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PERSONALITY PROTECTION AND PUBLICITY RIGHTS

 

Yen May discusses the protection afforded by intellectual property laws over "publicity rights"

Beyond the paparazzi intrusions into the private lives of celebrities, the recent case involving Rihanna and Topshop (Fenty and others v Arcadia Group Brands Ltd and another [2015] EWCA Civ 3) highlighted other problems that come with the celebrity life. The case involved the sale of a fashion T-shirt by Topshop with a well-known image of Rihanna. This case raises the question of what control people, in particular celebrities, have over their image.

For many famous people, their fame provides a substantial source of income. Celebrities often endorse products and brands through advertising campaigns or release their own line of products. Fans buy these products thinking that it is endorsed by their idols. The recent trend of celebrities such as Jennifer Lopez, Britney Spears, Kim Kardashian, the Beckhams and Paris Hilton, releasing their own branded fragrances illustrates the great demand for such celebrity-branded products. It was reported that One Direction's perfume called "Our Moment" even outsold popular classic fragrances such as Chanel No 5 (the Guardian 20 August 2014).

In addition, the House of Lords has recognised "the right of a celebrity to make money out of publicizing private information about himself, including his photographs on a private occasion" in Douglas v Hello! Ltd and others (No 3) [2007] UKHL 21.

IMAGE RIGHTS

Although image rights exist in the United States of America, it is not recognised by the English Courts. This was confirmed in Fenty, where Kitchin LJ stated that "there is in English law no "image right" or "character right" which allows a celebrity to control the use of his name or image". It was also said in Douglas that "under English law it is not possible for a celebrity to claim a monopoly in his or her image, as if it were a trademark or brand."

As such, celebrities need to seek a different cause of action, such as breach of contract, breach of confidence, infringement of copyright or passing off, in order to protect and control the use of their images.

PERSONALITY ENDORSEMENT AND CHARACTER MERCHANDISING

Personality endorsement and character merchandising can be distinguished and is well explained by Laddie J in Irvine v Talksport Ltd [2002] EWHC 367 (Ch). Here, Laddie J said that "When someone endorses a product or service he tells the relevant public that he approves of the product or service or is happy to be associated with it ... Merchandising is rather different. It involves exploiting images, themes or articles which have become famous ... The purpose (of merchandising is) to make available a large number of products which could be bought by members of the public who ... wanted a reminder of it."

A celebrity such as Rihanna may earn fees by agreeing to endorse certain products. In fact, Rihanna's merchandising and endorsement business is managed by a company known as "Live Nation" which handles her agreements with leading brands such as Nike, Gillette, Clinique and LG Mobile.

PASSING OFF

Rihanna's case was essentially one of passing off. The tort of passing off perhaps provides the strongest protection for celebrities to control the way their image is used.

In order to succeed in a claim for passing off, the three elements set out in Reckitt & Colman Products Ltd v Borden Inc and others [1990] 1 All ER 873 must be satisfied: (i) that there is goodwill in the goods or services which the claimant supplies in the mind of the purchasing public by association with the particular name or get up under which the goods or services are offered to the public, such that the name or get up is recognised by the public as distinctive of the claimant's goods or services; (ii) that there has been a misrepresentation leading or likely to lead the public into believing that the goods or services offered by the defendant are the goods or services of the claimant; and (iii) that damage has occurred or will occur as a result of the misrepresentation.

In this instance, a passing off claim in a merchandising case, it must specifically be shown that the application of Rihanna's image to the garment told a lie. The lie must also have been material. It is more than merely creating a false suggestion that the goods have been licensed or endorsed by her. The lie must induce the customer into thinking that there is an arrangement which gave Rihanna some control over the quality of the garment and play a part in the customer's decision to buy it.

In Rihanna's case, it was clear that she had "ample goodwill" and that "the scope of her goodwill was not only as a music artist but also in the world of fashion, as a style leader." That damage had been incurred was also not contested, as Rihanna runs a large merchandising and endorsement business through Live Nation which would expect to earn significant sums from the sale of merchandise associated with her. As such, she would have lost out on fees she could have charged for the endorsement plus the loss of revenue to her merchandising business.

The contentious matter of her case was whether or not Topshop had indeed committed a misrepresentation by selling the T-shirt with her image on it. Factors such as the fact that Rihanna had previously been legitimately associated with Topshop (e.g. a contest enabling the winners to enjoy a shopping session with her in 2010) and that the image, taken from a music video of a single from her "Talk That Talk" album, was a recognisable one, contributed to the judge's finding that there would be a real likelihood of people being deceived into thinking that the item was an authorised product and would purchase it on that basis.

The broad scope and protection offered by passing off was noted in Irvine by Laddie J who said that "if someone acquires a valuable reputation or goodwill, the law of passing off will protect it from unlicensed use by other parties". Laddie J also noted that "the law of passing off (has) expanded over the years."

TRADE MARKS AND COPYRIGHT

While celebrities may trade mark their names or brands and copyright certain images, there are limits to the amount of protection afforded by these means. For example, copyright did not provide Rihanna a cause of action as the photograph which was used on the garment was taken by an independent photographer who had granted Topshop a licence to use the image; thus there was no copyright infringement. A claim for copyright infringement in the Malaysian case of Sherinna Nur Elena bt Abdullah v Kent Well Edar Sdn Bhd [2014] 7 MLJ 298 also failed on similar grounds. However, copyright does offer limited protection for character merchandising by providing a cause of action if an image is reproduced without permission from the copyright holder.

Similarly, the limits of trademarks can be seen in Elvis Presley Trade Marks [1997] RPC 543 (HC), and Tarzan Trade Mark [1970] FSR 245.

In Elvis Presley, Elvis Presley Enterprises attempted to register "Elvis A. Presley", "Elvis" and "Elvis Presley" as trade marks. However, the marks were rejected for not being sufficiently distinctive to act as a badge of origin, i.e. the marks did not indicate that the merchandise originated from a specific proprietor. Laddie J observed that although "Elvis" was undoubtedly famous, his fame would in fact make the mark less rather than more distinctive. The judge compared it to Tarzan Trade Mark where it was held that "Tarzan" could not be registered for films and other merchandise as it had become a household and descriptive word.

CONCLUSION

Although Rihanna was successful in her action for passing off, Underhill LJ regarded the case as being "close to the borderline". Underhill LJ seemed to think that it was only due to the particular facts and circumstances of this case, such as Rihanna's past public association with Topshop and the features of the image which showed off her distinctive hairstyle which was used for Talk That Talk, that tipped the scales in her favour. Thus, while passing off does provide protection against the use of one's image, it may not be easily granted or provide as broad a protection as was suggested in Irvine by Laddie J. Further, the main reason why Rihanna and Eddie Irvine were successful in their respective cases was because they could demonstrate that they were in the business of endorsing products for significant amounts of money.

Some may argue that the current laws on publicity are insufficient to protect the image of celebrities who have invested a great deal of time and effort into building their images. On the other hand, others argue that publicity rights should not be heavily guarded as it is the public and society who made them famous, thus, celebrities should not be the only ones who are able to profit from their fame.

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