EXPLOITATION ANDPROTECTION OF“IMAGE”Presented by: Jonathan Coad
“IMAGE” OR “PERSONALITY RIGHTS”• Increasing importance: visualcontent is now increasinglyimportant to the music industry.• Range of products and revenuestreams: e.g. videos,endorsement of products orsponsorship, merchandise,exclusive magazine deals, etc.“Beckham” is a prime exampleof an individual’s ‘image’becoming a valuable brand.
PROTECTION OF “IMAGE”• UK has taken significant steps recently to protectthe privacy of an individual, developing andextending various causes of action to defendagainst the unauthorised use of photographs or filmof individuals.• Causes of action:The law of ‘privacy’(HRA / ECHR)The tort of breach of confidence• The Advertising codes also provide protection: e.g.the CAP Code recommends that a person’spermission is sought prior to featuring, caricaturingor referring to them in an advertisement.
• Consequence of thesedevelopments has been theemergence of ‘imagerights’: arguably there is aconnection between theprotection of privacy andthe development ofcommercial image rights.• The publicising andcommercialisation of one’simage is arguably anaspect of their privacyPROTECTION OF “IMAGE”
Douglas v Hello • This is the only UK case that has testedthe boundaries of privacy in the context ofit protecting the commercialisation of one’simage. The ‘Douglases’: Had granted OK! magazine exclusiverights to publish photographs of theirwedding. Hello! magazine publishedunauthorised photographs of thewedding. The Douglas’s and OK! claimed forbreach of confidence (on the basis thatthe photographs were commercial ortrade secrets) and/or their right toprivacy.
Douglas v Hello • The High Court upheld the claims based on breachof commercial confidence or a hybridcommercial/private confidence (in the weddingphotographs which were a valuable trade asset).• Held:OK! entitled to damages for lost sales (due tobreach of commercial confidence); andDouglas’s entitled to damages for distress andthe cost of dealing with Hello!, but the courtrefused to base the level of damages on a‘nominal license’ fee.
Douglas v Hello • On appeal, the Court of Appeal held:Due to the special nature of photos of private occasions,the wedding photos could be protected by the law ofconfidence – even though the Douglas’s had enteredinto a publishing contract with OK! (thereby making theimages public).Douglas’s could claim damages for interference with thecommercial exploitation of their wedding if they couldshow that their private information qualifies forprotection as a trade secret.Court expressly noted that this case had nothing to dowith their privacy, rather it concerned their commercialinterests (in making money from their private life!).
Douglas v Hello • In relation to OK!, the Court of Appeal held thatthere is a separate right of publicity (distinct from theDouglase’s right to privacy). However, the courtformulated the right in rather limited terms.• The Court of Appeal position relating to theDouglase’s remains good law. However, OK!appealed the Court of Appeal decision in the Houseof Lords.• The House of Lords held that the High Court’sjudgment was correct and a third party has a clearright to protect its commercial interest in obtainingexclusives.
Impact of Douglas v Hello • Right to privacy (even when commercialised)• Separate right of publicity – but this is rather limitedand the key factor was that the photographs had acommercial value.• Still somewhat limited – no automatic invasion ofprivacy whenever a person’s image is used withoutconsent (as in France).• Court therefore afforded protection to OK! and theDouglas’s in order to reflect commercial reality: thatcelebrities sell exclusives and publications need toknow that they can rely on the exclusivity of such.
OTHER MEANS OF PROTECTING“IMAGE”• Data Protection Act 1998• Advertising codes• Registered trade mark rights• Passing off• Copyright• Performer’s rights• DefamationConsidering some of the more important infurther detail...
REGISTERED TRADE MARKS• Useful and practical means by which to protect‘image’:NAMESDavid Beckham has registered his name as a CTM(for a range of goods, including key rings, figurinesand jewellery)Tiger Woods has also registered his name as aCTM (for a range of goods, including golf products)IMAGESAlan Shearer registered a photograph of him as aUK TM (for clothing, bags and sports products)
REGISTERED TRADE MARKS• Issues:Enforceability – yet to be tested in court (sufficientdegree of distinctiveness?)Possibility that 3rd parties may attempt to registerceleb names. The TM Registry says that suchregistrations could be vulnerable to objection (forbeing applied for ‘in bad faith’)What classes to register the TM in? TM Registrymay not allow registration for a range of classeswhich the celebrity has no intention to use (again,because it would be ‘in bad faith’).
REGISTERED TRADE MARKS• Consider registering for type(s) of services? Robbie Williams has registered his name asa trade mark in class 41 (entertainmentservices) – broader than specific products.• Consider registering a signature? May be more distinctive and thereforeregistrable, e.g. ‘ELVIS A PRESLEY’signature has been registered• Consider registering an image Alan Shearer• Consider registering a nick name? THE ROCK (Dwayne Johnson (thewrestler))
PERFORMER’S RIGHTS• A ‘performance’ includes a live musicalperformance.• Such rights enable performers to prevent copies ofunauthorised recordings of a performance beingmade available.• Tolley v JS Fry  – chocolate advert featured acaricature of a well-known amateur golf player,without his consent. Held that the caricature wascapable of having a defamatory meaning.DEFAMATION
COPYRIGHT• A person’s name, in itself, is not protected bycopyright (it lacks sufficient ‘minimum effort’)• Unlikely that copyright would protect one’sappearance (e.g. make-up / hairstyle)• Copyright likely to be of limited use therefore:Any claim would need to involve workssuch as photographs/films taken by thecelebrity of themselves or by theirassociatesPhotographs/films taken by others wouldnot be covered (as the copyright wouldnot lie with the celebrity)
PASSING OFF• The tort of passing off is very useful inprotecting one’s “image” as it is capable ofprotecting the commercial value of anindividual’s reputation (i.e. their goodwill).• Eddie Irvine v Talksport Ltd  – leadingcase: Talksport advert featured a photo ofEddie Irvine which had been doctored fromhis using a mobile to him using a radio,suggesting that he was listening toTalksport. Held that Eddie’s goodwill wasdamaged simply because Talksport had“squatted” on his exclusive rights (to use /protect from damage his goodwill). Held thatthere is no requirement for a “common fieldof activity”.
PASSING OFF• However, court put a high threshold on the ability of acelebrity to rely on passing off in these circumstances:The individual needed to have a significantreputation / goodwill, could not be an ‘old-celebrity’therefore.The action of the defendant needs to give rise to afalse message (not just mere use of the celebritiesimage)• It was also considered important that Eddie Irvine wasin the business of giving endorsements.• Therefore: passing off may only help those who are‘hot’ celebrities who already exploit their “image”.
PASSING OFF:CHARACTER MERCHANDISING• Possible that the law of passing off might protectagainst unauthorised character merchandising.However, no cases have been brought on this point.• Courts have been reluctant to consider that one’s“image” being used on merchandise gives rise to themisrepresentation that the person has authorised orlicensed their “image”: Lyngstad v Anabas Products  – The name of thegroup ABBA featuring on badges and transfers was heldnot to amount to passing off. Halliwell & Others v Panini (1997) – Photo of the SpiceGirls on the cover of a sticker book was held not to amountto passing off.
PASSING OFF:CHARACTER MERCHANDISING• One exception =charactermerchandising claim inrelation to fictionalcharacters:Mirage Studios vCounter-Feat – Cartoon image ofThe Teenage MutantHeroes appeared ont-shirts. The courtheld that this waspassing off.
PASSING OFF:CHARACTER MERCHANDISING• However...A key consideration for the court was thatcopyright existed in the cartoon image &consumers knew that when cartoon charactersappear on merchandise this is the result of alicense granted by the owner.Elvis Presley Enterprises  – Court agreedwith Mirage but warned that “It does not give agreen light to extravagant claims based on anyunauthorised use of a celebritys name”. The courtreasserted that the existence of copyright is a keyconsideration.
PASSING OFF:CHARACTER MERCHANDISING• Possible that the law of passing off may be extended inthe future as consumers become more aware of andeducated about celebrity endorsement of merchandise.• Game characters / caricatures:If copyright exists (which it will likely do if an‘artistic’ work which is original and developed usingsome degree of effort) then there might well be thepossibility of protecting such through passing off (asin Mirage). However, the key question will bewhether consumer’s would likely consider thatthere was some connection (i.e. a licensingarrangement).
HOLOGRAPHIC PERFORMANCESTUPAC SHAKUR - 2012 performance
HOLOGRAPHIC PERFORMANCES• The 2012 holographic performance by Tupac Shakurwas created by the digital effects company DigitalDomain. Growing opportunities in using holographictechnology (for both living and dead artists).• Legal issues:Copyright in origin materials: hologram authorsmust consider if the material they draw from iscopyrighted (e.g. Film, broadcasting, musical,literary and other forms of copyright). Likely toinvolve complicated licensing arrangements – frommultiple licensors.
HOLOGRAPHIC PERFORMANCESCopyright in output materials: likely that thedeveloped holographic performance will be ‘newwork’ or ‘derivative work’. Copyright likely to arise inboth the image of the hologram and the recording.Artists and connected persons will need to considerthe rights that will arise; e.g. if commissioning a thirdparty to create a hologram, need to ensure that theIP is transferred to the artist/connected persons.Questions remain, e.g. Who owns the rights to aperformance of a holographic artist performinganother artist’s music?
HOLOGRAPHIC PERFORMANCES• Proceeding without copyright licenses? For example,if a third party records a concert and wants to create aholographic performance out of it.Be wary: a range of otherpotential causes of action(where there is no copyright),including:> Passing-off> Trade markinfringement> Defamation> Performer’s rights
ANALOGY WITH “FORMAT” RIGHTS• Still no statutory definition of “format right”• Early cases suggested no legal protection• Developing international case law based on existingconvention/legislation enables format protection• The way that you protect you format depends onwhere it is in its life, what kind of format it is, andwhat ancillary rights you have established with in it• There are a number of legal claims available toprotect formats• A format is a basket of rights – much like abrand/image
PRACTICAL – PROTECTING IMAGE• Your commercial strength to exploit your image rights isdirectly proportional to your capacity to protect it• To protect your image you must take clare and consistentsteps within the existing intellectual property legislation• In the context of format rights: In Castaway Productions v Endemol, the claimant wasable to establish copyright in its format A Brazilian Court has awarded substantial damages forbreach of copyright in the Big Brother formatIn both cases the formats were developed and evidenced ingreat detail and in permanent form• See the IFLA/Lewis Silkin Guide “How to Protect YourFormat”
PRACTICAL – PROTECTINGIMAGE• create a paper trail• keep it confidential Non Disclosure Agreements beforedisclosure make it clear information is confidential keep notes of meetings follow up with confirmation that pitchwas considered
PRACTICAL – PROTECTINGIMAGE• licence it contract will provide better protection thanintellectual property laws (N.B. not binding onthird parties) contract will give buyer access to “know how”DON’T• delete any emails that are relevant to, refer to or could in anyway be related to the image (e.g. a particular performance)• draw too many comparisons between any new developmentsof the image with uses that have already been established• save new ideas over old
PROTECTING IMAGE - REPUTATION• Essential to protect the artist’s “image”. No point in preventingunauthorised use if the “image” is no longer valuable.• Brand reputation. Online / offline. Increasingly important to focuson the online world:• Instant, free, easy – often done without consideration• Anyone can do it – we are now all publishers via the socialmedia; without checks, controls or an in-house legal team• Far-reaching and global (2012 – 34.3% of the world’s 7bn+population are online)• Anonymity (but sue the ISP/platform or obtain orderdisclosing identity)• Increasingly the source of copy for newspapers, newsagencies, broadcast news, news websites etc
PROTECTING IMAGE - REPUTATION• Traditional -v- SocialMedia• The Times: 5.5m printreaders in the UK (2012)• The Sun: 2.4m printreaders in the UK (2012)• Facebook: 33m UKaccounts in 2013 (53% ofthe UK population)• Twitter: over 1 billiontweets per week (2013,worldwide)
• Corporate Reputation “the most importantmeasure of success” (World Economic Forum)• World Economic Forum Survey found corporatebrand or reputation represents more than 40% ofcompany’s market capitalisation (BusinessEthics Magazine)• "If I was down to my last dollar, Id spend it onpublic relations." Bill Gates• “Many savvy companies are starting to realizethat a good name can be their most importantasset—and actually boost the stock price”(Bloomberg)IMPORTANCE OF REPUTATION