Walker v. Thompson, 17 Civ. 6240 (AT)

• Decision Date: 20 June 2019
• Docket Number: 17 Civ. 6240 (AT)
• Citation: 404 F.Supp.3d 819
• Parties: Frank WALKER, Plaintiff, v. Ahmir THOMPSON, Tarik Trotter, Shawn Gee, Truer Notes, Inc., Grand Negaz Inc., The Roots on Tour, Inc., Okay Tours, LLC, and Sports & Entertainment Financial Group, LLC, Defendants.
• Court: U.S. District Court — Southern District of New York

404 F.Supp.3d 819

Frank WALKER, Plaintiff,

v.Ahmir THOMPSON, Tarik Trotter, Shawn Gee, Truer Notes, Inc., Grand Negaz Inc., The Roots on Tour, Inc., Okay Tours, LLC, and Sports & Entertainment Financial Group, LLC, Defendants.

17 Civ. 6240 (AT)

United States District Court, S.D. New York.

Signed June 20, 2019

Mark Shirian, Mark David Shirian PC, New York, NY, for Plaintiff.

Michael Scott Pepperman, Matthew Adam Green, Obermayer Rebmann Maxwell & Hippel LLP, Philadelphia, PA, for Defendants.

AMENDED ORDER ¹

ANALISA TORRES, District Judge:

This case arises from the termination of Plaintiff, Frank Walker, from his position as a drummer for the hip hop and neo-soul band The Roots. Plaintiff brings this action against Defendants, Ahmir Thompson, Tarik Trotter, Shawn Gee, Truer Notes, Inc., Grand Negaz Inc., The Roots on Tour, Inc., Okay Toms, LLC, and Sports & Entertainment Financial Group, LLC, who are his former band members and employers. Compl., ECF No. 16. Plaintiff alleges that Defendants used his likeness in the band's promotional materials in violation of the Lanham Act, 15 U.S.C. § 1125(a), and New York Civil Rights Law § 51. See id. ¶¶ 106-131. Plaintiff further alleges that Defendant Gee, the band manager, breached fiduciary duties of care, loyalty, and good faith that he owed Plaintiff. Id. ¶¶ 132-137.

By order dated August 10, 2018 (the "Order"), the Court granted in part and denied in part Defendants' motion to dismiss, dismissing all claims except Plaintiff's Lanham Act and New York Civil Rights Law claims. Order, ECF No. 53. The Court also denied Plaintiff's motion for leave to amend. Id. On December 27, 2018, the parties cross-moved for summary judgment. ECF No. 69 (Defendants' motion); ECF No. 71 (Plaintiff's motion). For the reasons stated below, a portion of the Order is VACATED and AMENDED as set forth below, and the parties' cross-motions for summary judgment are DENIED without prejudice to renewal.

BACKGROUND²

I. Factual Background

In 2002, Plaintiff began performing with The Roots as a percussionist. Compl. ¶¶ 21, 67. In March 2009, The Roots became the in-house band for Late Night with Jimmy Fallon ("Late Night") on the NBC network. Id. ¶ 43. On the night The Roots were scheduled to premiere on Late Night, shortly before airtime, Plaintiff was handed an agreement (the "Agreement") with Defendant Truer Notes, Inc. to perform in all of The Roots' performances, including on Late Night, for the following 12 months. Id. ¶¶ 40–41, 59. Plaintiff signed the Agreement. Id. ¶ 74. Under paragraph 4, Plaintiff granted Defendants

the worldwide right in perpetuity to use and publish and to permit others to use and publish [Plaintiff's] name, likeness, voice and other biographical material in connection with [Plaintiff's] services and performances hereunder and the results and proceeds thereof, including without limitation [Plaintiff's] name, photograph, image and likeness in connection with any audio or video recordings.

Agreement ¶ 4, ECF No. 16-1.

Plaintiff continued to perform with The Roots until March 2017—both on Late Night until it ended in 2013, and then on The Tonight Show with Jimmy Fallon (the "Tonight Show"), which began on NBC shortly thereafter. Compl. ¶¶ 43–44, 67. He also contributed to a number of sound recordings for The Roots. Id. ¶ 68. By letter dated May 11, 2017, Defendant Thompson fired Plaintiff from The Roots. Id. ¶ 72. Following Plaintiff's termination, Defendants continued to use his likeness in promotional materials for concerts without his consent. Id. ¶¶ 76, 79. Plaintiff did not receive compensation for the use of his likeness or for his contribution to The Roots' sound recordings. Id. ¶ 82.

II. Procedural Background

On December 27, 2017, Defendants moved to dismiss the complaint, ECF No. 29, and in the Order, the Court dismissed all claims except Plaintiff's claims for misappropriation under the Lanham Act and New York Civil Rights Law. The Court found that "the Agreement grants Defendants the right to use Plaintiff's likeness ‘in perpetuity’ only if the use is ‘in connection with [Plaintiff's] services and performances hereunder.’ " Order at 9 (quoting Agreement ¶ 4). Based on that interpretation, the Court held that Plaintiff's allegations "that the Defendants in this action are using his likeness to promote performances in which he took no part" are "sufficient to state false endorsement claims under federal and state law." Id. at 10. The Court, therefore, denied Defendants' motion to dismiss the Lanham Act and New York Civil Rights Act claims. Id.

Then, on December 27, 2018, the parties filed cross-motions for summary judgment. ECF Nos. 69, 71. Defendants argue that Plaintiff's remaining claims under the Lanham Act and New York Civil Rights Law are barred by the Agreement, which "granted the [ ] Defendants [ ] the right to use Plaintiff's likeness in perpetuity in any promotional materials that were created while Plaintiff was performing his services with The Roots." ECF No. 70 at 15. In opposition, Plaintiff argues that "the Court has already rejected Defendant[s'] argument with respect to the perpetuity language, as the Court previously held in response to the Defendants' initial motion to dismiss that the [Agreement] only grants the Defendants the right to use Plaintiff's likeness in perpetuity only if the use is in connection with Plaintiff's services and performances hereunder and not to promote performances and concerts in which he did not perform." ECF No. 79 at 9–10 (internal quotation marks omitted).

For the following reasons, that portion of the Order which held that the Agreement grants Defendants the right to use Plaintiff's likeness in perpetuity only if the use is in connection with Plaintiff's services and performances, Order at 9–10, is VACATED and AMENDED as follows.

DISCUSSION

I. Legal Standard

"A district court has the inherent power to reconsider and modify its interlocutory orders prior to the entry of judgment, whether they be oral[ ] or written, and there is no provision in the rules or any statute that is inconsistent with this power." United States v. LoRusso , 695 F.2d 45, 53 (2d Cir. 1982) (citations omitted). Because this order amends the Court's previous order on Defendants' motion to dismiss, the Court will use the standard which governs motions to dismiss under Federal Rule of Civil Procedure 12(b)(6).

To survive a Rule 12(b)(6) motion to dismiss, a plaintiff must plead sufficient factual allegations in the complaint that, accepted as true, "state a claim to relief that is plausible on its face." Ashcroft v. Iqbal , 556 U.S. 662, 678, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009) (quoting Bell Atl. Corp. v. Twombly , 550 U.S. 544, 570, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007) ). A plaintiff is not required to provide "detailed factual allegations" in the complaint, but must assert "more than labels and conclusions[ ] and a formulaic recitation of the elements of a cause of action." Twombly , 550 U.S. at 555, 127 S.Ct. 1955. Ultimately, the facts pleaded in the complaint "must be enough to raise a right to relief above the speculative level." Id. On a Rule 12(b)(6) motion, the court may consider only the complaint, documents attached to the complaint, matters of which a court can take judicial notice, or documents that the plaintiff knew about and relied upon. See Chambers v. Time Warner, Inc. , 282 F.3d 147, 153 (2d Cir. 2002). The court must accept the allegations in the pleadings as true and draw all reasonable inferences in favor of the non-movant. See ATSI Commc'ns, Inc. v. Shaar Fund, Ltd. , 493 F.3d 87, 98 (2d Cir. 2007).

"On a motion to dismiss, the Court may resolve issues of contract interpretation when the contract is properly before the Court, but must resolve all ambiguities in the contract in Plaintiffs' favor." Serdarevic v. Centex Homes, LLC , 760 F. Supp. 2d 322, 328 (S.D.N.Y. 2010). However, the mere fact that the parties disagree on the proper interpretation of the contract does not render the contractual language ambiguous. See Metro. Life Ins. Co. v. RJR Nabisco, Inc. , 906 F.2d 884, 889 (2d Cir. 1990) ("Language whose meaning is otherwise plain is not ambiguous merely because the parties urge different interpretations in the litigation."). "Contract language is not ambiguous if it has ‘a definite and precise meaning, unattended by danger of misconception in the purport of the [contract] itself, and concerning which there is no reasonable basis for a difference of opinion.’ " Hunt Ltd. v. Lifschultz Fast Freight, Inc. , 889 F.2d 1274, 1277 (2d Cir. 1989) (alteration in original) (quoting Breed v. Ins. Co. of N. Am. , 46 N.Y.2d 351, 355, 413 N.Y.S.2d 352, 385 N.E.2d 1280 (1978) ).³

II. Analysis

Section 43(a) of the Lanham Act prohibits misappropriation of a person's name or likeness that is "likely to cause confusion" about that person's association with a product or service. Chambers , 282 F.3d at 155 (quoting 15 U.S.C. § 1125(a) ). A claim alleging this type of misappropriation is known as a "false endorsement" claim. "The elements of a false endorsement claim under the Lanham Act are that the defendant, (1) in commerce, (2) made a false or misleading representation of fact (3) in connection with goods or services (4) that is likely to cause consumer confusion as to the origin, sponsorship, or approval of the goods or services." Roberts v. Bliss , 229 F. Supp. 3d 240, 248 (S.D.N.Y. 2017) (internal quotation marks and citation omitted). "A plaintiff may assert a false endorsement claim only if the defendant is using his likeness without permission." Duffey v. Twentieth Century Fox Film Corp. , 14 F. Supp. 3d 120, 133 (S.D.N.Y. 2014).

Similarly, section 50 of the New York Civil Rights Law prohibits the "use[ ] for advertising purposes, or for the purposes of trade, the name, portrait or picture of any living person without having first obtained the written consent of such person." N.Y. Civ. Rights Law § 50. Under section 51 of the New...