How can I lawfully use someone’s public image?
Media outlets and advertisers are coming under increasing scrutiny over the unauthorised use of the public image of celebrities.
In Australia, it is more difficult for an individual to protect his or her personal image than in many other countries because there is no direct legal claim for a breach of privacy or a right to publicity. However, individuals do have legal remedies to protect their image and businesses that seek to use the public image of celebrities need to take care and ensure they have appropriate arrangements in place.
A recent case illustrates the issue
Warwick Capper leapt to prominence recently when his image was used to promote Nandos 25 year anniversary in business. The Herald Sun reported on 18 April 2016 that Mr Capper was threatening to sue Nandos for $289,300 for identity theft and that while in 2009, Mr Capper had given his consent to Nandos to use his name and likeness, Nandos had failed to obtain that consent for the recent anniversary campaign. Nandos is said to have offered Mr Capper $10,000 which was rejected by Mr Capper. The amount claimed of $289,300 is reported to be representative of the licence fee that would have been paid to him for the campaign.
The difficulty in Australia is that a person relies on the general law to prevent the unauthorised use of image. In the United States of America, there are rights provided to celebrities under the tort of invasion of privacy and the right to publicity of a person’s own image. In Europe, actions may be taken under Art 8 of the European Convention on Human Rights which are not available in Australia. Article 8 provides that “Everyone has the right to respect for his private and family life, his home and his correspondence” and with its very broad coverage, has been used successfully relied upon to protect private information including a person’s image. In the case of Campbell v. MGN Ltd (2004) 62 IPR 231, the House of Lords found that there was wrongful disclosure of Naomi Campbell’s private information and a breach of Article 8.
In Australia, while we are a signatory to the International Covenant on Civil and Political Rights, 1966, and article 17 provides similar rights to those under the European Convention, our law has not developed to establish a tort of invasion of privacy. While the issue has been raised in the context of privacy law reform, no action has been taken. In addition, unlike the USA there is no right of publicity in Australia. Accordingly, individuals in Australia seek to protect their image under general legal principles, including copyright, trade marks and misleading and deceptive conduct.
The Copyright Act 1968 (Cth) provides exclusive rights of publication to copyright owners in original artistic material such as a photograph. If a celebrity owns the photograph, they will be able to protect its reproduction, dissemination and use. If a third party photographer takes the photograph, the celebrity needs to ensure that they have either commissioned the photograph or obtained an assignment of the copyright in that photograph. If that is not the case, only the photographer would be able to take action to prevent the unauthorised use of that photograph and therefore, the celebrity image.
Another area where a celebrity may seek protection is under the Trade Marks Act 1995 (Cth) if the celebrity has registered a trade mark. Elle Macpherson has eight registered trade marks of her name and signature for use in television, media and clothing which provides an additional ground on which to remedy any unlawful use. This is limited to Ms Macpherson’s name and signature and not her image. If there was an unlawful publication of her image, she would need to seek remedies under other areas of law.
Misleading and deceptive conduct and passing off
If a celebrity image is used in such a manner that it misleads or is likely to mislead or falsely represent to consumers that a celebrity is endorsing a product or has a commercial arrangement in place with the company advertising the product, there may be remedies under the Australian Consumer Law or under common law for “passing off”.
In the case of Buttrose v. Senior’s Choice (Australia) Pty Ltd (2014) FCCA 2156, Ita Buttrose successfully sued the magazine for unlawful use of her biography and photograph. Ms Buttrose had previously supplied these to the magazine for a television commercial but the biography and image were used on the magazine’s website without her consent. In addition the use of the photograph was held to be a copyright infringement. The magazine was found to have engaged in misleading and deceptive conduct and passing off. Damages were awarded of $225,000 to Ms Buttrose personally and $200,000 to Ms Buttrose’s company in addition to indemnity costs.
What rights do you retain when you use social media?
The same legal principles referred to above apply on all media platforms, including social media. However, social media also presents some unique issues given the speed that information is disseminated, the lack of control over online content and the “contracts” which users sign up to with social media companies.
When you sign up with “Facebook” or “Instagram”, you grant a non-exclusive, transferable, royalty-free, sub-licensable, worldwide licence to use any content that you post on these sites. “Twitter” have even greater rights to modify and adapt any image that you post on their site. Whilst these sites are also available to USA residents who would be bound by the same licences, persons posting images rely on other rights to protect their images.
Ms Sofia Vergara, who is a USA celebrity famous for her role in the television program “Modern Family”, posted a “selfie” of herself on social media which was later re-published to promote a massage treatment cream without her consent. Ms Vergara filed a lawsuit claiming that she would never have consented to her image being used to promote the product in question and would not recommend the product at all. She was reported by ABC News on 27 January 2016 to be claiming $15 million US dollars in damages. This is despite the fact that Ms Vergara posted the photograph herself in the public domain. Because the USA recognises the ownership of her own image, only Ms Vergara may determine when and where her image is used.
What does this mean for advertisers and celebrities?
While the image of a celebrity in Australia is more vulnerable and difficult to protect than in overseas jurisdictions, celebrities can still protect their image by relying on a range of legal remedies. Advertisers must ensure that they have a contract in place with a celebrity to promote their image which clearly sets out the terms on which material can be communicated to the public, including the duration of consent, the forms of media in which the material can be promoted and the jurisdiction.
Dan Pearce, Partner
T: +61 3 9321 9840
Lyn Nicholson, General Counsel
T: +61 2 8083 0463
The information in this publication is of a general nature and is not intended to address the circumstances of any particular individual or entity. Although we endeavour to provide accurate and timely information, we do not guarantee that the information in this newsletter is accurate at the date it is received or that it will continue to be accurate in the future.