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
R. Penfold, A. Batteson, J. Dickerson ‘How to defend image rights’ M.I.P. 2005, 148 Supp (Brand
Management Focus 2005), 19-21. In the Estate of Elvis Presley v Russen (513 F Supp 1339 (1981),
1353); the court defined the ‘right of publicity’ as “…..the right of an individual, especially a public
figure or a celebrity, to control the commercial value and exploitation of his name and picture or
likeness and to prevent others from unfairly appropriating this value for their commercial benefit.” (per
Brotman, District Judge).
2
Alan Burden-Cooper ‘Image Rights - Having your cake and eating it?’ June 2002.
3
Martino Giaquinto ‘Celebrity Branding’ (2004) IP & IT Law 9.5(3)
4
R. Penfold, A. Batteson, J. Dickerson ‘How to defend image right’s M.I.P. 2005, 148 Supp (Brand
Management Focus 2005), 19-21.
5
Madow, ‘Private Ownership of Public Image: Popular Culture and Publicity Rights’, California
LawReview, 1993, at 177.
6
Martino Giaquinto ‘Celebrity Branding’ (2004) IP & IT Law 9.5(3)
7
Jan Klink. ‘50 Years of Publicity Rights in The United States and the Never Ending Hassle With
Intellectual Property and Personality Rights in Europe’ 2003 Intellectual Property Quarterly.
1
2
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 States13 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.
8
ibid.
and indeed the UK’s rather lacking guidelines on privacy law (please refer to Rohan Massey;
KathrinTauber ‘Privacy And Personality, Politicians And Stars’ (2003) E-Law 1.2(5)).
10
Despite the recent extension by the UK courts of existing laws towards the creation of quasi-image
rights, the UK is still some way from creating a self-standing image or personality right
11
Martino Giaquinto ‘Celebrity Branding’ (2004) IP & IT Law 9.5(3).
12
Amanda Maclachlan ‘WIPO2 - the domain name consultation process’ (2001) Vol 151 No 6981 p
596.
13
Here there was neither the cohesion, lawyering skill, nor lobbying muscle to counter this pressure for
legal commodification effectively. – Madow, ‘Private Ownership of Public Image: Popular Culture
and Publicity Rights’, CLR 1993, at 177.
14
Thorsten Lauterbach ‘US-style ‘personality’ right in the UK – en route from Strasbourg?’ (20th
BILETA Conference).
9
3
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 deeprooted 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
15
Healan Laboratories, Inc. v Topps Chewing Gum, Inc. 202 F. 2d 866 (2d Cir. 1953) at p.868.
The situation under French law is quite similar to the German approach and discussed by Logeais
and Schroeder ‘The French Right of Image: An Ambiguous Concept Protecting the Human Persona’
(1998) 18 Loy. L.A. Ent.L.J. 511. The Italian practice is analysed by Martucelli, ‘The Right of
Publicity under Italian Civil Law’ (1998) 18 Loy. L.A. Ent.L.J. 543.
17
Simon Smith Image, Persona and the Law (Sweet & Maxwell 2001)
18
Thorsten Lauterbach ‘US-style ‘personality’ right in the UK – en route from Strasbourg?’ (20th
BILETA Conference)
19
Jan Klink. ‘50 Years of Publicity Rights in The United States and the Never Ending Hassle With
Intellectual Property and Personality Rights in Europe’ 2003 Intellectual Property Quarterly. at p.364
20
These rights have inherent difficulties: in order to succeed in a libel claim, a person must show that
the offending publication has lowered his reputation in the mind of the public; trade mark registrations
for images are difficult to secure and, even if registration is obtained, it may only protect a particular
image used as a trade mark and not the general image of an individual; copyright will protect a
photograph or drawing of an individual as an artistic work but not the image of the individual himself;
and an action for passing off requires a misrepresentation that is acted on by the consumer. In other
words, for such an action to be successful, the consumer needs to show that particular goods and
services have been licensed or endorsed in some way by the individual seeking to protect his image,
when this is not the case.
16
4
As early as in du Boulay v du Boulay21 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 Committee26 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 Irvine31 case also changed little The Irvine decision has been hailed by some as a
21
(1869) L.R. 2 430 PC. (Earlier cases were concerned with honour and reputation, see Lord Byron v Johnston
(1816) 2. Mer. 29; Clarke v Freeman (1843) 12 Jur. 149; Routh v Webster (1847) 10 Beav. 561).
22 See for example Earl Cowley v Countess Cowley [1901] A.C. 450; Taverner Rutledge Ltd. v Trexapalm Ltd
[1975] F.S.R. 479.
23 [1931] A.C. 333.
24 (1948) 65 R.P.C. 58, where the court made clear that false endorsement does not give rise to actionable claims.
They thought it was a mandatory requirement for an action of passing off that the claimant and the defendant were
engaged in the same field of activity. Only that way might the public be mislead about the origin of the goods in
question. Public figures could thus be used in commercial advertisements quite freely. (In Irvine v Talksport
[2002] EMLR 32, Laddie J. reversed this point. Taking into account decisions from Australia and New Zealand
and analysing the law before McCulloch v May he found that the public can be misled if the likeness of a famous
person is used to advertise a product without authorisation. It is necessary, however, that this person has built up
sufficient goodwill and that the advertiser gives the impression that the person used really endorses the product. It
would appear that ‘the man in the street’ can still be used for advertising purposes without a licence, at least as far
as the action of passing off is concerned).
25 See for example Lyngstad v Annabas [1977] F.S.R. 62, which is still the law. In this case Oliver J. expressed the
view that the public would not believe that a music group was responsible for all memorabilia bearing their name
or image. This is especially so if the music group themselves are not in the business of selling memorabilia (TShirts, mugs and the like). An action of passing off was thus not relevant and merchandising of memorabilia does
not require a licence in the UK.
26 The Whitford Committee considered integrating "character rights" for fictional characters into the Copyright Act
but concluded that they would fit better within an unfair competition law, Cmnd. 6732 HMSO, 1976-77, para.909,
see n.55.
27 [1999] R.P.C. 567. This case endorsed the view expressed in Lyngstad v Annabas. By saying that a trade mark
of the name of a famous person would be descriptive rather than distinctive for memorabilia sold with the picture
or name of that person on it, the Court of Appeal appeared to remove the possibility of registering a trade mark for
a band in connection with those types of goods and services.
28 A middle-distance runner of the 1970s.
29 Bedford brought a complaint to the UK communications regulator, Ofcom, which found that the two runners
featured in the campaign, each wearing the numbers "118", had caricatured Bedford without his permission.
30 R. Penfold, A. Batteson, J. Dickerson ‘How to defend image rights’ M.I.P. 2005, 148 Supp (Brand Management
Focus 2005), 19-21.
31 Irvine v Talksport [2002] EMLR 32.
5
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
Please refer to David Rose and Emily Shaw 'Misappropriation without misrepresentation’ NLJ
154.7119(386).
33
Crucially, the common threads in a passing-off action remain: goodwill, misrepresentation and
damage must all be established, and it is therefore wrong to say that the law of passing off has been
extended in recent years to protect personality rights per se. David Rose and Emily Shaw
‘Misappropriation without misrepresentation’ NLJ 154.7119(386).
34
Mark Smulian ‘Image Rights and Copyright: We've Got Your Number’ 2004 LSG 101.7(26).
35
See for example the remarkable jingle in the opinion of Walton J. in Wombles v Wombles Skips
[1977] R.P.C. 99 at p.4: "Now everything these days has to be exploited commercially and the
Wombles are no exception ... "; and the notion of deciding a superfluous case in Day v Brownrigg
(1878) 19 Ch.D. at p.301.
36
Simon Smith Image, Persona and the Law (Sweet & Maxwell 2001).
32
6
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 Robertson39 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?
37
Jeremy Reed, Hogarth Chambers.
http://www.hogarthchambers.com/hogarth/Publications/Seminar%20notes/IP,%20Media%20and%20E
ntertainment/Image%20Rights.pdf.
38
See for example Douglas v Hello! Ltd (No. 5) [2003] E.M.L.R. 31, 642, 720, 721, and Mark
Thomson and Hugh Tomlinson QC ‘OK! What have you bought now?’ (2005) NLJ 155.7180(893).
39
[1991] FSR 62.
40
This encompassed issues such as marriage secrets: Ungoed-Thomas J. in Argyll v Argyll [1967] Ch.
302. (But that protection was narrow in scope).
41
Following the Spycatcher case, Attorney General / Guardian [1990] 1 AC 109 the courts still ask as
to whether information can be classified as secret per se. A duty not to publish such information can
then arise outside of contractual or other special relationship. In determining if such a duty arises, the
judges apply the test of Art. 10 (2) ECHR and seek to strike a balance between the freedom of the press
as protected by Art. 10 (1) ECHR and the right to private life, as protected by Art. 8 ECHR. On the
fine-tuning of that balance, the courts look to the Press Code. In that Code long lens photography is
prohibited. The cases show that the Courts, having established the basic framework, still struggle to
find the line in the grey area between the values. For example Campbell / Mirror Group Newspapers
[2003] EMLR 2, p. 39. Theakston v MGN Limited [2002] EMLR 22.
42
Hazel Carty. ‘Advertising, Publicity Rights and English Law’ Intellectual Property Quarterly 2004 at
p.212.
43
Indeed, Goodenough, "Retheorising Privacy and Publicity" [1997] I.P.Q. 37 (Goodenough suggests
that we should accept a general right in "identity").
7
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
‘Personality Database’ a project of the AHRC Research Centre for Studies in Intellectual Property
and Technology Law based in the School of Law at the University of Edinburgh. See:
http://www.law.ed.ac.uk/ahrb/personality/index.asp.
45
J. Thomas McCarthy, ‘The Rights of Publicity and Privacy’ (1992) § 5.8[B], at 5-66.
46
Madow, ‘Private Ownership of Public Image - Popular Culture and Publicity Rights’ (1993) 81
California Law Review 125 at 167.
47
First proposed by Warren and Brandeis, primarily as an antidote to journalistic intrusiveness. ( See
Samuel D. Warren & Louis D. Brandeis, ‘The Right to Privacy’, 4 HARV. L. REV. 193 (1890) at 195 196.)
48
For example in Roberson v. Rochester Folding Box Co., 64 N.E. 442, 447 (1902).
49
See O'Brien v. Pabst Sales Co., 124 F.2d 167, 169 (5th Cir. 1941), cert. denied, 315 U.S. 823 (1942),
where the Fifth Circuit held that the "all-American" college football player had "repeatedly posed for
photographs for use in publicizing himself and [his] team," and had therefore surrendered, in part at
least, his right of privacy.
50
In another respect as well, privacy theory proved a less than perfect vehicle for celebrities eager to
extract the maximum possible benefit from their publicity values. A right of privacy, as a purely
"personal" right, was neither descendible nor assignable. (Madow at 169).
51
ie. only if the law were to "propertize" these values, so that a celebrity could not only exclude others
from using them but also transfer them for value in return, would she be able to enjoy their full benefit.
– Madow at 170.
52
202 F.2d 866 (2d Cir.)
44
8
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 Nimmer54 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
Harry Kalven, Jr., ‘Privacy in Tort Law - Were Warren and Brandeis Wrong?’, 31 Law &
Contemporary Problems 326, 335-36 (1966) at 331.
54
Melville B. Nimmer, ‘The Right of Publicity’ (1954) 19 Law and Contemporary Problems 203. –
Nimmer urged acceptance of this new property right, to meet the "needs of Broadway and Hollywood".
55
Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562, 576 (1977) (identifying its rationale as
the creation of an "economic incentive" to investment in cultural endeavors).
56
See Restatement (Second) Of Torts §§ 652A - 652I. Under the Restatement's formulation, the
invasion of the Right of Publicity is most similar to the unauthorized appropriation of one's name or
likeness.
57
http://www.law.cornell.edu/wex/index.php/Publicity
53
9
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 Cornish58 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.
Cornish, W.R. & D. Llewelyn. ‘Intellectual property: patents, copyright, trade marks and allied
rights’ (5th ed., London: Sweet & Maxwell, 2003) p.618.
59
Michael Madow, ‘Private Ownership of Public Image: Popular Culture and Publicity Rights’,
C.L.R. 1993 at p. 133.
60
For example see Thorsten Lauterbach ‘US-style ‘personality’ right in the UK – en route from
Strasbourg?’ (20th BILETA Conference), and Jan Klink. ‘50 Years of Publicity Rights in The United
States and the Never Ending Hassle With Intellectual Property and Personality Rights in Europe’ 2003
Intellectual Property Quarterly, who argue that the use of separate property based publicity rights in the
US leads to more security, clarity and market stability.
58
10
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 Madow67 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
61
Margaret Davies, Ngaire Naffine, Are Persons Property? (Ashgate 2001) at p.135.
quoting Thomas Carlyle, from A New Dictionary of Quotations on Historical Principles From
Ancient and Modern Sources 384 (H.L. Mencken ed., 1942).
63
Take for example the household names Major Charles Ingram, whose sole claim to fame was
cheating on ‘Who Wants to be a Millionaire’, and Rebecca Loos, the PR assistant who shot to stardom
as a consequence of an alleged affair with the infamous David Beckham. (incidentally, she has made
several television appearances, conducted various magazine interviews, and has been offered a six
figure sum from a modelling company subsequent to the incident with Beckham).
64
http://www.jadegoodyonline.com/
65
Compare this with Chantelle – another blonde who has been ironically made ‘famous for not being
famous’ in the latest celebrity Big Brother.
66
http://en.wikipedia.org/wiki/Jade_Goody
67
Madow, ‘Private Ownership of Public Image: Popular Culture and Publicity Rights’, CLR, 1993
at 181.
68
Michael Madow, Private Ownership of Public Image: Popular Culture and Publicity Rights, C.L.R.
1993 at 137.
69
http://www.tomcruisenow.com/tom_cruise_salary.php
70
http://www.mercurynews.com/mld/mercurynews/news/breaking_news/14002962.htm
62
11
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 Shaw76 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 Davis78 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
71
(averaging $1 million per episode)
http://www.guinnessworldrecords.com/content_pages/record.asp?recordid=47798
72
http://www.hollywood.com/news/detail/id/470001 (Ray Ramano is in stong contention, receiving a
staggering $1.8 million for everybody episode of loves Raymond).
73
(incidentally out of the $32 million earned by Beckham, only $17 of this was from his salary).
http://econ.lse.ac.uk/staff/spischke/ec317/Handout9.pdf
74
Memphis Dev. Found. v Factors Etc. Inc. 616 F.2d 956, 960 (6th Cir.)
75
Elvis Presley Trademarks [1999] RPC 567.
76
(who was in opposition to the registration of the Elvis Presley trade marks)
77
The court subsequently expressed reservations about extending a right of publicity to a celebrity’s
estate in part because of the level of public and media participation in the creation of the celebrity. John Frow ‘Elvis's Fame: The Commodity Form and The Form of the Person’ Cardozo Studies in Law
and Literature , 7:2 (1995) at 156-157.
78
Jennifer Davis ‘The King is Dead: Long Live the King’ [2000] Cambridge Law Journal 33, at 36.
79
It may also be argued that it was Presley, his publicists, and his producers who ‘created’ Elvis-theimage: the public sphere does little but provide the common cultural material from which the image is
fashioned, and the demand through which the constructed image becomes a celebrity and therefore
valuable.
80
Comedy III Productions Inc v New Line Cinema (2000) 53 U.S.P.Q. 2d 1858, Calif Sup Ct, the Three
Stooges case.
81
Hazel Carty. ‘Advertising, Publicity Rights and English Law’ Intellectual Property Quarterly 2004 at
252.
12
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?
It has been argued that both cultural development and free speech are also at risk by the acceptance of a
personality right.88 In recent decades, various writers have observed that the law has moved more and
more of our culture’s basic semiotic and symbolic resources out of the public domain and into private
hands, 89 and that the same centralising process has been at work in the right of publicity arena.
In his article, Madow explains that the judicial and academic rhetoric on publicity rights makes
reference to “economic incentives,” “natural rights,” and “unjust enrichment,” the subtext, however,
being control over the production and circulation of meaning in our society. 90 David Wall illustrates
82
Margaret Davies, Ngaire Naffine, Are Persons Property? (Ashgate 2001)
at p.133.
83
See Edward Samuels, ‘The Public Domain in Copyright Law’, 41 Journal of the Copyright Society
137 (1993) at p.165 ; and Robert A. Baron, ‘Reconstructing the Public Domain’, 2002.
84
See Drahos ‘A Philosphy of Intellectual Property’, 54-55.
85
The English intellectual property law was strongly influenced by lobbying from commercial
interests. See Drahos ‘A Philosophy of Intellectual Property’, 22 – 32.
86
Sherman and Bently ‘The Making of Intellectual Property Law’.
87
Attempts to control the image of the Princess of Wales after her death raise the question of whether it
is in fact either possible or desirable to ‘own’ historical images.
88
See for example, Madow, ‘Private Ownership of Public Image: Popular Culture and Publicity
Rights’, CLR, 1993 at p.138, Gaines, ‘Contested Cultures: The Image, The Voice and the Law’ (1991);
Lange, ‘Recognizing the Public Domain’ (1981) 44 Law and Contemporary Problems 147 and Felcher
and Rubin, ‘Privacy, Publicity and the Portrayal of Real People by the Media’ (1979) 88 Yale Law
Journal 1577.
89
For example, David Lange, ‘Recognising the Public Domain’, 44 Law and Contemporary Problems
(1981) at 171 (where he expressed the concern that contemporary intellectual property law is choking
off the access to the ‘public domain’; and Jane M Gaines, ‘Contested Culture: The Image, The Voice
and the Law’ (1991) at 232-239 (arguing that current intellectual property law may be curtailing
popular cultural production).
90
Madow, ‘Private Ownership of Public Image: Popular Culture and Publicity Rights’, CLR, 1993 at
142.
13
this point in relation to the recreation of Elvis Presley after his death, where he asserts that intellectual
property regimes operate at some level to impose restrictions on cultural production. 91
Is it not true that free speech is threatened when the celebrity is enabled to impose his "preferred
meaning,"92 because of his publicity right? By allowing personality rights in the UK, we would in
effect be preventing alternative perceptions, and thus prohibiting interpretations which could be used
for powerful social criticism. 93 Some warn that “the increasing privatisation of the celebrity ... stifles
cultural debate, deliberation and exchange of ideas”.94 Professor Sam Ricketson concurs with this
stance, and notes that “public figures and images ... already command high respect and influence in our
society: comprehensive protection for such things may, therefore, represent too great an imposition for
a free market and a community committed to free speech to bear.” 95
A spate of recent articles in America has highlighted the concern over the ever-widening scope of their
publicity right. The District Court in Cardtoons LC v Major League Baseball Players Association,96 in
accepting a parody defence for the publicity right, noted that "when the law gives a celebrity a right of
publicity ... it gives her ... power, ultimately, to limit the expressive and communicative opportunities
of the rest of us".
Publicity rights, in other words, move us even further away from what John Fiske has called a
"semiotic democracy" 97 - a society in which all persons are free and able to participate actively, if not
equally, in the generation and circulation of meanings and values.
Overall, it is hard to disagree with Madow that “the proponents of publicity rights still have work to do
to persuade us why these images should not be treated as part of our cultural commons, freely available
for use in the creation of new cultural meanings and social identities as well as new economic
values.”98
David Wall ‘Reconstructing the Soul of Elvis: The Social Development and Legal Maintenance of
Elvis Presley as Intellectual Property’ (1996) 24 International Journal of the Sociology of Law 117.
92
See also Stuart Hall, ed., ‘Culture, Media, Language, Encoding/Decoding’ (1980), p.128.
93
Hazel Carty. ‘Advertising, Publicity Rights and English Law’ Intellectual Property Quarterly 2004 at
252.
94
Sen, ‘Fluency of the Flesh: Perils of An Expanding Right of Publicity’ (1995) 59 Albany Law
Review 739 at 742-743.
95
S Ricketson ‘Character Merchandising in Australia: Its Benefits and Burdens’ (1990) 1 Intellectual
Property Journal 191.
96
868 F. Supp 1266 (N.D. Okla, 1994).
97
John Fiske, ‘Television Culture’ (London: Methuen, 1987)at 236, 239.
98
Madow, ‘Private Ownership of Public Image: Popular Culture and Publicity Rights’, CLR, 1993 at
239.
91
14
1. Labour Justification
The labor theory is the basis most frequently and confidently advanced by courts and commentators,
and as far back as 1954, Nimmer contended that a person who has “long and laboriously nurtured the
fruit of publicity values,” who has expended “time, effort, skill, and even money” in their creation, is
presumptively entitled to enjoy them himself. 99
Professor Thomas McCarthy sees the right of personality as “a ‘common-sense’, self-evident right
needing little intellectual rationalisation to justify its existence.”100 At the heart of this justification is
John Locke's labour theory of property. According to Locke, 101 it is natural self-ownership which
justifies property:
“because we own our labour, when we mix it with the resources of the external world, we effectively
appropriate those resources.” The person is seen to have a justifiable interest in the products of their
mental or physical labour102 “which brought the celebrity entity into being.”
A labor-based moral argument for personality rights presupposes that commercially marketable fame is
‘no mere gift of the gods’.103 But for any credibility to be afforded to this contention, a commercially
marketable public image or persona must be attributable to any individual labour expended by that
particular celebrity.
Madow
104
explains that judicial opinions generally treat commercially valuable fame as a crown of
individual achievement, and that time and again, right-of-publicity plaintiffs are described by the courts
as carefully “cultivating” their talents, slowly “building” their images, judiciously and patiently
“nurturing” their publicity values, and working long and hard to make themselves famous, popular,
respected, beloved.105
Closer examination reveals various flaws with this line of argument. Can we really define the persona
as a product of labour, or is there more to it than that?106
Melville B. Nimmer, ‘The Right of Publicity’, 19 LAW & CONTEMP. PROBS. 203, 216 (1954) at
216.
100
J.Thomas McCarthy, ‘The Rights of Publicity and Privacy’ (1992), § 1.1(b)(2), at 1-5.
101
John Locke ‘Two Treatises of Governmen’t, Peter Laslett (ed) 2nd ed (Cambridge University Press,
1967, first published 1960) ‘Second Treatise’, ch V, ss 27-28.
102
See for instance, the famous case of Millar v Taylor (1969) 98 English Reports 229.
103
Madow, ‘Private Ownership of Public Image: Popular Culture and Publicity Rights’, CLR, 1993 at
182.
104
Ibid.
105
Uhlaender v. Henricksen, 316 F. Supp. 1277, 1282 (D. Minn. 1970) the federal district court opined
that "A celebrity must be considered to have invested his years of practice and competition in a public
personality which eventually may reach marketable status. That identity, embodied in his name,
likeness, statistics, and other personal characteristics, is the fruit of his labors and is a type of property."
106
In fact it could even be seen that a persona is solely attributable to our genetic characteristics which
are just there as part of our physical self.
99
15
Justin Hughes107 suggests that in reality, persona is not normally a product of labour: “While some
politicians and rock stars may work on their public images, the world is full of famous athletes, heroes,
and actors who do not labour to create their public images.”
Could perhaps the persona then be viewed as a co-operative venture, produced by social demands, our
own choices and labour, and our pre-given characteristics? Richard Dyer 108 illustrates that while our
genetic structure, which is beyond our control, may indeed provide the ‘raw material’ for our
appearance, (and while we do have a fair degree of control over how we present ourselves), the actual
labour of constructing the image is not necessarily that of the image-bearer alone.109 Perhaps most
importantly of all, the commercial value of any persona is a function of the notoriety of the image
product.110
According to British semiotician Judith Williamson, 111 a star persona can enhance the marketability of
the commodities with which it is associated only if it already means something to the rest of us.
Williamson contends that marketing companies are able to utilize what celebrities ‘mean’ to the public
in order to establish a desired meaning for its’ product. 112
Williamson in effect illustrates the fact that in many cultures, the UK included, celebrity images are
used to create and communicate meaning and identity, and it is only due to the ability of these images
to convey meaning that they are able to enhance the marketability of the commodities with which they
are associated. 113 Only when the media and the public take notice and attach significance to a personal
image can it enter fully into the marketplace. 114 Although the labour involved in creating a persona may
be reducible, in part, to the labour of the particular celebrity (or to labour contracted by the celebrity),
Hughes ‘The Philosophy of Intellectual Property’, 340, n218.
http://cyber.law.harvard.edu/IPCoop/88hugh2.html
108
Please refer to Richard Dyer ‘Heavenly Bodies: Film Stars and Society’ (Basingstoke and London:
Macmillan, 1986), 5-6.
109
Not only is the personal image the product of a multitude of individual labourers, it is also a
response to social norms, expectations, codes and stereotypes. See Catherine Williamson ‘Swimming
Pools, Movie Stars: The Celebrity Body in the Post-War Marketplace’ (1996).
110
Margaret Davies, Ngaire Naffine, Are Persons Property? (Ashgate 2001) at p.138.
111
Judith Williamson, ‘Decoding Advertisments: Ideology and Meaning in Advertising’ 25-26 (1984).
112
i.e. it is only because celebrities have an “image”, and a significance in one sign system, that they
can be used to create a new system of significance relating to the companies’ products.
113
‘Their "associative" or "publicity" value derives from their semiotic power.’ Madow at 143 - Paul
Willis asserts (in Paul Willis et al., Common Culture: Symbolic Work at Play in the Everyday Cultures
of the Young, (OUP, Milton Keynes, 1990), at 1) that celebrity images are among the basic semiotic
and symbolic raw materials out of which individuals and groups "establish their presence, identity and
meaning."
114
Only that audience out there makes a star. It's up to them. You can't do anything about it. . . . Stars
would all be Louis B. Mayer's cousins if you could make 'em up. (Jack Nicholson, quote taken from
from Jib Fowles, Starstruck: Celebrity Performers and the American Public 169 (Smithsonian Institute
Press, 1992) at 84.
107
16
the ‘celebrity’ status, and hence the greater part of the commercial value of a persona, is attributable to
the public domain.115
Thus it can be understood that fame is a "relational"116 phenomenon, something that is conferred by
others.117 The media has a "structured need" and "relentless hunger" for celebrities: it needs them, and
produces them, in order to carry out its own institutional purposes. 118
A celebrity, in short, does not construct his own public image. He is not the sole and sovereign "author"
of what he means for others.119
Consequently, contrary to the assertion of Professor McCarthy, a celebrity that cannot say he created
his public image, cannot therefore lay a convincing moral claim to the exclusive ownership or control
of the economic values that attach to it.120
2. The Prevention of Unjust Enrichment
In judicial opinion and law reviews, right-of-publicity defendants are often described as “poachers,”
“parasites,” “pirates,” or “free riders.”121 They are denounced for “misappropriating” values created by
others, and for “reaping” where others have “sown.” 122 Of course, the notion of misappropriation also
entails the prevention of unjust enrichment. 123
But one thing that the rationale of unjust enrichment does not allow for is the fact that once celebrity
status is “achieved”, does not “common sense” demand that the persona should not be used by others
115
Of course, the fact that value derives from public perception does not, in the Western way of
thinking, defeat or modify the argument that the celebrity has created and therefore ‘owns’ her or his
image – the value of a painting may be attributable as much as to the notoriety of the artist as it is to
any intrinsic merit but that does not alter the perception that the artist is the author, creator and
therefore owner of the work.
116
John Rodden, ‘The Politics of Literary Reputation: The Making and Claiming of “St. George”
Orwell’ 7 (1989) at 51.
117
A person can, within the limits of his natural talents, make himself strong or swift or learned. But he
cannot, in this same sense, make himself famous, any more than he can make himself loved. – Madow
at 188.
118
Todd Gitlin, The Whole World is Watching: Mass Media in the Making and Unmaking of the Left
(California Press, 1980) at 146 - 154.
119
The creative (and autonomous) role of the media and the audience in the meaning-making process
cannot be excised.
120
See Samuel K. Murumba, Commercial Exploitation of Personality 72 (Law Book Co 1986) at 132.
121
Madow, ‘Private Ownership of Public Image: Popular Culture and Publicity Rights’, CLR, 1993 at
196.
122
See Callmann, ‘He Who Reaps Where He Has Not Sown: Unjust Enrichment in the Law of
Unfair Competition’ (1942) 55 Harvard Law Review 595.
123
American case law has accepted this, and in the case of Bi-Rite Enterprises Inc v Button Master
(555 F.Supp 1188, 1198 (S.D.N.Y 1983)), it was held that the right "prevents unjust enrichment by
providing a remedy against exploitation of the goodwill and reputation that a person develops in his
name or likeness through the investment of time, effort and money". Similarly, in Onassis v Christian
Dior 472 NYS (2d) 254 (SC 1984) the court declared it would not allow a "free ride".
17
as inspiration for developing ideas?124 Take for example Brandeis, who in his dissenting judgment in
the INS case125 felt that certain valuable intangibles should be “free as the air to common use.”126
Brandeis was not alone in his opinion, in fact, there are various commentators and judges who do not
believe that the celebrity persona “belongs” to the celebrity.127 Madow highlights a few examples that
can easily show the extent to which the law tolerates, (and he believes even smiles on), commercial
“free riding.”128 He quotes one commentator who contends that a different rule “would have deprived
the public of any alternatives in automobiles, ice cream cones, rubber tires and skyscrapers.”129
Hazel Carty draws parallels with this line of thinking, and contends that to see the successful image in
entertainment or the media as a “stand alone” phenomenon in many ways misses the point of the
celebrity as an icon.130 Entertainment or media celebrities are on the whole themselves derivatives, 131
and it is fairly safe to bet that a great deal of celebrities have done some “borrowing” themselves.
Cultural production is always (and necessarily) a matter of reworking, recombining, and redeploying
already-existing symbolic forms, sounds, narratives, and images. 132
As Spence133 rightfully points out, “[the Crocodile Dundee character was effective because] he stood
on the shoulders of a whole tradition of bushman stereotypes that had been developing in Australian
culture since at least the 1890's.”134
Viewed against the background of these developments in cultural theory and practice, the “moral” case
for the right of publicity seems quite peculiar. Madow makes a very valid point when he asserts the
124
or simply to provide fun i.e. the transformative use of celebrity. Take for example the advertising
campaign run by Schweppes in the 1990s, using lookalikes of celebrities.
125
INS v Lopez-Mendoza, 468 US 1032 (1984).
126
Here he underlined the fact that a celebrity (as celebrity, rather than as private person) becomes part
of "the public domain" to be used for developing ideas.
127
See James A. Rahl, ‘The Right to ‘Appropriate’ Trade Values’, 23 OHIO ST. L.J. 56 (1962).
128
Aside from passing off, there is generally no cause of action for imitating or copying a successful
product, no matter how seriously sales are diverted. Madow at 196.
129
see James A. Rahl, ‘The Right to ‘Appropriate’ Trade Values’, 23 OHIO ST. L.J. 56 (1962) at 68.
Similarly, once a business idea or method has been published or put into practice, competitors are free
to adopt it, "however novel, concrete, and valuable it may be."
130
Hazel Carty. ‘Advertising, Publicity Rights and English Law’ Intellectual Property Quarterly 2004 at
249.
131
the obvious example in recent years being Madonna and her homage to Marilyn Monroe.
132
Madow, ‘Private Ownership of Public Image: Popular Culture and Publicity Rights’, CLR, 1993 at
196. Madow also questions that once we trace out the influences and identify the borrowings of which
even the performer or artist may be unaware, how much is there left for him to claim as his own
"original" contribution?
133
Spence, ‘Passing off and Misappropriation of Valuable Intangibles’ (1996) 112 L.Q.R. 472 at 479.
134
He continues: "His value for product endorsement was at least in part 'created' by the many
thousands of people who saw and enjoyed the film ... in all these circumstances it is clearly difficult to
determine who 'created' the product endorsement value of the Dundee character".
18
fact that stars seemingly draw “freely and shamelessly on our culture's image bank” and yet try to “halt
the free circulation of signs and meanings at just the point that suits them.” 135
Celebrities are seeking to enforce against others a moral norm that “their own self-consciously
appropriationist practices openly repudiate”. 136 Surely we do not need to bring such contradictory
practices to our shores.
Economic Arguments
The more modern approach in Anglo-American literature for the justification of personality rights is
generally to argue for their economic benefits, which it is contended, provide needed incentives to
stimulate creative effort and achievement.
Shipley137 argues that by protecting the right to publicity, the law “provides incentive for performers to
make economic investments required to produce performances appealing to the public.”138
The theory is that by affording property rights the law provides an incentive to creative endeavour.139
But what evidence is there for such incentive effect? Are we confident that a publicity right would
result in increased “innovation” or economic activity? 140 Are property rights really necessary to
motivate success?
Many question whether publicity or image rights are seen by all concerned as purely additional
benefits.141 In fact, even in the UK without a right of personality, celebrities still derive considerable
income from their publicity values, and even if such a right never comes into fruition, celebrities would
not be prevented from benefiting from of all the substantial income they currently earn through
endorsements and merchandising.
Another economic argument is that the publicity right leads to allocative efficiency. “Personality” or
celebrity status is to be seen as a scarce resource, with over-use leading to diminished usefulness, and
that by bestowing property rights there will be a more efficient allocation of resources.
Madow, ‘Private Ownership of Public Image-Popular Culture and Publicity Rights’ (1993) 81
California Law Review 125 at 189.
136
Madow, ‘Private Ownership of Public Image: Popular Culture and Publicity Rights’, CLR, 1993 at
199.
137
David E. Shipley, ‘Publicity Never Dies: It Just Fades Away’ (1981) 66 Cornell Law Review 673 at
681.
138
Felcher and Rubin assert that the social policy underlying the right of publicity "is encouragement
of individual enterprise and creativity by allowing people to profit from their own efforts." – ‘The
Descendibility of the Right of Publicity: is there Commercial Life after Death?’ (1980) 89 Yale Law
Journal 1125 at 1128.
139
This justification can be seen in the only Supreme Court decision on publicity rights, Zacchini v
Scripps-Howard Broadcasting 433 U.S. 562 (1977), where is was noted that the incentive rationale was
on a par with copyright rationale.
140
Hazel Carty. ‘Advertising, Publicity Rights and English Law’ Intellectual Property Quarterly 2004 at
251.
141
i.e. a ‘perk of the job’ - the real incentive being the original desire to excel in sport, politics or
entertainment generally.
135
19
Posner believes that by allowing advertisers to use any image at will, the effect would be to “reduce its
advertising value, perhaps to zero.”142 But as Madow points out here we are not dealing with a nonrenewable natural resource like land. 143 Nor, however annoying it is for the individual celebrity
concerned, is the cost of free use significant, given, as Fraser points out, “a fairly plentiful supply of
alternative resources exists.”144
Proponents of an economic incentive argument rarely consider the distributional consequences of
recognizing a right of publicity. One such implication is that the right of publicity raises the price of
celebrity merchandise and of advertising in general, thereby shifting wealth away from the great mass
of consumers to a very small group of persons who are already very handsomely compensated.145
Secondly, the right of publicity widens the already immense income gap between "superstars" and
others in the entertainment, sports, and related fields, 146 and thirdly, the legal protection of publicity
rights probably works to the systematic advantage of large over small advertisers, thereby increasing
corporate concentration in the general economy. 147
Bearing all this in mind, the personality rights ‘regime,’ should it be implemented, looks rather bleak.
Consumer Protection Arguments
Finally, some courts and writers argue for the right of publicity in terms of consumer protection. 148 The
most common version of this argument focuses on the need to protect consumers from deceptive trade
practices, especially false representations of endorsement or sponsorship. On this view, the right of
publicity, like the law of trademark, would promote the flow of useful information about goods and
services to consumers and protect them from deception and related marketplace harms. 149
Richard A. Posner, ‘The Right of Privacy’, 12 GA. L. REV. 393, 411 (1978).
224. "there will always be a certain supply of existing and newly-created personalities to exploit."
144
Frazer, ‘Appropriation of Personality - a New Tort’ (1983) 99 L.Q.R. 281 at 303.
145
Madow, ‘Private Ownership of Public Image: Popular Culture and Publicity Rights’, CLR, 1993 at
at 218.
146
See Emanuel Levy, ‘The Democratic Elite: America's Movie Stars’, 12 QUALITATIVE SOC. 29,
31 (1989) (discussing the grossly uneven distribution of wealth among screen actors); Sherwin Rosen,
‘The Economics of Superstars’, 71 AM. ECON. REV. 845, 845-46 (1981).
147
Madow, ‘Private Ownership of Public Image: Popular Culture and Publicity Rights’, CLR, 1993 at
at 218. Madow believes that a purely economic analysis has nothing to offer when it comes to
evaluating the central place that celebrity has come to occupy in our culture. Consequently, it cannot
help us decide whether to embrace this development warmly or resist it steadfastly
148
Rather than create rights against misappropriation, this justification focuses on the prevention of
harm where there is a clear public interest also served.
149
Another version emphasizes the undesirability of permitting advertisers of dangerous or shoddy
products to manipulate consumers by exploiting powerful celebrity images.
142
143
20
According to Professor Treece,
150
the right of publicity, by affording celebrities a private cause of
action for unauthorized advertising use of their names and likenesses, operates to protect consumers
from being “misled about the willingness of a celebrity to associate himself with a product or
service.”151
At a first glance this ‘Consumer Protection’ rationale appears to be manifestly worthwhile, combining
protection of the celebrity's success with protection of the consumer. It also appears to reflect the
traditional rationale for trade mark law and the tort of passing off. 152 However, this rationale does not
justify a new publicity right, rather, I believe it cautions an adherence to the traditional reluctance to
expand rights in this area.153 Indeed, there are additional critical problems with the standard consumer
deception arguments. For one, the right of publicity enables celebrities to prevent commercial uses of
their personas that are not in any way misleading or fraudulent, 154 and as Professor Shiffrin notes, the
right of publicity gives a public figure power “to control the dissemination of truth for his or her own
profit.”155
In any event, Madow contends that to the extent that the right of publicity does prevent consumer
deception in advertising, it is largely redundant, 156 as in circumstances presenting a realistic danger that
consumers will be deceived or confused about a celebrity's endorsement of, or association with an
advertised product or service, the celebrity can obtain appropriate relief under the Lanham Act, (or
passing off in the UK). In other words, if the sole concern is that consumers not be deceived or
confused about the willingness of a celebrity to endorse or associate himself with an advertised product
or service, then legal mechanisms better tailored to that purpose already exist.
James M. Treece, ‘Commercial Exploitation of Names, Likenesses, and Personal Histories’, 51 TEX.
L. REV. 637, 641 (1973); at 647
151
However, most consumers probably “think little and care even less” about licensing arrangements
between celebrities and advertisers. (Madow at p.229) In Pacific Dunlop Ltd. v. Hogan, 87 A.L.R. 14,
45 (Fed. Ct. of Austl., Gen. Div. 1989), it was said that an association of a celebrity image with a
product "proceeds more subtly to foster favourable inclination towards it, a good feeling about it, an
emotional attachment to it."
152
and indeed the thrust of the demand for publicity or image rights owes far more to an analogy with
trade marks than with copyright or patents -.Hazel Carty ‘Advertising, Publicity Rights and English
Law’ Intellectual Property Quarterly 2004 at 252.
153
Harm rather than theft is at the heart of this rationale.
154
For example Carson v. Here's Johnny Portable Toilets, Inc., 698 F.2d 831, 837 (6th Cir. 1983),
where the defendant marketed portable toilets under the corporate name "Here's Johnny" but did not
mislead consumers into thinking that Carson was in any way connected with the product. This case
illustrates that the right of publicity is neither directed at, nor confined to, the prevention of consumer
deception. The focus of the right of publicity is not the interest of the consuming public in freedom
from deception but rather the celebrity's interest in controlling and benefiting from the economic value
of his identity.
155
Steven Shiffrin, ‘The First Amendment and Economic Regulation: Away from a General Theory of
the First Amendment’, 78 NW. U. L. REV. 1212, (1983) 1258 n.275.
156
Madow, ‘Private Ownership of Public Image: Popular Culture and Publicity Rights’, CLR, 1993 at
233.
150
21
Conclusions.
As we have seen, there are a great many arguments and opinions surrounding personality rights. Many
believe that there is no coherent approach to protection, and find the situation entirely confusing.
That the debate is necessary is beyond doubt. With cases featuring celebrities, footballers, and
international film stars beginning to pour into our courts, there is a distinct indication that we are
dealing with a phenomenon that is only going to increase. Despite the traditional reluctance of the
English courts to create a publicity right or anything like it, there is every reason to suspect (and
perhaps fear) a change in this approach. Many believe that if we have a situation where some countries’
rights are stronger than others, forum shopping may be inevitable. The ‘personality rights proponents’
argue that it is desirable to consider the opportunity to harmonise the law in this area throughout the
member states at EU level, in order to create a level playing field, and to offer legal certainty to both
those who want to market their publicity and those who hire celebrities for those purposes.
If nothing is done, it is certainly possible that we may witness another instance of ‘buck-passing’
between the courts and the government, comparable to the current debate surrounding the general law
of privacy here in the UK.
Nevertheless, as has been demonstrated, the affirmative case for publicity rights is at best an “uneasy
one.” Individually and cumulatively, the standard justifications appear not to be nearly as compelling
as is generally understood. Should we be discussing merely the allocation of celebrity wealth, the
above contentions would not be all that worrying; however, far more is at stake than is commonly
supposed. It is quite apparent that there are far greater issues to contend with than simply deciding on
policy grounds, or according to a cost-benefit analysis, whether a personality right should be granted,
or indeed whether a persona ought to be capable of being owned.
Following in the wake of this explosion of the celebrity phenomenon is the commercial practice based
on the assumption (or threat) that publicity rights already exist. Agents and lawyers are keen to expand
the profitability of their clients into all possible areas by preventing unauthorised use. 157 By claiming
valuable assets that they will seek to protect against misappropriation, the industry is in effect
preparing the ground for actual rights.158
As Jaffey notes, ‘commercial practice seems to presuppose merchandising rights’, (‘Merchandising
and the Law of Trade Marks’ (1998) 3 I.P.Q. 240), while Shelley Lane (The Problems of Personality
Merchandising in English Law--the King, the Princess and the Penguins, 1998 Year Book of Media
and Entertainment Law 28, p.30) contends that the practice of licensing use of the celebrity persona is
part of a process to educate the public that celebrities have publicity rights.
158
This perception is enhanced by the experience outside England of those concerned with exploiting
celebrity culture.
157
22
International experience is likely to impact on the English reaction to the celebrity industry's concerns,
given advertising is the subject of international distribution and is indeed borderless on the internet.159
It is against this background that recent developments in English law have to be assessed. These
developments, particularly in the tort of passing off but also in the action for breach of confidence, will
perhaps encourage continued pressure for the protection of “publicity rights” in English law.
There is obviously work to be done on both sides of the fence, and at present a definitive argument for
outright denial of the right of personality cannot be made on the current state of affairs. 160 However, I
feel that it must now fall to the proponents of publicity rights to explain why the risk is worth taking.
Appeals to “McCarthian” “common sense” will surely not suffice here. As Lane notes:
“We can be sure that the struggle to transform celebrity status into intellectual property will
continue.”161
Boyd, ‘Does English Law Recognise the Concept of an Image or Personality Right?’ (2002) 13
Ent.L.R. 1.
160
For one thing, we lack adequate information about the extent to which publicity rights actually stifle
or deter popular cultural practice.
161
The Problems of Personality Merchandising in English Law--the King, the Princess and the
Penguins, 1998 Year Book of Media and Entertainment Law 28, p.30.
159
23
Bibliography
I.
1.
Books
Beverley-Smith, H. The Commercial Appropriation of Personality, Cambridge Uni. Press,
August 2002.
2.
Cornish, W.R. & D. Llewelyn. Intellectual property: patents, copyright, trade marks and
allied right, 5th ed., London: Sweet & Maxwell, 2003.
3.
Davies, Margaret and Naffine, Ngaire. Are Persons Property?, Ashgate Publishing Ltd, 2001.
4.
Dyer, Richard Heavenly Bodies: Film Stars and Society, Basingstoke and London: Macmillan,
1986.
5.
Fiske, John. ‘Television Culture’ (London: Methuen, 1987)
6.
Fowles, Jib, Starstruck: Celebrity Performers and the American Public, Smithsonian Institute
Press, 1992.
7.
Gitlin, Todd, The Whole World is Watching: Mass Media in the Making and Unmaking of the
Left, California Press, 1980.
8.
Lane, Shelley The Problems of Personality Merchandising in English Law--the King, the
Princess and the Penguins, 1998 Year Book of Media and Entertainment Law.
9.
Murumba, Samuel K., Commercial Exploitation of Personality 72, Law Book Co 1986.
10. Rojek, C. Celebrity , London, Reaktion Books, 2001.
11. Smith, Simon. Image, Persona and the Law, Sweet & Maxwell 2001.
12. Willis, Paul et al., Common Culture: Symbolic Work at Play in the Everyday Cultures of the
Young, OUP, Milton Keynes, 1990.
II.
1.
Articles
Adrian, A. “What a lovely bunch of coconuts! A comparison between Louisiana and the
United Kingdom with regards to the appropriation of personality.” Ent. L.R., 2004, 15(7),
212-220.
2.
Antingham, M. ‘Personality rights in the United Kingdom’ Trademark World, 2002, Issue
147, 40-42.
3.
Baron, Robert A. ‘Reconstructing the Public Domain’, 2002
4.
Black, D. “Memorabilia - the King and Queen of Hearts. The Golden Jubilee provides a good
moment to examine the English law of personality rights and related areas,” Trademark
World, 2002, Issue 148, 26-29.
5.
Boyd, ‘Does English Law Recognise the Concept of an Image or Personality Right?’ (2002)
13 Ent.L.R. 1.
6.
Boyd, S. & Jay, R. “Image Rights and the effect of the Data Protection Act 1998” Ent.L.R.
2004, 15(5), 159-162.
24
7.
Buchan, R. “Personality Rights: a brand new species?” J.L.S.S. 2004,
8.
Buchanan, C L “A comparative analysis of name and likeness rights in the United States and
England”, 18 Golden Gate U. L. Rev., 301 (1988).
9.
Burden-Cooper, Alan. ‘Image Rights - Having your cake and eating it?’ June 2002
10. Callmann, ‘He Who Reaps Where He Has Not Sown: Unjust Enrichment in the Law of Unfair
Competition’ (1942) 55 Harvard Law Review 595.
11. Catanzariti, T. “Swimmers, Surfers and Sue Smith – Personality Rights in Australia” Ent. L.R.
2002, 13(7), 135 – 141.
12. Carty, Hazel. ‘Advertising, Publicity Rights and English Law’ Intellectual Property Quarterly
2004.
13. Cohen, J C. “The problem with personality: Trademark lawyers are less than clear about their
role in protecting the rights of personalities” Trademark World, 2003, Issue 156, 40-42.
14. Coombes, S W & May, E “Getting ‘personal in the UK’” C.W. 2002, Vol. 119, 16-18.
15. Craig, C. “Zeta-Jones – so what’s the damage?” C.L.S.R. 2004, 2, 137-138
16. Davis, Jennifer. ‘The King is Dead: Long Live the King’ [2000] Cambridge Law Journal 33
17. Drahos ‘A Philosphy of Intellectual Property’
18. Farnsworth, D. “Does English Law Lack Personality” I.S.L.R. 2001, 3 Aug, 210 – 218.
19. Felcher and Rubin, ‘Privacy, Publicity and the Portrayal of Real People by the Media’ (1979)
88 Yale Law Journal 1577.
20. Felcher and Rubin‘The Descendibility of the Right of Publicity: is there Commercial Life after
Death?’ (1980) 89 Yale Law Journal 1125
21. Frazer, ‘Appropriation of Personality - a New Tort’ (1983) 99 L.Q.R. 281 at 303.
22. Frow, John. "Elvis's Fame: The Commodity Form and The Form of the Person." Cardozo
Studies in Law and Literature , 7:2 (1995). 131-171.
23. Gaines, ‘Contested Cultures: The Image, The Voice and the Law’ (1991);
24. Giaquinto, Martino. ‘Celebrity Branding’ (2004) IP & IT Law 9.5(3)
25. Goldberg, S. “The contest for a new law of privacy. A battle won, a war lost? Campbell v
MGN Ltd (2004) UKHL 22” Comms L., 2004, 4, 122-125.
26. Goodenough, Indeed. ‘Retheorising Privacy and Publicity’ [1997] I.P.Q. 37
27. Hall, Stuart. ed., ‘Culture, Media, Language, Encoding/Decoding’ (1980),
28. Jaffey ‘Merchandising and the Law of Trade Marks’ (1998) 3 I.P.Q. 240
29. Kalven, Harry Jr., ‘Privacy in Tort Law - Were Warren and Brandeis Wrong?’, 31 Law &
Contemporary Problems 326, 335-36 (1966) at 331.
30. Klink, Jan. ‘50 Years of Publicity Rights in The United States and the Never Ending Hassle
With Intellectual Property and Personality Rights in Europe’ 2003 Intellectual Property
Quarterly.
31. Kotler, J S T. “Merchandising celebrity: A user's guide to personality Rights,” Intellectual
Property Journal, 2003, Vol. 16, Part 1/3, 1-43.
32. Lange, ‘Recognizing the Public Domain’ (1981) 44 Law and Contemporary Problems 147
25
33. Lauterbach, Thorsten ‘US-style ‘personality’ right in the UK – en route from Strasbourg?’
(20th BILETA Conference).
34. Levy, Emanuel. ‘The Democratic Elite: America's Movie Stars’, 12 QUALITATIVE SOC. 29,
31 (1989)
35. Locke, John. ‘Two Treatises of Governmen’t, Peter Laslett (ed) 2nd ed (Cambridge University
Press, 1967, first published 1960) ‘Second Treatise’, ch V, ss 27-28.
36. Logeais and Schroeder ‘The French Right of Image: An Ambiguous Concept Protecting the
Human Persona’ (1998) 18 Loy. L.A. Ent.L.J. 511
37. Maclachlan, Amanda, ‘WIPO2 - the domain name consultation process’ (2001) Vol 151 No
6981.
38. Madow, Michael ‘Private Ownership of Public Image: Popular Culture and Publicity Rights’,
CLR, 1993.
39. Massey; Rohan & Tauber, Kathrin ‘Privacy And Personality, Politicians And Stars’ (2003) ELaw 1.2(5)
40. McCarthy, J. Thomas. ‘The Rights of Publicity and Privacy’ (1992)
41. Morgan, J. “Privacy in the House of Lords, again” L.Q.R., 2004, 120 (Oct.), 563-566.
42. Nimmer, Melville B. ‘The Right of Publicity’ (1954) 19 Law and Contemporary Problems 203
43. Porter, H. ‘Character Merchandising: Does English Law Recognise a Personality Right in
Name and Likeness’. Ent. L.R. 1999, 10(6), 180 – 183.
44. Posner, Richard A. ‘The Right of Privacy’, 12 GA. L. REV. 393, 411 (1978).
45. Rahl, James A. ‘The Right to ‘Appropriate’ Trade Values’, 23 OHIO ST. L.J. 56 (1962)
46. Ricketson, S. ‘Character Merchandising in Australia: Its Benefits and Burdens’ (1990) 1
Intellectual Property Journal 191.
47. Robinson, F. “How image conscious is English Law” Ent.L.R., 2004, 15(5), 151-156.
48. Rodden, John. ‘The Politics of Literary Reputation: The Making and Claiming of “St.
George” Orwell’ 7 (1989)
49. Rose, David and Shaw, Emily. 'Misappropriation without misrepresentation’ NLJ
154.7119(386).
50. Rosen, Sherwin. ‘The Economics of Superstars’, 71 AM. ECON. REV. 845, 845-46 (1981).
51. Samuels, Edward. ‘The Public Domain in Copyright Law’, 41 Journal of the Copyright
Society 137 (1993)
52. Scanlan, G. “Derivative Aspects of Character and Perceived Attributes in Persona as Forms
of Intellectual Property: Part 1” Ent. L. R. 2003, 14(8), 200-205.
53. Scanlan, G. “Personality, endorsement and everything: The modern law of passing off and the
myth of the personality right” 2003, E.I.P.R. 563.
54. Sen, ‘Fluency of the Flesh: Perils of An Expanding Right of Publicity’ (1995) 59 Albany Law
Review 739
55. Sherman and Bently ‘The Making of Intellectual Property Law’.
56. Shiffrin, Steven. ‘The First Amendment and Economic Regulation: Away from a General
Theory of the First Amendment’, 78 NW. U. L. REV. 1212, (1983)
26
57. Shipley, David E. ‘Publicity Never Dies: It Just Fades Away’ (1981) 66 Cornell Law Review
673
58. Skinner, L. “You’re a celebrity, madam. So do we have a right to share your privacy in a
public place?” Comms L., 2004, 4, 118-121.
59. Smith, S. “Image, Persona and the Law” Ent. L.R. 2002, 13(5), 113.
60. Smulian, Mark. ‘Image Rights and Copyright: We've Got Your Number’ 2004 LSG 101.7(26).
61. Spence, ‘Passing off and Misappropriation of Valuable Intangibles’ (1996) 112 L.Q.R. 472 at
479
62. Thomson, Mark and Tomlinson QC, Hugh. ‘OK! What have you bought now?’ (2005) NLJ
155.7180(893).
63. Treece, James M. ‘Commercial Exploitation of Names, Likenesses, and Personal Histories’,
51 TEX. L. REV. 637, 641 (1973)
64. Wall, David. ‘Reconstructing the Soul of Elvis: The Social Development and Legal
Maintenance of Elvis Presley as Intellectual Property’ (1996) 24 International Journal of the
Sociology of Law 117.
65. Warren, Samuel D. & Brandeis, Louis D., ‘The Right to Privacy’, 4 HARV. L. REV. 193
(1890)
66. Williamson, Catherine. ‘Swimming Pools, Movie Stars: The Celebrity Body in the Post-War
Marketplace’ (1996).
67. Williamson, Judith. ‘Decoding Advertisments: Ideology and Meaning in Advertising’ 25-26
(1984).
III.
Case List
1.
Argyll v Argyll [1967]
2.
Bi-Rite Enterprises Inc v Button Master (555 F.Supp 1188, 1198 (S.D.N.Y 1983)
3.
Campbell / Mirror Group Newspapers [2003] EMLR 2
4.
Cardtoons LC v Major League Baseball Players Association868 F. Supp 1266 (N.D. Okla,
1994).
5.
Carson v. Here's Johnny Portable Toilets, Inc., 698 F.2d 831, 837 (6th Cir. 1983),
6.
Clarke v Freeman (1843) 12 Jur. 149;
7.
Comedy III Productions Inc v New Line Cinema (2000) 53 U.S.P.Q. 2d 1858, Calif Sup Ct,
the Three Stooges case.
8.
Day v Brownrigg (1878) 19 Ch.D
9.
Douglas v Hello! Ltd (No. 5) [2003] E.M.L.R. 31, 642, 720, 721,
10. du Boulay v du Boulay (1869) L.R. 2 430 PC
11. Earl Cowley v Countess Cowley [1901] A.C. 450;
12. Elvis Presley Enterprises Inc. v Sid Shaw Elvisly Yours[1999] R.P.C. 567
13. Healan Laboratories, Inc. v Topps Chewing Gum, Inc. 202 F. 2d 866 (2d Cir. 1953)
27
14. Irvine v Talksport [2002] EMLR 32
15. INS v Lopez-Mendoza, 468 US 1032 (1984).
16. Kaye v Robertson [1991] FSR 62.
17. Lord Byron v Johnston (1816) 2. Mer. 29;
18. Lyngstad v Annabas [1977] F.S.R. 62
19. McCulloch v May (1948) 65 R.P.C. 58
20. Memphis Dev. Found. v Factors Etc. Inc. 616 F.2d 956, 960 (6th Cir.)
21. Millar v Taylor (1969) 98 English Reports 229.
22. O'Brien v. Pabst Sales Co., 124 F.2d 167, 169 (5th Cir. 1941), cert. denied, 315 U.S. 823
(1942)
23. Onassis v Christian Dior 472 NYS (2d) 254 (SC 1984)
24. Pacific Dunlop Ltd. v. Hogan, 87 A.L.R. 14, 45 (Fed. Ct. of Austl., Gen. Div. 1989),
25. Roberson v. Rochester Folding Box Co., 64 N.E. 442, 447 (1902).
26. Routh v Webster (1847) 10 Beav. 561).
27. Spycatcher case, Attorney General / Guardian [1990] 1 AC 109
28. Taverner Rutledge Ltd. v Trexapalm Ltd [1975] F.S.R. 479.
29. Theakston v MGN Limited [2002] EMLR 22.
30. Tolley v Fry[1931] A.C. 333.
31. Uhlaender v. Henricksen, 316 F. Supp. 1277, 1282 (D. Minn. 1970)
32. Wombles v Wombles Skips [1977] R.P.C. 99
33. Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562, 576 (1977)
IV.
Statute
1.
Article 8 European Convention on Human Rights
2.
Article 10 (1) European Convention on Human Rights
3.
Article 10 (2) European Convention on Human Rights
4.
Restatement (Second) Of Torts §§ 652A - 652I
V.
Websites
1. http://www.law.ed.ac.uk/ahrb/personality/index.asp.
‘Personality Database’ a project of the AHRC Research Centre for Studies in Intellectual
Property and Technology Law based in the School of Law at the University of Edinburgh.
2. http://www.hogarthchambers.com/hogarth/Publications/Seminar%20notes/IP,%20Media%20a
nd%20Entertainment/Image%20Rights.pdf.
3. http://www.publaw.com/rightpriv.html
28
4. http://creativecommons.org/about/legal
5. http://www.law.cornell.edu/wex/index.php/Publicity
6. http://www.tomcruisenow.com/tom_cruise_salary.php
7. http://www.mercurynews.com/mld/mercurynews/news/breaking_news/14002962.htm
8. http://www.guinnessworldrecords.com/content_pages/record.asp?recordid=47798
9. http://www.managingip.com/default.asp?page=1100&subtype=notloggedon&Status=8
10. http://pi.gn.apc.org/survey/phr2002/
11. http://www.hollywood.com/news/detail/id/470001
12. http://econ.lse.ac.uk/staff/spischke/ec317/Handout9.pdf
13. http://cyber.law.harvard.edu/IPCoop/88hugh2.html
Hughes ‘The Philosophy of Intellectual Property’, 340, n218.
29