Hallmark will be enclosing a big fat check with its greetings to Paris Hilton.
Lawyers for the greeting card company told a California judge they reached a settlement in the lawsuit filed by the Hilton hotel heiress. Hilton sued the card company in 2007 for using her face and catchphrase “That’s hot” on a birthday card without her permission.
The settlement comes after Hallmark lost its appeal to the Ninth Circuit Court of Appeals. The Court rejected the company’s First Amendment argument. The birthday card wasn’t protected by the Constitution because it didn’t report news in the public interest.
The Court also ruled that Hallmark’s “transformative use” defense wasn’t strong enough to dismiss the case. The Court wasn’t convinced that Hallmark turned Hilton’s image into its own completely new creative work.
Paris Hilton, the socialite actress and heiress mostly famous for being famous, sued Hallmark Cards Inc., the Kansas City-based greeting cards company. She claimed that Hallmark stole her image and her catchphrase -"That's hot" in a birthday card it sold.
Hallmark produced a card captioned "Paris's First Day as a Waitress," that shows Hilton's face on a woman serving a plate of food to a customer at a restaurant. "Don't touch that, it's hot," the Paris figure says.
"What's hot?" the customer asks.
"That's hot," the Paris-figure responds, playing off her often-used catchphrase. The inside of the card says, "Have a smokin' hot birthday."
As you may recall, Hilton used to say "That's hot!" all the time on her TV show The Simple Life.
"Right of Publicity" Claims
Hilton claims that Hallmark violated her publicity rights by using her image and her catchphrase. Your right of publicity is your right to control and profit from the commercial use of your name, likeness and persona. Essentially, this right protects you from the loss of value that results from the unauthorized use of your identity for commercial purposes.
Hilton's lawsuit is based on several related points:
- Misappropriation of publicity
- Invasion of identity
- Commercial appropriation of identity
- False representation that Hilton endorses the product
Hilton's Trademark Claims
Hilton is also claiming that Hallmark infringed on her federally registered trademark. A trademark protects a word, phrase, symbol, design or combination of these things. Basically, you get something trademarked to protect your product's name, logos and phrases. Examples of trademarked items are the names "Coca-Cola," "Target" and the McDonald's golden-M logo.
Hilton claims that she registered the trademark "That's hot," on February 13, 2007 and is seeking an injunction. An injunction is a court order requiring someone to do something, or to refrain from doing something. Here, Paris wants Hallmark to stop using her image and phrase. She's also seeking unspecified damages to be determined at trial. These damages will likely be based on the profits from the $2.49 cards.
While the law protects against the illegal taking of a trademarks, there are certain exceptions to that rule.
Hallmark claims that the card is parody, and that under the doctrine of fair-use, Hallmark is free to use Hilton's picture and phrase. While parodies are permitted, it's a case by case analysis that depends on many factors that the court did not get into in this case.
"Some of Hallmark's new humor greeting cards are parodies of today's most popular celebrities and politicians," said Hallmark spokeswoman Julie O'Dell. "These cards take a satirical look at news and gossip surrounding these public figures, including Paris Hilton, and we do not believe Hallmark has violated any of Ms. Hilton's rights," she said.1
Hallmark also attempted to use the First Amendment of the US Constitution as a defense, claiming that the card reflected matters that are in the public interest. This defense was also rejected.
In this situation, the judges didn't have to rule on the actual merits of Hilton's lawsuit and whether it is in fact a parody, but rather on Hallmark's attempts to get the case dismissed. A case can get dismissed before it even goes to trial if there isn't enough of a legal dispute to have a trial. The judges here decided that there is enough of a dispute, and Hilton can continue her lawsuit against Hallmark where the legal issues will actually be addressed. In the meanwhile, sources note that Hilton began using a new phrase, "That's big."
1Hallmark Files Motion to Dismiss Paris Hilton's Lawsuit, Fox News, Nov. 8, 2007, available at http://www.foxnews.com/story/0,2933,309716,00.html, accessed Oct. 8, 2009.
Questions for Your Attorney
- If you think you have property rights to protect, using a trademark or copyright, what can be done to prevent improper use of your property? Is it practical or affordable to do so?
- Do the concepts of parody only apply if a celebrity or politician is involved?
- How broad is the doctrine of fair use?