District Court decision
IP High Court decision
Supreme Court decision
On February 2 2012 the Supreme Court affirmed an IP High Court decision that rejected the right of publicity asserted by the plaintiffs - the pop duo Pink Lady - against the publishers of a magazine article which discussed a weight-loss method using dance routines to the duo's songs.
The court ruled that the right of publicity - that is, the exclusive right to attract customers by using a name, image or similar characteristic in connection with the promotion of sales of a product - is one of the rights derived from moral rights, as it is based on the commercial value of the name, image or similar element. However, the publication of photographs of Pink Lady in a magazine article without the plaintiffs' consent should not be considered an actionable tort, as such publication was not for the purpose of attracting customers by using the plaintiffs' image in this way.
The concept of the 'right of publicity' was developed in the United States; there is no statute or provision on the right in Japan.
Article 21(1) of the Constitution guarantees freedom of assembly and association, as well as freedom of the press and freedom in speech and all other forms of expression.
The plaintiffs were the members of the band Pink Lady and performed as singers and entertainers between 1975 and 1985. The duo enjoyed widespread popularity and their dance routines, which were widely imitated, became a social phenomenon of the time.
The defendant is the publisher of a weekly magazine for women. One of its writers wrote an article entitled "The Pink Lady Diet". The article originated from the growing popularity of losing weight by dancing to songs by the band. The first half of the article consisted of:
- text explaining the effect of the weight-loss regime;
- photographs of the plaintiffs in their heyday, singing the songs in question;
- comments by another entertainer, accompanied by her photograph; and
- illustrations of the dance moves for 15 famous Pink Lady songs.
The second half of the article consisted of comments by, and accompanying photos of, two other entertainers who recalled their memories of Pink Lady, and photographs of the plaintiffs singing on stage, taken earlier in their career. Seven photographs were used in the first half of the article, with a further seven in the second half.
The plaintiffs filed suit against the defendant, claiming that the publication of the article and the use of the photographs infringed their right of publicity. The plaintiffs each sought Y1.86 million in compensation.
On July 4 2008 the Tokyo District Court ruled in favour of the defendant and rejected the plaintiffs' claims. Its reasoning was as follows:
- The issue of whether the act of using an entertainer's name or image should constitute the tort of publicity right infringement can be determined by whether such use focuses on the ability of the entertainer in question to attract customers, and does so exclusively for the purpose of exploiting such ability, by taking an overall, objective view of the purpose, method and manner of such use.
- Of the first seven photographs, six were used to explain the dance moves or to evoke nostalgic memories of them. The remaining photograph was used to understand the aim of the weight-loss regime.
- The pictures were ordinary-sized monochrome photographs, with one picture for each song.
- About two-thirds of the explanatory section for each song consisted of a photograph showing it being performance by a male entertainer, a few comments by him and a section substantially explaining the dance moves using four pages of illustrations. Four of the first seven photographs occupied only one-third of a page.
- The headings and captions of the promotional materials and cover pages relating to the seven photographs did not specifically highlight the depictions of the plaintiffs.
- Although the ability to attract customers using the plaintiffs' images or similar characteristics was inevitably reflected in the article through the use of the photographs, the court found that the photographs had not been used exclusively because of the plaintiffs' ability to attract customers.
- The second set of seven photographs formed an introduction to the activities of the plaintiffs as entertainers - activities which they still undertake.
- Within the space of one-third of a page, seven ordinary-sized monochrome photographs of the plaintiffs were used.
- The headings and captions of the promotional materials and cover pages in relation to these photographs did not specifically highlight the depictions of the plaintiffs.
- On this basis, the court reached the same conclusion on the purpose of use as it had in respect of the first seven photographs.
Therefore, the court found that the plaintiffs' claims were groundless and could be dismissed without considering the remaining issues.
The plaintiffs appealed. On August 27 2009 the IP High Court upheld the Tokyo District Court decision, but with a different ruling. The IP High Court's reasoning was as follows:
- Prominent persons, such as entertainers and sportspeople, enjoy the right to protect their names and images of themselves from use by third parties without good reason, on the basis of their moral rights. Such persons acquire the ability to attract customers if their names and likenesses are used for the promotion or merchandising of products, and they generate economic interest or value in connection with the sales of such products. This economic interest or value should be considered to be under the exclusive control of the individual in question, as being derived from his or her moral rights.
- The issue of whether the use of a prominent person's name or likeness is actionable should be determined by weighing the interest in exclusively controlling one's name or likeness against the guarantee of freedom of expression and the burden that prominent members of society may reasonably be expected to bear. In weighing such interests, a complete analysis should include:
- the purpose, method and manner of such use;
- the manner in which the photographs are obtained;
- the nature of the individuals involved and the extent of their fame or notoriety; and
- the manner in which an individual uses and manages his or her own name and image.
- In general, the use of photographs of prominent individuals in calendars or similar products without their consent is actionable because it constitutes commercialisation. However, if the images were originally distributed with the subject's consent, their further use once distributed - without subsequent consent - may be regarded in some cases as not infringing the subject's publicity right.
- The photographs of the plaintiffs were not the focus of the article as a whole. Therefore, it should be interpreted as an article that introduced and recommended the idea of losing weight by dancing to the routines associated with Pink Lady songs, reawakening the memories of readers who were fans of Pink Lady at a time when the group's dance moves were widely imitated and became a social phenomenon.
- Therefore, the use of the photographs should be considered as a way of attracting attention to the article.
On the basis of this complete analysis, the use of the photographs should be considered not to exceed the burden that prominent members of society might be reasonably expected to bear, and as not infringing the plaintiffs' right to exclusive control over their own names and image.
Therefore, it was held that the Tokyo District Court had been correct to dismiss the plaintiffs' claims. The IP High Court ruled that the appeal should be dismissed and that it was unnecessary to consider the remaining issues.
The plaintiffs appealed to the Supreme Court. On February 2 2012 the Supreme Court upheld the IP High Court decision and agreed with the conclusion that the act of publishing the photographs in the magazine was not an actionable tort.
The Supreme Court reasoned that in some cases a person's name, likeness or similar characteristic has the potential to promote the sale of certain products by attracting customers. The right of exclusive use of such ability (ie, the right of publicity) is derived from the individual's moral rights, as it is based on the commercial value of the characteristic in question. However, since persons with this ability also attract attention in society more widely and their name, image and other personal characteristics are frequently used in the news media and elsewhere, there are a number of circumstances in which use should be regarded as acceptable and as a proper manifestation of free expression. Thus, use without consent should be treated as an infringement of the right of publicity and as an actionable tort if such use is recognised as being exclusively for the purpose of exploiting the ability to attract customers in cases where the image is:
- used independently of the product being promoted;
- attached to the product for the purpose of differentiating it; or
- used to promote the product.
The court found on the facts that the purpose of the article was not to focus on Pink Lady itself, but rather to explain a weight-loss programme that used the dance routines of Pink Lady songs (through illustrations and text showing the results of the programme), and to evoke memories among those who imitated the dances in their youth. The photographs in the article appeared on only three pages of a publication of around 200 pages; the largest was only 8 centimetres high and 10 centimetres wide. Their purpose was to supplement the content of the article.
Therefore, the publication of the photographs, although without the plaintiffs' consent, was not exclusively for the purpose of exploiting their image or other characteristics to attract customers and was thus not an actionable tort.
Therefore, the Supreme Court agreed with the IP High Court judgment that the act of publishing the photographs was not actionable in tort.
Academic discussions of the right of publicity have mainly centred on:
- the legal nature of the right of publicity, considering the questions of whether:
- an injunction can be granted;
- the right applies to legal persons or the deceased; and
- publicity rights can be assigned; and
- the criteria for infringement.
The Supreme Court decision focused on the second issue and established criteria such as whether use focuses on a plaintiff's ability to attract customers and whether the use seeks exclusively to exploit such ability. However, these criteria are relatively vague. A supplemental opinion of the court addressed cases in which:
- the photographs and the article are published in the same publication;
- the article cannot be regarded as separate or independent from the photographs; and
- the photographs are large, regardless of the comparative length of the article, the content of the article or the manner in which the photographs were obtained.
The court's opinion suggests that such use could be recognised as being "exclusively" for the purpose of attracting customers; however, the term 'exclusively' should not be interpreted too restrictively. IP and media law practitioners, among others, will closely monitor how the term is applied in future cases.
For further information on this topic please contact Eiichi Fukushima at Nishimura & Asahi by telephone (+81 3 5562 8500), fax (+81 3 5561 9711) or email ([email protected]).