Legal Analysis of False Endorsement Claims and Right of Publicity

Graffiti artists Nekst and Bates have filed a lawsuit against Guess and Macy’s for incorporating their tags in various articles of clothing. Scott Hervey and James Kachmar discuss this case in the next installment of “The Briefing.”

Watch this episode on the Weintraub YouTube channel here.

Show Notes:

Scott:
This case is a head-scratcher. Graffiti artists Nekst and Bates have filed the lawsuit against Guess and Macy’s for incorporating their tags in various articles of clothing manufactured by Guess and sold by Macy’s. I’m Scott Hervey from Weintraub Tobin, and I’m joined today by my partner, James Kachmar. We are going to talk about this lawsuit on the next installment of “The Briefing” by Weintraub Tobin. James, welcome back to “The Briefing.”

James:
Thanks, Scott.

Scott:
So it seems that Guess manufactured various clothing items that incorporated the tags of graffiti artists Nekst and Bates, and those pieces of clothing were then sold by Macy’s. Now, a tag, in the parlance of street art, graffiti art, is a design element that reflects, among other things, the artist’s elaborately expressed signature or name. The plaintiffs contend that these tags are the primary calling cards and source identifiers of their artwork and, well, themselves.

James:
That’s right, Scott. The plaintiffs in this case bring a number of claims in the complaint, including a false endorsement claim under the Lanham Act, a right of publicity claim under California law, and a copyright infringement claim. Let’s talk first about the Lanham Act claim.

Scott:
Sure. So that’s section 43A of the Lanham Act, and that imposes civil liability on any person who, on or in connection with any goods or services, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin or false or misleading description of fact or false or misleading representation of fact which is likely to deceive consumers. As to the affiliation, connection, association, sponsorship, or approval of another person’s goods or services, courts have held that a person’s physical likeness, voice, or other unique or distinguishing characteristic, such as a signature, constitutes a symbol or device as specified in that section.

James:
That’s right, Scott. The mere use of a celebrity’s image or likeness is not ordinarily actionable. But using the celebrity’s image or likeness to suggest sponsorship or approval could constitute false endorsement where the celebrity hasn’t, in fact, given their endorsement. A false endorsement claim must also be something that is likely to confuse consumers or must lead them to thinking that the celebrity endorsed a product or brand when, in fact, they actually have not.

Scott:
That’s right, James. The complaint alleges that Guess falsely used artwork reflecting artists’ names and signatures on apparel, creating the false impression that the artists endorsed Guess and Macy’s. Now, we can’t show you the pictures of the apparel on the podcast, but it’s pretty blatant. The plaintiffs argue that the use of the artist’s name and signature is designed to create and does, in fact, create the false and deceptive commercial impression that these artists and their products are somehow associated with or somehow endorse the Guess merchandise.

James:
So, Scott, I suppose that Guess may try to argue that a tag is not a symbol device or any of the other enumerated items in section 43A. That seems like a pretty thin argument.

Scott:
Yeah, I would agree with you, James. It does seem like a thin argument.

James:
So, Scott, what about the California right of publicity claim?

Scott:
Well, California Civil Code section 33 44A provides any person who knowingly uses another’s name, voice, signature, photograph, or likeness, in any manner on or in products, merchandise, or goods, or for the purpose of advertising or selling or soliciting purchases of products, merchandise, goods, or services without that person’s prior consent, or in the case of a minor, the prior consent of the parent or legal guardian shall be liable for any damages sustained by the person or persons injured as a result thereof. So, the plaintiffs claim that Guess is using their name and their signature on merchandise, and they also claim that Macy’s is using their name and their signature in advertisements to sell Guess’ merchandise.

James:
Seems to be a very straightforward claim. Scott, what about the copyright claim? Normally, the Copyright Office will not recognize a copyright using short words or phrases.

Scott:
That’s true, James. The Copyright Office generally does not recognize a copyright in short words or phrases. Now, this claim is advanced by Bates only the depiction of Bates’ signature. It does have a very unique design elements, design element. Nekst does as well, but I think the reason why this is advanced by Bates only is because it seems that Bates has secured a copyright registration in the graphic depiction of his signature. And we know that a copyright registration is a prerequisite to the filing of a copyright infringement claim. So, it might be possible that Nekst just had not secured a copyright registration for the graphic depiction of his signature. So, to me, it seems like Bates has sufficiently pled a copyright claim, right?

James:
And it’s not readily apparent to me what defenses Guess may rely on. I guess we’ll have to wait and see and maybe do another briefing on this topic in the future.

Scott:
Yeah, we’ll definitely wait and see what happens. I suspect, though, this case is going to be settled rather quickly. That’s my guess. Thank you for listening to this episode of “The Briefing.” We hope that you enjoyed this episode. If you did, please remember to subscribe. Leave us a review and share this episode with your friends and colleagues. And if you have any questions about the topics we covered today, please leave us a comment.