Mark Antingham reviews the current position in the UK on personality rights.
Andy Warhol once declared that one day everybody would be famous for five minutes. Whether you are famous for merely five minutes or five years, this time presents a substantial marketing opportunity. Personalities in many cases have become brands all of their very own. Advertisers like to be associated with successful and admired personalities in the hope that this will increase sales. We all remember that Claudia Schiffer appeared in the advertising of Citroen cars, even if we may forget the exact model.
At this point we should distinguish between personality rights and character merchandising. An individual may through prodigious endeavour (or luck) develop his personality or image that can be exploited by personality endorsement and marketing. The use of a personality can provide credibility for a product. The sceptical target audience may be more likely to accept the validity of claims that are being made in respect of a particular product if a person who they recognise and admire is telling them that the product is a good one. Considerable care and skill is required to match the right personality to a particular product. This is distinct from merchandising which is in essence using the personality to promote and sell a product by having his or her name or features printed prominently on the product or its packaging.
In order to maximise potential income, the personality concerned will want to control how his "image" is used, which is an important consideration for the personality and indeed his contractual partners where an endorsement contract for a particular product is already in existence. Unauthorised exploitation of that personality by third parties may jeopardise this.
Regarding the actual rights, there is no such thing as a "personality right" in the United Kingdom. Whether there should be is open to conjecture. Consequently, the personality seeking to protect his rights and exploit these must work within the current constraints of existing intellectual property law.
In order to successfully exploit the personality as a commodity in its own right, it is essential that enforceable intellectual property rights are identified and protected. Indeed, as we shall see developments in UK case law have tended to indicate that speed is key to the successful protection of such rights.
In the same way as exploiting any other product, successful exploitation depends not only on selling the right product in the right way, but also on successfully preventing others from doing the same. A personality who wishes to do this, must consider the acquisition of trade marks and the part that passing off can play. Copyright and design law may also impact upon the exploitation and protection of his position.
The acquisition of personality rights (let alone enforcement of a personalities "rights") has had something of a chequered history in the UK, with the courts never quite embracing the concept wholeheartedly. The recent decisions regarding the Princess of Wales Memorial Fund in relation to trade marks and recently dolls, and the ongoing saga of the Elvis trade marks bear this out.
Recently, the trustees of the Diana Memorial Fund were unsuccessful (so far) in their action to prevent the Franklin Mint making and selling a commemorative Diana doll of the late Princess of Wales. The essential problem is that the Late Princess of Wales has long been part of the public domain. Whilst the Fund may be able to protect their own trade mark that features Diana's signature represented in her favourite colour, and use this on a range of official merchandise, there is little prospect that they will ever be successful in preventing others exploiting her image and personality.
Careful advertising and promotion of sales of official merchandise protecting Diana's favourite charities might help keep the unauthorised at bay by making the public feel unhappy about buying a commemorative product from such a source. In any event this may prove to be academic, given that there are calls for the Fund to be wound up, and in the light of a general falling off of support and interest.
In the Elvis case, Elvis Presley Enterprises were defeated in their efforts to prevent a trader here (the amusingly named "Elvisly Yours") selling (among other things), soap bearing the name of the late king of rock and roll. Somewhat memorably, Mr Justice Laddie said that the consumer does not "give a toss" whether a bar of soap bearing Elvis' image was produced with the sanction of his estate or not. Apparently, all that the man in the street wants is a bar of soap with Elvis' image appearing on it.
As this activity would suggest, obtaining a monopoly over a particular personality is something of holy grail. As these two recent decisions indicate, the courts are extremely wary of granting monopoly rights over personalities. Perhaps central to these decisions is the fact that Elvis and indeed the Princess of Wales have long been in the public domain. Whilst Elvis Presley was alive he of course made considerable sums from his successful music career. At the time, merchandising formed a far less important role than it does today. Earlier refusal by the courts to accept the exclusivity of personality rights is illustrated by the ABBA decision, where the pop group encountered the refusal of the court to prevent unauthorised exploitation of their image and name.
In the case of the late Princess of Wales, whilst she was undoubtedly one of the most photographed women of our time, she did not herself exploit her image, for her own commercial ends. Commercial exploitation in respect of Elvis Presley and the Princess of Wales have come somewhat later with the respective Elvis Presley Estate and Diana Memorial Fund seeking to capitalise upon these two personalities' popularity. If Diana had whilst she were alive sought to prevent the sale of for instance a commemorative mug, in the absence of any defamatory innuendo, as she had no goodwill to protect, and in the absence of a trade mark registration, she would have been unsuccessful.
What is the position for living personalities who are either already famous or on the brink of achieving fame (or planning to). How can they protect their rights? I will look at each IP right in turn before applying this to a short example.
Trade marks
Trade mark applications have been made and accepted by the Registry for a number of personalities. In the case of Damon Hill, he secured protection for the image of his eyes looking out from the visor of his racing crash helmet. The Spice Girls have also been extremely prolific in the field of trade mark applications. The important thing is that the trade mark must quite clearly be a badge of origin. The applicant has to be able to show that the mark will serve to identify his or her goods. If the applicant is somewhat tardy in applying for registration, the job of securing registration might turn out to be more difficult if goods of the type that form the subject of the application are being sold, and indeed have been sold in large numbers by third parties.
There is another more practical issue that needs to be addressed very early on when considering protection. This relates to what is actually going to be registered as a trade mark. It would of course be obvious to register a name and/or a signature. What many personalities would dearly like to protect is their image or facial appearance. The obvious way to do this is via protecting photographs of the personality concerned as a trade mark. Provided one such is registered as a trade mark it will be possible to prevent a third party using something identical or similar to it.
The problem is that celebrities are photographed an enormous number of times by a wide variety of people and organisations whether for personal edification or commercial gain. It would be very difficult (not to mention expensive) to protect by registration all the different combinations and series of images that would be needed to secure a monopoly. If one considers that many of the most prominent and valuable personalities have a global reputation, the cost of duplicating such protection in all the relevant national markets would be staggering.
Passing off
The essential ingredients of founding a successful action in passing off are that there has to be a misrepresentation made in the course of trade such that the trade mark owner suffers damage. It is essential that there is goodwill that can be protected.
Passing off will not of course provide a monopoly per se. In fact, if the entity exploiting the personality right is careful it will be extremely difficult to make out a case. It must be borne in mind that for an action to succeed all of the relevant ingredients will need to be established. The most difficult of these to prove is that of a misrepresentation. If I was to produce a tee-shirt bearing the image of an existing sports personality, provided my merchandise was sufficiently different from the official products, I would have a measure of safety. However if I was to advertise or package or indeed dress up the point of sale material in such a way to suggest that the sports personality had officially endorsed the products, I would be laying myself open to an action in passing off. The careful unauthorised exploiter will therefore pay careful attention to the actual channels of trade.
As we have seen with the late Princess of Wales, a personality that does not trade in goods, but merely seeks on grounds of privacy to prevent their image from being commercially exploited by others, will be unable to succeed in passing off as they lack the necessary goodwill that passing off protects. This is perhaps an issue in the case of a personality such as Monica Lewinsky. At the time of President Clinton's impeachment proceedings she achieved a certain degree of notoriety, or fame, depending upon one's viewpoint. Had a trader sought to capitalise on this by using her personality without permission, for instance to advertise dry cleaning services, certainly in the UK Miss Lewinsky would have been unable to prevent such activity.
This would be an issue to her if she had been in negotiations with a potential partner for the commercial exploitation of her personality through endorsement contracts.
What the personality and his advisors have to aim at achieving is ensuring that when members of the public see an item that carries their image, they assume that this is official merchandise. To a certain extent this might be achieved by publicity. If publicity campaigns in relevant media inform the public that a particular pop group is selling a wide variety of (official) merchandise, details of which are given, the public might assume that when they saw a particular item they would think that it was official even if this was not in fact the case. However, even with an enormous merchandising campaign for official merchandise, the case of Halliwell v Panini (the Spice Girls case) illustrates the problems. Here an interlocutory injunction was refused where the defendants were selling a "Fab Five" sticker collection without any statement that the product was unauthorised. It remains an uphill struggle to convince a court that when the public sees a particular item they immediately assume that it originates with the personality concerned – even where vast sums have been spent on advertising official products.
Copyright and Designs
Copyright is particularly weak when it comes to protecting a personality. A person in the public domain is photographed almost every day, if not many times a day by a wide variety of people. In the absence of a right of privacy, the only way that an individual may control the use of photographs is to control the copyright in them.
With regard to designs, an integral part of merchandising campaigns is the sale of dolls and the like. As long ago as 1941 in the Popeye case (King Features Syndicate Inc v O & M Kleeman Limited) [1941] AC 417, producing a three-dimensional reproduction of a two-dimensional drawing was held to be copyright infringement. More particularly, it is possible to register a doll or three-dimensional representation of a personality as a registered design under the Registered Designs Act 1949.
There are obvious advantages in so doing and the proprietor of it obtains the right to sue any person who without its permission makes, sells, imports or hires or offers to do any of these activities in connection with the product. It also gives rights against anybody who makes anything for enabling the article to be manufactured as well as any article that bears the registered design or a design very similar to it. Copying is not required. It is also possible to prevent the importation of articles that infringe design registration.
Other sources of protection?
Are there any other possible sources of protection? There are three points that can be made here. Firstly, unlike certain jurisdictions in the United States, we have no tort of invasion of privacy serving to prevent the appropriation of a personality's name or likeness for a third party's benefit. The British Code of Advertising and Sales Promotion includes within it a section on protecting privacy. They do not however have statutory force.
Secondly, it can be defamatory to assert that a person has endorsed a product or service when he has not. The old case of Tolley v Fry & Sons Limited [1931] AC 333 is a case in point. In this, the plaintiff was a well known amateur golfer. A caricature of him appeared on one of the defendants adverts for a chocolate bar. The plaintiff objected on the basis that there was an innuendo that he had allowed his name to be used in return for gain – a position that was diametrically opposed to his status as a respected amateur golfer. It is important to bear in mind that in the absence of defamation, merely using a person's name or image for promotional purposes would not of itself amount to defamation. However ion some cases, the marketing of a product bearing the name of a well-know personality without his authority, whilst not being defamatory, may amount to passing off as we have seen.
Lastly it should also be borne in mind that the conduct of a particular trader may amount to the tort of interference with a subsisting contract. In personality endorsement agreements, the parties to such a contract will have substantial mutual obligations between the personality and the manufacturer whose products or services are being endorsed. In the case of sportsmen, the exclusive use of a particular brand of equipment may be essential to the relationship. The well publicised, yet unauthorised association of that particular personality with another brand of cricket bat may result in a contract between the personality and his chosen partner being terminated.
Practical Example
How would the theory work in practice in relation to trade marks and copyright? An example demonstrates the difficulties. For the sake of argument, Damon Hill has registered his name as a trade mark. He has also registered his appearance as well. I am a tee-shirt manufacturer. I decide that I would like to cash in on the fact that Damon Hill has been in the news over the last couple of weeks. I decide to produce a tee-shirt which commemorates highlights of his career. Whilst I am happy to use Damon as a means to make a profit for myself, I am not however keen to give him a share in the form of a royalty. Accordingly therefore, I do not apply for a licence. I am careful to make sure that my tee-shirts look different from official merchandise that is available. The photograph of Damon Hill that is to be reproduced on the tee-shirts is licensed to me from a picture library. I successfully manage to sell 10,000 of my tee-shirts at the British Grand Prix.
Whilst the trade mark proprietor might feel particularly aggrieved that I have made so much money using his personality as a key to do this, there is nothing that he can practically do to stop me. The registered trade marks would not be a problem provided I ensured that I avoided use of his name and the image that was used was sufficiently different.
Passing off might be an option if the proprietor wanted to attack me, but if I am careful I need not be bothered by legal action. The problem is proving a misrepresentation – are the circumstances of the sale such that the public will assume that my unofficial merchandise actually derives from the personality. As I am careful to avoid any suggestion that the goods are authorised, this will be hard to prove.
As regards the photograph that I have used, as it is licensed to me and is an original copyright work in its own right, there will be no problem here either.
Concluding remarks
Intellectual property rights are struggling to keep up with commercial practice. Calls have been made for a personality right to be introduced that would protect merchandising rights. Certainly trading off the back of somebody else's labour is unfair and difficult to accept. Should a statutory right therefore be introduced? On one level, the answer is clearly yes for how can we expect individuals to invest substantial amounts of time, ingenuity and money in achieving a position that is then exploited by another. In fact this "protectionist" view is not borne out in fact. The sums earned from merchandising/endorsement are enormous, and the lack of a personality right has not therefore proved the difference between success and failure.
There are wider issues at stake as well. What limits could be practically placed on such a monopoly? It would be an impossible situation were such a right to be used to stifle legitimate activity like the filming, reporting, photographing, publishing and broadcasting of everyday events whether sporting or otherwise.
If we accept that personality rights are in their various constituent parts like other IP rights we might ask why they should be treated differently. The Trade Mark Act is certainly wide enough to protect a wide variety of marks even of a nature associated with this species of activity. Used in the usual way on goods or in connection with services, there is no reason why a mark should not be protected. Any trade mark that is already in the public domain cannot be registered without proof of distinctiveness, and there is no reason why personality rights should be an exception to this. Protection must be sought quickly though. In terms of infringement, if there is no confusion or the likelihood of this, there is no reason why a trade mark associated with a personality should in the final analysis be treated differently from other marks. In the same way, there can be no justification for bending passing off so that in such cases the requirements of goodwill and misrepresentation are relaxed.
