Hilton v. Hallmark Cards: Right of Publicity

Q: What was on the Hallmark card that Paris Hilton sued over?

The birthday card's front cover was captioned 'Paris's First Day as a Waitress' and showed a cartoon waitress with an oversized photograph of Hilton's head, serving a plate of food to a customer. Hilton says 'Don't touch that, it's hot,' the customer asks 'what's hot?' and she replies 'That's hot.' The inside reads 'Have a smokin' hot birthday.' Hilton had used 'That's hot' as a catchphrase and had registered it as a trademark with the USPTO. She sued for misappropriation of her right of publicity.

The Ninth Circuit refused to hold a Paris Hilton birthday card transformative as a matter of law, letting her 'That's hot' publicity claim proceed.

In Hilton v. Hallmark Cards, 599 F.3d 894 (9th Cir. 2010), the United States Court of Appeals for the Ninth Circuit confronted a small object with a large doctrinal footprint: a birthday card. Hallmark had produced a card featuring a photograph of Paris Hilton’s face on a cartoon waitress, echoing a scene from her reality show and deploying her signature phrase, “That’s hot.” Hilton sued for misappropriation of her right of publicity under California law. Hallmark moved to strike the claim under California’s anti-SLAPP statute, arguing that the card was protected expression and, in particular, that it was a transformative use immune from a publicity claim. The panel, in an opinion originally filed in 2009 and amended in March 2010, refused to hold the card transformative as a matter of law and affirmed the denial of the anti-SLAPP motion. The case is now a standard citation for the proposition that the transformative-use defense often cannot be resolved on the pleadings and that a celebrity catchphrase paired with a likeness can carry a publicity claim past early dismissal.

At a glance

Case: Hilton v. Hallmark Cards, 599 F.3d 894 (9th Cir. 2010) (amended opinion; originally filed August 31, 2009).
Decided: Amended March 23, 2010, affirming in relevant part the district court’s denial of Hallmark’s special motion to strike.
Holding: Hilton demonstrated a probability of prevailing on her right-of-publicity claim because the greeting card was not transformative as a matter of law; whether it added significant creative expression was a factual question, so the anti-SLAPP motion was properly denied.
Status: Remanded for further proceedings; the parties later settled, so no merits judgment issued.

The two-step anti-SLAPP frame

California’s anti-SLAPP statute, Code of Civil Procedure section 425.16, lets a defendant move early to strike claims arising from protected speech. The analysis has two steps. First, the defendant must show the challenged claim arises from an act in furtherance of free speech in connection with a public issue. Hilton contested that threshold, and the court worked through the competing California tests for what counts as a public issue before concluding that the card cleared it: her privileged lifestyle and her catchphrase were matters of widespread public interest, and the card’s commercial character did not defeat the showing. Second, the burden shifts to the plaintiff to demonstrate a probability of prevailing on the claim. At that stage the court asks whether the plaintiff has stated a legally sufficient claim and made a prima facie showing of facts that, if credited, would support a judgment.

The decisive move in Hilton was that Hallmark’s transformative-use defense had to be evaluated at this second step. If the card were transformative as a matter of law, Hilton could not show a probability of prevailing, and the motion would succeed. If it were not, or if the question were genuinely disputed, her claim survived. The court therefore had to decide whether the transformative character of the card could be determined on the record before it.

The transformative-use test and its origins

The transformative-use test entered California right-of-publicity law through Comedy III Productions, Inc. v. Gary Saderup, Inc., 25 Cal. 4th 387 (2001), where the California Supreme Court borrowed the first fair-use factor from copyright and asked whether a work adds significant creative elements to a celebrity’s likeness so as to transform it into something more than a mere depiction. Charcoal drawings of the Three Stooges that added little beyond skillful reproduction were held not transformative. Later cases, including Winter v. DC Comics, 30 Cal. 4th 881 (2003), found comic-book characters loosely based on musicians sufficiently transformed to earn protection.

The Ninth Circuit in Hilton emphasized that the defense is broad and not limited to parody. It can encompass fictionalized portrayals, lampooning, and subtle social criticism. But breadth is not the same as automatic application. The question is always whether the particular work added enough original expression that the celebrity’s likeness is no longer the sum and substance of the thing sold. That inquiry is often fact-laden, and the court concluded it could not be answered in Hallmark’s favor as a matter of law on this card.

Why the card was not transformative as a matter of law

The panel described the card in concrete terms. It reproduced a recognizable photograph of Hilton’s face, placed on a cartoon body in a diner scene, invoking a well-known episode of her reality series in which she waited tables, and it used her catchphrase. Hallmark argued the card was a spoof, adding a joke and a new context that transformed Hilton’s image into commentary. Hilton argued it was, in substance, a reproduction of her persona and a specific televised moment, dressed up but not meaningfully altered.

The court held that a reasonable trier of fact could find either way, which is precisely why the defense could not be resolved on a motion to strike. The card was not so obviously a creative reworking that no jury could find otherwise, nor was it so plainly a bare appropriation that the question needed no trial. The literal photographic face, the reference to an actual episode, and the trading on the catchphrase all cut against a conclusion of transformation as a matter of law. Because the defense turned on a genuine factual dispute, Hilton had shown a probability of prevailing, and the anti-SLAPP motion failed.

What the decision changed

Hilton matters less for a novel rule than for where it placed the transformative-use question in the litigation timeline. Defendants had hoped to use the transformative defense, coupled with anti-SLAPP procedure, to dispose of publicity claims quickly and to shift fees. Hilton confirmed that when the transformative character of a work is reasonably debatable, the defense cannot end the case early. It becomes a jury question, and the plaintiff clears the anti-SLAPP hurdle. For celebrity plaintiffs, that preserved the leverage of getting to a factfinder. For expressive-goods defendants, it signaled that borrowing a recognizable image plus a catchphrase and adding a light gag may not be enough to guarantee protection at the threshold.

The case also underscored that a catchphrase can function as an identifying attribute of the celebrity, reinforcing the recognizability that publicity law protects. The combination of Hilton’s face and “That’s hot” made the reference unmistakable, and that unmistakability is what kept the claim alive.

Open questions

How much creative alteration is enough? Hilton held this card was not transformative as a matter of law, but drew no bright line. The threshold between a protected spoof and an unprotected appropriation remains case by case.
Does the transformative test fit expressive merchandise well? Critics note the test was designed for artworks and strains when applied to commercial goods that both sell and comment. The Ninth Circuit’s later publicity cases continue to wrestle with that fit.
What is the fate of catchphrase protection? Hilton’s registered mark in “That’s hot” and the card’s use of her phrase raised, without resolving, how catchphrases interact with both trademark and publicity theories. Her separate federal registered-trademark infringement claim was dismissed by the district court and she did not appeal that ruling, and the Ninth Circuit held it had no jurisdiction over the Lanham Act claim because the anti-SLAPP statute reaches only state-law causes of action.

Implications for brands and businesses

A recognizable face plus a catchphrase is high risk. Combining an actual photograph of a celebrity with the person’s known phrase makes recognizability easy to prove and transformation hard to establish at the threshold.
Anti-SLAPP is not a guaranteed exit. When the transformative character of a work is debatable, the motion to strike will fail and the case proceeds, exposing the defendant to discovery and trial rather than an early dismissal.
Add real creative distance, not a light gag. The more a work reworks the celebrity’s image into new expression, rather than reproducing a specific moment with a caption, the stronger the transformative defense.
Clear the rights when the use is close. For greeting cards, novelties, and similar goods that trade on a specific celebrity moment, licensing avoids a fact fight over transformation that a company may lose in front of a jury.

Frequently asked questions

What was on the Hallmark card that Paris Hilton sued over? The birthday card’s front cover was captioned “Paris’s First Day as a Waitress” and showed a cartoon waitress with an oversized photograph of Hilton’s head, serving a plate of food to a customer. Hilton says “Don’t touch that, it’s hot,” the customer asks “what’s hot?” and she replies “That’s hot.” The inside reads “Have a smokin’ hot birthday.” Hilton had used “That’s hot” as a catchphrase and had registered it as a trademark with the USPTO. She sued for misappropriation of her right of publicity.

What is the transformative use defense? Drawn from California’s decision in Comedy III Productions v. Gary Saderup, the transformative use test asks whether a work that uses a celebrity’s likeness adds significant creative elements so it becomes something more than a literal depiction, transforming it into the defendant’s own expression. If it does, the First Amendment protects it against a right of publicity claim.

Did Paris Hilton win the case? The Ninth Circuit’s 2010 decision was procedural. It affirmed denial of Hallmark’s anti-SLAPP motion, holding Hilton had shown a probability of prevailing because the card was not transformative as a matter of law. That let the case go forward rather than deciding liability. The parties later settled before any final judgment on the merits.