by Scott Hervey

This is about a birthday card. Not just any birthday card mind you. This birthday card, produced by Hallmark Cards, depicts a cartoon waitress, dressed in an apron, serving food to a restaurant customer. However, not just any waitress could create such a controversy requiring an appeal to the 9th Circuit. This waitress has, for her head, an oversized photograph of Paris Hilton’s head, and is engaged in witty banter with the customer wherein the cartoon waitress with the oversized Paris Hilton head states Paris’ trademarked (yes, she did file for Federal trademark protection) phrase, “That’s Hot.” What’s all the fuss about? Apparently Hallmark forgot to ask the young heiress if they could use her picture on their card.

Hilton sued Hallmark for misappropriation of publicity under California common law as well as other causes of action. Hallmark defended against Hilton’s right of publicity claim based on the First Amendment. Hallmark also brought a unique defense to the table, one that isn’t usually seen in standard right of publicity cases. Hallmark moved to strike Hilton’s right of publicity claim under California’s anti-SLAPP (“Strategic Lawsuit Against Public Participation”) statute. 

California’s anti-SLAPP statute is designed to discourage lawsuits that are brought to deter common citizens from exercising their political or legal rights. The language of the statute explains that “it is in the public interest to encourage continued participation in matters of public significance, and…participation should not be chilled through abuse of the judicial process.” Usually the anti-SLAPP statute arises in connection with litigation relating to the defendant speaking out about an important public issue. In past cases, such matters have included union elections (Macias v. Hartwell, 55 Cal. App. 4th 669); political campaign statements (Conroy v. Spitzer, 70 Cal. App. 4th 1446); homeowner protests (Foothills Townhome Ass’n v. Christiansen, 65 Cal. App. 4th 688); and investigations into the use of charitable funds (Dove Audio, Inc. v. Rosenfeld, Mayer & Susman, 47 Cal. App. 4th 777). My research did not uncover any anti-SLAPP litigation involving a birthday card – until now.

California’s anti-SLAPP statute provides that a complaint which arises from the defendant’s right of petition or free speech under the United States or California Constitution in connection with a public issue shall be subject to a special motion to strike, unless the court determines that the plaintiff has established that there is a probability that the plaintiff will prevail on the claim. The terms, "act in furtherance of a person’s right of petition or free speech under the United States or California Constitution in connection with a public issue," include:

(1) any written or oral statement or writing made before a legislative, executive, or judicial proceeding, or any other official proceeding authorized by law;
(2) any written or oral statement or writing made in connection with an issue under consideration or review by a legislative, executive, or judicial body, or any other official proceeding authorized by law;
(3) any written or oral statement or writing made in a place open to the public or a public forum in connection with an issue of public interest;
(4) or any other conduct in furtherance of the exercise of the constitutional right of petition or the constitutional right of free speech in connection with a public issue or an issue of public interest.

Hallmark’s unique defense focused on the fourth element. The court recognized the birthday card qualified as free speech, and Hallmark claimed that because the card was a parody of Hilton, it was in connection with an issue of public interest. Hilton argued that the birthday card was commercial speech and that such speech cannot, as a matter of law, raise a public issue under the anti-SLAPP statute. 

The court disagreed with Hilton’s position and found that the card itself was not commercial speech. Commercial speech is speech that merely advertises a product or service, and the card is not advertising for a product – it is the product. The court stated that although the card is sold for profit, that does not make it commercial speech for First Amendment purposes.

Concerning whether or not the Paris Hilton card is in connection with an issue of public interest, the court agreed with Hallmark. Paris Hilton is a person in the public eye and a topic of widespread public interest. Arguably not the same as a union voting controversy, but the court stated that the statute is to be interpreted broadly.

Although Hallmark made a threshold showing that Hilton’s suit falls under the anti-SLAPP rubric, that did not prevent Hilton from litigating her right of publicity claim.  Even though Hilton’s claim arises out of Hallmark’s free speech, as long as Hilton can substantiate a legally sufficient claim, the anti-SLAPP statute would not prevent her bringing such claim.

Addressing Hallmark’s First Amendment defense, the court cited to Comedy III Prods., Inc. v. Saderup and noted that “when an artist is faced with a right of publicity challenge to his or her work, the artist may raise as an affirmative defense that the work is protected by the First Amendment inasmuch as it contains significant transformative elements or that the value of the work does not derive primarily from the celebrity’s fame.” If the celebrity likeness is the “very sum and substance” of the work in question, then it is not transformative – it has not become primarily the defendant’s own expression rather then the celebrity’s likeness.

Ultimately the 9th Circuit did state that Hallmark’s card is not transformative as a matter of law. The court also clearly identify the two ends of the spectrum: “literal, conventional depictions of the Three Stooges drawn in charcoal and sold on t-shirts” – not transformative as a matter of law; half human/half worm cartoon characters incorporated into a larger story – transformative as a matter of law. The oversized head of a blond “celebra-heiress” superimposed on a cartoon body on the front of a greeting card – for the trial court to decide.