Image rights: the pitfalls of celebrity endorsement

Passing off will only protect an individual's name or image if it is shown that these have been used in trade and attract goodwill. While celebrities, by their nature, will be well-known, that notoriety must be distinguished from the legal requirement for goodwill.

In Irvine v Talksport, it was established that a racing driver was well known to a significant proportion of the UK public in the field of motor racing through endorsement deals, private sponsorship and merchandising, and so had sufficient goodwill in his name and likeness to support a passing off claim ([2002] EWHC 367 (Ch); www.practicallaw.com/5-101-7196).

Once goodwill is established, it must be shown that use of the celebrity's name or image gives rise to a false message that the celebrity has endorsed or is associated with the goods or services sold by the advertiser. Where companies use images of celebrities for branding purposes without permission, there are no definitive rules as to what will amount to a misrepresentation. The court's assessment will depend on the individual facts of the case and, in particular, the context in which the celebrity's name or image has been used.

Editorial use, for example, is unlikely to give a false impression of endorsement and so the risk of a misrepresentation is low. In contrast, use of a celebrity's image on a web page in conjunction with commercial branding and goods offered for sale may create afalse inference that the celebrity "recommends" the offered goods.

As found in Irvine, the risk of misrepresentation is likely to be higher where the relevant celebrity is known for licensing his likeness to promote or endorse branded goods, particularly where such licences are exclusive. This can include celebrities who are deceased and where their estate trades by licensing the celebrity's image to third party brands.

Finally, a claimant must establish that his reputation and goodwill will suffer as a result of this misrepresentation. This again will depend on the individual facts. Where a celebrity or his estate has built a business on licensing his name and image to third party brands, the goodwill in that business is more likely to be damaged by unauthorised use which creates a "false" impression of endorsement.

It is increasingly common for celebrities to register their name or image as trade marks. David Beckham's name, for example, is registered as a Community trade mark for goods including perfumes, sunglasses, jewellery, posters and toys.

Whilst such registrations provide a degree of protection against unauthorised use, the trade marks can be challenged on issues as to whether the celebrity's name is capable of performing the origin function of a trade mark. In other words, the mark DAVID BECKHAM as applied to a poster may simply describe the image depicted on that poster, rather than indicate the commercial source from which it originates. This view was confirmed in Linkin Park LLC's Trade Mark Application, where it was noted that "consumers were well aware of the existence of unauthorised reproductions" ([2006] ETMR 74; www.practicallaw.com/3-200-5513).

Whilst the unauthorised use of celebrity likenesses may constitute trade mark infringement in certain circumstances, such trade marks can be difficult to enforce. It is arguable that the more famous the celebrity, the more likely that use of his name or likeness will be deemed descriptive and so not amount to trade mark use. The commercial risk to advertisers of a trade mark infringement claim may therefore be lower than that posed under passing off.

Under the Data Protection Act 1998, photographs of a person constitute personal data. Use of images of a living celebrity may amount to processing of that personal data and so must be handled according to data protection principles. Personal data must be processed fairly and lawfully, a principle which may be contravened where an image is used without consent.

Use of the image without consent will only be permitted where it is done in the pursuit of legitimate interests (for example, the journalistic exemption where publication is in the public interest). However, it is difficult to see how the unauthorised use of a celebrity's image would fall within such an exception if used for branding purposes, whereas editorial use may be exempt.

There is no standalone law of privacy under English law, although confidence in personal matters may be protected under certain circumstances. This will apply to celebrities, although they must expect more intrusion arising from legitimate public interest. English law must balance the rights afforded under Articles 8 and 10 of the European Convention on Human Rights (namely, the right to respect for private life and the right to freedom of expression). Photographs are afforded a greater degree of protection in this context because they have a greater capacity to be intrusive.

Where an image is taken of a celebrity in an obviously private situation, such as on a family holiday, the unauthorised use of that image is likely to be considered an intrusion into their private life. Where an advertiser wishes to use an image of a celebrity (for example, where that celebrity is wearing an outfit designed by the relevant brand), care should be taken to ensure that the image was taken at a public event where consent can be implied (subject to the other considerations set out above). In an age of blogs, Twitter and other social media, it should also be underlined that the publication of a private photograph elsewhere does not strip the image of its private or confidential character.

The CAP (Committee of Advertising Practice) code provides that advertisers must obtain permission before referring to a celebrity in an advertisement or implying personal approval of the marketed goods. Such considerations are similar to those relevant to a false endorsement claim under the law of passing off. It should also be noted that the ASA's (Advertising Standards Authority) remit has recently been extended to the online sphere, including social networking platforms, so brands should be careful when featuring celebrity images on sites such as Facebook or Twitter.

Whilst personality rights are given far greater protection in other jurisdictions, English law presents individuals with a number of avenues by which to explore a claim for unauthorised use of their image or likeness. In an increasingly digital world, advertisers seek to boost their online identity through the use of viral advertising, blogs and social media.

The onus is on advertisers to ensure that they clearly differentiate between editorial use of celebrity images and other uses that may be deemed to create the impression of false endorsement. The trend towards official celebrity endorsement deals, such as recent campaigns featuring Olympic athletes, will only serve to strengthen the argument that a celebrity has protectable goodwill in his name and image.