In our 3-part series, the Brand Protection Blog is reviewing the different legal claims unwitting stars of Kanye West’s “Famous” video might assert. In Part I, we analyzed claims for Trademark Infringement. Today we will cover False Endorsement.

False Endorsement

Some legal commentators have suggested that the celebrities featured in Mr. West’s video could bring a false endorsement claim under Section 43(a) of the Lanham Act. “False endorsement occurs when a celebrity’s identity is connected with a product or service in such a way that consumers are likely to be misled about the celebrity’s sponsorship or approval of the product or service.” See ETW Corp. v. Jireh Publishing, Inc., 332 F.3d 915, 925-26 (6th Cir. 2003).

False endorsement claims are subject to the rights of artistic expression protected by the First Amendment’s free speech provision. Video, films and art have been held to be protected speech under the First Amendment. See Kaplan v. California, 413 U.S. 115, 119-120 (1973) (“[P]ictures, films, paintings, drawings, and engravings…have First Amendment protection[.]”); Bery v. City of New York, 97 F.3d 689, 695 (2d Cir. 1996) (“[V]isual art is as wide ranging in its depiction of ideas, concepts and emotions as any book, treatise, pamphlet or other writing, and is similarly entitled to full First Amendment protection.”)

Even if the speech is sold “for profit,” it can be protected under the First Amendment. See Time, Inc. v. Hill, 385 U.S. 374, 397 (1967) (“That books, newspapers and magazines are published and sold for profit does not prevent them from being a form of expression whose liberty is safeguarded by the First Amendment.”) Thus, the fact that West’s video was initially only available on the subscription service, TIDAL, would not hamper the applicability of the First Amendment defense.

Typically, the standard when considering a false endorsement claim is the “likelihood of consumer confusion.” But courts have acknowledged the important implication of the First Amendment’s protection of artistic works, and have crafted a different, more specific test when dealing with false endorsement claims surrounding the use of a celebrity’s name or likeness.

The “Rogers” Test

The Second Circuit addressed the intersection of false endorsement claims and free expression rights in Rogers v. Grimaldi, 875 F.2d 994 (2d 1989). In that case, Ginger Rogers sued producers and distributors of Federico Fellini’s film “Ginger and Fred” which depicted two fictional cabaret dancers who imitated Ginger Rogers and Fred Astaire. Id. at 996-97. The producers claimed their movie was protected under the First Amendment, while Rogers alleged the First Amendment analysis could only be implicated when there were “no alternative means of expression.”

Ginger-and-Fred[1]The Second Circuit noted that artistic works were entitled to First Amendment protection, and articulated a new standard:

We believe that in general the [Lanham] Act should be construed to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression.

Id. at 999.

According to the Second Circuit, the First Amendment would apply regardless of whether there were alternative means of expression. Id. When balancing the interests concerning the film’s name, the Rogers court determined that the First Amendment interests would prevail unless “the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or content of the work.” Id. The Rogers court held that even though some members of the public would likely be confused that Rogers was involved with the film, the value in artistic expression prevailed under the First Amendment, precluding claims under the Lanham Act. Id. at 1001.

The Sixth and Ninth Circuits have adopted the Rogers test and seem to lean heavily in favor of artistic expression. In Mattel, Inc. v. MCA Records, Inc., for example, the Ninth Circuit determined that use of the trademark “Barbie” in the name of a song entitled “Barbie Girl” (in which the lyrics described a blonde, plastic doll who speaks to a male counterpart, “Ken”) was protected by the First Amendment under the Roger’s test, since the likelihood of confusion test “fail[ed] to account for the full weight of the public’s interest in free expression.” 296 F.3d 894, 900 (9th Cir. 2002). When analyzing the song’s title, the Mattel court held that “[t]he only indication that Mattel might be associated with the song is the use of Barbie in the title; if this were enough to satisfy the prong of the Rogers test, it would render Rogers a nullity.” Id. at 902.

Similarly, in ETW Corp. v. Jireh Publishing, Inc., the Sixth Circuit determined that an artist’s painting of Tiger Wood’s victory at the 1997 Master’s Tournament, along with other prior green jacket holders, was not actionable under the Lanham Act because “the presence of Wood’s image in Rush’s painting…does have artistic relevance to the underlying work and that it does not explicitly mislead as to the source of the work.” Id. at 925. Even though the plaintiff produced survey evidence indicating that members of the public could be misled into believing that Woods endorsed the painting, the Court, applying the Rogers standard, held that “the risk of misunderstanding, not engendered by any explicit indication on the fact of the print, is so outweighed by the interest in artistic expression as to preclude application of the [Lanham] Act.” Id. at 937.


West’s imagery likely protected under the First Amendment

The use of celebrity images in Mr. West’s “Famous” video is arguably tied to the song’s artistic relevance. The use of celebrities such as Donald Trump and Caitlyn Jenner – who have appeared prominently in the press this past year – ties directly to the song’s commentary on the achievement of fame. Therefore, in order for a celebrity featured in the “Famous” video to prevail under the Roger’s test, there would have to be a showing that the celebrity’s image “explicitly misleads as to the source of the work.” ETW, 332 F.3d at 928.

The use of political figure George W. Bush and music rival Taylor Swift points directly against public perception that these individuals are endorsing West’s video. Not only is it unlikely that a former president would agree to be shot nude – Bush’s camp immediately released a statement poking fun at the video stating that “[i]n case there was any doubt…that is not President Bush. He is in much better shape.”

Moreover, Ms. Swift and Mr. West have been in a public feud for years, most recently regarding whether Ms. Swift approved the lyrics in “Famous” that explicitly refer to the chanteuse in demeaning terms. Before the “Famous” video was released, Ms. Swift consistently maintained she never was aware of the actual lyrics and publically condemned Mr. West’s song during her Grammy acceptance speech. The negative history between these parties cuts against the possibility that the public would believe that Ms. Swift approved of Mr. West using her image – much less a nude image of the clean-cut star.

As in Rogers, Mattel and ETW, the potential for confusion in this case is probably insufficient to circumvent Mr. West’s First Amendment’s protection of artistic expression.

In the third and final installment of our series we will consider whether Mr. West’s video violates the celebrities’ “Rights of Publicity.”