• Old Navy Is Definitely "Keeping Up with the Kardashians"
  • March 29, 2011 | Author: Megan Rivetti
  • Law Firm: Greenberg Glusker Fields Claman & Machtinger LLP - Los Angeles Office
  • By now, I’m sure many of you have seen the Old Navy commercial starring Kim Kardashian Melissa Molinaro, a curvy, dark-haired Kim Kardashian lookalike who bursts into song and dance while looking “super C-U-T-E” in her Old Navy duds. Like many of you, I did a double take when I saw this commercial for the first time. Upon closer examination (read: once I caught a glimpse of the star’s normal-sized backside and nimble dance moves), I realized the star of the commercial was not Kim, but just a woman with a striking resemblance to the reality TV star/fashionista/walking proof of the decline of Western civilization.

    After the commercial first aired in February, articles devoted to Old Navy’s use of Kim’s spitting image popped up all over the Internet. Molinaro herself has called the comparisons to Kardashian “extremely flattering” — but of course, who’s to say whether Kim herself would agree? So, naturally, upon first viewing Molinaro’s commercial, the lawyer in me immediately thought, “Can Kim sue Old Navy for using her lookalike in a commercial without her permission?” Then, the blogger in me thought, “I should write a blog about this!” (Then, the normal human being in me thought, “What have I become?”) So, let’s see if the law is on Kim’s side.

    Right of Publicity

    First, Kim might try to bring a claim against Old Navy based on the right of publicity. The right of publicity is grounded in the idea that people (especially celebrities) have a right to control the commercial use of their name and likeness. As a result, the law prohibits people and businesses from exploiting a person’s identity for commercial purposes without that person’s permission.

    While Old Navy did not use Kim’s actual name or picture in the commercial, as we’ve discussed in this space before, a right of publicity claim can arise out of the use of a lookalike (or, in the case of one famous case involving singer Bette Midler, soundalike) that nevertheless trades on the celebrity’s valuable identity. In other words, Kim can argue that Old Navy’s use of a lookalike sufficiently evoked Kim’s “likeness” in the public’s mind. To support this argument, Kim would need to show that she is readily identifiable from the images in the commercial.

    In doing so, Kim might emphasize the following details: (a) Kim is (loosely speaking) a singer and (equally loosely speaking) a dancer, just like the woman in the commercial, (b) Kim loves fashion and the purpose of the commercial is to sell clothes, and, most importantly, (c) the woman in the commercial has facial features eerily similar to Kim’s. However, unless discovery turned up juicy evidence suggesting that Old Navy hired Molinaro specifically for her resemblance to the Divine Miss K, it is just as likely that a court would find that the woman in the commercial merely resembles Kim as much as any other dark-haired, busty woman does, which would not be sufficient to hold Old Navy liable. (Perhaps if the woman in the commercial was named Kim, had a larger-than-life derriere, and was walking hand-in-hand with an athlete, Kim would have a stronger case.)

    Lanham Act

    Now, Kim might have a better go of it with the Lanham Act — better known to most people as federal trademark law — which has been interpreted to prohibit businesses from misrepresenting that a celebrity endorses their products or services. Unlike the right of publicity, the Act does not require Kim to prove that Old Navy appropriated her “likeness” (allowing, for example, Woody Allen to block a video rental chain from running newspaper advertisements featuring an obvious Woody Allen lookalike). Instead, Kim would simply need to prove that Old Navy’s commercial creates a “likelihood of consumer confusion” over whether Kim endorses Old Navy’s budget-friendly clothes.

    Borrowing from traditional trademark analysis, this inquiry requires the court to consider whether the lookalike employed by Old Navy is sufficiently similar to Kim so that it creates a likelihood of confusion. And to engage in that analysis, the court would apply the same “likelihood of confusion” factors it uses to assess any ol’ trademark claim (and while these vary slightly from federal circuit to federal circuit, the list generally involves looking at, among other things: the strength of Kim’s “mark” or persona, the relatedness of the goods being offered by Old Navy and Kim, the similarity of the “marks,” the degree of likely care by consumers who view the commercial, evidence that Old Navy was intentionally seeking to promote and profit from potential consumer confusion, and evidence of actual consumer confusion).

    Strength of Kim’s Mark

    It is undeniable that Kim is a well-known celebrity who has a strong, recognizable “mark.” Indeed, Kim and her “people” have expended a considerable amount of energy and ingenuity to create Kim’s “mark” (which revolves around her distinctive curves, sex appeal, fondness for sports stars, and keen fashion sense, and certainly not at all around her starring role in a certain independently-produced short film). For example, Kim puts her curves to good use in commercials for Shape-Ups (get slim!), Carl’s Jr. (get fat!), Quick Trim (get slim again!), and even the state of California (develop a complex about your slimness/fatness!). Kim has also exploited her celebrity identity in numerous other ways — she is a reality TV personality, a professional Tweeter and nightclub partier, a perfume connoisseur, a Playboy centerfold (sorry, you do not get a hyperlink for this one), a sex tape star (you do get a hyperlink for that one, but sorry, it’s just TMZ), a fitness DVD star, owner of a “dazzling” online shoe company, co-owner of a boutique clothing store, co-author of a tell-all book, purveyor of the “worst [consumer financial] product of 2010,” and a recording artist whose new single is so horrible that Conan O’Brien had to use the Angry Birds to destroy it. Needless to say, Kim Kardashian has become a household name — heaven help us all — and her “mark” is indeed a strong one.

    Relatedness of the “Goods”

    With respect to Kim, the term “goods” refers to the reasons for or sources of her fame (stop snickering). According to Kim’s lawyers, her “goods” are her skills as a celebrity stylist, fashion designer, co-owner of DASH (the clothing store, not the punctuation mark), and highly sought-after endorser of those few fine products that Kim has been paid millions of dollars to really believe in (I said, stop snickering). On the other hand, Old Navy would likely argue that (1) Old Navy’s clothes are geared towards the money-conscious consumer, whereas Kim is generally associated with high-end, expensive clothing; (2) in any event, Kim’s “goods”/claim(s)-to-fame are actually exactly what you’ve been snickering about (and rapper/ex-boyfriend/sex tape co-star Ray J would apparently agree). Good arguments on both sides here.

    Similarity of the Marks

    Let’s not overlawyer here. Old Navy’s legal team could put plastic surgeon Mark “McSteamy” Sloan and Renaissance artist Leonardo da Vinci on the stand to describe all of the nuanced differences between the facial features of Kim Kardashian and Melissa Molinaro, and it wouldn’t make a difference to me. Molinaro’s resemblance to Kim is too prominent to be ignored.

    Degree of Likely Consumer Care

    The average consumer half-watching an Old Navy commercial during American Idol is unlikely to sit back contemplatively and wonder, “Hmm, Kim Kardashian wouldn’t really do an Old Navy commercial, would she?” Yet, even if he or she did, given the strong similarities between Kardashian’s and Molinaro’s features, that consumer may well see the commercial and still decide, “Well, I guess she did!” (Case in point: even a sophisticated, fancy-pants lawyer like me was duped by the perfectly coiffed and made up lookalike.)

    Evidence of Bad Faith

    Lastly, the court would examine whether Old Navy intended to profit by fooling consumers into thinking Kim endorsed its clothes. For her part, Molinaro has confirmed that she did not answer a casting call for “Kim Kardashian lookalikes.” Instead, Old Navy was seeking a “true dance pop superstar,” which is not how one would typically describe Kim. Old Navy itself has remained coy on the subject, offering little more than a strategic tweet linking to a news story about the minor controversy and asking viewers to decide for themselves. (Here’s a better question Old Navy’s 36,000-plus followers on Twitter should ask themselves: why are you following Old Navy on Twitter?) In any event, while Old Navy may not have been actively seeking to trick consumers (or intentionally casting for that effect), it’s also hard to imagine that no one at the company ever stopped and asked, “You know who this girl really looks like...?”

    Evidence of Actual Confusion

    In the end, evidence of actual consumer confusion would likely play a major role in convincing the court that Old Navy violated the Lanham Act. Given that the Internet is overflowing with articles and comments demonstrating that viewers were, in fact, fooled by Old Navy’s use of a lookalike, it should not be too difficult for Kim to prove that consumers were actually confused by the commercial (and if she can prove that the consuming public was actually confused or deceived, Kim could be entitled to damages under the Act). Given that this whole test is about determining the likelihood of consumer confusion, real and significant evidence of actual consumer confusion often proves the determining factor. And that evidence seems to be in ample supply here.

    The Verdict

    With a good legal team on her side, it looks like Kim Kardashian may well be able to persuade a court to find that Old Navy’s use of her doppelganger violates the Lanham Act (which would entitle Kim not only to damages, but also to block Old Navy from continuing to run its “Super CUTE” ads).

    But that doesn’t mean that Kim Kardashian necessarily wants to bring this lawsuit, or that society should want her to win it. There’s no reason to believe that Molinaro’s sudden 15 minutes of fame in any way jeopardizes Kim’s viability as a celebrity endorser. And while some celebrities have carefully cultivated images that would be compromised by consumers believing they had “sold out,” I don’t think anyone has any doubts about Kardashian’s sell-out status. At the same time, plenty of people have noticed that, in a celebrity/entertainment culture that tends to value rather consistent things, sometimes there are no better celebrity lookalikes than other celebrities. Unless Old Navy was specifically plotting to fool the world into believing that it had hired Kim Kardashian (presumably at Khloe Kardashian prices), it seems unfair to penalize Melissa Molinaro — or Nicole Scherzinger, or Roselyn Sanchez — just for looking like America’s favorite celebutante (at least until Paris Hilton gets another reality show).

    Come to think of it, that gives me a great idea for a commercial. Agents for Kim, Melissa, Nicole, and Roselyn: let’s do lunch.