Court Rules American Girl Must Face Astronomer’s False Endorsement Suit Over Astronaut Doll

In a recent trademark lawsuit, astronomer Lucianne M. Walkowicz contends that American Girl’s popular 2018 Girl of the Year doll uses features of Walkowicz’s identity...

Court Rules American Girl Must Face Astronomer’s False Endorsement Suit Over Astronaut Doll

Court Rules American Girl Must Face Astronomer’s False Endorsement Suit Over Astronaut Doll

<strong>In a recent trademark lawsuit, astronomer Lucianne M. Walkowicz contends that American Girl’s popular 2018 Girl of the Year doll uses features of Walkowicz’s identity</strong>...

Author: David A. Einhorn|March 24, 2021

Photo caption: Lucianne M. Walkowicz photo courtesy of: TED.com American Girl photo courtesy of: Toybook.com

Astronomer Lucianne M. Walkowicz contends that American Girl’s popular 2018 Girl of the Year doll, Luciana Vega, looks a little too familiar. Walkowicz filed a lawsuit alleging that the Luciana doll uses features of Walkowicz’s identity, creating confusion about whether Walkowicz endorsed the doll or is otherwise affiliated with it.

In Lucianne M. Walkowicz v. American Girl Brands LLC et al., U.S. District Judge James Peterson ruled that Walkowicz’s claim against American Girl for false endorsement under the Lanham Act may proceed, concluding that it’s plausible that one familiar with Walkowicz might be confused about whether Walkowicz endorsed or is somehow affiliated with the Luciana Vega doll.

Trademark Lawsuit Over Luciana Doll

Lucianne Walkowicz, whose preferred pronouns are "they" and "them," is an astronomer and a TED Senior Fellow at the Adler Planetarium in Chicago. Among their public presentations is a TED talk that has been viewed more than a million times. In a 2011 presentation, Walkowicz discussed their work on NASA’s Kepler Mission studying the constellation Lyra, including the constellation’s brightest star, called Vega. In addition to discussing the Kepler Mission, Walkowicz has also discussed the potential colonization of Mars in an online presentation and in other venues, including on a National Geographic Channel television series.

In 2016, American Girl applied for trademarks on a space-themed doll named Luciana Vega, which it began marketing in 2018 as its “Girl of the Year” doll. According to their complaint, Walkowicz has a distinctive personal style, often wearing what they describe as “space-themed clothing” and “holographic shoes.” Walkowicz often wears a purple streak in their brown hair. Luciana also has a purple streak in her brown hair, and she is sold with a “space-themed patterned dress” and “holographic” shoes. American Girl also offers accessories for Luciana that include a model telescope, a Mars habitat playset, and a spacesuit. Per its usual practice, American Girl also produced a book about Luciana, which describes her as dreaming of becoming the first astronaut to travel to Mars.

According toWalkowicz, they received multiple emails and social media messages commenting on the similarities between Walkowicz and Luciana. Walkowicz also received inquiries about whether they had endorsed the doll. Walkowicz’s lawsuit contends that American Girl’s promotion and sale of the Luciana Vega doll violated Walkowicz’s rights under Section 43 (a) of the Lanham Act, Wisconsin privacy law, and the common law of negligence.

Court Green Lights False Endorsement Claim

The court dismissed Walkowicz’s trademark cancellation claim, along with claims alleging negligence and violations of Wisconsin’s privacy statute. However, it declined to dismiss the claim for false endorsement under the Lanham Act.  

As Judge Peterson explained, “False endorsement occurs when a person’s identity is connected with a product . . . in such a way that consumers are likely to be misled about that person’s sponsorship or approval of the product.” In this case, he found it “reasonable to infer from these allegations that American Girl intended to evoke Walkowicz’s public image to lend legitimacy and realism to the Luciana Vega doll.”

In refusing to dismiss the Lanham Act claim, Judge Peterson rejected American Girl’s argument that Walkowicz can’t sue under the Lanham Act because they haven’t plausibly alleged a commercial interest protected by the Act. “Walkowicz plausibly pleads that they have a commercial interest in giving scientific presentations, appearing on scientific television shows, and participating in science-related events,” Judge Peterson wrote.  “And Walkowicz alleges that confusion about whether they endorsed the doll has ‘led to interference with [their] professional public persona’ and ‘dilute[d] the value of [their] name.’”

Judge Peterson further found that Walkowicz doesn’t have to be engaged in direct competition with American Girl, i.e. “actively engaged in commercial activity associated with dolls or doll accessories or any company that could be considered a competitor of American Girl,” to bring a false-endorsement claim.  Rather, what matters is whether Walkowicz has “a reasonable interest to protect in a commercial activity.” According to Judge Peterson, Walkowicz cleared that hurdle. “Walkowicz has alleged a commercial interest in public speaking and outreach activities, which could plausibly be damaged by the perception that Walkowicz was associated with (American Girl’s) commercial activities,” he wrote.

Judge Peterson also rejected American Girl’s argument that Walkowicz hadn’t plausibly alleged a likelihood of confusion. As his opinion explained, consideration of consumer confusion in the false-endorsement context involves several factors, “including the level of plaintiff’s recognition among the segment of the society for whom defendant’s product is intended, the relatedness of plaintiff’s fame or success to defendant’s product, and defendant’s intent in selecting the plaintiff.”  Judge Peterson concluded that all three factors could conceivably support consumer confusion, writing:

Walkowicz is not toiling away anonymously in a lab, but is building a reputation as a celebrity scientist known to the general public. Walkowicz alleges that they are widely recognized for their scientific accomplishments, with some of their presentations having been viewed more than one million times. It’s reasonable to infer that this recognition extends to at least some part of American Girl’s intended market for the Luciana Vega doll. Regarding the second factor, Walkowicz alleges that they are known specifically for their research and presentations on astronomy and Mars exploration, both of which are key aspects of the doll and its accessories. Regarding the third factor, Walkowicz alleges that American Girl developed a doll with a similar name, hairstyle, clothing, and interest in space after its employees and consultants saw Walkowicz’s presentations.

Judge Peterson noted that the incidents of actual confusion cited by Walkowicz, namely that they have received multiple inquiries about whether they endorsed the doll based on the similarities between the doll and Walkowicz, also provide some support for the likelihood of consumer confusion. Because the allegations in Walkowicz’s complaint, accepted as true, would support the conclusion that Walkowicz has a protectable commercial interest and that consumers are likely to be confused about whether Walkowicz endorsed or is otherwise affiliated with the Luciana Vega doll, the court denied American Girl’s motion to dismiss Walkowicz’s Lanham Act claim.

If you have questions, please contact us

If you have any questions or if you would like to discuss the matter further, please contact me, David Einhorn, or the Scarinci Hollenbeck attorney with whom you work, at 201-896-4100.

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About Author David A. Einhorn

David A. Einhorn

David Einhorn, Chair of the firm’s Technology Law practice group, handles diverse matters in intellectual property and technology areas. He has obtained successes in many prominent and precedent-setting cases in the fields of patent infringement, trademark infringement, copyright infringement, cybersquatting, trade name misappropriation and insurance coverage.

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