At the end of July, Kim Kardashian filed a lawsuit against Old Navy LLC, and its parent company, The Gap Inc, for using a look-alike in its February “Super C-U-T-E” ad campaign. The complaint was filed in the Los Angeles registry of the U.S. District Court on the basis of false or misleading representations and infringement of both common law and statutory rights of publicity. But what protection do celebrities have in
Australia against the use of look-alikes?
On 18 February 2011, Old Navy released its “Super C-U-T-E” ad via Facebook and YouTube, which features Melissa Molinaro dancing and singing about, yep, you guessed it, looking “Super C-U-T-E”. The ad now has over 2.4 million views on YouTube, though it would be interesting to know what this count was before news of Kim’s lawsuit hit the press. Melissa Molinaro does have very similar features to Kim… check out the ad here, and decide for yourself.
On 25 February 2011, Old Navy tweeted (regrettably in hindsight): “Breaking News!! @CBSNEWS reports that Old Navy’s Super CUTE star looks like @kimkardashian. #LOL. What do you think?” To make things even worse for the Old Navy camp, hundreds of fans commented on its original post that they thought it was Kim, at least at first. Later, Old Navy engaged in a number of marketing moves, which could be described as at least “cheeky”, including posting a story about the Kim Kardashian comparisons on their Facebook page, tweeting “It’s Look Alike Day! who’s your celebrity double?” and launching an Old Navy Booty Appreciation Patrol. It will be interesting to see how much, if any of this material Kim uses in Court.
In the complaint, available to view here thanks to TMZ, lawyers for Ms Kardashian allege that the ad uses Kim’s “likeness, identity and persona”, and features “qualities, attributes, traits and storylines” associated with her. Luckily for Kim, I don’t think there is any requirement that these “traits” or “storylines” be unique identifiers, as getting a mani-pedi, going to the supermarket or using one’s C-U-T-E-ness to avoid a traffic citation are likely to be “storylines” which could easily be attributed to any Hollywood celebrity.
The complaint also focuses on Old Navy’s unlawful use of her name, perhaps making reference to the 25 February tweet, which one imagines has a marketing executive somewhere shaking in their boots. On the basis of Old Navy’s conduct as a whole, it is alleged that it has misled or deceived customers into believing that Kim has endorsed, sponsored or otherwise approved their products, that it is likely to cause confusion and has caused actual confusion. Further, it is said this conduct has been done in conscious disregard of Kim’s rights of privacy and publicity, and of her exclusive right to control the use and exploitation of her name, likeness, identity and persona.
Interestingly, Kim has also included “[John/Jane] Does 1 – 10” as additional defendants in her claim, allowing her to amend the claim at a later date to include the true names and capacities of any other defendants when or if ascertained. Kim is seeking an injunction, as well as a bevy of damages, including an account of profits, “in an amount to be proven at trial”, which could allegedly total more than US$20 million.
The celebrity image has long been regarded as a uniquely valuable commodity, and the United States has a huge body of case law to prove it. Part of successful image management involves determining the products or services to which a celebrity will or will not put their name. It is therefore no surprise that Kim’s complaint emphasises the strict control she maintains over the manner in which her image is used, and the products of ‘acceptably high quality’ she is prepared to endorse (such as, say weight-loss supplements, cupcakes, a fitness series, at-home laser hair removal, fake tan, credit cards for children, and public toilets in Times Square). It is important to note though, that Kim has previously drawn a line across some products: “I have said no to [putting my name to] butt enhancement pills”.
Other Hollywood celebrities have been successful in look-alike claims, including:
(a) Jacqueline Kennedy Onassis, who once got an injunction to prevent Christian Dior from featuring a look-alike in a print ad;
(b) Bette Midler, who was awarded US$400,000 in damages after Ford Motors used a lookalike to perform her hit song “Do you want to dance” to “sound as much as possible like the Better Midler record”; and
(c) Lindsay Lohan, who settled out of Court with eTrade over their use of a ‘milk-aholic’ baby named Lindsay.
But what about in Australia?
In Australia, there is no common law or statutory right of publicity. As such, any celebrities in Australia who are unimpressed with the use of a look-alike would primarily need to rely on:
(a) s 18 of Schedule 2 to the Competition and Consumer Act 2010 (Cth) (Australian Consumer Law – “ACL”), for misleading or deceptive conduct;
(b) s 29 of the ACL for misleading and deceptive representations; and/or
(c) the common law of passing off.
Being a ‘celebrity’ is generally a requirement for these sorts of claims, as an ordinary person may struggle to demonstrate commercial value in the use of their likeness. Further, in Australia, as opposed to in the US, the celebrity must establish a misrepresentation or misleading or deceptive conduct, misappropriation of reputation is not sufficient. The Court will look to the surrounding circumstances to determine whether any commercial connection is inappropriately established. For example, Olivia Newton-John was unsuccessful in seeking an injunction against Maybelline for using a look-alike in an advertisement followed by the tagline “Olivia? No. Maybelline,” on the basis that the tagline was a disclaimer.#
If the endorsement alleged would lower the celebrity’s reputation, an action for defamation may be possible, but can be difficult to prove. Celebrities might also consider registering trade marks for some aspects of their identity, for example, their name. This will provide stronger protection of their rights.
# Newton-John v Scholl-Plough (Aust) Ltd (1986) 11 FCR 233.