Stayart v. Yahoo!: Failure to Allege Intent to Commercialize One's Identity Dooms Action for False Endorsement under Lanham Act
In a recent decision on a claim for false endorsement, Judge Rudolph Randa of the Eastern District District of Wisconsin found that a plaintiff must at least show that she has an intent to make a commercial use of her name to bring a claim under the Lanham Act. Stayart v. Yahoo!, Inc., E.D. Wisc., No. 09-C-116 (August 28, 2009). Federal courts are less than settled on the standing requirements for a person to bring a false endorsement claim under the Act. On one extreme, some require a plaintiff to have celebrity status to bring such a claim. On the other extreme, at least one court has held that any person whose name is misused may bring such claims. Judge Randa's decision is squarely in the middle.
The Plaintiff, Beverly Stayart, worked for a number of major Chicago financial institutions, eventually attaining the rank of Vice President. For the past several years, she has been actively involved in animal protection programs and genealogy research throughout the world, and uses the Internet in support of these causes. She contributes to an online discussion forum relating to the Siouan (Saponi) nation. Her posts to this site have generated 17,000 hits over the past three years. Two poems she wrote supporting the preservation of baby seals have also appeared in Danish websites.
In December 2008, Ms. Stayart performed searches on her own name on the Yahoo! and AltaVista search engines. She was dismayed to find that her name appeared in Yahoo! (and Overture) results linking her to porn and Cialis websites. The name BevStayart was also allegedly used on a website advertising an adult-oriented operated by AdultFriendFinder.com.
Ms. Stayart sued Yahoo!, Overture, and Friendfinder.com under the Lanham Act (15 U.S.C. ยง 1125(a)), as well as under state law privacy theories. The Lanham Act provides that a person who "uses in commerce" any "name" which "is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval or his or her goods or services, . . . shall be held liable in a civil action by any person who believes that he or she is likely to be damaged by such act."
From the little that can be divined from the Court's records, this case seems to reflect a variation on concepts frequently used in keyword advertising (and search engine optimization). Instead of using a well-known tradename, the advertiser uses any term that gets a significant amount of traffic. The 17,000 hits to Ms. Stewart's blog entries apparently generated enough traffic for advertisers to decide to use her as a draw. In some cases, Ms. Stewart's name was included as part of a "nonsense sentence" in an on-line ad (with the text of the nonsense sentence likely lifted from one of her blog posts). In other cases, her name appeared as part of the URL for an advertising site.
From my point of view, Ms. Stayart's case has the most in common with keyword advertising cases. Plaintiffs have prevailed in such cases on initial interest confusion and trademark dilution theories.
Nevertheless the Court analyzed her claim as a "false endorsement" claim. False endorsement can be found where a person's identity is connected to a product or service in such a way that consumers are likely to be misled about that person's sponsorship or approval of the product or service. ETW Corp. v. Jireh Pub., Inc., 332 F.3d 915, 925-26 (6th Cir. 2003). Ms. Stayart's name is apparently unique, so the Court did not question that name used on the sites could be associated with the Plaintiff. On its face, this would appear to permit a plaintiff like Ms. Stayart to sue if her name was used to show her sponsorship with a product or service without her permission. However, few federal courts have taken this position.
Some courts have suggested that false endorsement claims are limited to plaintiffs with celebrity status. See ETW Corp., 332 F.3d at 925-26 ("False endorsement occurs when a celebrity's identity is connected with a product or service in such a way that consumers are likely to be misled about the celebrity's sponsorship of approval of the product or service"). Other courts have adopted a more relaxed standard in which the plaintiffs' fame is merely one of several factors that a court examines in determining whether to permit a false endorsement claim to go forward. See Ji v. Bose Corp., 538 F.Supp.2d 349 (D. Mass. 2008). Another view is to permit false endorsement claims by what might be termed "limited purpose celebrities" -- persons well enough known among the persons receiving the advertisement that the use of his/her name has some commercial value among that group. See Hauf v. Life Extension Foundation, 547 F.Supp.2d 771, 777 (W.D. Mich. 2008).
For Judge Randa, the Lanham Act focuses on "anti-competitive conduct in a commercial context." Following Condit v. Star Editorial, Inc., 259 F.Supp.2d 1046 (E.D.Cal. 2003), he thus held that to bring a claim under the Lanham Act, a plaintiff must show that she had "an existing intent to commercialize an interest in [her] identity." Because Ms. Stayart "is not engaged in the commercial marketing of her identity, and she does not allege an intent to commercialize," Judge Randa held that her claim was not cognizable under the Lanham Act
Judge Randa recognized that this decision was at odds with Doe v. Friendfinder Network, Inc., 540 F.Supp.2d 288 (D.N.H. 2008), in which the court held that a plaintiff does not need to show that she has an intent to commercialize her name to sue under the Lanham Act. In Friendfinder, the court held that a non-celebrity plaintiff could sue under the Lanham Act after her picture and biography were used in a defamatory profile on an adult-oriented web site. However, Judge Randa argued that the Friendfinder court had not considered whether a plaintiff must have a commercial interest in his/her name to have standing under the Lanham Act.
Judge Randa is only partially correct on this point. The defendants in Friendfinder in fact did raise the argument the plaintiff's Lanham Act claim should fail because she lacked a commercial interest in her name. However, the court rejected this argument because the plaintiffs were unable to provide supporting case law authority on point. Id. at 306 and n. 20.
While the issue is by no means settled, the weight of authority appears to be moving in the direction of requiring a plaintiff false endorsement case to show a significant commercial interest in her name before being permitted to sue under the Lanham Act.
David D. Johnson is a business lawyer whose practice focuses on litigation and other issues relating to digital media and consumer electronics companies. David can be contacted at (310) 785-5371 or DJohnson@jmbm.com.
