By Andie Anderson
On September 2, 2019, Ariana Grande filed suit against Forever 21 in the latest controversy between fast fashion brands and social media influencers.[1] Ms. Grande seeks almost ten million dollars for Forever 21’s alleged unauthorized use of her “name, image, likeness, and music to promote [its] brands and products” on Instagram.[2] Ms. Grande asserts Forever 21’s actions constitute a “blatant and willful” violation of her right to publicity and trademark protection under both state law and the federal Lanham Act.[3] Though the complaint also seeks damages for copyright infringement,[4] the lawsuit presents an insight into social media influencers’ attempts to protect their commercial interests with the legal jurisprudence of trademarks and the Lanham Act.
Ms. Grande’s complaint tells a story of her rise to be one of the world’s most influential social media stars and Forever 21’s “unlawful conduct as a desperate attempt to stay relevant and profitable” after recent economic decline.[5] As of February 2019, and through the date of filing, Ms. Grande became the most followed woman on Instagram, with over 160 million followers.[6] Her success as a singer and presence on social media allowed Ms. Grande to expand her business beyond music and into the sphere of commercial endorsements.[7] The singer charges six figures for a single Instagram post and seven to eight figures for long term endorsement deals and marketing campaigns.[8] In November 2018, Forever 21 approached Ms. Grande to develop a long term endorsement deal for its upcoming fashion line.[9] Negotiations ultimately fell through when the parties failed to agree on the compensation for use of Ms. Grande’s image and name.[10]
Inspired by Ms. Grande, or perhaps undeterred by failed negotiations, Forever 21 nevertheless produced a series of social media posts that look strikingly similar to Ms. Grande’s 7 Rings video. In a series of side by side images, the complaint shows how the symbols, color scheme, photographic composition, and costumes of Forever 21’s posts are nearly identical to Ms. Grandes music video.[11] In at least one of the posts, Forever 21 tagged “@arianagrande” in the description of the image.[12] Because the post used her name in a tag, Ms. Grande alleges that Forever 21 used her federally registered Ariana Grande mark in commerce and committed trademark infringement under the Lanham Act.[13] Ms. Grande also argues that the photographic similarities between herself and the Forever 21 posts are likely to deceive followers into thinking that she endorses the brand, and thus the posts amount to false endorsement under the Lanham Act.[14]
Ms. Grande’s lawsuit highlights the birth of the social media influencer industry and its attempt to find legal protection in the Lanham Act. Social media influencers generally consist of celebrities, fashion models, reality television stars, actors, and athletes who have substantial social media followings.[15] Influencers generate profit by accepting money from brands to endorse and feature products in social media posts.[16] Typically, social media influencers can earn up to six figures per single post and seven figures for long term corporate endorsement partnerships.[17] The social media influencer industry has grown so large that Forbes ran a “Top Influencers” series in 2018.[18] As an influencer’s opinion and endorsement of products provide a source or profit for the individual, the social media influencer will need to find ways to protect his or her distinct image and prevent brands from circumventing licensing agreements by creating their own confusingly similar posts.
Where influencers like Ariana Grande have registered their name as a trademark, the Lanham Act provides a cause of action for trademark infringement if a brand uses that mark to advertise its goods. The Lanham Act prohibits the “use in commerce of a reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services [in a manner that is] likely to cause confusion, or to cause mistake, or to deceive.”[19] Because Ms. Grande has successfully registered her name in association with fashion apparel and perfumes, she can limit others’ ability to use the mark in promoting similar goods. However, Ms. Grande will need to convince the court that Forever 21’s @arianagrande tag meets the definition of “use in commerce” under the Lanham Act. Traditionally, “use in commerce” is established when a brand “placed in any manner on the goods . . . or displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale.”[20] In the past, courts have relaxed the “use in commerce” element to include use of another’s mark as an ad word in an internet search engine to trigger the appearance of advertisements for a competitors website.[21] However, the Lanham Act does provide a defense for “use, otherwise than as a mark, . . . which is descriptive of and used fairly in good faith.”[22]
Social media presents a novel question of infringement when a brand tags an artist with her username in a post and the artist’s name is also a registered trademark. Though there are no cases directly on point, @ mentions on Instagram and twitter are typically not trademark infringement because they are not used as advertisements in commerce. Individuals routinely tag each other on social media platforms as a way to build connections and draw viewership to a profile. Forever 21 may attempt to argue that tagging Ms. Grande was not commercial use of her mark because it was fairly used according to the common use of tags on Instagram. The problem arises when that tag is used as an attempt to trigger attention to an advertising campaign. Some courts have analyzed a similar problem with hashtags and are split as to whether hashtag use constitutes trademark infringement.[23] Courts may analyze the use of hashtags as trademark use or infringing use depending on the facts of the mark’s use by the owner and alleged infringer.[24]
In addition to strict trademark infringement, social media influences may use the Lanham Act’s cause of action for false endorsement when a brand attempts to use their signature dress or style in advertisements. Section 43(a) of the Lanham creates liability for “[a]ny person who, on or in connection with any goods or services, … uses in commerce … false or misleading representation of fact, which is likely to cause confusion … as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person.[25] Courts have held that “this provision of the Lanham Act ‘is an appropriate vehicle for the assertion of claims of falsely implying the endorsement of a product or service by a real person.’”[26] Celebrities have used Section 43(a) to assert claims similar to Ariana Grande’s where a brand uses a deceptively similar model and costume to their own signature look.[27]
However, celebrities have difficulty asserting a false endorsement claim under 43(a) because defendants often raise a First Amendment defense.[28] As the Ninth Circuit observed, the “[Lanham Act] Section 43(a) protects the public’s interest in being free from consumer confusion about affiliations and endorsements, but this protection is limited by the First Amendment, particularly if the product involved is an expressive work.”[29] Courts use the Rogers test to balance the First Amendment rights of the alleged infringer and the right to trademark protection of the party claiming false endorsement.[30] However, the Rogers test balancing First Amendment rights only applies in the context of expressive works.[31] If the works is commercial, and not expressive, then the court will allow a false endorsement claim to survive a motion to dismiss.[32] Though Forever 21’s Instagram Post could be fairly described as commercial, Courts do not always find the distinction to be as clear cut as it may appear.[33]
Still photos from the 7 Rings video and Forever 21’s posts appear so similar that issues
of fairness immediately arise in the mind of the ordinary viewer. Is it fair for a brand, inspired by an
influencer, to create and post images that use his or her look or style? Is it fair for a brand to tag an influencer in
a post? What if, instead, we inquired
whether it was fair for an individual, motivated by social concerns rather than
economic, to post images similar to Forever 21’s? It is likely that Ariana Grande would take
offense to identical actions of an individual fan to that of Forever 21 and
pursue legal action. However, when a
brand posts images in order to skirt the high expense of establishing a formal endorsement
relationship, the law must provide some way for influencers to protect their
identity from misappropriation. Ms.
Grande’s case will be a lesson on whether the courts believe the Lanham Act
provides an such protection.
[1] Complaint at 1, Ariana Grande-Butera, No. 2:19-cv-07600 (C.D. Cal. Sept. 9, 2019). Complaint at 1, Ariana Grande-Butera, No. 2:19-cv-07600 (C.D. Cal. Sept. 9, 2019).
[2] Id. at 2, 12.
[3] Id. at 2. See 15 U.S.C. § 1125(a); 15 U.S.C. § 1141(1).
[4] Id.
[5] Id. at 6.
[6] Id. at 4.
[7] Id. at 5.
[8] Id. at 7.
[9] Id. at 6.
[10] Id. at 7.
[11] Id. at 8–10.
[12] Id. at 9.
[13] Id. at 16.
[14] Id. at 14.
[15] Jessica Elliott Cardon, Co-Branding with Influencers Is in Fashion and No Longer A Trademark Faux Pas, 108 Trademark Rep. 1057, 1059 (2018).
[16] Id.
[17] See, e.g., Zach Blumenfeld, Selling the Artist, Not the Art: Using Personal Brand Concepts to Reform Copyright Law for the Social Media Age, 42 Colum. J.L. & Arts 241, 246 (2019) (stating that Logan Paul commands 150,000 per sponsored Facebook post and 80,000 per Instagram post, and the influencers behind the popular “What’s Up Moms” YouTube channel earn up to seven figures per long term corporate endorsement contract.).
[18] Id.
[19] 15 U.S.C. § 114(1)(a).
[20] 15 U.S.C. § 1127.
[21] 1-800 Contacts, Inc. v. Lens.com, Inc., 755 F. Supp. 2d 1151 (D. Utah 2010) (finding a competitor’s purchase of Google adwords to drive attention from search responses towards a competing brands website constituted “use in commerce” in a trademark infringement action); Rescuecom Corp. v. Google, Inc., 562 F.3d 123 (2d Cir. 2009) (holding sale of adwords that are deceptively similar to another’s trademark so that third parties may use the adwords to drive attention towards their competing products constitutes “use in commerce.”)
[22] 15 U.S.C. § 1115.
[23] Internet hashtags, 1 McCarthy on Trademarks and Unfair Competition § 7:17.70 (5th ed.).
[24] Id.
[25] 15 U.S.C. § 1125(a)(1).
[26] See Burck v. Mars, Inc., 571 F.Supp.2d 446, 455 (S.D.N.Y. 2008) (quoting Albert v. Apex Fitness Inc., No. 97 Civ. 1151(LAK), 1997 WL 323899, *1 (S.D.N.Y. June 13, 1997)). See also J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 28:15 (4th ed.1996).
[27] See Burck, 571 F.Supp.2d (considering New York celebrity, Naked Cowboy, who brought suit against M & M for advertisement of a cartoon character in his signature outfit and of underwear, boots, and cowboy hat.); Brown v. Electronic Arts, Inc., 724 F.3d 1235 (9th Cir. 2013) (considering an NFL player’s assertion of a Section 43(a) false endorsement claim for use of his likeness in a videogame character.).
[28] See, e.g., Burck, 571 F.Supp.2d at 455; Brown, 724 F.3d at 1241.
[29] Brown v. Electronic Arts, Inc., 724 F.3d 1235, 1239 (9th Cir. 2013).
[30] Rogers v. Grimaldi, 875 F.2d 994, 999 (2nd Cir. 1989); Brown, 724 F.3d at 1239 (“Under the Rogers test, § 43(a) will not be applied to expressive works unless the [use of the trademark or other identifying material] has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the [use of trademark or other identifying material] explicitly misleads as to the source or the content of the work.”) (internal quotations omitted).
[31] Id.
[32] Id. at 1001.
[33] Burck, 571 F.Supp.2d at 457 (characterizing an animated cartoon advertisement on Times Square as a “hybrid” use which was “commercial in part and artistic in part” and denying plaintiff’s motion to strike parody and free speech defense).
