Rachael Lodge Corrie, Partner at Foga Daley, assesses the current circumstances for protecting celebrity names and their likeness in the Commonwealth Caribbean spurred by Usain Bolt's attempt to trademark the "Lightning Bolt".
Earlier last year, the eyes of the IP community were on Jamaican sprint legend Usain Bolt after it was reported that he filed a trademark application with the U.S. Patent and Trademark Office for his "Lightning Bolt" victory pose (Figure 1).
While many were of the view that this was the first time Usain was applying to trademark this pose, a review of his trademark portfolio reveals that this victory pose, along with a family of other "Bolt" related marks have been registered in numerous jurisdictions worldwide from as early as 2009.
It is not unusual to see trademarks registered for a celebrity's name, signature, celebratory poses, and gestures. Some examples include English footballer Jesse Lingard's "JLinz" goal celebration pose (Figure 2), Mo Farrah's "Mobot" silhouette trademark (Figure 3), Michael Jordan's "Jumpman" logo (Figure 4) and his signature jersey number "23" among many others, all of which immediately bring the celebrity in question to mind.
In many jurisdictions, including the Commonwealth Caribbean, there is no statutory right of publicity and as such, many celebrities (and sometimes their Estates) have relied on trademark law as a way to protect their persona and prevent others from taking advantage of their goodwill.
Presently, only two cases have been before a court in the Commonwealth Caribbean which address personality rights in the form of the tort of appropriation of personality. In the case of The Robert Marley Foundation v. Dino Michelle Limited2 the Defendant, Dino Michelle produced and sold T-shirts and other merchandise bearing the image of Reggae music icon, Bob Marley. The Marley Foundation was responsible for issuing licences for the use of Bob's image and brought a claim against the Defendant for passing off as well as the tort of appropriation of personality – a first in Jamaica. The claim was based on the argument that the public would be misled to believe that branded merchandise was being manufactured and sold by the late singer's Estate or that there was a commercial arrangement between the Marley Foundation and the Defendant.
The court ruled in favour of the Marley Foundation reasoning that celebrities ought to enjoy an exclusive right to use their images and likeness, even after death in that just as the law recognizes property in the goodwill of a business, so too should the law recognize property rights attached to the goodwill generated by a celebrity's personal. Further, that those rights would be violated where the indicia of a celebrity's personality are appropriated for commercial purposes and the principles of unjust enrichment demand that a person should not unjustly benefit at the expense of another.
A subsequent case in Jamaica saw the court going a step further to rule that a Claimant in an action for appropriation of personality need not be a celebrity as the tort targets the wrongful commercial use of the personality and the loss of marketing of an individual's image, whether or not they are a celebrity.
Furthermore, when the Cricket World Cup was hosted in the West Indies in 2007, sunset legislation was introduced that specifically prohibited the use of World Cup images, including the image of any squad member for commercial purposes. However, post World Cup, no further action was taken to implement permanent legislation related to the protection of image rights.
Although the Jamaican court has recognized the common law tort of appropriation of personality, it is important to note that these two decisions have not been affirmed by any appellate court in Jamaica, nor by the Judicial Committee of the Privy Council in the United Kingdom, which is currently the final Court of Appeal for Jamaica. Cases from the U.K. have made it abundantly clear that there is no "image right" per se and it is not possible for a celebrity to claim a monopoly in their image as if it were a trademark or a brand (See Douglas v. Hello! Ltd. (No. 3 [2007] UKHL 21 at 293). Instead, celebrities must rely on other causes of action such as privacy rights, trademark infringement, passing off, data protection, and breach of confidence among others.
This was reiterated by the UK courts in the case of Fenty v. Arcadia Group Brands Ltd. And Topshop/Topman Ltd.3, whereby the Defendant, British fashion brand Topshop, was selling t-shirts featuring a photo of Rihanna, taken from a video shoot for her "Talk That Talk" album. Although Topshop had received a licence for use of the image from the photographer who owned the copyright in the image, Rihanna initiated a claim for passing off, claiming that a substantial number of people buying the product would think she had endorsed it when she had not. Topshop countered that Rihanna was seeking to assert an image right by attempting to control the licensing of her name or likeness and that this was not recognized in English law. Ultimately, the UK Court of Appeal unanimously affirmed the High Court's decision and held that the sale of the item without Rihanna's approval amounted to passing off. While the court reiterated that there is no "image right" which allows a celebrity to control the use of their name or image, in this instance, the court found that the elements of the common law tort of passing off had been met. Rihanna was able to show that she had goodwill in the UK and was well known in both the music and fashion industries and by their actions, Topshop had made a misrepresentation to the purchasing public that would lead them to believe Rihanna had endorsed the products herself or that it was official merchandise, particularly because Rihanna had previously had an association with Topshop. Further, Rihanna was able to prove that the sale of the t-shirt was damaging to her goodwill and directly affected her own business in the fashion industry.
Although ruling in Rihanna's favor, the court reiterated that the use of a celebrity's image on a commercial good does not automatically amount to an actionable case of passing off, as the court was of the view that there is no expectation from the public that the goods bearing the celebrity's image actually originate from said celebrity. Therefore, should a case from Jamaica regarding the tort of appropriation of personality be appealed to the Privy Council, it is unclear how the tort would be treated.
In the absence of a statutory regime that guarantees the protection of persona, trademark protection has proven to be one of the predominant ways for a celebrity to assert ownership and prevent the exploitation of one's image. Of course, to do so, these poses and images must still satisfy the requirements for trademark registrability; particularly, they must be applied for in relation to specific goods and/ or services, must have distinctive character, and must be capable of functioning as an indicator of origin and distinguishing the applied for goods and services applied for from other undertakings.
Footnotes
1. https://trademarks.ipo.gov.uk/ipo-tmcase/page/Results/1/UK00003314293
2. (1994) 31. JLR 197
3. [2015] EWCA Civ 3
Originally published by The Trademark Lawyer.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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