A brand New Image? Should Personality Rights be

'Misappropriation without misrepresentation’ NLJ 154.7119(386).

33 Crucially, the common threads in a passing-off action remain: goodwill, misrepresentation and damage must all be established, and it is therefore wrong to say that the law of passing off has been extended in recent years to protect personality rights per se. David Rose and Emily Shaw ‘Misappropriation without misrepresentation’ NLJ 154.7119(386).

34 Mark Smulian ‘Image Rights and Copyright: We've Got Your Number’ 2004 LSG 101.7(26).

35 See for example the remarkable jingle in the opinion of Walton J. in Wombles v Wombles Skips [1977] R.P.C. 99 at p.4: "Now everything these days has to be exploited commercially and the Wombles are no exception ... "; and the notion of deciding a superfluous case in Day v Brownrigg (1878) 19 Ch.D. at p.301.

36 Simon Smith Image, Persona and the Law (Sweet & Maxwell 2001).

37 Jeremy Reed, Hogarth Chambers. http://www.hogarthchambers.com/hogarth/Publications/Seminar%20notes/IP,%20Media%20and%20Entertainment/Image%20Rights.pdf.

38 See for example Douglas v Hello! Ltd (No. 5) [2003] E.M.L.R. 31, 642, 720, 721, and Mark Thomson and Hugh Tomlinson QC ‘OK! What have you bought now?’ (2005) NLJ 155.7180(893).

39 [1991] FSR 62.

40 This encompassed issues such as marriage secrets: Ungoed-Thomas J. in Argyll v Argyll [1967] Ch. 302. (But that protection was narrow in scope).

41 Following the Spycatcher case, Attorney General / Guardian [1990] 1 AC 109 the courts still ask as to whether information can be classified as secret per se. A duty not to publish such information can then arise outside of contractual or other special relationship. In determining if such a duty arises, the judges apply the test of Art. 10 (2) ECHR and seek to strike a balance between the freedom of the press as protected by Art. 10 (1) ECHR and the right to private life, as protected by Art. 8 ECHR. On the fine-tuning of that balance, the courts look to the Press Code. In that Code long lens photography is prohibited. The cases show that the Courts, having established the basic framework, still struggle to find the line in the grey area between the values. For example Campbell / Mirror Group Newspapers [2003] EMLR 2, p. 39. Theakston v MGN Limited [2002] EMLR 22.

42 Hazel Carty. ‘Advertising, Publicity Rights and English Law’ Intellectual Property Quarterly 2004 at p.212.

43 Indeed, Goodenough, "Retheorising Privacy and Publicity" [1997] I.P.Q. 37 (Goodenough suggests that we should accept a general right in "identity").

44 ‘Personality Database’ a project of the AHRC Research Centre for Studies in Intellectual Property and Technology Law based in the School of Law at the University of Edinburgh. See: http://www.law.ed.ac.uk/ahrb/personality/index.asp.

45 J. Thomas McCarthy, ‘The Rights of Publicity and Privacy’ (1992) § 5.8[B], at 5-66.

46 Madow, ‘Private Ownership of Public Image - Popular Culture and Publicity Rights’ (1993) 81 California Law Review 125 at 167.

47 First proposed by Warren and Brandeis, primarily as an antidote to journalistic intrusiveness. ( See Samuel D. Warren & Louis D. Brandeis, ‘The Right to Privacy’, 4 HARV. L. REV. 193 (1890) at 195 - 196.)

48 For example in Roberson v. Rochester Folding Box Co., 64 N.E. 442, 447 (1902).

49 See O'Brien v. Pabst Sales Co., 124 F.2d 167, 169 (5th Cir. 1941), cert. denied, 315 U.S. 823 (1942), where the Fifth Circuit held that the "all-American" college football player had "repeatedly posed for photographs for use in publicizing himself and [his] team," and had therefore surrendered, in part at least, his right of privacy.

50 In another respect as well, privacy theory proved a less than perfect vehicle for celebrities eager to extract the maximum possible benefit from their publicity values. A right of privacy, as a purely "personal" right, was neither descendible nor assignable. (Madow at 169).

51 ie. only if the law were to "propertize" these values, so that a celebrity could not only exclude others from using them but also transfer them for value in return, would she be able to enjoy their full benefit. – Madow at 170.

52 202 F.2d 866 (2d Cir.)

53 Harry Kalven, Jr., ‘Privacy in Tort Law - Were Warren and Brandeis Wrong?’, 31 Law & Contemporary Problems 326, 335-36 (1966) at 331.

54 Melville B. Nimmer, ‘The Right of Publicity’ (1954) 19 Law and Contemporary Problems 203. – Nimmer urged acceptance of this new property right, to meet the "needs of Broadway and Hollywood".

55 Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562, 576 (1977) (identifying its rationale as the creation of an "economic incentive" to investment in cultural endeavors).

56 See Restatement (Second) Of Torts §§ 652A - 652I. Under the Restatement's formulation, the invasion of the Right of Publicity is most similar to the unauthorized appropriation of one's name or likeness.

57 http://www.law.cornell.edu/wex/index.php/Publicity

58Cornish, W.R. & D. Llewelyn. ‘Intellectual property: patents, copyright, trade marks and allied rights’ (5th ed., London: Sweet & Maxwell, 2003) p.618.

59 Michael Madow, ‘Private Ownership of Public Image: Popular Culture and Publicity Rights’, C.L.R. 1993 at p. 133.

60 For example see Thorsten Lauterbach ‘US-style ‘personality’ right in the UK – en route from Strasbourg?’ (20th BILETA Conference), and Jan Klink. ‘50 Years of Publicity Rights in The United States and the Never Ending Hassle With Intellectual Property and Personality Rights in Europe’ 2003 Intellectual Property Quarterly, who argue that the use of separate property based publicity rights in the US leads to more security, clarity and market stability.

61 Margaret Davies, Ngaire Naffine, Are Persons Property? (Ashgate 2001) at p.135.

62 quoting Thomas Carlyle, from A New Dictionary of Quotations on Historical Principles From Ancient and Modern Sources 384 (H.L. Mencken ed., 1942).

63 Take for example the household names Major Charles Ingram, whose sole claim to fame was cheating on ‘Who Wants to be a Millionaire’, and Rebecca Loos, the PR assistant who shot to stardom as a consequence of an alleged affair with the infamous David Beckham. (incidentally, she has made several television appearances, conducted various magazine interviews, and has been offered a six figure sum from a modelling company subsequent to the incident with Beckham).

64 http://www.jadegoodyonline.com/

65 Compare this with Chantelle – another blonde who has been ironically made ‘famous for not being famous’ in the latest celebrity Big Brother.

66 http://en.wikipedia.org/wiki/Jade_Goody

67 Madow, ‘Private Ownership of Public Image: Popular Culture and Publicity Rights’, CLR, 1993

at 181.

68 Michael Madow, Private Ownership of Public Image: Popular Culture and Publicity Rights, C.L.R. 1993 at 137.

69 http://www.tomcruisenow.com/tom_cruise_salary.php

70 http://www.mercurynews.com/mld/mercurynews/news/breaking_news/14002962.htm

71 (averaging $1 million per episode) http://www.guinnessworldrecords.com/content_pages/record.asp?recordid=47798

72 http://www.hollywood.com/news/detail/id/470001 (Ray Ramano is in stong contention, receiving a staggering $1.8 million for everybody episode of loves Raymond).

73 (incidentally out of the $32 million earned by Beckham, only $17 of this was from his salary). http://econ.lse.ac.uk/staff/spischke/ec317/Handout9.pdf

74 Memphis Dev. Found. v Factors Etc. Inc. 616 F.2d 956, 960 (6^th Cir.)

75 Elvis Presley Trademarks [1999] RPC 567.

76 (who was in opposition to the registration of the Elvis Presley trade marks)

77 The court subsequently expressed reservations about extending a right of publicity to a celebrity’s estate in part because of the level of public and media participation in the creation of the celebrity. - John Frow ‘Elvis's Fame: The Commodity Form and The Form of the Person’ Cardozo Studies in Law and Literature , 7:2 (1995) at 156-157.

78 Jennifer Davis ‘The King is Dead: Long Live the King’ [2000] Cambridge Law Journal 33, at 36.

79 It may also be argued that it was Presley, his publicists, and his producers who ‘created’ Elvis-the-image: the public sphere does little but provide the common cultural material from which the image is fashioned, and the demand through which the constructed image becomes a celebrity and therefore valuable.

80 Comedy III Productions Inc v New Line Cinema (2000) 53 U.S.P.Q. 2d 1858, Calif Sup Ct, the Three Stooges case.

81 Hazel Carty. ‘Advertising, Publicity Rights and English Law’ Intellectual Property Quarterly 2004 at 252.

82 Margaret Davies, Ngaire Naffine, Are Persons Property? (Ashgate 2001)

at p.133.

83 See Edward Samuels, ‘The Public Domain in Copyright Law’, 41 Journal of the Copyright Society 137 (1993) at p.165 ; and Robert A. Baron, ‘Reconstructing the Public Domain’, 2002.

84 See Drahos ‘A Philosphy of Intellectual Property’, 54-55.

85 The English intellectual property law was strongly influenced by lobbying from commercial interests. See Drahos ‘A Philosophy of Intellectual Property’, 22 – 32.

86 Sherman and Bently ‘The Making of Intellectual Property Law’.

87 Attempts to control the image of the Princess of Wales after her death raise the question of whether it is in fact either possible or desirable to ‘own’ historical images.

88 See for example, Madow, ‘Private Ownership of Public Image: Popular Culture and Publicity Rights’, CLR, 1993 at p.138, Gaines, ‘Contested Cultures: The Image, The Voice and the Law’ (1991); Lange, ‘Recognizing the Public Domain’ (1981) 44 Law and Contemporary Problems 147 and Felcher and Rubin, ‘Privacy, Publicity and the Portrayal of Real People by the Media’ (1979) 88 Yale Law Journal 1577.

89 For example, David Lange, ‘Recognising the Public Domain’, 44 Law and Contemporary Problems (1981) at 171 (where he expressed the concern that contemporary intellectual property law is choking off the access to the ‘public domain’; and Jane M Gaines, ‘Contested Culture: The Image, The Voice and the Law’ (1991) at 232-239 (arguing that current intellectual property law may be curtailing popular cultural production).

90 Madow, ‘Private Ownership of Public Image: Popular Culture and Publicity Rights’, CLR, 1993 at 142.

91 David Wall ‘Reconstructing the Soul of Elvis: The Social Development and Legal Maintenance of Elvis Presley as Intellectual Property’ (1996) 24 International Journal of the Sociology of Law 117.

92 See also Stuart Hall, ed., ‘Culture, Media, Language, Encoding/Decoding’ (1980), p.128.

93 Hazel Carty. ‘Advertising, Publicity Rights and English Law’ Intellectual Property Quarterly 2004 at 252.

94 Sen, ‘Fluency of the Flesh: Perils of An Expanding Right of Publicity’ (1995) 59 Albany Law Review 739 at 742-743.

95 S Ricketson ‘Character Merchandising in Australia: Its Benefits and Burdens’ (1990) 1 Intellectual Property Journal 191.

96 868 F. Supp 1266 (N.D. Okla, 1994).

97 John Fiske, ‘Television Culture’ (London: Methuen, 1987)at 236, 239.

98 Madow, ‘Private Ownership of Public Image: Popular Culture and Publicity Rights’, CLR, 1993 at 239.

99 Melville B. Nimmer, ‘The Right of Publicity’, 19 LAW & CONTEMP. PROBS. 203, 216 (1954) at 216.

100 J.Thomas McCarthy, ‘The Rights of Publicity and Privacy’ (1992), § 1.1(b)(2), at 1-5.

101 John Locke ‘Two Treatises of Governmen’t, Peter Laslett (ed) 2^nd ed (Cambridge University Press, 1967, first published 1960) ‘Second Treatise’, ch V, ss 27-28.

102 See for instance, the famous case of Millar v Taylor (1969) 98 English Reports 229.

103 Madow, ‘Private Ownership of Public Image: Popular Culture and Publicity Rights’, CLR, 1993 at 182.

104 Ibid.

105 Uhlaender v. Henricksen, 316 F. Supp. 1277, 1282 (D. Minn. 1970) the federal district court opined that "A celebrity must be considered to have invested his years of practice and competition in a public personality which eventually may reach marketable status. That identity, embodied in his name, likeness, statistics, and other personal characteristics, is the fruit of his labors and is a type of property."

106 In fact it could even be seen that a persona is solely attributable to our genetic characteristics which are just there as part of our physical self.

107 Hughes ‘The Philosophy of Intellectual Property’, 340, n218. http://cyber.law.harvard.edu/IPCoop/88hugh2.html

108 Please refer to Richard Dyer ‘Heavenly Bodies: Film Stars and Society’ (Basingstoke and London: Macmillan, 1986), 5-6.

109 Not only is the personal image the product of a multitude of individual labourers, it is also a response to social norms, expectations, codes and stereotypes. See Catherine Williamson ‘Swimming Pools, Movie Stars: The Celebrity Body in the Post-War Marketplace’ (1996).

110 Margaret Davies, Ngaire Naffine, Are Persons Property? (Ashgate 2001) at p.138.

111 Judith Williamson, ‘Decoding Advertisments: Ideology and Meaning in Advertising’ 25-26 (1984).

112 i.e. it is only because celebrities have an “image”, and a significance in one sign system, that they can be used to create a new system of significance relating to the companies’ products.

113 ‘Their "associative" or "publicity" value derives from their semiotic power.’ Madow at 143 - Paul Willis asserts (in Paul Willis et al., Common Culture: Symbolic Work at Play in the Everyday Cultures of the Young, (OUP, Milton Keynes, 1990), at 1) that celebrity images are among the basic semiotic and symbolic raw materials out of which individuals and groups "establish their presence, identity and meaning."

114 Only that audience out there makes a star. It's up to them. You can't do anything about it. . . . Stars would all be Louis B. Mayer's cousins if you could make 'em up. (Jack Nicholson, quote taken from from Jib Fowles, Starstruck: Celebrity Performers and the American Public 169 (Smithsonian Institute Press, 1992) at 84.

115 Of course, the fact that value derives from public perception does not, in the Western way of thinking, defeat or modify the argument that the celebrity has created and therefore ‘owns’ her or his image – the value of a painting may be attributable as much as to the notoriety of the artist as it is to any intrinsic merit but that does not alter the perception that the artist is the author, creator and therefore owner of the work.

116John Rodden, ‘The Politics of Literary Reputation: The Making and Claiming of “St. George” Orwell’ 7 (1989) at 51.

117 A person can, within the limits of his natural talents, make himself strong or swift or learned. But he cannot, in this same sense, make himself famous, any more than he can make himself loved. – Madow at 188.

118 Todd Gitlin, The Whole World is Watching: Mass Media in the Making and Unmaking of the Left (California Press, 1980) at 146 - 154.

119 The creative (and autonomous) role of the media and the audience in the meaning-making process cannot be excised.

120 See Samuel K. Murumba, Commercial Exploitation of Personality 72 (Law Book Co 1986) at 132.

121 Madow, ‘Private Ownership of Public Image: Popular Culture and Publicity Rights’, CLR, 1993 at 196.

122 See Callmann, ‘He Who Reaps Where He Has Not Sown: Unjust Enrichment in the Law of

Unfair Competition’ (1942) 55 Harvard Law Review 595.

123 American case law has accepted this, and in the case of Bi-Rite Enterprises Inc v Button Master (555 F.Supp 1188, 1198 (S.D.N.Y 1983)), it was held that the right "prevents unjust enrichment by providing a remedy against exploitation of the goodwill and reputation that a person develops in his name or likeness through the investment of time, effort and money". Similarly, in Onassis v Christian Dior 472 NYS (2d) 254 (SC 1984) the court declared it would not allow a "free ride".

124 or simply to provide fun i.e. the transformative use of celebrity. Take for example the advertising campaign run by Schweppes in the 1990s, using lookalikes of celebrities.

125 INS v Lopez-Mendoza, 468 US 1032 (1984).

126 Here he underlined the fact that a celebrity (as celebrity, rather than as private person) becomes part of "the public domain" to be used for developing ideas.

127 See James A. Rahl, ‘The Right to ‘Appropriate’ Trade Values’, 23 OHIO ST. L.J. 56 (1962).

128 Aside from passing off, there is generally no cause of action for imitating or copying a successful product, no matter how seriously sales are diverted. Madow at 196.

129 see James A. Rahl, ‘The Right to ‘Appropriate’ Trade Values’, 23 OHIO ST. L.J. 56 (1962) at 68. Similarly, once a business idea or method has been published or put into practice, competitors are free to adopt it, "however novel, concrete, and valuable it may be."

130 Hazel Carty. ‘Advertising, Publicity Rights and English Law’ Intellectual Property Quarterly 2004 at 249.

131 the obvious example in recent years being Madonna and her homage to Marilyn Monroe.

132 Madow, ‘Private Ownership of Public Image: Popular Culture and Publicity Rights’, CLR, 1993 at 196. Madow also questions that once we trace out the influences and identify the borrowings of which even the performer or artist may be unaware, how much is there left for him to claim as his own "original" contribution?

133 Spence, ‘Passing off and Misappropriation of Valuable Intangibles’ (1996) 112 L.Q.R. 472 at 479.

134 He continues: "His value for product endorsement was at least in part 'created' by the many thousands of people who saw and enjoyed the film ... in all these circumstances it is clearly difficult to determine who 'created' the product endorsement value of the Dundee character".

135 Madow, ‘Private Ownership of Public Image-Popular Culture and Publicity Rights’ (1993) 81 California Law Review 125 at 189.

136 Madow, ‘Private Ownership of Public Image: Popular Culture and Publicity Rights’, CLR, 1993 at 199.

137 David E. Shipley, ‘Publicity Never Dies: It Just Fades Away’ (1981) 66 Cornell Law Review 673 at 681.

138 Felcher and Rubin assert that the social policy underlying the right of publicity "is encouragement of individual enterprise and creativity by allowing people to profit from their own efforts." – ‘The Descendibility of the Right of Publicity: is there Commercial Life after Death?’ (1980) 89 Yale Law Journal 1125 at 1128.

139 This justification can be seen in the only Supreme Court decision on publicity rights, Zacchini v Scripps-Howard Broadcasting 433 U.S. 562 (1977), where is was noted that the incentive rationale was on a par with copyright rationale.

140 Hazel Carty. ‘Advertising, Publicity Rights and English Law’ Intellectual Property Quarterly 2004 at 251.

141 i.e. a ‘perk of the job’ - the real incentive being the original desire to excel in sport, politics or entertainment generally.

142 Richard A. Posner, ‘The Right of Privacy’, 12 GA. L. REV. 393, 411 (1978).

143 224. "there will always be a certain supply of existing and newly-created personalities to exploit."

144 Frazer, ‘Appropriation of Personality - a New Tort’ (1983) 99 L.Q.R. 281 at 303.

145 Madow, ‘Private Ownership of Public Image: Popular Culture and Publicity Rights’, CLR, 1993 at at 218.

146 See Emanuel Levy, ‘The Democratic Elite: America's Movie Stars’, 12 QUALITATIVE SOC. 29, 31 (1989) (discussing the grossly uneven distribution of wealth among screen actors); Sherwin Rosen, ‘The Economics of Superstars’, 71 AM. ECON. REV. 845, 845-46 (1981).

147 Madow, ‘Private Ownership of Public Image: Popular Culture and Publicity Rights’, CLR, 1993 at at 218. Madow believes that a purely economic analysis has nothing to offer when it comes to evaluating the central place that celebrity has come to occupy in our culture. Consequently, it cannot help us decide whether to embrace this development warmly or resist it steadfastly

148 Rather than create rights against misappropriation, this justification focuses on the prevention of harm where there is a clear public interest also served.

149 Another version emphasizes the undesirability of permitting advertisers of dangerous or shoddy products to manipulate consumers by exploiting powerful celebrity images.

150James M. Treece, ‘Commercial Exploitation of Names, Likenesses, and Personal Histories’, 51 TEX. L. REV. 637, 641 (1973); at 647

151 However, most consumers probably “think little and care even less” about licensing arrangements between celebrities and advertisers. (Madow at p.229) In Pacific Dunlop Ltd. v. Hogan, 87 A.L.R. 14, 45 (Fed. Ct. of Austl., Gen. Div. 1989), it was said that an association of a celebrity image with a product "proceeds more subtly to foster favourable inclination towards it, a good feeling about it, an emotional attachment to it."

152 and indeed the thrust of the demand for publicity or image rights owes far more to an analogy with trade marks than with copyright or patents -.Hazel Carty ‘Advertising, Publicity Rights and English Law’ Intellectual Property Quarterly 2004 at 252.

153 Harm rather than theft is at the heart of this rationale.

154 For example Carson v. Here's Johnny Portable Toilets, Inc., 698 F.2d 831, 837 (6th Cir. 1983), where the defendant marketed portable toilets under the corporate name "Here's Johnny" but did not mislead consumers into thinking that Carson was in any way connected with the product. This case illustrates that the right of publicity is neither directed at, nor confined to, the prevention of consumer deception. The focus of the right of publicity is not the interest of the consuming public in freedom from deception but rather the celebrity's interest in controlling and benefiting from the economic value of his identity.

155 Steven Shiffrin, ‘The First Amendment and Economic Regulation: Away from a General Theory of the First Amendment’, 78 NW. U. L. REV. 1212, (1983) 1258 n.275.

156 Madow, ‘Private Ownership of Public Image: Popular Culture and Publicity Rights’, CLR, 1993 at 233.

157 As Jaffey notes, ‘commercial practice seems to presuppose merchandising rights’, (‘Merchandising and the Law of Trade Marks’ (1998) 3 I.P.Q. 240), while Shelley Lane (The Problems of Personality Merchandising in English Law--the King, the Princess and the Penguins, 1998 Year Book of Media and Entertainment Law 28, p.30) contends that the practice of licensing use of the celebrity persona is part of a process to educate the public that celebrities have publicity rights.

158 This perception is enhanced by the experience outside England of those concerned with exploiting celebrity culture.

159 Boyd, ‘Does English Law Recognise the Concept of an Image or Personality Right?’ (2002) 13 Ent.L.R. 1.

160 For one thing, we lack adequate information about the extent to which publicity rights actually stifle or deter popular cultural practice.

161 The Problems of Personality Merchandising in English Law--the King, the Princess and the Penguins, 1998 Year Book of Media and Entertainment Law 28, p.30.

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