Ben Coogan

Warwick Capper in legal fight with Nando’s franchise

Ben Coogan

22 April 2016

Competition and Consumer Law Confidentiality and Privacy Franchising

CAPPER!  Who doesn’t love the former AFL star, Warwick Capper?

He is certainly unforgettable from his days of playing for the Sydney Swans (and the Brisbane Bears for a short stint) with his tight short shorts, white football boots and flowing blonde mullet.

Nando’s clearly loves Capper too.  Well, perhaps up until recently.

Capper had been the face of a Nando’s advertising campaign in 2009 promoting their Tropico burger with the headline “The sun shines through our buns Warwick, not yours“.  He appeared across all media including radio, television, print and digital.

Then last year, Nando’s ran a 4-week advertising campaign when his name was mentioned in radio and bus advertisements without his knowledge. The outdoor ads that referenced Capper stated “25 years ago Warwick Capper had the shortest shorts in footy and Nando’s hatched down under“.

But apparently, Nando’s didn’t get Capper’s approval to use his name in the advertisements. Once it was brought to their attention, Nando’s said that they apologised and took action to remove the advertising from the market and offered Capper a payment.

That payment offer was not accepted by Capper and it had been reported that Capper responded with an invoice for $289,300.00. This all blew up recently and the following reports emerged last week. You can see the reports here and here.

It has been reported that Capper believes his case has strong similarities to the out-of- court settlement that basketball star Michael Jordan had in 2015 from two separate companies for alleged unauthorised use of his name in advertising. In that case, Jordan reportedly settled for approximately US$9 million.

This is not the first time that Australian sport stars or celebrities have had their image or name used without their authorisation and a legal dispute has ensued. In Hogan v Koala Dundee (1988) 83 ALR 187, the defendant had used Paul Hogan’s image from the Crocodile Dundee film to sell various Australian souvenirs in its shops. However, because the images were used without authority it was alleged that this created an association with the film. In that case, the Federal Court held that there was a wrongful appropriation of a reputation or wrongful association of goods with an image that belonged to Paul Hogan, and therefore granted an injunction to restrain further use of “Dundee” in connection with the Koala image  The Court did not award damages because there was no evidence on which to quantify any loss.

You might also recall Olympic swimmer Keiren Perkins successfully sued Telstra for the unauthorised use of his image in an advertisement. The advertisement in that case featured a photograph of Perkins wearing a swimming cap bearing the Telstra logo, accompanied by a statement that he preferred to use Telstra over Optus.  The Court held that the use of the photograph together with the statement that Perkins preferred Telstra’s use to that of Optus when in fact he had not made that statement about his preference at all was misleading. Perkin’s status as a celebrity known by the public as an endorser of a variety of products led the Court to find that Telstra’s conduct was misleading or deceptive.

The key part of all of this is that the mere use of a person’s image is unlikely to be found to mislead or deceive under sections 18 and 29 of the Australian Consumer Law (ACL) unless the person is a celebrity or a well-known endorser of products.  When a person is well known by the public as an endorser of products, the unauthorised use of his or her image in connection with that product may constitute misleading and deceptive conduct if the public is lead to believe this celebrity is endorsing this product.

Capper has become known for endorsing certain products over the years, including for quickbeds.com.au and for Nando’s themselves.

Capper is unlikely to have a claim for defamation or for breach of the tort of privacy, but on the face of it he may well have a claim for passing off and for contravention of the ACL. As to whether he is the Australian version of Michael Jordan remains to be seen. CAPPER!