Friday, July 05, 2013

Bad Situation: Jersey Shore cast member loses TM and publicity claim over parody

MPS Enter., LLC v.  Abercrombie & Fitch Stores, Inc. No. 11-24110 (S.D. Fla. June 28, 2013)

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

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,, and

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.

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