An interesting case in the US was recently launched by actress Brooke Shields (“Shields”) against makeup conglomerate Charlotte Tilbury Beauty Inc. (“Charlotte Tilbury”), which highlights the importance of brand expansion planning for celebrities and their namesake brand.
Understanding the Case
In May 2019, Shields issued a complaint in the Superior Court of California against Charlotte Tilbury. In addition, Shields also identified a number of additional defendant retailers who carry Charlotte Tilbury products, including Bloomingdale’s Inc., JC Penney Company Inc., Nordstrom, Inc., Sephora USA, Inc. and The Neiman Marcus Group Inc..
The issue lies in Charlotte Tilbury’s launch of a line of eyebrow pencils. Specifically, one of the colours of the eyebrow pencil line is called the BROOKE S. Shields has taken issue with this as Charlotte Tilbury did not obtain consent from Shields prior to bringing this product to the marketplace. For those not in the know, Brooke Shields is a famous actress and model who has enjoyed a lengthy career, beginning her career as a child actor in 1978. Aside from her acting skills, she is most known/identifiable for her oversized eyebrows. Through her notoriety, Shields was able to subsidize her income through various brand ambassador and endorsement deals. Of relevance to this case, in 2014 Shields collaborated with MAC Cosmetics with respect to a line of eyebrow pencils. In this instance, the product was called Veluxe Brow Liner. However, Shields likeness was used in the promotional materials used to sell/advertise the products. Shields complaint states that Shields has not collaborated with any other cosmetics company since the Mac 2014 collaboration as Shields is in the process of creating her own cosmetics line, with an emphasis on eyebrow enhancing products. Shields takes issue with Charlotte Tilbury’s authorized use of BROOKE S, as it is a rip off of her namesake brand.
The Causes of Action
It is Shields position that Charlotte Tilbury’s use of BROOKE S as part of the eyebrow pencil line constituted fraud, malice and oppression, which caused her actual damage. She claims that the defendants were attempting to knowingly profit off of her through use of her fame. In addition, Shields claims that the defendants violated her common law right of publicity. Shields is seeking an enjoinment from the continued unlawful activity, punitive and exemplary damages, disgorgement of profits, restitution against the defendants and all legal costs.
“Canadianizing” this Case
It is early days for this case and so a decision has not yet been rendered. It would not be surprising if this matter reached a confidential settlement. However, until we know the results of this case, it is interesting to ponder how this case would be treated in Canada.
The crux of Shields claim lies in the right of publicity. Under Canadian law, the equivalent would be the right of personality. Under this doctrine, an individual has the right to control the use of his or her persona and to commercially exploit his or her own personality. This right is statutorily protected in B.C., Saskatchewan and Manitoba. In Ontario and Alberta, this right is governed by a common law tort. The common law tort action of wrongful appropriation of personality protects against the unauthorized commercial exploitation of a person’s name, image, voice or likeness. In Canada, generally it is recognized that a celebrity’s name and reputation are entitled to be protected from unauthorized commercial exploitation. In order to be actionable, the unauthorized use must clearly identify the person before any wrong will attributed. Proof of harm is not a necessary element. However, the courts have instituted a reasonableness test for such claims, in terms of the award of damages.
Noticeably absent from Shields claim was a myriad of additional possible claims. Under Canadian laws, the following possible claims could also be included: trademark infringement, passing off, depreciation of goodwill, the tort of unjust enrichment and the tort of interference from economic relations.
As celebrities begin to monetize their fame, their name becomes a namesake brand and corporate asset. Their namesake trademark becomes a key component in licensing deals as they enter into brand ambassador/spokesperson roles. Interestingly, in conducting a search on the US Patent and Trademarks Office’s online database for trademarks owned by Shields is sparse. She owns only one trademark registration for BROOKE SHIELDS TIMELESS (in a logo configuration). The scope of the wares identified in the registration are limited to sunglasses, fashion apparel and home furnishings. There is no mention of cosmetics/beauty products. Shields would be in a better position if she had registered her namesake brand with the myriad of various products she had endorsed and, in particular, intends to launch as her own business venture. It is curious (and perhaps a lapse in strategy) that she has not.
It will be interesting to see how this case plays out and whether Charlotte Tilbury will buckle to settle. Regardless of the outcome, celebrities are also best served to recognize that their name is a namesake brand that should be proactively protected through trademark registration and controlled through a robust licensing regime.