On June 24, 2016, rap artist Kanye West premiered the music video for his single, “Famous,” at The Forum in Inglewood, California. The NSFW production – featuring a naked Kanye asleep in a King (Kong)-sized bed amidst depictions of a dozen other nude, sleeping celebrities – immediately drew strong reactions.
Some praised the video. For example, Vincent Desiderio, the artist whose 2008 painting entitled “Sleep” inspired the video, called it “a feat of magic.” Others were less impressed. In particular, speculation began flying whether any of the celebrities depicted in the video – which included Taylor Swift, Anna Wintour, Rihanna, Caitlyn Jenner, and Donald Trump, among others – would or could sue Mr. West.
Kanye only added to the buzz when he tweeted “Can somebody sue me already #I’llwait.”
We’ve decided to explore the claims Mr. West’s unwitting and unhappy muses might bring against the star. In Part I, we’ll analyze a claim for Trademark Infringement. Part II will cover False Endorsement under the Lanham Act. Finally, Part III will address the celebrities Rights of Publicity.
Some celebrities – notably Taylor Swift and Kim Kardashian West – have registered their names as trademarks. The “Famous” video lists the names of each of the naked stars – with a “special thanks” to each. Presumably Mr. West did not seek or obtain permission to use all of these names. Thus, some have suggested that these celebrities could claim that the Mr. West’s video constitutes the unauthorized use of a registered trademark (their names) in violation of the Lanham Act, 15 U.S.C. § 1114 and state law.
The Lanham Act, however, provides a defense to a trademark infringement claim where the use of the mark “is a use, otherwise than as a mark, … which is descriptive of and used fairly and in good faith only to describe the goods … of such party [.]” 15 U.S.C. § 1115(b)(4); see San Francisco Arts and Athletics, Inc. v. U.S. Olympic Comm., 483 U.S. 522, 565, 107 S.Ct. 2971, 97 L.Ed.2d 427 (1987). Under this “fair use” defense, a celebrity’s name may be used in the title of an artistic work so long as there is some artistic relevance. See Rogers v. Grimaldi, 875 F.2d 994, 997 (2nd Cir.1989); ETW Corp. v. Jireh Publishing, Inc., 332 F.3d 915, 920-921(6th Cir. 2003) (finding use of Tiger Woods’ name on prints of painting of Mr. Woods protected by fair use doctrine.)
Accordingly, even those celebrities who have registered their names as marks would have difficulty establishing an actionable infringement claim. Nor would they be likely to fair better by claiming that their likeness is protectable as a trademark.
As a general rule, a person’s image or likeness cannot function as a trademark. ETW Corp., 332 F.3d at 922. In Pirone v. MacMillan, Inc., for example, the Second Circuit rejected a trademark claim brought by the daughters of baseball legend Babe Ruth. 894 F.2d 579 (2nd Cir.1990). The plaintiffs objected to the use of Ruth’s image in the defendant’s calendar. The court rejected this claim, holding that “a photograph of a human being, unlike a portrait of a fanciful cartoon character, is not inherently ‘distinctive’ in the trademark sense of tending to indicate origin.” Id. at 583. Because Ruth “was one of the most photographed men of his generation, a larger than life hero to millions and an historical figure” the Court concluded that a consumer could not reasonably believe that Ruth sponsored the calendar:
[A]n ordinarily prudent purchaser would have no difficulty discerning that these photos are merely the subject matter of the calendar and do not in any way indicate sponsorship. No reasonable jury could find a likelihood of confusion.
Id. at 585.
Similarly, in the case of the “Famous” video, it would be difficult for any of the unhappy celebrities to establish that their image – particularly as used here – is inherently distinctive or could lead consumers to believe that they sponsored the video.
In Part II, we’ll discuss claims for “false endorsement.”