In the 1980s, Brooke Shields became an internationally recognized actress, model, and fashion icon, and was named the unofficial face of the "80s look" by Time Magazine. Complaint at 1, Shields v. Beautylish (Cal. 2019) (No. 19ATCV16029). Ms. Shields' signature thick, bushy eyebrows were a major part of this it-girl's "80s look," were "a target for endorsements and collaborations" and were even the subject of profiles in magazines such as Instyle, Elle and Vogue. Id. at 2.

Therefore, it raised some eyebrows in early 2019 when Charlotte Tilbury Beauty (Charlotte Tilbury) began offering an eyebrow pencil under the name "Brooke S." Id. Taking umbrage, Brooke Shields commenced suit in May 2019 in the Superior Court of California, L.A. county, against Charlotte Tilbury and retailers selling the "Brooke S." product, including Sephora, Neiman Marcus, and Nordstrom alleging that the defendants violated her right of publicity. Id. at 4-5. The suit also seeks an injunction to prevent further use of "Brooke S." and unspecified monetary damages. Id. at 6-7.

Although the advertisements for the Brooke S. brow pencil do not reference Brooke Shields, an ad on Amazon states that this product is "inspired by the supermodel brow of the '90s," and at least one customer appears to believe that this product was inspired by Brooke Shields. In a customer review for the Brooke S. shaded brow pencil, a customer wrote, "I always was told that I have eyebrows like Brooke Shields, so this confirms it!" Further, the Brooke S. shaded brow pencil is among many products offered by Charlotte Tilbury that that reference or hint at celebrities, including the Naomi Brow Lift pencil, presumably referencing supermodel Naomi Campbell, and a lipstick line that Charlotte Tilbury admits is inspired by celebrities, which includes shades named Kim KW, Bosworth's Beauty, and Kidman's Kiss referencing Kim Kardashian West, Kate Bosworth, and Nicole Kidman, respectively.

But is the use of "Brooke S." (as opposed to Brooke Shields' full name) on an eyebrow pencil enough to violate Shields' right of publicity? Is it possible for a company to lawfully use the name of a celebrity as a tie-in to a product seeking to connote a celebrity's characteristic or feature without being successfully challenged or having to obtain a license?

Photo: Ekaterina Jurkova via Shutterstock

The right of publicity is governed by state law, and therefore, the answers to these questions depend on which state's law applies. It is unsurprising that Ms. Shields filed suit in California as California has one of the most comprehensive right of publicity laws as compared to other states, including New York.

New York recognizes a statutory right of publicity under the Civil Rights Law as an aspect of the right of privacy pursuant to N.Y. Civ. Rights Law §§50 and 51, which protects a living person's name, portrait, picture, and voice from third-party use for advertising purposes or for the purposes of trade without written consent. N.Y. Civ. Rights Law §§50 and 51. The term "name" used in the relevant New York statute is construed narrowly, and refers to a person's full name rather than his or her surname unless the surname is used along with "some identifying material which unmistakably identifies the complainant or the surname standing alone has been so used by the complainant as to be well known to the public as identifying the complainant." People of Complaint of Maggio v. Charles Scribner's Sons, 130 N.Y.S.2d 514, 519 (1954).

Additionally, nicknames, stage names, and pen names have been denied protection under New York's right of publicity statute unless such name is known among the public and widely identified with the relevant person. See Davis v. R.K.O Radio Pictures, 16 F. Supp. 195, 196 (S.D.N.Y. 1936) (refusing protection for stage name); DeClemente v. Columbia Pictures Indus., 860 F. Supp. 30, 52-53 (E.D.N.Y. 1994) (refusing protection for the use of the plaintiff's nickname); and Geisel v. Poynter Prods., 295 F. Supp. 331, 355-56 (S.D.N.Y. 1968) (refusing protection for pen name).

For example, in Geisel v. Poynter Prods., 295 F. Supp. 331, 356 (S.D.N.Y. 1968), the author of the well-known Dr. Seuss books brought suit against a magazine for making and selling a Dr. Seuss doll. The court refused to recognize a right of publicity in the name Dr. Seuss because the actual name of the author was Theodor Seuss Geiselm and assumed names and pen names were deemed not protectable under New York right of publicity law. Similarly in DeClemente v. Columbia Pictures Indus., 860 F. Supp. 30, 52-53 (E.D.N.Y. 1994), the court determined that a right of publicity did not exist in plaintiff's nickname "the Karate Kid" because plaintiff failed to show that "his public personality as the Karate Kid was so notorious to the public that it had become closely and widely identified with the person who bears it, or that he was identified as the Karate Kid virtually to the exclusion of his true name." (internal citations omitted). However, in Ali v. Playgirl, 447 F. Supp. 723, 727 (S.D.N.Y. 1978), the court determined that an image was "clearly recognizable" as boxing titan Muhammad Ali, in part because the figure in the image was described as "The Greatest" and Ali was "regularly identified as such in the news media" and in Orsini v. E. Wine Corp., 78 N.Y.S.2d 224, 224 (App. Div. 1948), the court determined that the use of the last name Orsini in addition to the family crest was enough to identify the plaintiff in the public mind so that a right of publicity was implicated and defendant's motion to dismiss was denied.

Unlike New York, rights of publicity in California are protected by statute and common law. California's right of publicity statute protects a person's name, voice, signature, photograph, and likeness and California's common law extends to anything that evokes a person's image or identity. Cal. Civ. Code §3344(a); White v. Samsung Elecs. Am., 971 F.2d 1395, 1397-98 (9th Cir. 1992). California's common law right of publicity protects appropriations of celebrities' identity even if they do not strictly fit into traditional definitions of a name or picture. Abdul-Jabbar v. Gen. Motors, 75 F.3d 1391, 1399 (9th Cir.), opinion amended and superseded on denial of reh'g, 85 F.3d 407 (9th Cir. 1996). Applying California law, the Ninth Circuit has stated, "it is not important how the defendant has appropriated the plaintiff's identity, but whether the defendant has done so." White, 971 F.2d at 1398.

Because of this broad view of publicity rights, the courts in California have found the following commercial uses to be violations of California's common law right of publicity: the use of a racecar driver's well-known race car in an ad for cigarettes (Motschenbacher v. R.J. Reynolds Tobacco Co., 498 F.2d 821, 827 (9th Cir.1974)); the use of a voice that sounded like Bette Midler in a radio ad (Midler v. Ford Motor Co., 849 F.2d 460, 463 (9th Cir.1988)); and the use of a robot dressed and posed like Vanna White near a "Wheel of Fortune" set (White, 971 F.2d at 1397-98). In view of the broad protections afforded by California law, it is unsurprising that pseudonyms and nicknames are protected under both that state's statute and common law. Ackerman v. Ferry, 2002 WL 31506931, at *19 (Cal. Ct. App. Nov. 12, 2002)).

With these frameworks in mind, and because the suit was brought in California, Brooke Shields has a greater chance of success in her suit against Charlotte Tilbury. In California, the use of "Brooke S." on an eyebrow pencil (when Ms. Shields is the poster-woman for thick brows) may be enough to evoke Brooke Shield's identity in the minds of consumers so as to violate California's common law. Under New York law, the use of Brooke Shields' surname would most likely be insufficient by itself to be a violation of New York publicity law. Further, Ms. Shields would face difficulty in New York to successfully show that the eye brow pencil serves as "identifying material which unmistakably identifies" Shields. People of Complaint of Maggio, 130 N.Y.S.2d at 519.

Given that the right of publicity in California encompasses anything that evokes a celebrity's image, retailers that sell goods to consumers in California should be weary of including a portion of a celebrity's name on a product inspired by a characteristic of such celebrity. Additionally, as shown by the above analysis of the suit by Shields against Charlotte Tilbury, the outcome of a right of publicity case can heavily depend on where a suit is commenced and which states' law applies. As such, celebrities wishing to enforce their publicity rights should seriously consider where to file their case to maximize their chances of success.

Edward Weisz is a New York City-based partner in Cozen O'Connor's intellectual property group. Brianne Polito is an associate in the group.