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Intellectual Property Law

: IPKat

Paris not so hot in the Ninth Circuit

By Johanna Gibson, David Pearce, Jeremy Phillips and Ilanah Simon.

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In 2007 Paris Hilton, the heiress who is ?famous for being famous?, sued Hallmark Cards alleging that one of the greeting card company?s birthday cards constituted misappropriation of publicity and trade mark infringement, under Californian and federal law respectively. The card at issue incorporated a cartoon of a waitress with Hilton?s head superimposed on the body. A caption reading ?Paris?s First Day as a Waitress? is placed above the drawing. The cartoon Hilton tells the customer ?Don?t touch that, it?s hot.? ?What?s hot?? the customer replies. ?That?s hot.? For those IPKat readers unfamiliar with Paris Hilton?s body of work, ?That?s hot!? is a phrase she employs when, according to Judge O?Scannlain, ?she finds something interesting or amusing.? Hilton registered the trade mark ?that?s hot? with the USTPO.

The 9th Circuit dismissed the trade mark infringement claim, which Hilton did not appeal, but accepted that Hilton could still argue that the card misappropriated her likeness in the image.

Paris Hilton?s case has apparently raised serious First Amendment issues ? a sentence that this IPKat never thought she would ever write. Hallmark?s attorney?s stated:

?Spoofing how a celebrity appears in a work that the public commonly associates with that celebrity is a standard practice of satirists, parodists and other speakers. [The Court?s] unprecedented finding that the publicity rights of an iconic celebrity may trump the First Amendment in the context of fully-protected speech that spoofs that celebrity ... creates uncertain and unreliable legal standards that will drastically chill speech if allowed to stand."

At issue in the appeal is the conflict of the 9th Circuit?s decision with the court's precedent in Hoffman v Capital Cities (2001) which held that an image portraying a celebrity?s name and likeness was transformative (i.e., the addition of creative contributions to the likeness) and therefore protected under the First Amendment. The Court there held that the image of Hilton as a waitress was not sufficiently transformative because Hilton had acted as a waitress on her show ?The Simple Life?. The question that the Court of Appeals will hopefully answer is exactly how much transformation is required for a defendant to avail themselves of a claim for misappropriation of publicity.

Full post as published by IPKat on September 25, 2009 (boomark / email).