Friday 6 June 2008

Celebrity endorsements and damages

From Manatt Phelps & Phillips LLP's website comes a note ("Uma Thurman sues Lancôme for using her face in ads") that sparks off some interesting issues at the IP/finance cusp. The note reports that actress Uma Thurman has sued L’Oréal SA’s Lancôme for $5 million in a Manhattan federal court, complaining that the latter was continuing to use her likeness when marketing its products even years after the expiration of the licensing agreement (September 2004 for Europe, December 2004 for the rest of the world). Lancôme maintains, among other things, that the licensing agreement excuses it from liability if third parties continue to use Thurman’s image after the expiration of the contract.

Among the interesting issues raised by situations such as this, the question arises as to the extent to which damages for loss of licensing opportunity are available to a celebrity. Any continued unauthorised use of celebrity names and likenesses can be viewed as a sort of involuntary licence, the terms of the existing licence giving at least a clue as to the commercial worth, or 'going rate', which that use is worth -- but the same continued unauthorised use may have the result of delaying or even preventing the celebrity securing a subsequent endorsement contract in the same or another sector. In the UK, the notion of "damages for loss of opportunity to enter a contract" has never been warmly endorsed in general tort law, though the Court of Appeal in Gerber v Lectra seemed to accept it as a possible head of damages in respect of patent infringement. Where do other countries stand on this? Any comments or suggestions?

1 comment:

Julian said...

Mads Marstrand-Jorgensen at Norsker & Co recently published a relevant case note on this issue.

The Danish Supreme Court in The Danish Handball Players Association v Aller Press A/S (Case 95/2004) had to consider the quantum of damages resulting from the unauthorised publication of poster-size photos of the successful Danish womens handball team. Marstrand-Jorgensen reports that Aller Press A/S (a major Danish publisher) enclosed in one of its weekly publications an insert of the team on one page and the goalkeeper on the other. The team and the goalkeeper claimed compensation from the publisher as they had not consented to publication of their photos.

Neither the Maritime and Commercial Court nor the Supreme Court found that the team or the goalkeeper had transferred the right to commercial use of the photos. Consequently, it was found that commercial use of such photos could take place only with the players’ consent and such consent had not been given in this case.

The Supreme Court further found that the photos in question could not be regarded as part of the editorial coverage of the European Championships. Consequently, the publisher’s marketing of the photos constituted illegal commercial use of the right to a person’s own image and the publisher was ordered to pay Dkr100,000 in damages, plus costs.

For further information on this topic please contact Mads Marstrand-Jorgensen at Norsker & Co by telephone (+45 33 43 31 00) or by fax (+45 33 13 38 38) or by email (