That’s Still Hot

About a year ago I blogged about a pending lawsuit against Hallmark Cards courtesy of Paris Hilton citing a right of publicity/trademark claim over the Hallmark card pictured above. At the time I thought that is was going to be a slam dunk for Hilton, but then I was not so sure.

In a stunning demonstration of the swift wheels of justice in the United States courts, a federal court of appeals decided Monday that Hilton can go ahead and pursue her lawsuit (link courtesy of The Daily Cartoonist). Wow, that only took a year.

Actually there had been action on the case in the intervening year. A lower court had thrown out Hilton’s assertion (actually her law team’s assertion, I don’t think Paris could assert anything farther than demanding more vodka in her cosmopolitan at the club) that the card infringed on a “trademark”… meaning her “That’s Hot” catchphrase. However they did not accept some of Hallmark’s other defenses. Hilton appealed to the U.S. 9th Circuit, who said she had other grounds for continuing the case.

Specifically the 9th Circuit Court decided that Hilton had a chance of winning her case based on the argument that the image was not sufficiently “transformation”, and that Hallmark could not use a “public interest” defense because the card did not publish or report any information like in a news story or report. The case now goes back to a lower court with these issues being considered.

I am not surprised the trademark infringement case got rejected in the first suit. A trademark is different than a copyright or the right of publicity. The US Patent and Trademark Office defines a “trademark” as “including any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name.” It’s a stretch for Hilton to claim “That’s HOT” as a trademark.

Much more likely to prevail is a right of publicity claim. It’s clearly Paris Hilton in this card, as it a photo of her and they use her NAME. The cartoon body isn’t really “transformative” as it’s representational not only of her as a celebrity of even as her persona from the TV show “The Simple Life” i.e. the rich heiress doing the menial labor job. So where is the “transformative” part?

A clear precedent for this kind of thing was decided by the California Supreme Court in Comedy III Productions, Inc. v. Gary Saderup, Inc. (25 Cal. 4th 387, 21 P.3d 797 (2001)). This case was about an artist who drew a portrait of the Three Stooges and sold it on t-shirts, as lithos, etc. He was sued by the Stooges estate’s representatives. The defendant argued that the work was an original work of art and protected under the First Amendment. In weighing the rights of the celebrity against the rights of the artist, the courts asked itself how much of the work was really about the artist’s talent and skill, and how much was about the fact that it depicted the Three Stooges.

The court wrote, in part:

“We ask, in other words, whether a product containing a celebrity’s likeness is so transformed that it has become primarily the defendant’s own expression rather than the celebrity’s likeness.¬¨‚ĆAnd when we use the word “expression,’ we mean expression of something other than the likeness of the celebrity.”

They went on to say:

“Furthermore, in determining whether a work is sufficiently transformative, courts may find useful a subsidiary inquiry, particularly in close cases:¬¨‚Ćdoes the marketability and economic value of the challenged work derive primarily from the fame of the celebrity depicted?¬¨‚ĆIf this question is answered in the negative, then there would generally be no actionable right of publicity.¬¨‚ĆWhen 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 – it may be presumed that sufficient transformative elements are present to warrant First Amendment protection.”

A case that went against the celebrity using the same arguments was TW Corporation v. Jireh Publishing, Inc. (99 F.Supp.2d 829 N.D.Ohio, 2000). In this case, Tiger Woods sued the publisher of a print of a painting depicting Woods and other images called “Masters of Augusta” that was commemorating his victory in the 1997 Master’s. The courts found that selling the limited edition art prints of Woods at the Masters did not violate his ROP as the work contained “significant transformative elements” and did not sell solely on the identity of Woods, since it contained many images of other golfers, the August clubhouse and other elements from the tournament.

I don’t see Hallmark winning this one. It may be poking fun at Hilton but the card clearly appeals to buyers because of her depiction and her catchphrase… meaning it’s value is derived mainly from her fame.

We’ll know for sure in a few years or so.