Image rights: The fame game

To what extent can a celebrity’s image be protected? This question was raised during actress Katherine Heigl’s $6 million complaint against pharmacy Duane Reade. In the case, filed at the US District Court for the Southern District of New York in May 2014, Heigl said that a tweet by the company suggested she had endorsed it.

She later withdrew the lawsuit but her claim demonstrated just how much value a celebrity can place on his or her image. For the likes of Heigl and other famous actors and musicians, a large amount of their income is derived from sponsoring and endorsing big brands.

“There is no way that $6 million would have been a reasonable licence fee for a tweet,” says David Bernstein, partner at law firm Debevoise & Plimpton. “We’re not talking about a national advertising campaign or full pages in magazines; we’re talking about something extremely ephemeral, which would disappear soon after it is tweeted.”

One challenge is determining how far image rights extend. In the publishing industry, one important distinction in both UK and US law is between editorial and commercial use. News publications are allowed to use images under fair use rules when reporting on somebody famous, but brands are required to gain permission for using images in advertisements.

This distinction is being steadily challenged by platforms such as social media, where everything a brand does is perceived to be for commercial purposes.

Asserting image rights claims can put a celebrity in a bind. While the celebrity will want to protect his or her image from false associations—which may interfere with deals with other established brands—making a claim could harm the celebrity’s image in the public eye as he or she may well be perceived to be acting aggressively.

Bernstein’s experience of such lawsuits, however, suggests that the opposite is the case. For him, jurors are often in awe of the famous person in the room and conjure up positive associations of the celebrity’s image that have steadily been cultivated in the media. He says that while Heigl should perhaps be “embarrassed” by such an “extravagant demand”, he expects more people to feel confident about making similar claims this year.

It is increasingly difficult to define what a celebrity is. In a world of wide-spread media coverage, the definition of a celebrity could be someone who captures the public’s attention for a short period of time. It could be for someone who is controversial, but the label is no longer restricted to those within the music and film industries, as perhaps it once was.

Image is important to celebrities engaged in film and music projects, as well as other businesses. Image rights can also act as a vehicle for fleeting celebrities, who sense their period in the public eye coming to a close, to try to make some easy money through the legal system.

Bernstein cites Robert Burck as an example of a short-term celebrity asserting his image rights. Known for his persona as the ‘naked cowboy’, Burck poses in pink underwear and with an acoustic guitar for photos with tourists in Times Square, New York. He has developed a reputation in US court rooms for asserting claims to protect his image. For example, in 2011 Burck brought a passing off claim against broadcaster CBS regarding its show, The Bold and the Beautiful, which featured a character playing a guitar in his underwear and a cowboy hat.

“It was purely a first amendment-protected character on a TV show. It is those claims that are pushing the right of publicity beyond what is reasonable. Unlike Heigl, who acts for a living, he actually makes money just by being a celebrity. He doesn’t have anything of value beyond his celebrity,” Bernstein argues.

But, as Bernstein notes: “The distinction between pure advertising and product placement is becoming a murkier dividing line.” This is evident in the last James Bond film, Skyfall, which reportedly had sponsorship deals with Heineken, Omega and Coca-Cola; in Heigl’s 2007 film Knocked Up, her character is clearly shown drinking a Corona beer.

"AS CELEBRITIES INCREASINGLY TURN TO SOCIAL MEDIA TO DEVELOP AWARENESS, USERS AND BRANDS MUST BE CAREFUL ABOUT HOW THEY SHARE OR USE THAT CONTENT."

Brands pay millions to be seen with James Bond because they recognise the enormous benefit of being associated with such a popular franchise. Such a promotion increases brand awareness, which translates into sales for the brand’s products. Where the film ends and the promotions begin is never really clear.

The closing of the gap between the rules governing the use of editorial and commercial content is most pronounced in social media. “As social media become more ubiquitous, brands are looking to exploit them,” adds Bernstein.

Image rights in Guernsey

While confusion reigns over image rights, there have been attempts to bring clarity to the issue. The Channel Island of Guernsey is home to the first image rights registry, which allows high-profile people—fictional as well as actual—to register their name, appearance, the sound of their voice, catchphrases, and so on, for protection.

The Guernsey Intellectual Property Office Image Rights register, which manages a database for people who’ve obtained rights for their images, has been open since 2012. The manager of Manchester City Football Club, Manuel Pellegrini, and tennis player Heather Watson are among the notable names who have registered their rights there.

Alan Bougourd, registrar of IP at the Guernsey Registry, is “unaware of any other jurisdiction in the world which can, or is planning to, offer the same level of protection”. It perhaps explains why the image rights register has steadily grown to cover more than 50 personalities from the acting, fashion, music and sports industries.

Bougourd expects more celebrities to register their image rights with the office in the future.

“There has generally been a trend in recent years of celebrities earning more from the exploitation of their commercial images than from the performance fees in the activity which initially brought them to general notice,” he adds. “As that trend continues, we consider that more personalities will seek to protect their image from unauthorised use.”

“Celebrities can present their image rights registered in Guernsey to a brand in the US or UK if it wants to use a particular image or signature that belongs to them. To those brands, the mere fact that a celebrity has registered his or her rights shows that they are taking it seriously. They are identifiable bona fide rights, which makes it easier to negotiate a price.”The main benefit for celebrities is actually more to do with licensing and agreeing endorsements, says Gary Assim, partner at law firm Shoosmiths.

There are benefits to the brand as well. If a contract between a celebrity and brand stipulates that his or her name and catchphrase are exclusively signed to that particular company, then the celebrity cannot jump into another deal to use the same registered rights. It offers both the brand and celebrity a degree of assurance.

At the centre of this issue is the paradox that celebrities attempt both to control and to freely share their image with the general public. An image’s value is partly defined by how popular it is with the general public.

Social media challenge celebrities to re-think how they protect their image, because it is difficult to control the way people use it afterwards. Lawsuits can be a haphazard way of trying to seize back control of an image that has entered the public domain, although as celebrities increasingly turn to social media to develop awareness, users and brands must be careful about how they share or use that content.

For Assim, clarifying existing laws is important for social media platforms, which can still appear like a ‘wild west’ in legal terms. While the Guernsey authorities are not claiming that image rights there offer solutions to the confusion around the issue among the general public, they do believe they are helping celebrities.

Identifying key features in a person’s image and registering them with an official authority shows that a celebrity is serious about entering into an endorsement deal with a brand. And as more celebrities head towards Guernsey to register their image, we may find that disputes over celebrities’ image rights are kept in the boardroom rather than the courtroom.