10/04/2015
Recent developments involving, Rihanna, Bob Marley and Robin Williams, have brought further light on the protection of image rights on both sides of the Atlantic.
Fenty v Arcadia Group Brands Ltd
In February 2015, Rihanna won a landmark case against Topshop before the Court of Appeal of England and Wales (Fenty & Ors v Arcadia Group Brands Ltd & Anor [2015] EWCA Civ 3).
There is no such thing as ‘image rights’ in English law. Unlike in many civil law countries, various US states, and even the small island of Guernsey (not part of the UK), celebrities who want to protect their personal brand in the United Kingdom need to resort to other legal devices such as trade mark or copyright law. It is up to them to convince the courts that the unauthorised use of their name, voice or face falls into any of those categories.
Here, Topshop sold sleeveless T-shirts printed with Rihanna’s photograph without her consent. Her legal team claimed an infringement of her unregistered trade mark and sued for passing off.
At first instance, Rihanna had to demonstrate three things (as defined by Lord Oliver in the Jif Lemon case):
- Goodwill in that category of goods had been established;
- There had been a misrepresentation to the public;
- Damage had been incurred as a result of the above.
The High Court agreed with all points: Rihanna, although a musician, had actively made deliberate inroads in fashion and had “ample goodwill to succeed in a passing off action of this kind.” (Birss J [2013] EWHC 2310 (Ch)).
As to the second count, Topshop had previously made “considerable effort to emphasise connections” with Rihanna. It had carried out a competition whose prize was a personal shopping appointment with her at the flagship Oxford Circus store. Topshop had also told the public when she wore its items or visited one of its shops. By extension, the photograph in question had been shot during the filing of the video for Rihanna’s single, “We found love.”, and one could have assumed it had also been promotionally linked.
Regarding the third element, it was stated that money spent buying those T-shirts would not be spent on her own legitimate merchandise. The use of her photo could also be a loss of her reputation in the fashion industry.
The Court of Appeal upheld Birss J’s judgement, although it explicitly reminded us that the success of such passing off actions will depend on the facts on the case. Indeed, Kitchin LJ stated: “Rihanna has always accepted that she has no right in English law to prevent any use of her image.” He added: “Further and specifically, she acknowledges that the sale of garments bearing recognisable images of her does not, in and of itself, amount to passing off.”
However, it did not follow that “the image itself must be excluded from the matrix of facts which are said to give rise to an overall representation that she has endorsed the goods to which it has been applied.”
The above case was not straightforward, Underhill LJ commenting that it was “close to the borderline.”
Fifty-Six Hope Road Music Ltd vs A.V.E.L.A. Inc
In a comparable situation before the US courts, the heirs of Bob Marley’s estate were able to stop the unauthorised sale of clothes bearing his image and obtain compensation (United States Court of Appeals, 9th Circuit, 12-17502).
In contrast to the UK where there is no statutory protection, unregistered trade marks are protected in the USA by the Lanham (Trademark) Act of 1946 (as amended).
Bob Marley’s heirs (via Fifty-Six Hope Road Music which manages the singer’s assets and rights) sued clothing company A.V.E.L.A. under the Act. Their claims included unauthorised trade mark use, false endorsement and false designation of origin.
At first instance, the US District Court, after having applied an 8-point test, ruled in favour of Fifty-Six Hope Road Music and awarded $1.050 million in damages and profits and more than $1.5 million in legal fees.
A.V.E.L.A. appealed before the US Court of Appeals, stating among other things that ‘a celebrity’s “persona” is too “amorphous” to constitute a “name, symbol or device”‘ under the Act.
Judge Randy Smith, delivering the opinion of the court, pointed out that case law recognises celebrity personae (in comparison to UK case law which does not), and confirmed that the defendants had used Marley’s likeness in a manner expected to cause confusion as to whether Marley’s family had endorsed the products.
While that ruling reminds us of the better image protection afforded in the USA compared to the UK, the case was not that clear cut. The court commented that the defendants had raised “several potentially salient defences” that would have been considered had they properly asserted them at first instance.
Furthermore, the defendants seem not to have used Bob Marley’s actual name on their T-shirts: otherwise, Fifty-Six Music would have had less difficulty enforcing its rights as it had registered BOB MARLEY with the USPTO in multiple classes. Should it have also registered Bob Marley’s actual picture?
The Last Will Of Robin Williams
Had Robin Williams been advised on those matters before his passing last August?
New documents have shown that he has filed a deed preventing his image from being used in any film or publicity until 2039, while he has transferred the rights to his name, signature, photograph and likeness to a charity that he had set up, the Windfall Foundation.
While the California Civil Code sections 3344 and 3344.1 already provide publicity rights for living and deceased individuals, the terms of the deed arguably provide even broader coverage. The protection sought under the deed also goes further than the previous two cases by including animation as well as two-dimensional still images: there have been multiple instances of entertainment and advertising featuring the CGI recreations of departed celebrities in sometimes unexpected contexts.
The effectiveness of the Williams deed may still be tested before US courts taking into account that only the ROBIN WILLIAMS word mark seems to be registered with the USPTO.
The Benefits Of Trade Mark Registration
Many issues were raised before the courts and of course there are differences in the law of the US and the UK so comparisons between the two must be made with great care.
However, the explicit protection afforded by trade mark registration is undeniable and much harder to circumvent if the appropriate marks are filed with the relevant IP office. A.V.E.L.A.’s avoidance of the “BOB MARLEY” words on its T-shirts illustrates that.
Taylor Swift may have been very wise in this respect in applying to register multiple trade marks including her lyrics, such as “party like it’s 1989”, to prevent unwanted associations with her brand. Adding different visual representations to the mix may be only a small extra step but would provide many additional legal benefits.
If you would like to find out more, please feel free to contact us for a chat.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.
