Hilton v. Hallmark

In yet another case of a celebrity claiming ownership of a commonly used term, the AP reported yesterday that Paris Hilton is suing Hallmark over the use of her likeness and the phrase that’s hot in a greeting card. The card has a photo of Hilton’s head superimposed on a waitress’s body and she is telling a customer not to touch a plate because that’s hot.

A search of the US Patent and Trademark database shows that Hilton has indeed trademarked that’s hot for use in marketing alcoholic beverages, electronic devices (cell phones, video games, etc.), and for use on clothing. But greeting cards is not one of the uses filed by Hilton. Having a trademark does not grant you sole license to use a word or phrase in any context, but rather protection is limited to marketing products specifically referred to in the trademark application. The point of trademark law is to prevent customers from becoming confused about who is manufacturing what products.

The AP article errs in referring to the parody fair use defense. Fair use and parody relate to copyright law, not trademark. There is no fair use in using someone else’s trademark to market a competing product, parody or not. All that counts is whether a reasonable person might confuse the Hallmark product and Hilton’s products. But as this appears unlikely in this case, Hallmark is probably on pretty solid ground regarding any possible trademark violation. (Less so on the charges of commercial appropriation of identity, misappropriation of publicity, and false representation. Although, the charge of invasion of privacy is rather silly; as if Hilton herself had not already destroyed any shred of privacy that she might have once possessed.)

The AP report, to its credit, does not refer to this, but many people believe that coining a term is necessary in order to trademark it. It is not. What is important is being the first to use a term to identify particular products and services. Apple Computers obviously did not coin the word apple, but they were the first to use the word in the selling of computers, hence their trademark. If Apple Computers went into the fruit business, they would not be able to prevent competitors from selling apples. Similarly, Hilton was not the first to use the phrase that’s hot, but she is probably the first to slap the phrase onto a line of t-shirts and other clothing.

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