Image Rights

Carissa Rodulfo

Famous persons have sought to protect their identities against unlicensed and unlawful profiteering. This is because due to their notoriety, their image may be used in conjunction with a vast array of products and services in order to infer their endorsement. Courts have found that celebrities have a right to control and profit from the commercial use of their name, likeness and persona. This is known as image rights. Causes of action in relation to the breach of image rights are dependent on jurisdiction. As the courts in Trinidad and Tobago have not addressed the subject of image rights, practitioners must continue to monitor changes in the law in other countries in order to defend the rights of persons whose reputations have been abused for commercial gain.

 

In the USA, the right of publicity protects against unauthorized commercial exploitation of a person’s likeness or identity. The case of Haelan Laboratories v Topps Chewing Gum[1] highlights the fact that sports persons possess a property right in their own image. This enables them to protect against commercial misappropriation and preventing the unjust benefiting of others from their likeness. However, where a game attempted to replicate school teams through avatars of their image/likeness such as their jersey numbers and height, weight, build, skin tone, etc without their permission, it was held that there must not be a ‘transformative use’ of one’s image for there to be an infringement to the right of publicity – Keller v Electronics Inc.[2] The product containing a celebrity’s likeness must not be so transformed that it has become primarily the defendant’s own expression rather than the celebrity’s likeness. If this is the case, there is no liability because the expression would be that of the creator and not the person’s persona. 

 

In the UK, there is no specific area of law called “image rights”, but one’s image can be protected by reliance on the tort of passing off. As the case of Rihanna v Arcadia Group Brands[3] demonstrates, in order for passing off to succeed in a claim, the following must be satisfied: 

• The claimant must own goodwill in relation to its business, goods or services;
• The defendant, in the course of its trade, must have made a misrepresentation to the effect that the goods or services that it supplies are connected in some way to the claimant. 
• There must be a real likelihood of confusion in the mind of the public that there is or might be a material connection between the defendant’s goods and services and those of the claimant; and
• The claimant’s goodwill has been harmed as a result of the defendant’s conduct.

 

Intention of the user of the image appears to be irrelevant. The Court came to this conclusion in Edmund Irvine v Talksport.[4] The mere fact that the Defendant expressed that its intention was not to mislead the target audience was not sufficient to repel the court’s conclusion. Given that in manipulating the image in such a way as it had done, the Defendant’s intention was to convey the message to the audience that the company was so good that it was endorsed and listened to by the Claimant.

 

Europe has an area of law called image rights. In Italy, for example, a celebrity’s likeness cannot be displayed, reproduced or sold without the individual’s consent. In Rivera v La Gazzetta dello Sport[5], the Defendant had published some photos on the cover of its brochure that depicted the Claimant lifting trophies won with his club. The Claimant brought an action for breach of image rights. The court held that there was a breach of the claimant’s image rights, as the commercial and lucrative goals therein outweighed the documentary scope of the brochure. Even with this, it is noteworthy that in Europe, public interest, including the right to impart information, may in some cases outweigh the right to enforce one’s image rights.

 

In the Caribbean, the possibility of litigation of this area or something of such semblance remains somewhat unaddressed as there is no cause of action in “image rights”. Invasion of privacy is not a viable cause of action because constitutional rights apply vertically, that is, between individual and State and not horizontally. In referencing Canadian jurisprudence, Jamaica has developed the tort of “appropriation of personality rights”. In order to have a viable claim in this area, the person must prove:

• That his/her persona (e.g. image, likeness, reputation, persona etc) was marketable;
• That his/her persona has been exploited by another person in such a way that it clearly identifies the person; and
• That the other person has not ascertained the permission of the person.

 

In Robert Marley Foundation v Dino Mitchell,[6] the Defendant was liable for appropriation of personality where he sold t-shirts with the RB image and ‘Bob Marley 1945-1981’ without consent. Marley had a persona that is marketable, his image used in connection with jerseys etc., his image was exploited without his/his estate’s permission, for example, to promote the Defendant’s shirts. While the Court recognized that passing off could have been another cause of action, it is clear that personality rights extend to the image, likeness, reputation, persona and other aspects of someone’s personality.

Given the lack of case law regarding image rights in the Caribbean, an  alternative approach for the region to consider is the creation of sui-generis legislation, which would enable the registration of a personality and “images” associated with the personality. Personality’s name(s), nicknames, voice, signature, likes, mannerisms and personal attributes, as well as film footage of the personality may be registered in some jurisdictions.[7] In these jurisdictions, an image will be protected only if it is distinctive and if it has actual or potential value. A protected image is infringed when there is an image identical or similar to it used without the proprietor’s consent for “a commercial purpose or a financial or economic benefit”. Damages, injunctions and account for profits are the remedies contemplated where a breach is found to exist. However, these jurisdictions recognize that image rights are not absolute and stipulate instances which will not constitute infringement, e.g. in news reporting, commentary, satire, for education, etc.

 

Nevertheless, as the laws of the UK remain the most persuasive precedent for Commonwealth Caribbean states, it is likely that our courts will adopt the approach of using the tort of passing off where an image rights claim arises.

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[1] 202 F.2d 866 (2d Cir. 1953)

[2] 724 F.3d 1268 (9th Cir. 2013)

[3] [2015] EWCA Civ 3

[4] [2003] EWCA Civ 423

[5] Elena Martini, ‘Gianni Rivera Against Gazzetta dello Sport in Image Rights Dispute’, (2015) https://martinimanna.com/gianni-rivera-against-gazzetta-dello-sport-in-image-rights-dispute/ (accessed 10 January 2022)

[6] (1994) Supreme Court of Jamaica, No. CL R-115 of 1992 (unreported)

[7] The Image Rights (Bailiwick of Guernsey) Ordinance 2012