A COMPARISON BETWEEN LOUISIANA AND THE UNITED KINGDOM WITH REGARDS TO THE APPROPRIATION OF PERSONALITY

WHAT A LOVELY BUNCH OF COCONUTS! A COMPARISON BETWEEN LOUISIANA AND THE UNITED KINGDOM WITH REGARDS TO THE APPROPRIATION OF PERSONALITY was published in 2004 in Entertainment Law Review and can be cited as follows: Ent. L.R. 2004, 15(7), 212-220

Copyright (c) 2004 Sweet & Maxwell Limited and Contributors
Subject: TORTS. Other related subjects: Commercial law. Human rights. Intellectual property
Keywords: Appropriation; Celebrities; Character merchandising; Louisiana; Privacy; Reputation

Abstract: Considers the meaning and scope of appropriation of personality and the reasons for the concern about the appropriation of personality in Louisiana. Examines the right to privacy and the right to publicity in Louisiana. Compares the concern with the appropriation of personality in the UK and the lack of concrete privacy, personality and publicity rights.

Recently, William Abbott bemoaned the loss of legal tranquility with regard to the time-honoured traditions of Mardi Gras. [FN2]

“Courts have become arbiters of mamiform bead patents and even the fundamental right to barter beads for public nudity. The issues go beyond coconut concussions, sanctioned since 1979 by the Louisiana Legislature, [FN3] or even copyrighted posters or the rights of Mardi Gras Indians. Everything is at risk, and it seems quite possible that in the near future we will see litigation against parading krewes claiming copyright or trademark violations, or alleging violations of rights of privacy or publicity.” [FN4] [or the appropriation of personality one might say.]

What Constitutes an Appropriation of Personality?

The essence of the issue of appropriation of personality is simply, a person (X) uses in a commercial context the name, voice, or likeness of another person (Y) without his/her consent. To what extent does person Y have a remedy to prevent such an unauthorised exploitation? This problem has been solved very differently from jurisdiction to jurisdiction.

The central problem that emerges lies in reconciling economic and dignitary aspects of personality within a cause of action. Huw Bevereley-Smith detailed a scheme in which the main interests that would be damaged by appropriation could be divided and more easily understood. [FN5]

(1) Economic interests:
(a) existing trading or licensing interests
(b) other intangible recognition values
(2) Dignitary interests:
(a) interests in reputation
(b) interests in personal privacy
(c) interests in freedom from mental distress. [FN6]

The first actions developed primarily protected dignitary interests rather than economic interests. Thus, the right of privacy was developed before the right of publicity. Both of these doctrines were debated by academics before reaching the courts where they have not been fully adjudicated. In many places, including Louisiana, these rights are not clear-cut even now.

The right to privacy in America was first developed in an article by Samuel Warren and Louis Brandeis, [FN7] who derived the concept of a right of privacy from the English case, Albert v Strange. [FN8] They borrowed the term “privacy” to describe their concern with media intrusion into the affairs of private citizens. [FN9] Essentially, the article defended the individual’s “right to be let alone”. [FN10] They argued that the common law allowed every individual the right to determine the extent and manner in which his thoughts might be communicated, a right which irrespective of the method of expression adopted, the nature or value of the thought or emotion, or the quality of the means of expression. [FN11] By way of analogy, they looked at the protection provided by common law copyright and determined that
private thoughts and actions were entitled to some similar protection. [FN12]

This right of privacy was a natural development, evolving as a logical application of common law principles to new developments. They concluded that common law was initially created to protect property and life from physical injury. Warren and Brandeis then noted that as legal systems began to recognize the spiritual nature of human beings, the common law expanded to include that protection of intangible possessions and non-physical injuries through laws such as assault, nuisance, libel and slander. [FN13]

The authors recognized that new inventions and business methods of the age were capable of recording or photographing the most private acts and then circulating those images to every part of the community. In this regard Warren and Brandeis criticized the press for making an industry out of gossip, which, in earlier times, had simply been a hobby for the idle and the vicious. They contended that the “gossip industry” destroyed people’s concern for things of real importance to the community in an attempt to satisfy the prurient interest of the public. [FN14] Upon this basis, Warren and Brandeis examined the common law to see if it afforded protection to those individuals “victimized” by new technologies. Thus, the law could be invoked to protect the privacy of the individual from invasion by the over-intrusive press, by photographers or by the use of modern devices for recording and re-producing scenes
or sounds. Such protection was not just for conscious products of labour, but also for the person and one’s personality. [FN15]

They also found that privacy rights had been recognised in both England [FN16] and France. [FN17] The authors then stated what they believed the law should be; suggested the penalties for its violations; and outlined limitations to the right. [FN18]

Why the Concern About the Appropriation of Personality in Louisiana?

Tell an out-of-state lawyer about the coconut law, and he probably will not believe you. Why, he might reasonably ask, would anyone throw coconuts? Why would anyone knowingly risk serious injury by standing in their path? And strangest of all, why would the Louisiana Legislature virtually eliminate liability except that which results from ” … a deliberate and wanton act of gross negligence”?

Mardi Gras is our answer. We observe the pre-Lenten season by throwing things, and the Legislature and the courts preserve our right to do so. Despite more than a few reported cases, and occasional local bans on particular projectiles, such as Silly String, the coconut law stands as the highest barrier to suing a parading organisation, at least in tort.

For those unaware of what takes place during the Mardi Gras festivities, let me describe them. Young college kids arrive from all over the country for spring break. They quickly realise that this place is not like home. It is Bourbon Street, parade routes and a live-the-moment quest for beads. The deal is simple enough: sweatshirt up and beads down–down from floats and balconies, and all among the ubiquitous and foreseeable hum and glow of video cameras.

Let us now put a name to one of those college kids, Susie, who is a combination of Jordan and Paris Hilton. Susie is having the time of her life and has become exceptionally adept at acquiring beads in the aforementioned manner. Harmless enough, she thinks, until two months later, just in time for finals, her parents, her roommates, and her suddenly-ex-boyfriend, discover that her previously hidden charms are now splashed about on pornographic web sites or the cover of XXX-rated videos. Needless to say, Susie is distressed, but otherwise normal, and like normal people of our time, looks for someone else to blame and to sue.

Has Susie consented to her new role as a porn star, or has she consented to merely sharing her privacy with the crush of Bourbon Street or those who would participate vicariously with home videos? Has she consented to commercial use of her likeness in advertising and marketing, as long protected in virtually all jurisdictions, including Louisiana? [FN19] Does Susie have a right of publicity, which may someday be recognized in Louisiana, when the market value of her image is proven prior to the unauthorised use? [FN20]

The Right to Privacy in Louisiana

The common law right of privacy recognised a property interest in a person’s name or likeness, which could be protected if appropriated by another. Problems arose because of the personal tort nature of right of privacy actions. [FN21] The emphasis of this right lay in the dignitary nature of invasion of privacy. The basis of the law’s intervention was to be the protection of personal dignity, not necessarily the protection of any property right. Previously, in order to prevail in a right of privacy action, plaintiffs had to show that the unauthorised commercial use of their names or likenesses caused them embarrassment or humiliation. [FN22] Embarrassment or humiliation was often difficult to demonstrate where the celebrities had suffered no mental anguish when subjected to publicity. By definition, the right of privacy was a personal, non-assignable right that did not sound in property. [FN23] Many plaintiffs were defeated through this rationale. [FN24]

The next major step in the analysis of the right to privacy came in 1960 with William Prosser’s article entitled Privacy. [FN25] Prior to this article, much of the confusion between the right of privacy and publicity was due to the fact that, conceptually, privacy had not developed beyond the general theory created by Warren and Brandeis almost 70 years earlier. Specifically, almost no attention had been paid to possible subcategories or classes that might have existed within the right of privacy. [FN26] All of this was changed by Prosser.

Prosser identified privacy as being composed of four separate groups of rights: (1) intrusion, i.e. the unreasonable and offensive interference with the solitude or
seclusion of another; (2) public disclosure of private facts, i.e. the publication of
private, truthful information about another that gives offensive publicity to this
information; (3) false light, i.e. the presentation of information to the general public
in such a manner as to convey a false and offensive impression of the individual; and (4) appropriation, i.e. the use of another person’s name or likeness for one’s own benefit. [FN27]

Let us return to Susie and her desire to sue someone for what she perceives to be an invasion of her privacy. Using Prosser’s four categories of privacy, Susie’s case would probably fail with regard to intrusion as she was on Bourbon Street with thousands of other people; therefore, there was no unreasonable or offensive interference with her solitude or seclusion. As to the second cause of action, the public disclosure of private facts, Susie will be likely to fail also. There is one known, but unreported case from March 2002 entitled Jane Doe 1 et al v Mantra Films, Inc., et al., which was filed in the Civil District Court for Orleans Parish. The facts are similar, the plaintiff was aware that there were video cameras present, as Susie should have been. The court found that such awareness ” … suggests to reasonable persons that it would be looked at by hundreds, maybe thousands.” The court was not sympathetic to the argument of intrusion. For the same reason as above, the court will not be sympathetic to an argument of public disclosure of private facts. If you are willing to flash your assets for beads in public, then you should be aware that the
public may have a video camera handy to capture the moment.

Susie heard about a similar case to hers that was litigated in Florida. A calendar model’s image was included in a Mardi Gras video and web site advertising the video. She sought to recover on the theory of “false light”. The defence, based on the pleadings, was to include, among other things:

–truthfulness, to the false light claim because the video showed only what the plaintiff bartered for beads;
–consent, which arguably extended to incidental advertising and packaging; and
–expert testimony in support of the First Amendment arguments for the newsworthiness and cultural significance of Mardi Gras. [FN28]

In Susie’s case, false light invasion of privacy would fail unless it was fairly clearly
suggested in the video, its advertising or marketing that Susie was bartering more than merely a peek. [FN29]

The remaining theory available to Susie is simply that her likeness was appropriated for commercial purposes without her consent, which is actionable in Louisiana under Jaubert v Crowley Post-Signal, Inc., below, and its progeny. However, there remains the question of whether she did in fact consent, and if so, how far did her consent extend. Once again, the court is unlikely to find a lack of consent due to her knowledge that she was being filmed by other tourists.

Susie thus would probably lose on all counts, at least in Louisiana. Beads would be her total compensation for her contribution to Mardi Gras. She is not happy with this outcome and questions the idea of publicity.

The Right to Publicity in Louisiana

The right of publicity was conceived as a solution to the problems caused when celebrities attempted to use the right of privacy, and/or the tort of appropriation, to protect pecuniary interests. [FN30] The right of publicity gives a person control over the commercial use of his or her identity. [FN31] A person has the right to own, protect, and profit from the commercial value of his or her name, likeness, activities, and identity. [FN32]

In the commentaries, publicity was first separated from the concept of privacy and given its most definitive scholarly development by Professor Melville Nimmer in his article, The Right to Publicity. [FN33] This article was published, shortly after the term “publicity” was first used by the court in Haelan Lab., Inc. v Topps Chewing Gum, Inc. [FN34] to define the issues before it.

In Haelan, the plaintiff, a chewing gum company, alleged that its rival, Topps, had intentionally interfered with exclusive contracts between the plaintiff and various
baseball players to portray their likenesses on baseball cards. Where written contracts
existed with the players, the court found for the plaintiff on the grounds of tortious
interference with the contract. However, some of the agreements were oral guarantees obtained from the players by an agent, and then assigned to the plaintiff.

The defendant argued that the plaintiff’s oral agreements only waived the players’ rights to sue for invasion of privacy. Since the commercial use of the players’ likenesses by the defendant did not hurt the players’ feelings, the defendant claimed that the plaintiff had no cause of action. [FN35]

Under right of privacy laws, the defendant’s argument had merit. The players’ privacy was a personal right, rather than an enforceable property interest. In rejecting the defendant’s argument, the judge used the term “right of publicity” to denote the plaintiff’s enforceable right to prevent use of the players’ likenesses for commercial purpose. [FN36] He also recognized that the players could grant exclusive right of publicity privileges to one firm, for purposes of commercial exploitation. [FN37]

In arguing that publicity was a concept separate and distinct from privacy, Nimmer showed the logical inconsistencies of trying to enforce a right of publicity under a privacy statute. [FN38] The concept of celebrity, which means that the person is widely known by the general public, is not consistent with the concept of privacy where it is used to protect a person unknown to the general public from being unduly placed in the public eye. The traditional law of privacy was intended to shield the individual from the scrutiny of the general public. It was not a mechanism to protect an individual who had intentionally thrust himself before the public. Under principles of privacy, one could not remove the screen of privacy and then bring a legal action because the public knew about the person. According to Nimmer, in most
cases celebrities do not want to be shielded from the public. Nonetheless, they do not want their name or image to be used publicly for commercial purposes without their consent and/or remuneration. [FN39]

Nimmer explained that the inflexibility of privacy law failed to distinguish between these two classes of plaintiffs. The first is the traditional seeker of privacy, one whose only desire is to lead a private life, free from unwanted interference or probing. The second are those who put themselves in the spotlight for any purpose including wealth or fame. These people are the ones who need to have their names and likenesses guarded from commercial exploitation. He went on to suggest that just as technology changed and required the right to privacy, so do these new developments in media technology require new rights to protect individuals from the wrongful use of their public fame. Thus advanced media methods have created a new area of commercial interest called publicity and this area should be afforded the same legal protection as any other item of commercial property. [FN40]

As other jurisdictions recognized the utility of the Haelan court’s formulation, the new right of publicity developed. Unauthorized commercial exploitation of the plaintiff’s actual name, [FN41] nicknames and professional names, [FN42] and group names [FN43] came to be considered property interests under the right of publicity. General and photographic likenesses, [FN44] recognizable drawings of the plaintiff, [FN45] “live” impersonations or imitations, [FN46] and impersonation or imitation through a fixed form model [FN47] were also drawn into the right of publicity web. Other cases found publicity rights in biographical facts, [FN48] the plaintiff’s voice, [FN49] and nonrecognizable representations that merely suggested the plaintiff’s identity. [FN50]

The U.S. Supreme Court first recognized the right of publicity in Zacchini v Scripps-Howard Broadcasting Co., [FN51] the “human cannonball” case. While performing his act at a county fair in Ohio, Zacchini was confronted by a television reporter with a movie camera. Zacchini requested that the reporter not photograph his performance. The reporter complied, but the producer of the respondent’s daily newscast sent him back the next day to film the entire act. [FN52] Under Ohio right of publicity laws, Zacchini alleged that the filming constituted an “unlawful appropriation of [his] professional property.” [FN53] The defendant newspaper argued that the First and Fourteenth Amendments protected its right to broadcast Zacchini’s entire performance without compensation. [FN54] The Court agreed with Zacchini making this a landmark decision. The Court recognized the right of publicity as an established cause of action with significant rational and economic underpinnings. However, the appropriation of the plaintiff’s entire act was not a typical right of publicity scenario. The Court’s narrowly-tailored holding leaves open the possible pre-emption of state publicity right laws, based on either federal copyright or First Amendment grounds. [FN55]

A similar type of case comes from the Western District of Louisiana. In Prudhomme v Proctor & Gamble Co., [FN56] Chef Paul Prudhomme brought suit against companies who used a look-alike actor in their coffee commercials. Along with trademark infringement and various Louisiana common law causes of action, Prudhomme alleged violation of his common law privacy and publicity rights. The court denied the defendants’ motions to dismiss and their request for a more definite statement. While recognizing that Louisiana had not adopted the common law
publicity rights doctrine, the court determined that Prudhomme had made a good faith argument for extension of the doctrine in Louisiana. [FN57]

Returning to Susie’s dilemma in New Orleans, one could consider a claim based on an invasion of Susie’s right of publicity, based on the aforementioned human cannonball case and the Prudhomme case. Nonetheless, such a theory would have limited prospects in this case because Susie, without the status of a human cannonball, Elvis, or some other major celebrity, could have little hope of convincing a Louisiana court that it should judicially create a new right for her.

Why the Concern About the Appropriation of Personality in the United Kingdom?

Let us now assume, that Susie had such a good time in Louisiana, she thought she would check out the Notting Hill Carnival. The quest for beads is not as aggressive, but the costumes are just as exotic. Susie decides on a very revealing costume as the weather is hot. She takes to the streets to party with the rest of the world. Carnival’s motto is “Every spectator is a participant–Carnival is for all who dare to participate.” [FN58] Susie once more participates with abandon; and as she is such a striking girl, she is yet again videotaped extensively. Her parents are as horrified as they were the first time they saw the video offers with their daughter’s picture prominently adorning the cover. They contact a solicitor to be told that there is little to be done as the UK has no statutory privacy or publicity rights.

British courts have always been sceptical about creating monopoly rights in nebulous concepts such as names, likenesses or popularity. [FN59] As early as in du Boulay v du Boulay, [FN60] a court stated that the use of another’s name is a grievance for which English law affords no redress. In the neighbourhood quarrel of Day v Brownrigg, [FN61] where the latter changed the name of his villa to the name of a bigger and better known neighbouring house, the court found that damage alone is not enough to interfere unless a property right to a name exists and that such a right is not known to English law. [FN62] English law has never moved towards
creating rights in a name per se. [FN63] In line with this doctrine, protection for other
personality features such as likeness, voice, distinctive clothes, etc. or a more general
right of publicity has constantly been rejected: first in 1931 in Tolley v Fry, [FN64] then in 1948 in McCulloch v May, [FN65] through various celebrity merchandising cases in the seventies, [FN66] by the Whitford Committee [FN67] in 1977, and then in 1999 in Elvis Presley Enterprises Inc. v Sid Shaw Elvisly Yours. [FN68] English courts seem to like neither the celebrity nor the merchandising business. [FN69]

In the absence of privacy, [FN70] personality or publicity rights, celebrities in the UK are forced to try to seek protection of the business value of their personality or popularity under trade mark, registered design and copyright laws, as well as to attempt to establish an extension of the tort of passing-off and various other torts, for example, the case involving Michael Douglas and Catherine Zeta-Jones. [FN71]

The Right to Privacy in the United Kingdom

The protracted litigation in Douglas has provided important clarification on the extent to which breach of confidence can be used to protect privacy. Taken with the recent decision of the House of Lords in Wainwright v The Home Office, [FN72] it provides a convenient point for assessing just how far the protection of privacy has developed in the past three years. To say the least, recognition of a post-HRA 1998 privacy right in English law has been patchy.

In a comprehensive judgment by Lindsay J. in Douglas, [FN73] he held that, because of the exceptional nature of a wedding and the elaborate and expensive security measures adopted by the Douglases, the event was private in nature and that the images of the couple were confidential. The exclusivity deal with OK! was a legitimate and reasonable way to control and limit the press exposure, and resulted in the information becoming a valuable commercial trade secret. He went on to find that subterfuge and surreptitious means had been used in obtaining the photographs. He also found that that the claimants had suffered detriment and damage, including the genuine distress in the realisation that someone had invaded and taken pictures of their wedding ceremony. Other interesting points made in this ruling include the fact that even if the Douglases were public figures who had previously welcomed publicity,
the confidentiality of their wedding was still protected. Moreover, the sale by the
Douglases of exclusive rights in information to OK! did not affect or reduce the level of
protection; nor did the fact that private and confidential photographs were about to be published by OK! reduce protection under the law of confidence. [FN74]

In relation to damages for distress, the judge said it was right “to separate distress occasioned by knowledge that there had been an intruder at the wedding and distress occasioned by the publication of the unauthorised photographs. Only the latter is to be laid at Hello!’s door”. [FN75] The award for distress does seem on the low side. A key factor in keeping the award at the bottom end of the scale appears to have been the fact that the Douglases had, to a substantial extent, already sold their privacy rights to OK! for £1 million. If there had been no such exclusive sale arrangement, it appears that damages may have been very substantial and, on the basis of the “hypothetical licence” approach, may have been in excess of £125,000. [FN76] The judge considered the potentially chilling effect on freedom of expression of such an award. He said: “Further, looking at this substantial award in a general way, as encouraged by some of the authorities, I would not regard it, given the
resources of Hello!, as of a size that is likely materially to stifle free expression and yet, without its going beyond the compensatory and into the penal, it is, I would expect, such as may make Hello! alive to the unwisdom of its acting as it did.” [FN77] This judgment echoes the recent Privy Council case of Gleaner v Abrahams in relation to libel awards; a salutary warning to the media in “spoiler” cases. [FN78]

A case that may be considered closer to Susie’s dilemma would be Peck v United Kingdom. [FN79] In January the Strasbourg Court decided this landmark case which concerned CCTV footage of a man with a knife walking along a public street, and the subsequent council decision to release the CCTV footage to television and local newspapers. In fact, Mr. Peck, who was depressed, had slashed his wrists in a suicide attempt. Mr. Peck tried unsuccessfully to obtain judicial review of the council’s decision, and also complained to the BSC, the ITC and the PCC (the media regulators). The PCC dismissed the complaint as inadmissible. Mr. Peck claimed that his Article 8 rights had been infringed. This claim was upheld. The court said the exposure he was subjected to far exceeded anything that he could reasonably have
anticipated. The court went on to conclude that as Mr. Peck had no effective remedy under domestic law, the UK was in breach of its Article 13 obligation to provide an effective remedy. [FN80] This appeared to highlight the glaring lack of domestic “privacy remedies”.

In June 2003, the Select Committee on Culture, Media and Sport issued its report concerning privacy and media invasion. Having heard extensive evidence from victims and from the media, the committee also made extensive reference to the Douglas litigation and the decision in Peck. The committee concluded: “On balance, we firmly recommend that the government reconsider its position and bring forward legislative proposals to clarify the protection that individuals can expect from unwarranted intrusion by anyone–not the press alone–into their private lives. This is necessary to fully satisfy the obligations upon the UK under the European Convention on Human Rights.” [FN81]

The response of the government was to issue a statement saying that it had no intention of bringing in specific legislation to protect privacy. The government’s formal response in early October 2003 was that, that following HRA 1998, the government is content to let the courts deal with the issue: “The weighing of competing rights in individual cases is the quintessential task of the court, not of government or of parliament. Parliament should only intervene if there are signs that the courts are systemically striking the wrong balance; we believe there are no such signs.” [FN82]

Regrettably for lawyers, the courts have taken the opposite view. On October 16, 2003, the House of Lords gave judgment in Wainwright v The Home Office [FN83] which was criticised for being too conservative. It should be remembered that it was made with regard to a case brought prior to the implementation of HRA 1998. The House of Lords refused to hold that there has been a previously unknown tort of invasion of privacy, since 1950 at least. A restrictive view was taken of the effect of Peck. [FN84] However, Lord Hoffmann appeared to accept that a “confidential relationship” was no longer necessary to establish a “breach of confidence” claim. [FN85]

Neither the government nor the courts are taking responsibility for the protection of privacy. Douglas illustrates that where private information can be described as commercially confidential, substantial damages may be recoverable. In the personal sphere, it seems that any decisive impetus will have to come from Strasbourg. In the meantime, the aspects of the judgments which will receive most attention are the judicial analysis of the interrelationship between privacy and breach of confidence, the question of whether the privacy right has horizontal direct effect, and the interpretation of s.12 of the Human Rights Act.

As Sedley, L.J. noted in Douglas, “The courts have done what they can, using such legal tools as were to hand, to stop the more outrageous invasions of individuals’ privacy; but they have felt unable to articulate their measures as a discrete principle of law. Nevertheless, we have reached a point at which it can be said with confidence that the law recognises and will appropriately protect a right of personal privacy. The reasons are twofold. First, equity and the common law are today in a position to respond to an increasingly invasive social environment by affirming that everybody has a right to some private space. Secondly, and in any event, the Human Rights Act 1998 requires the courts of this country to give appropriate effect to the right to respect for private and family life set out in Article 8 … [By] virtue of s.2 and s.6 of the [Human Rights] Act, the courts of this country must not only take into account jurisprudence of both the Commission and the European Court of Human Rights which points to a positive institutional obligation to respect privacy; they must themselves
act compatibly with that and the other Convention rights.” [FN86]

Susie and her parents are not overly pleased with this analysis. As in Louisiana, they ask about publicity rights. They have heard that the UK is filled with all sorts of celebrities, especially those who owe their fame more to notoriety than to any sort of talent in particular.

The Right to Publicity in the United Kingdom

As we have seen above, there is no right to publicity, per se, in the UK. However, due to a landmark case from the world of Formula 1, it seems that there may be the start of a discernible trend towards the protection of personality rights. The case, Irvine v Talksport, [FN87] concerned a photograph of Eddie Irvine, the racing driver, holding a mobile phone. This photo, which was validly licensed to the defendant, had been manipulated to show a radio bearing the words “Talk Sport” instead of the phone. This image was then used commercially by Talk Radio (now Talk Sport). Irvine argued that this was passing off as there was a misrepresentation that he was endorsing Talk Sport. [FN88]

This is similar to the facts of Douglas and the very definition of appropriation of personality. A third party has appropriated the economic benefits from the owner of the personality. In order to maximise potential income, a personality needs to be able to control how his image is used. This is an important consideration for the personality and indeed his contractual partners where an endorsement contract for a particular product is already in existence. Unauthorised exploitation of that personality by third parties may jeopardise another contractual obligation of the personality. Unfortunately, the personality seeking to protect his rights and exploit these must work within the current constraints of existing intellectual property law. As case law has shown, this is not an easy task. Courts are not keen to embrace this concept.

Consider attempts to protect “image”, the failure to use copyright to protect the pop singer Adam Ant’s very distinctive facial make-up is similar to the unsuccessful attempt by the trustees of the Diana Memorial Fund to prevent the Franklin Mint making and selling a commemorative Diana doll of the late Princess of Wales. Along the same lines, two actors from the soap opera Neighbours failed in a defamation action that arose when pictures of their faces were superimposed on a pornographic picture. Even the Spice Girls discovered that “Girl Power” has its limits when their application for an interlocutory injunction was refused where the defendants were selling a “Fab Five” sticker collection without any statement that the product was unauthorised. [FN89] The overall problem being that due to the lack of any
defamatory innuendo and in the absence of a trademark registration, there is no goodwill to protect; and thus, they would have been unsuccessful.

Therefore, based on case law, the odds would have been stacked against Eddie Irvine being successful when he launched his passing off action. In an action for passing off, the problem is that there has been no “common field of activity” between the claimant and defendant. The perceived wisdom was that unless the claimant and defendant are in the same field of trade there will be no confusion–and therefore no case. This view, however, has not reflected the commercial realities of merchandising for many years. The public is well aware that licensed merchandise and product/service endorsement is how many sportsmen, actors, pop stars and the like, earn (or supplement) a living.

What does one need for a successful passing off action? Generally, there has to be a misrepresentation made in the course of trade such that the trade mark owner suffers damage. It is essential that there is goodwill that can be protected. Passing off will not provide a monopoly in the way that a trade mark registration will. One must also remember that for an action to succeed all of the elements must be established. The most difficult of which to prove is misrepresentation. Heretofore, the perceived wisdom has been that a personality that does not trade in goods, but merely seeks on grounds of privacy to prevent their image from being commercially exploited by others, will be unable to succeed in passing off as they lack
the necessary goodwill that passing off protects. In the Irvine case, the court held that it was not necessary to show that both parties shared a common field of activity. The court took notice of the fact that it was very common for celebrities to exploit their images and names commercially by way of endorsement contracts. The court went further and held that there was no reason in principle why an action in passing off for false endorsement would be prevented. The advertisement had sent a false message to the public such that Eddie Irvine had endorsed, recommended or approved Talk Radio. As a consequence, judgment went to the claimant. [FN90]

This decision is still a far cry from a “publicity right” in that it does not allow the
personality to control his image, voice, likeness and name. With passing off being reinterpreted, an image can in certain circumstances be controlled, but this is not
“blanket” control. Look at registered trade marks, applications for these have been made and accepted for a number of personalities. In the case of Damon Hill, he secured protection for the image of his eyes looking out from the visor of his racing crash helmet. The Spice Girls have filed a copious number of trade mark applications along with David and Victoria Beckham, as well as a number of other footballers and celebrities. These should give an improved measure of protection–provided that the alleged infringer is guilty of using these marks “as trademarks”. Use of a name in a descriptive sense is not actionable.

Once again, Susie is out of luck. She would fail in a passing off action as she is not a trade mark owner. Unless she can convince the court that her image has been misrepresented in the course of trade and that she has the necessary goodwill to protect, then she will not be afforded the protection of a passing off action. Another course of action she could take is one of defamation, as in Tolley v Fry & Sons Limited case [FN91] where a caricature of a well-known amateur golfer was used to advertise a chocolate bar. The plaintiff objected on the basis that there was an innuendo that he had allowed his name to be used in return for gain–a position that was diametrically opposed to his status as a respected amateur golfer. Keep in mind that in the absence of defamation, merely using a person’s name or image for promotional purposes would not of itself amount to defamation. However, in some cases the marketing of a product bearing the name of a well-know personality without his authority,
whilst not being defamatory, following the Irvine case, may amount to passing off.

The Coconut Defence: Where does that leave Susie?

As the United Kingdom lacks any concrete privacy, personality or publicity rights,
individuals must seek protection of the business value of their personality or popularity under trade mark, registered design, and copyright laws, or various torts such as well as passing-off and defamation. This leaves not only private individuals, like Susie, but also celebrities with very limited means of safeguarding their personal character from appropriation by others.

The current legal dilemma surrounding the issue of privacy in Europe has arisen because actions being brought in the courts of European Union Member States must be considered in light of the European Convention on Human Rights. In actions regarding an individual’s privacy there is often a need to balance Article 8 of the Convention, which grants the right to respect for private and family life, and Article 10, which grants the right to freedom of expression. Perhaps, there will be a move to harmonise the law with regard to either privacy and publicity rights or to a universal personality right.

Finally, almost any suit under Louisiana law would necessarily overcome defences based on R.S. 9:2796, which exempts Mardi Gras krewes and members from tort liability, except for “… deliberate and wanton act(s) or gross negligence.” Obviously, this statute would not bar federal copyright or trade mark suits, but it might be used against privacy or publicity suits that arise under La. Civ.C. art. 2315. There are no reported cases so extending the statute’s protection. But how far does the law go? One court has noted that a literal application of the immunity provisions would be “patently absurd.” [FN92] Yet another court seems to have expanded its coverage to include even contract claims. [FN93] Where is the edge of the envelope? Libel is a state law tort, as are invasion of privacy, and potentially, violation of whatever right of publicity exists under Louisiana law. When and if such cases are filed, expect the coconut law defence, and expect that it probably will be successful. It would be unimaginable that any court in Louisiana would enjoin or harshly penalise a Mardi
Gras krewe.

FN See La. R.S. 9:2796, Limitation of liability for loss connected with Mardi Gras parades and festivities; fair and festival parades
A. Notwithstanding any other law to the contrary, no person shall have a cause of action against any krewe or organization, any group traditionally referred to as Courir de Mardi Gras, or any member thereof, which presents Mardi Gras parades, including traditional rural Mardi Gras parades, processions, or runs in which participants ride on horseback, march, walk, or ride on horse-drawn or motor drawn floats, or wheeled beds, or other parades, whether held on a public or private street or waterway, or in a building or other structure, or any combination thereof, connected with pre-Lenten festivities or the Holiday in Dixie Parade, or against any non-profit organization chartered under the laws of this state, or any member thereof, which sponsors fairs or festivals that present parades or courirs, for any loss or damage caused by any member thereof, during or in conjunction with or related to the parades or courirs presented by such krewe or organization, unless said loss or damage was caused by the deliberate and wanton act or gross negligence of the krewe or organization, or any member thereof as the case may be, or unless said member was operating a motor vehicle within the parade or festival and was a compensated employee of the krewe, organization, or courir. The provisions of this Section shall not be intended to limit the liability of a compensated employee of such krewe or organization for his individual acts of negligence.
B. Any person who is attending or participating in one of the organized parades of floats or persons listed in Subsection A of this Section, when the parade begins and ends between the hours of 6:00 a.m. and 12:00 midnight of the same day, assumes the risk of being struck by any missile whatsoever which has been traditionally thrown, tossed, or hurled by members of the krewe or organization in such parades held prior to the effective date of this Section. The items shall include but are not limited to beads, cups, coconuts, and doubloons unless said loss or damage was caused by the deliberate and wanton act or gross negligence of said
krewe or organization.
FN2. William T. Abbott, Show us your Torts, 50 La. Bar Jour. 350 (Feb./Mar. 2003).
FN3. La. R.S. 9:2796.
FN4. Abbott, below.
FN5. Huw Bevereley-Smith, The Commercial Appropriation of Personality (Cambridge University Press, 2002) p.8.
FN6. ibid.
FN7. The Right to Privacy, 4 Harv. L. Rev. 193 (1890)
FN8. 1 McN. & G. 23.43 (1849). In Strange, Prince Albert sued to prevent the defendants from publishing copies or descriptions of etchings that he and Queen Victoria had drawn for their own entertainment. In ruling for the plaintiff, the presiding judge, Lord Cottenham, used the term “privacy” in determining the right being invaded. One wonders how far this right would have progressed had a matter arose not involving the Queen of England and her consort.
FN9. The private citizen in this case was Warren’s wife, a wealthy Boston socialite. Her fashionable parties were covered in salacious fashion by the Boston papers. To battle this outrage, Warren joined with his former law partner and Harvard law classmate, Brandeis, to voice a personal protest against what they considered to be a new means of intruding into the life of a citizen and informing the whole community of even minute and insignificant private activities. See Mason, Louis D. Brandeis, A Free Man’s Life (1946).
FN10. Warren & Brandeis, below, at n.7.
FN11. ibid. at p.199.
FN12. ibid. at p.193.
FN13. ibid.
FN14. ibid. For a fuller exegesis on the media’s gradual shift in focus towards the private lives of famous people, see Michael Madow, Private Ownership of Public Image: Popular Culture and Publicity Rights, 81 Cal. L. Rev. 127 (1990). Explaining the rather late birth of the right of privacy, Professor Madow notes that it was not until the twentieth century that commercial advertisers began to exploit vigorously the images of famous individuals. See also Note, An Assessment of the Commercial Exploitation Requirement as a Limit on the Rights of Publicity, 96 Harv. L. Rev. 1703, 1713 (1983) (“Nothing in our experience before the early 1900’s … made such a right necessary”).
FN15. Warren & Brandeis, below, at pp.206–07.
FN16. Albert v Strange (1849) 64 E.R. 293.
FN17. Warren & Brandeis, below, at p.214 n.1 (alluding favourably to French privacy law).
FN18. ibid. at pp.214-20.
FN19. See Jaubert v Crowley Post-Signal, Inc., 375 So.2d (1979); Slocum v Sears, Roebuck and Co., 542 So. 2d 777 (La. App. 3 Cir. 1989).
FN20. Prudhomme v Proctor & Gamble, 800 F.Supp. 390 (E.D. La. 1992).
FN21. David E. Shipley, Publicity Never Dies; It Just Fades Away: The Right of Publicity and Federal Pre-emption, 66 Cornell L. Rev. 673, 678 (1983).
FN22. Melville B. Nimmer, The Right of Publicity, 19 Law & Contemp. Probs. 203 (1954).
FN23. ibid.
FN24. See, e.g. Miller v Madison Square Garden, 28 N.Y.S.2d 811 (Sup. Ct. 1941) where a public figure was awarded six cents for a technical violation of right of privacy statute, where a bicycle race program used his name and picture without his consent.
FN25. William Prosser, Privacy, 48 Cal. L. Rev. 383, 423 (1960).
FN26. ibid.
FN27. ibid.
FN28. See Cape Publications, Inc. v Bridges, 423 So.2d 426, (Fla. Dist. Ct. App. 1982) which held that nude picture published in connection with a public interest story did not constitute an invasion of privacy notwithstanding the embarrassment such publication may have caused plaintiff.
FN29. See Easter Seal Society v Playboy Enterprises, Inc., 530 So.2d 643 (La. App. 4 Cir.), writ denied, 532 So.2d 1390 (La. 1988).
FN30. Some courts have found that the right of publicity differs from the law of privacy in that it protects an individual’s commercial interest in his or her identity, rather than noncommercial interests, such as freedom from public embarrassment or the right to be let alone. See, e.g. Cardtoons, L.C. v Major League Baseball Players Ass’n, 95 F.3d 959, 967 (10th Cir. 1996). Although derived from the law of privacy, the right of publicity is a business right to control the use of one’s identity in commerce rather than the personal right to be let alone.
FN31. See Estate of Elvis Presley v Russen, 513 F. Supp. 1339, 1353 (D.N.J. 1981).
FN32. See Peter Felcher & Edward Rubin, Privacy, Publicity, and the Portrayal of Real People by the Media, 88 Yale L.J. 1577, 1588-89 (1979); see also Radar, The “Right of Publicity”–A New Dimension, 61 J. Pat. Off. Soc’y 228 (1979).
FN33. Nimmer, below.
FN34. 202 F.2d 866 (2d Cir. 1953).
FN35. ibid. at 867-68.
FN36. The court said a person’s legal interest in publication of his photograph is not limited to a personal and non-assignable right not to have his feelings hurt by such
publication. See ibid. at 868-69. In his article, Nimmer, below, at 216, stated that “the right of publicity must be recognized as a property (not a personal) right, and as such capable of assignment and subsequent enforcement by the assignee.”
FN37. 202 F.2d at 869.
FN38. Nimmer, below.
FN39. ibid.
FN40. ibid.
FN41. See Palmer v Schonhorn Enters., Inc., 232 A.2d 458 (N.J. Super. Ct. Ch. Div. 1967) (right of publicity protection afforded to names of famous golf pros); see also Lerman v Chuckleberry Publ’g, Inc., 521 F.Supp. 228 (S.D.N.Y. 1981) (novelist/screenwriter Jackie Collins granted summary judgment on right of publicity claim where a caption, with her name, accompanied a photograph of an orgy scene from a film in which she did not appear).
FN42. See Hirsch v S.C. Johnson & Son, 280 N.W.2d 129 (Wis. 1979) (in case establishing the right of publicity in Wisconsin, football celebrity was found to have a protectable interest in his nickname “Crazylegs”); see also McFarland v E & K Corp., 18 U.S.P.Q.2d (BNA) 1246 (D. Minn. 1991) (common law right of publicity of actor who portrayed Spanky in the Little Rascals infringed by unauthorized use of his stage name by Spanky’s Saloon in Saint Paul, Minnesota).
FN43. See Winterland Concessions Co. v Sileo, 528 F. Supp. 1201 (N.D. Ill. 1981), modified, 735 F.2d 257 (7th Cir. 1984), aff’d per curiam, 830 F.2d 195 (7th Cir. 1987) (concessionaire licensed by various rock groups to sell T-shirts with group logos awarded injunctive relief against bootleg T-shirt distributors based on the right of publicity).
FN44. See Haelan Labs., 202 F.2d at 866; see also Groucho Marx Prods., Inc. v Playboy Enters., No. 77-1782 (S.D.N.Y. Dec. 30, 1977) (granting partial summary judgment on right of publicity claim, where model impersonated entertainer in a magazine photo essay).
FN45. See Ali v Playgirl, Inc., 447 F. Supp. 723 (S.D.N.Y. 1978) court granted injunctive relief where defendant distributed a “representational” drawing of a nude black male which bore an unmistakable likeness to plaintiff boxer, and recognized Ali’s “proprietary interest in the profitability of his public reputation or ‘persona.”‘ at 728.
FN46. See Groucho Marx Prods., Inc. v Day & Night Co., 523 F. Supp. 485 (S.D.N.Y. 1981), rev’d on other grounds, 689 F.2d 317 (2d Cir. 1982). Groucho Marx Productions and Harpo’s daughter, Susan, as trustee of his estate, sued the producers of the Broadway musical, A Day in Hollywood/A Night in the Ukraine, for appropriating the rights of publicity in the names and likenesses of the Marx Brothers. See ibid. at 486. The court found that the production of the play, which infringed the plaintiffs’ right of publicity in the Marx Brothers characters,
was not biographical or educational, and thus a First Amendment fair use defence failed. See ibid. at 494.
FN47. See Price v Worldvision Enters., Inc., 455 F. Supp. 252 (S.D.N.Y. 1978), aff’d per curiam, 603 F.2d 214 (2d Cir. 1979) (television production Stan’n Ollie, where actors portrayed Laurel and Hardy, restrained by the court).
FN48. See Uhlaender v Henricksen, 316 F. Supp. 1277 (D. Minn. 1970) (baseball players’ association prevailed against makers of a board game who utilised player statistics without obtaining a licence agreement).
FN49. See Midler v Ford Motor Co., 849 F.2d 460 (9th Cir. 1988), on remand, Midler v Young & Rubicam, 22 U.S.P.Q.2d (BNA) 1478 (9th Cir. 1991) where the carmaker ran a television ad campaign featuring a singer who was instructed to sound as much like Bette Midler as possible. Midler prevailed on a common law right of publicity claim.
FN50. See Motschenbacher v R.J. Reynolds Tobacco Co., 498 F.2d 821 (9th Cir. 1974)
(internationally-famous race car driver prevailed on misappropriation of likeness claim, where the defendant used a visual representation of the plaintiff’s distinctive race car design in its advertisement).
FN51. 433 U.S. 562 (1977).
FN52. ibid. at 562-564.
FN53. ibid. at 564.
FN54. ibid. at 565.
FN55. Justice White wrote for the majority: “Wherever the line in particular situations
as to be drawn between media reports that are protected and those that are not, we are quite sure that the First and Fourteenth Amendments do not immunize the media when they broadcast a performer’s entire act without his consent. The Constitution no more prevents a State from requiring respondent to compensate petitioner for broadcasting his act on television than it would privilege respondent to film and broadcast a copyrighted dramatic work without liability to the copyright owner, or to film and broadcast a prize fight, or a baseball game, where the promoters or the participants had other plans for publicizing the event.” ibid. at 574-75.
FN56. Prudhomme v Proctor & Gamble, 800 F.Supp. 390 (E.D. La. 1992).
FN57. ibid.
FN58. http://www.portowebbo.co.uk/nottinghilltv/carnivalfacts2003.htm.
FN59. Earlier cases were concerned with honour and reputation, see Lord Byron v Johnston (1816) 2. Mer. 29; Clarke v Freeman (1843) 12 Jur. 149; Routh v Webster (1847) 10 Beav. 561.
FN60. (1869) L.R. 2 430 PC.
FN61. (1878-79) L.R. 10 Ch.D. 294.
FN62. ibid. at 305.
FN63. See for example Earl Cowley v Countess Cowley [1901] A.C. 450; McCulloch v May (1948) 65 R.P.C. 58; Wombles v Wombles Skips Ltd [1977] R.P.C. 99; Taverner Rutledge Ltd. v Trexapalm Ltd [1975] F.S.R. 479; Lyngstad v Annabas [1977] F.S.R. 62.
FN64. [1931] A.C. 333.
FN65. (1948) 65 R.P.C. 58.
FN66. Wombles v Wombles Skips Ltd [1977] R.P.C. 99; Taverner Rutledge Ltd v Trexapalm Ltd [1975] F.S.R. 479; Lyngstad v Annabas [1977] F.S.R. 62.
FN67. The Whitford Committee considered integrating “character rights” for fictional characters into the Copyright Act but concluded that they would fit better within an unfair competition law, Cmnd. 6732 HMSO, 1976-77, para.909.
FN68. [1999] R.P.C. 567.
FN69. See for example the remarkable jingle in the opinion of Walton J. in Wombles v Wombles Skips [1977] R.P.C. 99 at p.4: “Now everything these days has to be exploited commercially and the Wombles are no exception …”; and the notion of deciding a superfluous case in Day v Brownrigg (1878) 19 Ch.D. at p.301.
FN70. The United Kingdom is introducing a privacy right, see Campbell v Mirror Group Newspaper (2002) WL 347050; The Times March 29, 2002; A v B Footballer [2002] E.M.L.R. 21.
FN71. Douglas v Hello Ltd [2001] E.M.L.R. 9.
FN72. [2003] 3 W.L.R. 1137.
FN73. [2003] 3 All E.R. 996.
FN74. ibid.
FN75. ibid. at 55.
FN76. ibid. at 50.
FN77. ibid.
FN78. [2003] 3 W.L.R. 1038.
FN79. (2003) 36 E.H.R.R. 41.
FN80. ibid.
FN81. cited by Mark Thomson, Confidence, privacy and damages: Hello! to clarity New Law Journal November 2003
FN82. ibid.
FN83. [2003] 3 W.L.R. 1137.
FN84. ibid. at 33.
FN85. ibid. at 29.
FN86. Sedley L.J., paras 110-1, in Michael Douglas, Catherine Zeta-Jones, Northern & Shell plc v Hello! Ltd, [2001] E.M.L.R. 9, December 21, 2000, CA. [2001] E.M.L.R. 9.
FN87. This was an unreported case for which a case note was written by Tony Willoughby in Trade Mark World, May 2002.
FN88. ibid.
FN89. Halliwell v Panini.
FN90. Irvine v Talksport.
FN91. [1931] A.C. 333
FN92. Medine v Geico Gen. Ins. Co. 748 So.2d 532 (La. App. 4 Cir. 1999), writ denied, 754 So.2d 945.
FN93. Gardner v Zulu Social Aid and Pleasure Club 729 So.2d 675 (La. App. 4 Cir.
1999), writ denied, 740 So.2d 1285 (Plotkin, J., dissent).
ENTLREV 2004, 15(7), 212-220

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