Two years after she filed suit against a number of companies, including a San Diego-based jewelry company and retail giant, Sears, for using her name and/or image without authorization, actress Reese Witherspoon is still embroiled in a battle in California state court. Witherspoon filed a right of publicity and trademark infringement lawsuit in June 2013, claiming that Sears and online jewelry e-commerce site, Emitations.com, among others, used her name and image to sell jewelry. The actress further alleged in her complaint that the ads suggest that she endorsed the defendant's brand, which is certainly not the case here. In addition to using her likeness, Emitations is offering for sale an imitation of Witherspoon's engagement ring from ex-husband Ryan Phillippe. The case is particularly interesting as it sheds light on a number of relevant legal issues.
Sears Says its Not Liable for its Third-Party Marketplace Sellers
Primarily, contributory liability is at issue, as Witherspoon argues that Sears is liable for what’s being sold in its online marketplace by third-party vendors, who have been named as co-defendants in the case. Sears responded to Witherspoon’s claim, alleging that the jewelry at issue was being offered on its “Marketplace,” a community of third-party sellers, as distinct from its main e-commerce site. As a result, Sears alleges that it is not liable for what is sold by these third-party vendors, as it did not “create, develop or alter the content at issue in this lawsuit.” Instead, Sears claims that such products and content was “provided entirely by third-party sellers.”
In its defense, Sears looked to Section 230 of the Communications Decency Act (47 U.S.C. § 230) (“CDA”). This legislation provides immunity from liability for providers and users of an "interactive computer service” that publish information provided by others. In this case, that would be the marketing of rings as the “Reese Ring” and “Emitations Reese Witherspoon Comparable Wedding Ring,” as well as the inclusion of images of Witherspoon in connection with such jewelry in some instances.
As indicated by the Hollywood Reporter, “The safe harbor [provided by Section 230 of the CDA] specifically doesn’t apply to intellectual property claims, though. Over the years, there has been some legal debate over the interpretation here.” In this case, the court found that Sears was not immune from Witherspoon’s intellectual property claims (a victory for the actress) but did find for Sears in terms of Witherspoon’s publicity claim, finding that this claim was, in fact, barred by section 230 of the CDA.
Witherspoon’s Name and Image Do Not Amount to Trade Dress – Probably
In a tentative opinion issued before the hearing, Rosenberg rejected Witherspoon's trademark claims. He held that there is no evidence of consumer confusion, that the actress hadn't established secondary meaning to her full name and more. "Plaintiff's name and images alone do not combine to establish protectable trade dress, ordinarily reserved for packaging," added Rosenberg. "Plaintiff's name is not a protectable slogan."
As for an ultimate ruling on the trade dress matter, Rosenberg said he will take the matter under advisement.
UPDATE (2/16/16): Witherspoon has withdrawn her lawsuit, after all the parties announced that they had come to settlements to resolve claims of violating Witherspoon's trademarks and publicity rights. According to the Hollywood Reporter: "A trial was scheduled for later this month and could have featured Witherspoon testifying (as she gave a deposition in the case) as well as consumer surveys about confusion in the marketplace. Her attorney Charles Harder confirms that Witherspoon has now come to private agreements with the various defendants, including Centerbrook Sales, Fragrance Hut, Gemvara and others."