Intellectual Property in the Digital Economy for SMEs, WIPO and RODA workshop, Bucharest, September 2017

1. D I G I T A L P U B L I C I T Y :
I M A G E A N D
P E R S O N A L I T Y R I G H T S
D R A N D R E S G U A D A M U Z , U N I V E R S I T Y O F S U S S E X

2. A P O L O G I E S …

3. … A N D A S T O R Y

4. I M A G E R I G H T S

5. W H A T A R E
I M A G E
R I G H T S ?
• This is not a harmonised
area of law, very specific
to jurisdiction.
• Image rights (personality
rights) is an umbrella term
to define protection of a
person’s personality,
including image, likeness,
reputation, etc.

6. I M A G E
R I G H T S
• Right of image
• Right of publicity
• Right of personality
• Passing off
• Unfair competition
• Privacy rights
• Data protection

7. L E G A L
D E F I N I T I O N S
( C A N A D A )
• Art 3 Quebec Civil Code:
“Every person is the holder
of personality rights, such
as the right to life, the right
to the inviolability and
integrity of his person, and
the right to the respect of
his name, reputation and
privacy. These rights are
inalienable.”

8. P A S S I N G - O F F
• Tort in the UK that protects
goodwill.
• The is that principle that
“nobody has any right to
represent his goods as the
goods of somebody else”
Reddaway v Banham
(1896).

9. 3 E L E M E N T S
Reckitt v Colman [1990]
1.goodwill or reputation
attached to the goods or
services;
2. a misrepresentation by the
defendant to the public;
3.damage or the likelihood of
damage.

10. I R V I N E V
T A L K S P O R T
( 2 0 0 3 )
• ‘Not only has the law of
passing off expanded over
the years, but the
commercial environment in
which it operates is in a
constant state of flux…the
court can take judicial notice
of the fact that it is common
for famous people to exploit
their names and images by
way of endorsement.’
Laddie J.

11. R I H A N N A V
T O P S H O P
( 2 0 1 5 )
• Topshop UK sold t-shirt with
Rihanna’s picture. She sued for
passing-off.
• “…the law of passing off is
not designed to protect a
person against fair competition.”
• “Many of her fans regard her
endorsement as important for
she is their style icon, and
they would buy the t-shirt
thinking that she had approved
and authorised it.”

12. P A S S I N G - O F F
( A U S T R A L I A )
• Twentieth Century Fox v South
Australian Brewing Co (1996) 66
FCR 451.
• Australian brewery produced beer
similar to fictional “Duff Beer”.
• Fox argued this was deceptive, and
passing-off.
• Defendants engaged “in a course of
conduct to achieve and exploit a
strong association between their use
of the name “Duff Beer” and “The
Simpsons”, which in fact is
deceptive”.

13. M O D E L
F O R M S
• Not harmonised, these act
more as contracts and
non-disclosure
agreements than
substantive IP law.
• Various forms available in
jurisdictions, most sample
forms found online are
based on US law.

14. R I G H T O F P E R S O N A L I T Y
( G E R M A N Y )
• Probably the strongest level of protection in Europe.
• Art 12 Civil Code: right to one’s name
• Article 22 of the Artistic Authors Rights Act: right of
image.
• Article 1 of the Unfair Competition Act 1909: protection
of commercial use of image.
• Commercial use of image (Marlene Dietrich case,
1999).

15. T E C H N O V I K I N
G
• During the 2000 Berlin Love
Parade an Internet star is
born.
• Matthias Fritsch uploaded
video to Internet, but it didn’t
gain traction until 2006.
• Exploded as an Internet
meme that year.
• Fritsch made €10k EUR from
views and merchandise.

16. B E R L I N R E G I O N A L
C O U R T R U L I N G
( 2 0 1 3 )
• Technoviking sues in 2012 for
breach of privacy and breach
of image rights.
• Court failed to consider
privacy, but agreed on image
right violation.
• Injunction forces Fritsch to
digitally remove Technoviking
from video.
• https://vimeo.com/140265561

17. O T H E R C I V I L
A C T I O N S
• Droit à l’image (France)
• ‘portrait rights’ in Dutch
copyright law.
• Commercial use of image
• ‘Cashable Popularity’ in
Holland.

18. R I G H T O F P U B L I C I T Y ( U S A )
• The Right of Publicity can be defined as the right to
control the commercial use of one’s identity. These
usually consist of “name, image and likeness.”
• This is a state law issue, so the law changes from
state to state.
• Has little to do with IP law as such, although there may
be some intersection with copyright, particularly
regarding fixation of images.

19. H A E L A N L A B R A T O R I E S ,
I N C . V . T O P P S
C H E W I N G G U M , I N C .
( 1 9 5 3 )
• “We think that, in addition to and
independent of that right of privacy
(which in New York derives from
statute), a man has a right in the
publicity value of his photograph, i. e.,
the right to grant the exclusive privilege
of publishing his picture, and that such a
grant may validly be made “in gross,” i.
e., without an accompanying transfer of
a business or of anything else. Whether
it be labeled a “property” right is
immaterial; for here, as often elsewhere,
the tag “property” simply symbolizes the
fact that courts enforce a claim which
has pecuniary worth. This right might be
called a “right of publicity.”

20. S I N A T R A V .
G O O D Y E A R T I R E
( 1 9 7 0 )
• Passing-off case against
Goodyear for use of a
look-alike with song similar
to “These boots are made
for walking”.
• No competition between
Sinatra and defendants,
she made records, they
made tires.

21. Z A C C H I N I V .
S C R I P P S - H O W A R D
B R O A D C A S T I N G
( 1 9 7 7 )
• SCOTUS decision where Hugo
Zacchini, the so-called “human
cannonball”, had his performance
recorded and used without his
permission by a news crew.
• The Court recognised Zacchini’s
Right of Publicity and it existed to
provide “an economic incentive for
him to make the investment required
to produce a performance of interest
to the public.”
• Other US cases: Midler v. Ford Motor
(1989) and Waits v. Frito-Lay (1992).

22. K I R B Y V
S E G A ( 2 0 0 6 )
• Keirin Kirby (of Dee-Lite
fame) sued SEGA America
for the use of a character
that looks like her in
Japanese game Space
Channel 5.
• Use was considered
transformative and also
freedom of speech.

23. N O R I E G A V
A C T I V I S I O N
( 2 0 1 5 )
• General Manuel Antonio
Noriega was depicted in
several missions in Call of
Duty: Black Ops II.
• He sued for breach of his right
of publicity.
• Court sided with game makers,
considered it as speech
protected by 1st amendment.
• Public historical figures can be
depicted in fiction.

24. L O H A N V R O C K S T A R
( 2 0 1 6 )

25. C O P Y R I G H T I S S U E S

26. C O P Y R I G H T
• Economic rights: Owners
have the exclusive right to
copy, rent, adapt, perform,
broadcast and issue copies
of the work to the public.
• Moral rights: attribution,
integrity and anonymity (or
pseudonymity).
• Moral rights subsist even
after selling the work.

27. S O U N D ,
V I D E O ,
I M A G E S
• Copyright protects original
literary, dramatic, musical
or artistic works;
• sound recordings, films or
broadcasts, and the
typographical arrangement
of published editions (also
considered as derivative
works).

28. M O R A L
R I G H T S
• Right of paternity /
attribution
• Right of integrity
• Right to object false
attribution
• Right of privacy in certain
photographs and films

29. P A R O D Y
• s 30A UK CDPA
• “30A—(1) Fair dealing with a
work for the purposes of
caricature, parody or pastiche
does not infringe copyright in the
work.
• (2) To the extent that a term of a
contract purports to prevent or
restrict the doing of any act
which, by virtue of this section,
would not infringe copyright, that
term is unenforceable.”

30. D E C K M Y N A N D V R I J H E I D S F O N D S V Z W
V V A N D E R S T E E N A N D O T H E R S ( C -
2 0 1 / 1 3 )
Original Parody

31. D E C K M Y N ( C -
2 0 1 / 1 3 )
• “…since Directive 2001/29 gives no
definition at all of the concept of parody,
the meaning and scope of that term
must, as the Court has consistently
held, be determined by considering its
usual meaning in everyday language,
while also taking into account the
context in which it occurs…
With regard to the usual meaning of the
term ‘parody’ in everyday language, it is
not disputed… that the essential
characteristics of parody are, first, to
evoke an existing work while being
noticeably different from it, and,
secondly, to constitute an expression of
humour or mockery.”

32. D E C K M Y N ( C -
2 0 1 / 1 3 )
• However, the application, in a
particular case, of the exception
for parody, within the meaning of
Article 5(3)(k) of Directive
2001/29, must strike a fair
balance between, on the one
hand, the interests and rights of
persons referred to in Articles 2
and 3 of that directive, and, on
the other, the freedom of
expression of the user of a
protected work who is relying on
the exception for parody, within
the meaning of Article 5(3)(k).”

33. C O N C L U D I N G

34. @ T E C H N O L L A M A
a.guadamuz@sussex.ac.uk