## Facts

- Abercrombie & Fitch distributed a large, glossy “Quarterly” catalog that mixed editorial-style material with extensive promotion and sale of its clothing.
- In a 1998 surfing-themed issue, Abercrombie used a 1960s photograph showing several well-known surfers and identified them by name.
- Abercrombie purchased the photograph from the photographer but did not obtain authorization from the surfers to use their names or likenesses in the catalog.
- The photograph and names appeared adjacent to surfing-related content and Abercrombie’s surf-style merchandise, which plaintiffs alleged implied their endorsement or sponsorship.
- Plaintiffs sued asserting (1) California statutory and common-law misappropriation/right of publicity, (2) Lanham Act § 43(a) false endorsement, and related negligence and defamation theories.
- The district court granted summary judgment for Abercrombie, concluding the use was protected by the First Amendment, state claims were preempted by copyright, Hawaii law applied to some state claims, and the Lanham Act claim failed (including under nominative fair use).

## Issues

1. Whether a retailer’s catalog use of individuals’ names and likenesses to help sell goods is protected by the First Amendment as a matter of law.
2. Whether state-law misappropriation/right-of-publicity claims based on use of names and likenesses embodied in a copyrighted photograph are preempted by the Copyright Act.
3. Whether California or Hawaii law governs the state-law publicity/misappropriation claims.
4. Whether the Lanham Act § 43(a) false endorsement claim fails on summary judgment due to the First Amendment, lack of likely confusion, or nominative fair use.

## Decision

- The Ninth Circuit reversed summary judgment for Abercrombie on the right-of-publicity/misappropriation and Lanham Act false endorsement claims and remanded for trial.
- The court held the First Amendment did not bar the publicity claims as a matter of law given the catalog’s predominantly commercial function and promotional context.
- The court held the state publicity claims were not preempted by the Copyright Act because they asserted a qualitatively different interest: unauthorized commercial exploitation of personal identity.
- The court held California law, not Hawaii law, governed the state-law claims based on California’s strong interest in regulating in-state commercial conduct tied to the catalog’s production and distribution decisions.
- The court held triable fact issues existed on likelihood of confusion and on whether Abercrombie’s use satisfied nominative fair use, making summary judgment improper.
- The court vacated the fee award associated with the reversed judgment and remanded for further proceedings.

## Legal Principles

- A publication styled with some editorial content may still be treated as commercial advertising when its primary purpose is to promote sales; in that setting, First Amendment protection does not categorically defeat right-of-publicity claims on summary judgment.
- Copyright Act preemption requires equivalence to rights protected by copyright; claims targeting unauthorized commercial use of a person’s name or likeness contain an “extra element” and are not automatically preempted even when the identity appears in a copyrighted photograph.
- Choice-of-law analysis may favor applying the law of the state with the strongest interest in regulating the challenged commercial conduct, including where a defendant’s creative and distribution decisions occur.
- Lanham Act § 43(a) false endorsement claims turn on likelihood of consumer confusion; marketing context and presentation can create triable issues of implied sponsorship.
- Nominative fair use is fact-dependent and may be unavailable where the manner and amount of use, combined with surrounding presentation, could suggest endorsement.

## Conclusion

The Ninth Circuit held that a retailer’s use of identifiable individuals’ names and likenesses in a sales-oriented catalog can support right-of-publicity and Lanham Act false endorsement claims despite First Amendment arguments and ownership of copyright in the photograph, and it required those claims to be resolved at trial rather than on summary judgment.


Downing v. Abercrombie & Fitch, 265 F.3d 994 (9th Cir. 2001)