May 2006

Identity in marketing and promotion: copyright & passing off risks

Impersonation - mimicry

You may have heard recent media reports that the owner (a Mr Sillerman) of the intellectual property rights to the estate of Elvis Presley is preparing to crack down on Elvis impersonators. Apparently the rights to Elvis' name and image have been purchased and the new owner wants to stop unauthorised impersonators from strutting their ("His") stuff.

This kerfuffle raises the legal questions of identity ownership and it is timely to review some of the principles.

So can this be right? If you were a budding (or accomplished) impersonator of The King, could you really be sued by the owner of his estate? Does it matter whether you get paid for doing your impersonations or whether you simply do it for fun, say amongst colleagues on a quiet day in the office or at the company Christmas party?

It is fair to say that in Australia Mr Sillerman could sue you for doing an Elvis impersonation only in quite narrow circumstances. There is no general law that states a person owns or can exclusively control his or her identity.

Care would be needed on the part of a professional Elvis impersonator if copyright material is used in his act - for example if the Elvis estate owns copyright in his songs, you might infringe that copyright by performing them publicly, since one of the exclusive rights a copyright owner has in a musical work is the right of public performance.

Here it is important to understand that copyright only protects copyright works from being copied, adapted, broadcast and performed. No-one has copyright in their looks, mannerisms or in the mere tone/sound of their voice. So to use the example from above, if you were to publicly perform Viva Las Vegas!, your ability to mimic Elvis is irrelevant. You would infringe the copyright in that song no matter whose voice you imitated.

Professional impersonators must also be careful not to mislead their audiences; ie to give the false impression that they are officially licensed or endorsed by the celebrity concerned. So when you get up on stage to do your Elvis thing, do not falsely suggest that you are an "official" Elvis act. This could be a breach of the Trade Practices Act*, which prohibits misleading and deceptive conduct in trade or commerce and specifically prohibits misrepresentations that a corporation has a sponsorship, approval or affiliation the person does not have.

At-home impersonators have nothing to worry about because the TPA is only interested in conduct that occurs in trade or commerce.

We wonder whether anyone in the audience at a cabaret theatre (or getting married in an Elvis Chapel) would seriously assume that an impersonator was approved by the Elvis estate or its new owner. It might not add theatrically to your act, but it would be helpful in preventing a claim if, as you get on stage, you advise your audience soberly that what they are about to see was not approved by the Elvis corporation.

It is for similar reasons that biographical books are subtitled " - the unauthorised biography". Not only does this create an air of controversy that perhaps boosts sales, but there is the dual purpose of stating plainly that the author was not given approval by the celebrity concerned - hence no misleading statement. Such publications need to be careful not to breach defamation and privacy laws - but they are separate issues.

Use of identity to promote sale of goods and services

So much for impersonators, but great care is needed in the use of celebrity identity in the promotion of goods and services. If you do so without the consent of the celebrity you are risking a claim. Usually, in Australia the claim would be brought under sections 52 or 53 of the Trade Practices Act, or for passing off.

The relevant sections of the TPA are section 52 which prohibits misleading and deceptive conduct in trade or commerce, and section 53(c) which prohibits the making of false representations that a corporation or that goods or services have an affiliation, approval or sponsorship they do not have. Breach of these sections can give rise to liability for damages, injunctions and penalties for an offence.

The tort of passing off occurs where a business "passes its goods or services off" as goods or services of the plaintiff, but the courts have had little difficulty extending the principles to cover "identity theft" where celebrities have been concerned.

In a 1988 decision, a TV ad for shoes was removed from the air when Paul Hogan, the actor/writer/producer of the Crocodile Dundee films, successfully argued that the use of a character dressed to look like "Mick Dundee" was passing off.

Despite a compelling dissenting judgement from his honour Justice Shepherd, the Federal Court found for Mr Hogan despite the fact that the ad featured an impersonation by an actor who was obviously not Paul Hogan and despite the fact that neither the Crocodile Dundee films nor the name or face of Paul Hogan were used at all.

In another fascinating case, the producers of The Simpsons successfully prevented a South Australian brewery from marketing a beer under the name Duff Beer - being the fictitious brand quaffed by the "star" of the show, Homer Simpson.

What are the lessons from all this? The following is by no means exhaustive, but is a good start:

  • Socially rendered impressions of Elvis are beyond attack.

  • Professional impersonators - use copyright material only with permission and ensure that you do not imply that you are an "official" Elvis endorsed act.

  • Sellers of goods and services - do not use a celebrity, whether alive, dead, real or fictitious, or any element of a book, film or song, without the consent of the owner, even where there is no common field of activity.

  • Do not use the name or picture(s) of any person or company - even persons or companies that have not achieved celebrity status - for promotional purposes, without that person's written consent.

*The State Fair Trading Acts have equivalent provisions applying to individuals.

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