“Image rights” & “passing-off”

In UK law there is no such thing as an “image right” or “personality right” per se because there is no legal process in the UK which protects the Intellectual Property Rights (IPR) that identify an image or personality.

The only way in which a pure image right can be protected in the UK is under the Law of Passing-Off, which eminent authors describe as follows –

“A person who can be described as a trader has a cause of action for passing-off if he suffers damage to the goodwill in a business carried on by him from a misrepresentation, express or implied, that he has endorsed another business or its products. As always in passing-off, the terms “business” and “trader” are very widely defined and would include artists, all kinds of performers, professional sportsmen and the like. All these have goodwill in relation to their paid professional performances, and those who have an income from merchandising or endorsement have goodwill in relation to those activities as well.”

Consequently if an individual has developed a valuable reputation or goodwill, the law of passing-off will protect this reputation or goodwill from unlicensed use by other parties. A false representation that an individual has endorsed a product or service may be the cause for legal action, as long as the misrepresentation uses or takes advantage of the individual’s reputation or goodwill.

Lord Diplock in Warnink v Townend [1979] 2 All ER 927 identified five elements necessary to establish a cause for passing-off;

(i) a misrepresentation,
(ii) in the course of a trade,
(iii) to prospective customers supplied by the trader,
(iv) which is calculated to injure the business or goodwill of another trader, and
(v) which causes actual damage to a business or goodwill of the trader by whom the action is brought.

This is sometimes expressed as the classic trinity of reputation (or goodwill), misrepresentation and damage.

In Irvine and others v Talksport [2003] 2 All ER 881, Eddie Irvine (former Formula 1 racing driver) succeeded in a passing-off action relating to a false endorsement in which he was shown in promotional literature apparently listening to Talksport Radio. This was the first occasion on which a passing-off action had succeeded in these circumstances.

The Irvine decision indicates that where there is goodwill/reputation, misrepresentation and damage, the law of passing-off may be used in the UK to protect “image rights”.