1. This article was written at the time when reports of the 2000 Sydney Olympics were bombarding television screens and newspapers throughout the world.

2. The nature of the persona is considered below.

3. See E Bragiel ‘Intellectual Property Rights and the World Cup’ (1998) NU 884, where these issues are considered in the context of the1998 World Cup.

4. These problems are particularly acute with regard to the unauthorised exploitation by third parties of the persona of individuals who have achieved a temporary and ephemeral public prominence as a consequence of their involvement in a major but short-term event.

5. Or aspects of that individual's personality.

6. That is to say, in general, individuals as opposed to organisations, although incorporated associations may also constitute parties to agreements to grant such rights.

7. Or at least to purport to do so.

8. For this aspect of character merchandising, see below. The use of the persona of fictional characters in character merchandising operations gives rise to a number of interesting issues and problems which cannot be addressed in this article. It is hoped to discuss these issues in a further article.

9. See Delemore, C L ‘Character Merchandising — The Position under English Law: A review of the Teenage Mutant Ninja Turtles Case’ (1992) M L & P 229 at 229Google Scholar.

10. One of the most famous of its characters used in this context being Mickey Mouse, although we should not forget the contribution of Britain to this area of commercial activity, with characters such as Winnie the Pooh, or possibly Paddington Bear. See Carty, H ‘Character Merchandising and the Limits of Passing Off’ (1993)13 LS 289 at 290Google Scholar.

11. The extensive and very successful exploitation of the Spice Girls as part of a merchandising campaign is noted here, and is also considered below.

12. This argument is more fully developed below. See also A McGee and G Scanlan ‘Phantom Intellectual Property Rights’ [2000] 3 IPQ 264.

13. These aspects of an individual's persona have been defined as the indiciaof identity. See Frazer, T ‘Appropriation of Personality — a New Tort?’ (1983) 99 LQR 281 Google Scholar, and McGee, A and Scanlan, G ‘Phantom Intellectual Property Rights’ [2000] 3 IPQ 264 Google Scholar.

14. See M Abell ‘The Need for a UK Personality Right’ (1997) MIP17 at18.

15. In this regard, celebrities seen using products when photographed by the press, or when appearing on television, or possibly when in character in feature films, may be considered as giving subliminal endorsement to such products.

16. This point is made clearly in an article of J Holyoak ‘United Kingdom Character Rights and Merchandising Rights Today’ (1993) JBL 444 at 445. See also the famous ‘Teenage Mutant Ninja Turtles’ case, Mirage Studios v Counter-Feat Clothing [1991] FSR145.

17. In the case of Du Boulay v Du Boulay (1869) LR 2 PC 430, the Privy Council stated that: ‘We do not recognise the absolute right of a person to a particular name.Whatever cause or annoyance it may be.’ See also M Abell ‘The need for a UK personality right’ (1997) MIP17. Civil jurisdictions take a similar approach. In French law, the concept of a person having a general proprietary interest in aspects of his persona or identity has not been fully accepted. See E Gaillarde ‘La double nature du droit a l'image et ses consequences en droit positif francajs’ D1984 Chon161 at162. However, in French law, aperson does have a right to their own image, see Seine, 16. 6. 1858, D1858. 3. 62, albeit enforced by reference to the law of delict. A similar approach has also been taken with respect to a person's voice. Furthermore, dicta in the cases of Mavwell v Hogg (1867) 2 Ch App 307 at 310 and in Clark v Freeman (1848)11 Beav11 2, which concerned the refusal of an injunction to restrain the marketing of a medicine under the name of a physician, suggest that English law is capable of recognising a property right in a name. These cases are noted in J Adam Character Merchandising (London: Butterworths, 1996) 5. 6. p 105.

18. Delemore, C L ‘Character Merchandising -the position under English law:a review of the Teenage Mutant Ninja case’ (1992) M L & P 229 Google Scholar.

19. [1997] RPC 543.

20. See M Abell ‘The Need For UK Personality Rights’ (1997) 74 MIP 17.

21. In this regard, it is irrelevant whether the image which is the subject of copyright protection is in respect of a real or fictional persona.

22. Or, of course, in the case of a celebrity using their image as part of a character merchandising enterprise in which they are directly involved.

23. Enjoying the benefit of a licence to use a real individual's name and/or other aspects of the persona within a character merchandising operation.

24. See McGee, A and Scanlan, G ‘Phantom Intellectual Property Rights’ [2000] 3 IPQ 264 Google Scholar.

25. Ibid. See also Frazer, T ‘Appropriationof Personality-A New Tort’ (1983) 99 LQR 281 Google Scholar.

26. See McGee, A and Scanlan, G ‘Phantom Intellectual Property Rights’ [2000] 3 IPQ 264 Google Scholar.

27. Ibid.

28. The figure whose persona is most likely to be used within the context of a character merchandising enterprise.

29. See McGee, A and Scanlan, G ‘Phantom Intellectual Property Rights’ [2000] 3 IPQ 264 Google Scholar.

30. Regarded by the public, and in particular by the ‘fans’ of the celebrity, as part of their acquired characteristics. Examples abound of these perceived characteristics. The most powerful example is that of John Wayne, who was perceived by the public as an heroic figure. This image was cultivated by Wayne himself and the Hollywood publicity machine, notwithstanding that, in fact, John Wayne avoided military service and has never been recorded as having performed one courageous act.

31. This includes their indicia of identity and their acquired characteristics.

32. Possibly within the context of a passing off action, particularly in view of the possible effect and ambit of the Mirage Studios v Counter-Feat Clothing Ltd case, which is considered below.

33. For the purposes of this article, a celebrity is defined as a public figure who has achieved fame and a celebrity status of either a national or international nature by exploiting their talents. This includes such obvious examples as sportsmen, actors and ‘showbiz’ personalities. See McGee, A and Scanlan, G ‘Phantom Intellectual Property Rights’ (2000) 3 IPQ 264 Google Scholar.

34. By enhancing or embroidering on the ‘acquired characteristics' of the celebrity, and accordingly the perceived attributes’ of the individual concerned.

35. Or ‘persona’: these terms are interchangeable for the purposes of this article.

36. The public perception of an individual's persona takes on a permanent form, as can be seen in the case of Sean Connery, who, although nearing 70 years of age, is still described and recognised by the public as James Bond.

37. It has been suggested that the members of the group were selected because of their diverse appearances, which were exaggerated by the publicity machine so as to appeal to the largest number of fans, albeit mostly young males.

38. Such an issue should be considered within the context of a further article.

39. And in this context their name, many celebrities have selected a ‘stage name’, not merely for the purposes of avoiding confusion with already established performers, but because their real name does not match their appearance and the public image.

40. This statement would seem to be justified not only by reference to the case law concerning the rejection of copyright in a name, but also to other authorities, which are considered below and which, although not directly on this point, can be used to support the proposition by analogy.

41. The singer Bette Middler successfully opposed the use of a ‘soundalike’ singer in the United States. However, the celebrated actor the late Alistair Sim failed to obtain redress in similar circumstances: see Sim v H J Heinz Co Ltd [1959] 1 All ER 547. The court in that case refused to determine whether there was a possible action in passing off. Furthermore, at first instance, McNair J had observed that it would be ‘a grave defect in the law if it were possible for a party, for the purpose of commercial gain, to make use of the voice of another party without his consent’ (at 551). The recent experience of Joanna Lumley is also indicative of the approach of English law to this problem. The actress found that an advert on the side of an omnibus reproduced a face which bore an uncanny resemblance to her. The advert concerned beauty products. The name of Joanna Lumley never appeared on the advert, and a close examination of the advert would show that the face was that of a lookalike. Nevertheless, since the advertisement was on the side of a bus, it would not be subjected to close scrutiny by the public, with the consequence that the public would believe it was Ms Lumley who was endorsing the product. Her attempt by legal action to prevent the advert from being displayed was unsuccessful.

42. White v Samsung Electronics 12 USPQ 2d 1583 (9th Circ 1992), 508 US 9511993. In this case, the court extended protection to what can only be described as the personal make-up of the plaintiff, a games show hostess’, which consisted of little more than a long blond wig, elaborate make-up and a rather revealing style of dress. The case is not, surprisingly, without its critics.

43. Pacific Dunlop Ltd v Hogan (1989) 87 ALR14. See also Hogan v Koala Dundee (1988)12 IPR 508, where Paul Hogan recovered in an action for passing off with regard to the use by the defendants in their shops of an emblem of a koala bear, dressed as the Crocodile Dundee character. See also T Wadlow The Law of Passing Off (Intellectual Property Library) (London: Sweet & Maxwell, 2nd edn, 1995) pp 297–298, para 5. 34, where the unreported case of Flying Efvi v Flying Elvises is cited. It concerned the bizarre case of teams of skydiving Elvis impersonators. See also Schengeli Roberts ‘Elvis has left the Internet’ (1994) The Computer paper 8, No 1.

44. 25 Cal 3d 813, 834–835, 603 P 2d 425, 438, 441 160 Cal Reptr 323, 339.

45. Such as Paul Hogan's fictional Crocodile Dundee character.

46. Which we have suggested enjoys a large fictional element and is the result of an act of creativity.

47. [1983] FSR 32.

48. Which gave the artiste his stage and film persona as Adam Ant a very distinctive and striking appearance.

49. Presumably the claim would under the Copyright Act 1988 have been based on the grounds that the make- up constituted an artistic work.

50. H Laddie, P Prescott and M Vitoria The Modern Law of Copyright and Designs (London: Butterworths, 2nd edn, 1995) at 3.19.

51. See the opening remarks in this article, which address this point.

52. The literature which supports this premise is extensive see Frazer, T ‘Appropriation of Personality – A New Tort?’ (1983) 99 LQR 281 Google Scholar, and the literature cited there, Abell, M ‘The Need for UK Personality Rights’ (1997) 74 MIP 17 Google Scholar; ‘Virtual Actors and the Law; Protection provided by Intellectual Property Law Against the Use of Computer Manipulated Images of Performers’ [1997] 8 Ent LR 205; Ruijsenaar, H ‘A Legal Framework to Make Merchandising Work’ (1997) MIP 10 Google Scholar; Russell, P ‘The Commercial Exploitation of Real Names’ (1979) NLJ 791 Google Scholar. The premise, however, has not been without its critics: see Madow, M ‘Private Ownership of Public Images: Popular Culture and Publicity Rights’ (1993) 81 California LR 125 CrossRefGoogle Scholar.

53. At least in some common law jurisdictions.

54. The term ‘character merchandising right’ will be used in this article to denote the view that the individual, either through recourse to an extensive set of individual and complementary intellectual property rights, or by the creation of a single encompassing right, should enjoy the right to the exclusive exploitation of his persona for commercial gain, within the context of any character merchandising enterprise.

55. As in the case of Sean Connery.

56. Or, in the case of a deceased author like Fleming, his estate or his assignees.

57. This should be contrasted with cases such as King Features Syndicate Inc v Kleeman (O & M) [1941]2 All ER 945, which suggest that where a party without the consent of the creator or owner of the copyright in a fictional character substantially reproduces or makes an exact copy of that character for commercial purposes, then such action will constitute a breach of literary and possibly artistic copyright. See also Mirage Studio v Counrer-Feat Clothing Co Ltd [1991] FSR 145.

58. Despite our contention that the perceived characteristics of a celebrity's persona are the product of a creative act on the part of an individual and are essentially fictional attributes that might in certain contexts qualify for copyright protection.

59. And other rights and remedies which are considered below.

60. [1991] FSR 62, see also Holyoak, J ‘United Kingdom Character Merchandising Rights and Merchandising Rights Today’ [1993] JBL 444 Google Scholar.

61. See above n 60.

62. Ibid at p 453.

63. Since the court considered and rejected the possibility of an action based on passing off. Nevertheless, the intriguing possibility of founding an action on the facts of the case based on a possible new action of invasion of privacy is open to debate. Although this article is not the place for a discussion of this important topic, reference should be made to art 8 of the European Convention of Human Rights as incorporated into English Law by Sch1, Pt1 to the Human Rights Act 1998. This provision provides for a right of an individual to privacy with regard to his private and family life. However, art10 of the convention provides for a right to a freedom of expression which may come into conflict with the exercise of any right of privacy otherwise guaranteed by art 8. The relationship between these provisions will doubtless be resolved by evolving case law. A discussion of these provisions lies outside the ambit and purpose of this article, and requires further articles. The impact and effect of the Human Rights Act1998 on the concept and possible creation of a new tortious right of privacy is considered elsewhere, see McGee, A and Scanlan, G ‘Phantom Intellectual Property Rights’ [2000] 3 IPQ 264 Google Scholar.

64. Above n 60 at p 454.

65. Within the context of this article the persona or personality of a celebrity includes his perceived characteristics.

66. See also Henderson v Radio Corporation [1969] RPC 218.

67. Passing off is considered below.

68. Sim v Stretch (1936) 52 TLR 699.

69. [1931] 1 All ER 132.

70. Amateur and professional sportsmen fell into separate categories before and even after the Second World War. This division is difficult to understand in our more egalitarian society. Cricket players representing England would have to pass through different gates when entering the field of play, depending on whether they were amateurs and therefore by definition ‘gentleman’, and the professional players, who were defined merely as players. Tolley's action should be un derstood in this context.

71. (1899) 80 LT 556.

72. [1931]AC 333 at 346. See also Curelli v Wall (1906) 22 TLR 532.

73. [1995] AC 65.

74. Unless, of course, the defendant could establish a defence such as justification, where, for example, the celebrity is a secret tobacco user.

75. Or even some form of subliminal endorsement of products or services.

76. Examples include the use of a photograph of a policeman in an advertisement for foot fluid and the use of a photograph of an actress with her teeth erased: see P Russell ‘The Commercial Exploitation of Real Names’ (1979) 129 NLJ 791. Clearly this aspect of the law of defamation is a concept dependent on the current mores of society, and the cases of a previous age may be of little value as precedents.

77. Charleston v News Group Newspapers [1995] AC 65 at 69.

78. For a full discussion of the possibility of the creation of a privacy right see McGee, A and Scanlan, G ‘Phantom Intellectual Property Rights’ [2000] 3 IPQ 264 Google Scholar.

79. As opposed to a particular remedy where, for example, the unauthorised use of a celebrity's persona constitutes a defamatory act, which has been considered above.

80. As part of a character merchandising operation, to which the celebrity is a non-consenting party.

81. The most obvious examples that could be used to illustrate the point are Paul Newman and his successful business selling sauces and condiments which bear his name, and, for those of an earlier generation, the late Fred Perry and his sportswear.

82. That is to say, within the area of activity which relates or is connected with his celebrity Status eg as actor, sportsman etc.

83. Particularly within the context of an unauthorised character merchandising operation.

84. And is an implicit recognition of a proprietary right of an individual in his persona

85. Ettore v Philco (1956) 69 F (2d) 481; Uhlaender v Henricksen (1970) 316 F Supp 1277; Ali v Playgirl (1978) 447 F Supp 723. See also Frazer, T ‘Appropriation of Personality – A New Tort?’ (1983) 99 LQR 281 Google Scholar, and the cases and articles cited therein.

86. And is not considered further in this article. For a discussion of the right of privacy as it might be adopted in English law see McGee, A and Scanlan, G ‘Phantom Intellectual Property Rights’ [2000] 3 IPQ 264 Google Scholar.

87. Both generally and within the context of character merchandising operations. See Goodenough, D R ‘Re-theonsing privacy andpublicity’ (1997) IPQR 37 Google Scholar; cf Blouestein, S ‘Privacy as an aspect of Human Dignity: an Answer to Dean Prosser’ (1964) 39 NYUL Rev 962 at 963Google Scholar; Beaney, M ‘The Right to Privacy and American Law’ (1966) 31 Law & Contemp Probs 253 at 254CrossRefGoogle Scholar.

88. 202 F 2d 866 (2d Cir 1953); cert denied 346 US 816 (1953). See also The Restatement (Third)of Unfair Competition 1995.

89. Eitherby statute or by judicial creation.

90. Including the unauthorised use of the persona of a celebrity as part of a character merchandising enterprise.

91. As part of our principal contention in this article that a general ‘character merchandising right’, either by the extension of particular legal rights, or by the creation of a general remedy, such as would arise if the tort of appropriation of personality was recognised is undesirable.

92. Namely trade marks law and the tort of passing off, which are considered immediately below.

93. Noted in W M Borchad ‘Stifling Creativity by Overprotecting’ (1994) Trademark World 65.

94. See also Gordon, R ‘ A Property Right in Self-Expression: Equality and Individualism in the Natural Law of Intellectual Property’ (1993) Yale LJ 102 Google Scholar.

95. [1979]AC 731 at 742.

96. The comments of Walton J in the case of Taverner Rutledge Ltd v Trexapalm Ltd [1977] RPC 275 should be noted, where his Lordship said: ‘When one deals with a real person one has a persona with real qualities and therefore, his endorsement or the use of his name may undoubtedly suggest, or may suggest in proper circumstances, an endorsement.’

97. 6 June 1997, unreported.

98. See Kaye v Robertson [1991] FSR 62, where the concept of ‘trader’ was considered obiter.

99. British Broadcasting Corporation v Talbot Motor Company [1981] FSR 228.

100. Wadlow, T The Law of Passing off (Intellectual Property Library) (London: Sweet & Maxwell, 2nd edn, 1995) p 296, para 5. 33Google Scholar.

101. Hinesv Winnick [1947] 2 All ER 517; see also L Michalos ‘Virtual Actors and the Law: Protection Provided by Intellectual Property Law Against the use of Computer-manipulated Images of Performers’ [1997] 8 Entertainment LR 205 at 207.

102. Which may be protected in appropriate circumstances by recourse to the tort of passing off.

103. In the case of a celebrity these will usually consist of his ‘perceived attributes’.

104. Mac Productions Ltd v Clifford Davis Manageinent Ltd [1975] FSR 150. See also the opinion of Hodson LJ, albeit obiter, in the case of Sim v H J Heinz Co Ltd [1959] 1 All ER 547 at 549 where his Lordship considered that the voice of a celebrity could be a distinguishing feature constituting an aspect of a goodwill of a business or trade for the purposes of a passing off action. The dicta of McNair J at first instance, (noted above) should. however, be recalled.

105. See Lord Fraser in Warninck v Townend [1979] AC 731 at 755–756; Lyngstad v Anabas Products Ltd [1977] FSR 61 at 67.

106. (1948) 65 RPC 58.

107. [1977] FSR 62.

108. At 68.

109. Although more accurately only the perceived attributes of a celebrity's persona can be said to be ‘created’, see above.

110. [1991] FSR145. See also In Re American Greetings Corpn [1984] 1 WLR 189 at191, and Football Association Premier League Ltd v Graymore Marketing Ltd [1995] 1 EIPR D-15.

111. See King Features Syndicate Inc v Kleeman (O&M) [1941] 2 All ER 945; The law of Pussing Off (Intellectua1 Property Library) (London: Sweet & Maxwell, 2nd edn, 1995).

112. These issues have been addressed above. A fuller consideration of the issues of whether copyright protection should attach to these aspects of a personality, what form of copyright, and ancillary issues following from this premise merits a further article.

113. It is not possible to consider these requirements of the Act in this article.

114. [1999] RPC 567. See also B Cordery and J Watts ‘Character Merchandising – All Shookup?’ [1997] Entertainment LR145; ‘Elvis Lives’ (1997) 20(5) Intellectual Property Newsletter;A Abell ‘The Need for UK Personality Rights’ (1997) 74 MIP17; E Bragiel ‘Intellectual Property Rights and the World Cup’ (1998) NLJ 884 at 884–885; “Character Merchandising-An American Trilogy” (Taylor Joynson Garrea, November1997) available at http://www.icclaw.com.devs/ukip1197.htm, ‘Elvisly Everyone’ IPN Spring 1997.

115. Or the estates of deceased celebrities.

116. Namely and principally their ‘indicia of identity’ that is to say their name, likeness and signature. The Elvis case concerned these aspects of the celebrity's persona, it could not and did not, of course, consider whether other aspects of a celebrity's persona, such as the ‘perceived attributes’ of a celebrity if capable of graphic representation, and satisfying the provisions of the Trade Marks Act 1994 (the case was decided under the Trade Marks Act 1938) could be registered as trade marks.

117. The list of products in class 3 are, of course, far more extensive than those noted in the text. This illustrates that the company was seeking to register trade marks in respect of products in which the respondent was already an established trader, and who furthermore traded under a registered trade mark that was not too dissimilar to the marks which the company sought to have registered. Although these matters were not addressed by the court, it is suggested these factors must have impinged upon the mind of the court and had some influence on the decision; see below.

118. Usually his or her indicia of identity.

119. In accordance with s 3(1)(b) of the 1994 Act.

120. [1913] AC 624 at 634–635. Although the case pre-dates the 1994 Act, it is still good authority on this point.

121. Or services.

122. This passage was expressly approved by the Court of Appeal in the Elvis case.

123. This is we suggest particularly the case where the celebrity has adopted a fictional name to promote and develop his or her career.

124. Or from acting in a consultative capacity in respect of the design manufacture, marketing or sale of goods and services by an enterprise.

125. The words of Morrit Uin the Elvis case should be noted here: ‘Onanalysis, as it seems to me all the English cases which [Elvis] Enterprises seeks to rely (Mirage Studios not least) can be seen to have turned essentially upon the need to protect copyright or to prevent passing off (or libel). None creates the broad right for which in effect Mr Prescott [counselfor Elvis Enterprises] contends here, a free standing general right to character exploitation enjoyable exclusively by the celebrity. As Robert Walker L. J. has explained, just such a right, a new “character right” to fill a perceived gap between the law of copyright (there being no copyright in a name) and the law of passing off was considered and rejected by the Whitford Committee in 1977. Thirty years earlier, indeed, when it was contended for as a corollary of passing off law, it had been rejected in McCulloch v Muy [1947] 2 All ER 845. I would continue to reject it. In addressing the critical issue of distinctiveness there should be no apriori assumption that only a celebrity or his successors may ever market (or licence the marketing of) his own character. Monopolies should not be so easily created.’ [1999] RPC 567.

126. In essence as Sid Shaw had done in the Elvis case.

127. That is, as regards using the law of trade marks or passing off. The more limited remedies, for example defamation, may, however, be available in these circumstances.

128. So as to give rise to a passing off action: see above and below.

129. Which has taken a much more robust attitude to character merchandising rights: see above.

130. See CBS Songs v Amstrud [1988] 2 All ER 484, and the extended list of authorized and permitted acts in the case of material subject to copyright protection under the Copyright Designs and Patents Act 1988.

131. Either by the extension of certain present legal forms, as have been discussed in this article, or by the recognition of a new legal remedy such as would exist in the case of the recognition of a new publicity right or with a new tort of appropriation of personality, also noted above.

132. Principally, the production of goods by third parties bearing the names or other indicia of identity of a celebrity, without suggesting endorsement by the public figure or competition within a common field of activity with the celebrity, as in the Lyngstad case, or in the case of the production of Princess Diana dolls noted above.

133. The opinion of Morritt LJ, above n125, should be recalled here.

134. Giving rise to a need to make fine value judgments. Such issues should be considered as part of an independent article.

135. And we have argued in many instances the creation of third parties involved in the entertainment and public relations industry.