George Clooney is not a trademark of Nespresso
By Tony Greenman
Nestlé is the owner of the Nespresso brand, under which it markets coffee capsules and espresso machines. The actor George Clooney appears in a series of commercials for Nespresso, looking informally suave in a casual suit and portraying himself in humorous situations, exchanging glances and words with good looking actresses, all centering on Nespresso capsules and espresso machines. Most of the action occurs in Nesprsso shops, often at the entrance to the shop.
Espresso Club also sells coffee capsules, but does not charge the client for the machine, only the capsules. Espresso Club commenced broadcasting a commercial, featuring a man, described by the court as a Clooney look-alike, similar but not identical in appearance to the American star. The look-alike also wears a suit and is seen walking into an Espresso Club store when a pretty woman catches his eye. A comical young Israeli man draws the attention of the look-alike to the fact that his car is being towed by the police, whilst at the same mocking his attire and pointing out that Espresso Club not only provide the machine, but also provide home delivery of capsules for no extra charges. The commercial opens with a notice that the actor (whose name is David Siegel) is not Clooney.
Nestlé filed a lawsuit with the District Court of Tel Aviv-Jaffa, seeking among other remedies, an interim injunction to prevent further broadcasting of the commercial. Nestlé based its suit on multiple grounds, most notably, copyright infringement and dilution of trademark and goodwill.
Nestlé based its copyright claim on the use of the Clooney look alike in the commercial. The Court, per Justice Magen Altuvia, rejected this argument, since, although there may be copyright in a fictional character that is sufficiently developed, there can be no copyright in a real-life character. The court rejected Nestlé ’s claim that Clooney appears in the commercials as a fictitious character, since it is clear that he plays himself, and sometimes his name is even used. The court also rejected the claim of Nestlé that the commercial copies of the "motifs" of its commercials. The court ruled that the Espresso Club commercial "suggests" Nestlé 's commercials in some respects, such as the use of a handsome man who exchanges glances with a good looking woman with a bag in her hand, but that use was a kind of nod and a wink or parody, of those commercial’s and within the bounds of Espresso Clubs freedom of expression.
Nestlé further claimed that the use of the Clooney look-alike dilutes its trademark and goodwill. Nestlé has a number of trademarks, but essentially the "Nespresso" mark was at issue. Nestlé claimed that its mark is a well-known mark, that has meaning and value beyond the product or service mark that it sells under the mark. Nestlé claimed dilution by blurring, which, it claimed, reduces the value of the mark and harms its ability to distinguish between Nespresso products and competing products. The court rejected this argument, citing the fact that the Espresso Club commercial makes no use of any of Nestlé 's registered trademarks. Nestlé 's claims that Clooney has become part of its mark was brushed aside by the court as not holding any water. The court also determined that Espresso had made no showing of actual blurring. Although the court held that goodwill may also be a kind of intellectual property, it rejected the claims of infringement on the same grounds as the trademark claim was rejected. because a court of appeals will rarely intervene in a lower court's decision on interim relief. Judge Solberg, who heard the petition, also concurred with the District Court's assessment of the balance of hardships. Furt
The court also held that the "balance of hardships" weighed in favor of Espresso Club since any harm suffered by Nestlé if the Espresso Club commercial will continue to be broadcast, and ultimately, Nestlé 's claim is accepted, can be remedied in damages. On the other hand, Espresso Club would suffer irreversible damages if its campaign, in which it invested substantial sums, were to be pulled off the air. The court continued and held that the competition between the two brands may even cause the market for coffee capsules to grow.
A petition by Nestlé for leave to appeal to the Supreme Court was rejected, mainlyhermore, the granting of an injunction would in effect give Nestlé the full remedy that it seeks in the primary action. The judge did not assess the substantive copyright, trademark and goodwill issues, leaving them to be decided in the primary action. However, the court clarified that a claim of dilution of trademark or of goodwill must be supported by proof of actual, or at least potential dilution and can not just "be thrown into the air". Justice Solberg also upheld the lower court's determination that an injunction would constitute an unwarranted restriction of Espresso Club's freedom of expression.
Would the result have been different if Clooney himself had joined the Nestlé suit? That would have raised the question of whether the use of the look-alike infringed Clooney's right of publicity, as has been found in similar cases, or whether the court would have held that because the public was not misled to believe the Siegel is in fact Clooney, no cause of action existed .
C.A. (TLV) 45219-12-14 Nestlé Societe Des Produits S.A v Espresso Club Ltd.
P.L.A. 910/15 Societe des Produits Nestlé v Espresso Club Ltd.