While millions watched Usain Bolt's triple gold medal and world-record breaking performances during the 2008 Olympic Games in Beijing, some were making plans to profit from the sports celebrity's meteoric rise to stardom without any regard for or reference to him.
Merchandise, trade marks and websites bearing, comprising or displaying the athlete's name or image burgeoned within days of the Olympian's historic feats, falsely implying either an association with or an endorsement by Usain Bolt. Some particularly ingenious people who were evidently tracking the his steady rise to success over time filed pre-emptively for the registration of intent-to-use trade marks comprising Bolt's name or derivatives thereof, in various countries including the US, Jamaica and, not surprisingly, China which received several such applications.
The discovery of these activities stirred not only quick action by Bolt's management team but also prompted the intervention of government of Jamaica (GOJ) officials who publicly condemned the commercialisation without authorisation of the celebrity's name and image. The Jamaica Intellectual Property Office (JIPO) even unilaterally rejected on the basis of bad faith some Usain Bolt trade mark applications and issued a public statement pledging to do the same in relation to other famous Jamaican athletes.
Although the GOJ lamented the loss of potential revenue that could be earned by Jamaican athletes through legitimate endorsements and character merchandising, local fans were not unanimous in their condemnation of the unauthorized acts. Some street vendors who were making a quick buck by selling T-shirts bearing Bolt's image called for a "freeing up of Usain goods" after Bolt's management team threatened legal action and solicited the support of the local authorities in clamping down on these activities. "The Star", a local evening newspaper, reported that these vendors considered the clampdown as "slapping food off their plates", equating the Usain T-shirts, apparently their best-selling items, with the Jamaican flag, which they were free to sell "in spreading their joy" about his victories in Beijing.
The public condemnation by the GOJ, the actions by JIPO and the move by Bolt's management to stem unauthorised merchandising were in effect taken to safeguard the celebrity's image from misappropriation. Misappropriation (or wrongful appropriation), where perpetrators take advantage of the tremendous goodwill in a celebrity's personality (his/her name, image likeness, signature, voice, mannerisms and other aspects of his/her persona) has plagued celebrities worldwide for years.
The question is how far the law goes in safeguarding a celebrity's image. The answer differs from country to country and there is tension and debate as to whether or not the frenzy of commercial activity surrounding celebrities really calls for any additional regulation. Yet, there seems to be a thread of consensus that most laws do not go far enough. This is certainly the sentiment in Jamaica where the state of protection of personality rights is apparently in flux, having been caught between the divergent approaches of the US and the UK.
The outstanding performances in Beijing that have propelled so many of our athletes to celebrity status have reignited this issue for Jamaicans in legal, sports and entertainment circles as this is not the first time the island nation has come face to face with the challenge of protecting a celebrity's image from appropriation.
Protecting personality rights
Legal protection for a celebrity's goodwill in personality appears to be most advanced in the US, although the level of protection varies by state. In several states, a celebrity has either a statutory right or a right at common law to control the commercial use of his personality (commonly referred to as a right of publicity or personality rights) and this right extends to deceased celebrities.
However, most Commonwealth jurisdictions do not recognise a right of an individual – celebrity or otherwise – to control the commercialisation of his/her image or likeness and there is no one path to the protection of a celebrity's goodwill in his/her personality in these jurisdictions. Accordingly, celebrities have had to seek protection piecemeal through established areas of law such as trade mark registration, copyright protection, libel, defamation, breach of confidence, unfair competition and, most notably, passing off actions.
These areas on their own do not provide comprehensive protection for celebrities. For example, while names and images are eligible for trade mark registration, the essence of registrability is that the trade mark must be distinctive (inherent or acquired), or capable of distinguishing, the products/services of different undertakings. Further, the registration of a particular image of a person as a trade mark would grant exclusivity only to the use of that image (and confusingly similar images) in respect of the goods/services covered and not to the overall image of the person in respect of any good or service. Copyright, while protecting photographs of images, like trade marks, only protects the particular image illustrated in the photograph and not the overall image from unauthorised exploitation.
Canada is the Commonwealth country that most closely follows the US approach by treating appropriation of personality as a separate tort (actionable civil wrong), albeit restricting it to endorsement-type situations. Some of the most notable Canadian cases concern celebrity athletes. In the case of Athans v Canadian Adventure Camps Ltd the court held that Athans, a professional ski athlete, had a proprietary right in the exclusive marketing for gain of his personality, image and name that the law entitled him to protect if invaded. In the case of Krouse v Chrysler Canada Ltd professional football player Robert "Bobby" Krouse was awarded damages for the unauthorised use of his photograph and the Court of Appeal recognised appropriation of personality as a separate tort.
Australia has moved towards extending the tort of passing off to protect goodwill in personality, but stopped just short of extending it to protect an image where the unauthorised use did not involve one of the classic elements of the tort, misrepresentation. A ruling by Justice Pincus in the Dundee case inferred that a passing-off action could succeed to protect the use of an image which had no connection with any business at all and that a misappropriation of commercial reputation was sufficient to ground the action. However, this was not followed in subsequent cases (such as Pacific Dunlop Ltd v Hogan), which maintained that the element of misrepresentation had to be present.
The UK, whose courts provide the most persuasive jurisprudence for Jamaica, has recently moved towards greater protection for celebrities (see, for example, Irvine v Talksport). Notwithstanding this, the concept of a sui generis or stand alone right of publicity is yet to be fully embraced by British courts. In fact, resistance to this right in the UK has been indomitable. It has been stated, and the courts have generally supported the view, that a complete prohibition of unconsented use of a name or image would be unjustifiable, undesirable and impracticable, especially with regard to the operation of mass communication media. Unauthorised use or misappropriation of a celebrity's image is only actionable by law in the UK if the totality of the circumstances aligns with the requirements of the tort of passing off and involves a false endorsement. Essentially, if the classic trinity of the tort, namely, (1) goodwill (on the part of the claimant), (2) misrepresentation (by the defendant) and (3) damage (actual or probable) to goodwill (sustained as a result of the defendant's actions) is not established an action in passing off will simply not succeed.
Jamaica's ground-breaking attempt
In the 1994 case of The Robert Marley Foundation v Dino Michelle Ltd (the Bob Marley case) the Jamaican courts attempted to push the traditional bounds of the tort of passing off by recognising the existence of a property interest as distinct from a privacy interest attached to a personality.
In that case the defendant Dino Michelle applied the legendary Bob Marley's image to T-shirts and began selling them without any authorisation from the representatives of the deceased celebrity's estate the Robert Marley Foundation. The Court held that there was an unauthorised commercial use by the defendant of Bob Marley's name and likeness on T-shirts which constituted "an invasion or impairment of the plaintiff's exclusive right, resulting in damage".
In a surprising departure from UK and Caribbean authorities, Justice Clarke held: "Although no West Indian or English decisions recognize property in personality per se, dicta in cases such as Clark v Freeman and Dockrell v Dougall ... support the concept of property interest as distinct from a privacy interest attached to personality." The judge ventured further into uncharted territory by opining that "just as the law recognizes property in goodwill of a business so must the law recognize that property rights attach to the goodwill generated by a celebrity's personality. On that basis those rights are violated where the indicia of a celebrity's personality are appropriated for commercial purposes. And the principles of unjust enrichment demand that a person must not 'unjustly' benefit at the expense of another."
The Court held that "Bob Marley, a celebrity of renown at home and abroad, had a right to the exclusive use of his image and likeness. The right entitled him to exploit it commercially ... That right survived his death."
The Bob Marley case has, however, not been affirmed by any appellate court in Jamaica and as mentioned earlier such attempts to extend or reinvent the tort of passing off to better accommodate the commercial realities of appropriation of personality have been met with great resistance in the UK where Jamaica's final Court of Appeal, the Privy Council, still resides.
The status of the "new or extended tort" has been questioned in British cases subsequent to the Bob Marley case such as Re Elvis Presley Trade Mark, which upheld the view that no licence is required for character merchandising in the UK. Further, the British courts have narrowed protection for celebrities to actions involving false endorsement type situations as in the case of Irvine v Talksport Ltd where the English Formula 1 racing driver, Eddie Irvine, succeeded in a passingoff action having been the subject of a false misrepresentation that he had endorsed the defendant's radio programme. The action succeeded because Irvine had built up sufficient goodwill and the advertiser conveyed the impression that he actually endorsed the product.
Re Elvis Presley Trade Mark also seemed to limit the applicability of trade marks by holding that celebrity names and signatures may be more descriptive of the memorabilia bearing the mark than distinctive of the trade source of the goods. It is noted however that celebrity names have subsequently been accepted for registration by the UK IP Office and this is also a growing practice in the JIPO which routinely adopts UKIPO practice.
New ground has been gained with the privacy aspect of personality rights in the UK with the ruling in the case of Douglas v Hello! where the court applied the law of breach of confidence and the Human Rights Act 1998 and awarded damages to famous actors Michael Douglas and Catherine Zeta-Jones after unauthorised photographs of their wedding were sold to and published by Hello! magazine. Although Jamaica, like the UK, does not recognise a right to privacy per se this case may be used as persuasive precedent in Jamaica.
What next for Jamaican celebrities
Although attempts at establishing a separate tort of appropriation of personality in Jamaica may have been stymied, with the direction of Commonwealth decisions, it does appear that Jamaican celebrities can still benefit from some protection within the boundaries of the tort of passing off particularly where a false endorsement is involved. In respect of character merchandising, celebrities can also, with qualification, use the trade mark registration system and copyright laws and fall back on principles of breach of confidence and unjust enrichment in mounting their claims against perpetrators.
Like Bolt, Jamaican jurisprudence was clearly several metres ahead of some of its Commonwealth counterparts with the Bob Marley first instance decision on the tort of appropriation of personality. With Jamaican athletes gaining more global recognition and becoming increasingly vulnerable to misappropriation, the Jamaican legislature may have to consider whether to step in and create a stand-alone right of publicity or wait for the courts to make another bold attempt.
Originally published in www.managingip.com May 2009.
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.