Shaken, not stirred: Image and reputation protection and passing off

  • Insight

26 March 2018

Scotland’s very own James Bond, Sir Sean Connery, has filed papers in both the EU and US to trademark his name in order to prevent others from commercially benefiting from it without his authority.

The restrictions cover a whole range of commercial products from DVDs to cocktail shakers. The latter perhaps as an attempt to restrict the amount of famous, Bond-inspired, shaken martinis being made!

Protecting your image or reputation

Sir Sean Connery is not alone in this, with numerous celebrities from David Beckham to Beyoncé using various intellectual property rights to protect their image or reputation. This is becoming (almost) a necessity for modern celebrities as much of their revenue comes from endorsements, advertisements and/or merchandising.

The benefit is that once a celebrity has registered a trademark they have something tangible which they can license to third parties with various terms and conditions. Businesses have found that associating their product with or getting endorsements by celebrities makes that product more attractive to the public. Therefore, they are willing to pay large amounts of money to certain celebrities for that purpose.

However, issues can arise where individuals (not just celebrities) do not own the relevant rights if, for example, it was not economical to register them or it was not thought to be necessary. In such situations, and in the absence of any free standing personality right (e.g. as is available in France), the UK courts have chosen to develop the common law of passing off.

So, what is ‘passing off’?

In summary, the law of passing off prevents businesses from taking commercial advantage of an individual’s image or reputation without their permission.

The law

Despite being prevalent in today’s society, passing off can be difficult to prove. For a case of passing off, in relation to either false endorsement or merchandising, to be successful an individual must show that:

  1. they had sufficient goodwill / reputation at the time of the infringement;
  2. there was a misrepresentation by the business leading to confusion in the mind of the consumer; and
  3. there was damage to the individual.

It is the combination of these three criteria which make passing off difficult to prove. It is not always straight forward to assess these objectively and this can create some contentious issues.

Important cases

The case of Eddie Irvine was one of the first UK cases in which a passing off action succeeded in a false endorsement case. In this case, a radio station (Talksport) purchased the right to use a photograph of the famous F1 racing driver Eddie Irvine. In the original image, Mr Irvine was holding a mobile phone but this was photo shopped to make it look as though he was holding a radio with “Talksport” written on it.

Mr Irvine was successful and awarded damages as the three elements of passing off were established:

  1. Mr Irvine had a substantial reputation;
  2. a not insignificant amount of the market would have falsely believed that he was endorsing Talksport; and
  3. whilst there was no physical harm, the potential long term economic damage was enough.

The more recent case involving Rihanna extended the scope of passing off even further, to allow an individual to use it to control the use of an image of them on a retailer’s clothing (merchandise).

Although, the three elements of passing off must still be shown, the court held that, in terms of damage, loss of control of one’s image would be sufficient. Rihanna’s reputation as a style icon and the specific retailer’s propensity to emphasise connections between them and famous stylish people were significant factors. Interestingly, the fact that the retailer had a licence to use the image from the photographer was not enough to prevent the action being successful. In this case, the retailer required not only the permission of the photographer, but also Rihanna’s permission.

It is now established law that an individual will be able to bring false endorsement and merchandising claims under the law of passing off.

However, while the scope of passing off has been increased as a result of the decisions in these cases, it should be remembered that the courts do not recognise a general personality right to control your image.

For an action of passing off to be successful, all three elements will always have to be established but, as the judge made clear in the Rihanna case at first instance, the critical question remains “why a person might be moved to buy the product in question” [1].

Does passing off protect only celebrities?

No. Although the main cases do involve celebrities, any individual can bring a claim for passing off. For example, a university lecturer who is being wrongly associated with a piece of work can raise a claim. Provided that the three elements of passing off can be established, then any individual will be entitled to a suitable remedy.

[1] Fenty v Arcadia [2013] EWHC 2310 (Ch) at [35]