marigoldafonso's version from 2017-08-15 21:53

Section 1

Question Answer
The tort of passing off was historically seen asbeing relevant only to the sale of goods and it was essential to show that the parties were selling the same or similar goods.
For an action to be successfulthe defendant must show they have goodwill, that there has been a misrepresentation and that damage has occurred.
However, it has been broadly expanded and interpreted by the courts.
Character merchandising and image rights have become intertwined
Character merchandising is where a company licenses the character’s name for merchandising of goods.If goodwill is established in the names then there could be an action for passing off.
The UK has in the past taken a restrictive approach towards character merchandising.The same concerns which led the courts to seek a common field of activity in this area also made it difficult for claimants to prove misrepresentation and limited the tort’s role in protecting character merchandising.

Section 2

Question Answer
In McCulloch passing off was not established due to lack of a common field of activity.
A similarly restrictive line was taken in Lyngstad where Abba was unsuccessful in stopping the sale of unlicensed merchandise.
There was held to be no confusion in the minds of the publicas it would not be assumed by the public that the goods were derived from the group itself.
There was held to be no actionable misrepresentation as the entertainment field and clothing manufacturing were not in the common field of activity.
However, this case ignored the fact that ABBA had their own merchandising with their record.
The courts moved away from looking for a common field of activity as confirmed byLord Diplock in Advocaat.
The courts began focusing more on finding an actionable misrepresentationand Stringfellow was a move in this direction.

Section 3

Question Answer
The Australian caseHogan shifted the foundations of passing off.
It was held that the cause of action in passing off iscomplete as soon as the relevant misrepresentation is made even though no actual deception and damage to the claimant can be seen.
Passing off might occur even if the damage is caused merely by the association of the claimant’s marks with the defendant’s.
Hogan held that the claimant in a character merchandising case need not be a ‘trader’.
He need only be recognised by the public as having a reputation for certain characteristics and mustdupe a sufficient proportion of the public into believing that there is a commercial connection between the claimant and defendant.
The UK move towards protection of character merchandising activity was in Mirage Studios wherethe unauthorised use of Teenage Mutant Ninja Turtles on clothing was the subject of litigation due to damage to the claimant’s business.
It was held that there was a misrepresentation as the publicwere aware that such activity should be properly licensed and could be misled by unauthorised merchandising.

Section 4

Question Answer
Earlier authorities, including Kojak and Abbawere distinguished as being inapplicable to a situation where the claimant has copyright in his character rather than simply a name and is in the merchandising business.
This clearly eased the way torecognition of merchandising rights. However, the limits of this were seen in the Elvis and the Spice Girls cases.
In Spice Girls the court did not believe that the public would assume that the group had authorised merchandising of stickers.
A further development can be seen in the Lego casewhere passing off was used against another, totally unrelated user of the Lego name.
This was granted on the basis that Lego is extremely well known and this could damage its reputation.

Section 5

Question Answer
The leading case for image rights, Irvineis seen as a victory for celebrities in their fight to prevent the unauthorised use of their name or image.
Laddie J held that a person should be able to use passing off to prevent a misrepresentation of endorsement as the 3 elements needed for passing off were compatible with a case of false endorsement.
e believed that manufacturers and retailers recognised the realities of the marketplace when they paid for well-known personalities to endorse their goods and he felt that passing off should do likewise.
Celebrity endorsements are increasingly big business with famous peoplelooking to exploit their names and images during what may be a short-lived career.
Historically, England and Wales have lagged behind other jurisdictions such asFrance, Germany and the US, which are more advanced in their recognition of the abuse of a celebrity's image.

Section 6

Question Answer
The courts generally elided the distinction betweenfictional and real personalities when deciding cases on character merchandising.
In Irvine Laddie J highlighted the difference between endorsement and merchandising.However, a decade later in Fenty, Birss J found ‘no difference in the law between an endorsement or a merchandising case’.
Fenty had goodwill in boththe music and fashion industries, as well as involvement in merchandising and endorsement.
In Fenty, Rihanna’s face was the ‘badge’ which had goodwill attached to it.
The main issue in using passing off was whether Topshop had made a misrepresentation about trade origin.
Birss J stressed that‘selling a garment with a recognisable image of a famous person is not, in and of itself, passing off’.
English law does not recognise a general right for any person to control the reproduction of their image. There would need to be a ‘false belief in the mind of the potential purchaser which plays a part in their decision to buy the product’.

Section 7

Question Answer
Fenty reflects achanging and more realistic attitude about customers’ knowledge regarding merchandising and endorsement.
Birrs J found that a substantial amount of the 13-30 Topshop market age group would have thought that the garment was authorised by Rihanna.
One of the advantages of acommon law cause of action, such as passing off, is its capacity to adapt to modern business practices and other areas, such as image rights.
Described in Irvine as the ‘most protean’ cause of action for unfair tradingit is ‘closely connected to and dependent upon what is happening in the market place’.
Passing off has the capacity to beflexible and innovative and this is why it has been fastened on to a number of cases such as Alan Clarke.

Section 8

Question Answer
Scanlan (2003) states that it is accepted commercial practice for personalities to use and exploit their celebrity status.
The commercial reality of licensing and endorsement contracts demand greater protection against misappropriation.As can be seen, the more successful the user/owner of such right, the more likely infringement.
However, Cornish (2015)argues goodwill in an image should be a separate right acknowledged through statute.
Fletcher and Mitchell (2015) believe that passing off may not be the appropriate means to improve image rights, as can been seen from cases such as LNS where John Terry’s commercialisation and sponsorship opportunities were prioritised, not his privacy.
Learmonth (2002) states that the scope of the tort must necessarily react to changes in the marketplace.
Celebrity status is a market force in its own righteven when there is no trade connection between the celebrity and the product in question.
The recent approach to liabilityreflects this progressive approach.