Some 25 years ago, the present writer (jointly with Michael Hylton, KC) published an article entitled “The New Tort of Appropriation of Personality: Protecting Bob Marley’s Face”) (55 Cambridge Law Journal 56). The article reported on the then new Jamaican case (the Bob Marley case) which had appeared to strengthen the ability of celebrities to obtain relief for unauthorised exploitation of their face and image rights. This article considers how the law may have changed since and what other new considerations might be at play in this area of the law.

In The Robert Marley Foundation v Dino Michelle Limited (the Bob Marley case), the Jamaican courts took an important step in the development of the common law. The plaintiff, the successor-in-title of the late musician Robert Nesta Marley, who had the sole right to licence the commercial use of Marley’s name or likeness, sought an injunction restraining the defendant from manufacturing, printing, distributing or in any way dealing in any T-shirts or other items bearing the name, likeness, signature, image, photograph, or biography of Marley without the prior written consent of the plaintiff.

The court, in its landmark decision, held, firstly, (and generally in line with the English common law, which Jamaican law follows in this respect) that goodwill attached to Marley’s name and likeness in connection with the plaintiff’s business and belonged to the plaintiff. It further ruled that goodwill had been invaded by the defendant’s unauthorised use of his name and likeness on its goods, whereby the public had been misled into believing that a commercial arrangement existed between the plaintiff and the defendant and therefore constituted sufficient misrepresentation to meet the requirements of the tort of passing off.

Under English common law, the essential ingredients of a passing off action derived from the combined test put forth by Lords Diplock and Fraser in Erven Warnink v J Townsend and Son and strongly approved by Clarke J in the Bob Marley case, have been clearly enumerated as follows:

1) That the plaintiff’s business comprised selling … a class of goods to which the particular trade name [face, likeness or image] applies.

2) That the name [face, likeness, or image] is distinctive of the plaintiff’s goods.

3) That goodwill is attached to the name [face, likeness, or image] and is the plaintiff’s.

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.

The classic formulation of the tort had expanded by case law to cover instances where plaintiff and defendant are not in the same business, but the defendant has used the name, likeness, or other attribute of the plaintiff in a commercial context and confuses the public into believing that there is a commercial connection between the plaintiff and the defendant’s business or that the plaintiff has endorsed the defendant’s business.

Very importantly, however, the judge in the Bob Marley case went further and provided an additional and alternative basis to the tort of passing-off upon which the owners of the name and likeness of Bob Marley could protect their rights.

The Jamaican Supreme Court in the Bob Marley case gave full recognition to the new tort of appropriation of personality in “protecting Bob Marley’s face”. The Supreme Court established the existence of a property interest as distinct from a privacy interest attached to personality. As Clarke J stated:

“Just as the law recognises property in the goodwill of a business so must the law recognise that property rights attach to the goodwill generated by a celebrity’s personality. On that basis those rights are violated where the indicia of a celebrity’s personality are appropriated for commercial purposes.”

The court went on to hold that Bob Marley, as a celebrity both at home and abroad, had an exclusive right, which would survive his death, to the use of his name, likeness, or image, which could be commercially exploited by him or his assignees, and further that invasion or impairment of this exclusive right, resulting in damage would constitute this distinct tort of appropriation of personality.

As stated in the article mentioned above: “The recognition of the new tort of appropriation of personality represents an important development in the common law of Jamaica and indeed, of the Commonwealth generally. It emphasises not only the resilience of the common law itself, but also the strength and willingness of the Jamaican judiciary to lead in the development of the law in the Commonwealth Caribbean when new circumstances and ‘new conditions of society’ justify either the application of recognised principles of law to new fact situations or the recognition of new rights.” (per the article by Hylton and Goldson supra.)

The Bob Marley case was followed by the Jamaican Supreme Court in the case of Georgia Messam v Morris and Williams (Claim No HCV 1219/2004). However, in that case, Sykes J (now chief justice of Jamaica) approved of the Bob Marley decision but contradicted that case, inter alia, by saying that the case did not go far enough. He found that the claimant need not be a celebrity to succeed in establishing the tort of appropriation of personality. Also, he said that it was not necessary to prove that there was detriment to the celebrity or those claiming through or under him before the tort can be established.

Sykes J said (at page 10):

“The tort, in my view, targets wrongful commercial use of the personality. The tort is not designed to protect celebrities. It is the loss of marketing one’s image that is at the heart of the matter. If the fact of whether or not the personality is a celebrity is deemed important, then in my view, that fact should go to the quantum of damages since, undoubtedly, a celebrity may command higher fees for the use of his image…”

If this case still represents good law, it gives hope to the ordinary citizen or to the potential claimant who may not be sure as to whether he qualifies as a “celebrity” (such perhaps as a social media influencer) who wants to obtain remedies against the unauthorised use of his or her name, likeness or image.

However, English cases which have been decided after the Bob Marley case have stressed the view that the tort of passing-off only protects the goodwill that a claimant has in his or her reputation and have indicated that a celebrity’s identity indicia (eg, name, voice, image, etc) is only protected to the extent that they represent badges of the goodwill in their reputation.

Therefore, provided there is reputation/goodwill, misrepresentation and damage, the law of passing-off can be used in the UK to protect a public figure from untrue claims that they have endorsed a product. The implication is that these cases do not favour the recognition of any new tort of appropriation of personality as an independent tort and that the recognition of image rights is not to be placed on the same level as it is in US law.

Irvine v Talksport Ltd [2003] 2 All ER 881 involved an action for passing-off on the grounds of false endorsement. Former racing driver Eddie Irvine had to establish that he had a significant reputation as a racing driver and that the actions of Talksport (in publishing a doctored photograph of him listening to a Talksport radio, creating the false impression that Irvine had endorsed Talksport) was a misrepresentation that damaged his goodwill. The Irvine case was the first decision in the UK in which a passing-off action succeeded in a false endorsement case.

In another case of passing-off involved Rihanna and Top Shop (Fenty v Arcadia Group Brands Ltd [2015] EWCA Civ 3) Rihanna argued successfully that Top Shop used her image without her permission on a T-shirt. The leading judgment in the Court of Appeal was handed down by Kitchin LJ who stated (paragraph 29) as follows –

“… setting out some basic principles. There is in English law no ‘image right’ or ‘character right’ which allows a celebrity to control the use of his or her name or image…”

Kitchin LJ continued (paragraph 33) — “…A celebrity seeking to control the use of his or her image must therefore rely upon some other cause of action such as breach of contract, breach of confidence, infringement of copyright or, as in this case, passing off.”

Another case (Douglas and Anor v Hello! Ltd and others [2007] UKHL 21) concerned Michael Douglas and Katherine Zeta-Jones’ wedding photographs acquired without permission by Hello! magazine. It was alleged that by publishing unauthorised pictures of the wedding, Hello! committed a breach of confidence and the rare tort of causing loss by unlawful means. The leading judgment in the House of Lords handed down by Lord Hoffman confirmed (paragraph 124) that there is no such thing in UK law as an “image right”.

Lord Walker also said (at paragraph 293) —

“Although the position is different in other jurisdictions, under English law it is not possible for a celebrity to claim a monopoly in his or her image, as if it were a trademark or brand. Nor can anyone (whether celebrity or non-entity) complain simply of being photographed. There must be something more; either that the photographs are genuinely embarrassing … or that their publication involves a misuse of official powers … or that they disclose something which merits temporary protection as a commercial secret …”

These judicial authorities put beyond doubt that, under UK law, there is no such thing as an “image right”. They also raise the question as to whether the Bob Marley case would be decided differently today given that English cases, although not binding on Jamaican courts are persuasive (sometimes highly persuasive), unless they are decisions of the Privy Council sitting on an appeal from Jamaica in which event they would be binding.

Apart from the issue of whether the Bob Marley case would be decided similarly today, there are other issues which may arise today (over 25 years since the Bob Marley decision in 1994) with which Jamaican law would have to grapple.

One issue is the way in which the law will treat scenarios where artificial intelligence (AI) is used to replicate the name, image, or likeness of the claimant when this is unauthorised. What happens if ChatGPT is simply instructed to “create” an invented song or music video by a Jamaican reggae artiste which sounds and looks remarkably like Bob Marley? Is this actionable? Against whom?

Also, if the Bob Marley case still represents good law in Jamaica, the question remains how it will develop. How will it accept or reject different aspect of image rights law in the US-where it is undoubtedly accepted —but where the law is different in each state. If, for example, the claimant has not exploited his name, image, or likeness for commercial purposes during his lifetime, should the claim of his or her personal representatives fail, as it might in certain states of the US?

Another question may be whether a Jamaican Court would follow or uphold the Georgia Messam case which had decided that the claimant in a tort of appropriation of personality case need not be a celebrity?

It remains to be seen how well protected is Bob Marley’s face in 2023.

Peter Goldson is a partner at Myers, Fletcher & Gordon, and is a member of the firm’s Commercial Department. Peter may be contacted via peter.goldson@mfg.com.jm or www.myersfletcher.com. This article is for general information purposes only and does not constitute legal advice.