Jonathan Coad presentation at Music 4.5 Image Rights, 14 May 2013

1. EXPLOITATION AND
PROTECTION OF
“IMAGE”
Presented by: Jonathan Coad

2. “IMAGE” OR “PERSONALITY RIGHTS”
• Increasing importance: visual
content is now increasingly
important to the music industry.
• Range of products and revenue
streams: e.g. videos,
endorsement of products or
sponsorship, merchandise,
exclusive magazine deals, etc.
“Beckham” is a prime example
of an individual’s ‘image’
becoming a valuable brand.

3. PROTECTION OF “IMAGE”
• UK has taken significant steps recently to protect
the privacy of an individual, developing and
extending various causes of action to defend
against the unauthorised use of photographs or film
of 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’s
permission is sought prior to featuring, caricaturing
or referring to them in an advertisement.

4. • Consequence of these
developments has been the
emergence of ‘image
rights’: arguably there is a
connection between the
protection of privacy and
the development of
commercial image rights.
• The publicising and
commercialisation of one’s
image is arguably an
aspect of their privacy
PROTECTION OF “IMAGE”

5. Douglas v Hello [2005]
• This is the only UK case that has tested
the boundaries of privacy in the context of
it protecting the commercialisation of one’s
image. The ‘Douglases’:
 Had granted OK! magazine exclusive
rights to publish photographs of their
wedding. Hello! magazine published
unauthorised photographs of the
wedding.
 The Douglas’s and OK! claimed for
breach of confidence (on the basis that
the photographs were commercial or
trade secrets) and/or their right to
privacy.

6. Douglas v Hello [2005]
• The High Court upheld the claims based on breach
of commercial confidence or a hybrid
commercial/private confidence (in the wedding
photographs which were a valuable trade asset).
• Held:
OK! entitled to damages for lost sales (due to
breach of commercial confidence); and
Douglas’s entitled to damages for distress and
the cost of dealing with Hello!, but the court
refused to base the level of damages on a
‘nominal license’ fee.

7. Douglas v Hello [2005]
• 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 of
confidence – even though the Douglas’s had entered
into a publishing contract with OK! (thereby making the
images public).
Douglas’s could claim damages for interference with the
commercial exploitation of their wedding if they could
show that their private information qualifies for
protection as a trade secret.
Court expressly noted that this case had nothing to do
with their privacy, rather it concerned their commercial
interests (in making money from their private life!).

8. Douglas v Hello [2005]
• In relation to OK!, the Court of Appeal held that
there is a separate right of publicity (distinct from the
Douglase’s right to privacy). However, the court
formulated the right in rather limited terms.
• The Court of Appeal position relating to the
Douglase’s remains good law. However, OK!
appealed the Court of Appeal decision in the House
of Lords.
• The House of Lords held that the High Court’s
judgment was correct and a third party has a clear
right to protect its commercial interest in obtaining
exclusives.

9. Impact of Douglas v Hello [2005]
• Right to privacy (even when commercialised)
• Separate right of publicity – but this is rather limited
and the key factor was that the photographs had a
commercial value.
• Still somewhat limited – no automatic invasion of
privacy whenever a person’s image is used without
consent (as in France).
• Court therefore afforded protection to OK! and the
Douglas’s in order to reflect commercial reality: that
celebrities sell exclusives and publications need to
know that they can rely on the exclusivity of such.

10. OTHER MEANS OF PROTECTING
“IMAGE”
• Data Protection Act 1998
• Advertising codes
• Registered trade mark rights
• Passing off
• Copyright
• Performer’s rights
• Defamation
Considering some of the more important in
further detail...

11. REGISTERED TRADE MARKS
• Useful and practical means by which to protect
‘image’:
NAMES
David Beckham has registered his name as a CTM
(for a range of goods, including key rings, figurines
and jewellery)
Tiger Woods has also registered his name as a
CTM (for a range of goods, including golf products)
IMAGES
Alan Shearer registered a photograph of him as a
UK TM (for clothing, bags and sports products)

12. REGISTERED TRADE MARKS
• Issues:
Enforceability – yet to be tested in court (sufficient
degree of distinctiveness?)
Possibility that 3rd parties may attempt to register
celeb names. The TM Registry says that such
registrations could be vulnerable to objection (for
being applied for ‘in bad faith’)
What classes to register the TM in? TM Registry
may not allow registration for a range of classes
which the celebrity has no intention to use (again,
because it would be ‘in bad faith’).

13. REGISTERED TRADE MARKS
• Consider registering for type(s) of services?
 Robbie Williams has registered his name as
a trade mark in class 41 (entertainment
services) – broader than specific products.
• Consider registering a signature?
 May be more distinctive and therefore
registrable, e.g. ‘ELVIS A PRESLEY’
signature has been registered
• Consider registering an image
 Alan Shearer
• Consider registering a nick name?
 THE ROCK (Dwayne Johnson (the
wrestler))

14. PERFORMER’S RIGHTS
• A ‘performance’ includes a live musical
performance.
• Such rights enable performers to prevent copies of
unauthorised recordings of a performance being
made available.
• Tolley v JS Fry [1931] – chocolate advert featured a
caricature of a well-known amateur golf player,
without his consent. Held that the caricature was
capable of having a defamatory meaning.
DEFAMATION

15. COPYRIGHT
• A person’s name, in itself, is not protected by
copyright (it lacks sufficient ‘minimum effort’)
• Unlikely that copyright would protect one’s
appearance (e.g. make-up / hairstyle)
• Copyright likely to be of limited use therefore:
Any claim would need to involve works
such as photographs/films taken by the
celebrity of themselves or by their
associates
Photographs/films taken by others would
not be covered (as the copyright would
not lie with the celebrity)

16. PASSING OFF
• The tort of passing off is very useful in
protecting one’s “image” as it is capable of
protecting the commercial value of an
individual’s reputation (i.e. their goodwill).
• Eddie Irvine v Talksport Ltd [2002] – leading
case: Talksport advert featured a photo of
Eddie Irvine which had been doctored from
his using a mobile to him using a radio,
suggesting that he was listening to
Talksport. Held that Eddie’s goodwill was
damaged simply because Talksport had
“squatted” on his exclusive rights (to use /
protect from damage his goodwill). Held that
there is no requirement for a “common field
of activity”.

17. PASSING OFF
• However, court put a high threshold on the ability of a
celebrity to rely on passing off in these circumstances:
The individual needed to have a significant
reputation / goodwill, could not be an ‘old-celebrity’
therefore.
The action of the defendant needs to give rise to a
false message (not just mere use of the celebrities
image)
• It was also considered important that Eddie Irvine was
in the business of giving endorsements.
• Therefore: passing off may only help those who are
‘hot’ celebrities who already exploit their “image”.

18. PASSING OFF:
CHARACTER MERCHANDISING
• Possible that the law of passing off might protect
against 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 the
misrepresentation that the person has authorised or
licensed their “image”:
 Lyngstad v Anabas Products [1977] – The name of the
group ABBA featuring on badges and transfers was held
not to amount to passing off.
 Halliwell & Others v Panini (1997) – Photo of the Spice
Girls on the cover of a sticker book was held not to amount
to passing off.

19. PASSING OFF:
CHARACTER MERCHANDISING
• One exception =
character
merchandising claim in
relation to fictional
characters:
Mirage Studios v
Counter-Feat [1991]
– Cartoon image of
The Teenage Mutant
Heroes appeared on
t-shirts. The court
held that this was
passing off.

20. PASSING OFF:
CHARACTER MERCHANDISING
• However...
A key consideration for the court was that
copyright existed in the cartoon image &
consumers knew that when cartoon characters
appear on merchandise this is the result of a
license granted by the owner.
Elvis Presley Enterprises [1999] – Court agreed
with Mirage but warned that “It does not give a
green light to extravagant claims based on any
unauthorised use of a celebrity's name”. The court
reasserted that the existence of copyright is a key
consideration.

21. PASSING OFF:
CHARACTER MERCHANDISING
• Possible that the law of passing off may be extended in
the future as consumers become more aware of and
educated 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 using
some degree of effort) then there might well be the
possibility of protecting such through passing off (as
in Mirage). However, the key question will be
whether consumer’s would likely consider that
there was some connection (i.e. a licensing
arrangement).

22. HOLOGRAPHIC PERFORMANCES
TUPAC SHAKUR - 2012 performance

23. HOLOGRAPHIC PERFORMANCES
• The 2012 holographic performance by Tupac Shakur
was created by the digital effects company Digital
Domain. Growing opportunities in using holographic
technology (for both living and dead artists).
• Legal issues:
Copyright in origin materials: hologram authors
must consider if the material they draw from is
copyrighted (e.g. Film, broadcasting, musical,
literary and other forms of copyright). Likely to
involve complicated licensing arrangements – from
multiple licensors.

24. HOLOGRAPHIC PERFORMANCES
Copyright in output materials: likely that the
developed holographic performance will be ‘new
work’ or ‘derivative work’. Copyright likely to arise in
both the image of the hologram and the recording.
Artists and connected persons will need to consider
the rights that will arise; e.g. if commissioning a third
party to create a hologram, need to ensure that the
IP is transferred to the artist/connected persons.
Questions remain, e.g. Who owns the rights to a
performance of a holographic artist performing
another artist’s music?

25. HOLOGRAPHIC PERFORMANCES
• Proceeding without copyright licenses? For example,
if a third party records a concert and wants to create a
holographic performance out of it.
Be wary: a range of other
potential causes of action
(where there is no copyright),
including:
> Passing-off
> Trade mark
infringement
> Defamation
> Performer’s rights

26. ANALOGY WITH “FORMAT” RIGHTS
• Still no statutory definition of “format right”
• Early cases suggested no legal protection
• Developing international case law based on existing
convention/legislation enables format protection
• The way that you protect you format depends on
where it is in its life, what kind of format it is, and
what ancillary rights you have established with in it
• There are a number of legal claims available to
protect formats
• A format is a basket of rights – much like a
brand/image

27. PRACTICAL – PROTECTING IMAGE
• Your commercial strength to exploit your image rights is
directly proportional to your capacity to protect it
• To protect your image you must take clare and consistent
steps within the existing intellectual property legislation
• In the context of format rights:
 In Castaway Productions v Endemol, the claimant was
able to establish copyright in its format
 A Brazilian Court has awarded substantial damages for
breach of copyright in the Big Brother format
In both cases the formats were developed and evidenced in
great detail and in permanent form
• See the IFLA/Lewis Silkin Guide “How to Protect Your
Format”

28. PRACTICAL – PROTECTING
IMAGE
• put everything in writing
• date and identify it
• brand it (© / ® or™ / registered
designs)
• register it (if possible)
• paint a picture

29. PRACTICAL – PROTECTING
IMAGE
• create a paper trail
• keep it confidential
 Non Disclosure Agreements before
disclosure
 make it clear information is confidential
 keep notes of meetings
 follow up with confirmation that pitch
was considered

30. PRACTICAL – PROTECTING
IMAGE
• licence it
 contract will provide better protection than
intellectual property laws (N.B. not binding on
third parties)
 contract will give buyer access to “know how”
DON’T
• delete any emails that are relevant to, refer to or could in any
way be related to the image (e.g. a particular performance)
• draw too many comparisons between any new developments
of the image with uses that have already been established
• save new ideas over old

31. PROTECTING IMAGE - REPUTATION
• Essential to protect the artist’s “image”. No point in preventing
unauthorised use if the “image” is no longer valuable.
• Brand reputation. Online / offline. Increasingly important to focus
on the online world:
• Instant, free, easy – often done without consideration
• Anyone can do it – we are now all publishers via the social
media; 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 order
disclosing identity)
• Increasingly the source of copy for newspapers, news
agencies, broadcast news, news websites etc

32. PROTECTING IMAGE - REPUTATION
• Traditional -v- Social
Media
• The Times: 5.5m print
readers in the UK (2012)
• The Sun: 2.4m print
readers in the UK (2012)
• Facebook: 33m UK
accounts in 2013 (53% of
the UK population)
• Twitter: over 1 billion
tweets per week (2013,
worldwide)

33. • Corporate Reputation “the most important
measure of success” (World Economic Forum)
• World Economic Forum Survey found corporate
brand or reputation represents more than 40% of
company’s market capitalisation (Business
Ethics Magazine)
• "If I was down to my last dollar, I'd spend it on
public relations." Bill Gates
• “Many savvy companies are starting to realize
that a good name can be their most important
asset—and actually boost the stock price”
(Bloomberg)
IMPORTANCE OF REPUTATION

34. THE CONSEQUECES OF INACTION!

35. WHAT A DIFFERENCE A DAY MAKES!

36. That's All Folks!