Woman in Video Loses Fight Over TGI Friday’s Commercial
February 24, 2017
by Jerry Glover
An actor, Shoshana Roberts, agreed to be the center of attention in a documentary video that attempted to show how women are verbally harassed on the streets of New York City. For ten hours she walked around the city using a hidden camera to film the catcalls from strangers (e.g., “Damn! Damn!, “Looking good!”, “How Are You This Morning?”). The resulting two minute video later gained 41 million views on YouTube alone. Roberts claimed the video made her into a public figure and celebrity overnight.
The filmmaker, Rob Bliss, licensed footage from the video to an ad agency that turned it into a commercial for TGI Friday’s. But instead of showing Roberts walking down the street, the agency imposed various TGI Friday’s appetizers over her image (completing blotting her out) but kept in the soundtrack of catcalls. The result was a 15 second and a 30 second commercial showing appetizers “walking” down the street and the resulting catcalls (e.g., “Looking good!”) following them.
For a look at both the original Bliss video and the 15 second TGI commercial, go here:
Roberts alleged that the commercials violated her rights under Section 43(a) of the federal trademark law (the Lanham Act). That section prohibits the use in commerce of any “word, term, name, symbol or device” that would cause give the false impression that Roberts approved of or endorsed the TGI Friday’s commercials.
The federal district court in New York, however, disagreed. Roberts v. Bliss, 2017 WL 354186 (S.D.N.Y. January 24, 2017). It did note that Section 43(a) has been interpreted to include the right of celebrities or public figures to use that statute if another party is conducting promotions which lead to the false conclusion that the celeb/public figure is endorsing that party’s products/services. But TGI Friday’s, the court noted, did not use Roberts image in the commercials. The appetizers superimposed over her body in the commercials, for the most part, completely blocked out her image.
Robert argued that her “persona” had been used in the commercials. The court noted that “persona” includes more than a person’s likeness defining persona as “the aspect of a person’s character that is displayed to or perceived by others.” Earlier cases found that a person’s distinctive voice could be part of their persona and that a race car driver’s stylized race car could be part of the driver’s persona. Even a person’s distinctive movements might be part of that person’s persona (think Michael Jackson’s moon walk). So even if the plaintiff’s likeness is not shown, Section 43(a) might still provide the plaintiff with a cause of action if the plaintiff can show that what was depicted was part of her persona.
Roberts argued that she had become so associated with the original documentary that TGI’s use of the video itself falsely implied that she endorsed TGI Friday’s. The court noted that earlier cases had ruled that a so-called “signature performance” was not enough to show a violation of Section 43(a)’s false endorsement provision. Those cases had defined “signature performance” as a performance which a widespread audience associates with the artist. Courts do not allow signature performances to serve as the basis for a Section 43(a) claim because it would upset the commercial expectations of entities like TGI Friday’s that had paid license fees to the holder of rights in and to the material that included the so-called signature performance. Robert’s “signature performance” claim was rejected here as well.
In any Lanham Act claim, whether it is section 43(a) or some other provision of that act, plaintiffs must prove that the relevant public is likely to be confused by the defendant’s use of the plaintiff’s trademark, likeness, image or persona. In this case, the court noted that sometimes it is sufficient for a court to simply look at the work in question and the context in which it appears to demonstrate how implausible it is that the public will be confused into believing that the plaintiff endorsed the defendant’s work. But if a trademark or a person is being parodied, no confusion should result since it would be clear to the consumer that a comment (funny or not) is being made on the original material. A parody must call to mind the original work so that its intended audience knows the source for the commentary of the parody. In this case, the court believed the parody was obvious and therefore no one would believe that Roberts was involved in its creation and therefore would not believe that she was endorsing TGI Friday’s products.