A High Court judgment this week has finally confirmed that false endorsements can amount to passing off under English law.
Talksport radio station (formerly “Talk Radio”) sent out promotional material to around 1,000 potential advertising buyers including a brochure featuring a photograph of the F1 racing driver Eddie Irvine. The photograph was manipulated to cut out a mobile phone Irvine was pictured speaking into and replace it with an image of a portable radio to which the words “Talk Radio” had been added.
Irvine found out about the promotion after Mr Ian Phillips, the director of business affairs for the Jordan F1 team, telephoned Irvine’s manager to congratulate him on having negotiated a sponsorship deal with Talk Radio. Mr Phillips gave evidence that he had believed the use of Irvine’s photograph to be clearly a personal endorsement.
The most recent false endorsement case in England before this was McCulloch v May, a 1947 case where the plaintiff, a famous presenter of children’s radio programmes known as “Uncle Mac”, had been used in advertising copy to sell a cereal under the same name. The judge dismissed Uncle Mac’s passing off claim on the ground that there was no connection between the plaintiff’s business (presenting radio programmes) and the defendant’s business (selling cereals).
The Uncle Mac case has already been consigned to history by Australian and Canadian judges and Mr Justice Laddie has now finally buried it here. The judge took judicial notice of the fact that it is common for famous people to exploit their names and images by way of endorsement. To succeed in a false endorsement case a claimant has to show:
- that at the time of the acts complained of he had a significant reputation or goodwill;
- that the actions of the defendant gave rise to a false message which would be understood by a not insignificant section of his market that his goods have been endorsed, recommended or approved of by the claimant.
The Irvine case brings English passing off law up to date with modern commercial reality. It does not provide any ammunition for the proponents of more extensive personality rights for celebrities in the UK. Mr Justice Laddie (the same judge who recently rejected a trade mark claim in respect of “unofficial” Elvis Presley merchandise stating that “there is nothing akin to a copyright in a name”) made it clear in his judgment that the possible development of merchandising rights was an entirely separate issue.
Sports personalities and entertainers often provide their services through tax effective corporate vehicles. Talksport argued that because Irvine’s endorsements were provided through a network of companies Irvine himself had no rights. The judge dismissed this argument, pointing out that it was Irvine’s reputation which Talksport had exploited and Irvine who was misrepresented as endorsing the radio station. In any event, Irvine’s companies were joined in the action as claimants to counter this point.
The Irvine case involved a false suggestion of positive endorsement of an advertiser’s product. It leaves open the question whether there can be liability for passing off in the more usual situation where an advertisement merely implies that a celebrity has agreed to the use of his or her name or likeness in an advertisement, without going on to imply actual endorsement of the advertised product. In practice, lawyers advising in this field will continue to assume that false suggestions of authorisation are equally vulnerable to passing off claims as false suggestions of endorsement.