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Sources of law
Right of publicity
Is the right of publicity recognised?
There is no specific right of publicity under English law. There is, however, a patchwork of legal rights that can be used to protect various aspects of an individual’s image and personality. These are:
- Copyright: it is possible for an individual to assert copyright in a photograph or film taken of themselves. This is only possible where a celebrity, for example, has obtained the copyright in such a work from the author. Further, where a photograph or film has been commissioned for private and domestic purposes, that person has the right to prevent copies of the work being issued or communicated to the public.
- Passing-off: this common law tort may be used by a celebrity to prevent a false representation that he or she has endorsed a particular product, service or brand. In order to bring such a claim, the celebrity must have a sufficient amount of trading goodwill, which is usually shown by evidence that he or she has previously used his or her name, image or likeness for endorsement activity. It was held in Irvine v Talksport  2 ALL ER 414 that a celebrity must have significant reputation or goodwill (at the time of the acts), and the use of his or her image without permission must constitute a misrepresentation to a significant section of the relevant market that the individual has endorsed the product. Examples of successful claims are limited, and are usually very fact-specific. This is well demonstrated by Rihanna’s successful claim against Topshop, who sold T-shirts with her image on them without her permission. The Court of Appeal confirmed that there is no image right per se, and that Rihanna’s claim only succeeded because the extent and nature of her previous endorsement activity meant that a significant proportion of Topshop’s customers would be misled by the use of her image.
- Trademarks: often thought of as the best practical way to protect a celebrity’s right to exploit his or her image for commercial gain or prevent unauthorised use. It is possible to register a trademark for a person’s name, signature, nickname, slogan, voice or likeness. In practice, the name is the most common registration. David Beckham has registered his name for a range of goods including perfume, hair care and cosmetics, and Alan Shearer has registered his image in relation to goods such as clothing, bags and sports articles. There are, however, some restrictions on registrability. Particular difficulties arise in relation to the proposed mark’s lack of indication of trade origin and distinctiveness, and its application to certain goods such as merchandise and posters or photographs. Where the celebrity’s reputation does not flow from a trade in the applied for goods and services, the average consumer may think that the goods and services are about the celebrity as opposed to supplied by them. This has been applied by the Trade Mark Registry in a number of cases such as refusing to register LINKIN PARK in respect of ‘printed matter, posters and poster books’ and Sir Alex Ferguson in respect of ‘posters, photographs’ and other similar ‘image-carrier goods’.
- Data protection: this can be used by both private individuals and celebrities who can prevent the processing of their personal data, such as publications of photographs or film (where these meet the test). Such individuals can, in certain circumstances, require others to cease processing their personal data. This right now also includes the ‘right to be forgotten’ where an individual may request a search engine to prevent links to information appearing in search engine results.
- The Advertising Standards Authority (ASA): the advertising standards codes include specific provisions regarding the use in advertising of images of individuals and quotes made by them.
- Misuse of private information: this tort can be used to protect an individual from unauthorised publishing of images or other information about them. The information must be private and the individual must have a reasonable expectation of privacy in relation to the information. This right flows from article 8 of the Convention on Human Rights that provides for the right of private and family life, but this must be balanced with article 10 that gives the right of freedom of expression. The courts have interpreted this as allowing the publishing of private information where it is in the public interest (but not simply where the public is interested in the information).
- Confidential information: this is similar to misuse of private information but is more likely to be appropriate where there is a commercial aspect to the information. This was the case in Douglas v Hello! Ltd, where photographs of the wedding of Michael Douglas and Catherine Zeta-Jones were published by Hello! without authorisation when the Douglases had instead entered into an agreement with OK! magazine. To succeed in this claim, the individual must show that the information has the necessary quality of confidentiality and was disclosed in circumstances that give rise to a duty of confidentiality. Where the information is already in the public domain it can no longer be protected. As with misuse of private information, information may be published where it is in the public interest.
Principal legal sources
What are the principal legal sources for the right of publicity?
Copyright arises under the Copyright, Designs and Patents Act 1988 (CDPA 1988). There are also a number of relevant EU directives.
Passing-off, misuse of private information and confidentiality are common law rights and arise out of the English courts’ case law. In relation to the tort of misuse of private information, the Human Rights Act 1998 (HRA 1998) (implementing the European Convention on Human Rights) is also relevant for interpreting and balancing the article 8 and 10 rights. The English courts must interpret the right consistently with the jurisprudence of the European Court of Human Rights (ECHR).
The rights under trademarks arise out of the Trade Marks Act 1994 and the associated EU directives and regulations. The EU Trade Mark Regulation, which came into force in 2016, transforms the Community Trade Mark regime into the EU Trade Mark regime and seeks to further harmonise the EU’s trademark regimes. The English courts can, and often do, refer questions on interpretation of the EU legislation to the Court of Justice of the European Union (CJEU).
Data protection is enshrined in the General Data Protection Regulation (GDPR), which came into force in May 2018. The GDPR is designed to harmonise data protection law across the European Union. In the United Kingdom, the Data Protection Act 2018 supplements the GDPR.
The advertising industry has created a number of self-regulatory codes, primarily the Broadcast Committee of Advertising Practice (BCAP) for broadcast advertising and the Code of Non-broadcast Advertising, Sales Promotion and Direct Marketing (CAP) for non-broadcast (including online) advertising. These are administered by the ASA, which investigates and adjudicates on complaints and can order that advertisements be taken down.
In light of the UK decision to leave the EU, it is unclear to what extent EU legislation will continue to be applicable. For now, though, the legal situation remains unchanged.
How is the right enforced? Which courts have jurisdiction?
Copyright, passing-off, misuse of private information, confidentiality and trademark issues are enforced through the civil courts in England and Wales. Generally, this will be done through the High Court (particularly where the matters are complex or high value). Less complex claims relating to intellectual property may also be started in the Intellectual Property Enterprise Court, however, there are certain monetary caps when bringing proceedings here.
Appeals from the courts of first instance are to the Court of Appeal, and further appeals are to the Supreme Court. Any of the courts may make a reference for guidance to the CJEU where issues of EU law arise. Trademark and copyright cases are the most common subjects for referrals.
Where there is an alleged breach of the European Convention on Human Rights by any of the courts, the case may ultimately be appealed to the ECHR.
Advertising complaints for breaches of the CAP and BCAP Code are adjudicated by the ASA.
Data protection issues can be adjudicated by the Information Commissioner’s Office and the English courts.
Northern Ireland and Scotland have their own jurisdiction and jurisprudence therefore the enforcement may differ.
Other relevant rights
Are there other rights or laws that provide a claim based on use of a person’s name, picture, likeness or identifying characteristics?
Because there is no specific right of publicity, the patchwork of rights has been discussed above.
Existence of right
What aspects of a person’s identity are protectable under the right of publicity?
Copyright can protect a photograph of an individual or the expression of his or her ideas.
Passing-off protects the goodwill that the celebrity has built up through the commercial use of his or her name where that goodwill is used without authorisation.
It is possible to register a trademark for names, likenesses, signatures, images, voices, etc. The applied-for marks must be capable of being indicative of origin and distinctive (as well as meeting some other basic requirements).
Data protection gives an individual the right to object to unlawful processing of his or her personal data.
The law of privacy protects an individual’s private information such as information about his or her daily life, health and other personal information, and it also applies to photographs. It may also be possible to protect information that is in the public domain, such as photographs of individuals in public places. The individual must have an expectation of privacy and this right must be balanced against the freedom of expression. It is helpful to the individual in the balancing exercise if he or she has not courted the public’s attention.
Confidentiality protects information that is confidential. This can include photographs and, potentially, names of those involved.
Do individuals need to commercialise their identity to have a protectable right of publicity?
This depends on the right that is being asserted.
Commercialisation is necessary to establish an existing goodwill for a claim of passing-off.
Similarly, for trademarks to be registrable they need to be distinctive and indicative of the origin of the goods or services. Once registered, the trademark must be used in respect of the goods registered and where it is not, it may be liable to be revoked for non-use after five years.
Commercialisation is not necessary for claims in copyright, confidentiality or privacy. In relation to privacy, it is particularly helpful where the individual has tried to stay out of the limelight.
May a foreign citizen protect a right of publicity under the law of your jurisdiction?
Foreign citizens may enforce their rights as a UK citizen would, provided that the cause of action is made out in England and Wales. For example, as previously discussed, Rihanna was entitled to protect her rights because she had built up goodwill in the UK.
Is registration or public notice required or permitted for protection of the right? If so, what is the procedure and what are the fees for registration or public notice?
The only right for which registration is a necessary part is for infringement of registered trademarks. The costs of registering a UK trademark in one class is £200 (or £170 if filed online) with £50 for each additional class, and an EU trademark can be obtained for €850 (excluding professional fees and VAT).
Putting another party on notice may sometimes assist a claimant, either to render his or her conduct a secondary infringement, or to influence the attitude of the courts or alter the scope of the remedies that can be awarded.
Protection after death
Is the right protected after the individual’s death? For how long? Must the right have been exercised while the individual was alive?
The personal rights under data protection and privacy will cease upon an individual’s death.
Trademarks, in theory, can last forever as long as they are being used and the renewal fees are paid at appropriate times. Copyright will subsist for a certain amount of time after the author’s death, depending on the type of work. For artistic and literary works, this is 70 years after the author’s death.
Goodwill (protectable in passing-off) can survive death, but demonstrating its existence will become more difficult as the deceased’s endorsement activity dwindles.
Ownership of right
Can the right be transferred? In what circumstances?
Rights in copyright can be transferred, as can registered trademarks. Any such assignment must be in writing and signed by the assignor. An assignment of a registered trademark must also be registered with the Intellectual Property Office.
Rights in unregistered trademarks (passing-off) may be transferred only where the relevant goodwill is also being transferred.
It may be possible to transfer rights in confidential information. It is questionable whether all forms of confidential information are transferable. It may also be impractical for the transferor to be divested of the information.
Rights under data protection and privacy are personal rights and cannot therefore be transferred.
Can the right be licensed? In what circumstances?
Rights under data protection and privacy are personal rights and cannot therefore be licensed.
Rights to use registered and unregistered trademarks, copyright works and confidential information may be licensed. Exclusive licences (for registered trademarks and copyright works) must be in writing and signed by the licensor. There are no other formalities and other licences need not be in writing, although this is preferable.
If the right is sold or licensed, who may sue for infringement?
In relation to the personal rights under data protection and privacy, only the data subject and owner of the right respectively may sue.
For copyright works, the owner, exclusive licensee and, in some circumstances, a non-exclusive licensee may sue.
The owners and exclusive licensees of registered trademarks may sue. Currently, other types of licensees may sue where the licensor has failed to do so after a request. Under the Trade Mark Regulation, licensees can only bring proceedings for trademark infringement if the trademark proprietor consents. This does not affect the right of an exclusive licensee to sue where the owner has not done so after formal notice has been given.
In respect of passing-off, the owner of the relevant goodwill may sue. Where the goodwill has been transferred together with the right to sue, the transferee may then sue.
Confidential information may be actionable by licensees, this follows from Douglas v Hello! where Hello!’s competitor, OK!, brought proceedings and was awarded damages.
If post-mortem rights are recognised, are they limited to natural heirs or can they be enforced under a contract by an assignee or left to an entity?
The rights that can be transferred (as discussed earlier) will form part of the deceased individual’s estate and will be administered in accordance with any will that person may have left or the specific rules of inheritance where the individual died intestate.
Are there any actions that rights owners should take to ensure their rights are fully protected?
Any aspect that a person can register, such as name, signature etc, should be registered as a trademark (where this is appropriate). Where a registered trademark exists, it should be put to genuine use.
In respect of copyright works, it may be helpful to maintain records of the circumstances and timing of creation of the works and of any assignment.
Steps should be taken to keep confidential information confidential. This can be done through entering confidentiality agreements and restricting access to the information.
In respect of the right of privacy, it is helpful to an individual’s case if he or she has refrained from courting the press or discussing his or her private life.
Generally, an individual should remain vigilant and, where possible, monitor and police his or her rights, the actions of any licensees and the media.
What constitutes infringement of the right?
Each type of action can be infringed in a specific way - there is no general type of infringement:
- Copyright: CDPA 1988 sets out a list of specific acts that constitute infringement (set out in sections 16 to 26), which include copying and communication of copies to the public.
- Passing-off: there have been a number of cases relating to ‘false endorsement’. The first of these was Irvine v Talksport where the infringement was a misrepresentation that Formula One driver Eddie Irvine had endorsed radio station Talksport by doctoring a photograph to show him listening to the station. Misrepresentation is the hardest aspect for a celebrity to show, but it was held by the court that there is no need to show that the misrepresentation occurred in the same field of activity as that in which the celebrity normally participates.
- Similarly, Rihanna successfully brought passing-off proceedings against Topshop for printing her image on T-shirts without her consent. The court held that such proceedings are very fact-specific. In this instance, the court allowed the claim because Rihanna had endorsed numerous products, including in the fashion sector, the image was associated with her current album and music video, and Topshop had previous dealings with her. All of this would lead a significant proportion of the public to believe that the T-shirts had been authorised by Rihanna, when in fact they had not.
- Trademarks: section 10 of the Trade Marks Act 1994 lists the acts that constitute infringement. Infringement can be made out where there is use of an identical mark, but also where there is use of a similar trademark in relation to either identical, or similar, goods or services if the use gives rise to a likelihood of confusion. If the trademark has a reputation then it is also infringed if a defendant takes unfair advantage of it, or its use is detrimental to the distinctive character or repute of the celebrity’s trademark.
- Data protection: the legislation is engaged if the use of an image or name of a living celebrity constitutes unfair or unlawful processing of his or her personal data.
- Misuse of private information: there is a general two-step test; the first of which is the assessment of whether the individual has a reasonable expectation of privacy. There is a substantial amount of case law as to what is and is not covered. Generally, where the information relates to the private life of an individual there would be an expectation of privacy, although anodyne and everyday activities may also attract such an expectation (Murray). Where this is established, the courts balance this against the public interest in the information, considering the type of information (health, sexual and personal relationships and feelings are generally considered to be private) and certain limiting factors such as the information being in the public domain or public interest (such as information relating to sports stars and politicians who have held themselves out as leading a certain type of lifestyle but the information about them dispels that).
- Publishing photographs is generally considered to be a bigger invasion of privacy because they portray information in a way that words cannot (Douglas v Hello!) and the courts therefore take a stricter approach to their publishing. This was seen in Murray v Express Newspapers where the infant son of JK Rowling was photographed on the street using a long-lens camera.
- Confidentiality: where there is a commercial interest in the transaction, the applicable test is the one found in Coco v Clark, that is whether the confidential information has been used without authorisation to the detriment of the party. In Douglas v Hello!, OK! magazine had paid a substantial amount to have exclusive publishing rights for photographs of Michael Douglas’s wedding, but Hello! had earlier published photographs that had been obtained without the Douglases’ consent. OK! was awarded damages as a result.
Are certain formats of intellectual property excluded from claims based on the right of publicity? What is the legal basis of the exclusions?
There are specific defences to copyright infringement (found in CDPA 1988) for acts that are for the purpose of news reporting, quotation and parody. Trademark infringement is only available for use ‘in the course of trade’, which means that many non-commercial uses are excluded. Similarly, the nature of the common law tort of passing-off means that news, biographies, and documentaries are unlikely to constitute a misrepresentation.
Infringement claim requirements
Is knowledge or intent to violate the right necessary for a finding of infringement?
Intent is not necessary in any of the listed causes of action but it may affect the level of damages available in copyright infringement cases (see question 18). It may also be easier to establish the misrepresentation element of a claim in passing-off if it can be shown that the actions were deliberate.
Knowledge that a copy is infringing is necessary to establish secondary infringement of copyright works.
Liability of media
Does liability extend to media publishing content created by an advertiser and website operators publishing posts by third parties? Does republishing or retweeting or other social media propagation of existing content give rise to liability?
Simply publishing content created by an advertiser is unlikely to extend liability for passing-off, trademark infringement or copyright infringement. Publishers are occasionally named in ASA adjudications, but this does not extend liability to them as such.
Publishers need to take greater care with use of personal data and confidential information, because their conduct may give rise to liability.
What remedies are available to an owner of the right of publicity against an infringer? Are monetary damages available?
The remedies available include damages, an injunction to prevent further infringement and delivery up of infringing articles. The claimant may, as an alternative to damages, claim an account of profits made by the defendant from the infringing activity.
In respect of privacy and confidentiality cases, the most useful remedy is the injunction, whether interim or final, because these will typically prevent the publishing of the information. Such remedies may also be awarded against media where the infringement has been carried out and against internet service providers who may, however, be able to use certain defences to avoid monetary damages. The Supreme Court has affirmed (PJS v News Group Newspapers Ltd  UKSC 26) that it was willing to protect privacy through injunctions in the digital age. The court held that a privacy injunction should remain in place in England and Wales despite the disputed private information having already been disclosed elsewhere in the world and being readily available online and on social media. In its finding, the court placed great weight on the intrusive effect that newspaper coverage in England would have on PJS and his family.
If a data controller or processor is found to be in breach, it may be forced to stop processing the data and be forced to provide the victim monetary compensation.
The intellectual property enforcement directive, Directive 2004/48/EC, has largely harmonised the possible remedies for intellectual property infringement across EU member states.
Is there a time limit for seeking remedies?
Claimants can claim damages up to six years after the date of infringement.
Complaints to the ASA, regarding advertising, should be made within three months of the advertisement being published.
Are attorneys’ fees and costs available? In what circumstances?
Under English law, the loser typically pays the winner’s costs. Normally, the winner can expect to reclaim between 60 per cent to 80 per cent of its costs, although the amount recovered can be higher in cases that are subject to the court’s costs budgeting regime. Costs recovery is at the discretion of the court and it may order a larger or smaller proportion of the costs to be paid and may take-into-account the behaviour of the parties during the litigation and whether offers to settle have been made by either party.
Are punitive damages available? If so, under what conditions?
Generally, punitive damages are not available for the causes of action discussed above. The only exception is where there has been a flagrant infringement of copyright, where additional damages will be available. This is rare and such damages would be available where the defendant knew that he or she was infringing but took no action to prevent it continuing. Such damages would also be available where the defendant obtained a benefit that normal damages would not be able to compensate adequately.
Is preliminary relief available? If so, what preliminary measures are available and under what conditions?
Preliminary relief, in the form of an interim injunction pending trial, is available. This is particularly useful to prevent imminent publication of certain information or photographs. The claimant must satisfy the court that there is a serious issue to be tried and that the balance of convenience is in favour of granting the injunction. The balance of convenience considers whether damages would be an adequate remedy; where this is the case, the interim injunction will not normally be granted. If an interim injunction is granted, the court will usually require the claimant to give a cross-undertaking in damages in case the defendant suffers damage where it is discovered at a later time that the injunction should not have been granted.
Such a relief usually stays in place until trial where a final injunction or other relief is considered. This type of relief is most useful in privacy and confidentiality cases and it may be possible to request having the hearing in private (normally, hearings and trials are conducted in public). Similarly, private or confidential information disclosed at the hearing or trial may be kept out of the public version of any judgment.
Other interim relief that is available includes freezing orders, search and seizure orders and disclosure orders against third parties.
What are the measures of damages?
This depends on the cause of action and a claimant generally has a choice as to whether he or she obtains damages or an account of profits.
The measure and value of damages differs from right to right. In passing-off cases, this is usually based on the fee that the individual would have charged for the endorsement agreement, had he or she agreed to it. Prior contracts would typically be considered by the courts in an attempt to ascertain what fee the parties would have agreed. Damages for trademark and copyright infringement will often be calculated on the licence fee that a willing licensee and licensor would have agreed in a hypothetical negotiation (the user principle) or royalties where the owner is in the business of licensing its intellectual property.
In relation to privacy, an injunction is the most useful remedy and damages are rarely adequate. Therefore, the damages that have been awarded have tended to be on the low side and reflect the value of the information (essentially, the loss of profit). Prior to 2015, the highest award was £60,000 in Mosley; however, the court awarded between £72,500 and £260,250 to claimants who were victims of phone-hacking (Gulati v MGN Newspapers  EWHC 1482 (Ch)) to reflect the injury caused. In confidentiality cases, the measure is usually based on what the discloser of information would have agreed to accept to release the other party from confidentiality obligations.
Significant case law
What significant judgments have recently been awarded for infringement of the right?
There have been a number of cases, some of which have been discussed elsewhere in this chapter. Some of the key cases are as follows:
- Douglas v Hello!: the court awarded damages of £14,600 to the individuals and about £1 million to OK! (the rival magazine that had paid a substantial amount for the exclusive right to publish their wedding photographs). These photographs were published without permission in Hello!.
- Max Mosley v MGN Ltd: a newspaper published a video and article about Max Mosley being involved in sadomasochistic activities. Max Mosley was awarded £60,000 in damages. That was the highest amount awarded to that point.
- Irvine v Talksport: Eddie Irvine was awarded £25,000 by the Court of Appeal following publication of an advert by Talksport Radio that falsely implied that the Formula One driver endorsed the radio station.
- Rihanna v Topshop: the court awarded an injunction preventing Topshop from selling T-shirts with Rihanna’s image on them because she had not authorised that use.
- Gulati v MGN Newspapers: the court awarded between £72,500 to £260,250 to various claimants. This has significantly raised the bar for damages in privacy cases. The reason for the higher award was that invasions of privacy in this phone-hacking case were greater than in previous cases. The awards reflected the injury based on the phone-hacking that led to published articles and those articles that had not been published as well and the distress resulting from the phone-hacking itself.
- Richard v BBC: the BBC was liable to Sir Cliff Richard for infringing his right to privacy, by broadcasting the fact that he was the subject of a police investigation in relation to allegations of an historical sex offence, and that his property was being searched in connection with the investigation. The investigation continued for two years but the claimant was never arrested or charged. The court awarded damages of £210,000.
In what forum are right of publicity infringement proceedings held?
These types of cases are normally heard in the civil courts, most usually the High Court of England and Wales. Although where the damage suffered is lower and the case concerns less complex intellectual property issues, the proceedings may be brought in the Intellectual Property Enterprise Court, which is a specific division of the High Court.
Any complaint in relation to advertising that is brought under the self-regulatory codes will be adjudicated by the ASA.
Data protection issues are normally adjudicated by the Information Commissioner’s Office and sometimes the courts.
Use of juries
Are disputes decided by a judge or a jury? Are damages determined by a judge or a jury?
Disputes and damages are determined by a judge (or panel of judges in the appeal courts).
How is the choice of applicable law determined?
If the cause of action is made out in England and Wales, then the claimant may bring proceedings in England with English law being the applicable law.
Consideration of foreign decisions
To what extent are courts willing to consider, or bound by, the opinions of other national or foreign courts that have handed down decisions in similar cases?
Where a question of interpretation of EU law applies, the courts are bound by the jurisprudence of the CJEU. This largely relates to trademarks, data protection and copyright as these areas of law largely derive from EU law, although in respect of copyright this is limited to certain areas because it is not a fully harmonised right.
The courts deciding on privacy cases must follow the decisions of the ECHR.
Passing-off and confidentiality are common law torts, so foreign decisions are not relevant.
English courts sometimes consider decisions of courts in other common law jurisdictions, such as Australia and New Zealand, and in other European countries such as Germany and the Netherlands. These decisions are, however, not binding.
What avenues of appeal are available in main proceedings or preliminary injunction proceedings? Under what conditions?
Appeals from the High Court are made to the Court of Appeal on questions of law. The Court of Appeal rarely overturns decisions of facts. Appeals on points of law from the Court of Appeal can be made to the Supreme Court, although this is rare. There is no automatic right of appeal so permission must be obtained.
Questions regarding interpretation of EU law may be referred to the CJEU and appeals relating to HRA 1998 may be made to the ECHR.
Average cost and time frame
What is the average cost and time frame for a first-instance decision, for a preliminary injunction, and for appeal proceedings?
Urgent interim injunctions can be obtained in a matter of days, but typically a preliminary injunction will take a number of weeks or months. The average cost will be in the tens of thousands of pounds.
Claimants can expect to receive a first-instance decision in around 18 months from a claim being issued. The recent Shorter Trial pilot scheme, aimed at providing straightforward cases with a decision within 12 months of a claim being issued, will become permanent. Claims brought in the Intellectual Property Enterprise Court typically take between 12 to 18 months. Depending on the complexity of a claim and the choice of court, claims can cost anywhere between £150,000 to £1 million, or more.
There can be a lengthy delay for an appeal, with it potentially taking from 12 to 24 months for an appeal to be heard by the Court of Appeal. The costs of appeal proceedings are lower than first-instance decisions because of the focus on points of law rather than facts. Appeal proceedings typically cost between £150,000 to £250,000.