Many consumers want to dress like their favourite celebrities. In recognition of this, many online retailers seek to draw comparisons between the style or appearance of their garments and those worn by celebrities. This is often achieved through licensing the use of a photograph or agreeing a sponsorship deal with the celebrity to endorse a particular range of clothing. However, it is now possible to use an AI-powered application which is capable of matching celebrity clothing styles with garments offered for sale by retailers. Consumers can purchase clothing by viewing a photograph of a celebrity in an App capable of searching for alternative garments similar to those shown in the photograph. The technology allows consumers to either purchase the exact items worn by the celebrity or a cheaper alternative.
Such applications are innovative and offer alternative ways for consumers to shop. Whilst they will certainly appeal to those seeking to imitate the styles of their favourite celebrities, the concept throws up various intellectual property (IP) and licensing issues which are of particular interest.
In order to function, the proprietor of the App will need to license the use of the various photographs of celebrities used in the App. Any licence will need to capture future copyright works to be provided by the licensor as the relevant photographs used within the App are taken by photographers and stored in a database.
The terms upon which the photographs are licensed is a particularly interesting issue. Some third parties may demand an exclusive licence for certain photographs, meaning these new Apps could have a knock on effect on other revenue streams for the licensor. Equally, the term and territorial scope of the licence would need to be very carefully drafted to ensure the rights can be properly exploited. Similarly, the licensor would only be able to license the use of those photographs for which the copyright had been assigned to them or licensed on terms which permit sub-licensing. It is possible that the original author of certain photographs has retained ownership and/or the right to license the copyright work to third parties. If an author terminates any arrangement they have with the licensor, this may affect the use and value of the App.
Image rights, which exist in the US, do not exist in the UK as such. However, celebrities have been able to issue legal proceedings against defendants who make an unauthorised use of photographs or images of that celebrity through the tort of passing off. The celebrity must establish sufficient goodwill in their name and/or image through trade by, for example, endorsing products through sponsorship agreements, selling memorabilia or carrying out modelling work. The defendant's acts must amount to a misrepresentation, usually by creating the impression that the celebrity endorses the defendant's product or has licensed the use of their image. Lastly, the celebrity must establish some form of damage. This will often be the loss of potential revenue through licensing their image or name to third parties.
Whilst such Apps will license the use of the copyright in a photograph of a celebrity, it is doubtful that the relevant celebrity in question has licensed the use of their image. There is an argument that the use of a celebrity's image in the App on a platform from which the proprietor will derive revenue, so as to allow consumers to purchase the same or similar garments to those worn by the celebrity in the photograph, allows the App proprietor to trade off the celebrity's goodwill and misrepresents to the consumer that the relevant celebrity has authorised such use.
Trade mark infringement and passing off
Many high-end fashion designers will design clothing which is intended to be worn by celebrities, often at prestigious events such as award ceremonies or film premieres. The designer may then convert the design of that garment into something which is mass produced and sold in its retail stores to the public. The App not only allows consumers to purchase these garments, but also compares these garments to those offered by other retailers which are similar but cheaper. This gives rise to two issues.
- The first is the potential for a brand owner to issue legal proceedings for trade mark infringement. It is in infringement of a trade mark to use a similar or identical sign where such use takes advantage of or is detrimental to the distinctiveness or reputation or the trade mark. Given the increasing number of non-traditional trade marks, such as colours or shapes, it may be arguable that the comparison of a high-end designer garment with a cheaper high-street designer garment is detrimental to the former's reputation. Of course, this requires the infringer to be making use of a sign similar or identical to the reputable trade mark. However, by way of example, the Louboutin "red sole" shoe has been successfully registered as a trade mark in various jurisdictions meaning a claim for trade mark infringement could be possible.
- The second is the potential for a brand owner to issue legal proceedings for passing off, specifically, reverse passing off. This is a cause of action where, instead of trying to pass off their goods as being those of another entity's, the defendant tries to pass off another entity's goods as their own. This claim prevents an entity from taking credit for someone else's idea or concept. Such a claim may exist where cheaper alternative garments are sold as substitutes for the original worn by the celebrity.
A tool to monitor IP infringement?
As well as being extremely appealing to consumers, such an App may actually prove an unlikely but valuable tool for those in the fashion retail sector looking to police and enforce their IP rights. The App allows those supplying high-end garments to celebrities to quickly and cheaply monitor which competing brands are marketing garments which infringe the IP rights subsisting in the original design. In this sense, the App provides a tangible basis for arguing that IP infringement has diverted sales away from the rights-holder because the App is actively providing the consumer with an alternative, cheaper product. It will be interesting to see if and how this argument becomes a reality in infringement actions.