Image rights and passing off: should reputation be enough for celebrities to succeed in English courts?

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• the Internet has greatly enhanced the speed at which information spreads across the globe. As a result, it has become imperative for some companies and celebrities to obtain IP protection in multiple countries even when those IP rights (such as passing off) are not specifically governed by multilateral treaties.

• is difficult to argue against the application of the decision in Starbucks (HK) to celebrities.

• there are no image rights in English law

• tarbucks (HK) v Sky ruled that mere reputation is not enough to succeed in an action for passing off and that claimants must show goodwill in the form of customers within the country.

• ercial context.2 This has not always been an easy option and it has been particularly difficult for some celebrities to satisfy some of the elements of the classic trinity,

• hey will either have to take steps to exploit their names or images in the country through endorsements in order to establish the requisite goodwill or take steps to obtain trade mark protection for their names or images

• he decision in Starbucks (HK) equally raises the question whether it is now time for English courts to recognize a new tort of publicity rights in order to provide better protection for celebrities under English la

• i]t is the benefit and advantage of the good name, reputation, and connection of a business’ and ‘the attractive force which brings in custom.

• ocalize goodwill

• establish actual goodwill in England to succeed in a passing off action and mere reputation is not enough.

• e an office within the country and it suffices if a claimant could show that there were people in the country who, through booking with or purchasing from an entity in the country, obtained the claimant’s service abroad.

• ]he notion that goodwill in the context of passing off is territorial in nature is also supported by refusal of judges to accept that a court of one jurisdiction has powers to make orders in relation to the goodwill in another jurisdiction

• heir sign/badge is their name or image and it is the goodwill that is attached to their name or image that is protected by the tort of passing off

• ct that it is common for famous people to exploit their names and images by way of endorsement. Th

• been engaged to sponsor a variety of products including, amongst others, sunglasses, men’s toiletries, fashion clothing, footwear and car racing helmets

• Fenty v Arcadia

• Rihanna’s goodwill extended beyond music into the world of fashion as a style leader.

• goods authorized by Rihanna were available in stores operated by companies in the defendants’ group

• catering for a popular demand among teenagers for effigies of their idols’.

• ants’ goods could possibly be confused.40 Crucially, the court stressed that ‘goodwill is of course an essentially localised concept and the court does not interfere to protect against exploitation here a foreign business which has established no goodwill here