Intellectual property law

By Stuart Lockyear, Davenport Lyons, London

Image rights

At a time when the scope of any right to privacy of celebrities (and mere mortals too) is being hotly debated, and when the courts are stopping short of acknowledging a free-standing right to privacy, it is instructive that the obverse right - to publicity - is now being acknowledged by the courts.

In Edmund Irvine Tidswell Ltd v Talksport Ltd (13 March 2002) [2002] EWHC 367, Mr Justice Laddie held that a photograph of the Formula 1 driver Eddie Irvine holding a mobile phone, which had been digitally manipulated so that he appeared to be listening to a portable radio bearing the words 'Talk Radio', constituted passing-off in that the photograph was a misrepresentation that he was endorsing Talk Radio.

The photograph appeared in a Talk Radio advertising brochure.

The case is important for a number of reasons:

l It finally establishes that it is not a necessary requirement in a passing-off case for the claimant to share 'a common field of activity' with the defendants, nor even in this case that the claimant should be involved in a trade or business.

l Judicial notice was taken of the fact that celebrities exploit their own image and name by endorsing products, not only those related to their own field of endeavour.

The courts will grant a celebrity a monopoly over the use of his/her name and image and so protect the celebrity's 'brand'.

l A false endorsement of this type will constitute passing-off if: the celebrity has a significant reputation/goodwill; and the defendant's activities falsely suggest to a sufficiently wide section of the celebrity's market that the celebrity has endorsed, recommended or approved the defendant's product.

l There is a long history of failed attempts by or on behalf of celebrities to protect their image rights.

For example, in the 1980s Adam Ant failed to establish that copyright subsisted in his distinctive facial make-up (Merchandising Corporation v Harpbond [1983] FSR 32).

Elvis Presley Enterprises failed to restrain the unofficial merchandising activities of Sid Shaw trading as Elvisly Yours (re Elvis Presley Trade Marks [1997] RPC 543) because Mr Justice Laddie held that the public would not necessarily believe that Mr Shaw's products were officially licensed by the claimant (see also Mirage Studios v Counter Feat Clothing Company [1991] FSR 145 - 'the Ninja Turtles' case).

And the estate of Diana, Princess of Wales, failed in its attempt to register her likeness as a trade mark so as to control merchandising using her image.

In this case, Mr Justice Laddie has now acknowledged that celebrities such as Mr Irvine have a 'property right' in their goodwill which may be enforced against those who make false claims or suggestions of endorsement of their products.

At a time when numerous celebrities are attempting to establish that their personal lives (in particular unauthorised or unapproved images of them) do not constitute public property, it is perhaps not surprising that the courts are now recognising that the image and name of celebrities constitute a brand, with all the rights and economic potential which flow from such a status.

Now that the potential merchandising and endorsement value of a celebrity brand can equal or exceed their substantial earnings on the playing field or on celluloid, it must be right that the courts recognise them.

For Mr Irvine, this case is another example of a Pyrrhic victory by a celebrity in the privacy/publicity arena as he was awarded a paltry 2,000 in damages and thus failed to beat the defendant's payment into court.

So, while it may have proved an expensive process for Mr Irvine, he has cleared the way for other celebrities and their lawyers to control unauthorised exploitation of their image and name, at least in the context of false endorsements, without incurring such costs.