The filing gave news reporters today great fodder for witty headlines. See MSNBC (“Hallmark thinks Paris’ lawsuit is not hot”), the Post Chronicle (“Hallmark Cold To Paris Hilton Over "That's Hot" Lawsuit”), Entertainmentwise.com (“Hallmark To Paris Hilton: 'You're A Publicity Seeker!'”), and Glosslip.com (“Hallmark: When You Care Enough To Make Fun Of Paris Hilton”).
From the very first paragraph of Hallmark’s Memorandum of Points and Authorities (“Memo”), Hallmark comes out with guns blazing: “Paris Whitney Hilton (‘Hilton’) is a privileged, jet-setting heiress to the Hilton family fortune, the center-of-attention ‘celebutante’ at the most lavish parties and exclusive events, and a consummate self-promoter who, by her own admission, considers working ‘manual, low-paying jobs’ and serving the public to be her ‘private nightmare.’” Memo at 1.
Hallmark seeks to dismiss Hilton’s claims for misappropriation of her common law right of publicity, false designation of origin, and federal trademark infringement.
First Amendment Argument
Hallmark’s primary argument is that its greeting cards constitute expression protected by the First Amendment. Hallmark cites to Tenth Circuit’s decision in Cardtoons, L.C. v. Major League Baseball Players Assn., 95 F.3d 959 (10th Cir. 1996) which found parody baseball cards to be protected speech. Hallmark argues that its greeting cards are just as expressive if not more so than trading cards and that greeting cards have been recognized as “the embodiment of humor, praise, regret or some other message in a pictorial and literary arrangement.” Memo at 8. Hallmark characterizes the Card as “not only entertainment and parody, but also social commentary and criticism of Hilton’s lifestyle and belief system.” Id.
Right of Publicity Claim
With respect to Hilton’s common law right of publicity claim, Hallmark argues that its use of Paris Hilton’s name and likeness was not for a commercial purpose (i.e. advertising, endorsements, or commercials) as required to state a right of publicity claim, but rather expressive speech (citing Cardtoons).
Hallmark then goes through a long discussion regarding the “transformative use” test to “determine whether a work merely appropriates a celebrity’s economic value, and thus is not entitled to First Amendment protection, or has been transformed into a creative product that the First Amendment protects.” Winter v. DC Comics, 30 Cal. 4th 881, 888 (2003). In short, the use of a celebrity’s image is protected by the First Amendment and does not violate such celebrity’s right of publicity when the work using the image contains such transformative elements as parody, caricature, and other types of distortion as to create a new expression (in contrast to a literal depiction of such celebrity). Hallmark argues that the Card used Hilton’s image in a transformative way – placing an oversized photograph of Hilton over a cartoon body making her appear as a waitress (which Hilton apparently calls her own “private nightmare” in her Amended Complaint) with a dialogue that uses her catchphrase in a literal sense in describing the patron’s food.
Finally, Hallmark cites the “public interest” as a defense to Hilton’s right of publicity claim citing Hilton’s notoriety and public figure status make her a fair target for Hallmark’s expression.
False Designation of Origin
With respect to Hilton’s allegations that Hallmark’s use of her name and likeness create a false designation of origin in violation of Section 43(a) of the Lanham Act (15 USC §1125(a)), Hallmark cites to several cases for the proposition that the First Amendment bars Hilton’s Lanham Act claim in much the same way it bars her right of publicity claim. See Kirby v. Sega of America, 144 Cal.App.4th 47 (Cal. App. 2nd 2006); ETW Corp. v. Jireh Publ’s, Inc., 332 F.3d 915 (6th Cir. 2003); Hoffman v. Capital Cities/ABC, Inc., 255 F.3d 1180 (9th Cir. 2001).
Hallmark also argues that the “nominative use doctrine” protects Hallmark’s use of Hilton’s name and likeness (the mark at issue in the Lanham Act claim) which were used to express commentary about and parody of Hilton. The doctrine (sometimes called the “nominative fair use defense”) allows a party to use or refer to another party’s trademark if the product or service in question cannot readily identifiable without use of the trademark, the use is only so much as is reasonably necessary to identify the product or service, and the use does nothing that would suggest sponsorship or endorsement by the trademark holder. See New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992). Without commenting on the first two prongs of the test, Hallmark argues that its use of Hilton’s name and likeness, as a parody, did not suggest sponsorship or endorsement by Hilton.
Finally, Hallmark argues that the likelihood of confusion test is inappropriate for expressive works that incorporate a trademark. Hallmark cites the Ninth Circuit’s decision in Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002), where the court found that the use of the term “Barbie” in the “Barbie Girl” song was not trademark infringement and was protected by the First Amendment because the mark was relevant to the work and the use was not misleading as to sponsorship or endorsement. Hallmark asserts that in the case of Hilton’s “image and likeness,” Hallmark’s use in the Card was artistically relevant and not specifically misleading as to sponsorship or endorsement. Furthermore, even if the likelihood of confusion test were applied to Hallmark’s use of Hilton’s “image and likeness,” the parodic nature of the Card is so obvious that it would not cause any consumer to believe that Hilton created the Card or otherwise endorsed the Card.
Hallmark also adds that Hilton, as a public figure, fails to plead and prove with clear and convincing evidence that Hallmark’s use of her “image and likeness” was done with actual malice. Citing Hoffman, Hallmark argues that Hilton has not shown clear and convincing evidence that Hallmark intended to create a false impression in the mind of consumers that the image of Hilton on the Card was her or that Hilton was somehow endorsing the Card.
Federally Registered Trademark Infringement
With respect to Hilton’s allegations that Hallmark’s use of the word “That’s Hot” on the Card infringes Hilton’s registered trademark for THAT’S HOT, Hallmark reiterates most of the same arguments set forth to dispute Hilton’s false designation of origin claim. First, Hallmark’s Card is protected speech under the First Amendment, and Hilton’s allegation of infringement of the “That’s Hot” trademark is barred. Second, the use of the words “That’s Hot” is protected by the nominative use doctrine – such use was for parody and not to designate any goods or services or to serve as an indicator of source, sponsorship, or affiliation. Third, the likelihood of confusion test should not apply because the use of “That’s Hot” on the Card was artistically relevant to the Card and was not misleading as to suggest that the Card was sponsored or endorsed by Hilton. And even if such test were applicable, the obvious parodic nature of the Card would not cause any consumer to believe that Hilton created the Card or otherwise endorsed the Card.
Finally, Hallmark adds that Hilton’s registration for THAT’S HOT does not cover greeting cards. When Hilton originally filed her Section 1(b) intent-to-use application, it included among various goods and services “paper goods” and “printed materials” (in Class 16). However, on September 9, 2005, in response to the USPTO’s office action dividing her goods and services into several different classes, Hilton chose to delete the Class 16 goods and proceeded to prosecute the application for various clothing items in Class 25, and which was the scope of the application when it ultimately registered on February 13, 2007.
Hallmark summarizes its argument against Hilton very well early on in the Memo: “Hallmark’s Card parodies Hilton, her silver-spoon upbringing, her lavish lifestyle and her oft-repeated, vapid use of the catchphrase ‘that’s hot.’ Like the countless other parodies, comic strips and editorials that have taken aim at this self-described ‘cultural icon’ of society, the Card is fully protected speech under the United States and California Constitutions.” Memo at 2.
I should add that the Memo is full of interesting descriptions and characterizations of Hilton and her notoriety that could only come from a lawyer. My favorite -- “Hilton indisputably attracts vast amounts of attention and publicity – much of it as a result of her own efforts and actions. Seemingly every aspect of her life is fodder for the press and for water cooler conversation – form her television appearances, to the lavish lifestyle she leads, to her party hopping, to her romances and sexual escapades (whether videotaped or not), to her high fashion clothing, to her idioms, to her incarceration (and controversial early release) and to various other legal issues – including even the filing of this lawsuit.” Memo at 13-14
Now that’s hot!