updated on 14 February 2017
QuestionHow is English law moving toward better recognition and protection of celebrities’ image rights as valuable commodities?
As the world increasingly recognises online brands, social media and celebrity endorsements as a commercially lucrative industry, the right for celebrities to protect their image or personality has become much more of a concern.
Cases such as Rihanna’s passing off action against Topshop in 2012 and now the $50 million lawsuit brought by Run-DMC against Amazon and Walmart, which alleges that the two companies sold products branded with the group’s name without their permission, show an interesting development in how English law may, or ought to be, moving toward recognising the importance of protecting celebrities’ marketing powers.
Unlike in the United States, the United Kingdom does not have a distinct law to protect image or personality rights. Instead, under English law celebrities are protected by a combination of intellectual property remedies such as trademark infringement, data protection, passing off and copyright infringement. However, many argue that this provides fragmented and inadequate protection for celebrities’ images; which are now valuable commodities that can be bought, sold, endorsed and licensed.
A passing off claim is a common action which celebrities take against exploitation of their image. This is relevant when a person’s likeness, name or image is capable of attracting goodwill, and that the unauthorised use of this image causes damage to the person’s goodwill or reputation. In Rihanna’s case, Topshop had started selling T-shirts branded with an image of Rihanna. Despite Topshop having the license to use the image from the photographer, it did not have Rihanna’s permission. The court held that the sale of the top with her image on amounted to passing off and an infringement of her intellectual property rights, as it would deceive consumers into thinking that the tops were authorised by Rihanna.
The ability to establish a celebrity’s goodwill in his or her image has become easier through merchandising, licensing and endorsement deals. What’s more, cases such as Rihanna’s demonstrate how the crossover between fashion and music, with musicians developing their own fashionable merchandise labels beyond the standard of basic music T-shirts, has further broadened the scope of what constitutes ‘goodwill’ for music artists. This all leads to further consumer confusion and an easier route for music artists to prove damage to their goodwill, as consumers are likely to be led to believe that fashionable products with the artist’s image on are part of the artist’s official merchandise.
The recent $50 million action taken against Amazon and Walmart by Run-DMC is another example of how the courts are being faced with celebrities – and in particular music artists – attempting to protect their image rights. In this case, Amazon and Walmart are being accused of selling products, including T-Shirts, wallets and hats branded with the Run-DMC logo. If the members of Run-DMC have registered their logo as a trademark, it may be possible for them to bring a trademark infringement action on the basis that there has been an unauthorised use of their trademark on similar goods, which is likely to result in consumers being confused as to RUN-DMC’s association with the products.
The court’s approach to Rihanna’s case shows a step in the direction of the law acknowledging a celebrity’s right to control the reproduction of her or his image. The result of the Run-DMC case is likely to show whether the law’s current position has progressed further, to the point where celebrity images are acknowledged as the valuable commodity that they are. Some may argue that the law’s shift in this direction is merely succumbing to the -vast marketing power that celebrities already enjoy. However, others may consider, from a commercial perspective, that a celebrity’s image should be protected from being exploited like any other business asset.
Stephanie Lavington is a third-seat trainee solicitor in the technology, media, commercial and intellectual property department at Shoosmiths. She is based at the firm’s Milton Keynes office.