Yohana Agurto, a single mother in Chile with four children, struggled to put food on the table when the COVID-19 pandemic struck. To earn some cash, Yohana started selling organic honey from her pantry stash.
When Yohana stumbled upon a social media post of actor Mel Gibson, inspiration struck. She thought Mel sounds like the Spanish word for honey, which is miel. So, she had a graphic designer friend create a logo based on the iconic scene from ‘Braveheart’, printed it out then glued them onto containers. And her honey business, Miel Gibson, was born.
Everything was going well – she was earning enough from the venture to pay the bills. Until one day, she received an email with the subject ‘Cease and Desist/Miel Gibson’.
In the letter, Mel Gibson’s attorney brought up the fact that Yohana was profiting from Gibson’s name and likeness in her honey products. Thus, they are taking legal action.
This legal battle between Yohana Agurto and Mel Gibson’s party is just one example of what can happen if you use celebrities’ names or likeness without authorisation.
What’s in a Name?
Celebrities are public figures. In a way, their names are also their personal brand. This is why many celebrities trademark their names, and sometimes even their baby’s names, catchphrases, song lyrics or signature poses.
When someone owns a trademark to something, they gain exclusive rights to it. It means no one can use that property unless they obtain the owner’s authorisation. If you use a celebrity’s name without consent for commercial purposes, you may be liable for trademark infringement.
Most countries have the right of publicity, which is an individual’s right to protect against misappropriation of their name, image or likeness for commercial use. Although Australia doesn’t have this right, the country does have the legal concept of passing off.
What is Passing Off?
Passing off is a common law tort that enforces unregistered trademark rights. It usually applies to a celebrity falsely represented as being affiliated with a brand, product or service.
Even if you grab a celebrity’s image from a public domain (i.e., free of use), you still need to obtain their permission for using it in your business. Copying or downloading these photos for personal use or commercial benefit are two different things.
Many celebrities are extremely litigious and protective of their brand and image. Here are other instances of public figures suing an individual for using their name or images without authorisation.
What happens if you use a celebrity for promotions without consent?
In 2014, pharmacy brand Duane Reade tweeted a photo of actress Katherine Heigl. The caption said that Heigl ‘can’t resist shopping’ in this pharmacy. Although the actress does shop at this drug store, she’s not an official endorser of the brand.
As such, Heigl sued Duane Reade for $6 million and asked to take down the photo on Twitter.
Another example is actress Sandra Bullock’s legal altercation with ToyWatch USA in 2012. The watchmaker used Bullock’s name to advertise a diamond-encrusted watch, saying that it’s the same model the actress used in her movie ‘The Blind Side’.
Bullock claimed that her publicity rights have been infringed and asked for monetary damages. The two parties settled in 2014, although no details were revealed.
These incidents with Mel Gibson, Katherine Heigl and Sandra Bullock show that you should be careful with using public figures’ names and images for commercial intent. It’s tempting to try and gain more traffic by using celebrities’ names, but it can do your business more harm than good.
Leading Trademark Specialist in Australia
Pinnacle TMS is a trusted trademark specialist in Australia. We help businesses learn about the importance of trademarks and how these protect brands. We offer a range of trademark services, from registration and renewal to management.
Contact us today to learn more about trademarks.