Goodwill (store) and Trademark (bis)

Some people have a jade plant, or a cat, to bring prosperity to their home. Well, I brought home a Federal Reserve Tee-Shirt from the Goodwill Store.

I unfortunately have to respond negatively to the question printed on the back of the shirt. However, my collection of fair use garments is growing every week. I feel so rich looking at it, sigh.

Paris Hilton and Trademark Law, continued

It is strange to see that a picture of Paris Hilton wearing a Paris Hilton tee shirt would end up on a New York Times blog, and would provoke so many comments. She trademarked her name, as early as 2004, why not wear the tee-shirt? She also trademarked Can Can Paris Hilton, and Paris Hilton's My New BFF, and That's Hot, and sued Hallmark for trademark infringement in 2007. The case has reached the Appeal Court, and the 9th Circuit is hearing arguments.

Hallmark's opening brief argues that the card "comments on Hilton’s broken-record use of the phrase “that’s hot” by transforming it from a metaphorical barometer of style into a literal warning of the high temperature of a plate of food." Hallmark also argues that "Hilton’s privileged and public lifestyle, her physical appearance, her contempt for serving the public and her metaphorical use of the trite phrase “that’shot” – all facts admitted by Hilton – starkly contrast with the Card’s cartoon caricature of her, set in a decidedly unprivileged and “nightmare” environmentwhere she is “serving the public” and uttering the words “that’s hot” solely for their literal connotation." How to strip That's hot! from secondary meaning (aka"metaphorical barometer of style") to reveal its bare, "literal" description of food temperature ...

Paris Is Back In Court

Paris Hilton sues Hallmark for Trademark infringement. Copy of the complaint here, via TMZ. Hallmark is selling a card, "Paris First Day as a Waitress", featuring a photograph of the head of Paris Hilton over the drawn body of a waitress. The waitress offers a steaming plate of food to a customer. Paris amicably warns the customer: "Don't touch that, it's hot". "What's hot?" replies the customer, while pointing its finger as the plate. "That's hot" replies the blond heiress (her roots show on the picture though.)

Ms. Hilton is suing Hallmark for commercial appropriation of identity, invasion of privacy, misappropriation of publicity, false representation that Ms. Hilton endorses the product, and infringement of a federally registered trademark.

Ms. Hilton "catchphrase" is "It's hot!", and she registered the phrase as a trademark this year. I checked on TESS, and found three registrations: Ms Hilton has registered "That's hot" in three categories:

1. Alcoholic beverages, namely, wine, champagne and prosecco

2. ELECTRONIC DEVICES, NAMELY, CELLULAR TELEPHONES, CD PLAYERS, CASSETTE PLAYERS, DIGITAL AUDIO FILE PLAYERS, DVD PLAYERS, HEADPHONES, HAND-HELD PERSONAL DIGITAL ASSISTANT/ELECTRONIC ORGANIZERS; HAND-HELD UNIT FOR PLAYING ELECTRONIC GAMES; ELECTRONIC GAMBLING MACHINES, NAMELY, SLOT MACHINES WITH OR WITHOUT VIDEO OUTPUT; VIDEO GAME SOFTWARE; COMPUTER GAME PROGRAMS; VIDEO GAME MACHINES FOR USE WITH TELEVISIONS; COMPUTER GAME EQUIPMENT CONTAINING MEMORY DEVICES, NAMELY DISCS AND CARTRIDGES

3. MEN'S AND WOMEN'S CLOTHING, NAMELY, SHIRTS, SHORTS, JEANS, JACKETS, SKIRTS, SLACKS, BLOUSES, DRESSES, VESTS, COATS, SWEATERS, SCARVES, SWIMSUITS, UNDERWEAR, UNDERPANTS, SLIPS, CAMISOLES, BRAS, NIGHTGOWNS, ROBES, SOCKS, HOSIERY; INFANTS' AND CHILDREN'S CLOTHING, NAMELY T-SHIRTS, SWEATERS, LONG SLEEVED SHIRTS, SHORTS, PANTS, JUMPERS, JUMPSUITS, OVERALLS, ONE-PIECE PLAYSUITS, PAJAMAS, SOCKS, DRESSES, SKIRTS; MEN'S, WOMEN'S, CHILDREN'S AND INFANT'S FOOTWEAR AND HEADWEAR; BELTS.

"That's hot" is a popular trademark, and others registered it under different categories (for instance, a Californian company registered it for the Frozen yogurt; Ice cream; Puddings; Sorbet , and in the Energy drinks categories...

Hallmark's defense is fair use. Is it fair use as in trademark fair use? Fair use in copyright? Is there such a defense as fair use in the right of publicity? I will have to research in order to answer that last question. A commercial appropriation of publicity, right of publicity, action is the more likely to be successful, not because of the use of "It's hot", but because Hallmark use a photograph of Paris Hilton for commercial purpose. The right of publicity is codified in section 3344 of the California Civil Code.

I mentioned last month an article written by Professor Dogan & Professor Lemley. They advocate making the right of publicity a part of trademark law.

If one agrees with them, Hallmark, in order to prove fair use, will have to prove that the public interest in the satire is greater than the public interest in not being confused by the use of a registered trademark. In that case, there is no likelihood of confusion. The card should be protected by the First Amendment, especially since Paris has put herself in the spotlight lately. As a social commentary, a satire is an effective tool to comment on the heiress' antics.

Barbie and TM Once More?

Via the WSJ Law Blog, a video where Barbie once again, plays her role to test our fair use doctrine. Thank you Barbie!