In the months leading to what was arguably the biggest wedding event of the past decade, certain designers enjoyed a surge in popularity arising from Kate Middleton’s personal wardrobe selections: from the Burberry trench coat that spurred an online shopping frenzy, to the navy blue Issa dress that inspired dozens of knock-offs, to the sapphire engagement ring (once belonging to the late Princess Diana) that stimulated demand for non-diamond engagement rings, both the authentic articles and the inevitable imitations were rapidly swept off the shelves. Naturally, the fashion world is seeking to capitalize on the sudden popularity of the new princess. What avenues are available to those seeking to benefit from replicating the “Kate Middleton look” without crossing the legal boundaries?
Naturally, the fashion world is seeking to capitalize on the sudden popularity of the new princess.
Celebrity endorsements are a powerful tool used by brands to sell their products, and the resulting endorsement contracts can be lucrative for both the brand and the celebrity endorser. With potentially big money at stake, most of us might assume that celebrities have complete control over how their name or image is used in a commercial context. However, you might be surprised to learn that a celebrity’s legal ability to control their own image in an endorsement context is murky, and depends, at least in part, on the jurisdiction the celebrity hails from.
Unsuprisingly, the strongest legal protection available for personality rights appears to reside in the land of Hollywood, where California’s Civil Code offers broad protection for the use of a celebrity’s name, voice, image or signature in connection with commercial products.1 The economic exploitation of “personality rights” is treated under this legislation as a property right. Under the California Civil Code, personality rights may be sold or licensed, and after the celebrity’s death, these rights descend to the celebrity’s estate and remain in effect for a period of 70 years,2 equivalent to the term for copyright in the United States.
Outside the United States, however, there exists no similar legislation that protects personality rights as a property right, and celebrities wishing to enforce such rights against infringers must often rely on the common law tort of “passing off.” The tort of passing off exists to prevent a person from “passing off” their goods as originating from another person - for example, think of Company X passing off their handbags as originating from Louis Vuitton.
Theoretically, an action for passing off may be available to a celebrity whose image has been used without permission to endorse a product. However, it is often difficult to succeed in a passing off action in a false endorsement situation, owing to the requirement that a celebrity must prove that their name or image has acquired a reputation in the same field of trade as that of the infringing product. The difficulty arises because a celebrity normally acquires a reputation in their “personality” but not as the source of a particular product.
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However, in the British case of Irvine v. Talksport Ltd.,3 the British courts may have recently expanded the scope of passing off to cover false endorsement situations, holding that in order to succeed, a claimant must prove that they enjoyed a significant reputation at the time of the acts complained of, that those acts complained of created a false message, and that the false message is shown to have been misunderstood by a significant section of the market that the goods or services were endorsed by the claimant. The complainant in this case, Eddie Irving (a famous race car driver), succeeded in his passing off action against Talksport Radio, which had used a (legally acquired) image of Mr. Irving in publicity materials about the upcoming Formula One Grand Prix World Championship.
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Canadian complainants also have available the tort of “appropriation of personality” which applies specifically to false celebrity endorsement situations. To succeed in an action for appropriation of personality, a plaintiff must prove at least two elements: 1) that the exploitation of the plaintiff’s image clearly captured the plaintiff;4 and 2) that the exploitation was for a commercial purpose (that is, the image complained of must be part of an advertising campaign, as opposed to, for example, the use of photographs in a book about the person).5 The appropriation of personality tort, however, has not developed in Britain, and it remains unsettled whether a passing off action is always available to British celebrities who wish to stop others from using their image to sell products without permission.
Additional mechanisms for protecting individuals in Britain include the codes published by the self-regulating body of the advertising industry, the Advertising Standards Authority (ASA), which regulate the use of a person’s name or image in advertising. In particular, the Committee of Advertising Practice Code (CAP) covers non-broadcast marketing communications, and the Broadcasting Committee of Advertising Practice Code (BCAP) covers broadcast marketing communications. These Codes, although helpful, do not provide a complete prohibition against using a representation of a celebrity in print or broadcast advertising, and the provisions vary depending on the medium.
In the CAP, which applies to print marketing communications, obtaining the permission of an individual before implying that the person endorses a product is “urged” (but not mandatory) for obtaining clearance. Article 6.2 of the CAP, specific to Royal Family members, provides that prior permission is “normally” required before portraying any Royal Family member in a marketing communication. The BCAP makes it clear that prior permission is required before a living person may be portrayed in a television advertisement, but is only “recommended” in the context of a radio advertisement. Unlike the CAP, there is no specific mention of the Royal Family in the BCAP. And although an advertiser who wrongfully uses an image of Kate Middleton to endorse a product may face sanctions from the ASA, it is not the case that Kate Middleton herself could sue such an advertiser solely on the basis that the ASA Codes were violated.
In addition to the ASA codes, Lord Chamberlain’s Office, a department of the Royal Household, publishes guidelines for the use of Royal Family names and images in a commercial context; however, these are merely guidelines, and essentially consist of the Royal Family’s interpretation of its legal rights. While these guidelines point out that the names or images of Royal Family members cannot be registered as trade-marks under the governing legislation, there is no prohibition in the Trade Marks Act 1994 against the use of unregistered names or images in connection with products.
For royal wedding memorabilia, Lord Chamberlain’s Office also published a special guideline in which some of the usual rules about using the names and images of Prince William have been relaxed. These special guidelines permitted the proliferation of commemorative products created for the purpose of memorializing the wedding (provided such products are, of course, in “good taste”), while emphasizing that the use of images of the Royal couple should not create the appearance that a Royal Family member endorses any particular product.
In the end, for those lucky brands that Kate Middleton happens to prefer, the extensive media coverage of her fashion selections provides better advertising than these brands ever could. But for those brands who wish to capitalize on the Kate Middleton brand without her endorsement, it remains to be seen how advertisers will push the legal boundaries of image and personality rights in Britain.