Monday, September 10, 2007

Paris Hilton sues Hallmark over “That’s Hot.”

On September 6, 2007, Paris Hilton filed a lawsuit against Hallmark Cards in the U.S. District Court for the Central District of California alleging commercial misappropriation of her identity, invasion of privacy and misappropriation of her name and likeness, misappropriation of her right to publicity, false designation of origin under §43(a) the Lanham Act, 15 U.S.C. §1152(a), and federal trademark infringement.

The complaint centers around a greeting card that depicts “Paris’s First Day as a Waitress” and features a picture of Hilton’s face superimposed over a cartoon body of a waitress serving the customer and reads “"Don't touch that, it's hot. What's hot? That's hot." A copy of the complaint can be found on TMZ’s website as well as a picture of the offending card.

Hilton is suing for damages in excess of $100,000, punitive damages to be proven at trial, a temporary and permanent injunction restraining Hallmark from continuing the alleged tortuous conduct, and court costs. For the trademark related causes of action, she also seeks profits earned by Hallmark in connection with the exploitation of her likeness and the mark “That’s Hot,” treble damages, and attorney’s fees.

While Hallmark may have a problem with the misappropriation of her image and violation of her right to publicity because of the use of her face, I seriously doubt that the trademark allegations with respect to the use of the term “THAT’S HOT” will hold up. Hilton’s registered trademark THAT'S HOT (Reg. 3209488) covers “Men and Women’s Clothing,” “Infants’ and Children’s Clothing,” “Men’s, Women’s, Children’s, and Infant’s Footwear and Headwear,” and “Belts.” It does not cover greeting cards. In addition, the term THAT’S HOT on the greeting card is not being used in a way to signify a source or origin of goods – the term is clearly shown as statement coming from Hilton’s mouth. Consumers would not reasonably identify such use as a source identifer or believe the card was created by or endorsed by Hilton. Finally, Hallmark should investigate Hilton’s business to see if the mark THAT’S HOT was really being used on all of the goods listed in the registration. If just one of those goods was not being sold, then Hallmark can seek to cancel the registration on the grounds of fraud. See related blog entry regarding fraud.

[Note: This post was edited at a later date to correct a grammatical error.]