Section 43(a) of the Lanham Act prohibits false or misleading statements in commerce that are likely to cause confusion as to a person’s affiliation, approval or sponsorship of someone else’s commercial activities. Here’s an easy example: You take an iconic photograph of a celebrity and, without the celebrity’s permission, incorporate it into the wrapper of a candy bar you are selling. Consumers are confused into thinking the celebrity has endorsed the candy bar, and you have violated Section 43(a). Now, here’s a more difficult question: What if you completely obscure the celebrity’s likeness, leaving the rest of the photograph intact? If some consumers know whose image used to be in the photograph, have you violated the celebrity’s Section 43(a) rights even though you didn’t use their likeness?
The Southern District of New York recently confronted a similar issue in Roberts v. Bliss, a case involving street harassment, gigantic appetizers, and what many think is the worst TGI Friday’s ad ever.
10 Hours of Walking in NYC as a Woman
In 2014, Robert Bliss posted to YouTube a video entitled “10 Hours of Walking in NYC as a Woman.” The video depicts hidden camera footage of the verbal harassment endured by a woman while walking the streets of New York City. It garnered about 41 million hits on YouTube alone and allegedly turned actress Shoshana Roberts, the woman depicted in the video, into “a public figure and celebrity virtually overnight.”
In 2015, Bliss licensed the video to an ad agency for $4,000. The agency used the footage to create a television commercial for the TGI Friday’s chain. The TGI Friday’s advertisement parodied the original video by depicting exactly the same footage, except that Roberts’ image was completely obscured by giant walking appetizers. In other words, the men in the video were no longer ogling and harassing Roberts; their lascivious attentions were directed instead at a giant mozzarella stick. “Damn!” said one gawking onlooker to an oversized potato skin … you get the idea. The ad ends with: “Nobody likes a catcaller . . . But who can blame someone for #Appcalling?”
The TGI Friday’s ad was criticized generally for its bad taste, and specifically for its belittlement of the very issue the original video was perceived to have championed. Roberts, who had become the face of the original video, found the ad offensive and humiliating. Moreover, she became concerned that, because she was widely known as the person depicted in the original video, the public might falsely believe that she endorsed or was affiliated with the television commercial.
Roberts filed suit in a New York state court against Bliss and TGI Friday’s, asserting a violation of Section 43(a). Roberts alleged that her “name, likeness and persona” were used by TGI Friday’s in such a way as to misrepresent that she had endorsed or was affiliated with the advertisement. The defendants removed the matter to the Southern District of New York and filed a motion to dismiss.
Dismissal of the Lanham Act Claim
To make out a false endorsement claim under Section 43(a) of the Lanham Act, Roberts was required to show that the defendants, (1) in commerce, (2) made a false or misleading representation of fact (3) in connection with goods or services (4) that is likely to cause consumer confusion as to the sponsorship or approval of the goods or services in question. The Court held that Roberts failed to plausibly allege two of these four elements, and granted a motion to dismiss the Lanham Act claim.
First, the Court held that the TGI Friday’s ad did not make a false or misleading representation of fact because, although the ad may “call to mind” for some viewers Roberts’ role in the original video, it did not actually use her image. The Court acknowledged that the distinct “persona” of a person may extend beyond mere photographic depictions of that person, such that the Lanham Act may protect against “look-alikes or sound-alikes.” For example, the Court noted, the Lanham Act has been used to protect against copycat commercial uses of Tom Waits’ striking voice, Woody Allen’s famous character appearance from Annie Hall, and even the collections of traits associated with Vanna White (i.e., turning letters around on television while wearing fancy clothes) and the Naked Cowboy (i.e., turning himself around in Times Square while wearing hardly any clothes). Here, by contrast, Roberts had not alleged any distinct traits associated with her that were depicted in the TGI Friday’s ad – only that she was the person removed from the video to create the ad. Thus, because neither Roberts’ image nor her broader persona were depicted, the ad did not falsely indicate Roberts’ approval or endorsement.
Second, the Court held that Roberts failed to plausibly alleged a likelihood of consumer confusion because the ad was a parody. The Court held that “when satire or parody is taken to a certain degree . . . it becomes clear that the owner of the trademark was not involved in the manufacture or sponsorship of the defendant’s product,” and therefore there can be no likelihood of confusion. Here, the Court held, the “parody is obvious” so the “risk of consumer confusion is at its lowest.” To be sure, there is something incongruous about the Court’s analysis here, because Bliss was the owner of the video and he did actually license the footage for parodic use, thus undercutting the theoretical basis for the analysis. However, when one isolates only the rights claimed by Roberts herself, and considers the outrageous (albeit tasteless) nature of the parody, the Court’s reasoning comes across as flawed but ultimately practical.
Roberts’ State Law Claims
Although Roberts’ Lanham Act claim was dismissed, her complaint also included several state law causes of action, which the Court dismissed without prejudice and which Roberts may refile in state court. These state law claims included counts for unjust enrichment and quantum meruit, which were based on the allegation that Roberts was not fairly compensated for her performance in the original video. Notably, the complaint also includes state law counts for violation of Roberts’ common law and statutory rights of publicity. These right of publicity counts arguably seek to address the same harm articulated by the Lanham Act claim, but the Court’s opinion did not address their continued viability.