Essay: Copyright, trademark, statutory misrepresentation or passing off

In this country [Australia], the prospective plaintiff must try to found their action in copyright, trademark, statutory misrepresentation or passing off.
The fame of an athlete is commercially valuable when attached to a product or an event. Association of aspects of the top sportsperson’s ‘personality’ ‘ his photographic image, for example, increase the attractiveness of goods and services. Tiger Woods’ image adorns Nike sports gear. Olympic gold medalists dive into endorsement deals that allow the use of their image to market products and services, sometimes with enormous effect in sales. This ‘related to trade’ endorsement where the athlete is associated with products and services related to him or her field of sport or the unrelated to trade endorsements (the athlete is associated with an unrelated product; eg, rugby players with telephones) are usually given over to the product or services provider in return for a licence fee. The celebrity receives the fee in return for the use of his personality, and that use is controlled by their contract. But celebrity endorsement is occasionally usurped or ‘stolen’ by eager advertisers without the permission of the celebrity, in violation of the celebrity’s economic interest in his own personality.
Personality rights do not exist in Australia. However, celebrity athletes can control the use of their ‘personality’ and image by trademarking their image as well as bringing an action in the tort of passing off. There is also the possibility of action for breach of the misleading and deceptive conduct provisions (s 52 and s 53) of the Trade Practices Act 1974 (Cwth). Whilst the Trade Practices Act has been useful, the intention of the Trade Practices Act was not to protect goodwill in personality. Rather, it is for protecting one against misleading and deceptive conduct.
PROTECTING GOODWILL IN PERSONALITY – THE TRADE MARKS ACT AND THE TORT OF PASSING OFF
2.1.1 The Trade Marks Act 1995
The Trade Marks Act 1995 states that a trade mark is a ‘sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with by any other person’. A sign includes any ‘letter, word, name, signature, numeral devices, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent’.
Hence, the name, image, signature or other distinctive qualities of a celebrity personality are potentially capable of being registered as trademarks. The Australian model and actor, Elle MacPherson’s name and signature are trademarked. The English Football Club, Tottenham Hotspur, has registered the trade mark Tottenham. The celebrated New Zealand horse rider Mark Todd, the Dutch footballer Jaap Stam, and Lennox Lewis, the heavyweight boxing champion, have also protected their names by trade mark registration. After the Kieren Perkins case, Mr. Perkins has managed to register images of his face as trademarks.
Celebrity names and personality marks may be registered under s 41(2). For example, Kenny Rogers’ name, picture and signature may be protected when it is placed in an advertisement for the famous Kenny Rogers’ Roasted Chicken chain of restaurants. This is because his name, picture and signature act as a badge of origin, which indicates the source of the product. However, where the registration of a trade mark is concerned, s 41(2) of the Trade Marks Act 1995 states that,
‘An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trademark is sought to be registered ‘ from the goods or services of other persons.’
In Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited, Thorpedo Enterprises sought to register the word ‘Thorpedo’ which was used to refer to the brilliant Olympic swimmer, Ian Thorpe. This case concerns issues of whether the marks are substantially identical or deceptively similar. This involved the consideration of the similarity with a registered device mark that was called ‘Torpedos’. Bennett J stated that the two marks were not substantially identical because the totality of the characteristics of the marks was taken into account and the actual words were different.
Lastly, protection can be afforded by arguing an infringement of a registered trademark. However, there is currently no binding precedent in Australia to show how successful this will be as a form of protection and there is no specific test for infringement.
Limitations
Section 41(2) of the Trade Marks Act will not apply to some celebrity names that appear on products that do not, in any way, relate to the celebrity. This is because if the celebrity name is trademarked, it would extend well beyond the traditional function of a trade mark. Lynne Weathered points this out:
‘It is observed that the role of trademarks may require re’evaluation in respect of their application to celebrity personality marks. Celebrity personality marks are often in effect the product themselves. Trademarks themselves were intended to distinguish the product, not be the product. Therefore, non traditional celebrity personality marks, when used for purposes other than indicating the origin or source of the product or service, arguably stretch the purpose of trademarks beyond the point where legal protection is justified. If legal protection should be granted to celebrities, perhaps this should be accomplished through other measures, rather than blurring the legal role of trademarks.’
Trademarking should not be used to protect character merchandising. Lord Brightman sets out the rationale for restricting the scope from extending to character merchandising in Re American Greetings Application (Holly Hobbie’s Trade Mark) (which has been cited favourably by the Australian Federal Court in Pacific Dunlop Ltd v Hogan. )
‘To my mind, trafficking in the trade mark context conveys the notion of dealing in a trademark primarily as a commodity in its own right and not primarily for the purpose of identifying or promoting merchandise in which the proprietor of the trade mark is interested. If there is no real trade connection between the proprietor of the mark and the licensee or his goods, there is room for the conclusion that the grant of the license is a trafficking in the mark.’
Samuel K Murumba also comments on character merchandising:
‘After the Holly Hobbie decision it seems clear that, for all their cumbersome and expensive registration procedure, trademarks will hardly provide protection for proprietary interests in personality, likeness or reputation.’
The White Paper, Reform on Trade Marks Law, echoes this:
‘4.42 The Holly Hobbie case illustrates the part played by trade mark licences in the rapidly’expanding activity of character merchandising. There are arguments however that character merchandising should not be a trade mark matter, since the characters are not trademarks in the first place, nor are they used as trademarks; instead they serve merely to enhance the eye’appeal of the goods. This is a matter more for the protection by copyright or design law than by trademark registration. One legitimate fear is that, since a trademark registration may be renewed indefinitely, this could be used to obtain a backdoor extension of the protection conferred under copyright law although, since character merchandising is essentially fashion’dependent, in many cases the character will have ceased to be merchandisable long before the copyright term has expired.
After careful consideration, the Government’s view is that it is virtually impossible to construct a legal framework which would distinguish between straightforward character merchandising (using for example a popular cartoon character having no independent existence as a trade mark), the practice of decorating goods such as T’ shirts or mugs with a trademark having a reputation in connection with quite different goods, and cases where a trademark simultaneously decorates the goods and distinguishes their source. It has been suggested that a sui generis character right could be created, having a finite life, but it is not clear how it could be made obligatory to use this as an alternative to trade mark protection. In short, it is felt that any attempt to legislate in this area would be likely to create legal and administrative difficulties disproportionate to any problems that it would obviate.’
2.1.2 The tort of passing off
There have been vast case law developments where the extended tort of passing off has been used to protect goodwill in personality in Australia. The tort of passing off was initially intended as a way of preventing a defendant from passing off his own goods as the plaintiff’s goods. It was later extended to cover misrepresentations on the quality of the plaintiff’s goods and cases ‘where although the plaintiff and defendant were not competing traders in the same line of business, a false suggestion by the defendant that their businesses were connected with one another would damage the reputation, and thus the goodwill of the plaintiff’s business’. Furthermore, the tort also covers cases involving the misdescription of goods, or the misuse of a descriptive term.
The Australian courts have been willing to adapt this tort in order to remedy cases of appropriation of personality. However, this approach is not without its problems, as was illustrated by cases such as Hogan v Koala Dundee Pty Ltd.
(i) Goodwill
The common law developed favourably in the landmark case of Henderson v Radio Corporation, as the court did not insist on there being a ‘common field of activity’. In Henderson case, professional ballroom dancers objected to the use of their image on the packaging of a record. They were not in the business of recording music for commercial sale, and hence, were not able to claim to be in a ‘common field’. However, they were able to demonstrate a pattern of previous appearances in advertisements which earned them an income.
The Court held that there was no need for an actual or potential area in which the parties’ trading activities conflicted. Evatt CJ stated that, although the remedy in passing off was necessarily only available where the parties were engaged in business, that expression would be used ‘in its widest to include professions and callings’. Manning J elaborated, stating that the development in advertising practices had ‘opened up a new field of gainful employment for many persons, who, by reason not only of their sporting, but of their social, artistic, and other activities, which have attracted notoriety, have found themselves in a position to earn substantial sums of money by lending their recommendation or sponsorship to an almost infinite variety of commodities’.
(ii) Misrepresentation
Cases of appropriation of personality are generally concerned with misrepresentations regarding the reputation of the plaintiff, which leads to public confusion, thereby resulting in damage or a real possibility of damage to the plaintiff.
The Australian courts have taken an expansive approach as evidenced in Henderson. The design of the record cover gave prominence to the picture of the Hendersons dancing. Hence, according to Evatt CJ, when it was viewed from a distance, as would be the case in a shop display, it could easily lead to the deception of possible purchasers. Consequently, the conduct of the defendant amounted to a misrepresentation that the business of the plaintiff was connected with the business of the defendant. The notion of a business, as noted above, was interpreted in its widest sense as including professions and callings.
The Koala Dundee case
Pincus J took a more radical approach in Koala Dundee case. The defendants had made unauthorised use of images deriving from the plaintiffs’ film, ‘Crocodile Dundee’, and, in particular, had used the name ‘Dundee’ on their merchandise. According to Pincus J, it was ‘possible to bring a passing off action in respect of an image, including a name, unconnected with any business at all’.
This was a novel and wide proposition. Pincus J’s view is contrary to previous Australian authorities, as it suggested that liability need not be based on misrepresentation, and it would suffice if there was a misappropriation of commercial reputation. This approach has not been followed in subsequent Australian cases. In Pacific Dunlop Ltd v Hogan the Full Federal Court maintained the need to show a misrepresentation and damage to goodwill, rather than the broader notion of misappropriation set out in Koala Dundee case. The requirement of misrepresentation was subsequently maintained in Talmax case.
2.2 THE RIGHT OF PUBLICITY UNDER UNITED STATES LAW
To differentiate the jurisdiction, I will explain about the condition of publicity right (right of personality) in US. At last count twenty-seven US states have a right of publicity at common law or statute. The right of privacy, received its initial legal recognition in connection with the unauthorized advertising use of names and likenesses, and when celebrity plaintiffs first came to the courts in the 1920s and 1930s seeking relief from unauthorized commercial appropriation on privacy grounds, the reception was generally cool and uncomprehending. A number of courts held simply that celebrities had waived their rights of privacy, not only as to news coverage and comment but as to commercial appropriation as well, by assuming positions of prominence and visibility. By the 1930s, then, it was already evident that if a celebrity had only a right of privacy against unauthorized commercial use of her identity she would not be able to realize maximum benefit from her publicity values.
The right of publicity is the right ‘of every person to control the commercial use of his or her identity.’ Identity in this sense is an umbrella concept that includes image, likeness, voice, name, nickname and slogans. The touchstone of liability is the identification of the celebrity, identification without consent suggesting an appropriation of the celebrity’s interest in the goodwill associated with their identity. The case that exemplifies the breadth of the right is the case of Hirsch v S.C. Johnson & Sons, Inc. , a football star with the nickname ‘Crazylegs” sued for the unauthorised use of the nickname and playing number in a commercial for women’s shaving gel.
But the right is not as expansive as this case may at first imply. It is limited to protecting an individual’s identity from commercially exploitative uses. It does not extend to
“The use of a person’s identity in news reporting, commentary, entertainment, or in works of fiction or non-fiction or in advertising that is incidental to such uses.’
Since the right of publicity’s relatively recent genesis, it has proved as ‘one of the most dynamic and fluid areas of law in the United States.’ Contemporary debates revolve around the application of the right to the internet, fictional characters, and proposals for a federal statute to regulate the right.
Today US states acknowledge some form of image or publicity right, either under the common law or based in statute. The Restatement Second of Torts recognizes four types of invasions of privacy: intrusion, appropriation of name or likeness, unreasonable publicity and false light. In other states the Right of Publicity is protected through the law of unfair competition. Actions for the tort of misappropriation or for a wrongful attempt to “pass off” the product as endorsed or produced by the individual, help to protect the right of publicity.
Limits on the right of publicity
The First Amendment of the United States Constitution, which seeks to safeguard freedom of expression and the press, operates as a limit upon the right of publicity. As a general principle, where an individual’s identity is used in the reporting of news, in commentary or entertainment, or in works of fiction or nonfiction (creative works), this will not result in a breach of the right. There will generally be no infringement where a celebrity’s name or photograph is used in connection with a fan magazine or feature story; nor will infringement occur where an unauthorised biography is disseminated or incidental use takes place.
WHY AUSTRALIA SHOULD ADOPT THE RIGHT OF PUBLICITY
The High Court of Australia has emphatically denied the existence or a general tort of unfair competition. In Nike International a unanimous court cited with approval an earlier statement from Dixon J who said that in ‘British jurisdictions’ courts of equity have not:
‘Thrown the protection of an injunction around all the intangible elements of value, that is, value in exchange, which may flow from the exercise by an individual of his powers or resources whether in the organization of a business or undertaking or the use of ingenuity, knowledge, skill or labour. This is sufficiently evidenced by the history of the law of copyright and by the fact that the exclusive right to invention, trademarks, designs, trade name and reputation are dealt with in English law as special heads of protected interests and not under a wide generalization.”
On conventional reasoning, it follows that an intangible value outside tire boundaries of recognized heads of protected interests, such as personal identity, will not receive protection from appropriation. But while Dixon J’s statement is axiomatic in a general sense, it precedes a tremendous growth in the existing categories of intellectual property, in Australia as well as other common law jurisdictions.11 The Canadian common law has not escaped the influence of the American right of publicity and includes a tort preventing the appropriation of identity.13 The Athans case is an instructive example of the Canadian tort. A likeness of George Athans, a famous water skier, was use without his permission to promote summer camps. He failed in an action for passing off because no deception of the consumer could be shown. However, the Court implicitly followed American authority and held he succeeded in a tort action for appropriation of personality because:
‘It is clear that Mr Athans has a proprietary right in the exclusive marketing for gain of his personality, image and name, and that the law entitles him to protect that right, if it is invaded.”
In Australia, as Deane J points out, the rejection of a general action for unfair competition:
‘Does not involve a denial of the desirability of adopting a flexible approach to traditional forms of action when such an approach is necessary to adapt them to meet new situations and circumstances ‘
What is needed then is justification for the right of publicity as a ‘special head of protected interest’. Morally speaking, a Lockean defence of the right would suggest that the celebrity deserves to be rewarded for the fruits of his skill and labour in creating his persona. At least in the case of a professional sportsperson, advertising power comes only as a result of extremely hard work. In a similar vein, it would be unjust for the exploiter to be enriched by using someone else’s identity for his or her gain.
One way of separating the tort from a wider tort of unfair competition might be by the human element of the interest of a real person in his or her own identity. Properly limited by principle,50 such an evolution in tort law need not result in the ‘high-sounding generalizations’ to which a more general tort of unfair competition might give rise.
Consumers might also benefit from the integrity of endorsements that is a by”product of the right of publicity. The American right of publicity exists in addition to trade practice legislation and is a useful, if indirect, addition to consumer protection legislation.
In the US, the right is not without its critics. They argue that celebrity identity is as much a product of society as of the celebrities themselves and should be reserved:
‘As part of our cultural commons, freely available for use in the creation of new cultural meanings and social identities, as well as new economic values”
But we may query whether such a right would place too great a restriction on culture, or as one critic put it, allow celebrities to censor popular culture. The right affects only commercial speech. Those who would gain from commercial speech unrestricted by the right are typically large corporations. This highlights a point identified previously; that it is the celebrity that should gain from their own skill and labour, not the person who seeks to trade on their reputation.
CONCLUSION
In terms of the protection conferred on personal identity, the state of Australian law compares unfavourably with its American equivalent. Australian courts have been forced to use the legal fiction of misrepresentation to protect personal identity from appropriation by others. This need not be the case. The right of publicity shares an affinity, with the current judicial approach in this area of the law, even if this affinity is not always explicit. The right is consistent with the fundamental rationales underlying intellectual property law. It is a feasible and desirable evolution in the development of law in this area and it is likely the courts will be given an opportunity to take this path before long.