Michael Sorrentino, aka The Situation, sued A&F for
selling a T-shirt with “The Fitchuation” written on it and for publicizing a
press release about A&F’s request that he not wear A&F-branded products on MTV’s popular Jersey Shore series, which began in
December 2009. The court granted summary
judgment on all his claims.
In late January 2010, A&F ordered the shirt as a parody
on Sorrentino’s nickname, and began selling the shirt through its stores and
website. “A&F does not engage in any
conventional advertising” (certainly none featuring shirts) and didn’t
advertise the Fitchuation shirt. All but
four shirt sales were made by December 2010.
In October 2010, plaintiffs applied to register “The Situation” for
entertainment services, and now sell t-shirts online at officialsituation.com.
In an August 2011 episode, Sorrentino wore at least one pair
of A&F-branded sweatpants. A&F
sent a letter to MTV that included the following:
A&F obviously has not sought
product placement on the show, and we believe that, since the character
portrayed by Mr. Sorrentino is not brand appropriate, his display of A&F
clothing could be misconstrued as an endorsement by him of our clothing or –
worse – an endorsement by A&F of his wearing our clothing. We have no
interest at this point in pursuing any sort of legal action against MTV or the
producers of “Jersey Shore.” In fact, we would be willing to pay MTV or Mr. Sorrentino
or other characters up to $10,000 NOT to wear any clothing bearing the
“ABERCROMBIE & FITCH,” “A&F,” “FITCH,” “MOOSE” or related trademarks.
For additional episodes aired this season, we would appreciate it if you would
ensure that our brands are pixilated or otherwise appropriately masked.
The same day MTV received the letter, A&F issued a press
release:
ABERCROMBIE & FITCH PROPOSES A
WIN-WIN SITUATION New Albany, Ohio, August 12, 2011: Abercrombie & Fitch
Co. (NYSE: ANF) today reported that it has offered compensation to Michael ‘The
Situation’ Sorrentino, a character in MTV’s TV show The Jersey Shore to cease
wearing A&F products. A spokesperson for Abercrombie & Fitch commented:
“We are deeply concerned that Mr. Sorrentino’s association with our brand could
cause significant damage to our image. We understand that the show is for
entertainment purposes, but believe this association is contrary to the
aspirational nature of our brand, and may be distressing to many of our fans.
We have therefore offered a substantial payment to Michael ‘The Situation’
Sorrentino and the producers of MTV’s The Jersey Shore to have the character
wear an alternate brand. We have also extended this offer to other members of
the cast, and are urgently waiting a response.” Abercrombie & Fitch Brand
Senses Department (614) 283-6500
At the end of the second quarter,
the Company operated a total of 1,073 stores. The Company operated 316
Abercrombie & Fitch stores, 179 abercrombie kids stores, 501 Hollister Co.
stores and 18 Gilly Hicks stores in the United States. The Company operated 10
Abercrombie & Fitch stores, four abercrombie kids stores, 44 Hollister Co.
stores and one Gilly Hicks store internationally. The Company operates
e-commerce websites at www.abercrombie.com, www.abercrombiekids.com,
www.hollisterco.com and www.gillyhicks.com.
That last paragraph is “standard boilerplate that goes at
the end of every press release” issued by A&F. The court noted that the
press release “did not contain any video, photographs, or images of
Sorrentino.” (Would there have been a
different result if it had done so?)
Plaintiffs sued for trademark infringement, violation of the
right of publicity, and related torts.
The court first found no likelihood of confusion. Citing odd precedent that the type of mark
and actual confusion are the most important factors, the court noted that each
case must be evaluated on its facts.
Rejecting defendants’ argument that “The Situation” was a merely
descriptive personal name, the court found it arbitrary or fanciful
(really, arbitrary, since it’s not a made up term), weighing in
plaintiffs’ favor. “[T]he Court can
discern no relationship between the word ‘situation’ and the apparel or
entertainment services that the plaintiffs provide.”
The similarity of the marks (setting aside whether this was
“use as a mark”) was affected by the fact that a parody needs to conjure up
enough of the original to be recognizable.
The court found “The Fitchuation” “visually and phonetically different”
from “The Situation,” and there was no evidence of palming off; A&F
prominently used its own famous Fitch mark, reducing the likelihood of
confusion. This weighed in A&F’s
favor.
As to the similarity of goods/services, even identical goods
can be neutral when there’s a parody.
Here, A&F’s apparel was dissimilar to plaintiffs’ entertainment
services; plaintiffs didn’t offer apparel under the Situation mark until after
the Fitchuation shirt was released. This
weighed in A&F’s favor.
Likewise, the similarity of the parties’ retail outlets and
customers favored A&F. A&F sold
the shirt exclusively through its stores and website, while plaintiffs offered
“The Situation” entertainment services to bars, nightclubs, and similar
venues. A&F’s customers are mostly
aged 15-22, while Sorrentino's predominant customers’ patrons are mostly 18-34.
Nor did the parties engage in similar
advertising methods. Plaintiffs use
social media; A&F used its own stores and website. Both used the internet, but “[t]his
similarity would dispel rather than cause confusion, however, because the
websites are separate and distinct, suggesting two completely unrelated
business entities.”
The court rejected plaintiffs’ argument that intent had to
be submitted to a factfinder. The
opinions of their entertainment lawyer and their expert about intent didn’t
help. Parodies don’t justify an
inference of intent to confuse, but rather to amuse. The court agreed that this was a parody as a
play on words, and such parodies aren’t likely to confuse. Thus, intent favored A&F.
There was no evidence of actual confusion. The court excluded plaintiffs’ survey under Daubert because it “begs its answer by
suggesting a link between plaintiff and defendant”; the expert conceded that
she wasn’t an expert in Lanham Act or confusion surveys, and the survey “violates
fundamental principles of reliability by planting the notion of infringement
through closed-ended questioning without any directive not to speculate,
failing to include any control whatsoever, and otherwise failing to comply with
the Reference Guide on Survey Research or to case law evaluating Lanham Act
surveys under Daubert.” The court didn’t quote the questions, but with a bit of
digging in ECF I found that the survey showed respondents the shirt, asked them
if they’d seen it before, then asked where they thought the shirt could be
bought (over 83% answered A&F), then asked whether they thought the shirt
was endorsed by anyone (68% of 201 who answered the question said yes), then asked,
if they did think the shirt was endorsed, by whom (81% of 142 who answered said
Sorrentino, MTV, or Jersey Shore). That answer dropoff is probably also of interest in terms of validity.
Overall, there was no triable issue of fact on confusion.
Furthermore, plaintiffs failed to show they had valid rights
to “The Situation” as a mark for apparel when A&F introduced its
shirt. Although the court noted that use
in commerce may exist even in the absence of sales, it found that plaintiffs
didn’t use the mark on apparel until June 2010 at the earliest, several months
after A&F’s use. Nor was there
evidence that plaintiffs had rights to the term as a mark for entertainment
services until after A&F’s use. This
also entitled A&F to judgment as a matter of law.
The plaintiffs also alleged trademark infringement arising
out of the press release, arguing that A&F profited off the use of a false
affiliation with Sorrentino because the whole
offering-to-pay-him-not-to-wear-the-brand thing generated a ton of free
publicity. A&F argued nominative
fair use, which the court bolstered with a reference to the exclusions from
§43(c)(3)’s ban on dilution. (Not sure,
but this may be the first judicial reference to dilution to support the
proposition that nominative fair use is part of trademark infringement doctrine.) The
court, citing New Life, said, “[t]he
use of a plaintiff’s alleged trademark for purposes of expression, criticism,
commentary or satire is generally protected as a matter of law unless it
explicitly misleads as to source or sponsorship.” Courts have repeatedly dismissed infringement
claims based on criticism/making fun of the plaintiff. The press release, which criticized
Sorrentino, could not possibly have created likely confusion that it was issued
or approved by him. A&F was
responding to an actual thing that happened, to wit Sorrentino’s wearing
A&F clothes on TV. Also, the press release didn’t propose a commercial
transaction, the boilerplate promotional statement on the bottom
notwithstanding. (It’s not clear why
this matters here, but it will below; the court rejected the opinions of
plaintiffs’ entertainment lawyer and marketing expert that the press release
was an ad.) Anyway, this was nominative
fair use. A&F used only so much of his
name as reasonably necessary and didn’t do anything to suggest his sponsorship
or endorsement.
Sorrentino’s Florida right of publicity claim also failed. Florida doesn’t extend the right to publications
“which do not directly promote a product or service.” As the Eleventh Circuit has held, “barr[ing]
the use of people’s names” in such a “sweeping fashion” would raise “grave
questions” of constitutionality, as “the right of publicity has not been held
to outweigh the value of free expression.” So, the statute’s purpose is “to prevent the
use of a person’s name or likeness to directly promote a product or service
because of the way that the use associates the person’s name or personality
with something else.” Plaintiffs lose
when a communication doesn’t directly promote a product or service, even where
the defendant included the plaintiff’s name on the very product it advertised
and sold. See Faulkner Press, LLC v. Class Notes, LLC, 756 F. Supp. 2d 1352,
1360 (N.D. Fla. 2010) (professor’s name used on the class note product itself). (It’s the “even” that creates the conceptual
problem here, I think.)
Here, the press release didn’t directly promote a product or
service but responded to Sorrentino’s sartorial choices; the
boilerplate identifying A&F’s stores and websites “cannot be construed to
directly promote a good or service.”
Apparently leaving room for other press releases to come within the
scope of the right, the court held that this press release was more like a
C&D than an ad. It didn’t associate
Sorrentino’s name “with something else,” but rather explicitly attempted a
dissociation. It contained opinions and
the truthful statement that A&F offered money to stop the use of its
clothes. It didn’t identify any
particular product (except the clothes Sorrentino wore). Statements by others that the press release
was a publicity stunt were inadmissible hearsay.
Comment: While of course I agree that Sorrentino must lose,
this is a very formalistic and obtuse understanding of A&F’s marketing
ploy: A&F sought and received publicity based on the “controversy” it
generated by objecting, explicitly nonlegally, highlighting a random event on
the show that might otherwise have gone completely unnoticed and raising its
brand profile as a result—which sounds a lot like free riding. (I also don’t think the reaction evidence was
hearsay, because it wasn’t offered for its truth, but rather for the reaction
of the people to whom it was directed, who clearly thought that A&F was
promoting its brand.) Perhaps, one might
say, Sorrentino asked for this by wearing A&F—but that’s a hard argument to
make outright given that the right of publicity does not generally recognize
truth as a defense; plenty of celebrities have sued when different brands have
attempted to publicize celebrities’ actual uses thereof. More generally, a press release is commercial
speech, and has “commercial or advertising purpose,” which is what the Florida
statute is (unconstitutionally) written to cover. The direct promotion language on which the
court here relies was in the context of rejecting a right of publicity claim
based on a for-profit movie that didn’t itself advertise anything else; a press
release promoting A&F’s economic interests is a different animal.
Unsurprisingly, the false advertising claim failed. The
court didn’t reach anything but falsity: there were no false or misleading
representations of fact in the press release.
The claims were based on A&F’s unfalsifiable statements of opinion:
its concern for “damage” to its image and its belief that “this association is
contrary to the aspirational nature of our brand, and may be distressing to
many of our fans.” (Hey, since those are unprovable and unfalsifiable
statements, what about all those times infringement/dilution plaintiffs swear
that the defendant’s use will damage their brands?) It’s undisputedly true that A&F offered
money to stay away from the brand. And
there was no evidence of deception.
The court also dismissed plaintiffs’ state-law dilution
claim, which required fame as well as proof that a use decreased the
plaintiff’s commercial value. The
failure of the federal infringement claims meant that “related” state law
claims likewise fail. (This seems to
conflate infringement and dilution, but I can’t pretend I’m sad.) Anyway, even if the court deemed “The
Situation” famous, A&F’s use preceded plaintiffs’ registration for apparel
by several months (the court doesn’t explain this, but presumably it’s
concluded that A&F’s use began before plaintiffs’ mark became famous). And further, plaintiffs failed to show likely
dilution or harm to commercial value.
Posts
No comments:
Post a Comment