Image is everything!

In our society we are consumed by our obsession with celebrity status. Businesses recognise this and are increasingly eager to show personalities endorsing their products. Exploitation of “image rights” is therefore big business and a giant revenue generator.

What is an image right?

An image right is a person’s right to their own persona, including the right to prevent or restrict others from using their name, likeness or logos/slogans

How are image rights protected?

It seems strange then to think that, under UK law, there is no codified regime of image or personality rights which means that when individuals wish to protect proprietary rights or “brands” and prevent unauthorised use of names, likeness or other characteristics, they need to rely on a variety of statutory and case law. The various rights and causes of action are explained below:

Passing Off

In its traditional sense, the law of passing of protects the goodwill or reputation attached to goods or services sold by a trader under or by reference to a brand name, trading “style” or “get up” and gives the owner of that goodwill or reputation the right to bring an action to prevent the “passing off” of the offending imitation. Passing off occurs where the owner can demonstrate that:

(1) the mark/style/”get up” is recognised by the public as distinctive of the owner’s goods or services; and
(2) a misrepresentation has been made by the offending trader leading or likely to lead the public to believe that its goods or services are either those of, or are endorsed by or associated with, the owner; and
(3) that it has suffered or is likely to suffer damage as a result.

The Eddie Irvine decision in 2002 (Edmund Irvine & Tidswell Ltd –v- Talksport Ltd [2002]EWHC 367), however, marked a watershed in the evolution of the law of passing off (at least as far as image and personality rights are concerned) and it became clear that passing off could be extended to allow famous people with sufficient goodwill in their name and image to protect that name and image from unauthorised exploitation in a way in which suggested that the celebrity had endorsed a product or service.

In this case, Eddie Irvine, the Formula One racing driver issued proceedings against Talksport radio for their unauthorised use of his image on promotional literature. The photograph used by Talksport was one of Irvine with a mobile phone but with Talksport digitally manipulated the photo to show him, instead, listening to a radio with “Talk Radio” emblazoned across it. It was the digitally manipulated photo that was placed on marketing literature. Irvine argued that the use of the photograph amounted to passing off as it gave the impression that he had endorsed the promotional literature.

The court found in Irvine’s favour and ruled that for a passing-off action to succeed in a false endorsement case, the claimant needs to prove that at the time of the acts complained of he had a significant reputation or goodwill and that the actions of the defendant gave rise to a false message which would be understood by a not insignificant section of his market that his goods had been endorsed, recommended or approved of by the claimant; and that, on the evidence, the claimant had established both that he had a substantial reputation or goodwill and that a not insignificant number of recipients of the brochure would assume that he had endorsed the defendant’s product.

So, in light of this decision, celebrities have solid ground upon which to object to any promotional or advertising material that may suggest that they have endorsed or are associated with the products or services in question, when in fact no consent or authorisation has been given. In such cases, the remedies available are injunctive relief – i.e. the removal of the offending material from sale/circulation and damages equivalent to what the celebrity in question would likely have received for the endorsement had it been legitimate.

Furthermore, following the implementation of the Consumer Protection from Unfair Trading Regulations 2008, claiming a product has been endorsed when it has not is also now a criminal offence – carrying a possible unlimited fine and up to a two year prison term.

Trade Marks

Trade Marks protect signs capable of distinguishing goods or services of one trader from those of another. The sign must be capable of being represented graphically (e.g. words, logos, symbols) and must be “distinctive”.

Personalities who are interested in exploiting their image or brand for commercial gain are now routinely registering trade marks both to commercialise their brand and to strengthen their rights so as to help to prevent unauthorised third parties from using their names, images or other characteristics.

Examples of trade marks registered by personalities include the words DAVID BECKHAM for a range of goods, including perfumes, shaving lotions, hair lotions, sunglasses, watches and precious stones; and the words GORDON RAMSAY for goods and services including, food items, condiments, menus, stationery and catering services, .

However, recent Trade Mark Registry guidance and practice has indicated that a famous person’s name will generally be regarded as merely descriptive of goods which are “mere image carriers” – such as posters or stickers. Descriptive marks are devoid of any distinctive character and therefore not registrable. For example, Sir Alex Ferguson‘s application to register the mark ALEX FERGUSON was refused in relation to “image carrier” goods such as posters and stickers. The registration was, however, allowed for goods such as clothing and wrist-watches.

It is easy to understand how the mark ALEX FERGUSON is considered merely descriptive of a picture bearing Alex Ferguson’s image and in instances where pictures or images are used without consent in a way which suggests an endorsement, celebrities will have to rely on the common law right of passing off. And in those instances where images are used in such a way as to suggest no endorsement it seems that there is no recourse for celebrities under either trade mark or passing off law.

There may yet be some redress in the areas of privacy and data protection (in certain circumstances) as explained below.

Privacy

The Human Rights Act provides that all UK legislation must be interpreted in accordance with the European Convention on Human Rights. Article 8 of the Convention provides that everyone has the right to respect for his private and family life. So if publication of a photograph is likely to be particularly invasive to a personality’s private life then the Courts can intervene to prevent publication of such photographs. For example in Theakston v MGN [2002] All ER (D) 182 an injunction was granted to prevent publication of photographs depicting a TV presenter’s brothel antics even though the Court refused to restrain publication of a verbal depiction of the story.

Privacy laws will not, however, prevent the publication and/or sale of images which do not invade a person’s privacy. So, privacy law may prevent the publication and sale of photos of sports personalities’ children or personal events where such publication would be considered an invasion of privacy but would not prevent the publication and sale of posters depicting footballers playing football.

Data Protection

There may also be some scope to rely upon the Data Protection Act for compensation where photographs of celebrities are published without their consent. A photograph of a celebrity will be considered “personal data” within the meaning of the Act provided that person can be identified from the photograph. Further, personal data can only be processed where certain conditions are met and usually only where the “data subject” has consented to such processing. Consent can, however, be implied in certain circumstances and again where a footballer is playing a game, it is arguable that by playing the game on the public stage he has impliedly consented to personal data about him during that game being processed. However, if photographs are taken which a personality would objectively object to, then the publication of those photos is likely to be a breach of the Data Protection Act, for which the celebrity can claim compensation.

Advertising Standards

Finally, the various advertising codes may afford some level of protection to sports personalities for unauthorised use of their images. The CAP code which covers non-broadcast advertising (i.e. magazines, bill-boards etc) includes a provision that marketers should not imply personal approval for an advertised product where consent has not been given and the TV Code states that living people must not be portrayed, caricatured or referred to in advertisements without their permission.

However, whilst the Codes can be used by complainants to seek withdrawal of the adverts in questions, damages are not available to the complainants – unlike in a passing off action.

Whilst we do not have a perfect “unified” system to protect image rights in the UK, the combination of the above rights and causes of action do afford a decent level of protection which enables celebrities to exploit and protect their image and brand very effectively.

© John Burns

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