Mirror image: using UK and US case law to protect ...

Mirror image: using UK and US case law to protect publicity rights

48 SUMMER 2020 www.WorldTrademarkReview.com

FEATURE IMAGE RIGHTS

AUTHORS MARTIN HENSHALL, ANNIE WEBSPER, JEFF GREENE AND SALSA AHMED

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 culture, the business of capitalising on one’s image is bigger and more lucrative than ever, often creating a significant revenue stream for high-profile individuals. Commercialisation of a sport star’s persona, for example, via product associations and endorsements commonly provides revenue far outweighing any sporting prize money and earnings.

Against this backdrop, it is easy to appreciate why those in the public eye are so keen to protect the use of their image; failure to do so could result in reputational damage and a reduction in licensing royalties, particularly where those individuals are associated with sub-standard or unsuitable products.

This article explores the legal means that well-known figures have at their disposal to protect their image in the United States and the United Kingdom, and how those tools can best be utilised.

Since there is no single, codified body of law that explicitly protects image or publicity rights in either 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 KingdomTrademarksNumerous 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.

Trademarks registered by high-profile individuals have included: • names (eg, DAVID BECKHAM and LEWIS

HAMILTON); • numbers, logos or images relating to their brands (eg,

CR7 for Cristiano Ronaldo and a figurative outline of Usain Bolt’s lightning bolt pose);

• signatures (eg, David Beckham’s and Wayne Rooney’s signatures); and

• the names of their children (eg, BLUE IVY CARTER).

However, registration may be refused on absolute grounds where the mark in question has no distinctive character or serves to designate characteristics of the goods or services for which registration is sought. The UK Intellectual Property Office (UKIPO) refused the registration of DIANA, PRINCESS OF WALES (Re Diana Trademark [2001] ETMR 25) for a wide range of goods and services on the basis that the mark lacked distinctive character, as a famous name would serve to signify the

www.WorldTrademarkReview.com SUMMER 2020 49

IMAGE RIGHTS FEATURE

Passing offPassing off can protect the commercial value or ‘attractive force’ of an individual’s reputation. To succeed in a passing-off action (as established in Reckitt & Colman v Borden [1990] 1 WLR 491), the claimant must show:• goodwill in connection with the goods or services

at issue;• a misrepresentation to the public by the defendant,

which is likely to lead the public to believe that the goods or services are associated with the claimant; and

• damage suffered by the claimant.

Passing off has been successfully used to challenge false endorsements, such as the claim brought against Talksport by Formula One driver Eddie Irvine after his image was superimposed onto an advertisement for the radio station (Irvine v Talksport Ltd [2002] 2 All ER 414).

subject matter, rather than the trade origin of the goods and services.

Famous names will commonly be regarded as descriptive of the subject matter of goods that are mere ‘image carriers’ and therefore non-distinctive. Indeed, the UKIPO refused ex-Manchester United FC manager Alex Ferguson’s application for ALEX FERGUSON in relation to printed matter goods in Class 16 for this reason (Re ALEX FERGUSON [2005] 9 WLUK 354), while the band Linkin Park also faced objections from the UKIPO for LINKIN PARK in respect of printed matter and posters (Re LINKIN PARK [2004] 8 WLUK 19).

Even after registration, trademarks for famous names may be difficult to enforce, as illustrated by the Court of Justice of the European Union’s rejection of an opposition filed by the estate of Pablo Picasso against Daimler-Chrysler’s application for the mark PICARO in 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 conceptual differences were ultimately sufficient to offset the similarity between the marks.

Fame can therefore act as an indirect barrier to registration and, even where a name is registered as a trademark, can limit the degree of protection afforded. 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.

Despite these challenges, trademark registration remains an invaluable tool for protecting the image of a high-profile character. The best chances of obtaining protection lie in early registration (certainly before the height of fame), selecting appropriate classes of goods or services for registration and ensuring that consumers are conscious of any commercial connection between the individual and the products (such that they are distinctive of the goods rather than descriptive). For the biggest celebrities, it may even be worth considering the use of a signature or logo, which are less likely to be rendered non-distinctive or descriptive of the subject matter of the application.

Famous names will commonly be regarded as descriptive of the subject matter of goods that are mere ‘image carriers’

The ability to claim passing off in relation to merchandising was demonstrated in Fenty v Arcadia ([2013] EWHC 2310), where singer Rihanna successfully brought a passing-off action against Topshop owner Arcadia Group for selling t-shirts bearing a photograph of her without approval. While Rihanna’s action was successful, the UK High Court stressed that each case will turn on its own facts and use of a high-profile individual’s image on a product would not be sufficient in and of itself to establish misrepresentation. The factors contributing to Rihanna’s success included the fact that the photograph was associated with her highly publicised 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.


publishing contract with OK! did not preclude the couple from arguing that their wedding was a private occasion and benefiting from the law of confidence.

The use of the law of confidence and privacy to protect a person’s image will not be suitable in many instances of misappropriation; the Douglases’ success was ultimately down to the images possessing the requisite degree of confidence and the fact that measures had been taken to prevent their wider publication.

Advertising standardsThe UK Advertising Standards Agency (ASA) enforces the Committee of Advertising Practice Code, which sets out various requirements for advertisements, including that they should not mislead or feature testimonials without permission. The ASA can necessitate the withdrawal of offending adverts and publish its decisions, often leading to adverse publicity.

In 2019 athlete Sir Mo Farah successfully challenged an advertisement by vape company Diamond Mist, which featured a lookalike with the wording “Mo’s Mad for Menthol” (ASA Ruling on Diamond Mist Ltd 28 August 2019). The ASA found that the ad was likely to give consumers the misleading impression that the product had been endorsed by Sir Farah.

Although the ASA cannot offer any financial redress for targeted individuals or issue fines, a promptly filed ASA complaint is a quick and cost-effective means of limiting the reputational damage caused by unauthorised advertisements and is therefore a valuable tool for image management.

Ultimately, given that well-known individuals enjoy no freestanding general right to character exploitation, the success of a passing-off action is extremely fact-dependent, often turning on the ability of the claimant to establish misrepresentation. This will not always be possible or straightforward – particularly in circumstances where consumers may not assume that the use of an individual’s image or likeness was, in fact, an endorsement or approved association (eg, where lookalikes, voice-alikes or caricatures are used).

Privacy and breach of confidenceOver recent years it has become possible to assert privacy rights in the United Kingdom through the law of breach of confidence, which requires the claimant to establish that the information is both confidential in nature and disclosed in circumstances imparting an obligation of confidence.

While there are several examples of UK courts upholding breach of confidence claims in respect of private photographs or photos taken in public that retain their confidential nature, only one case has tested the degree to which breach of confidence can be used to protect the commercial exploitation of private images.

Douglas v Hello! Ltd ([2005] EWCA Civ 59) concerned unpermitted photographs taken by Hello! magazine at the wedding of Michael Douglas and Catherine Zeta-Jones, who had granted OK! magazine exclusive rights to publish their wedding photos. The UK Court of Appeal upheld the breach of confidence claim brought by the Douglases against Hello!, holding that entering into a


PICTURE: MARK REINSTEIN/SHUTTERSTOCK.COM

The UKIPO refused the registration of DIANA, PRINCESS OF WALES on the basis that the mark lacked distinctive character, as a famous name would serve to signify the subject matter, rather than the trade origin of the goods and services

www.WorldTrademarkReview.com SUMMER 2020 51

parties have filed multiple briefs before the TTAB and the opposition is yet to be resolved.

Even if a high-profile individual has successfully secured a trademark registration, the doctrine of fair use means that they cannot prevent all uses of their mark by third parties. The doctrine provides that third parties can use trademarks to refer to a high-profile individual or the goods or services provided by that person without infringing on any trademark rights. As such, using KYLIE JENNER in a tweet to refer to Jenner’s makeup line would not qualify as trademark infringement. If, however, you were offering makeup products under the KYLIE JENNER mark in an attempt to suggest an affiliation with Jenner or cause confusion among consumers as to the source of the products, that would rise to the level of infringement.

Image protection in the United StatesTrademarksSimilar to the United Kingdom, securing trademark protection is one of the many ways through which celebrities can protect their brands in the United States. Examples of US trademarks registered by celebrities include 50 CENT, KYLIE JENNER, STEPHEN HAWKING, DONALD TRUMP and BEYONCÉ.

To secure trademark protection, a high-profile individual must show that their mark (ie, their name, logo, image or symbol) serves as a source identifier for a product or service (eg, a clothing line or fragrance). Generally, celebrities cannot trademark their names to refer to themselves as individuals, but there is a loophole: they can register their names as a source identifier for the services that they offer. For example, Kim Kardashian owns the registration for KIM KARDASHIAN WEST in relation to “entertainment services, namely, personal appearances by a celebrity, actress and model”. Given that countless well-known figures offer entertainment services in some form, the breadth of trademark protection over a celebrity’s name or logo seems limitless.

However, there are important prohibitions on registering the names of individuals in the United States. US trademark law prohibits the registration of a mark that: • is “primarily merely a surname” (eg, JOHNSON or

JONES); • consists of the name, portrait or signature of a living

person without prior written consent; or • falsely suggests a connection with a person, living

or dead.

These prohibitions ensure that third parties cannot register trademarks that refer to or imply an association with a high-profile individual.

Further, trademark protection extends to images and logos, and well-known figures can seek protection over their images. However, to qualify for trademark protection, the image must serve as a source identifier, rather than a merely decorative element used as part of the product. For example, consumers do not typically assume that a t-shirt with Che Guevara’s image on originates from his successor or a single company. Thus, even though Che Guevara was a high-profile individual, it may be difficult for his successors to obtain trademark protection for his image.

Therefore, obtaining trademark registration for a famous person’s name, image or brand is not always straightforward. US trademark rights are acquired through use. As such, if a senior user used or registered a name as a trademark before it was used as a trademark by a famous person (ie, the junior user), then the senior user can claim superior trademark rights. This was the case in 2016 when Jay-Z and Beyoncé filed a trademark application for BLUE IVY CARTER, their daughter’s name, in relation to a variety of products and services, including entertainment services. Thereafter, a wedding planner, who owned the registration for BLUE IVY for event planning services and had used her mark since 2009, filed an opposition against the BLUE IVY CARTER application, claiming prior trademark rights. To date, the

IMAGE RIGHTS FEATURE

The right of publicity extends to all individuals – not just those that are well known

Trademarks offer protection over names, logos, images, sounds and colours, but importantly, they do not protect a celebrity’s likeness, portrait or persona. As a result, public figures often turn to other legal remedies to protect these aspects of their celebdom.

Right of publicityMany well-known figures turn to the right of publicity to protect their name and likeness. The ‘right of publicity’ is a form of IP law that “protects against the misappropriation of a person’s name, likeness and perhaps other indicia of personal identity for commercial benefit” (“What is right of publicity?”, INTA), which means that you can be held liable for using someone else’s name or likeness without permission for “exploitative purpose”.

The right of publicity extends to all individuals – not just those that are well known. In an evolving world of social media influencers whose fame may not rise to the level of a celebrity, the right of publicity provides important benefits. For example, if cosmetics brands Estée Lauder uses a video clip of a makeup blogger to sell its eyeshadow palette without the blogger’s permission, then the company could be held liable under right of publicity laws. Similarly, celebrities can use this right to protect their name, portrait or likeness.

In the United States, the right of publicity is recognised at the state level only. Since most US states have created their own right of publicity laws, these laws vary considerably by state. For example, while the California statute protects “name, voice, signature, photograph, or likeness” (Cal Civ Code §3344(a)), the Massachusetts statute covers only “name, portrait, or picture” (Mass Gen Laws ch 214, §3A).

Meanwhile, in New York, the right of publicity statute protects against the unauthorised use of person’s name, portrait, picture or voice within the State of New York for advertising or trade purposes (NY Civ Rights Law

Martin Henshall and Annie Websper are associates in Cooley’s London office, and Jeff Greene is a partner and Salsa Ahmed an associate in Cooley’s New York office [email protected] | [email protected] [email protected] | [email protected]

Bob’s Marley’s children sued the t-shirt company based on false endorsement claims under the Lanham Act. The jury found that defendants were liable under the Lanham Act and, on appeal, the Ninth Circuit affirmed the decision. This is a prime example of how false endorsement claims can be an important avenue for high-profile individuals to protect their name, likeness or persona.

In addition, the state of California has issued the Celebrities Rights Act to cater to its Hollywood clientele (Cal Civ Code §3344.1). While California’s right of publicity statute protects the rights of living persons, its Celebrities Rights Act protects the rights to the estate of a deceased person up to 70 years after their death. An individual’s estate can bring a claim under this act if the individual’s name, voice, signature, photograph or likeness has commercial value at the time of death and is used by a third party without authorisation. This act provides an extra measure of protection for celebrities, whose fame often extends past their lifetimes.

As the foregoing suggests, high-profile individuals in the United Kingdom and the United States can access a variety of legal tools to protect their name, image, likeness and persona. While these tools may include IP rights such as trademark claims, advertising, right of publicity, passing off and false endorsement, they may also include more traditional claims based in tort, such as privacy, breach of confidence and misappropriation. Either way, these laws – and their application – are constantly changing in an evolving digital and social media-driven marketplace.

§51). Notably, the New York statute does not provide protection for the use of a person’s name, portrait, picture or voice in connection with “newsworthy” matters, which is defined broadly under New York law. The statute also includes other exemptions from liability, such as the use of an author’s name in connection with their work and the use of a person’s identity for products that they manufactured or sold under that identity. Other states also recognise a similar right of publicity with certain exemptions.

While trademark rights and the right of publicity both protect individuals from the unauthorised use of their brand, name, image or sound, the right of publicity provides a broader scope of protection because it also protects a person’s likeness.

False endorsement claimsHigh-profile figures can also seek protection under false endorsement laws. Section 43(a) of the Lanham Act prohibits the use of a name, word, symbol, false designation of origin or false or misleading description or representation of fact that is likely to cause confusion or to deceive as to the affiliation or association of a person with another person (15 USC §1125(a)). This statute protects high-status individuals against false endorsement or affiliation claims by third parties. False endorsement claims are similar to right of publicity claims, but include one additional element: the use of the famous person’s name, likeness or persona must be “likely to confuse or deceive” consumers into believing that there is a false association or sponsorship. Well-known individuals can often assert claims under both a state’s right of publicity statute and the Lanham Act.

One example of a false endorsement claim involved the use of Bob Marley’s image on t-shirts and other merchandise (see Fifty-Six Hope Rd Music Ltd v AVELA Inc, 778 F.3d 1059 (9th Cir 2015)). The company owned by



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Passing-off claims have been successfully used to challenge false endorsements, including in a case brought by Formula One driver Eddie Irvine after his image was superimposed onto an advertisement for a radio station

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