Popstar Ariana Grande is seeking US $10 million from US fashion retailer Forever 21 following its unauthorised use of her trade marks, likeness and copyright material (including images, lyrics and audio-visual clips) for the purpose of creating a false perception that she endorsed its products.
Forever 21 approached Grande in late-2018 to early-2019 seeking her partnership for a social media marketing campaign, however, Grande reportedly declined the proposal due to Forever 21’s unwillingness to pay the going rate for an endorsement of a celebrity of her stature.
Grande alleges that Forever 21 nevertheless proceeded with the campaign which shared striking similarities to her “7 Rings” music video. The campaign had an overall similar look and feel to the “7 Rings” music video, featuring a look-a-like model wearing recognisable clothing and hairstyles, together with unauthorised use of lyrics, audio-visual clips and at least 30 copyrighted images.
Grande is claiming breach of her right to publicity in the US, false endorsement, trade mark infringement (due to Grande’s various registered trade marks, including with respect of clothing and jewellery) and copyright infringement.
The position in Australia
There is no express right to publicity in Australia. However, Australian businesses seeking to gain from the reputation of a well-known personality through unauthorised use of their name, image, likeness or intellectual property, may still find themselves in hot water under the tort of passing off if consumers are likely to be misled into believing there is a connection or association with that personality.
Further, as well as the potential liability Forever 21 is facing for trade mark and copyright infringement, a campaign of this nature in Australia could also see businesses liable for misleading and deceptive conduct or false affiliation or endorsement under the Australian Consumer Law.
While celebrity endorsements are often an effective element of a marketing campaign, in the age of the ‘social media influencer’, businesses should ensure that such campaigns are not misleading in any way.
Key considerations to keep in mind when using celebrity endorsements include:
- seeking proper consent and entering into an appropriate agreement before using a well-known personality and their intellectual property in your marketing campaign
- if the appropriate consent has been provided, considering whether any commercial relationship with the celebrity should be disclosed to ensure consumers are not misled, including by the use of hashtags such as #ad or #sponsored
- ensuring that any review or testimonial provided by the celebrity is reflective of their genuine feelings with respect to the particular product or service
- although there are additional factors in this particular instance (including Forever 21’s original proposal to Grande) which are likely to give weight to the extent of damages sought, businesses should bear in mind that significant liability may still arise in the absence of such factors.