229 F. Supp. 3d 240
S.D.N.Y.2017Background
- Plaintiff Shoshana Roberts appeared in a viral YouTube video “10 Hours Walking in NYC as a Woman” produced by Rob Bliss; the video showed men catcalling Roberts and received ~41 million views.
- Bliss licensed the video without Roberts’s knowledge to an ad agency (Made Movement), which created TGI Friday’s commercials that superimposed oversized appetizers over the walking figure and used the catcall audio, with the hashtag/play on words #Appcalling.
- Roberts alleges the ad falsely implied she endorsed TGI Friday’s and its appetizers and that the use humiliated and belittled her and the video’s anti‑harassment message; she sued under Section 43(a) of the Lanham Act and brought several New York state law claims.
- Defendants moved to dismiss under Rule 12(b)(6); the Court considered the original video, the advertisement, and the license agreement incorporated into the complaint.
- The Court dismissed the Lanham Act false‑endorsement claim, holding the ad neither used an identifiable image/persona of Roberts nor plausibly created consumer confusion as to her sponsorship because the ad was an obvious parody.
- Because the federal claim was dismissed at an early stage, the Court declined supplemental jurisdiction and dismissed the state‑law claims without prejudice.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether ad falsely represents Roberts endorsed TGI Friday’s under § 43(a) | Roberts: ad uses her image/persona (even if masked) and implies endorsement | Defendants: ad covers her with appetizers and contains no representation that she endorsed the product | Dismissed — the ad does not use an identifiable image/persona and contains no misleading endorsement claim |
| Whether use of the video invokes Roberts’s "persona" to imply endorsement | Roberts: her performance/persona in 10 Hours is distinctive and identified with her | Defendants: persona not used; movements/character not distinctive and video targets women generally | Dismissed — persona not plausibly appropriated; signature‑performance theory rejected under Second Circuit precedent |
| Whether consumers likely to be confused about sponsorship/approval | Roberts: substantial viewers would believe she authorized/approved the ad | Defendants: the ad is an obvious parody; no reasonable viewer would think Roberts sponsored it | Dismissed — parody is obvious; call‑to‑mind is not confusion; no reasonable likelihood of confusion |
| Whether federal court should retain state law claims after dismissal of Lanham Act claim | Roberts: (preserved claim) seeks resolution in federal forum | Defendants: federal jurisdiction depends on the Lanham Act claim | Court declined supplemental jurisdiction and dismissed state claims without prejudice |
Key Cases Cited
- Oliveira v. Frito‑Lay, Inc., 251 F.3d 56 (2d Cir. 2001) (rejection of "signature performance" as basis for Lanham Act false endorsement claim)
- White v. Samsung Elecs. Am., Inc., 971 F.2d 1395 (9th Cir. 1992) (use of a look‑alike persona can state a false endorsement claim)
- Burck v. Mars, Inc., 571 F. Supp. 2d 446 (S.D.N.Y. 2008) (elements of a false endorsement claim under § 43(a))
- Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961) (guide for multi‑factor likelihood‑of‑confusion analysis)
- Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ’g Grp., Inc., 886 F.2d 490 (2d Cir. 1989) (parody conveys both that it is original and that it is not; call‑to‑mind is different from confusion)
- Universal City Studios, Inc. v. Nintendo Co., 746 F.2d 112 (2d Cir. 1984) (courts may dismiss trademark claims where no likelihood of confusion as a matter of law)
- Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC, 221 F. Supp. 2d 410 (S.D.N.Y. 2002) (obvious parody reduces likelihood of consumer confusion)