UK TRADING STANDARDS The Sale of 'UnAuthorised' 'Unofficial' or 'Unlicensed' Merchandise Courts in the UK do not recognise a 'right of personality'. A person cannot claim copyright simply on the 'likeness' of their image. In some circumstances it is possible for an image of a famous individual to function as a trade mark, for example Damon Hill's eyes seen through the slit of his visor. However, trade mark registration will not protect the 'likeness' of that individual - only that of a distinctive image, and it would only prevent the use of an identical photograph or image or something so similar as to be almost identical. The trade mark would also have to be used as a true badge of origin. It would not be sufficient for the photograph to occasionally appear in magazines or on posters, it would have to be consistently used in relation to all merchandising activities in order to avoid claims of deception or non-use. The application for registration of a series of images of Princess Diana, for example, was refused by the Trade Marks Registry because, it stated, "the images were not prima facie distinctive of any good or service authorised or endorsed by the Estate". Sample UK Court Extracts In BBC Worldwide v Pally Screen Printing Limited ("the Teletubbies Case") the Court raised doubts as to the extent to which merchandising could be controlled by the owner of the intellectual property rights. The Court did not agree with the BBC. This case still colours current legal thinking. The Court said: "It seems to me that it is quite possible that members of the public will look at T-shirts bearing this artwork and think no more than it is artwork bearing illustrations of well-known television characters without having any regard whatsoever to the source of supply and without having any regard as to whether or not these T-shirts were put out with the sanction or under the aegis of the plaintiffs." In the Elvis Presley Trade Marks case the High Court held that the buying public did not care whether Elvis-related memorabilia was approved by the Presley estate. People did not mind where the merchandising was made or who licensed it. The court confirmed that it is not prepared to assume that products bearing the name or image of a character on products, are licensed or endorsed by an official source. The Court in the Spice Girls case came to the same conclusion. In denying an application by the Spice Girls to restrain an unofficial sticker book, it stated: "The defendants in the case are doing no more than catering for the popular demand for effigies and quotes of today's idols". The judge was very critical of the argument that the absence of words "not authorised" on the book cover meant there was some form of implied endorsement. In Lyngstad v Annabas, ABBA brought a claim for 'passing off' in order to stop the defendant's sale of merchandise bearing the name and photographs of the group. Here, the court refused an injunction on the basis that it doubted that there had been any misrepresentation. The judge did not accept that fans would reasonably think that the merchandise was authorised by ABBA and said the defendants were merely catering for popular demand. The following extract, by Sarah Whalley Coombes, partner, and Elizabeth May, solicitor, both members of the IP/IT Litigation Group at FFW, appeared in an article in the April 2002 issue of Copyright World. English law has long held the view that there is no right of personality; celebrities and famous personalities cannot monopolise the use of their own names and images... As celebrities cannot rely on a right of personality to control the unauthorised use of their names and images, a number of other rights have been relied on over the years. Trade mark infringement, passing off and copyright infringement have all been the subject of unsuccessful attempts at curbing the unauthorised commercial exploitation of names and images. Trade Mark Law To date, trade mark law has not proved to be a particularly useful weapon in the protection of rights in names and images, the main reason being that the use of a name, signature or image on goods does not necessarily indicate the origin of those goods. Trade marks serve as badges of origin; names and images do not. The 1999 Court of Appeal decision in Elvis Presley Enterprises Inc v Sid Shaw Elvisley Yours demonstrates the English court's attitude to the protection of personality rights under trade mark law. Elvis Presley Enterprises, which carries out the merchandising activities of the estate of the late singer, attempted to register the signature of Elvis Presley, the word "Elvis" and the words "Elvis Presley" as trade marks for products such as soaps and perfumes in Class 3. Sid Shaw, who runs a business selling Elvis merchandise, owns the registered trade mark "Elvisley Yours" also in Class 3. He therefore opposed the applications but his opposition was rejected and the trade marks proceeded to registration. On appeal, the court took the view that the "Elvis" marks had very little inherent distinctiveness and said nothing about the trade origins of the goods. Because trade marks are badges of origin of goods - not goods in themselves - if a mark is incapable of distinguishing the goods on which it appears, it is not registrable as a trade mark. The court stated that, given the legendary status of Elvis Presley, there was a big demand for memorabilia and the general public would not believe that all of it would be officially licensed and approved. The "Elvis" trade marks were therefore not registrable and Sid Shaw was able to continue to sell his "unauthorised" Elvis memorabilia because consumers were not being misled as to its origin. The court was not prepared to grant a monopoly to a celebrity so that only he or she could ever market or license the exploitation of his or her own character. The court also rejected, and stated that courts would continue to reject, a free-standing general right to character exploitation to be enjoyed exclusively by celebrities. Passing Off The protection of personality rights under the law of passing off has not proved effective either. Passing off requires reputation, misrepresentation and damage. It is the second of these elements - a misrepresentation that results in confusion - that has proved the stumbling block in personality right disputes based on passing off. In an early case from the 1970s, Lyngstad v Anabas, the pop group ABBA sued the defendants for producing and distributing badges, t-shirts and pillow cases in the UK featuring the group's picture without their permission. An application for an interlocutory injunction was refused and the judge was not satisfied that there was any real possibility of confusion. He took the view that the general public would not believe that ABBA had given their approval to all the goods offered; the defendants were simply catering for a popular demand among teenagers for effigies of their idols. As the public were buying a celebrity's likeness and not a badge of origin, there could be no confusion. In the case of Halliwell & Others v Panini (1997), the court took the same view. The Spice Girls, the famous pop group, were unable to prevent Panini's publication of an unauthorised sticker collection called "The Fab Five". The Spice Girls had their own authorised sticker collection and wanted to prevent circulation of third party sticker collections. The group argued that, because the Panini sticker collection did not contain a statement that the collection was unauthorised, the public would be misled into believing that it was authorised and that it was an official sticker collection. However, the court did not believe that purchasers of the sticker collection would care whether or not it was official. As the purchasers did not care, there was no confusion. As Panini made no claim that its products were official, it was not passing off its stickers as official products and was therefore not infringing any personality right.