Take Twitter and Facebook and add a recognizable brand and some paparazzi pictures of a celebrity. What do you get? A lawsuit at the intersection of social media, trademark law, the right of publicity, and the First Amendment.
Katherine Heigl is an actress well-known for her roles in films like 27 Dresses and TV’s Grey’s Anatomy. Duane Reade is a pharmacy chain with 250 stores in and around New York City. Duane Reade maintains an active presence on social media, including on Twitter and Facebook. In March, paparazzi captured Heigl carrying Duane Reade bags in New York City. Duane Reade sent out the tweet below featuring one of those pictures.
That tweet may prove costly for Duane Reade. Last Wednesday, citing the tweet and Duane Reade’s use of the photograph on Facebook, Heigl filed suit against Duane Reade in federal court. Heigl’s fifteen-page complaint charges Duane Reade with (1) violating section 43(a) of the federal Lanham Act, (2) misappropriating Heigl’s right of publicity under New York law, and (3) committing common law unfair competition.
Heigl’s lawsuit could help set the rules for how brands use social media. Many legal questions around social media are unsettled. There is not much case law on the subject. The murkiness is also a function of the medium. Brands use social media to advertise. But not every tweet or Facebook post from a brand is an advertisement.
“Twitter is a marketer’s dream come true,” Gary Vaynerchuk writes in his book Jab, Jab, Jab, Right Hook, “because it allows you to initiate a relationship with your customer.” The key to building a strong relationship is authenticity. According to Vaynerchuk, brands leverage social media effectively when they carry on conversations like real people. Brands squander the medium’s potential when they bombard their followers with a steady stream of advertisements and coupons.
The outcome of this case will likely turn on whether the court sees Duane Reade’s tweet and related Facebook post as a conversation starter or an advertisement. On what side of that line does Duane Reade’s content fall?
Throughout Heigl’s complaint, her attorneys labor to paint Duane Reade’s content, to include the tweet above, as advertising. They write that “[t]he purpose of [Duane Reade’s] social media activities is commercial advertising aimed at attracting customers and revenue.” The conversations Duane Reade initiates with its customers through social media are incidental to that overarching purpose. In particular, Heigl’s complaint points out how Duane Reade called itself New York City’s “favorite drugstore” and “most convenient drug store” in its Heigl tweet and Facebook post. The complaint also alleges that Duane Reade took the paparazzi photograph from celebrity gossip news site JustJared.com, “eliminating all news reporting aspects” of the post from the original source.
Duane Reade will try to distinguish the disputed content from commercial advertising. To refute Heigl’s social-media-as-advertising narrative, Duane Reade can cite to the exhibits Heigl attached to her complaint. Exhibit A to her complaint is a 36-page print out of Duane Reade’s Twitter feed. Heigl’s exhibit shows that Duane Reade’s twitter feed contains links to products and coupons. However, it also shows Duane Reade routinely distributing content that is unrelated to pharmacies and the products they sell. For example, one tweet shows Duane Reade asking its followers “[i]nquiring minds want to know…What would be your dream car?” In another tweet Duane Reade invites its followers to “[l]earn more about Greek culture at the Greek Independence Day Parade” in New York City. Heigl’s exhibit also shows Duane Reade tweeting inspirational quotes at its followers from thinkers like C.S. Lewis.
Set against that backdrop, Duane Reade might be able to characterize the tweet as something akin to news reporting. Duane Reade could argue that it was informing its followers of the fact that a celebrity visited one of its stores. Duane Reade followers and other consumers might be more likely to think “that’s interesting” instead of “if Katherine Heigl shops there so am I.” In that way, Duane Reade’s content becomes more about informing the public—which strikes at the heart of the First Amendment—than trading on Heigl’s fame.
If Duane Reade’s content is advertising, then the court will apply the Lanham Act and New York’s right of publicity statute. Even if Duane Reade is successful in defending the Lanham Act claim by showing that consumers viewing the content are not likely to believe Heigl endorses or is otherwise affiliated with its products, its defense would likely falter on the New York right publicity claim. All a violation of that statute requires is a use of a person’s “name, portrait, picture, or voice” in New York “for advertising purposes or for the purposes of trade” without written consent. N.Y. Civ. Rights Law § 51. If Duane Reade’s content is advertising, then Heigl will be able to hold it liable under New York law.
So what will happen? My guess is that cooler heads will prevail and prevent resolution of an interesting legal question. Look for the parties to settle and for Duane Reade to issue a press releasing announcing a donation to a charity of Heigl’s choice. Whether Duane Reade shares the press release with its followers on Twitter or its Facebook friends may be a different story.