## Facts

- A greeting-card company created and sold a birthday card depicting a cartoon waitress with an oversized photograph of Paris Hilton’s head superimposed on the body.
- The card’s cover caption read “Paris’s First Day as a Waitress,” and the dialogue used variations of Hilton’s catchphrase, ending with “That’s hot.”
- The inside of the card stated: “Have a smokin’ hot birthday.”
- Hilton alleged the card used her likeness, name, and catchphrase without permission to sell a commercial product.
- She sued asserting: (1) California common-law misappropriation of publicity (right of publicity), (2) Lanham Act false designation of origin under 15 U.S.C. § 1125(a), and (3) Lanham Act infringement of her federally registered trademark in the phrase “that’s hot.”
- The district court dismissed the trademark-infringement claim, denied dismissal of the right-of-publicity and false-designation claims, and denied the defendant’s special motion to strike the right-of-publicity claim under California’s anti-SLAPP statute.
- The defendant appealed the denial of the anti-SLAPP motion and sought early resolution of First Amendment defenses.

## Issues

1. Whether the right-of-publicity claim arose from protected speech on a public issue under California’s anti-SLAPP statute and, if so, whether Hilton showed a probability of prevailing.
2. Whether the card’s depiction and use of Hilton’s identity was protected expression under California’s transformative-use test, barring the right-of-publicity claim as a matter of law.
3. Whether the Lanham Act false-designation claim was barred at the pleading stage because the card was an expressive work protected under the Rogers test.

## Decision

- The court held the challenged conduct was protected activity involving a matter of public interest for anti-SLAPP step one.
- The court affirmed denial of the anti-SLAPP motion because Hilton showed a probability of prevailing on her right-of-publicity claim.
- The court refused to dispose of the right-of-publicity claim on transformative-use grounds at this stage because the work was not clearly transformative as a matter of law.
- The court declined to dismiss the Lanham Act false-designation claim on First Amendment grounds at the pleading stage under Rogers.
- The dismissal of the trademark-infringement claim remained in place because it was not appealed.

## Legal Principles

- California’s anti-SLAPP statute applies a two-step framework: the defendant must show the claim arises from protected activity connected to a public issue; the plaintiff must then show a probability of prevailing.
- California’s common-law right of publicity bars unauthorized commercial use of a person’s identity, subject to First Amendment limits for expressive works.
- Under the transformative-use test, First Amendment protection is stronger where the defendant adds significant creative elements so the depiction is more than a literal or conventional portrayal; protection is weaker where the work’s value derives primarily from the celebrity’s fame.
- For Lanham Act false-designation claims involving expressive works, Rogers limits liability unless the use has no artistic relevance to the work or explicitly misleads as to source or content.
- Where application of transformative use or Rogers turns on context-dependent determinations, early dismissal may be inappropriate.

## Conclusion

The Ninth Circuit treated the birthday card as speech connected to a public issue, bringing the case within anti-SLAPP’s scope, but held that Hilton’s right-of-publicity claim and her Lanham Act false-designation claim could proceed because the defendant’s First Amendment defenses could not be resolved conclusively on the pleadings.


Hilton v. Hallmark Cards, Inc., 580 F.3d 874 (9th Cir. 2009)