Marketing and Image ‘Rights’

The all-encompassing use of digital technology has stranded the world of Intellectual property rights at crossroads. As a consequence the underlying principles of the intellectual property law are under scanner. This has brought the majority to concentrate on devising methods that ensure freedom of expression along with enhancement of public domain and most significantly creativity getting its due.

Intellectual Property right is a term sheltering the bundle of rights relating to property amassed by inception of ideas. The umbrella term covers rights under patent, copyright, trade marks and designs. As per the Charter of the World Intellectual Property Organization, intellectual property should be all inclusive of the following rights:

• Literary artistic and scientific works
• Performances of performing artists, phonograms and broadcasts
• Invention in all fields of human endeavour
• Scientific discoveries
• Industrial designs
• Trademarks, service marks, and commercial names and designations
• Protection against unfair competition

All other rights resulting from intellectual activity in the industrial, scientific, literary or artistic fields [1]

The Intellectual property rights further provide grounds for several inventions and creations for marketing practice by according monopoly or quasi monopoly rights [2] in order to sustain the credit for the creativity or the ‘products of the mind’ as Article 2(viii) of WIPO convention states.

Today in the modern marketing world, celebrities have gained a lot of significance. The product sellers, the advertising companies all want to sell their products by referring it to an immensely popular personality. Hiring a brand ambassador not only makes the product more attractive but also leads to higher sales. At this particular step we need to do away with the umbrella term of Intellectual property and narrow down to the term ‘image rights’. Image Rights, as described by Richard Haynes, “is the commercial appropriation of someone’s personality including indices of their name, images, voice and signature.” [3]

In such a scenario, sportsmen and women have become equivalent to film stars. To sell a product one needs to attract a customer and this objective is accomplished by enhancing the adverts with the presence of sportsmen and women. As Jenny Hatton observes, with the multimedia advertising becoming extremely popular and the internationalisation of sports, the sportsmen have become new stars. [4] The amount of money drawn by the most popular sportsmen, with international profiles, has often exceeded their salaries. In order to aim at high product demand and sale, the advertising companies are ready to pay huge amounts of money in order to purchase the rights for association with celebrities. These particular rights that aim at protecting the commercial value of a popular personality, are the focus of this research paper.

The paper would thus discuss this particular part of the ‘Intellectual Property Effect’ (Carty; 2007) the paper would primarily deal with the history of the image rights since the inception of it in the earliest of the cases. Though largely focussed on England, it would include certain parts of Europe as they might include certain landmark judgement which influenced the legislation process for image rights in England. The discussion of significant cases through which the legal system was altered, hold immense importance here. The research paper would then flow to elucidation of the concerned legislations relative to image rights under the English law. The paper would then club all elements of image rights and discuss it with a case study. The case study would study the personality of David Beckham.

The need to have image rights:

In the digital age, it has become even harder for celebrities to keep their personal lives under wraps. Given the immense financial advantages attached to the status, people tend to forget that even though the celebrities are earning their living by being in public eye, they still have a ‘personal’ life of their own. Jonathan Burchell [5] , in relation to Murray v. Big Pictures, aptly comments, “Although celebrities may have voluntarily circumscribed their own sphere of privacy, even they have a residual private realm.”

Irrespective of the one’s status in the society, one needs to balance his/her public and private life. It can be said that the right to privacy is a route to human dignity. As Burchell further explains in his article, “Right to privacy, together with the broader, inherent right to dignity, contributes to our humanity.”

After the Human Rights Act 1998, Douglas v Hello! was the very first case in which the right to privacy was seemingly established from what can be observed from the judgement of the court of appeal. The judgement read “a powerfully arguable case that [the claimants] have a right of privacy which English law will today recognise and, where appropriate, protect” [6]

Further, Sedley J’s dictum cleared the ait, “the English law would now protect not only those people whose trust has been abused but those who simply find themselves subjected to an unwarranted intrusion into their personal lives. The law no longer needs to construct an artificial relationship of confidentiality between intruder and victim: it can recognise privacy itself as a legal principle drawn from the fundamental value of personal autonomy.” [7]

Tracing the image rights: the case of European Continent

As early as 1848 England dealt with a case which resulted in an implication that sketches of royal children and of the royal dogs, sketched by Prince Albert [8] could not be published anywhere without taking his consent. A picture painted by James McNeil Whistler during the period of 1894-95 and captioned as ‘Brown and Gold’ dictates a similar story. The portrait painted by Whistler was a part of the discussion of the earliest privacy cases dealt in France. The case [9] dictated that the artist is not permitted to exhibit the image of the sitter without his/her permission. There ensued a dispute over payment and the artist refused to deliver the portrait. As a result the portrait has somebody else’s head instead of Lady Eden. Though Lady Eden failed to get the artist to make the apt portrait nevertheless artist was abstained from using the picture in a public or a private manner or referring it to Lady Eden in any aspect.

At the bottom of such cases lies the issue of image rights. Image rights as described by Richard Haynes in ‘Media Rights and Intellectual property’ may be defined as “rights referring to the commercial use of someone’s image, voice, likeness, name or signature.” [10] At the base of the image rights lies the human dignity and unjust enrichment. Image rights should be entitled irrespective of the fact whether the exploitation would cause any damage or harm. The question of public benefit should not deter the path of laws leading to the formulation and incorporation of such rights ensuring personal gain over public benefit.

France saw an early formulation and incorporation of laws concerning these rights. The judges in France drafted the image rights as soon as 20th Century and integrated it into Code Civil by the enactment of ECHR article 8. Germany followed on similar lines. An interesting observation was the announcement of rights independent of contracts or other similar sub parts of intellectual property rights.

As far as England is concerned the scenario was a bit different. The English have been slow to agree to the grounds on which image rights are based. The principle of Freedom of Expression and the implied belief that ‘whatever is the truth needs to be shown’ holds a firmer ground than the inception of image rights. England justifies its snail speed towards the incorporation of image rights as a separate law on the grounds that it comes at the cost of detriment of the public. In other words, the nation hardly spots any public benefit with the incorporation of these rights. On the contrary, they seem to justify the inclusion of intellectual property rights on the grounds that it brings benefit to the public by persuading economic and artistic activity.

However, the cases in the past decades have pledged changes in the concerned legal system. Changes were observed in the English legal system with the upgradation of certain sports like Football to an international status. Certain bizarre cases have also influenced changes. An example includes the youngest female killer [11] of England – Mary Bell – who was accorded legal protection. The base point revolved around the publication of criminal’s image which can lead to the death of the criminal as a result of a physical attack or mob violence.

The English brought changes to the rights for the performing artists after the case of Peter Sellers who was popular for the role of Closeau – a French Detective in the Pink Panther film series. At that time there were five films in the series. However, after that USA used some of the unused footage and brought around the 6th part of the Pink Panther series. This was done without the consent of the subject- Peter Sellers in his lifetime or after his death through his family members. Aftermath, in the Rickless v.United Artists (1988) QB 40, it was decided that the 1961 Rome convention [12] implicates that estate Peter Seller can claim compensation for the unauthorised usage of the footage.

While the other parts of the continent were realising the need for image rights in the field of sports, United Kingdom in particular was slow to realise its worth at the time of internationalisation of sport. This was especially the case with the sport of football. When the football players started playing outside their home countries, they obviously became extremely popular. With the popularity their personalities became gullible to easy exploitation. Their popularity meant every kind of sportswear and endorsed marketed and distributed by connecting it with their name. In 1990s when they played for English teams they expected same legal protection to be accorded to them as were accorded in the other parts of the continent. However, the scenario differed yet again. 1990s was still too early for the English to recognise image rights. Nevertheless it did not result in any loss for the sports personalities. The reason being the existence of few unrelated legislations that were interestingly stretched to cover them. For instance, for issues relating to advertisements the standard advertising codes protecting them against any misrepresentation as the codes advises for the consent of the subject before using their image for the product. Self-regulation also came into play. In other words, the sports stars could easily avoid bad name by being away from the public eye or by giving consent for good photographs. This led to sports stars hiring agents to sign contracts to get the images of the celebrity.

The European Convention on Human Rights influenced some changes in the English law yet again. In certain earlier cases, the Strasbourg court rules that even if the photos are meant for journalistic or police purposes they should not be taken without the consent of the celebrity. For instance in the case of Krone Verlag GMBH & Co. KG v, Austria, where the applicant company published in its Carinthian Regional edition, a certain Mr. Posch financial condition along with his photograph. [13] The reason for publishing his financial condition was drawing of salaries from three places unlawfully. In other words, Mr. Posch drew a salary as a teacher but at the same time he occupies two official seats in Austrian National assembly and the European parliament respectively. His salary as a teacher was supposed to be nullified as a member of the European Parliament as per the Austrian Law. In the published article he was alleged to be making himself rich unlawfully. The article was accompanied by his picture. Mr. Posch in 1995 applied for injunction under Section 78 of the copyright act against the applicant company demanding prohibition of the publication of his photo declaration in the publication about the damage caused to him because of the publication of his picture. In turn, the applicant company defended itself by justifying the publication under Article 10 of the convention. The court however permitted permanent injunction on the issue of publication of the plaintiff’s picture. The court cleared that the publication of his picture did not add any information to the article. Also the court declared that the picture can do more damage if a person is not a well known face as it would create chances for him/her to be identified later. In this particular case, Mr. Posch even after being a member of the European parliament was not a well known figure and thus publishing his picture would have meant identifying him later and bringing him in front of the public. The Court however did not do anything against the publication of the article and ruled that whether the information in the article holds true facts or not has got nothing to do with this case. However, the English pondered on the fact that where there was a need to bring certain things in front of public in case of a legitimate police purpose. They argued that there has to be certain exceptions under right to private life included in the article 8(2) of the convention. This might include freedom of expression or prevention of crime.

Article 8 of European Convention of Human Rights became the basis for the European Union Data Protection Directive. [14] Again in England, the image rights were limited with respect to the images recorded on CCTV and computers for security reasons. A simple reason behind this was partly implication of the Data Protection Acts which took place in 1984 and 1998.

Some significant developments took place in 2000 stimulated by a few cases. The Inland Revenue argued in the Sport Club plc v. Inspector of Taxes [15] that because the English law does not specifically demarcate image rights, the contracts of the footballers should not be seen as commercial deals the amount of the contract is just part of the salaries given to the sports star. However, the argument remained unsuccessful and the court gave a judgement that the high amounts paid to the footballers in the disguise of contracts in order to promote image rights should be treated as a reflection of their image rights. As a result a large part of income of sportsmen and celebrities was a result of image rights.

In another case in judged in December 2000, the court declared that a subject can claim compensation from the publication if their pictures are published without their consent. The particular case revolved around the marriage of well known celebrities Michael Douglas and Catherine Zeta Jones and the publication of their wedding pictures. [16] Given the popularity of the two film stars, there was a sense of frenzy felt in media after the announcement of their wedding. When two magazines approached Douglas for obtaining exclusive rights to publish the pictures, he signed a contract with OK! In order to avoid media frenzy. OK! agreed to pay 500,000 pounds each to the celebrity couple and agreed that it would not publish any unauthorized photo. The length of the contract was 9 months. On the wedding day everything was well planned and security was in place, however, Mr Rupert Thorpe – a paparazzo was discovered to have clicked some pictures during the wedding. He then contacted another paparazzo as also the magazine Hello! Hello! After speedily signing a deal with Mr. Thorpe published the unauthorized pictures of the couple’s wedding. Douglas and OK! After discovering that the unauthorised pictures have been taken to the market, filed a case and called for restriction on the publication of the pictures.

The recognition of image rights took a new turn after this particular case. In 2003 When Naomi Campbell’s picture was published along with a story on her drug therapy she filed a case against the Mirror newspaper group ltd [17] claiming breach of confidence. Campbell claimed that it was an intrusion into her personal data to which she had all the right to protect. In other words it could be said that the case was an instance for privacy v. Freedom of expression. She was awarded a compensation of 3,500 pounds. Another case on the same lines was that of Formula 1 driver Edmund Irvine. His image was being used for an advertisement about a radio station. This was done without his consent. The court adjudged that he had a property right over his image and the goodwill related to it. Therefore, the Court stated that he should be given compensation amount equivalent to the endorsement fee. [18]

Write significant developments after 2004

Legislations relative to image rights under the English Law:

There is no particular legislation relating to image rights under the English law. The idea of ‘image’ or ‘personality’ right was altogether rejected in certain cases in United Kingdom. The case of Tolley V. Fry [19] which dates back to 1931 was one amongst those cited. The case revolved around Tolley, a golfer whose cartoon images were used in adverts by Fry who was a chocolate manufacturer. Tolley filed a case regarding unwanted use of the character for advertising purposes which might possibly leave a wrong impression on the readers and thereby defamation. Greer L.J. statement in the case signified a move towards rejection of image right. He dictated, “Some men and women voluntarily enter profession which by their nature invite publicity, or public approval or disapproval. It is not unreasonable in their case that they should submit without complaint to their names and occupations and reputations being treated…almost as public property.”

Another popular case amongst those cited that shows the disapproval of the image rights was that of Elvis Presley Enterprises Inc v. Sid Shaw Elvisly Yours. Simon Brown L.J. rejected the claim for ‘character rights’ by stating, “Thirty years earlier, indeed, when it was contended for as a corollary of passing off law, it had been rejected in McCulloch v. May. I would continue to reject it. In addressing the critical issue of distinctiveness there should be no a priori assumption that only a celebrity or his successors may ever market (or license the marketing of) his own character. Monopolies should not be so readily created.” [20]

Goodenough aptly describes the situation, “Plaintiffs lacking the real thing must rely on a confusing number of analogies and neighbouring doctrines” [21] These analogies and neighbouring doctrines might include:

Passing Off

Trademark infringement

The Registered Designs Act 1949

The Trade Descriptions Act 1968

Copyright

Defamation

Malicious falsehood

Data Protection Act 1998

British Code of Advertising Practice

Control of Misleading Advertising Regulations

The Independent Television commission code of Advertising Standards and Practice

The Tort of Passing off:

“Given the need to show a specific tort, the obvious choice for those who seek “publicity” protection is the tort of passing off.”

Hazel Carty

Administered under the law of torts, Passing off is applied when there ensues a dispute between two individuals or two parties. It is different from a case in which action is brought against an individual by a State. Misrepresentation made by an individual or a party which causes damage to the other individual or party is exactly what passing off relates to. Thus, it is needless to say that it cannot be applied in the absence of misrepresentation.

For a case to be judged with the implication of passing off it is necessary that the goods or services should have a significant identity attached to it. For the goods or services, to be used by the defendant must have a particular identity in the market. There is an obvious reason behind it, with the association of the goods or services, people should be influenced to buy that product because of the goodwill that the association lends to the product. It is not necessary that the misrepresentation on the behalf of the defendant is intended. In simple words just passing off somebody’s product as your own is what aptly defines the term. To quote Lord Oliver in the initial cases judged on the basis of torts of passing off, a claim may be made if:

“the claimant’s goods or services have acquired a goodwill or reputation in the market and are known by some distinguishing feature;

there is a misrepresentation by the defendant (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by the defendant are goods or services of the claimant; and

The claimant has suffered, or is likely to suffer, damage as a result of the erroneous belief engendered by the defendant’s misrepresentation.” [22]

In the absence of other legislations concerning image rights, the tort of passing off has expanded a little over the years to include ‘connection misrepresentation’. As Hazel Carty defines, Connection misrepresentation implies a “representation that the claimant’s and defendant’s businesses or goods are in some way connected.” [23] She further explains, that the concept of harm has also become broader in order to include accusations of “dilution” (Carty; 2007). ‘Dilution’, according to her implies a ‘more speculative’ (Carty; 2007) form of harm.

The reaction of the judiciary with respect to tort of passing off is quite noteworthy. Even though it gave recognition to the process of merchandising and advertisements and also agreed that for claiming compensation under the tort, it isn’t necessary that the complainant and the defendant would be from the same fields as far as business is concerned. However, it cleared the air by dictating that just accusing a party of unauthorised use of celebrity images would not constitute the case. Presence of misrepresentation is necessary that is there should be proof enough to show that the public was misled to believe that the two parties had commercial connections.

This assertion of the judiciary was clearly depicted in the Elvis Presley as also the Halliwell v Panini case. The courts objected that assertion cannot be made purely on the basis of unauthorised use of celebrity images. However, as the tort expanded over the years to include other terms, it eased the air for the celebrities to protect themselves.

Irvine v Talksport Ltd. [24] was the landmark case judged with the application of tort of passing off. It was the very first case in which the judiciary accepted the claim of “false endorsement” (Carty; 2007). The case was about a radio station advert where the defendants used the image of the Formula 1 driver without his consent. His picture was edited and the mobile phone that he was holding was replaced by a radio set which had the brand name of the defendant. This was categorised under ‘connection misrepresentation’ by the judges. In other words, it gave the public a false impression that the successful Formula 1 driver is part promoting the product. This was believed to have caused harm to the celebrity as it would affect the celebrity’s goodwill in the sphere of endorsements. While dictating a judgement on 13 March 2002, Laddie J stated “the tort of passing off does not create a monopoly right in the use of word or name but that it protects goodwill against damage, and that goodwill is property.” [25] The goodwill concerned with promotion was defined by Laddie J as “the attractive force which is the reputation of that famous person”

Goodwill, Damage and Misrepresentation are the three key elements that govern the tort of passing off. For a case to be adjudged under the tort of passing off, it is necessary that there should be misrepresentation and damage cause to the claimant’s goodwill. [26]

The action for breach of confidence:

As stated in Coco V AN Clarks (Engineers) Ltd [27] , Breach of confidence is targeted at protecting a piece of confidential information. A cause of action, thereby, exists when the information is imparted by the confider to the confidant in circumstance imparting an obligation of confidence and when there occurs an unauthorised use of the information to the detriment of the confider. However, it is important enough to note that the obligation of confidence is reliant on the quality of information as well as on the quality of relationship between the parties.

Even though breach of confidence is been increasingly used to protect privacy, there exists a difference between confidence and privacy. As Raymond Wacks puts it, “Privacy can be described as the interest in controlling the gathering and disclosure of personal information about oneself.” [28] At the base of the protection of privacy lies the individual’s will to decide who will learn what about their personal life. In protection of privacy, the key element is the nature of information whereas in breach of confidence what matters is the reposing of trust in order to keep the information confidential. [29]

During the time period when a call for a particular law protecting the privacy of an individual remained unsuccessful, action of breach of confidence was used to deal with the protection of privacy as well. However, one major obstacle was the basis of breach of confidence. As described above, at the bottom of breach of confidence lies the need to show an existing relationship of confidence in which some confident information has been communicated. However, the scenario is different as far as protection of privacy is concerned. Breach of confidence was thus made more tolerant to accommodate and deal with the protection of privacy. In any case concerning protection of privacy, an obligation of confidence was proved on the basis that a person has got hold of some information in circumstances in which he/she would have realised that the information is confidential and it would be claimed as unauthorised use if the information is leaked without the consent of the person concerned. Meggray J aptly stated in the Coco v A N Clarks case, “if the circumstances are such that any reasonable man standing in the shoes of the recipient of information would have realised that upon reasonable grounds the information was being given to him in confidence.” Just the fact that the confidant had enough sense to realise that the information he/she holds is confidential.

In the Shelley Films Ltd v Rex Features Ltd [1994] EMLR 134, the same dictum was elaborated in interesting words, “Where a person obtained information by entering private

Property despite signs which indicated that such entry was not permitted.”

Douglas V. Hello! serves as an example for the action for breach of confidence. As explained in the earlier parts of the paper, the case pertained to the wedding of the celebrities – Catherine Zeta Jones and Michael Douglas. For the exclusive rights to publish the photographs of the wedding of the celebrities, Douglas signed a contract with OK magazine which made a huge amount of money to the couple. The wedding however was infiltrated by a freelancer who took certain photographs and successfully sold it to Hello!. Hello! published the photos in one of the issues and sold 1,50,000 more copies than their usual. When the case was brought in front of House of Lords, the majority’s opinion put forth by Lord Hoffman. The opinion regarded that there is a cause of action for the breach of confidence. This was established on the basis of presence of three key elements [30] :

The information had to have the quality of confidence;

It had to be imparted in circumstances of confidence; and

There had to be an unauthorised use of it to the detriment of the party communicating it.

Given the fact that the photos were not available publicly, there was a quality of confidence. The condition for circumstances of confidence was fulfilled as every person attending the wedding was asked not to click any picture and also not to communicate anything to anyone. The leaking of information or pictures would have meant damage for OK who paid a huge sum to obtain the exclusive rights. This is what exactly happened. The passing of the confidential information here was detriment not to confider but to the confidant, which in this case was OK.