“ariana-grande-performs-onstage-during-the-sweetener-world-news-photo-1136748930-1553206712”by batud@rocketmail.com is licensed under CC BY 2.0
Blythe McGregor, Associate Member, University of Cincinnati Law Review
Celebrity endorsement is associated with an average four percent increase in sales.[1] Celebrity brand deals are becoming more prevalent with the rise of social media fame and influencer marketing. Brands are eager to associate their names with popular celebrities to reach the celebrities’ millions of followers on social media. It is easier than ever to share fashion trends, many of which become popular because of the celebrities associated with them. Where is the line drawn between promoting celebrity fashion trends and exploiting a celebrity’s likeness without permission to increase sales? Fast-fashion retailer Forever 21 is about to find out.
In early September 2019, pop singer Ariana Grande filed suit against Forever 21 in Los Angeles federal court.[2] The complaint alleges right of publicity violations, as well as false endorsement, trademark infringement, and copyright infringement.[3] Grande claims that Forever 21 violated Grande’s right of publicity when Forever 21 posted pictures, videos, and lyrics without Grande’s permission on the company’s Instagram account, and used a look-alike model dressed in clothes similar to those worn in Grande’s “7 Rings” music video.[4] In one post, the look-alike model sported Grande’s slicked-back high ponytail with two pink puff balls atop her head, just like the ones Grande wore in her music video.[5] The caption featured lyrics from “7 Rings.” In another post, the same model wore camouflage pants and pink shoes similar to another of Grande’s “7 Rings” looks.[6] Side-by-side comparisons of the posts and the music video were displayed in the complaint.[7] Forever 21 and its beauty company, Riley Rose, also allegedly posted pictures of Grande clipped from her music videos.[8] According to the complaint, Forever 21 agreed to remove the pictures from social media in February when contacted by Grande’s legal team, but did not remove them until April.[9] Grande asked for $10 million in damages.[10]
Grande was aware of Forever 21’s desire to promote its products alongside her name and image. Grande and Forever 21 were in negotiations for a marketing campaign before the allegedly infringing images were posted.[11] The agreement did not come to fruition.[12] Forever 21 recently filed for bankruptcy, which may have been the reason why it was unable to afford a brand deal with a public figure.[13]
Grande’s legal team will be able to present a solid case for its copyright, trademark, and right of publicity claims. These claims are supported by statutory law and caselaw. In this article, each intellectual property claim will be analyzed regarding facts of this case and in the broader context of social media marketing.
Copyright Claim
Federal copyright law protects “original works of authorship fixed in any tangible medium of expression.”[14] Works of authorship include musical works, accompanying words, motion pictures and other audiovisual works, among other works of authorship.[15] These works are fixed when they are “sufficiently permanent or stable” to allow perception, reproduction, or communication for a “period of more than transitory duration.”[16] Copyright protection begins at the moment that an original work is created and fixed in a tangible medium of expression.[17] Grande’s original, fixed works, such as her songs, their lyrics, and her music videos are covered by copyright law. However, many Instagram users, beyond large corporations, post screenshots of celebrity music videos and caption their posts with song lyrics.[18]
Not every unauthorized use of a copyrighted work infringes the copyright owner’s rights; copying will be excused if a court determines the copying qualifies as “fair use.”[19] The “purpose and nature of the use” factor of the fair use exception differentiates between personal Instagram use and use of copyrighted material for a commercial purpose. When the secondary use of copyrighted material is commercial, this use “tends to weigh against a finding of fair use,” although this consideration should not be determinative.[20] Instead, if the secondary use is transformative, other factors, such as commercialism, are given less weight.[21] A work is transformative when it adds something new to the primary use of the copyrighted material.[22] Because Forever 21 was sharing Grande’s unaltered lyrics and digital copies of her music videos with the goal of influencing consumers, a court will likely hold that this use is not fair use. The balance between commercial use and transformative use may be difficult to weigh in other circumstances that have yet to be addressed by courts. For example, what if a social media influencer posts a picture of a product for a brand deal to the influencer’s personal Instagram account with copyrighted song lyrics as a caption?
Trademark Claim
Trademark law protects words, names, symbols, or devices that identify the source of goods or services from those sold by others.[23] Ariana Grande is suing Forever 21 for trademark infringement because of the company’s unauthorized use of her name, which Grande has trademarked to use in conjunction with sales of clothing, cosmetics, and other products.[24] Courts look to the “likelihood of confusion” to determine if trademark infringement has occurred.[25] Confusion refers to confusion about the source or affiliation of the good or service.[26] This means more than just the mere possibility of confusion.[27] The Ninth Circuit, the appeals court with jurisdiction over appeals from the Los Angeles district court in which Grande filed, considers eight factors when making this determination.[28] These factors include the defendant’s intent, evidence of actual confusion, and degree of care exercised by potential purchasers with regard to the particular type of goods being advertised.[29]
The nature of the advertising method used by Forever 21 raises issues unique to social media and online marketing. Social media posts are visually consumed at a fast rate.[30] It is not difficult to imagine consumers internalizing images without making reasoned judgments as to the source or reliability of this visual information. It is clear from Forever 21’s social media posts featuring Grande’s face and name that the company would like its products to be associated with the pop star with the goal of increasing sales. When both the singer’s name and the company’s name are used in conjunction, it is likely that Forever 21 is hoping that consumers will associate the two names. Therefore, Forever 21’s intent likely weighs in favor of confusion.
Also, Grande likely has an argument that Forever 21’s followers and customers expressed actual confusion on the social media posts themselves. Social media allows its users to comment on most posts and such comments are posted without the consent of the original posting account. Forever 21 followers may have discussed Ariana Grande’s music or style in the comment section and also may have commented on Grande’s apparent sponsorship with Forever 21. Although the posts have been deleted, Grande’s legal team likely has records of the comments on the posts that would function as evidence of actual confusion and weigh in favor of trademark infringement.
Courts have expressed that buyers take little care when choosing to purchase inexpensive items, especially when such items are purchased impulsively.[31] The fast-paced nature of taking action on social media also supports the idea that Forever 21 purchasers are unlikely to take care when purchasing items online. Instagram marketing makes it easy to make these impulsive buys: most posts are linked directly to a webpage where a consumer can purchase the item with a few clicks. It is becoming increasingly difficult to distinguish between a personal post and a marketing campaign. Many users are likely not interested in taking the time to make this distinction. Therefore, the likelihood of confusion when using social media to view marketing campaigns is high.
Right of Publicity Claim
Right of publicity law protects the right of an individual to have control over the use of his or her own name and likeness.[32] This law comes from state statutes and common law.[33] For example, California’s right of publicity statute is § 3344 of the California Civil Code and protects use of another’s name, voice, signature, photograph, or likeness.[34] Although most statutes enumerate means of infringement like the California statute, courts note that it is not important how identity is appropriated.[35] It is most important to discern that the identity has in fact been appropriated.[36] One reason for these laws is to protect a celebrity’s interest in her identity because such identity has value.[37] Celebrity identity can be used for promotional purposes and that celebrity alone has the right to exploit this value.[38]
It is likely that the unauthorized use of Grande’s image in the form of clips from her music video falls under the statute. However, does the Forever 21 model conjure up the likeness of Grande? Precedent implies that it does not matter whether the model herself looks sufficiently similar to Grande. If a celebrity’s identifiable traits or features are used such that the identity portrayed is easily distinguished, a right of publicity violation is supported.[39] Courts look to the totality of the image used in determining whether a celebrity’s likeness has been appropriated.[40] Therefore, it is not the individual attributes of a celebrity used in isolation that give rise to a right of publicity claim.[41] Here, it is not the fact that Forever 21 used a brunette model with a ponytail, or that she wore pink hair accessories. Beyond the model used, Forever 21 also used the same logo featuring the number “7” from the “7 Rings” music video.[42] Even if no look-alike model had been used, this might be enough to support a right of publicity claim.[43] By quoting Grande’s lyrics, Forever 21 ensured that the model in the photos would conjure up the pop star’s iconic image. It is the combination of these things that evoked the image of Grande.
Conclusion
Forever 21’s marketing team was bold when crafting a scheme implying an endorsement with one of the most popular vocalists of the moment. Looking at the relevant case law and statutory law, Grande’s legal team has a solid case for its intellectual property claims. The sheer mass of information, images, and advertisements on social media makes it more difficult than ever to distinguish between sharing trending images with followers and exploiting celebrity identity for commercial gain. Retailers remain free to capitalize on current trends worn by celebrities but should be cautious to avoid confusing consumers, who may not realize their confusion before hitting the “submit order” button.
[1]Steve Olenski, How Brands Should Use Celebrities For Endorsements, Forbes, (July 20, 2016, 2:43 PM) https://www.forbes.com/sites/steveolenski/2016/07/20/how-brands-should-use-celebrities-for-endorsements/#453cd6935593.
[2]Jonathan Stempel, Ariana Grande Sues Forever 21 for $10 million Over Look-Alike Ad Campaign, Reuters, (September 3, 2019, 9:18 AM) https://www.reuters.com/article/us-music-ariana-grande-forever-21/ariana-grande-sues-forever-21-for-10-million-over-look-alike-ad-campaign-idUSKCN1VO1JG.
[3]Complaint, Ariana Grande-Butera v. Forever 21, Inc., and Riley Rose LLC, 2:19-cv-07600 (C.D. Cal. September 2, 2019).
[4]Id.
[5]Id. at 10.
[6]Id.
[7]Id.at 8-10.
[8]Id. at 18.
[9]Id. at 11.
[10]Id. at 19.
[11]Id. at 6-7.
[12]Id.at 7.
[13]See Nathaniel Meyersohn & Chris Isidore, Forever 21 Files for Bankruptcy and Will Close up to 178 US Stores, CNN, (September 30, 2019, 2:34 PM) https://www.cnn.com/2019/09/29/business/forever-21-bankruptcy/index.html.
[14]17 U.S.C. §102(a).
[15]Id.
[16]17 U.S.C. §101.
[17]JCW Investments, Inc. v. Novelty, Inc., 482 F.3d 910, 914 (7th Cir. 2007).
[18]See Caroline E. Kim, Note, Insta-Fringement: What Is A Fair Use on Social Media, 18 J. Marshall Rev. Intell. Prop. L. 102, 114 (2018).
[19]17 U.S.C. § 107.
[20]Oracle Am., Inc. v. Google LLC, 886 F.3d 1179, 1196-97 (Fed. Cir. 2018).
[21]Id. at 1198.
[22]Id.
[23]15 U.S.C. § 1127.
[24]Complaint at 15-16, Ariana Grande-Butera v. Forever 21, Inc., and Riley Rose LLC, 2:19-cv-07600 (C.D. Cal. September 2, 2019).
[25]Streamline Prod. Sys., Inc. v. Streamline Mfg., Inc., 851 F.3d 440, 453 (5th Cir. 2017).
[26]Id.
[27]Id.
[28]Allstate Ins. Co. v. Kia Motors Am., Inc., No. 18-55164, 2019 WL 4233634, at *1 (9th Cir. Sept. 6, 2019).
[29]Id. at 1-3.
[30]See Robin Selvy Re, The Speed of the Social Feed [Infographic], Social Media Today, (March 24, 2018) https://www.socialmediatoday.com/news/the-speed-of-the-social-feed-infographic/524147/.
[31]Sally Beauty Co. v. Beautyco, Inc., 304 F.3d 964, 975 (10th Cir. 2002).
[32]Cal. Civ. Code § 3344.
[33]See Complaint at 12-13, Ariana Grande-Butera v. Forever 21, Inc., and Riley Rose LLC, 2:19-cv-07600 (C.D. Cal. September 2, 2019).
[34]Cal. Civ. Code § 3344.
[35]White v. Samsung Elecs. Am., Inc., 971 F.2d 1395, 1398 (9th Cir. 1992).
[36]Id.
[37]Id. at 1399.
[38]Id.
[39]Motschenbacher v. R. J. Reynolds Tobacco Co., 498 F.2d 821, 827 (9th Cir. 1974).
[40]White 971 F.2d at 1399.
[41]Id.
[42]Complaint at 9, Ariana Grande-Butera v. Forever 21, Inc., and Riley Rose LLC, 2:19-cv-07600 (C.D.Cal. September 2, 2019).
[43]See Motschenbacher 498 F.2d at 827 (holding though even though race car driver himself was not visible, distinctive markings on car were sufficient to evoke identity of the driver).
