Free Speech

Inadequately Amend Your Complaint, End Your Complaint

Court dismisses Ice Cube's trademark lawsuit over Robinhood's use of his image and of a version of his "Check you self before you wreck yo self" line.


From Jackson v. Robinhood Markets, Inc., decided today by Magistrate Judge Laurel Beeler (N.D. Cal.):

The plaintiff O'Shea Jackson, known professionally as Ice Cube, sued Robinhood, a financial- services company, after Robinhood used his image and a paraphrase of a line from his song, "Check Yo Self." The graphic and caption illustrate Robinhood's online article describing a market correction for tech stocks. The original line from Ice Cube's song is "Check yo self before you wreck yo self," which Robinhood paraphrased as "Correct yourself before you wreck yourself." "Check yo self" is also Ice Cube's catchphrase. He claims that by using his image and catchphrase, Robinhood created the false and deceptive commercial impression that Ice Cube endorses Robinhood's services and violated the Lanham Act. 15 U.S.C. § 1125(a)(1)(A). The court previously dismissed the case … because the plaintiff did not plausibly plead that Robinhood's use of Ice Cube's identity suggested his endorsement of Robinhood's products. The amended complaint does not cure the previous complaint's deficiencies. The court thus grants Robinhood's motion to dismiss….

The previous dismissal order summarized the allegations about the alleged endorsement. In short, Robinhood is a financial-services company that allows commission-free trades of stocks and exchange-traded funds on a mobile app. Ice Cube is a well-known rapper, actor, entrepreneur, and social activist. Robinhood has a website called Robinhood Snacks, where it publishes newsletters on financial issues. To illustrate a newsletter on a market correction of tech stocks, Robinhood used a picture from Ice Cube's movie Are We Done Yet? and a caption that paraphrased Ice Cube's catchphrase.

Correct yourself, before you wreck yourself

The amended complaint cites congressional testimony and SEC filings to illustrate that Robinhood Snacks is a commercial product that entices new users to sign up for the app and offers digestible educational content that also satisfies certain financial regulatory requirements. It adds allegations about its demographics and the appeal of celebrities like Ice Cube (and its celebrity endorsers Jay-Z, Nas, and Snoop Dog) to support the point that using Ice Cube's picture and phrase created consumer confusion and suggested Ice Cube's endorsement of its products….

The amended complaint falls for the same defect found in the original: it does not sufficiently plead an injury in fact because Robinhood's use of Ice Cube's image and phrase does not suggest Ice Cube's endorsement of Robinhood's product.

Ice Cube is a celebrity. If the unauthorized use of his image suggested his endorsement of Robinhood, then he would suffer injury in fact [for trademark law purposes -EV]. But the image and phrase are not an endorsement: they illustrate a point in the newsletter about a market correction in tech stocks. No case finds endorsement on similar facts. Instead, the case law requires more than alleged unauthorized use to plead implied endorsement. Examples of well-plead endorsement include imitating Tom Waits's distinctive voice to sell Doritos and using a robot Vanna White to sell VCRs. Waits v. Frito-Lay, Inc. (9th Cir. 1992) ("a celebrity whose endorsement of a product is implied through the imitation of a distinctive attribute of the celebrity's identity [the imitation of Tom Waits's distinctive voice in a Doritos radio commercial] has standing to sue for false endorsement under section 43(a) of the Lanham Act"); White v. Samsung Elec. Am., Inc. (9th Cir. 1992) (finding the depiction of a robot modeled after and dressed as Vanna White and posed next to the product was proof of implied endorsement sufficient to raise a triable issue of fact); see also Estate of Fuller v. Maxfield & Oberton Holdings (N.D. Cal. 2012) (denying the motion to dismiss as the defendant's alleged use of the inventor's name to promote a desk toy modeled after the inventor's discovery implied endorsement); Monk v. N. Coast Brewing Co. Inc. (N.D. Cal. Jan. 31, 2018) (consistent use of Thelonious Monk's name image, and likeness on the beer bottles and packaging plausibly plead implied endorsement).

The new allegations do not add facts that create any likelihood of consumer confusion. For the reasons in the court's earlier order, the court dismisses the complaint …. Because the court gave leave to amend previously, and the plaintiff did not cure the complaint's deficiencies, the dismissal is with prejudice.

Note that this doesn't preclude a possible claim under California's right of publicity law, which focuses on the use of plaintiff's identity without permission, not on the likelihood of confusing consumers; it presumably can still go forward in California court.

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  1. Hmmm. Not sure if I’m convinced by the court’s reasoning. If I see an ad with a well-known person and that person is using his/her catchphrase, I think I AM gonna assume that it’s being done with the celebrity’s permission (ie, endorsement). I think of a Donald Trump (well before he ran), on a website for, say, fire extinguishers, showing his photo and “You’re fired!” as a caption. I’d sure think DT was endorsing that product…and I think a lot of other people would make the same conclusion.

    Out of curiosity; what possible motivation did this company have in using Cube’s likeness (as opposed to just using his catchphrase–or a version of it), if not to make people believe he was connected to Robinhood in some way? Is the court saying, “Yes, that obviously was the motivation of Robinhood. But it’s not an action that results in a legal wrong.”?

    1. From the article: “The graphic and caption illustrate Robinhood’s online article describing a market correction for tech stocks…But the image and phrase are not an endorsement: they illustrate a point in the newsletter about a market correction in tech stocks. ”

      A one time use of the picture and phrase in an article illustrates the question: Is the correction over.

      1. But why the picture? I get the use of a catchphrase…we’ve all seen countless examples of people using “You’re fired!” in a variety of commercial and political contexts. But why the need to also include Cube’s image?

        1. I assume to be relevant to the kids. It just seems like a thing every tiny publisher does to try to grab attention in a tight market. That’s how Buzzfeed and Cracked got big.

  2. “Right of publicity” suits are very weird to me when they involve long-dead celebrities (Thelonious Monk has been dead since 1982). Can’t there be some other way to address similar infringment? Why does California allow possession of the right for 70 years after death? William Randolph Hearst died in 1951 and John Dewey died in 1952, as examples of the marketability of famous people who died 70 and 69 years ago.

  3. I could go for a cool ice tea right now…

    1. Once again, the obvious is invisible to the lawyer. Even if the image and the phrase had been used without permission, only a benefit resulted, free advertising for the artist.

  4. The decision seems right, if a bit perfunctory. The content in question comes across to me far more like a parody than an endorsement.

  5. “Note that this doesn’t preclude a possible claim under California’s right of publicity law, which focuses on the use of plaintiff’s identity without permission, not on the likelihood of confusing consumers; it presumably can still go forward in California court.”

    They used his *picture*? Hmmm…maybe there might be a claim for violating the right of publicity.

    1. Question for someone who is familiar with California’s right of publicity law: Does the plaintiff have to be a resident of California?

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