TITLE: APPROPRIATION OF PERSONALITY IN THE COMMONWEALTH

CARIBBEAN

AUTHOR: GREAVES-FEARON K.L

AFFILAITION: ATTORNEY-AT-LAW AND LECTURE AT THE UNIVERSITY OF

TECHNOLOGY, JAMAICA

TELEPHONE: 876-784-2834

EMAIL: greavesfearon@outlook.com; legallykali@gmail.com

1
 Introduction

The tort of appropriation of personality in the Commonwealth Caribbean is underutilized and in

need of reform. This tort was recently established in the region with the intention of providing

protection against the appropriation or the unauthorized use of the personality of celebrities in

the region. However, in the Commonwealth Caribbean, the tort has failed at both the common

law and statutory level to provide adequate protection for celebrities and other persons. The

common law on the area is limited in its scope, as it covers only celebrities and there is only one

case from the region in which the tort was invoked, which is The Robert Nesta Marley

Foundation v Dino Mitchelle Ltd1 case. There is also no statutory provision in the region

covering the tort. Therefore, it is safe to say that appropriation of personality is a budding area of

law in the region and in need of reform. This paper will examine the possible reasons the tort is

underutilized and possible ways of improving the protection that is available for personality

rights.

Appropriation of personality is described by the nomenclature personality rights in the United

States and existed in that country from as early as the 1960s as evident by the case Haelen

Laboratories, Inc v Yopps Chewing Gums, Inc.2 The tort existed in Canada since the 1970s. In

the 21st century, it was introduced to the United Kingdom in the way that it is known in Canada

and the United States. It is notable that in the United Kingdom the tort developed at a much

slower pace than in Canada and the United States.

This paper will also examine the tort of passing off which is used principally to protect against

unfair trading in the region. It will look at the development of appropriation of personality in the

1
(1994) 31 J.L.R 197.
2
202 F.2d 866 (2d Cir. 1953). There, Frank Circuit Court Judge stated that a man has a right in the publicity value to
grant to whomever he likes, the exclusive privilege of publicity value of publishing his picture.

2
Canada, Australia, United States, United Kingdom and the Commonwealth Caribbean. It will

also examine the statutory protection that exists for unfair trading in the Commonwealth

Caribbean and provide recommendations for the development of the law of appropriation in the

Commonwealth Caribbean.

3
 Passing Off Generally

The action in passing off arose in the 19th century out of the use by one trader in connection with

his own goods, the name or marks of a rival trader so as to induce in potential purchasers the

belief that his goods were those of the rival trader.3 This is classic passing off and it is grounded

in the principle enunciated by Lord Longdale M.R. in Perry v Truefit,4 that a man is not to sell

his own goods under the pretence that they are the goods of another man.5

In its early years, the law of passing off or classic passing off was bound by many shackles.

These include the requirement that a trader misrepresent his goods to be that of another trader, as

stated in Reddaway v Banham,6 to the requirement of a misrepresentation that the business of the

plaintiff and the defendant, though they are not competing traders in the same line of business,

were connected with one another as stated by Lord Diplock in Erven Warnick and Another v J.

Townsend and Sons,7 and having the effect of damaging the reputation and thus the goodwill of

the plaintiff’s business. The requirement adumbrated by Lord Diplock in Warnick was pioneered

by Lord Parker in AG Spalding & Brothers v Gamage. There, Lord Parker stated that the subject

of passing-off action is the property in the business or goodwill likely to be injured by the

misrepresentation.8 Lord Parker’s statement marked the development of the modern law of

passing off. Goodwill is defined as the benefit and advantage of the good name, reputation and

connection of a business. It is the attractive force which brings in custom.9

3
Erven Warnick and Another v J. Townsend and Sons [1979]AC 731 at 740.
4
(1842) 6 Bea 66.
5
ibid 73.
6
[1896] AC 199.
7
[1979]A C 731 at 741.
8
(1915) 32 RPC 273.
9
per Lord Macnagthen in Inland Revenue Commissioner v Muller & Co, 1991 AC 213 at 223 and 224.

4
Another evolutionary development in the law of passing off was the breakaway from the

requirement adumbrated by Wynn-Parry J in McCulloch v May, that the plaintiff and defendant

be engaged in a common filed of activity.10 In that case, the plaintiff was a famous presenter of

children’s radio programs. He was known as Uncle Mac, the defendant sold cereal with this

name written on the box. The name Uncle Mac was also used in various advertisements to

promote the product. Wynn-Parry J held that in order for passing off to be established, the

plaintiff and the defendant must be engaged in a common field of activity.11 This principle was

criticized by Ewatt CJ and May J in the full court of the Supreme Court of New South Wales in

Radio Corporation v Henderson.12 There, they commented that ‘if deception and damages are

proved, it is not easy to see justification for introducing another factor as a condition of the

court’s power to intervene’.13 This dictum was applauded by Clarke J in the Bob Marley case.14

The principle was eventually overruled in Irvine and Others v Talk Sport Radio.15 There, Laddie

J opined that it was impossible to accept that the plaintiff and the defendant must be in a

common field of activity in order for a cause of action in passing off to succeed.16

The law of passing off was put on surer footing by the case Erven Warnick v J Townsend. There

the essential ingredients of the tort were derived from the combined test put forward by Lords

Diplock and Fraser. In Erven Warnick, the plaintiffs had for many years manufactured and

distributed a popular drink in England named Advocaat. The defendants made and marketed in

England a similar drink described as Keeling Old English Advocaat. The plaintiffs sued for

passing off. The court held that the essential ingredients of the tort are: (1) that the plaintiff’s
10
[1947] 2 ALL ER 845.
11
ibid 851.
12
[1960] NSW 279.
13
ibid 282.
14
(1994) 31 J.L.R 179 at 203.
15
[2002]2 ALL ER 414.
16
ibid 373.

5
business comprised selling … a class of goods to which the particular trade name applies; (2)

that the name is distinctive of the plaintiff’s goods; (3) that goodwill is attached to the name; (4)

that the defendant has made a representation; (5) that he has done so in the course of trade to

customers or ultimate recipients of the goods; (6) that the business or goodwill of the plaintiff is

likely to be damaged.17

The applicability of this test to circumstances in the Commonwealth Caribbean is clear of

doubts, as Clarke J in the Bob Marley case expressed his approval of it and applied it to facts

from the region.

Though the above developments occurred, the law of passing off was still inadequate in

protecting the unauthorized use of a celebrity’s name, image or likeness, because of the

requirement that the defendant has made a representation that his goods or business is connected

to the business or profession of the plaintiff. This was illustrated in the Canadian case Athans v

Canadian Adventure Camp, where Henry J stated that in proving passing off, the plaintiff had

overcome the hurdle in McCulloch v May, which is a common field of activity, but that the

plaintiff must prove that the public would believe that the defendant’s business is associated with

the plaintiff’s.18

17
[1979]AC 731 at 738.
18
(1977) 80 DLR (3d) 591. Henry J stated that the plaintiff had made out a cause of action for passing off and the
deciding factor was that the relevant segment of the population would read the advertisement and brochure and
associate the business of the defendant with that of the plaintiff.

6
 General Notes on Appropriation of Personality

An individual’s name, likeness, voice or other indicia of his identity comprises the ‘personality’

aspect of appropriation of personality, whereas appropriation may arise through any medium but

will usually concern a photograph, drawing, printed publication of name or impersonation.19

Therefore, appropriation of personality is the use of an individual’s personality in advertising or

merchandising without his or heir’s consent. It may also be described as an infringement of a

person’s exclusive right to market his personality for gain.

Around the mid 20th century there was a change in how celebrities viewed the commercial use of

their personality in Canada and other countries in the world, such as the United States. The

period marked or illustrated a change in customary commercial practices. Celebrities realized the

commercial value of the use of their likeness in advertisement.20 A new field of commercial

activity developed, whereby persons such as professional athletes enjoyed large incomes from

the possibilities of exploiting the publicity value of their notoriety and personality. Athletes and

other celebrities recognized that they had earning power not only in their roles as a footballer,

for example, but also in their ability to attach their personality to commercial products with a

view of endorsing them, or to participate otherwise in commercial advertising. The tort also

developed because it was thought to be unfair that one should be permitted to commercialize or

exploit or capitalize upon another’s reputation or accomplishment merely because the owner’s

accomplishments have been highly publicized.

19
Tim Frazer, ‘Appropriation of Personality - A New Tort?’ [1983] LQR 99, 281
20
In Haelen laboratories it was stated at pg 868, that the feelings of many prominent persons is no longer bruised
because of public exposure of their likeness, they would feel deprived if they were no longer able to permit the
commercial use of their likeness.

7
 Appropriation of Personality in Canada

Though the existence of the tort appropriation of personality was first acknowledged in the

Commonwealth by Evatt CJ in Henderson,21 it was the Canadian courts that nurtured the tort. In

Canada, the tort was first expressly acknowledged by Estey J.A. in Krouse v Chrysler Canada

Ltd22. There the plaintiff wore a certain number on a football team. The defendant created an

advertising device called the spotter, which featured the plaintiff and other players, but the

plaintiff was the only player that was identifiable. The plaintiff argued that his personality was

appropriated. Estey JA stated that there exists in law the tort of appropriation of personality, that

there is a right in the nature of a property right to the exclusive use of one’s personality.

However, the court held that on the facts of the case, the tort had not being committed, as the

photograph was not used to associate the plaintiff with the commercial enterprise. It was the

game of football that was deliberately incorporated in the advertisement, not the plaintiff’s

personality.23 Estey JA also noted a caveat that it was dangerous to use the law of tort to cover

every instance of exposure in public which is not expressly authorized. 24 His decision seemed to

have been based partly on public policy, as he proceeded to a state that ‘progress in the law is not

served by the recognition of a right which while helpful to some person or classes of persons,

turns out to be an unreasonable disruption to the community at large and to the conduct of

commerce.25

Estey JA gives the impression that whether a claim succeeds also depends on the level of

popularity of the celebrity. This was indicated by his statement that Krouse was not one of the

21
There, Mannings J stated that the defendant appropriated the plaintiff’s personality without his permission.
22
(1973) 40 DLR (3d) 15.
23
Ibid.
24
ibid 30.
25
Ibid.

8
more popular players on the football team, as if to say that had he being more popular the claim

might have succeeded. If the above proposition is an accurate reflection of his thoughts, then it is

arguable that his thoughts on that point are misguided. Because, there are instances where well

known celebrities’ personality is appropriated, but the court ruled that the cause of action was not

made out. One such instance is the case of Namath v Sports Illustrated.26 There, the legendary

1970’s foot ball star Joe Namath’s picture was placed on the cover of a magazine after the 1969

Super Star Bowl Namath did not object. However, the magazine later republished that same

picture in another publication as advertisements for the magazine. The court held that the use of

the professional athlete's photograph was merely incidental to the advertising of the publisher's

magazine in which athlete had earlier been properly and fairly depicted, and the language of

advertisement did not indicate the athlete's endorsement of the magazine, therefore, there was no

invasion of the athlete's right to privacy.

The court in Krouse made a bold move by recognizing the tort. However, the decision was not

very clear. It is difficult to identify any clear pattern of inductive reasoning. The court relied on

several authorities, most of which did not properly support his claim that appropriation of

personality could not be made out. For instance, he relied on Clarke v Freeman.27 This was an

action in defamation. Had this action been decided when Krouse was, it may have been

decidedly different based on the development of the law, as there was clear appropriation of the

plaintiff’s personality in that case. Moreover, Clarke v Freeman was arguably a bad decision.

In Athans v Canadian Adventure Camps Ltd., the cause of action recognized in Krouse was

advanced by the plaintiff. In that case the plaintiff was a professional water-skier of international

repute. A drawing of his photograph was used by the defendants in a brochure advertising a
26
(1975) 371 N.Y.S 2d 10 Capp Div.
27
(1848) 11 Beav. 112.

9
summer camp. 28 The courts analysis in that case was bifurcated. First Henry J examined whether

there was wrongful appropriation of personality and held that, this was not found because

viewers of the impugned materials would not infer that Athans had sponsored or endorsed the

camp. Secondly, he examined whether the plaintiff’s exclusive propriety right in the marketing

of his personality was violated. He held that the defendant was liable for appropriating the

plaintiff’s personality, the reproduction of the drawing for commercial advantage being an

invasion of the plaintiff exclusive right to market his personality. Arguably, Henry J in Athans

took the law further than Estey JA in Krouse. In Krouse, an association or endorsement was

looked for by the court and the success of the tort depended on it. The finding of the tort in

Athans was based on other grounds; invasion of the plaintiff’s exclusive right to market his

personality.

The court in Athans took a less strict approach to the establishment of the tort than the English

courts as illustrated in cases such as Irvine v Talksport Radio.29 In Athans, the tort was found

although not a significant number of people would have been able to identify the plaintiff from

defendant’s drawing. In Irvine, a famous formula One Racing driver’s personality was

appropriated in that the defendant issued brochures with the plaintiff holding a radio bearing the

name of the defendant’s radio station. Laddie J held that in order for extended passing off (which

in essence is appropriation of personality) to be made out, a not insignificant number of recipient

of the defendants brochure must assume that the plaintiff had endorsed the radio station.

Therefore, two things were required that was not required in the case of Athans : (1) an

endorsement and (2) identification by not an insignificant segment of viewers of the brochure.

The latter was not present in Athans.

28
1977) 80 DLR (3d) 591.
29
[2002] 2 ALL ER 414.

10
The law as developed in Krouse and Athans was applied to other Canadian case. One such case

is Joseph v Daniels.30 The facts of the case are similar to Krouse. There, the plaintiff was an

amateur bodybuilder who, in exchange for a fee, posed for a picture to be used in a magazine.

The defendant decided to market the picture depicting only the plaintiff’s torso on greeting cards

and posters, without the plaintiff’s consent. The plaintiff sued for appropriation of personality.

Wallace J held that the claim for appropriation of personality was not made out on the basis that

the plaintiff was not physically identifiable in photograph.31 This case supports the principle

espoused in Krouse that a person has an exclusive right to market his personality, though the case

did not succeed on this ground. In Athans, identification of the plaintiff in the advertisement did

not appear to be a significant issue, however, in Joseph, Wallace J stated that unauthorized use of

the plaintiff’s personality and identification of indicia of his personality goes to the core of the

tort.32 Though there was no appropriation of personality, Wallace J awarded damages to the

plaintiff on breach of an implied limitation in the party’s agreement to use the photograph only in

a certain magazine. Therefore, like Henry J in Athans, Wallace J made an award for damages but

on different grounds.

A common law case touching on appropriation of personality is Ontario Court of Appeal 1998

decision of Gould Estate v Stoddart Publishing Co.33 In that case, a freelance writer and

photographer obtained the permission of Glenn Gould, then a famous pianist, to take pictures of

him and record an interview with the pianist for an article. After the death of the pianist, the

writer used the pictures and notes from the interview to publish a book on Gould. His estate sued

for appropriation of personality. Unlike the lower court, the decision did not turn on

30
(1986), 11C.P.R (3d)544.
31
(1986), 11 Cpr (3d) 544.
32
ibid 549.
33
(1998) 39, O.R. (3d) 545.

11
appropriation of personality but instead on conventional principles of copyright. It was held hat

no conditions were imposed on interviewer with respect to the types of photos to be taken or the

subject of the profile, or even with respect to whether an article would appear at all. 34 That

Gould granted on unlimited consent to the photo and the interviews and that no contract, express

or implied prescribed Caroll’s (interviewer) rights at all. 35 With respect to breach of copyright,

Finlayson JA held that Gould Estate did not have copyright in the photos and interview notes and

tapes.36 That the copyright to the book’s text and photos was owned by the author of the book

and the photos and therefore there was no breach of any other party’s copyright.37

Finlayson JA thought it irrelevant to explore the issue of appropriation of personality. He stated

that once Gould consented without restriction to be the subject matter of a journalistic piece, he

cannot assert any proprietary interest in the final product nor can complain about any further

reproduction of the photographs nor limit the author of the journalistic piece from writing further

about him.38 Therefore Gould’s estate cannot claim misappropriation of personality because

someone other than Gould’s estate owned the copyright in the photos and text.

Finlayson JA’s commented that there was no appropriation of personality because the defendant

took the photographs and therefore had copyright, but this does not seem plausible based on

authorities such as Aubry v Editions Vice-Versa Inc.39 In that case, a non celebrity brought an

action in civil liability against the defendant because a photograph of her, when she was 17 years

old was published without her consent. In both cases the plaintiff’s identity was used in a work

without their consent, in the form of a photograph taken by the respective defendants. In the

34
ibid.
35
ibid.
36
ibid 546.
37
ibid.
38
ibid.
39
[1998] 157 D.L.R (4th) 577.

12
Aubry the plaintiff succeeded, whether the plaintiff or the defendant was the owner of the

copyright in the picture seemed insignificant to the deciding of the case. Arguably, these two

cases are difficult to distinguish. This view is supported by Abramovitch.40 However, it is

arguable that these two cases are distinguishable on the ground that the claim in Aubry’s case

was a breach of the statutory right to privacy, whereas in Gould the claim was based on

misappropriation of personality. Finlayson JA’s argument that the deciding factor in the case is

ownership of the work was further criticized by Abramovitch. She stated that it is trite law that

ownership rights cannot be exercised where they cause harm to another and that the courts have,

since Krouse, accepted that misappropriation of personality is one such restricted harm.41

In the lower court the issue of misappropriation was not seen as trivial to the case. However, like

in the Court of Appeal, judgment was not given to the plaintiff, albeit on different grounds.

Lederman J held that based on the authorities it can be concluded that the tort of appropriation of

personality is restricted to endorsement situations,42 that the case law shows sensitivity to the

public interest and, like Estey JA in Krouse,43 he thought that there should be a limit on the tort.

He thought the public interest in freedom of expression should trump personality rights. He also

drew a sale v subject contrast, to the result that where the celebrity is the subject of the work and

the work is an attempt to provide insight about the celebrity, the work does not invoke the tort,

whereas sale is where the identity of the celebrity is used to constitute a commercial exploitation,

this invokes the tort. The case according to him fell into the former category.

The decision in Gould is important as it provides two helpful elements in the tort appropriation

of personality (1) the defendant bears the onus of proof that there was no misappropriation. (2)
40
Susan Abramovitch, ‘Misappropriation of Personality’ (2000) 33 Can. Bus. L.J. 230, 237.
41
ibid.
42
(1996) 30 OR (3d) 520 at 521.
43
(1973) 40 DLR (3d) 15 at 30.

13
That a person’s exclusive right to market his personality survives his death. 44 However, like

Finlayson JA’s judgment in the court, the reasoning in Lederman’s judgment is questionable. It is

arguable that the claim could have been dismissed on the ground that the estate of a deceased

person had no standing to sue. There is no authority prior to Gould to suggest that the proprietary

right in the exclusive marketing of a person’s image survives the person’s death, it was purely

personal and therefore the estate should not have been allowed to sue for breach of appropriation

of personality.45

Lederman J argued that appropriation of personality only applies to endorsement situations.

Arguably this argument was built on unstable grounds, as the authorities prove otherwise. In

Athans the plaintiff succeeded on proving appropriation of personality although Henry J held that

the plaintiff had not endorsed the camp and the image was not used in a manner that constitutes

an endorsement or other association with the camp. The unauthorized use of the plaintiff’s

‘representational image’ in itself was held to constitute an impairment of his exclusive right to

market his personality and thus came within the ambit of the tort of appropriation of

personality.46 Despite this, Lederman’s interpretation of Athans v Canadian Adventure Camps

was consistent with an endorsement situation.

In Raccine v CJRC Radio Capital Lee47 there was no suggestion that the plaintiff footballer

player endorsed the defendant radio station. There was likewise no suggestion by the defendant

that the plaintiff endorsed the defendant’s cigar business in Baron Phillipe de Rothschild, SA v

Co Case de Habana.48 Also in Heath v Weist- Barron School of Television Canada Ltd., there

44
(1996) 30 O.R. (3d) 520 at 528.
45
Huw Beverley-Smith , The Commercial Appropriation of Personality (Cambridge University 2002) 132.
46
(1977) 80 DLR (3d) 591 at 595.
47
(1997) 17 O.R. (2d) 370.
48
In this case an application was made for an interlocutory injunction against the unauthorized use of the name
Rothschild in the sign of a cigar shop. It was held that the tort was made out as the name was used without

14
was no suggestion that the plaintiff had endorsed the defendant’s television school.49 The only

support for an endorsement situation was found in Krouse, but as stated earlier, later cases took

an arguably different position on the issue.

The decision in Gould was followed in Horton v Tim Donut. There, Tim Horton was hockey

player, who was deceased. Prior to his death, he had set up a donut shop. After his death his

widow sold his shares in the company to his former partner. The former partner placed a picture

of Tim Horton in the shop in order to raise money for charity. Tim’s wife sued for appropriation

of personality. Justice Lax held there was no unlawful appropriation where the predominant

purpose of displaying the portrait is charitable and commemorative and there is public interest in

knowing more about the individual.50

Publicity Rights in the United States

authorization.
49
(1981) 34O.R. (2d) 126. In that case the plaintiff, professional actor alleged that the defendant used his
photograph and identity despite expressed denial of permission. It was held that there was the appropriation of the
plaintiff’s personality.
50
[1997] 75 C.P.R. (3d) 451

15
In the United States, the protection provided against the unauthorized use of a person’s name or

likeness for commercial purposes, is described as publicity rights. Publicity rights sprung from

the right to privacy, but are a distinct right from the right to privacy. Publicity rights may be

traced to the New York decision of Haelan Laboratories v Topps Chewing Gum.51 In that case, a

chewing gum manufacturer that had obtained exclusive rights to reproduce baseball players’

photographs on baseball cards sued another chewing gum manufacturer which had subsequently

been granted the same rights from the players. The court held:
In addition to and independent of that right of privacy…a man has right in the publicity
value of his photograph, i.e. the right to grant the exclusive privilege of publishing his
picture. This right might me called a “right of publicity.” For it is common knowledge
that many prominent persons (especially actors and ball-players), far from having their
feelings bruised through public exposure of their likeness, would feel sorely deprived if
they no longer received money for authorizing advertisements, popularizing their
countenances, displayed in newspapers, buses, trains and subways. This right of publicity
would usually yield them no money unless it could be made the subject of an exclusive
grant which barred any other advertiser from using their picture.52

Some states have statutory protection of publicity rights. For example there is the California

Civil Code and the New York Civil Code. Section 3344 of the former provides that:
Any person who knowingly uses another’s name, voice, signature, photograph, or
likeness, in any manner, on or in products, merchandise, or goods, or for purposes of
advertising or selling, or soliciting purchases of products, merchandise, goods or services,
without such person’s prior consent…shall be liable for any damages sustained by the
person or persons injured as a result thereof.

Section 50 of the New York Civil Code provides that:

51
202 F.2d 866 (2d Cir. 1953).
52
ibid 868.

16
A person, firm or corporation that uses for advertising purposes, or for purposes of trade,

the name, portrait or picture of any living person without first having obtained the written

consent of such person, or if a minor of his or her parent or guardian, is guilty of a

misdemeanor.

Appropriation of personality in Australia

17
The approach taken towards the protection of personality in Australia is much broader than that

in the United Kingdom and Canada. In Australia, the law not only covers appropriation of name,

image or other indicia of personality but also fictional characters under the extended tort of

passing off. In Australia personality protection falls under the heading misappropriation of

intangibles or the extended tort of passing off. In Canada as stated earlier, the tort is described by

the nomenclature appropriation of personality which at the moment has not yet been extended to

cover just about any image created by the plaintiff. But considering that the Canadian courts

have been open to the development of the tort, when the opportunity presents itself, it is arguable

that the tort will be extended to cover fictional characters. It is observed that a coherent

definition of misappropriation of intangibles has not been provided by the authorities.

Misappropriation of intangibles protects the filching of any image created by the plaintiff or any

aspect of his personality or likeness or business by the defendant for endorsement purposes and

also unconsented character merchandising. The extended tort of passing off in Australia covers

cases where the plaintiff is not alleging that the defendant is misrepresenting his goods to be that

of the plaintiff, but instead cases where the plaintiff alleges wrongful appropriation of his

reputation or more widely the wrongful association of goods with an image belonging to the

applicant. 53

Cases falling under the extended tort of passing off are usually classified as either endorsement

or character merchandising cases. The former occurs where someone tells the relevant public

that he approves of the product or service or is happy to be associated with it.54 Character

merchandising on the other hand involves the exploitation of images, themes or articles which

53
Hogan and Another v Koala Dundee (1988) 12 I.P.R. 508 at 518.
54
Irvine v Talksport Radio [2002] 2 ALL ER 414 at 416.

18
have become famous.55 Arguably misappropriation of intangibles in Australia is very wide and

subsume extended tort of passing off.

It is unclear as to exactly what the requirement is in Australia with respect to establishing a cause

of action based on character merchandising. It is not clear if the requirement is one of a

misappropriation or a misrepresentation. This uncertainty is evident on an examination of Hogan

v Koala Dundee. There, Pincus J substituted a requirement of a misrepresentation that there is a

sponsoring agreement between the applicant and the respondent, for the wrongful appropriation

of his personality. In a subsequent case Pacific Dunlop v Hogan56 the court re-emphasized the

need for a misrepresentation. The misrepresentation here was not as to “endorsement” in a real

sense but as to fees being paid for the use of the image in the parody. In other words the public

would assume that Hogan had been paid for use of his character's image and as this was not so,

there was a misrepresentation. However the case could have turned on whether a significant

section of the public would be misled into believing that a commercial arrangement had been

concluded between the defendants and the plaintiff under which the plaintiff agreed to the

advertising. Also, as in Hogan, the case could have turned on misappropriation of the plaintiff’s

character, but instead the court reverted to the requirement of passing off which is a

misrepresentation. Perhaps both a requirement of misappropriation and misrepresentation is used

by the court in Australia, as necessary.

Personality rights in Australia may be protected by statute as in the United States and Canada.

Section 52 of Trade Protection Act 1974 provides that “A corporation shall not, in trade or

55
ibid
56
Here, the first respondent appeared in the film "Crocodile Dundee", and became widely identified with the
character he played in the film. The appellant caused to be televised an advertisement which drew on the first
respondent's characterization in the film, as well as a striking scene in the film. Advertising posters were also placed
around Sydney which drew on the film. It was held that the extended tort of passing off was committed.

19
commerce, engage in conduct that is misleading or deceptive, or is likely to mislead or deceive”

and section 53 of the Act provides that:

A corporation shall not, in trade or commerce, in connection with the supply or

possible supply of goods or services or in connection with the promotion by any means of the
supply or use of goods or services: (a) Represent that goods or services have sponsorship,
approval, performance, characteristics, accessories, uses or benefits they do not have; (b)
Represent that the corporation has a sponsorship, approval or affiliation it does not have.

Although the above sections were designed to protect consumers from buying goods or services

that have been falsely associated with another product or a personality the Act, may also serve to

protect against the unauthorized exploitation of reputation or personality. A similar provision

exists in Barbados. Cap 326 sect. 13, which states that a person shall not, in trade or commerce

as a supplier, represent that goods have a sponsorship, approval that they do not, or represent that

he has a sponsorship, approval or affiliation that he does not have. Perhaps this section could be

tailored to provide statutory protection against misappropriation of personality.

Appropriation of personality in the United Kingdom

20
The law of appropriation of personality has not developed in the United Kingdom in the same

way or at the same pace as that in Australia and Canada. The law had little development until

recently. Prior to the landmark case Irvine v Talksport Radio the law was replete with uncertainty

and anachronistic principles, some inconsistency and the court displayed an unwillingness to rule

that a person has an exclusive right to market his personality for gain. The court established

encumbrances or requirements for the finding of a claim of appropriation of personality which

are unclear in some instances and, or very hard to establish. In Irvine, the defendant issued

promotional brochures with a tailored picture of the plaintiff holding a radio bearing the name of

the company in his hand. The defendant had not obtained the consent of the plaintiff to use his

picture. The plaintiff sued for passing off, stating that the brochure amounted to an unauthorized

endorsement. Laddie J. bent on modernizing and settling the law, held that where someone had

acquired a valuable reputation or goodwill the law of passing off would protect him or her from

unlicensed use by third partied, where that use would damage his goodwill or reputation or

diminish the exclusive right to use it.

Irvine settled the position taken in the United Kingdom on the law of appropriation of

personality and illustrated the ability of the common law to flex its muscles and adjust to

changing times. The case added flexibility to the law and by extension provided greater

protection for celebrities where their personality was exploited without their consent. It shows

that Scott CJ’s dictum in Haseldine v Daw holds true even today. In that case he stated that “The

common law has throughout its long history developed as an organic growth, at first slowly

under hampering restrictions of legal reforms of process, more quickly in Lord Mansfield’s time,

and in the last 100 years at an ever increasing rate of progress as new cases, arising under new

conditions of society, of applied science and of public opinion, have presented themselves for

21
solution.”57 The extent to which Irvine has settled the law can be arrived at from an examination

of earlier cases on the tort.

In the earliest reported cases on appropriation of personality in the United Kingdom, the courts

displayed some inconsistency in when the tort is found to be made out. In that, in some instances

the tort was found and in other instances, with similar facts, it was not made out. The cases

concerned the use of another’s name and whether a person may be found liable for its use

without consent. One of the first cases is that of Routh v Webster.58 In that case, the defendant

published without authority the plaintiff’s name as a trustee of a company. The court granted an

injunction enjoining the unauthorized use on the basis that the use of itself exposed the plaintiff

to financial risk. In granting the injunction, Lord Longdale M.R. said that it should be a warning

to the defendant as well as others not to use the names of other persons without their authority.59

It has been argued that this case is authority for the view that tort of appropriation of personality

will be invoked where a name was used without consent. However, it is arguable that there is

some difficulty in holding that this case stands as principle that the unauthorized use of name

would be restrained. Arguably the decision in Routh v Webster may have been a result of the

partnership and company law of that time.60 The case preceded the principle of limited liability

of the members of a company and so the plaintiff would have been exposed to liability in the

same sense of a partner.

Subsequent to Routh v Webster, a line of cases came before the courts, in all of which the name

of an eminent expert had been appropriated for advertising purposes by an unscrupulous

manufacturer. A case on point is Clarke v Freeman. There the defendant took advantage of the
57
[1941] 2 K.B. 343 at 362.
58
(1849)10 Beav. 561.
59
ibid.
60
Huw Beverley-Smith , The Commercial Appropriation of Personality (Cambridge University 2002) 64.

22
name and reputation of the plaintiff, an eminent physician, by advertising pills purporting to

relieve consumption. Despite Lord Longdale’s admonition that it is wrong to use the name of

persons without their authority in Routh, in Clarke decided just a year after Routh, he refused to

restrain the unauthorized use of the plaintiff’s name. In a poorly reported judgment he held that

the court did not have the jurisdiction to stay the publication of a libel. Those persons of the

plaintiff’s standing must accept such exposure as the price of eminence.

Later cases show the courts reluctantly following Clarke v Freeman. For instance in Williams v

Hodge61, the plaintiff, a well-known surgeon sought an interlocutory injunction to prevent the

defendant from using his name in advertisement. The court dismissed the application since it felt

bound by the authority of Clarke v Freeman. Nonetheless Kay J. expressed that there had been

the unwarranted use of the plaintiff’s name and that he was of the view that the defendants had

no more right to use his name than to take his purse. He stated that it cannot be decided at an

interlocutory hearing whether there was an untrue representation that would cause injury to the

plaintiff.62

In Drockrell v Douglas63 the plaintiff, a well known doctor sought an injunction to retrain the use

of his name in the defendant’s advertisement for gout (a kind of arthritis). The plaintiff’s claim

for libel failed at first instance. The jury found that the defendant’s statements were not libelous.

The appeal proceeded on the question, whether the plaintiff had a property in his name. Vaughn

Williams L.J. stated that there is no authority to support property in a name per se. He held that

the plaintiff could only succeed in his claim for an injunction on that basis if he could show that

the defendant had done something more than uses his name without authority.64 He agreed that
61
(1881) 4 TLR 175.
62
Ibid.
63
(1899) 80 L.T.558.
64
ibid

23
the unauthorized use of another’s name would be actionable if it led to an infraction of his rights

of property or any injury to him in his property, business or profession. However, in Irvine it was

sated that the use of a name without authority in itself is injurious; there is no need to prove

injury.

The nineteenth century cases show some inconsistency in the law and the court seemed uncertain

as to when the tort should be found. The cases also show that the court was unwilling to find the

tort even in clear circumstances. The requirement for the tort ranged simply from the

unauthorized use of a name as in Routh v Webster, to no clear statement of a requirement.

However, in Clarke v Freeman Lord Longdale inferred that injury to the plaintiff might be a

possible ground on which the tort could succeed provided the court has jurisdiction to hear the

matter.

The uncertainties surrounding the tort can be further illustrated by an examination of the case

Tolley v Fry. In that case Greer L.J. used Corelli v Wall and Drockrell v Douglas as authority for

the view that defamation is a necessary requirement for the tort to be made out. That is, the

unauthorized use of another person’s photo, caricature or name is not actionable in the absence of

defamation. This position was criticized by Clarke J in Marley. There he stated that neither of the

two cases went that far.65 Based on Drockrell and Corelli it would appear that the court

considered injury to the profession to be a requirement for the tort to succeed.66 Therefore, it is

submitted that it would have been more plausible for Greer L.J. to assert that the cases are

authority for the view that injury is a requirement of the tort instead of defamation.

65
(1994) 31 J.L.R 197 at 205
66
(1899) 15L.T.R. 334

24
McCulloch v May further illustrates the chaotic state which the law was in. Wynn Parry J held

that in order for the tort to be made out the plaintiff needed to show a common field of activity in

which the plaintiff and the defendant were engage. This judgment was doubted by Evatt CJ and

Myers in Henderson. There they stated that it was impossible to accept the assertion that a

common field of activity is necessary for the claim to succeed.

The court’s unwillingness to find the tort was brought into the twentieth century as illustrated in

Corelli v Wall.67 In Corelli v Wall the defendants sold, without the consent of the plaintiff, a

novelist, postcards depicting bad portraits of her. She claimed an injunction on two grounds, libel

and publication of her portrait without her consent. Swinfen Eady J., refused to issue it on either

ground. In so far as the second ground is concerned, the learned judge held that there was no

authority for the plaintiff’s claim to a right as a private person to retrain the unauthorized

publication of her portrait. Arguably, this case did not establish a clear ground on which the tort

can be invoked. The case shows how substantially different the tort in the United Kingdom was

in its early days, from how it is understood in Canada. In Aubry v Edditions Vice-Versa Inc the

plaintiff, a private person claimed that her picture was published without her permission, she

succeeded in her claim. However, it is arguable that the plaintiff’s success was contributed to, by

the existence of article 5 of the Quebec Charter, which guarantees a right to privacy, which

includes a right to one’s image. This provision does not exist in the United Kingdom.

In some instances the court showed its unwillingness to find the tort by resorting to finding

passing off in its classic form. A case on point is Children’s Television Workshop v Woolworth,68

there the defendant sold toys resembling a Character in ‘Sesame Street’ Helsham CJ stated that

‘by exposing for sale deceptively similar goods, the public are likely to be misled into believing
67
(1905)22TL RE 532
68
[1981] 1 NSWLR 273

25
that the defendant’s goods are in the same sense the plaintiff’s goods’.69 This is classic passing

off. Arguably the case could have been decided in accordance with the law of appropriation of

personality as established in Henderson. Therefore the court could have held that there was the

wrongfully appropriation of the plaintiff’s personality, by the defendant’s unauthorized use of the

plaintiff’s personality.

The approach of the English court to the finding of the tort of appropriation of personality, prior

to Irvine, was criticized by Pincus J in Hogan. There he stated that except in certain specific

areas, the English law has not progressed much beyond the traditional notion of passing, namely,

suggesting that what are in fact goods or services of the defendant are produced by the plaintiff

and misrepresentations closely similar to that central type.70 Children’s Television Workshop v

Woolworth above illustrates this point.

Arguably Laddie J’s decision in Irvine has settled the law of appropriation of personality in the

United Kingdom, it eradicated much of the obscurity and obsoleteness in the law. It finally

declared that the unauthorized use of a person’s name or any indicia of their personality to which

goodwill is attached; to promote a product is actionable. It, unlike earlier cases laid down clear

guidelines to finding the tort. Irvine has developed the law, as the earlier cases depict an

unwillingness to rule that a person has an exclusive right to market his goodwill. The cases

illustrate that the court was unwilling to rule in favour of a plaintiff merely because his

personality or more precisely the goodwill attached to his personality was used without his

consent. The line of case from Clarke v Freeman to McCulloch v May show that injury would

have to be proved for the action to be found. However Laddie J stated that if someone acquires a

valuable reputation or goodwill, the law of passing off will protect it from unlicensed use by
69
ibid 28.
70
(1988) 12 I.P.R. 508 at 516.

26
others.71 In such cases the use will cause direct damage because it will involve inferior goods or

there might be damage to the plaintiff’s exclusivity. The law will vindicate the plaintiff’s

exclusive right to reputation or goodwill by not allowing others to use his goodwill as to reduce,

blur or diminish its exclusivity.72 Therefore, there is no need to prove damage as in direct

damage to the plaintiff’s goodwill as in the earlier cases. Nor will the fact that the defendant’s

product is superior to the plaintiff’s preclude the finding of the tort. As in Australia once the

plaintiff’s exclusive right to exploit his personality was breached, that in itself is an injury. The

law is also on par with Canadian authorities in this respect as in Canada there is no need to prove

injury.

Though Irvine has caused a major development in English law the judgment is not without flaws.

Laddie J emphasized that in order for the tort to succeed there was the need to demonstrate a

misrepresentation.73 Arguably, this is a relic of traditional passing off. It is arguable that this

demonstrates that there was no clear breakaway from passing off. It is submitted that this

requirement is shared in the Australian perception of the tort, as illustrated in Hogan. In Hogan

there was a requirement of a misrepresentation, but what was in fact found was a

misappropriation as it would have been difficult to prove a misrepresentation. Pincus J admitted

that it cannot be held that the public have been led to think that there is a commercial connection

with Paul Hogan or the film. This shows, as stated by Tim Frazer, that what was found was a

misappropriation of personality. Given the difficulty in finding a misrepresentation sometimes,

Laddie J could have made a bold move and substituted a requirement of a misrepresentation for a

misappropriation. This would be in keeping with the Canadian approach, as what is required in

Canada is a misappropriation of personality, which is broader than misrepresentation and easier

71
[2002]2 ALL ER 414.
72
ibid.
73
ibid 418.

27
to find. In Canada the main requirement is unconsented use of one’s personality, therefore it is

easier to prove than a misrepresentation which requires the public to have been mislead.

Therefore a requirement of misappropriation of personality would provide better protection for

personality rights.

The finding of the tort was also made difficult by the requirement of a substantial goodwill or

reputation at the time of the act. This places a fetter on the development of the tort, because it

means that private persons, unlike in Canada,74 cannot claim the tort has been committed.

Arguably this shows that the law has not moved far beyond the 1906 position in Correlli v Wall,

where it was held that a private person cannot be granted an injunction to prevent the un-

consented publication of her portrait. Irvine has caused development in the law but it is not

sufficient. The law would provide greater protection if the court had taken the Canadian position

where there is no requirement of a substantial goodwill.

The next requirement is that not an insignificant number of recipients of the defendant’s

promotional brochure would assume that he had endorsed its radio station. This requirement also

places a fetter on the development of the tort and does not exist in Australia. The courts in

Canada expressed a similar requirement for the establishment of the tort. The courts expressed a

need for the plaintiff to be identifiable by the public in Krouse and Joseph v Daniels. However in

Athans, the plaintiff was not identifiable by a significant number of persons, but the tort was

found.

Appropriation of personality in the Commonwealth Caribbean

74
As illustrated by Aubry v Edditions Vice-Versa Inc.

28
Starting around the seventeenth century, the English common law was received in the

Commonwealth Caribbean by the process of reception. By this process the common law in the

United Kingdom was imposed on the English sovereign territories. Ever since the process

occurred the common law in the territories developed mainly based on English common law and

statutes. However a bold and novel move was made by Clarke J in the Marley case, where he

decided to break away from the tradition of adopting English common, and applying it even in

circumstances in which the law may not be applicable or may lead to obvious injustices and

instead developed the law in accordance with jurisprudence from an alternate jurisdiction as

justice so demanded.

Marley is responsible for the introduction of appropriation of personality to the Commonwealth

Caribbean. There, the plaintiff held various rights and property including the right to use and to

authorize others to use the personality of Bob Marley commercially. The defendant without

receiving the permission of the plaintiff manufactured and sold T-shirts bearing the image and

name of Bob Marley. The plaintiff sued for passing off and appropriation of personality. Clarke J

using Canadian authorities held that the tort of passing off and appropriation of personality were

committed by the defendant. More precisely, he stated that just as the law recognizes property in

goodwill of a business so must the law recognize that property rights attach to the goodwill

generated by a celebrity’s personality and these rights are violated where the indicia of a

celebrity’s personality are appropriated for commercial purposes.”75 The law recognizes the tort

of appropriation of personality and it had been committed in Marley’s case as his exclusive right

to market his personality commercially was breached. Also that the right is survivable.76 This

75
(1994) 31 J.L.R 197 at 198.
76
ibid.

29
case is novel as it shows the ability of the common law to develop to meet modern

circumstances.

Even after Irvine it is still not accepted in the UK that a person has property in a name per se.

However, even before that case Clarke J settled the law in the Commonwealth Caribbean on that

issue, by declaring that a person has property in a name per se. He stated that although no West

Indian or English decision recognize property in personality per se, dicta in cases such as Clarke

v Freeman and Drockrell v Douglas support the concept of a property interest as distinct from a

privacy interest attached to personality. Just as the law recognise property in the goodwill of a

business, so must the law recognise that property rights attached to goodwill generated by a

celebritie’s personality. On that basis those rights are violated where the indicia of a celebrities

personality is appropriated for commercial purposes. Further that the plaintiff has a proprietary

right in the exclusive marketing for gain of his personality.77

From an analysis of Canadian cases including Krouse v Chrysler and Athans v Canadian

Adventure Camps, Clarke J concluded that our law recognizes a civil wrong known in Canada

‘as appropriation of personality’ and in several states of the United States as ‘breach of right of

publicity.’ He stated that it is not so much that the cases have ‘uncovered a piece of common law

and equity that had escape notice…but rather, the declaration of the tort results from the

application of recognized principles of law to particular situation arising under new conditions

of society’. The tort consists of the appropriation of a celebrity’s personality (usually in terms of

his or her name or likeness) for the financial gain or commercial advantage of the appropriator to

the detriment to the celebrity or those claiming through him or her.78

77
ibid 208.
78
ibid 206.

30
Not only was the law on appropriation of personality in the Commonwealth Caribbean brought

on par with Canadian and United States jurisprudence by Clarke J holding that a celebrity has an

exclusive right to market his personality for gain, but, Clarke J also brought the law on par with

North American jurisprudence by declaring that the exclusive right is survivable. He stated that

the exclusive right to exploit one’s personality survives death and the assignee of this right has

the proprietary right to exploit it commercially.79

It is commendable that Clarke J has established in the common law of the Commonwealth

Caribbean, protection for personality rights, however, it is arguable that the protection provided

is limited in its scope. This position is held for two main reasons: (1) protection is not provided

for breach of a private persons’ personality (2) though it was not pertinent to the case, there was

no dictum on what protection is available for protection of privacy rights. It will be explored in

the recommendation section of the paper the possible means by which a person (celebrity and

non-celebrity alike) may seek redress under instruments outside of the common law for

perceived breach of personality and right to privacy, if the latter in fact exist in the

Commonwealth Caribbean.

Non-enforcement of the Tort

Since the Bob Marley case in 1994, the tort of appropriation of personality has not been claimed

in the Commonwealth Caribbean. One cannot but wonder why this is so, as there are many
79
ibid 208.

31
celebrities whose exclusive right to market their personality has been violated in ways that it is

hard to conceive that they are unaware of. A case on point is the recent misappropriation of

personality of the world record holder in sprinting, Usain Bolt by a telecommunications

company, Research in Motion. Research in Motion has incorporated the sprinter’s personality, in

an advertisement of one of its newest creations, the BlackBerry Bold. In this advertisement, the

sprinter is featured taking a few seconds from his race to talk about the BlackBerry Bold and

then proceeds to win the race in a fashion similar to Bolt’s finish in the 2008 Beijing Olympic

Games 100 meters final.80

In Canada, it is a arguable that a possible reason why an individual whose personality was

appropriated may not want to bring action against the alleged appropriator, may be that there is

conflict between the tort and one’s right to freedom of artistic expression protected by section 3

Of the Quebec Charter. This was illustrated in the case Aubry v Edditions Vice-Versa Inc.

However, this problem does not exist in the Commonwealth Caribbean at present and therefore is

not a hindrance to the tort being brought.

In the United States, a similar hindrance exists as in Canada. Personality Right may conflict with

the first amendment right of freedom of expression. This was illustrated in the case ETW

Corporation v Jireh Publishing.81 There, the defendant created a painting which included the

image and name of Tiger Woods, a famous golfer. Woods sued for breach of publicity rights. The

defendant argued that the painting was protected by the Lanham Act, which provides for the use

of a mark in a manner that is descriptive and used fairly and in good faith. The court held that

80
R. Miller, ‘Image Rights Protection for Jamaican Stars’ Jamaica Gleaner (Kingston, October 17, 2008) Business
2.
81
(2000) 99 F. Supp. 2d 829.

32
the use of the image and name fell under the Lanham Act. The defendant also argued that the

painting was protected by the First Amendment, which covers freedom of expression.

It was held after balancing the societal and personal interests embodied in the first amendment,

against Wood’s proprietary rights, that the effect of limiting Wood’s right of publicity in this case

is negligible and significantly outweighed by society’s interest in freedom of artistic expression.82

That the painting does not capitalize on Wood’s success but captures a significant event in sports

history and speaks about Wood’s achievement in that event and the painting is therefore

protected by the first amendment.83 It is submitted that unlike the United States, freedom of

expression is not a hindrance to the enforcement of personality rights in the Commonwealth

Caribbean at present.

In Australia, there is the sales v subject dichotomy that has to be overcome. In Gould Estate it

was held that in articulating the tort of appropriation of personality regard has to be given to the

public interest. The tort will be invoked when the celebrity’s personality is exploited for sales

purposes but not when he is the subject of artistic work. The sales aspect of the dichotomy is

fulfilled where the identity of the celebrity is merely being used in some fashion, the activity is

not about the celebrity. This is opposed to situation in which the celebrity is the actual subject of

the work. Where the other is satisfied, the work in which the celebrity is captured falls into the

protected category and his personality has not being unlawfully appropriated. This dichotomy

does not exist in the Commonwealth Caribbean and therefore is not a hindrance to the tort being

found.

82
ibid 938.
83
ibid.

33
In the United Kingdom the hurdles laid down by Laddie J in Irvine must be overcome before the

tort can be successfully invoked. He held that a celebrity claiming appropriation of personality

must have acquired a valuable reputation or goodwill, damage to reputation or goodwill must

have occurred or his exclusive right to use his reputation must have been diminished. Further, not

an insignificant number of recipients of the defendant promotional brochure should have

assumed that the plaintiff endorsed the product in question. The Bob Marley case shows that

these hindrances do not exist in the Commonwealth Caribbean. Therefore, based on the case

what essentially needs to be proved is that the celebrity alleging appropriation of his exclusive

control or ownership of personality and the exclusivity has been appropriated to his detriment.

It is submitted that the principal reason the tort has not been invoked other than in the Bob

Marley case, maybe the perceived inability of an alleged tortfeasor who is in most instances,

people of meager financial resources to meet a judgment against them. This is evident by the fact

that in most instances persons appropriating the personality of celebrities are from the lower

echelon of society in Jamaica. Therefore, Usain Bolt not bringing a cause of action against

Research in Motion, is a mystery, as the latter is a successful company that should be able to

compensate Bolt, if he was to successfully bring an action against the company. Perhaps the

reason for Bolt not pursuing a cause of action is lack of knowledge of the offence being

committed, even though this is hard to perceive of, as the use of Bolt’s personality by Research

in Motion was covered in the media.84

Graham J in ETW v Jireh stated that celebrities that have identifiable identities, apart from the

income generated for publicity right reap substantial rewards from the activity in which they are

84
R. Miller, ‘Image Rights Protection for Jamaican Stars’ Jamaica Gleaner (Kingston, October 17, 2008) Business
2.

34
engaged.85 In Bolt’s case this would be sprinting therefore, perhaps the reason the tort has not

being invoke beside in the Bob Marley case, is that celebrities feel they are gaining sufficient

financial rewards from engaging in the activity to which they are engaged and there is therefore

no need to enforce publicity rights or one’s exclusive right to market his personality.

Statutory Protection for Appropriation of Personality in the Commonwealth Caribbean

85
ibid.

35
In the Commonwealth Caribbean there is no statutory protection available for the protection of a

person’s exclusive right to market his personality. However, there is statutory protection

available for the tort of passing off. In Jamaica, there is the Fair Competition Act, in Trinidad and

Tobago, there is the Unfair Competition Act 1996 and the Protection Against Unfair Competition

Act 1998 in Barbados.

Section 37(1) of the Jamaica Act provides:

A person shall not, in pursuance of trade and for the Misleading

purpose of promoting, directly or indirectly, the supply or use of advertising.
goods or services or for the purpose of promoting, directly or indirectly, any business interest, by
any means- (a) make a representation to the public that is false or misleading or is likely to be
misleading in a material S'O(")-respect; (b) make a representation to the public in the form of a
statement, warranty or guarantee of performance, efficacy or length of life of goods that is not
based on an adequate and proper test thereof, the proof of which lies on the person making the
representation; (c) falsely represent to the public in the form of a statement, warranty or
guarantee that services are- (i) of a particular kind, standard, quality, or quantity; or
(ii) supplied by a particular person or by a person of a particular trade, qualification or skill;

This legislation is vague and imprecise and reflects classical passing off and not the modern

passing off that is reflected in the Bob Marley case that was decided before the legislation came

into force. Section 37(1)( c) reads as follows “falsely represent to the public in the form of a

statement, warranty or guarantee that services are supplied by a particular trade, qualification or

skill;” The use of the word supply indicates that the Act covers classic passing off, which focuses

on the source of the goods. It is arguable that the Act should have been worded in accordance

with the doctrine of modern passing off, as is expressed in Irvine, Warnick and the Bob Marley

case. Based on these two authorities, section 37(1)(c) should read “falsely represent to the public

in the form of a statement, warrant or guarantee that services: ( i) Are of a particular kind,

standard, quality or quantity; or (ii) Have an association or connection with a particular person or

a person of a particular trade, qualification or skill.”

36
It is also unclear as to the reason section 37(1)(c )makes reference to a false representation to the

public about services and not goods and services. Perhaps that provision in the Act should also

be amended to make reference to goods and services. This would cause the Act to have

consistency, as section 37 (1) makes reference to goods or services.

The Protection Against Unfair Competition Act in Barbados is more detailed and clearer than the

Act in Jamaica. Section 4 (1) reads:

The following are acts of unfair competition: (a) any act or other conduct by a
person in the course of industrial or commercial activities that is contrary to honest practices, in
particular any act or other conduct(i) that causes, or is likely to cause, confusion with respect
to another person’s enterprise or activities and to the products or services offered by such
person; (ii) that damages, or is likely to damage, the goodwill or reputation of another person's
enterprise, whether or not the act or practice causes confusion;
The section unlike the Act in Jamaica better captures the modern perception of passing off, as it

makes reference to an association of a product with a well known fictional character. This is

reflected in section (5)(f) where it is stated: “for the purpose of section 4(1)(a)(i) confusion may

in particular, occur with respect to: (f) the association of a product, service or activity with a

celebrity or a well-known fictional character”.

Recommendations

37
There are a number of approaches that can be taken to provide greater protection for personality

rights. These include (1) the establishment of statutory protection (2) expanding the group of

persons that have legal standing to bring an action for the infringement of one’s exclusive right to

market ones personality. (3) addressing the ills of the Bob Marley case. The second approach

may also have the effect of ensuring the enforcement of the tort and provide more

Commonwealth Caribbean jurisprudence on this area of law.

(1) the establishment of statutory protection

There are two approaches which may be employed to provide statutory protection for celebrities

and other persons. Firstly, the common law as adumbrated in the Bob Marley case may be

codified, secondly and alternatively, in addition to codifying the law as stated in the Bob Marley

case, the legislator may add to this relevant provisions on appropriation of personality from

other jurisdictions. The statutory provisions to be suggested may be added to the Fair

Competition Act in Jamaica. Therefore section 37 which currently deals with misleading

advertisement could instead cover appropriation of personality and section 38 could cover

misleading advertisement.

In keeping with the first approach, the proposed section 37 could read:

Any person who knowingly uses another’s name, likeness or voice or any indicia
of his personality for financial gain or commercial advantage to the detriment of the owner
thereof or those claiming through him or her, shall be liable for any damage sustained by the
person or persons injured as a result thereof.
In the above provision the law as adumbrated in the Bob Marley case was amended by

substituting the word person for celebrity and the addition of an explicit requirement of

knowledge by the appropriator of the use of another’s personality for financial gain. This was

38
done in order to remedy the problem in the law as put forward in the case, where there is no

protection for non-celebrities. Person covers both legal and natural persons.

In keeping with the second approach suggested, section 37 could read:

(1) Any person who knowingly uses another’s name, likeness or voice or any indicia of his
personality for financial gain or commercial advantage to the detriment of the owner
thereof or those claiming through him or her, shall be liable for any damage sustained by
the person or persons injured as a result thereof
(2) (a) Portraits or pictures may only be circulated or displayed in public with the written
permi permission of the person pictured. In case of doubt permission is considered to have
been been granted if the person received payment to let herself or himself be pictured.
(b) If the portrait or picture is that of a minor, permission must be granted by his or
her’her parent or guardian.
(c) Upon death permission has to be granted by the deceased’s estate or representative.
(3) an invasion of privacy has occurred where there is the use of his name, image, likeness or
voice voice without his written consent.
The provision in section (2) above was borrowed from Section 50 of the New York Civil Code86,

Section 22 KUG87 and article 36 of the Quebec Code.88 The requirement that consent be in

writing in section (2)(a) and that consent should be granted by a parent or guardian in the case of

a minor in section (2)(b) were borrowed from the New York Civil Code. The remainder of

section (2)(a) and the provision in section 2( c) were borrowed from Section 22 of the KUG.

Section 3 was borrowed from section 36 of the Quebec Civil Code. The New York Civil Code,

86
A person, firm or corporation that uses for advertising purposes, or
for purposes of trade, the name, portrait or picture of any living person without first having obtained
the written consent of such person, or if a minor of his or her parent or guardian, is guilty of a
misdeameanor.
87
Pictures may only be circulated or displayed in public with the permission of the person pictured. In case of doubt,
permission is considered to have been granted if the person received payment to let herself be pictured. Up to ten
years after death, the permission of the next of kin of the person pictured is required. The next of kin in this law
means the surviving wife and children and when there are none, the surviving parents of the person pictured.
88
(5) using his name, image, likeness or voice for a purpose other than the legitimate information of the public;

39
KUG and the Quebec Code were used because they are clear and may minimize any confusion

with the law of passing off and more directly deal with the problems that exist and those that are

likely to arise in the Commonwealth Caribbean.

The object and purpose of the statute is to provide protection not only for celebrities but also

non-celebrities. Also to provide a right to privacy, a right the Bob Marley case is silent on. The

statute will also clarify any uncertainty as to the position in the Commonwealth Caribbean with

respect to pictures or portraits taken without the consent of the person in the picture or portrait.

Therefore, in the event that a situation like that in Gould Estate v Stoddard Publishing was to

arise there would be no confusion as to what the law is, as the statute states explicitly, that once

consent is given, then appropriation of personality was not committed. The Bob Marley case is

also silent on a situation where the person whose personality is appropriated is a minor.

Subsection 2(b) addresses this issue.

(2) expanding the group of persons that have legal standing to bring an action for the

infringement of one’s exclusive right to market one’s personality

A problem that exists with the law of appropriation of personality in the Commonwealth

Caribbean, is that the tort is underutilized. Perhaps an expansion of the group of persons that

have locus standi to bring an action, may cause an increase in the number of cases brought before

the court. This can be facilitated by borrowing a provision from the Barbados Companies Act

which gives a large group of person’s locus standi to bring an action where a company is being

run in a manner that is oppressive or unfairly prejudicial or unfairly disregards the interest of

members of the company. Section 225(b) Barbados Company’s Act gives locus standi not only to

prominent members of the company, but also to (iv) any other person who, in the discretion of

40
the court, is a proper person to make an application under this Part. Therefore if statute could

provide that not only the person whose personality was appropriated or his estate may bring an

action, but also any other person that the court thinks is fit and provides evidence of the

unconscented use of a person’s personality, this may increase the instances in which the tort is

alleged. The court could consider a person to be fit, if they stand to lose from any unauthorized

use of the personality of the person in question, for example, a celebrity’s manager.

( 3) the ills of the Bob Marley case

Section 37 (1) of the above proposed provision addresses the first ill of the Bob Marley case,

which is the exclusion of statutory protection for non-celebrities. Section 37 (3) addresses the

second ill, which is the silence of the common law on the right to privacy.

In addition to the statutory protection provided above, constitutional protection may also be

provided for the exclusive right to use ones personality. Therefore, the constitution may be

amended to include personality rights as a fundamental right. This would remedy the problem of

the common law as the constitution covers all persons and not a selected group, as in the Marley

case. This would be in keeping with the law in Germany, where article 1 (1) of the Basic Law

provides that human dignity shall be inviolable. That to respect and protect it shall be the duty of

all state authority. Article 2 (1) states that every person shall have the right to free development

of his personality insofar as he does not violate the rights of others or offend against the

constitutional order or the moral law. An alternative to amending the constitution, is interpreting

section 13(a) which provides protection for the right to property, independent of section 18,

which speaks about physical property, to include protection for personality as property.

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The constitution may also be amended to state that there is a general right to privacy and there is

a breach of that right where there is the unauthorized use of a person’s name, image, likeness or

voice. An alternative to explicitly providing a right to privacy in the constitution, section 13( c)

which provides for respect for private and family life may be interpreted, so as to include a

breach of the right to privacy where a person’s name, image, likeness or voice was used without

authorization, an action may be brought under section 13 ( c). It is important to note that whilst

the right to privacy and the right to the exclusive use of one’s personality commercially, may be

breached in similar ways, principally the use of any indicia of one’s personality without consent,

the two rights are not the same. The right to privacy is personal and does not survive the death of

the person whose privacy is invaded,89 while appropriation of personality is economic based and

the right not to use another’s personality without authority survives death.

It is also arguable that the ills of the Marley case may be corrected by the provision of new case

law on the tort.

89
Pavesich 122 Ga. at 210, 50 S.E. at 76.

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 Conclusion

It can be concluded that appropriation of personality in the Commonwealth Caribbean is in fact

underutilized and in need of reform. The law at present, in the United Kingdom is also in need of

reform. In Australia there needs to be more clarity as to whether the requirement for the tort to be

made out, is a misrepresentation or a misappropriation. In Canada, the law seems to provide a

more satisfactory protection against appropriation of personality than the United Kingdom and

the Commonwealth Caribbean, as the law in Canada covers celebrities and non-celebrities alike.

The court in Marley has shown a willingness to develop the tort in accordance with Canadian

jurisprudence, therefore, it is submitted that further development in the law may be along the

lines of the law as adumbrated in the Canadian cases. However, it is submitted that in order to

provide greater protection against appropriation of personality, the law should be developed not

only in accordance with Canadian jurisprudence, but also German law, as the latter provides

comprehensive protection against personality infringement as it also provides constitutional

protection. In most instances the appropriator of another’s personality in the Commonwealth

Caribbean is a person of meager financial resources, there is therefore no telling when a person

whose personality was appropriated may think it necessary to invoke the tort. However,

whenever the tort is invoked, any development in the area of law will be welcomed.

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 References

Canadian Law
Krouse v Chrysler Canada Ltd (1973) 40 DLR (3d) 15
Athans v Canadian Adventure Camps Ltd 1977) 80 DLR (3d) 591
Aubry v Edditions Vice-Versa Inc [1998] 157 D.L.R (4th) 577
Raccine v CJRC Radio Capital Lee (1997) 17 O.R. (2d) 370
Heath v Weist- Barron School of Television Canada Ltd (1981) 34O.R. (2d) 126
Horton v Tim Donut ltd [1997] 75 C.P.R. (3d) 451
Statute
Quebec Code
Quebec Charter

United States
Namatta v Sports (1975) 371 N.Y.S 2d 10 Capp Div

Haelan Laboratories v Topps Chewing Gum 202 F.2d 866 (2d Cir. 1953)

Statute
California Civil Code
New York Civil Code
Lanham Act

Australia
Radio Corpoartion v Henderson [1960] NSW 279
Gould Estate v Stoddart Publishing Co (1998) 39, O.R. (3d) 545
Hogan v Koala Dundee (1988) 12 IPR 508
Pacific Dunlop v Hogan (1989) 23 FCR 553

44
Statute
Trade Protection Act 1974

United Kingdom
Perry v Truefit (1842) 6 Bea 66
Reddaway v Banham [1896] A.C. 199
AG Spalding & Brothers v Gamage (1915) 32 RPC 273
Inland Revenue Commissioner v Muller & Co, 1991 AC 213
McCulloch v May [1947] 2 ALL ER 845
Irvine and Others v Talk Sport Radio [2002]2 ALL ER 414
Erven Warnick v J Townsend and son [1979]A.C. 731
Tolley v J.S. Fry & Sons [1931] ALL ER 131.
Clarke v Freeman (1848) 11 Beav. 112
Haseldine v Daw
Routh v Webster (1849)10 Beav. 561
Williams v Hodge (1881) 4 TLR 175
Drockrell v Douglas (1899) 80 L.T.558
Childrens Television Workshop v Woolworth [1981] 1 NSWLR 273

Commonwealth Caribbean
Robert Nesta Marley Foundation v Dino Mitchelle Ltd (1994) 31 J.L.R 197
Statute
Cap 326 Barbados
Protection Against Unfair Competition Act Barbados
Fair Competition Act Jamaica
Constitution of Jamaica

Other Countries

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Statute
German Civil Code [BGB]
Kunsturhebergesetz [KUG].
Articles
Eddy Ventose and Natalie Corthesy, ‘Protecting personality rights in the
Commonwealth Caribbean’ (2009) 4 JPPLP 94.

Olaf Weber, ‘Human Dignity and the Commercial Appropriation of

Personality: Towards a Cosmopolitan Consensus in Publicity Rights?’ (2004) 1 SCRIPT-ed 160.

Susan Abramovitch, ‘Misappropriation of Personality’ (2000) 33 Can. Bus. L.J. 230

Tim Frazer, ‘Appropriation of Personality - A New Tort?’ [1983] LQR 99, 281.

Newspaper article

R. Miller, ‘Image Rights Protection for Jamaican Stars’ Jamaica Gleaner (Kingston, October 17,
2008) Business 2.

Books

Huw Beverley-Smith , The Commercial Appropriation of Personality (Cambridge University

2002).

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