False endorsement remains broader than many state ROP laws

Walkowicz v. American Girl Brands,
LLC, 2021 WL 510729, No. 20-cv-374-jdp (W.D. Wis. Feb. 11, 2021)

Lucianne Walkowicz “has achieved a
measure of celebrity as an astronomer,” and contended that  defendants misappropriated distinctive aspects
of their personal identity into a space-themed American Girl doll named Luciana
They brought claims under the Lanham Act, Wisconsin’s privacy
statute, and Wisconsin’s common law of negligence.

The court found that it was “plausible that one familiar
with Walkowicz might be confused about whether Walkowicz endorsed or is somehow
affiliated with the Luciana Vega doll, and thus the amended complaint states a
claim for false endorsement under the Lanham Act.” However, there were no
allegations that defendants actually used Walkowicz’s “name,
portrait, or picture”
as required by Wisconsin’s privacy statute, and the
court was unpersuaded that Wisconsin courts would recognize the duty that
Walkowicz alleges was breached by defendants, so the state claims went away.

Walkowicz alleged that they were an astronomer and a TED
Senior Fellow at the Adler Planetarium in Chicago whose TED talk has been viewed
more than a million times. “In a 2011 presentation, Walkowicz discussed their
work on NASA’s Kepler Mission studying the constellation Lyra, including the
constellation’s brightest star, called Vega.” Walkowicz alleges that at least
one American Girl employee or consultant attended multiple events at which they
discussed their work.

American Girl applied for trademarks on a space-themed doll
named Luciana Vega, which it began marketing in 2018 as its “Girl of the Year”
doll. Walkowicz allegedly had a distinctive personal style, often wearing what
they describe as “space themed clothing” and “holographic shoes.” Walkowicz
often wears a purple streak in their brown hair. Luciana also has a purple
streak in her brown hair, and she is sold with a “space themed patterned dress”
and “holographic” shoes. Her accessories include a model telescope, a Mars
habitat playset, and a space suit. American Girl’s book about Luciana describes
her as dreaming of becoming the first astronaut to travel to Mars.

Walkowicz allegedly received multiple emails and
social-media messages commenting on the similarities between Walkowicz and
Luciana and inquiries about whether they had endorsed the doll.

American Girl argued independent creation, which seems both
plausible and not helpful to a trademark claim. It had applied for trademarks
for dolls named “Luciana” and “Princess Luciana” between 2006 and 2010, and its
partner Mattel has long produced and sold space-themed dolls and accessories,
including “Astronaut Barbie” in 1986. That didn’t establish that the
combination into the Luciana Vega doll was done “without any knowledge of
Lucianne Walkowicz”; “Princess Luciana” was an entirely different type of doll.
“And, in any case, independent creation would be only one factor to consider
under the Lanham Act; it would not be a complete legal defense.” [No kidding.]

First, did Walkowicz allege a protectable commercial
interest under Lexmark? Yes: They plausibly pled “a commercial interest
in giving scientific presentations, appearing on scientific television shows,
and participating in science-related events.” And confusion about whether they
endorsed the doll allegedly “led to interference with [their] professional
public persona” and “dilute[d] the value of [their] name.” I will note here, as
I often do, that in a false advertising case these allegations would likely be
treated as conclusory at best. Not to mention that “dilution” is not the same
thing as false endorsement!

Walkowicz wasn’t required to be engaged in doll-adjacent
activity to have a protectable commercial interest. “[A] commercial interest in
public speaking and outreach activities … could plausibly be damaged by the
perception that Walkowicz was associated with defendant’s commercial

Confusion: Also plausibly alleged.

Walkowicz is not toiling away
anonymously in a lab, but is building a reputation as a celebrity scientist
known to the general public. Walkowicz alleges that they are widely recognized
for their scientific accomplishments, with some of their presentations having
been viewed more than one million times. It’s reasonable to infer that this
recognition extends to at least some part of American Girl’s intended market
for the Luciana Vega doll.

They also plausibly alleged that their reputation was
related to key aspects of the doll and that American Girl’s employees and
consultants saw Walkowicz’s presentations. “It’s reasonable to infer from these
allegations that American Girl intended to evoke Walkowicz’s public image to
lend legitimacy and realism to the Luciana Vega doll.” Plus, they alleged
actual confusion, even though it wasn’t clear whether those who were confused were
part of the relevant markets. [Some courts distinguish “queries,” as alleged,
from confusion—someone who asks whether there’s a relationship is aware that
there might not be one. But the cases go back and forth on this.]

Statutory right of privacy: The statute covers uses of a
person’s “portrait” or “picture”; it was based on the NY statute and there was
no Wisconsin precedent about the scope of those terms, so the court looked to Lohan
v. Take-Two Interactive Software, Inc., 97 N.E.3d 389 (N.Y. 2018). Lohan held
that the key question under the statute is whether the challenged image is a
“recognizable likeness” of the plaintiff. “If a jury could not reasonably
conclude that the challenged image is identifiable as the plaintiff solely from
the image itself, the court must dismiss the claim as a matter of law.”
Walkowicz conceded that their “nationality and skin color” differ from that of
Luciana Vega and that the doll’s facial structure was either “entirely
identical” or “nearly identical” to every other American Girl “Girl of the
Year” doll. Other than their purple-streaked brown hair, there were no bodily
similarities, and that wasn’t enough. Similarities in manner of dress and “biographical
characteristics that have nothing to do with visual appearance” did not
constitute using a name, portrait, or picture.

Likewise, “Luciana Vega” was not an unauthorized use of
Walkowicz’s name. Hirsch v. S.C. Johnson & Son, Inc., 90 Wis. 2d 379, 280
N.W.2d 129 (1979), held that retired football player Elroy “Crazylegs” Hirsch
could bring a common-law tort suit against the manufacturer of “Crazylegs”
shaving gel because “[a]ll that is required is that the name clearly identify
the wronged person.” But it wasn’t plausible that “Luciana Vega” would clearly
identify Walkowicz. There was no precedent to hold that “Vega”—a word that was
[allegedly] associated with Walkowicz to some degree but had never been used to
identify them—could be considered their “name.” Inquiries about endorsement
didn’t bridge the gap; if Walkowicz meant to suggest that they could put a claim
together by referring to other aspects of the doll in combination with the
name, that would vitiate the distinction between ROP statutes that list
protected characteristics and ROP rules that protect “identity” generally.

Note: When defendants filed an answer, they did not raise a
First Amendment defense, but rather argued in various ways that Walkowicz
lacked protectable interests in their appearance/variants of their first name.
The case was later dismissed with prejudice because the parties represented
that it was “resolved pursuant to a mutual release in which no monetary payment
has been exchanged.” I’m guessing some sort of donation to a cause supported by
Walkowicz, but I’m just guessing.

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