Mirror Image:Using UK and US Case Law to Protect Publicity Rights
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FEATURE IMAGE RIGHTS Mirror image: using UK and US case law to protect publicity rights The lack of a single, codified body of law to explicitly protect image or publicity rights on either side of the Atlantic means that high-profile individuals must draw from a variety of causes of action and legal tools to protect their interests With the growth of social media and celebrity AUTHORS Trademarks registered by high-profile individuals culture, the business of capitalising on one’s image is MARTIN have included: bigger and more lucrative than ever, often creating a HENSHALL, ANNIE • names (eg, DAVID BECKHAM and LEWIS significant revenue stream for high-profile individuals. WEBSPER, JEFF HAMILTON); Commercialisation of a sport star’s persona, for example, GREENE AND • numbers, logos or images relating to their brands (eg, via product associations and endorsements commonly SALSA AHMED CR7 for Cristiano Ronaldo and a figurative outline of provides revenue far outweighing any sporting prize Usain Bolt’s lightning bolt pose); money and earnings. • signatures (eg, David Beckham’s and Wayne Rooney’s Against this backdrop, it is easy to appreciate why signatures); and those in the public eye are so keen to protect the use of • the names of their children (eg, BLUE IVY CARTER). their image; failure to do so could result in reputational damage and a reduction in licensing royalties, However, registration may be refused on absolute particularly where those individuals are associated with grounds where the mark in question has no distinctive sub-standard or unsuitable products. character or serves to designate characteristics of the This article explores the legal means that well-known goods or services for which registration is sought. The figures have at their disposal to protect their image in the UK Intellectual Property Office (UKIPO) refused the United States and the United Kingdom, and how those registration of DIANA, PRINCESS OF WALES (Re Diana tools can best be utilised. Trademark [2001] ETMR 25) for a wide range of goods Since there is no single, codified body of law that and services on the basis that the mark lacked distinctive explicitly protects image or publicity rights in either character, as a famous name would serve to signify the jurisdiction, high-profile persons must draw from a variety of causes of action and legal tools to protect their image and likeness. Image protection in the United Kingdom Trademarks Numerous celebrities have turned to trademarks to protect their image and likeness, either as a means to exploit them or to defensively protect them. A registered trademark gives the owner the exclusive right to use the mark for the goods or services for which it is registered, as well as the right to prevent the use of similar marks for identical or similar goods or services where there is a likelihood of confusion. 48 SUMMER 2020 www.WorldTrademarkReview.com IMAGE RIGHTS FEATURE subject matter, rather than the trade origin of the goods Passing off and services. Passing off can protect the commercial value or ‘attractive Famous names will commonly be regarded as force’ of an individual’s reputation. To succeed in a descriptive of the subject matter of goods that are mere passing-off action (as established in Reckitt & Colman v ‘image carriers’ and therefore non-distinctive. Indeed, the Borden [1990] 1 WLR 491), the claimant must show: UKIPO refused ex-Manchester United FC manager Alex • goodwill in connection with the goods or services Ferguson’s application for ALEX FERGUSON in relation at issue; to printed matter goods in Class 16 for this reason (Re • a misrepresentation to the public by the defendant, ALEX FERGUSON [2005] 9 WLUK 354), while the band which is likely to lead the public to believe that the Linkin Park also faced objections from the UKIPO for goods or services are associated with the claimant; and LINKIN PARK in respect of printed matter and posters • damage suffered by the claimant. (Re LINKIN PARK [2004] 8 WLUK 19). Even after registration, trademarks for famous Passing off has been successfully used to challenge names may be difficult to enforce, as illustrated by the false endorsements, such as the claim brought against Court of Justice of the European Union’s rejection of an Talksport by Formula One driver Eddie Irvine after his opposition filed by the estate of Pablo Picasso against image was superimposed onto an advertisement for the Daimler-Chrysler’s application for the mark PICARO in radio station (Irvine v Talksport Ltd [2002] 2 All ER 414). relation to identical goods (Case C-361/04 P, Claude Ruiz- Picasso v EUIPO, [2006] I-00643). Here, the court held that the PICASSO mark was predominantly known in relation to the painter rather than automobiles, and the Famous names will commonly conceptual differences were ultimately sufficient to offset the similarity between the marks. be regarded as descriptive of the Fame can therefore act as an indirect barrier to subject matter of goods that are mere registration and, even where a name is registered as a trademark, can limit the degree of protection afforded. ‘image carriers’ Moreover, the enforceability of name and image marks has not been fully tested in the courts, and it is possible that some marks could be liable to invalidity claims. The ability to claim passing off in relation to Despite these challenges, trademark registration remains merchandising was demonstrated in Fenty v Arcadia an invaluable tool for protecting the image of a high-profile ([2013] EWHC 2310), where singer Rihanna successfully character. The best chances of obtaining protection lie brought a passing-off action against Topshop owner in early registration (certainly before the height of fame), Arcadia Group for selling t-shirts bearing a photograph selecting appropriate classes of goods or services for of her without approval. While Rihanna’s action was registration and ensuring that consumers are conscious of successful, the UK High Court stressed that each case any commercial connection between the individual and the will turn on its own facts and use of a high-profile products (such that they are distinctive of the goods rather individual’s image on a product would not be sufficient than descriptive). For the biggest celebrities, it may even be in and of itself to establish misrepresentation. The factors worth considering the use of a signature or logo, which are contributing to Rihanna’s success included the fact that less likely to be rendered non-distinctive or descriptive of the photograph was associated with her highly publicised the subject matter of the application. latest album, that Topshop often collaborated with celebrities (including Rihanna) and that Rihanna had actively commercialised her status as a style icon. Passing-off claims can also be used to contest UK trademark applications under Section 5(4) of the Trademarks Act 1994. Last year, famous wartime singer Vera Lynn successfully opposed Harwood International’s UK trademark application for VERA LYNN in relation to alcoholic beverages and spirits (O-766-19, Halewood International Brands Limited v Dame Vera Lynn, 12 December 2019), arguing that use of VERA LYNN for such goods would misrepresent a connection with the singer and damage her goodwill. Lynn subsequently registered her name as a trademark, presumably to gain another basis on which to object to any application filed by a third party in the future. www.WorldTrademarkReview.com SUMMER 2020 49 FEATURE IMAGE RIGHTS Ultimately, given that well-known individuals enjoy publishing contract with OK! did not preclude the couple no freestanding general right to character exploitation, from arguing that their wedding was a private occasion the success of a passing-off action is extremely and benefiting from the law of confidence. fact-dependent, often turning on the ability of the The use of the law of confidence and privacy to protect claimant to establish misrepresentation. This will not a person’s image will not be suitable in many instances of always be possible or straightforward – particularly in misappropriation; the Douglases’ success was ultimately circumstances where consumers may not assume that down to the images possessing the requisite degree of the use of an individual’s image or likeness was, in fact, confidence and the fact that measures had been taken to an endorsement or approved association (eg, where prevent their wider publication. lookalikes, voice-alikes or caricatures are used). Advertising standards Privacy and breach of confidence The UK Advertising Standards Agency (ASA) enforces the Over recent years it has become possible to assert privacy Committee of Advertising Practice Code, which sets out rights in the United Kingdom through the law of breach various requirements for advertisements, including that of confidence, which requires the claimant to establish they should not mislead or feature testimonials without that the information is both confidential in nature and permission. The ASA can necessitate the withdrawal of disclosed in circumstances imparting an obligation offending adverts and publish its decisions, often leading of confidence. to adverse publicity. While there are several examples of UK courts PICTURE: MARK In 2019 athlete Sir Mo Farah successfully challenged upholding breach of confidence claims in respect of REINSTEIN/ an advertisement by vape company Diamond Mist, which private photographs or photos taken in public that retain SHUTTERSTOCK.COM featured a lookalike with the wording “Mo’s Mad for their confidential nature, only one case has tested the The UKIPO refused Menthol” (ASA Ruling on Diamond Mist Ltd 28 August degree to which breach of confidence can be used to the registration of 2019). The ASA found that the ad was likely to give protect the commercial exploitation of private images. DIANA, PRINCESS OF consumers the misleading impression that the product Douglas v Hello! Ltd ([2005] EWCA Civ 59) concerned WALES on the basis had been endorsed by Sir Farah.