CELEBRITIES
A celebrity is entitled to use publicity or image rights to commercially exploit the goodwill associated with their fame. Amit Mahajan explains.
Simply put, rights of publicity or image rights allow a celebrity to charge for the use of their name, likeness, photograph, voice or personality. Te law enables protection against the unauthorised exploitation by others of the goodwill associated with the celebrity. Legally, celebrities are no different to other providers of goods or services to the public and qualify for the same level of protection. As commercialisation is evolving, we have witnessed celebrities acquiring brand status and registering their names as trademarks—Michael Jackson, Elvis Presley and the Spice Girls are examples.
Te concept of publicity rights is based on the idea that every individual should have control over commercialising their persona. Stars invest a great deal of hard work and talent in acquiring their status and are entitled to reap the benefit of their efforts. Tere are two facets to this concept. One is the right to publicity—to prevent one’s name, likeness, or any facet of one’s ‘image’ from being commercially exploited without authorisation or compensation, somewhat like a trademark. It is a transferable, licensable, even descendible right that outlives the celebrity and can be exploited by their heirs. Te second facet of the right, odd as it might sound, is the right to privacy—the right to be leſt alone and to prevent the representation of one’s personality without permission.
Celebrities usually charge a licence fee for the use of their name, image or other attributes in advertising or merchandising. Te unauthorised use of a celebrity’s personality can be a species of passing-off, of unfair competition or of misrepresentation, and can even cause reputational damage. It can also amount to a breach of confidence or a violation of privacy.
During the early 1990s, courts were reluctant to consider celebrity marks as subject matter under a trademark regime. But gradually the scenario is changing:
UK and Europe
Te UK Patent Office has revised advice given to its own examiners in connection with the trademarking of the names of famous people and groups. It referred to past court decisions on trademarks for Elvis Presley and Arsenal.
In a decision of 1997, a UK court ruled that ‘Elvis Presley’ could not be registered as a trademark for memorabilia. Elvis fan and businessman Sid Shaw challenged the trademarks registered by a company selling toilet preparations and other products branded as Elvis Presley. Te court ruled that neither the deceased singer nor anyone else exclusively owned the name and that it was so well known that it was no longer distinctive and therefore not eligible for trademark protection.
Ten, in 2001, the UK court ruled that the trade mark ‘Arsenal’ was validly registered, even though it could be and had been used by others in a non- trademark sense. Te judge concluded that this did not automatically make the trademark non- distinctive for scarves and other merchandise associated with the football club.
Although Arsenal is the name of a famous football club rather than the name of an individual or group, the Patent Office says that a similar point arises with the name of a person or organisation that others wish to use in order to demonstrate their support/allegiance. Tese should be registrable as trademarks for relevant goods, according to the office. Te decision in the Arsenal case indicates that such protection should not be automatically refused or invalidated in these circumstances.
Practice Amendment Notice
Te Trademarks Registry at the UK Patent Office has recently issued a Practice Amendment Notice governing the ‘Names of Famous People (living and deceased) and Groups’. Tis amendment allows celebrities to control the use of their names beyond their primary field of operation and would effectively give them far greater control, backed up by law, than is allowed to others who register their business name as a trademark for typical commercial activity.
www.worldipreview.com
World Intellectual Property Review March/April 2011
35
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