September 06, 2005
More on Rappers and Car Dealers
By Mark McKenna
In the name of not being left out of the interesting discussion about Snoop Dogg's trademark lawsuit against Gary Barbera (not to be confused with Hannah Barbara, of Flintstones fame), I thought I would put in my .02.
As I said in a comment to Eric's previous post regarding 50 Cent's complaint, I think Eric is looking too hard for a specific trademark of Snoop Dogg's that the dealership is using.
From what I can tell from the complaint on The Smoking Gun (it's not the whole complaint), the plaintiff appears to be alleging both trademark infringement under Section 32 and unfair competition under Section 43(a). I don't think the trademark infringement claim is worth discussing. Like Eric, I don't see any possible basis for a claim alleging use of the SNOOP DOGG. In fact, on its own, I think asserting that claim is borderline sanctionable.
But the 43(a) claim seems to me quite plausible. As John noted below, courts have found 43(a) violations in lots of situations where it was hard to identify what "mark" the defendant was using. That's because 43(a) doesn't require that the defendant be using any mark, or even that the plaintiff have a mark. All that is required is that the defendant use something, or some combination of things, that potentially suggests sponsorship or endorsement. I don't like that rule because it seems destined to result in individuals and companies being able to prevent anyone from referring to them at all (or, as Stacey Dogan says, in having the exclusive right to evoke). It is, nevertheless, pretty clear to me that it is the rule.
So it seems to me that there are only really 2 substantive questions in Snoop's case:
1. Does this ad, as a whole, suggest that Snoop Dogg sponsors or endorses the car dealership?
2. Does Snoop's contractual relationship with Chrysler anticipate uses by the dealers?
If the contract doesn't anticipate uses by dealers or at least give Chrysler the right to sublicense (and I'd be surprised if it does), then Snoop's relationship with Chrysler probably doesn't confer any benefits on the dealer. While the dealer can legitimately claim that the suggestion that Snoop sponsors or endorses Chrysler is accurate (i.e., that the ad contains no false designation of origin because Snoop really does endorse Chrysler), I doubt that runs to the dealer. That is an interesting question though, and I am not familiar with any case dealing with that issue. Is anyone else?
UPDATE: Apparently Barbera is claiming that the 50 Cent ad is based on a radio advertisement that 50 Cent did to promote a giveaway at the dealership [I haven't seen a similar claim relating to the Snoop Dogg ad]. That adds an interesting wrinkle to the case. On the one hand, this could be seen as a simple dispute over whether the agreement between 50 Cent and the dealership relating to the radio ad gives the dealership the right to make derivative advertisements. Assuming the contract is silent on the issue, does that impicitly limit the right to use 50 Cent's name/likeness/image to the radio ad? I don't know for sure, but I'd bet that's the way the contract would be interpreted.
On a more theoretical level, however, that doesn't altogether sit well with me. If the 43(a) claim [set aside the right of publicity claim for the moment] turns on the question of whether the dealership is falsely suggesting 50 Cent's sponsorship or endorsement of the dealership, then doesn't the dealer have a pretty good argument that there's nothing false about their suggestion? Isn't there some real sense in which 50 Cent did endorse the dealership? Is this really that different than when Good Housekeeping recommends a product and the product's manufacturers reference that recommendation in an ad? Or when Terri Welles continues to say that she was "Playmate of the Year," when in fact she was?
Of course, in the long run it probably doesn't matter that much if the dealer is able to make that argument effectively because parties with bargaining power (as we might assume celebrity endorsers generally are) will simply contract around the rule by explicitly forbidding additional uses of their name/likeness/image beyond the particular ads contemplated. And the current right of publicity, which is really broad (too broad, in my opinion), surely doesn't care whether 50 Cent really did ever endorse the dealership.
In looking at the ads, I think the dealer might have an argument that he is (perhaps inartfully) using the Snoop Dog references to evoke the television commercials, not to imply sponsorship or endorsement of the dealership. What if the ad said "As seen on Chrysler's television commercial, Snoop Dog says "If the car is fly, then you must buy." Would that make Snoop Dog's case any weaker?
Posted by: John at September 6, 2005 02:28 PM
Mark, I don't disagree with what you've said, although I am not certain that we can identify the boundaries of the implied sponsorship/endorsement doctrine. Trademark owners have carried this doctrine way too far, as Stacey accurately points out. We also have seen its abuse in the initial interest confusion doctrine, where any web-based reference to the trademark has the potential to create an implied sponsorship.
However, we know there have to be limits on the doctrine or else we get the absurd results like Stacey discusses or like we've seen with initial interest confusion. The question is...where are those limits? And where there's no TM use in the advertising copy, I'd propose that we've reached one of those limits. Eric.
Posted by: Eric Goldman at September 6, 2005 04:25 PM
I'm not of the opinion that Fiddy and Snoop's complaints are that off the mark from a 43(a) standpoint.
The car dealer is obviously taking something of value from both rappers in order to promote his business. The taking of that something diminishes the capacity for Snoop and 50 to exploit it themselves.
I do think there's probably some room to invoke a celebrity and do so within the boundaries of trademark law. As John stated above, using "if the ride is more fly, you must buy" is using a Chrysler mark on a Chrysler’s good, assuming it is a mark. I'm not sure if this technically implicates the exhaustion doctrine, but it's pretty close.
I also think the pictures go a long way in this case, at least equitably. It certainly seems more like the rappers are endorsing the dealership when the ad has photos of them. Also, who owns the copyrights in these images?
Posted by: Tom at September 7, 2005 09:37 AM