It should come as no surprise that journalists and bloggers sometimes accept gifts – and specific to our interests are journalists who accept clothing and accessories from designers they then write about. It’s hard to trust a review of a certain collection when you know the person scribing said review is known to welcome gifts. And more than just ethical considerations and questions about how honest a review is, there are also laws in place that prevent just such a compromise when it comes to being a journalist/blogger.
Somewhat similarly is the phenomenon in which celebrities are given countless luxurious gifts. One major thing that makes this relationship different, though, is that instead of offering an opinion on a designer and influencing readers’ opinions, celebrities are a form of advertising. In exchange for the garments, celebrities attract interest - and buyers - just by wearing the gift to, say, the grocery store. Just such a situation is currently the center of a legal battle between Halle Berry and Toywatch S.p.A.
Berry filed suit against the Italian company in response to its use of her name and image to advertise and sell watches. The lawsuit, filed in the United States District Court for the Central District of California, alleges violation of the actresses right of publicity and right of privacy as well as trademark, trade name, trade dress, and slogan infringement for using her name and image in their ads without her permission. The complaint says that Berry would not "voluntarily appear in print or other media for a company or product unless she carefully selects and believes in the company and product" and unless she is compensated appropriately. She is seeking monetary and punitive damages and a permanent injunction prohibiting Toywatch from using her likeness in any way.
The Italian company filed a response denying each allegation due to the fact that privacy laws “do not apply to the acts of these defendants that occurred outside of the United States.” And because the ads were published in Italy, all infringement, trademark, and logo laws do not apply to them because they are “protected by the doctrine of nominative fair use”.
First, let’s discuss the infringement issues. Nominative fair use is a trademark infringement defense that protects the ability to use the trademark of another to describe a product, or to compare it to another product. Courts generally consider three requirements to determine if the nominative fair use defense should apply to a particular case: (1) the trademark owner, product, or service in question must not be readily identifiable without use of the trademark; (2) the user must use only as much of the mark as is necessary to identify the trademark owner, product, or service; and (3) the user must do nothing that would suggest sponsorship or endorsement by the trademark owner.
Our guess is that Toywatch will have the most trouble showing that the use of Halle Berry’s name and image does not suggest endorsement or sponsorship.
Now let’s look at publicity rights. The Right of Publicity in California (where the suit was brought) generally protects against the unauthorized use of a person’s name or likeness for commercial purposes. California provides statutory and common law rights when it comes to the Right of Publicity. The primary difference between these two sources of protection is that the common law right is broader in that it is not explicitly limited to commercial uses of someone’s identity. Both require that there be a lack of consent, though, which Toywatch claims it has: "To prove that Defendants violated her right of publicity, Plaintiff must prove that her likeness was used without her consent." The watch company goes on to say, "however, if Plaintiff has a history of accepting merchandise from individuals whom she knows are employed by marketing agencies, for example, it is likely that Plaintiff consented to the use of her image when she accepted the subject watch."
Berry admits that she accepts clothing and accessories from various designers. But the actress contends that they are just gifts and not a form of consent to use her in ads. So the central question is whether or not accepting a gift is also a form of consent when it comes to advertising.
A few years ago, Shirley Jones, star of The Partridge Family, brought suit in California against Corbis Corporation, a digital image company that licenses the rights to photographs. Jones’ complaint was that among Corbis’ photos, there were some of her on the red carpet and she had not given consent. A judge ruled that stars, Jones included, give implied consent to use their likeness in photographs by choosing to walk down the red carpet knowing that photographers would be there. Perhaps the same logic applies here. It’s at least arguable that when celebrities like Berry accept a gift, they imply consent to use their likeness for advertising purposes related to the gifted product.
Like it or not, celebrities receive luxurious gifts all of the time. Whether that means a company can then use their likeness to advertise a gifted product has yet to be seen, but this case could certainly change the dynamic between a celeb and those bestowing gifts.
JENNIFER WILLIAMS is a recent law school graduate who writes about fashion, the legal avenues available for protecting it, and the ways in which the laws are falling short. She is currently awaiting admission to the NY State Bar. For more from Jennifer, follow her on Twitter.