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Rihanna, Topshop and a Narrow Opening to Image Rights in the English Legal System?
The English legal system does not acknowledge image rights. Celebrities cannot claim a monopoly on their image, nor a right to control the use of their name, likeness and other attributes that the public associates with them. Historically, they have resorted, as a compromise, to other forms of protection, such as registered trade marks and passing off (see explanation of passing off below), in particular.
However, a recent appeal judgement by the English Courts indicates that in certain circumstances, and depending entirely on the facts of the case, the Common Law tort of passing off can be “stretched” to prohibit the commercial use of celebrities’ images. This precedent is, in the view of the author, likely to be applied tightly, but presents an opening that celebrities will look to rely on to control the use of their image by unauthorised third parties.
The appeal judgement relates to the entertainment industry and follows a case successfully brought by pop-star Rihanna against the high street retailer Topshop. However, the implications for sports personalities, for whom a large proportion of the earnings originates from product endorsements, are self- evident and possibly greater that those for the entertainment industry. (more…)
Brands & Designs Seminar Review (Wragge Lawrence Graham and Co)
Wragge Lawrence Graham and Co held its annual Brands & Designs Seminar in London on 25 June 2015. As you would expect, the Seminar was extremely informative and interesting, and well attended!
Kate Swaine kicked off proceedings by discussing the rise in passing off cases throughout the last year. Kate posed the question as to whether the recent increase in passing off cases was highlighting a new trend. She asked whether this was due to misrepresentation seemingly being easier to define than likelihood of confusion, the fact that a brand has now expanded considerably further than just a ‘name’ and celebrities are more conscious of their own brand power, as well as the apparent constraints of a trade mark registration, making passing off a more attractive option. (more…)
Misleading Invoices – the UKIPO fights back
For any avid readers of the IPcopy (hi mum), you will have noticed that the subject of misleading invoices rears its ugly head on a regular basis. To summarise, if you are the owner of an intellectual property (IP) right then you may from time-to-time receive communications that resemble official looking invoices for IP services. Such misleading invoices are sent directly to the IP owner and are designed such that they give the impression to the IP owner that they have to either use the service offered or pay the amount listed, often at inflated rates.
In a positive development in the fight against companies imitating official Intellectual Property Offices, the UK Intellectual Property Office (UKIPO) has succeeded in bringing legal proceedings against Mr Aleksandrs Radcuks (trading as ‘Patent and Trade Mark Office’) and Mr Igors Villers (trading as Patent and Trade Mark Organisation), who admitted and settled the UKIPO’s claims of passing off. (more…)
The Duffin Controversy: Fear not Bea – all is not lost!
As a lover of all things food-related, I was surprised this week to hear of a tasty baked good that hadn’t yet made it onto my radar – and a tasty baked good that has come to the world’s attention as the subject of an IP dispute, no less! What more could a girl ask for? Readers will probably already be aware of the ‘Duffin’ – the donut-muffin hybrid that has been made and gradually popularised by Bea’s of Bloomsbury since 2011, and that is now the subject of a trade mark registration by a company that supplies Starbucks (boo hiss taxes etc, etc).
Now, I’m no trade mark attorney – patents are more my bag – so if a contentious issue like this stumbled across my path, I’d be hailing down one of my esteemed trade mark colleagues to untangle it. But as it happens, I’ve spent most of this week committing as much trade mark law as possible to memory in preparation for professional exams, and this real-life example has served as excellent revision fodder.
A few basics of trademark law shed a lot of light onto this situation, and the real legal situation is rather different from the picture that might appear at first sight. Could big-bad Starbucks really stop Bea’s bakery, and others, from using the name Duffin? Well, purely as a self-training exercise, here’s my personal take on the situation.