Advertising Law Blog

Everyone can probably picture the image in their heads - the final scene from the classic film Casablanca. Ingrid Bergman, Humphrey Bogart . . . and the trenchcoat. A movie-still from that final scene is at the heart of recently-filed lawsuits in New York and Los Angeles between Burberry Limited and Burberry Group PLC, on the one hand, and the heirs of Humphrey Bogart (Bogart, LLC), on the other hand.

The controversy arose when Burberry used a still photo from Casablanca of Bogart wearing the famous trenchcoat. Burberry placed the photo on its Facebook "Timeline" as part of a "historical timeline depicting the evolution of Burberry's culture, products and people." Burberry also used the Bogart photo on its other social media sites such as Twitter and Instagram. Burberry claims that it licensed the image from Corbis Images for "editorial use."

Bogart, LLC claims that it owns "common law" rights in the HUMPHREY BOGART and BOGART trademarks, as well as the exclusive right to use Humphrey Bogart's name, image, likeness, voice and celebrity. Bogart, LLC alleges that Burberry's use of the name and image of Bogart infringes Bogart, LLC's rights. Burberry alleges that it has not infringed any of Bogart, LLC's rights, and that the use of the Bogart photograph is protected by the First Amendment. Namely, Burberry claims that the photograph was not used in a way to suggest a sponsorship or endorsement of Burberry, but was instead a "historical positioning of the image within an educational project along with numerous other people wearing Burberry apparel over the last century."

Although it is not certain how this case will ultimately be resolved, it raises a number of issues regarding the interplay between copyright, trademark, right of publicity and commercial vs. non-commercial uses of the same. For example, even though Burberry licensed the use of the photograph itself and it thus is not infringing any copyrights in the photo, Bogart LLC can still maintain a claim for violating Bogart's right of publicity. In addition, while use of the name and likeness of a famous person for pure news reporting is protected by the First Amendment, Burberry's use may be deemed more of a commercial use (i.e. Burberry is using the image in connection with its marketing efforts), and hence, Burberry may not be able to rely on the First Amendment as a defense.

As a best practice, whenever a company wishes to use a celebrity name or likeness in connection with its business in any way, it is recommended that the use of the name or likeness be cleared with the celebrity or his/her heirs. Even if the name or likeness is not used in a traditional advertisement, and the company makes no express statements to indicate an endorsement or sponsorship, the company may still be found liable for violating the celebrity's right of publicity or other such rights.