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 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.