Inappropriate Appropriation: “Bogarting” Celeb Mojo

Inappropriate AppropriationThis is the true story of 3 celebrities who picked fights with big companies about publicity issues. Let’s find out what happens when people stop being polite and start being litigious.

Abercrombie vs. The Situation vs. Abercrombie

Abercrombie & Fitch blows “Hot N Cold” when it comes to Michael “The Situation” Sorrentino. The retailer makes t-shirts brandishing slogans like “The Fitchuation” and “GTL … You Know the Deal Fitch” (a wordplay on the Jersey Shore star’s catch phrases) but it doesn’t want The Situation to wear them. It’s pretty clear that these two just can’t play nice. Here’s an MTV-version of how their recent interactions have gone:

Abercrombie to The Situation (via press release): You make us look bad. Stop wearing our clothes. We’ll pay you $10,000.

The Situation to Abercrombie: Yeah, you’ll pay me – $4 million in legal damages. Here’s a lawsuit for infringing my trademarked catchphrases.

Abercrombie: Nice try, Sitch, but you don’t actually own those marks, so you can’t sue us for infringing them. But even if you did own them, we’ve got free speech protection to make fun of you. (By the way, if you can’t take a joke, don’t mess with the big dogs.)

Who’s got the better argument? Abercrombie is right that Sorrentino doesn’t have federal trademark registrations for those phrases. The Sitch has applied for registration, but he’s having a hard time getting the registrations approved. A trademark examiner rejected his application for “Gym Tan Laundry” because MTV owns the similar “Gym Tanning Laundry” mark. Other applications have been rejected for technical defects, like not signing the application. My favorite rejection involves Sorrentino’s consent form. To register a mark that contains the name (or nickname) of a living person, that person has to give written permission. The Situation gave his consent to register “her portrait” instead of “his nickname.” (You’d think he would at least remember his gender.)

On the other hand, Abercrombie seems to want to make money from publicly “not-associating-by-associating” with The Situation. It’s hard to believe that Abercrombie wants nothing to do with The Situation when it’s trying to sell Jersey Shore-sloganed t-shirts.

Abercrombie’s mercurial behavior might help with its parody defense in the lawsuit, though. In a successful trademark parody defense, the alleged infringer’s product will remind you of the original product, but also indicate that it isn’t the original and shouldn’t be taken seriously. By distancing itself from the voice of the spoofed slogans, I think Abercrombie has actually strengthened its parody claim.

Then again, The Situation is kind of a parody of himself. Do two parodies cancel each other out?

There’s No Such Thing as Bad Publicity

This is Kim Kardashian’s mantra. We all know she likes attention. She likes it so much that she doesn’t want you to see someone else on TV and think it’s Kim, particularly in this Old Navy commercial:

Last summer, Kim sued The Gap (which owns Old Navy), claiming that the long-haired brunette in the commercial looks too much like her, and Old Navy is trying to profit from the physical similarity. The question is: do consumers think that’s Kim? I’ll admit the actress resembles her, but Kim’s known for things other than her singing and dancing abilities, so the vocals and choreography are a tip-off for me.

Kim asked for between $15 and $20 million dollars in damages. Last month, The Gap fired back with an unusual response: Kim’s not worth that much. The Gap contends that Kim’s reputation wasn’t harmed by the commercial because she doesn’t have a particularly positive reputation. It wants more information about Kim’s deals with other retailers like Sears and Bebe to see if Kim’s style is actually a good endorsement. (Bebe has since dropped the Kardashian clothing line).

There have been other successful look-alike lawsuits involving celebrities like Jackie O, Woody Allen, and even a robotic-version of Vanna White, but these cases are pretty fact-specific. So, even though The Gap’s strategy might seem like a red herring to run up discovery bills, it could actually reveal some very important facts—for both sides.

And maybe Kim’s just mad that they didn’t ask her to do the commercial.

I Coulda Been a Credenza*

For me, the couch is definitely the best place to watch movies. And I certainly have my favorite movie actors. But I can’t say that I’ve ever come to associate my couch with a particular actor. Rooms to Go has done that for me, though! They’ve got sofas called Radcliffe, Phoenix, and Tarantino. And, until last week, they had a Brando couch.

Brando’s estate wasn’t happy about that and sued Ashley Furniture Industries (Rooms to Go’s parent company) for trademark infringement. While there’s nothing necessarily negative about the Brando-sofa connection, Brando Enterprises sent a clear message that it wanted Ashley to ask before using. The furniture store decided to settle the lawsuit, paying the Brando estate $356,000.

Ashley might have capitulated to Brando (perhaps it was afraid of waking up next to a horse head?), but it’s staying in the ring with Humphrey Bogart’s estate over the issue of a “Bogart” couch. Ashley says “Bogart” is a generic term—after all, it shows up in the dictionary—and it wants the court to announce that publicity rights can’t apply to a sofa.

I think the issue over publicity has less to do with the object on which the name is used and more to do with what, if any, benefit Ashley would get from using the name. The bigger legal question is whether publicity rights still apply after a celebrity’s death. For rights of publicity, the exact analysis will depend on the particular state’s publicity rights statute. But from a trademark infringement perspective, I think this fight raises some hairy questions about how a name or persona is “used in commerce” posthumously. It’s interesting that none of the living celebrities have confronted Ashley about the couch/name association.

Celebrity obviously comes with some loss of privacy. But where’s the line between referencing celebrities simply as public figures and “bogarting” their name for financial gain? Weigh in with your comments and thoughts! I’ll wait here, watching a Harry Potter movie marathon from my Radcliffe couch.**

*I wish I could take credit for that tagline, but I’ve got to give credit to Mike Masnick at Techdirt for coming up with it.
**I don’t actually have a Radcliffe couch.

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