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Ariana Grande Tests When Lookalikes Can Look Too Much Alike

Sept. 20, 2019, 8:51 AM

Ariana Grande’s claim that Forever 21’s use of lookalike models violates her right to control her image might seem unusual—but Vanna White once argued the same about a gold robot, and won.

Grande has filed a $10 million right-of-publicity lawsuit accusing the fast-fashion retailer of using models that resemble her to hawk clothing. The case highlights the question of just how closely a model or voice actor has to resemble a celebrity to violate state right-of-publicity laws or false endorsement provisions of federal trademark law.

How courts rule on the issue influences what aspects of a persona—such as voice, appearance or even circumstantial elements like a setting—can appear in product marketing without drawing legal fire from a celebrity.

“Where you draw the line of what is a recognizable likeness and what isn’t, I don’t think I could give you an exact point where the line cuts” under right-of-publicity laws, Cynthia S. Arato, an intellectual property attorney at Shapiro Arato Bach LLP said. “I think in layman’s terms, if you look at the picture and the public would say, ‘Oh that’s Ariana Grande,’ that’s a recognizable likeness.”

Right-of-publicity laws, which vary by state, prohibit unlicensed use of a name, image or likeness to sell a product. False endorsement provisions bar creating a false impression that an entity endorses a product.

Grande pointed to 30 instances in which Forever 21 allegedly harnessed her fame, mostly in Instagram posts, to deceive consumers without compensating her, in a Sept. 2 complaint in the U.S. District Court for the Central District of California.

Forever 21 used “strikingly similar” models dressed and posed like Grande, was in her music video “7 Rings,” Grande alleged, including one featuring a graphic “7” identical to one in th video. Forever 21 didn’t immediately respond to a request for comment.
Grande joins several other celebrities, including White, Woody Allen and Bette Midler, who have pursued such lawsuits.

Some celebrities have successfully used trademark law to prohibit a company from evoking them without using an actual name or image. Courts have long held lookalikes can violate a person’s right of publicity, intellectual property law professor Jennifer Rothman of Loyola Marymount University said.

Disputes over whether right-of-publicity laws require the individual’s actual name or image, as well as First Amendment defenses, can factor into gray areas not fully explored by courts, she said.

“This case raises issues of how for-profit companies use celebrities in their social media accounts. There are lots of open questions here,” Rothman said about Grande’s lawsuit.

Question of Confusion

Grande sued under the Lanham Act’s false endorsement language, California’s right-of-publicity law and California common law involving general wrongful actions leading to injury. Forever 21 also used actual photos of her as well as her name and trademarks to harness Grande’s fame without compensating her, the pop star alleged.

That Forever 21 copied a general look and hairstyle likely wouldn’t be enough for Grande to prevail, attorneys said. A social media influencer, Gianluca Vacchi, lost his suit against E-Trade Sept. 16 because a character in its commercials exhibited only general aspects of his persona. Attorneys say Forever 21 went further.

“There are so many elements in play in what Forever 21 did beyond a brunette who dressed how Ariana Grande is known to dress,” Arato said.

The false endorsement provisions in the Lanham Act cover lookalike cases better than right of publicity, intellectual property attorney Richard Z. Lehv of Fross Zelnick Lehrman & Zissu PC said.

“If you sue under the Lanham Act, then it’s a question of likelihood of confusion,” Lehv said. Grande has to meet a multi-factor test used in trademark law to show consumers would be misled.

“Elements designed to look like the Ariana Grande video, you add them to the likelihood of confusion analysis and increase the risk a jury will find, ‘That seems to be Ariana Grande,’” Lehv said.

In a 1985 case, Woody Allen won a false endorsement claim over National Video, a now-defunct video rental store chain, over an ad featuring Allen-impersonator Phil Boroff. The court didn’t rule on Allen’s right-of-publicity claim, but called it “problematic” because Boroff had a right of publicity based on his own face.

Free Speech Defense

Some plaintiffs have defeated imitators under right-of-publicity protections. Statutes generally prohibit lookalike claims because an actual name or image isn’t used, Lehv said. But imposter claims under common law have proven more successful.

The U.S. Court of Appeals for the Ninth Circuit said California common law right-of-publicity can block voice imitators in granting wins to actress Bette Midler in lawsuits against Ford Motor Co. in 1988 and singer Tom Waits against Frito-Lay Inc. in 1992.

And then there was Vanna White and the robot—which didn’t look or sound like her at all. White sued Samsung Electronic Arts America Inc. over an ad featuring a gold robot in a gown and wig turning letters on a set that resembled the “Wheel of Fortune” TV game show.

The Ninth Circuit in 1992 confirmed dismissal of a statutory right-of publicity-claim, but let White’s Lanham Act and common law claims go to a jury. It awarded her $400,000.

Lehv called that outcome “ridiculous,” pointing to a dissent from the Ninth Circuit panel. The dissent argued a gown, blond hair, jewelry and set not owned by White couldn’t constitute a likeness, and that hosts and actors could use the majority’s logic to prevent anyone remotely similar from replacing them. It also blasted the majority’s finding that consumers could think White endorsed Samsung, and its casual dismissal of Samsung’s First Amendment parody defense.

Forever 21 could try to mount a First Amendment defense against some of Grande’s allegations, Rothman said. The retailer could argue that at least some of the pictures it used informed the public about Grande’s album release or fashion choices, even if the pictures included Grande herself.

“Evocation is protected free speech,” Rothman said.

To contact the reporter on this story: Kyle Jahner in Washington at kjahner@bloomberglaw.com

To contact the editors responsible for this story: Keith Perine at kperine@bloomberglaw.com; Cheryl Saenz at csaenz@bloombergtax.com

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