, which states a claim for unjust
enrichment, fails as a matter of law because plaintiff asserts unjust enrichment
as a separate tort claim and not as an alternative theory of recovery for any
failed contract. Somerson v. McMahon, 956 F. Supp. 2d 1345, 1357 (N.D. Ga.
2012) (citing Wachovia Ins. Servs., Inc. v. Fallon, 682 S.E.2d 657, 665 (Ga.
App. 2009)). “A claim for unjust enrichment is not a separate tort, but an
alternative theory of recovery if a contract claim fails.” Id. (citing Tidikis v.
Network for Med. Commc'ns & Research LLC, 274 Ga. App. 807, 811 (2005)).
Plaintiff has failed to allege the existence of any contract and does not allege
any contract claims. As such, Count VII is DISMISSED.
2.
Lanham Act and Georgia Trademark Claims (Counts IV–VI)
Plaintiff alleges violations of the Lanham Act and Georgia trademark law
in Counts IV-VI of the Amended Complaint. The federal Lanham Act analysis
governs the analysis of Plaintiff’s state law trademark claims under O.C.G.A. §
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23-2-55 and § 10-1-451(b). The Eleventh Circuit has held that a trademark
infringement claim under Georgia law is reviewed under the same standards as
a claim under the Lanham Act. Optimum Techs., Inc. v. Home Depot U.S.A.,
Inc., 217 F. App’x 899, 902 n.4 (11th Cir. 2007). The Eleventh Circuit has also
upheld decisions of this Court ruling that the Georgia unfair competition statute
involves the same dispositive question as the federal Lanham Act, i.e., whether
use of a service mark is likely to cause confusion. See Jellibeans, Inc. v.
Skating Clubs of Ga., Inc., 716 F.2d 833, 839 (11th Cir. 1983); Univ. of Ga.
Athletic Ass’n v. Laite, 756 F.2d 1535, 1539 n.11 (11th Cir. 1985) (noting that
the standards governing deceptive practices and unfair competition claims
under Georgia law "are similar, if not identical, to those under the Lanham
Act"). Accordingly, the state law causes of action rise and fall with Plaintiff’s
federal trademark claims.
Defendants move to dismiss Plaintiff’s trademark and unfair competition
claims on the basis that Plaintiff owns no trademark rights in “HONEY,” and
thus those claims must fail as a matter of law. (Defs.’ Mem., Dkt. [8-1] at 1819.) The Court agrees that Plaintiff has failed to allege sufficient facts such to
state a claim upon which relief may be granted.
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Plaintiff asserts trademark rights in the mark “HONEY” in the state of
Georgia and in the United States “in association with various goods and
services related to the entertainment, specifically dance field.” (Am. Compl.,
Dkt. [5] ¶ 53.) Plaintiff does not allege that she has registered the trademark
“HONEY.” As a result, to survive a motion to dismiss, Plaintiff must have
alleged sufficient facts to show that she has established common-law trademark
rights to the “HONEY” mark. The Court concludes that Plaintiff has not met
that burden.
A trademark is “any word, name, symbol, or device, or any combination
thereof [used] to identify and distinguish [one’s] goods . . . from those
manufactured or sold by others and to indicate the source of the goods.” 15
U.S.C. § 1127. “To satisfy the first element of § 43(a)–proof of a valid
trademark–a plaintiff need not have a registered mark.” Tana, 611 F.3d at 773.
On the contrary, use of a plaintiff’s unregistered mark–i.e., common law
trademark–can violate Section 43(a) if the unregistered mark is “so associated
with [the plaintiff’s] goods that the use of the same . . . mark[ ] by another
company constitutes a false representation that its goods came from the same
source.” Id. (internal quotation marks and citation omitted). Only a sufficiently
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distinctive common law mark, however, can give rise to a cause of action under
the Lanham Act. See id. (“[O]nly those marks that are capable of
distinguishing the owner’s goods from those of others, i.e., that are sufficiently
‘distinctive,’ are eligible for federal registration or protection as common law
marks under the Lanham Act.”).
The Eleventh Circuit recognizes four categories of distinctiveness, “listed
in ascending order of strength: (1) generic–marks that suggest the basic nature
of the product or service; (2) descriptive–marks that identify the characteristic
or quality of a product or service; (3) suggestive–marks that suggest
characteristics of the product or service and require an effort of the imagination
by the consumer in order to be understood as descriptive; and (4) arbitrary or
fanciful–marks that bear no relationship to the product or service, and the
strongest category of trademarks.” Id. at 774. Marks that fall into the last two
categories are deemed “inherently distinctive” and generally are entitled to
trademark protection. Id. (citation omitted). The first category of marks,
generic marks, generally are not entitled to trademark protection. Id. (citation
omitted). Descriptive marks are not “inherently distinctive,” but they may
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become sufficiently distinctive to enjoy trademark protection if they acquire
“secondary meaning.” Id. (citing 15 U.S.C. § 1052(f)).
In this case, Plaintiff claims to have protectable trademark rights in the
mark “HONEY” based on her use of the stage name “Honey Rockwell.”
Names are descriptive marks, which, as stated above, are entitled to trademark
protection only if they have acquired secondary meaning. Tana, 611 F.3d at
774. Furthermore, they are entitled to this protection only if secondary meaning
existed prior to the time the alleged infringer first began using the mark. Gift of
Learning Foundation, Inc. v. TGC, Inc., 329 F.3d 792, 800 (11th Cir. 2003).
Plaintiff has alleged that she has used the stage name “Honey Rockwell” since
1994. The Court then must consider whether Plaintiff has alleged sufficient
facts to conclude that Plaintiff’s use of the stage name “Honey Rockwell”
creates a secondary meaning to the mark “HONEY.”
Plaintiff’s Amended Complaint alleges that the goods and services in the
dance industry were sold under the name “Honey Rockwell.” (Am. Compl.,
Dkt. [5] ¶¶ 11, 13-14.) The Court assumes without deciding that Plaintiff has a
cognizable claim to trademark rights in the mark “Honey Rockwell.”
However, rights in the composite name “Honey Rockwell” do not confer rights
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in the single name “Honey.” Lone Star Steakhouse & Saloon, Inc., v. Longhorn
Steaks, Inc., 106 F.3d 355, 362 (11th Cir. 2007). Plaintiff has not alleged that
she sold goods and services under the single name “Honey.” Because she has
not used the mark “HONEY,” Plaintiff cannot have achieved secondary
meaning in that mark.
Plaintiff has failed to state a claim under the Lanham Act or Georgia
trademark law upon which relief may be granted. Accordingly, Counts IV, V,
and VI of the Amended Complaint are DISMISSED.
3.
Georgia Uniform Deceptive Trade Practices Act Claim
(Count III)
Plaintiff’s allegations in Count III that Defendants violated Georgia’s
Uniform Deceptive Trade Practices Act also rely on Defendants’ “production,
promotion, distribution, offering for sale and sale by Defendants of goods or
services bearing the HONEY mark.” (Am. Compl., Dkt. [5] ¶ 39.) As stated
above, Plaintiff has not alleged sufficient facts to show that she has any rights in
the “HONEY” mark. However, construing the facts in favor of Plaintiff, as the
Court must on a motion to dismiss, the Court holds that Plaintiff’s claims
enumerated in Count III are not subject to dismissal simply because she has
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relied on the “HONEY” mark. Rather, the Court will now consider whether
Plaintiff’s claim for deceptive trade practices are sufficiently supported by the
allegations in the Amended Complaint such that they state a claim upon which
relief may be granted.
Here, Plaintiff has alleged that she has been performing and teaching hip
hop dance under the trade name “Honey Rockwell.” “‘Trade name’ means a
word, name, symbol, device, or any combination of the foregoing in any form
or arrangement used by a person to identify his business, vocation, or
occupation and distinguish it from the business, vocation, or occupation of
others.” O.C.G.A. § 10-1-371(8). Georgia law creates a cause of action for
deceptive trade practices when a person “[c]auses likelihood of confusion or of
misunderstanding as to the source, sponsorship, [or] approval ... of goods or
services,” or “as to affiliation, connection, or association with ... another,” or
“[r]epresents that goods or services have sponsorship[ or] approval ... that they
do not have.” O.C.G.A. § 10-1-372(a). Plaintiff has alleged that she has been
approached as “the real honey.” Construing the facts in the Amended
Complaint in the light most favorable to Plaintiff, Count III cannot be dismissed
on grounds that it fails to state any plausible claim upon which relief may be
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granted. The Court now considers whether Count III is otherwise barred by the
First Amendment.
C.
First Amendment
Defendant argues that the Amended Complaint is barred by the First
Amendment because the Honey films are protected works of artistic expression.
As an initial matter, the Court agrees that the Honey films are works protected
by the First Amendment. Univ. of Alabama Bd. of Trustees v. New Life Art,
Inc., 683 F.3d 1266, 1276 (11th Cir. 2012); Thoroughbred Legends, LLC v.
The Walt Disney Co., No. 1:07-CV-1275-BBM, 2008 WL 616253, at *12 (N.D.
Ga. Feb. 12, 2008). Plaintiff argues, however, that any First Amendment
protection enjoyed by the films is incomplete “because such films are, in fact,
sold in the commercial marketplace for profit.” (Pl.’s Resp., Dkt. [13] at 12.)
The Court finds this distinction unconvincing. See Thoroughbred Legends,
2008 WL 616253, at *12 (“The use of Plaintiffs' likenesses in advertising the
film is protected because the film itself is protected.”). The Court addresses the
Constitutional defense only with respect to Count III as the other Counts have
been previously dismissed.
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While the Court found that Count III states a claim based on Plaintiff’s
use of the trade name “Honey Rockwell” versus the trademark “HONEY,” the
analysis under the Georgia Uniform Deceptive Trade Practices Act tracks that
of the Lanham Act regardless. Univ. of Ga. Athletic Ass’n, 756 F.2d at 1539
n.11 (citing Amstar Corp. v. Domino's Pizza, Inc., 615 F.2d 252, 258-59 (5th
Cir.) (test for deceptive trade practice and unfair competition under Georgia law
same as test for false designation of origin under Lanham Act, namely,
“whether defendants' use of the mark ... is likely to cause confusion, mistake, or
deception”)).
The Court must balance the First Amendment and Lanham Act using
the analysis set forth in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), which
has been adopted by the Eleventh Circuit. Univ. of Alabama Bd. of Trustees v.
New Life Art, Inc., 683 F.3d 1266, 1277-78 (11th Cir. 2012). The Rogers test
requires courts to read the Lanham Act narrowly to avoid impinging on speech
protected by the First Amendment:
We believe that in general the Act should be construed to apply to artistic
works only where the public interest in avoiding consumer confusion
outweighs the public interest in free expression. In the context of
allegedly misleading titles using a celebrity's name, that balance will
normally not support application of the Act unless the title has no artistic
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relevance to the underlying work whatsoever, or if it has some artistic
relevance, unless the title explicitly misleads as to the source of the work.
Id. at 1277 (quoting Rogers, 875 F.2d at 999).
The Court holds that Count III must be dismissed because it fails as a
matter of law under this analysis. The Court again notes that Plaintiff has
alleged that she performed under the trade name “Honey Rockwell,” but even
undertaking the analysis using the trade name “Honey,” the Court concludes
that the Honey films are protected by the First Amendment. The title Honey is
artistically relevant to the protagonist Honey Daniels’s first name. Similarly,
Honey 2 is relevant in that the protagonist of that film drew inspiration from
Honey Daniels. The facts alleged in the Amended Complaint, construed in
Plaintiff’s favor, are not sufficient to allow the Court to conclude that the title
could explicitly mislead as to the source of the work. As such, Count III fails to
state a claim upon which relief may be granted and is DISMISSED.
III.
Defendants’ Request for Oral Argument
Because the Court has dismissed all of Plaintiff’s claims on the basis of
the motions and briefs filed by the parties, Defendants’ Request for Oral
Argument [10] is DENIED as moot.
23
AO 72A
(Rev.8/82)
Conclusion
In accordance with the foregoing, Defendants’ Motion to Dismiss [8] is
GRANTED with respect to all claims. Defendant’s Request for Oral Argument
[10] is DENIED as moot.
SO ORDERED, this 18th day of December, 2014.
_______________________________
RICHARD W. STORY
UNITED STATES DISTRICT JUDGE
24
AO 72A
(Rev.8/82)
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