In dealing with large brands, often we are asked about protecting and commercialising personal names. Brand management, as it relates to personal names, brings with it certain peculiarities, which one should be aware when operating in this sector.
A talking point – Eddie Irvine and passing off
The main UK case often referred to is Irvine v Talksport. In this case Talksport, to advertise their radio station, inserted an image of a radio into a picture of well-known motor racing diver Eddie Irvine. The image of Mr Irvine had been legitimately sourced. Collateral was then distributed containing the modified image.
The case confirmed that false product endorsement could constitute passing off. The key elements for any complainant to demonstrate would be that:
- the complainer had a significant reputation at the time that the acts complained of took place, and that
- the actions of the defender created a false message which would be understood by a not insignificant section of the market that the defender's goods had been endorsed, recommended or approved by the complainer.
This case underlined, as with any passing off action, that the presence of goodwill and misrepresentation was key.
Rihanna and Top Shop
Subsequently, the case of Rihanna v Arcadia arose. In this case, Top Shop utilised an image of Rihanna upon a t-shirt. The image had been legitimately sourced, however its use upon a t-shirt had not been cleared by the musician.
Notable in this case were the facts that Rihanna had previously licensed use of her image to Top Shop, however, such arrangements were not current. Further, she had an active merchandising programme.
The court, careful to note that the decision turned on its particular facts, found in favour of the musician. Rihanna had goodwill and reputation connected with her business activities and use of the image amounted to passing off because it was likely to deceive members of the public into thinking that the clothing had been approved and authorised by her, or rather, simply put, the use of the image gave rise to a lie, a lie which had a material effect upon the buying decision of consumers.
Elvis Presley - a little less action
Contrast this with the Elvis Presley case from 1999. In this case, which concerned the registration of certain Elvis-related marks by the principal organisation responsible for commercialising his image and likeness, the importance of a link with the source of the goods was underlined. It stated:
"It would not be accepted without evidence that the marks Elvis or Elvis Presley would denote to anyone a connection between [Elvis Presley] Enterprises and Elvis products so as to distinguish its products from the opponent's products. In the field of memorabilia bearing the name or likeness of a famous figure, it must be for that person to ensure by whatever means might be open to him or her that the public associated his or her name with the source of the goods. There should be no a priori assumption that only a celebrity or his successor could ever market (or licence the marketing of) his own character".
This was reiterated in the subsequent trade mark case concerning the mark "DIANA, PRINCESS OF WALES", which reiterated the essential function of a trade mark, being to guarantee that the items bearing it had originated under the control of a single undertaking responsible for their quality, and that unless such control could be shown, the use of a famous name to endorse a product was not trade mark use.
In addition, one should not forget the international position, given the ease by which advertising and other content can flow around the world via the internet. For example, New York Civil Rights Law states that it is a misdemeanor for:
“[a] person, firm or corporation [to use] for advertising purposes, or for the purposes of trade, the name, portrait or picture of any living person without having first obtained the written consent of such person, or if a minor of his or her parent or guardian...”
Van Morrison allegedly recently fell foul of this statute, having used a photograph of the wrestler Billy Two Rivers upon an album cover and in related collateral, without consent, leading to an out of court settlement.
What do you need to do?
So, what can one draw from the above cases:
- Firstly, if you have a well known name, protect it and address unauthorised use quickly and firmly, so that its status as a badge of origin is maintained. Implement monitoring services, including those relating to shopping, resale and auction sites, and have in place a set of styles for addressing quick "takedown".
- Secondly, actively exploit it and make sure in any third party exploitation arrangement provisions surrounding extent and manner of use, and product approval and quality, are implemented.
- Thirdly, and as with any other mark-related matter, retain evidence, as in subsequent proceedings demonstrating goodwill and the scope for misrepresentation will be hugely important.
Get in touch
To discuss brand management matters, contact Jamie Watt at [email protected]