Intellectual Property law -- "That's Hot!" -- Paris Hilton case against Hallmark can proceed

What better way to attract more attention to one's blog than to include the words "Paris Hilton." She's no stranger to our civil legal system -- read about her bff, Judge Moreno, down in the Southern District at the Southern District of Florida Blog.

Yesterday, the Ninth Circuit permitted Paris Hilton's dispute against Hallmark to go forward and decided that "California law allows a celebrity to sue a greeting card company for using her image and catch-phrase in a birthday card without her permission." Judge O'Scannlain, writing for the panel, begins as follows:

Paris Hilton is a controversial celebrity known for her lifestyle as a flamboyant heiress. As the saying goes, she is "famous for being famous."

Hallmark created a birthday card, whose front cover read: "Paris's First Day as a Waitress." Inside, an oversized photo of Hilton's head is saying "Don't touch that, it's hot." Hilton sued for misappropriation of publicity under California law, false designation under the Lanham Act, and federal trademark infringement.

Trademark Infringement

Hilton has a federal trademark registration No. 3,209,488 for the mark "THAT'S HOT" for use with apparel. Hallmark sought to dismiss the trademark infringement count because greeting cards are not apparel (and it argued its use was fair use). Hilton did not address these arguments at the trial level, and therefore abandoned her infringement claim.

False Endorsement

Hallmark also sought dismissal of this count, but was not successful. Facts would determine whether the work was a parody and whether it was a fair use. As such, dismissal would not be appropriate. The Ninth Circuit dismissed this portion of the appeal because it determined it did not have jurisdiction to hear it.

The Court rejected Hallmark's argument that the greeting card was, as a matter of law, protected free speech and sent the matter back to the trial court to proceed through litigation.

Paris Hilton v. Hallmark Cards, Appeal No. 08-55443 (9th Cir. Aug. 31, 2009)