Image rights (not to be confused with copyright for an image in the form of a picture or illustration) is a relatively new area of law recently developed in the interest of safeguarding the publicity value of a person (be it an actual person or a fictional character). Until about 60 years ago, the courts were not keen to recognize publicity or popularity as an intangible asset. Aside from situations where there had been a breach of confidence or privacy, the courts were reluctant to uphold the exclusive rights of a person to his “image”.
However, the rise of the celebrity culture means the courts are slowly coming to recognize the need to protect the publicity value of media personalities, celebrities and famous fictional characters. Nevertheless, progress has thus far been sluggish, and even to this day, apart from a handful of jurisdictions, most countries do not have a specific piece of legislation to protect this valuable asset. Instead, the courts would rely on a ragtag collection of existing laws to enforce publicity rights against a third party. And unlike the other Intellectual Property rights, there is also no cohesive international effort to recognize and harmonize the law relating to image rights. Consequently this area of law is also known as Publicity Rights, Character Merchandising and Personality Rights in various jurisdictions.
What are Image Rights?
Image Rights provide celebrities or the creators of famous fictional characters with the exclusive right to merchandise their “character/personality”. It affords protection to its owner by preventing the unauthorized publicizing of his/her name, likeness and photos.
How are Image Rights protected?
In most countries, Image Rights are not recognized as a distinct area of law. As such, registration of Image Rights is almost unheard of and only available in a handful of countries. To enforce their Publicity Rights, a person would have to resort to the law of Industrial Design, Copyright, Trademark, and most often the tort of Passing Off.
Can I rely on my existing Intellectual Property Rights (IPRs) to enforce my Image Rights? How?
Yes, it is possible to rely on your registered IPRs to enforce your Image Rights. Your registered trademarks may be relied upon to protect names, logos and slogans. If you have Registered Industrial Designs on your models or figurines, you may take infringement action against another party for re-producing those designs without your consent. Likewise, to protect pictures, photos and illustrations, you may rely on your copyright.
However, the protection provided by these IPRs may be inadequate, as it prevents only identical or near identical copying of the registered material.
How does Passing Off work in these situations?
The tort of Passing off is usually the preferred legal recourse in the enforcement of Image Rights. Passing Off prevents the misuse of one’s reputation by a third party. Specifically, it prevents a third party from misrepresenting to the public that a celebrity or media person is endorsing the third party’s products or services, where in actual fact there was no such endorsement.
One of the advantages in claiming Passing Off is that the action need not be based on any registered IPRs. This also gives the court more elbow room to maneuver.
How long does Image Rights last for?
In most countries, Image Rights are not provided by any specific legislation, so the duration of protection will depend on the duration of the IP laws relied upon by the owner. For Passing Off, generally the Courts have yet to accept that the Image Rights will survive beyond the lifetime of a person.
Are Image Rights recognized in Malaysia?
The Courts in Malaysia have not been asked to decide on the existence of Image Rights. However, the Malaysian Court would normally look to the decisions of the UK case laws as persuasive precedents.