Sources of lawRight 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. 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, which 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, which 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.
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 lays down the rules for the EU trademark regime -an EU trademark is a unitary right that covers all member states of the European Union. 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 applies as of 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.Enforcement
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 in questions 1 to 3.
Existence of rightProtectable aspects
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.Foreign citizens
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 discussed in question 1, Rihanna was entitled to protect her rights because she had built up goodwill in the UK.Registration requirements
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.