When Nikki Swafford, the proprietor of Nikki’s Escort Service, received an email from counsel for Hooters restaurants asking her to take down a Craigslist ad she posted in an attempt to hire Hooters Girls, complete with a picture of the famously clad women, she fired off a profane-yet-amusing reply that essentially said “what are you going to do, sue me?”
Yes, as a matter of fact. Yesterday, Hooters filed an action in the Southern District of Florida alleging that Nikki’s ad amounts to dilution and tarnishment of the famous Hooters trademarks and trade dress.
Specifically, Hooters alleged that an ad posted on Craigslist titled “Now Hiring Hooters Girls $100 Per Hour,” accompanied by a picture of five Hooters Girls in the official Hooter Uniform, diluted Hooters’ trademarks and trade dress through tarnishment by associating it with an escort service.
A copy of the alleged offensive advertisement, taken from the complaint, is seen above.
As Nikki Swafford, the owner of Nikki’s Escort Services, pointed out to Hooters’ counsel prior to the filing of this action “I’m not saying I’m hooters you . . . idiots. I’m trying to hire girls who work for hooters.” Indeed, as Nikki was trying to hire employees from another company, it might be difficult for Hooters to demonstrate that Nikki’s use of the Hooters mark and trade dress would cause a likelihood of confusion, a prerequisite to proving trademark infringement. However, Hooters alleged dilution, which, unlike an infringement claim, does not require a finding of likelihood of confusion. Nonetheless, Nikki’s use of the Hooters marks may still be a permissible nominative use.
The doctrine of nominative fair use finds its origin in a case brought by Volkswagen against a repair center that stated in its advertisements that it repaired Volkswagen vehicles. The repair center argued, and won on the issue, that it could not readily state that it repaired Volkswagen cars without using the Volkswagen trademark.
Generally, a defendant can escape liability for trademark infringement or dilution when (1) the product or service is not readily identifiable without using the mark, (2) only so much of the mark is used as is reasonably necessary to identify it and (3) there is no suggestion of endorsement or sponsorship by the trademark holder. However, the circuits have not adopted a single unified test, nor do they even agree if this is an affirmative defense to a finding of trademark infringement or if it absolves the plaintiff from showing trademark infringement or dilution and instead shifts the burden to the defendant, who must demonstrate nominative fair use or be liable.
One is hard pressed to imagine how Nikki’s Escort Services could have listed an ad for Hooters Girls without using the Hooters trademark, short of using a ridiculously cumbersome title such as “Seeking girls who wear orange shorts and work in an owl themed restaurant, lounge and sports bar.” As Nikki herself pointed out, she is not suggesting that she is associated with or endorsed by Hooters. Whether or not she had to post an actual picture of five Hooters Girls in the official Hooters Uniform to describe who she is seeking to hire is best left for another post.