Celebrity merchandise and the tort of passing off
Tempted by a topic of intellectual property law on the character merchandising, I was taken to write for some of the issues encompassing the area.
Celebrities tend to seek protection of their personality’s business value under, inter alia, the tort of passing-off.[1] According to the tort of passing-off, “nobody has any right to represent his goods as the goods of someone else”.[2] In terms of the “classical trinity”, a passing off action prevents a misrepresentation by the defendant leading to confusion (or deception) and causing damage to the goodwill acquired by the plaintiff in his goods, name, mark, etc. Apart from the above the celebrity has to prove that there is a “common field of activity” between the parties, which indicates the misrepresentation and the confusion that was created to the public. If the celebrity fails to prove such a connection then the case will collapse. [3]
However, in the recent case of Irvine v Talksport Ltd[4], Laddie J. rejected the common field of activity requirement on the basis that it severely limited the application of the tort of passing off. Instead, the requirement for a successful case is goodwill and misrepresentative endorsement. Although this case has marked a dramatic change in the law of the United Kingdom, it only applies to endorsement cases and not merchandising cases. Therefore, celebrity merchandising still enjoys very little or no protection at all.
Before we can draw any conclusions, we need to understand the difference between merchandise and endorsement. Endorsement of a product is when someone tells to the public that he approves of the product and is happy to be associated with it. On the other hand, merchandising could be the sale of memorabilia. For example, a porcelain plate bearing the image of the late Diana, Princess of Wales could hardly be thought of as being endorsed by her, but the enhanced sales which may be achieved by virtue of the presence of the image is a form of merchandising.[5] If that is the case should Diana have to prove a common field of activity in order to succeed in a claim against undesirable exposure?
I believe that the development of the law in this area seems to be problematic. In my view, instead of patching up the current laws, the legislators should create new ones which will allow celebrities to protect their name, likeness and voice, by providing them with the right to control and profit from the commercial use of one’s name, image...etc, and prevent unauthorized appropriation of the same for commercial purposes.
Further Reading:
Scanlan, G. (2003) “Personality, Endorsement and everything: The Modern Law of Passing Off and the myth of the Personality Right” European Intellectual Property Review, E.I.P.R. 563.
Bains, S. (2007) ‘Personality rights: should the UK grant celebrities a proprietary right in their personality? Part 1’ Entertainment Law Review, Ent. L.R. 164
Torremans, P. (2008) ‘Intellectual Property Law’ (5th Edn) Oxford: Oxford University Press
MacQueen, H. et al. (2008) ‘Contemporary Intellectual Property’ Oxford: Oxford University Press
[1] Klink, J. (2003) ‘50 years of publicity rights in the United States and the never ending hassle with intellectual property and personality rights in Europe’ Intellectual Property Quarterly, I.P.Q. 363
[2] ibid
[3] Aldo De Landa Barajas. (2009) ‘Personality rights in the United States and the United Kingdom - is Vanna too much? Is Irvine not enough? ‘Entertainment Law Review, Ent. L.R. 253
[4] Irvine v Talksport Ltd (Damages) [2002] EWHC 539; [2003] EWCA Civ 423
[5] Per Laddie J in Irvine v Talksport Ltd [2002] 2 All ER 414 at 418b
What are your opinions on removing the common field of activity by Laddie J? In my view the concept could have been useful way of ensuring that the tort did not become a tort of misappropriation. By removing it it seems to be allowing the way for misappropriation as public don't need to be confused? I think the common field of activity could have been expanded to encompass personality and character merchandising instead of simply being abandoned. Although perhaps misrepresentation is sufficient to prevent the tort of misappropriation, but misrepresentation seems to be edging its way to misappropriation?
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