A Brand New Image

A Brand New Image?

Should Personality Rights be

Recognised in the UK?

Intellectual Property Law

Module: LW 556

Name: Kim Fox

Student Number: 02315706

Word Count: 5,287

Introduction

Definition:

The right of publicity is generally defined as the right of an individual to control the commercial exploitation of his or her name, likeness and persona, and the right to receive remuneration from that exploitation.[1]

Every day we are deluged by images of celebrities either promoting or endorsing almost every product imaginable, from food and drink all the way through to sportswear, electronics and even cosmetics.

Over the years, sports people and celebrities have become increasingly aware of the value of their image rights in a world where product endorsement is common and perceived to be lucrative.[2] Many companies recognise the attractive force of the reputation of a celebrity as an encouragement to buy products or use services, and fully understand that celebrities can create awareness, focus attention and transfer images and glamour to products that otherwise might remain anonymous.In addition to an attractive packaging and a respected trade mark, the limelight of a celebrity adds substantial market value to a product.[3]

In the last decade or two, as this "celebrity industry" has grown in power, organization, and sophistication,the use of one’s image or personality for the marketing of goods and services has become more and more valuable and both advertisers and marketing departments alike have been quick to tap into this segment of the public's apparently ceaseless appetite for images of its idols.[4] However,as the costs involved in celebrity production have soared, the pressure for legal commodification of personas has intensified.[5]Many believe that the market value of 'popularity' is extremely vulnerable,[6] as aside from the risk of unfavourable media coverage, free-riders often cash in and appropriate the celebrity's personality features in order to promote their goods and services: names, voices and likenesses are hi-jacked for advertisements, and look-alikes and caricatures replace celebrities who are reluctant to lend their image to certain products.[7]

The English courts, however, have always been sceptical about creating monopoly rights in nebulous concepts such as names, likenesses or popularity,[8] and the notion is still very much alien within the UK. In the absence of personality or publicity rights,[9] celebrities are thus forced to try and seek protection of the business value of their personality by other means,[10] whether under copyright law, trade mark law, or by pushing the boundaries in the tort of passing-off.[11]

Evidently, the area of personality rights is fraught with difficulty and raises many questions.[12] Other jurisdictions, notably the United States[13] has had decades of experience with regard to a personality right,[14] and it is here that I will be basing the substantive aspect of this article. Namely I will be attempting to disprove some of the common threads of argument that lay claim for a need of Personality Rights here in the UK.

Personality Rights in a National Context

The Situation in the UK.

"We think that, in addition to and independent of that right of privacy, a man has a right in the publicity value of his photograph ... For it is common knowledge that many prominent persons, far from having their feelings bruised through public exposure of their likeness, would feel sorely deprived if they no longer received money for authorising advertisements, popularising their countenances, displayed in newspapers, buses, trains and subways."[15]

These words of US Judge Jerome Frank in 1953 introduced a new and separate property right to protect the business value of popularity. Surprisingly however, major European jurisdictions seem to be able to ignore 50 years of economic and legal development in this area and remain astonishingly resistant to the needs of the holders of these valuable assets.[16]

As we have seen, the development of personality rights in the UK differs considerably from the majority of other countries. British judges have been particularly unsympathetic towards the introduction of a US-style law to protect celebrities' identity, and judgements in UK courts reveal deep-rooted opposition to such a move.[17] It has even been said that in the United Kingdom, the personality and image of individuals has been ‘stunningly under-protected’,[18] forcing stars and starlets to sneak through back doors of all kinds of legal provisions which were designed for other purposes.[19] Without any freestanding right to publicity, individuals have had to rely on a framework of intellectual property and other rights to achieve some form of legal protection and prevent unauthorized exploitation of their names and images; including libel, trade marks, copyright and passing off to name but a few.[20]

As early as in du Boulay v du Boulay[21] a court stated that the use of another's name is a grievance for which English law affords no redress. English law has never moved towards creating rights in a name per se, [22] and protection for other personality features such as likeness, voice, distinctive clothes, etc. or a more general right of publicity has constantly been rejected: first in 1931 in Tolley v Fry,[23] then in 1948 in McCulloch v May,[24] through various celebrity merchandising cases in the seventies,[25] by the Whitford Committee[26] in 1977, and more recently in 1999 in Elvis Presley Enterprises Inc. v Sid Shaw Elvisly Yours.[27]

It was expected that clarity may be afforded to English law in this area following the public offence taken by David Bedford,[28] at the advertising campaign pursued by the directory enquiries operator 118 118 during its launch in 2004.[29] But rather than act as a springboard to a civil claim, whether on advice or otherwise, Bedford took the matter no further, leaving those hoping for a development of the law in this area disappointed.[30]

Although often cited as heralding the arrival of image rights in the UK, the English High Court's decision in the Eddie Irvine[31] case also changed little The Irvine decision has been hailed by some as a legal watershed and that personality rights are now protectable under the common law of passing off. It has been suggested however that such a view is not correct.[32]

Indeed, rather than a watershed, the Irvine decision is perhaps nothing more than the court applying the law of passing off to modern business practice, namely the ever-popular marketing conceit of celebrity product endorsement. As Laddie J stated in the Irvine action at first instance: "The sort of cases which come within the scope of a passing off action has not remained stationary over the years ... Passing off is closely connected to and dependent upon what is happening in the market place."[33]
In fact, both passing off and false endorsement are growing areas because we have no personality rights in this country. [34] English courts seem to like neither the celebrity nor the merchandising business,[35] and despite calls from lawyers for the UK to adopt a U.S-style right to publicity, the British Judiciary is still resistant to the idea.[36]

The privacy aspect of personality rights

The principal concern analysed in this article is the commercial interest in publicity or image, however the protection of privacy also needs to be briefly examined.

In the United Kingdom there is no sui generis right of privacy,[37] though it is becoming more and more recognised. [38] In 1990, when Kaye v Robertson[39] was decided, there was little if any protection of privacy in the UK. Freedom of the press outweighed all other interests, and there were no torts available to protect an individual’s private sphere apart from an action of breach of confidence.[40] However, with the coming into force of the Human Rights Act 1998 the boundaries have moved. The courts have used section 12 of that Act as a means by which to develop notions of privacy but have done so by reference to the action of breach of confidence.[41] It is not yet clear whether the courts will develop a free standing right of privacy or tort of invasion of privacy.

It has been said that privacy and publicity can be seen as the two sides of a right of "personality",[42] and while Continental jurisdictions tend to separate questions of privacy and questions of publicity, the human rights component of the latter are not seen to be too important. The case of Douglas v Hello! suggests that the English courts mix the spheres, while in American law the development of privacy and publicity rights are clearly linked. Undeniably the acceptance of privacy protection acted as an important catalyst in the promotion of publicity rights in America.[43] Prosser, the leading American tort commentator of his day, included "appropriation of the plaintiff's name or likeness" as one of his four torts of privacy in his influential analysis of the embryonic privacy right in America. Thus American and continental experiences show that what are originally identified as privacy concerns can prompt the separate development of publicity rights.

So, with the UK creeping closer and closer to a right to privacy, will this eventually lead to a full blown personality right?

The situation in the US

On the other side of the Atlantic, publicity rights have grown into a considerable body of law. It is perhaps not that surprising that the US was the first to acknowledge the right of well-known individuals to protect their names and images.[44]

As Thomas McCarthy tells the story,[45] the right of publicity was ‘carved out of the general right of privacy’ – ‘like Eve from Adam's rib.’ However, it has since been observed that the right of publicity was created not so much from the right of privacy as from frustration with it,[46] and that the whole matter was negotiated by courts and commentators with something less than divine ease and grace.

The right of privacy,[47] received its initial legal recognition in connection with the unauthorized advertising use of names and likenesses,[48] and when celebrity plaintiffs first came to the courts in the 1920s and 1930s seeking relief from unauthorized commercial appropriation on privacy grounds, the reception was generally cool and uncomprehending. A number of courts held simply that celebrities had waived their rights of privacy,[49]not only as to news coverage and comment but as to commercial appropriation as well, by assuming positions of prominence and visibility.[50]

By the 1930s, then, it was already evident that if a celebrity had only a right of privacy against unauthorized commercial use of her identity she would not be able to realize maximum benefit from her publicity values.[51]

The decisive legal breakthrough for this new economic conception of fame came in 1953, in Haelan Laboratories, Inc. v. Topps Chewing Gum Inc.[52] However, the Haelan Laboratories opinion contained not a trace of moral or conceptual uneasiness about the commodication of personality. It seemed natural and obvious to the court that celebrity personas should be bought and sold in the market like any other.

Nevertheless, despite an initial reluctance to embrace this new right, helped along by some kind words from Professor Kalven,[53] Nimmer[54] and later from the Supreme Court,[55] ‘the right of publicity’ gradually began to win widespread judicial and scholarly acceptance.

Today over 30 US states acknowledge some form of image or publicity right, either under the common law or based in statute. The Restatement Second of Torts recognizes four types of invasions of privacy: intrusion, appropriation of name or likeness,unreasonable publicity and false light.[56] In other states the Right of Publicity is protected through the law of unfair competition. Actions for the tort of misappropriation or for a wrongful attempt to "pass off" the product as endorsed or produced by the individual, help to protect the right of publicity.[57]

Critique for the Standard Arguments for a Right of Personality

As already noted. there has been pressure from all sides appealing for the legal protection of ‘publicity’ or ‘image’rights here in the UK. William Cornish[58] notes that recent litigation has led to calls “for reconsideration of whether there ought to be a specific ‘personality right’ introduced into English law”.

In the US there is a solid consensus within the American legal community that the right of publicity is a good thing,[59] however does this mean that the UK should follow down the same path?

Within the UK, there has been surprisingly little convincing justification for a need of personality rights, with many commentators rarely arguing further than the issue that the law is ‘unclear’ as it stands, and therefore a change must surely be needed.[60] It would certainly appear that the tone of much academic and judicial writing is that of undeniable impatience.

Thus, if English law is on the brink of developing image rights in some shape or form, it becomes critical to analyse the justifications for such a development, and assess whether these arguments are strong enough to justify any ensuing restrictions that would be placed upon our society.

Broadly speaking, the justifications advanced in support of personality rights fall into one of three categories: ‘moral’ arguments, ‘economic’ arguments, and ‘consumer protection’ arguments.

Moral Arguments

In today’s society, it is perhaps not unusual to learn that many are content to believe that a property right in identity is something a celebrity "deserves" simply for becoming famous.

Many believe it is self-evident that the individual creator should have first the moral, and therefore legal, right, provided that she can meaningfully be said to have created the object, and not merely to have discovered it.[61]

However, these claims are rather curious. Fame, after all, is “no sure test of merit.”[62]

Is it not true that despite what once may have been the case, many become famous nowadays through sheer luck, criminal or grossly immoral conduct, or even involvement in public scandal.[63] More to the point, even commercially marketable fame can be achieved in this manner, just take for instance Jade Goody,[64] who has achieved celebrity (and millionaire) status, merely for her appearance in the Big Brother House.[65] (Celebrities achieving fame in such a manner have since been dubbed ‘nonebrities’)[66]

Thus I am inclined to agree with Madow[67] when he contended that being famous, by itself, does not make a person deserving of all the fruits of their fame.

There are a great many reasons to demand a full and persuasive justification for publicity rights. For instance when looking at the fact that publicity redistributes wealth upwards,[68]should we not be asking ourselves why the law should confer a source of additional wealth on entertainers and athletes who are already very handsomely compensated for the primary activities to which they owe their fame?

Tom Cruise, for example recently earned $70 million for War of the Worlds,[69] and commanded a massive $140 million for Mission Impossible 1 and 2.[70]

In the TV world, the score seems to be no different; Jerry Seinfeld earned over $267 million in his most recent season of Seinfeld,[71] while Kelsey Grammer who plays Frasier on the sitcom of the same name is earning $1.6 million per episode.[72]It may come as no surprise to hear that in 2005, Tiger Woods secured an incredible $87 million, and David Beckham $32 million.[73]

Surely this is enough? (Some may even say too much). Why should the law give actors and athletes a legal right that channels yet more money their way? Why not instead treat a famous person’s name and face ‘as a common asset to be shared, an economic opportunity available in the free market system’?[74]

It could in fact be argued that in the very process of achieving fame, celebrities call on a cultural tradition, and thus they, in themselves, become part of our cultural "commons". In Elvis Presley,[75] counsel for Shaw[76] described Elvis as having become an important part of popular culture whose name and image other traders might legitimately wish to make use of.[77]

Jennifer Davis[78] comments that ‘the judgement appears to recognise a public sphere in which meaning is socially created and to which the public should have access’. She also noted that ‘it is the public which has endowed (Elvis) … with the celebrity which makes memorabilia carrying his name so popular’. [79]

Hazel Carty argues that even those celebrities who achieve fame within their own context arguably "take on public meaning"[80] or in themselves stimulate creativity and innovative/transformative use in others.[81]

Infringement on the Public Domain, or a Repression of our Free Speech and Cultural development?

On what basis should we distinguish between objects that are subject to intellectual property and objects that are part of the so-called intellectual commons?[82] Should persona in certain cases be recognised as part of the intellectual commons ‘owned’ by all humanity?[83] To Peter Drahos, the ‘intellectual commons’ is an attempt to reserve some objects for common access and use, and thereby encapsulates the idea of an ‘objective world of knowledge’ from which people are not barred from gaining access by conventional (primarily legal), technological, or physical means.[84]

The distinction between intellectual property and intellectual commons raises significant political issues. Intellectual property is supposed to reward, and therefore encourage, investment in individual creativity and inventiveness,[85] while protection of the intellectual commons is said to ensure that human knowledge and culture are reserved for common use and the enhancement of our existences within a community.[86] So, what sort of limitations ought to be placed upon the use of an individual’s image? And what if they have become a ‘historical figure’?[87] Should history be limited?