Nathan Fan is a JD candidate at Osgoode Hall Law School.
America’s favourite hotel heiress Paris Hilton can now proceed with her litigation against Hallmark Cards over the unauthorized use of her picture and catchphrase “That’s hot”, according to a recent decision by the U.S. Court of Appeals for the Ninth Circuit. Paris Hilton, who registered the phrase “That’s hot” with the U.S. Patent and Trademarks Office in February 2007, brought forth a lawsuit in California against the greeting card mogul for using her trademark phrase in a birthday card without her permission. Hallmark Cards stalled the lawsuit by raising a defensive motion, but was ultimately dismissed by the appellate court.
The “Paris’s First Day as a Waitress” Hallmark birthday card depicts Hilton as a cartoon waitress serving food at a restaurant. With Hilton’s oversized head super-imposed on the waitress’s body, Hilton carries on a dialogue with a customer that utilizes her associated catchphrase. The card’s scenario also parodies an episode of Hilton’s The Simple Life reality television series, where Hilton and co-star Nicole Richie try to reconcile their celebrity lifestyles with jobs as waitresses.
Hilton’s suit against Hallmark claims causes of action based on the misappropriation of her right to publicity under California law and infringement of her federally registered trademark. Although the district court had dismissed the trademark infringement claim due to the failure to state a claim on which relief could be granted under Rules of Civil Procedure, Hallmark defended the rest of the claim by moving to strike Hilton’s suit under California’s anti-SLAPP legislation.
Anti-SLAPP (Strategic Lawsuit Against Public Participation) legislation is designed to prevent meritless lawsuits filed for the purpose of dissuading common citizens from exercising their First Amendment right of free speech on matters of public interest. In California, the anti-SLAPP legislation is found in the California Civil Procedure Code s.425.16, which states that “a cause of action against a person arising from any act of that person in furtherance of the person’s right of petition or free speech ... in connection with a public issue shall be subject to a special motion to strike, unless the court determines that the plaintiff has established that there is a probability that the plaintiff will prevail on the claim”.
Judge O’Scannlain for the Court of Appeal noted that although the case law and preamble to the legislation all point towards a very broad construction of the provision, there is still a two part test that must be passed for the motion to pass. First, the defendant moving to strike must pass the threshold of showing that the act was taken in furtherance of the defendant’s right of free speech in connection with a public issue. Second, if the plaintiff can demonstrate a probability of prevailing on its claim, the motion to strike will be dismissed.
Regarding the first part, the courts have found the “furtherance of free speech” to include the “intent to convey a particularized message....and in the surrounding circumstances the likelihood was great that the message would be understood by those who viewed it”. O’Scannlain J opined that Hallmark’s speech in the card fell within the “universe of types of communication” offered under the furtherance of free speech. He also stated that the California Supreme Court has ruled that a public issue need not necessarily involve questions of civic concern, but that social or even low-brow topics may suffice. Under such a broadly construed provision, O’Scannlain J stated that the subject matter of Hallmark’s card passes the threshold test.
In regards to the second part of the test, Hallmark raised two First Amendment defenses to override the validity of Hilton’s claim: (1) transformative use; and (2) public interest. Hallmark argued that the birthday card was a transformative use of Hilton’s image as it contained “significant transformative elements or that the value of the work does not derive primarily from the celebrity’s fame”. O’Scannlain J illuminated the ‘bookends’ of the Californian Court’s interpretation of transformative use. On the one end, Comedy III Prods., Inc. v. Gary Saderup, Inc. ruled that the simple charcoal renditions of The Three Stooges reproduced on t-shirts was not sufficiently transformative. On the other hand, Winter v. DC Comics ruled that a parodied rendition of two musicians (Edgar and Johnny Winter) as half-human, half-worm characters that were involved in a story line beyond their public characteristics (e.g. violent vigilantes) was sufficiently transformative to be captured by the First Amendment defense.
In analyzing Hallmark’s case, O’Scannlain J stated that although Hilton’s body was of a generic cartoon female body and the uniform, style of restaurant and food differed from the reality television show episode, the general setting and concept of card was not sufficiently transformative like it was in Winter (e.g. transformative storyline).
O’Scannlain J also quickly dismissed Hallmark’s public interest defense under the First Amendment, citing that the defense only applies to the publication and reporting of information pertaining to matters of public interest. The nature of Hallmark’s birthday card was not publication or reporting of information. Thus, with the rejection of both of Hallmark’s defences, O’Scannlain J opined that Hilton has at least some probability of prevailing on the merits of her right of publicity.
While the anti-SLAPP statutes were legislated with the intention of capturing a very broad set of circumstances in favour of the defendant, the second half of the test counter-balances with a very low threshold in favour of the plaintiff. The California Supreme Court has stated that a “minimal merit” is all it takes to cross the threshold for the plaintiff. As a result, it seems that for satires and parodies to be protected by the anti-SLAPP statute, it must be presented in a rather prescribed and narrow form.
Thus, with Hallmark’s motion to strike dismissed, Hilton’s lawsuit can now legitimately live on to further proclaim that Paris Hilton’s catchphrase is too hot to touch. Whether she will actually succeed on her right to publicity claim will still have to be determined by the court, as this court’s opinion of the viability of Hilton’s case is neither binding nor evidence at trial.