virtual personality: avatars, robots, vocaloids and publicity rights

7/29/2019 Virtual Personality: avatars, robots, vocaloids and publicity rights

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Virtual Personality: avatars, vocaloids, robots and publicity rights

by Tamiko Rochelle Franklin

Immanuel Kant in his writing Critique of the Power of Judgment states that:Individuality, and not the imprint of personality, animates genius.1 Perhaps,but individuality is defined as the particular character, or aggregate ofqualities, that distinguishes one person or thing from others.2

So how can an individual be the victim of identity theft, a recognized crime,own and control the rights to their creations and yet not have the right tocontrol use of their own name, image, voice or distinguishing characteristicsfrom unauthorized commercial appropriation without being famous?

Regardless of whether they are categorized as human rights, identity or

privacy based rights, or intellectual property rights, the issue of personalityrights and where they fit into the legal landscape requires our attention.Together with the Internet came an increased ability to exercise and abusewhat were relatively established boundaries and rights in a virtual dimensionthat necessarily adds new character and scope to those rights.

This article examines the nature of publicity and personality rights acrossjurisdictions, and addresses virtual extensions of personality such asemployed through use of avatars, robots, smart programs (like Cleverbot) andvocaloids and highlights certain issues raised by application of the laws ofmultiple jurisdictions to the ever expanding dimension that our virtualpersonalities call home.

In their most evolved form, personality rights cover both economic and non-economic interests in publicity and privacy. Publicity rights refer to the extentto which an individual may have a right to appropriate their owncharacteristics, including voice, image, likeness and name. Consider thecharacteristics of individuals which are required to create programs andtechnology such as vocaloid software and robots which interact with humans.

Vocaloids are software programs that result in human voice and likenesses,

which utilize actual human voices.

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Robots are machines with artificialintelligence made to perform tasks or interact with or on behalf of people.Although this topic may seem far-fetched to some, many of us use machineswith artificial intelligence everyday, iPhones for example. In the case ofvocaloids, the donor of the voice or holographic image characteristicscontributes to the creation of a virtual persona that is protectable under a mishmash of intellectual property rights. What have the donors contributed otherthan voice, an aspect of their personal identity that may not be recognizedunder the law? How are the rights to works created using vocaloid softwaredefined and protected in various jurisdictions worldwide? Exploring suchquestions is one purpose of this article. Before getting to that point however, it

is necessary to clarify on an international level the current state of personalityrights across jurisdictions.


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Today as happened before in human history, technology has greatlyincreased the ease and access to intellectual property protected andprotectable works. The law is in an ongoing battle to develop in response tothe way that the Internet affects the establishment, enforcement and exercise

of intellectual property and publicity rights.

We now live in a reality in which people can become widely known practicallyovernight with little or no investment by publishing and broadcasting workscaptured by themselves of themselves (You Tube), develop products withoutever leaving their home (virtual environments and cloud computing servicesoffering access to databases, supercomputing power, development platformsand tools), distribute copies and easily make offers for worldwide sale of notonly their products but also the products of others (via blogs, webpages andPayPal). The general consensus of national laws requires personality rights tobe either at the time of the use economically valuable or previously

commercially exploited in order to be enforceable.

William Blackstone in On the Origin and Character of Rights stated:

For the principal aim of society is to protect in the enjoyment of thoseabsolute rights, which were vested in them by the immutable laws of nature;but which could not be preserved in peace without that mutual assistance andintercourse, which is gained by the institution of friendly and socialcommunities. Hence it follows that the first and primary end of human law is tomaintain and regulate these absolute rights of individuals . . . .

Individual rights, including those identifiable as personality rights, can only beenforced in an actual location and therefore exist within a limiting jurisdiction-by-jurisdiction based context. The level of protection of those rights iscurrently identified in the constitutions of some nation states, internationalconventions, national jurisprudence and legislative initiative.

Governmental intervention to establish personality rights as such is rare.There are a few well-cited policy arguments against inclusion personalityunder intellectual property law, which are seen as obstacles to federallegislative action in this area. 4 The first is critical of the extension under

trademark law because there is no direct competitor from which a grant ofprotection could be justified and because the person to whom the personalityright belongs is often not engaged in trade, namely they are the only onesbenefitting from their personality aspects and no interest of the generalconsuming public to protect. Amending copyright laws presents a moretheoretical issue surrounding lack of creation and corresponding social benefitthat would justify the institution of such rights.

PERSONALITY AND PUBLICITY RIGHTS

To date, the scope of personality rights in most jurisdictions is defined through

jurisprudence. An exception to this practice is how the right began to developin Germany. The difference is usually attributed to Germanys focus on human


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rights after the Second World War. The more predominant approach,however, taken in France, the United Kingdom, United States, Japan, Canadaand Australia, is that the courts have been used to identify the boundaries ofthe right.5

In the United States the scope and nature of publicity rights depends on stateand federal law, specifically the Lanham act and state right of publicitystatutes. It may be possible for foreigners and individuals who are not residentof that state to take advantage of certain rights if certain conditions are met. InBi-Rite for example, British plaintiffs residing solely in the United Kingdomsued in New York for right of publicity violation based on unauthorizedmerchandising activity.6The court held in their favor finding that the law ofthe states in which plaintiffs or their exclusive licensees reside controls. 7Generally speaking however publicity rights only protect the identity ofcelebrities from exploitative commercial use.8

In Germany, the development of a general right of personality began with theproclamation of their Basic Law (Grundgesetz GG) specifically, the GermanConstitution of 1949. Article 2 I of the GG provides that every one has theright to the free development of his personality, in so far as he does notviolate the rights of others or offend against the constitutional order or themoral code.9

Section 22 of the German Act on Copyright in Works of Visual Arts, covers abroad array of images including likeness traits.10 That provision of the GermanCopyright Act formed the basis of one claim to protect the typical costumesand gestures of Marlene Dietrich in Blue Angels, one of her famous movieroles, from infringement. 11 A successful action under the provision requiresthat the person depicted must be recognizable.12

In another Marlene Dietrich case it was held that the economic interestprotected by personality rights in Germany is descendible. The court grantedan injunction and damages based on the complaint of Dietrichs daughteragainst a producer of a musical about the actress. The producer soldmerchandise bearing the name and image of Dietrich and even granted a carmanufacturer the right to produce a special model called Marlene. 13

Although courts do not recognize a right of publicity per se, the specific rightsunder 12 BGB and 22 KUG are used to protect interests in personalityagainst the more common forms of unauthorized commercial use. There is anoften-cited exception to 22, outlined in 23, that permits publication withoutconsent of images of persons of contemporary history. It is a populardefense because celebrities and noteworthy individuals can often be regardedpersons of contemporary history.14

Just as German courts took an expansive view of the image right under 22,the courts expanded upon the public interest exception under 23 by holdingthat the public interest extends beyond the area of politics and includes

entertainment even gossip.15

Also, courts make a distinction betweenabsolute or relative persons of contemporary history.


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Absolute persons are capable of being depicted whenever there is publicinterest however relative persons may be depicted only in contexts relevant tothose that made that individual well known. The European Court of HumanRights in the Hannover case criticized the distinction between absolute and

relative persons.16

The court also commented that the public interest in gossipmay deserve less protection than the public interest in political debates.17

As a result the defense 23 II KUG is more narrowly construed by courts andalthough Oliver Kahn was successful in a claim to prevent the use of hislikeness for a virtual player in a video game, other plaintiffs were not sofortunate. 18

The approach to tort liability under German law is reflected in three differentprovisions of law namely, 823 I BGB, protecting subjective rights, 823 IIproviding a remedy against the violation of statutory provisions and 826

BGB protecting against damage caused in an intentional and dishonest way.19

In the U.K. there is no right of publicity or specific action in tort to protect theimage of persons from dissemination. Plaintiffs must turn to related rights inorder to protect their interests. For example in Douglas v. Hello, a successfulaction by celebrities Catherine Zeta and Michael Douglas, for economic lossbased on breach of confidence, the publisher of OK! magazine contractedwith Douglas and Zeta-Jones (the Douglases) for the exclusive right to publishphotographs of their wedding. 20

The Douglases contracted for the right to choose the official photographer.OK! paid them in exchange for their grant of exclusive right to publish thosephotos. Although they went to some serious lengths to prevent it fromhappening, a freelance photographer infiltrated the wedding and tookphotographs which he sold to Hello!.21

Examples of these measures included: confidentiality agreements prohibitingeach service company and each vendor which signed them (including each oftheir respective employees) from keeping, disclosing, using or selling anyphotograph, film, videotape, etc,. which were obtained at the weddingreception. Guests were also under obligations not to photograph or capture

the wedding in any way.

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Despite all these precautions the unauthorized photographer posing as eithera waiter or a guest, took photos at the wedding and sold them to the rivalmagazine Hello!, that published the photos of the wedding with full knowledgethat these were unauthorized images. In writing the majority opinion of thedecision, Lord Hoffman supported the decision of the court of first instance,specifically that there was a valid cause of action, stating It is first necessaryto avoid being distracted by the concepts of privacy and personalinformation..Whatevermay have been the position of the Douglases, who,as I mentioned, recovered damages for an invasion of their privacy, OK!s

claim is to protect commercially confidential information and nothingmore.What matters is that the Douglases, by the way they arra nged their


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wedding, were in a position to impose an obligation of confidence. They werein control of the information. 23

In addressing the disagreeing portion of the court, who were of the opinionthat once the approved photos were published, the publication of the

unauthorized photographs was not a breach of confidence, the judgecommented that

it is certainly the case that once information gets into the public domain it canno longer be the subject of confidence.In this case, however, the point ofthe transaction was that each picture would be treated as a separate piece ofinformation which OK! would have the exclusive right to publish. The picturepublished by OK! were put into the public domain and it would have to rely onthe law of copyright, not the law of confidence, to prevent their reproduction.But no other pictures were in the public domain and they did not enter thepublic domain merely because they resembled other pictures which had. 24

Judge Hoffman also discussed the interpretation of his opinion in terms of itseffect of extending the practice of torts by stating There is in my opinion noquestion of creating an image right or any unorthodox form of intellectualproperty. The information in this case was capable of being protected, notbecause it concerned the Douglases image any more than because itconcerned their private life, but simply because it was information ofcommercial value over which they had sufficient control to enable them toimpose an obligation of confidence. 25

Although the courts of England and Wales do not recognize a right ofpublicity, the rights are exploited commercially and are recognized in certaininstances as having significant commercial value. Her Majestys Revenueand Customs (HMRC) is currently waging a battle against provisions of thePremier League which allow soccer clubs to issue payments to players forexploitation of image rights prior to paying tax debts to the state. 26

As can be inferred from the decision in Douglas v. Hello, U.K. courts arekeen to provide relief when alternative causes of action, involving subjectmatter that is persona related, are brought before them.

FALSE ENDORSEMENT AND USE OF NAME OR LIKENESS CLAIMS

In a classic false endorsement claim, Irvine v. Talksport, the court reasonedthat the only issue on cross-appeal was whether the image on the front ofthe leaflet falsely represented that Mr. Irvine has endorsed Talk Radio.

The judge in the first case formed the representation issue as follows:Whether the actions of TSL created a false message which would beunderstood by a not insignificant section of its market to mean that its radioprogramme or station had been endorsed, recommended or approved of byMr. Irvine.27


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The evidence was examined, much of it expert testimony and the testimonyoffered by recipients of the promo pack as to their opinions. Finally the judgeconcluded that a not insignificant number of recipients of the brochure wouldhave made the same assumption as Mr. Phillips had made: that is to say, thatMr. Irvine had endorsed Talk Radio..28

The judge concluded on the issue of liability that: Mr. Irvine has a propertyright in his goodwill which he can protect from unlicensed appropriationconsisting of a false claim or suggestion of endorsement of a third partysgoods or business.. 29

After addressing a submission to the effect that the limited distribution of theFormula 1 Pack (981 recipients) meant that Irvine failed to prove substantialdamages, the judge concluded on the issue of liability that: For reasons givenabove, Mr. Irvine has a property right in his goodwill which he can protect fromunlicensed appropriation consisting of a false claim or suggestion of

endorsement of a third partys goods or business..30 The judge held thatthere was no substance in TSLs appeal on liability and dismissed it, adjustingthe damage award from 2,000 to 25,000. This was an amount that areasonable company in [TSLs] position would have been prepared tospend..31

In contrast, to the U.K., courts in France from the mid-nineteenth centuryrecognized the exclusive right in name and likeness.32 The right to ones namewas considered as a property right.33 In France, like most jurisdictions, anexception to the enforcement of personality rights is the legitimate interest ofthe public to obtain information about people whom the public has an interestto know better than others. The law requires that such information is both (i)legitimate and (ii) useful. 34

Whether the information is legitimate depends on the nature of the fame ornotoriety of the person involved. The information that the public wouldlegitimately need to know about a politician is much higher than for an actorfor example.35

Article 1382 of the French Civil Code states that any act whatever of man,which causes damage to another, obliges the one at fault to compensate it.36

Only after years of litigation has a considerable faction of the legal communityreached the opinion that personality rights should be recognized as a newcategory of subjective rights. 37

The case seen as giving rise to image rights in France was about a film thatportrayed famous actress on her deathbed. 38

French courts, in actions claiming infringement of image rights, have imposeda requirement that the features of the claimant are recognizable by personswho know him. 39 It is also worth noting that, in France, as in mostjurisdictions, such actions brought by an unknown person are more likely to

be dismissed whereas those brought by famous persons are more likely toresult in prohibition.40


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That is definitely the case in California, where the state publicity statuterequires that the individual bringing the claim is well known.41 Whereas inNew York, the legislature enacted section to the Civil Rights Law to protectagainst non-consensual commercial appropriations of the name, portrait or

picture of a living person.42

Although the language of the New York privacy law is broad its application isnot so simple. For example, uses that merely suggest certain characteristicswithout literally using a persons name, portrait or picture are not actionableunder the statute.43

In Burck v. Mars, the plaintiff was a street entertainer with registeredtrademarks to The Naked Cowboy name and likeness.44 The defendant MarsInc. began running an advertisement on two billboards on Times Square,where the Plaintiff performs his routine, featuring a blue M & M dressed

exactly like The Naked Cowboy. Burck sued alleging that the defendantsviolated his right to publicity under New York law and infringed his trademarksunder federal law by using his likeness, persona, and image for commercialpurposes and by falsely suggesting that he endorsed M & M candy. 45

The District Court for the Southern District of New York dismissed Burckspublicity rights claim on the grounds that the New York statute protects thename, portrait, or picture of a living person and not a character created or arole performed by a living person.

The court did however state that Section 43(a) of the Lanham Act is anappropriate vehicle for the assertion of claims of falsely implying theendorsement of a product or service by a real person. 46

The elements of a false endorsement claim under the Lanham Act are that thedefendant, (1) in commerce, (2) made a false or misleading representation offact, (3) in connection with goods or services (4) that is likely to causeconsumer confusion as to the origin, sponsorship or approval of the goods orservices.47

The complaint in Burck alleged that the M & M Cowboy characters, dressed

just like the Naked Cowboy falsely implied, that Burcks character, The NakedCowboy, endorsed the M & M product.48Accordingly the defendants motionto dismiss the trademark infringement claim was denied. 49

Just as states in the U.S. have different levels of protection for personalityrights, Canadian provinces have each developed specific approaches toaddress personality rights. For example Quebec, has a Charter of HumanRights and Freedoms, that identifies rights to dignity, honor, inviolability,reputation and private life while British Columbia, Manitoba, Newfoundland,and Saskatchewan have enacted privacy legislation.50

In Ontario, the courts have recognized claims based on the invasion ofprivacy to prevent exploitation of the right to exploit ones name.51 In Krouse,


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the court found that the claim was not based on a property right in his nameper se, but an injury to his property, namely his commercially valuableproperty right of being used in an advertisement.52

The Canadian tort of appropriation of personality, however, protects a

proprietary right in the exclusive marketing of a plaintiffs personality, imageand name.53

Name, likeness and signature rights are recognized in Japan, without astatute codifying publicity rights as such.54 It has, like most other jurisdictions,developed protection mechanisms through judicial precedent, enforced byreference to the Constitution, the Civil Code, the Copyright Act or all three.Although it is not always required of individuals that their identity wascommercialized in order to recover, those entitled to a right of publicity arecelebrities, actors, performers and persons of distinction.55

A relatively recent judgment of the Tokyo District court held in favor of adefendant publisher in an image rights claim asserted by a previously famousfemale singing duo. The duo demanded compensation for infringement oftheir publicity rights by a weekly magazine publisher.56

The court found that an infringement determination in a right of publicity actionis determined by whether the alleged infringer used the name or likenessbecause of its appeal to consumers. In this case, the court considered themonochrome nature of the photographs, their size, the contents of the articleand the ratio of the photos to that used in the article and decided that thedefendant did not infringe the plaintiffs publicity rights. 57

In Japan, foreign citizens also have a protectable right of publicity. The TokyoDistrict Court held in the Mark Lester case, that actors have a right to legalremedy for unauthorized use of their name or likeness as a result of injury tothe economic interests in their personality attributes. The court noted insection (Ii) the names of actors and cited various interests related to celebrityimages, in particular noting their economic value because of their use topromote the products of third parties.58

Because in the U.S. there is a patchwork approach to the protection of

personality rights, some plaintiffs have turned to federal false advertising andunfair competition law, specifically the Lanham Act, for relief.

The scope of Section 43 of the Lanham Act has been held to extend beyonddisputes between commercial goods and their producers. 59 The Act alsopermits celebrities to defend rights in their identities against allegedlymisleading commercial use by others. This ability to defend ones name andor likeness against unauthorized use is reasoned to have arisen as a result ofthe economic interest that celebrities have in their identities akin to that of atraditional trademark holder.60

The language of 43(a) is broad but not broad enough to cover personalityrights in name.61 In Parks v. LaFace, the civil rights icon, Rosa Parks brought


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suit against La Face Records and the music duo OutKast for using her nameas the title of their song, Rosa Parks. Parks argued the use constituted falseadvertising under 43(a) of the Lanham Act, 15 U.S.C. 1125(a), andintruded on her common law right of publicity under Michigan state law. 62Defendants argued that Parks failed to show any violation of the Lanham Act

or her right of publicity and that, even if she could demonstrate such aviolation, their First Amendment freedom of artistic expression would be adefense as a matter of law to each of the claims. In addition Parks contendedthat the Defendants actions rendered them liable under Michigan law fordefamation and tortious interference with a business relationship.

Applying Rogers v. Grimaldi, 875 F.2d 994 (2d Cir.1989), the district courtconcluded that the First Amendment, as a matter of law, was a defense toParks' Lanham Act and right of publicity claims.63

Specifically, the court found that (1) an "obvious relationship" between thecontent of the song and its title Rosa Parks renders the right of publicityinapplicable as a matter of law; 64 (2) with respect to the Lanham Act, therewas no explicit representation that the work was endorsed by Parks; 65 (3) theprominent appearance of OutKast's name on their album cured any likelihoodof consumer confusion between Plaintiff's and Defendants' albums as amatter of law; 66 and (4) even if there were some likelihood of consumerconfusion, such risk was outweighed by the First Amendment interests of theDefendants.67

On appeal, citing Rock & Roll Hall of Fame & Museum, Inc. v. Gentile

Productions,68defendant LaFace contended that Parks' 43(a) claim mustfail because they made no trademark use of her name. The court concludedhowever, that the Defendants misconceived the legal basis of a Lanham Actclaim. It is not necessary for them to make a "trademark" use of Rosa Parks'name in order for her to have a cause of action for false advertising under 43(a) of the Lanham Act. 69It is important to note however that Parks famewas not in question. Both parties stipulated to her international fame and toher prior authorization of television programs and books.

CHARACTERS, TRADEMARKS AND ONLINE USE

When compared to actual individuals whose fame and prior commercializationof likeness are in question however, it may be easier to protect againstunauthorized use of an avatar or character particularly if it is used inconnection with the offer of goods and or services to identify their source.

Consider as an example, Sonys Kevin Butler (VP of various fictitiousdepartments). Kevin Butler was a marketing character created by an adagency played by actor Jerry Lambert and used as part of advertisingcampaigns for PlayStation 3 in North America.70

The use of the character in relation to particular products or services mustsupport a finding that consumers make a connection between those productsand the trademark owner. This is especially so when it comes to charactersbecause they can easily become in and of themselves a functional product
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which would result in their being considered copyrightable subject matterrather than source indicators.

Consider the case of Fleischer Studios, Inc., v. A.V.E.L.A., 71 that appeal wasbased on the decision of the district court to grant summary judgment holdingthat Fleischer held neither a valid copyright nor a valid trademark in the BettyBoop character and lacked standing to sue.

Fleischer the plaintiff in this action, was a distinct and separate entity from thenow defunct Original Fleischer which first owned Betty Boop. 72 In the early1970s the family of Max Fleischer incorporated its new entity under the samename as Original Fleischer and attempted to repurchase intellectual propertyrights to the Betty Boop character.

Fleischer based on the belief that its intellectual property purchases allow, itas the exclusive owner of the image, to license the Betty Boop character for

use in toys, dolls and other merchandise.

Fleischer asserted that its ownership of the copyright, which was first ownedby Original Fleischer, arises through several alternative chains of title.A.V.E.L.A. disputed the alleged chain of title and the district court agreed thatFleischer failed to satisfy its burden of proof regarding the transfer of rights.The district court also dismissed Fleischers trademark infringement claim,holding that Fleischer failed to submit proper evidence of a registered federaltrademark in the Betty Boop image. Further, the court held that the fracturedownership and use of the registered trademark of the name Betty Boopdestroyed Fleischers trademark rights and that Fleischer did not establish

that it owned common-law trademarks in Betty Boops name or image.73

Finally, because all of the copyrighted works were created before 1978, theparties agreed that section 3 of the Copyright Act of 1909 (1909 Act) appliedto the copyrights at issue. Section 3 provides:

The copyright provided by this title shall protect all the copyrightablecomponent parts of the work copyrighted, and all matter therein in whichcopyright is already subsisting, but without extending the duration or scope ofsuch copyright. The copyright upon composite works or periodicals shall giveto the proprietor thereof all the rights n respect thereto which he would have if

each part were individually copyrighted under this title. 17 U.S.C. 3(repealed) (emphasis added). 74

The parties agreed that Betty Boop as a character became a separatecopyrightable component of one of Fleischers films. On appeal however thecourt found that through the UM&M agreement, UM&M did not obtain rights tothe Betty Boop character, it obtained the totality of rights commanded bycopyright for the Betty Boop films, id. quoting Gardner v. Nike, Inc., 279 F.3d774,778 (9th Cir. 2002).75

In its review of the district courts decision to dismiss Fleischers trademark

infringement claim, the court noted that neither party cited to controlling caselaw to resolve the questions presented on appeal such as whether cartoon


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characters are protectable as trademarks, whether Fleischer owns aregistered image trademark in Betty Boops image and name, whether thefractured ownership of the Betty Boop copyright precludes Fleischer fromasserting a trademark claim, and, finally, whether A.V.E.L.A. infringedFleishcers marks.

The case that no one cited was International Order of Jobs Daughters v.Lindeburg & Co..76 In that case, plaintiffs Jobs Daughters sued defendantLindeburg for trademark infringement arising out of Lindeburgs manufactureand sale of jewelry bearing the Jobs Daughters insignia. 77 Lindeburg beganselling the jewelry and related items after failing to negotiate a license.

The same trademark infringement claims asserted there were being assertedin the case on appeal. In the earlier case the court held that Lindeburg wasnot using the Jobs Daughters name and emblem as trademarks. 78 The courtthen concluded that the same conclusion and reasoning used in Jobs was

applicable to the appeal.

The role of the court in determining whether an infringers use of an imageand name was for functional or trademark purposes: [A] court must closelyexamine the articles themselves, the defendants merchandising practices,and any evidence that consumers have actually inferred a connectionbetween the defendants product and the trademark owner. 79

The court held in Jobs, that the name and emblem were functional aestheticcomponents of the product, not trademarks. There could be, therefore noinfringement.80

Then examining the issue on appeal the court concluded that JobsDaughters is directly applicable to Fleischers trademark claims. Even acursory examination, let alone a close one, of the articles themselves, thedefendants merchandising practices, and any evidence that consumers haveactually inferred a connection between the defendants products and thetrademark owner, reveal that A.V.E.L.A. is not using Betty Boop as atrademark but instead as a functional product. 81

Another case was noted as relevant by the court that the parties failed to cite,

Darkstar Corp. v. Twentieth Century Fox Film Corp.

82

That case held thatwhere a copyright is in the public domain, a party may not assert a trademarkinfringement action against an alleged infringer if that action is essentially asubstitute for a copyright infringement action. 83

Fleischers infringement claim was barred. The court concluded that If weruled that A.V.E.L.A.s depictions of Betty Boop infringed Fleischerstrademarks, the Betty Boop character would essentially never enter the publicdomain. Such a result would run directly contrary to Darkstar. 539 U.S. at 37(To hold otherwise would be akin to finding that 43(a) created a species ofperpetual patent and copyright, which Congress may not do).84


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In the European Union, availability of goods on the Internet is considered useof a trademark, regardless of whether the goods were actually purchased inthat country. This includes advertising so long as the advertisement isdirected towards consumers in the relevant jurisdiction. It is also possible touse trademarks as the basis for a claim for passing off or unfair competition.85

A decision regarding evidence of trademark use as genuine use in Germanystates Transactions regarding goods and services over the Internet havebecome a common variant of the general business life in the Federal Republicof Germany, which offer, order and delivery are the domestic businessanyway attributable if - as in this case - the Internet advertising (also) inGerman Language is kept and the production of goods promoted domesticallymade. Given these conditions, the representation of the trade-marked goodsand their concrete offer for sale on the internet is basically a suitable use foraction pursuant to 26 para 1 MarkenG. [See 24 W (pat) 185/99 -Warenvertrieb im Internet paragraph 29]

The German Trademarks Act of 1995 extends to unregistered marks anddistinguishing signs such as company names. 86 There are two ways toacquire trademark protection in Germany, either through use or registration. 87

In the Bach case, a trademark was registered to protect the name andlikeness of a long dead icon, Johann Sebastian Bach, and subsequently usedto obtain royalties from traders of goods who incorporated the name in theirproducts. One trader brought suit for trademark infringement, the Court ofAppeals (Oberlandesgericht Dresden) held that the use of the nameJOHANN SEBASTIAN BACH did not constitute infringement due to both lackof use and lack of confusion. 88 Lack of confusion because there was no

association in the minds of the consuming public between all Bach markedgoods. Consumers did not assume that all goods marked BACH originatedfrom the same source. 89

More recently, the widow of Frank Zappa filed a trademark infringement claim,on behalf of the trust to administer the legacy of Frank Zappa who died in1993.90 The claim included three defendants in Germany, one who ownedand operated the domain name www.zappanale.de. The primary defendant,was an association founded in 1993, and as of that year, took over theorganization of an annual festival Zappanale. The second defendant was thepresident of the association. The plaintiff sought that all defendants ceasetheir use of the name Zappa. 91

The plaintiff challenged the use by the defendants of the name Zappa for thefestival and the website. Plaintiff based this claim on their communitytrademark no. 001933944 for the verbal mark ZAPPA applied for onNovember 1, 2000 and registered August 1, 2002.

The trademark was registered for the following goods and services:CD's with recorded content, records and audio cassettes, sound recordings; printed products, and books about tours, posters, songbooks and magazineswith articles related to music;
http://translate.googleusercontent.com/translate_c?depth=1&ei=GxL3UP7lJuOG4AS6h4DgCA&hl=en&prev=/search%3Fq%3D24%2BW%2B%28pat%29%2B185/99%2B-%2BWarenvertrieb%2Bim%2BInternet.%26hl%3Den%26safe%3Doff%26client%3Dfirefox-a%26hs%3DdGb%26tbo%3Dd%26rls%3Dorg.mozilla:en-US:official&rurl=translate.google.com&sl=de&twu=1&u=http://openjur.de/g/markeng/26.html&usg=ALkJrhjSBu9-EPOX0D8ZBpvJ0in4n4ztcghttp://translate.googleusercontent.com/translate_c?depth=1&ei=GxL3UP7lJuOG4AS6h4DgCA&hl=en&prev=/search%3Fq%3D24%2BW%2B%28pat%29%2B185/99%2B-%2BWarenvertrieb%2Bim%2BInternet.%26hl%3Den%26safe%3Doff%26client%3Dfirefox-a%26hs%3DdGb%26tbo%3Dd%26rls%3Dorg.mozilla:en-US:official&rurl=translate.google.com&sl=de&twu=1&u=http://openjur.de/g/markeng/26.html&usg=ALkJrhjSBu9-EPOX0D8ZBpvJ0in4n4ztcghttp://www.zappanale.de/http://www.zappanale.de/http://www.zappanale.de/http://www.zappanale.de/http://www.zappanale.de/http://www.zappanale.de/http://www.zappanale.de/http://translate.googleusercontent.com/translate_c?depth=1&ei=GxL3UP7lJuOG4AS6h4DgCA&hl=en&prev=/search%3Fq%3D24%2BW%2B%28pat%29%2B185/99%2B-%2BWarenvertrieb%2Bim%2BInternet.%26hl%3Den%26safe%3Doff%26client%3Dfirefox-a%26hs%3DdGb%26tbo%3Dd%26rls%3Dorg.mozilla:en-US:official&rurl=translate.google.com&sl=de&twu=1&u=http://openjur.de/g/markeng/26.html&usg=ALkJrhjSBu9-EPOX0D8ZBpvJ0in4n4ztcg


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production of records, services of music publication and entertainment in theform of musical performances and records.

Additionally, the association was sued to prevent its sale of merchandise

using a figurative trademark claimed to infringe the plaintiffs rights in theGerman figurative mark applied for March 24, 1994 and registered on April26, 1995. The defendants alleged non-use and the court of first instanceagreed, dismissing the complaint in accordance with their counterclaim.

The court of first instance found that there was no use of the trademark withinthe registered list of goods and service in the area of the European Unionwithin the period of five years from the date of registration, ie after 1 August2002 and that there was no danger of confusion as regards claims by theplaintiff concerning the figurative mark. 92

The Plaintiff did not use the common verbal trademark 19 33 944 ZAPPA ina manner which would sustain the right in the sense of Article 15 Paragraph 1Rules of the community trademark; the mark was invalidated on the groundsof the first Defendants counterclaim and as such could no longer support thebasis of the claim. 93

If, in accordance with Article 15 Paragraph 1 of the community trademarkregulations, the holder of the community trademark in relation to goods orservices for which it is registered, within five years from the date ofregistration, has not put the trademark to genuine use in the community or if ina continuous period of five years has not used the trademark in relation togoods and services for which it is registered, then the common trademark issubjected to sanctions provided for in the Regulation on the CommunityTrademark, unless there are justifiable reasons for non-use. 94

The plaintiff appealed the decision, claiming that their use of the trademarkswas sufficient to sustain the claim and asserted post mortem personality rightsof Frank Zappa.

On appeal it was determined that the mark did not meet the standard ofgenuine use in the community simply by virtue of that the plaintiff operates a

website, www.zappa.com.

95

The appeals court was doubtful however whetherthat conclusion was justified by the reasoning of the national court.

The national court considered that the webpage was used in Germanybecause it was not directed to the domestic German public. The courtconcluded so based on the following facts 1) the language of the webpagewas English and 2) the values expressed were in USD. Therefore, the opinionof the National Court was that there was no use of the trademark in Germany,but that the mark was used in the UK. 96

The German Supreme Court however held that domain names leading to

active homepages, which are used in business transactions generally, have amarking function.97 Accordingly, the public will see a statement of origin of


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goods and services in relation to the company, which are offered under thesenames on the Internet (on this point with further evidence).

However, it is a different situation when a domain name has a very clearaddress position or when it is seen only as descriptive data.98

Use of the trademark as an integral part of the domain name cannot beevaluated as a use which maintains the right, the Appeal court stated theconsuming public must be able to distinguish that trademark by use of thename, not as the company itself, but one marking specific good or service thatoriginates from the company. 99

The court reasoned that if a mark is perceived only as a mark of the company,and not as a distinctive mark for a specific product, one can assume that it isless used as a trademark, which is characteristic of poor markingcharacter.100

The use of the retained right of the trademark ZAPPA by virtue of ZappaRecords was also excluded. The court stated the public sees the webpagemarked as "Zappa" as a site that deals with Frank Zappa. The site isaddressed primarily to those who know the artist Frank Zappa and seek moreinformation about his life and work. That circle of people associate, "ZAPPA"in the domain name, with information about the artist, not about goods andservices. 101 Therefore all uses presented by plaintiff were found to bedescriptive and the Appeals court reasoned that question of whether thewebsite referred to or was directed toward the domestic market becameirrelevant.102

In the opinion of the court, the fact that indirectly through links there may beaccess to product offerings, did not justify, in relation to this circle ofpeople/customers, the deviating result. Those products being offered to thevisitors of the website only through links via websites that deal with thatperson. Given the above, the court held that "Zappa" described the mentionedwebsite and had no function that indicated origin.

What constitutes genuine use for name and image trademarks is acomplicated issue in Europe, even without considering use solely on the

Internet.Regarding the scope of protection afforded to celebrities under the LanhamAct, the appeal court opinion reasoned 43(a) extends beyond disputesbetween producers of commercial products and their competitors. It alsopermits celebrities to vindicate property rights in their identities againstallegedly misleading commercial use by others. 103

Celebrities have standing to sue under 43(a) because they possess aneconomic interest in their identities akin to that of a traditional trademarkholder.104

In order to prevail on a false advertising claim under 43(a), a celebrit ymust

show that use of his or her name is likely to cause confusion amongconsumers as to the "affiliation, connection, or association" between the


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celebrity and the defendant's goods or services or as to the celebrity'sparticipation in the "origin, sponsorship, or approval" of the defendant's goodsor services.. likelihood" means a "probability" rather than a "possibility" ofconfusion.105

Defendants also alleged that even if Parks' evidence demonstrated somelikelihood of consumer confusion regarding their song and album, their FirstAmendment right of artistic expression trumps that concern. The courtexamined all three approaches to balance First Amendment interests with theprotections of the Lanham Act: (a) the "likelihood of confusion" test; (b) the"alternative avenues" test; and (c) the Rogers v. Grimalditest.

The first approach was inferred from the Ninth Circuit and endorsed by theTenth Circuit as well. 106 It relies solely on the "likelihood of confusion" factorsapplied in other, more traditional, trademark cases. Specifically, that 1) thestrength of the plaintiff's mark; 2) the relatedness of the goods; 3) thesimilarity of the marks; 4) evidence of actual confusion; 5) the marketing

channels used; 6) the likely degree of purchaser care; 7) the defendant'sintent in selecting the mark; and 8) the likelihood of expansion in the productlines of the parties. 107

Next the court examined the alternative avenues test endorsed by the EighthCircuit. Under that test, a title of an expressive work will not be protected froma false advertising claim if there are sufficient alternative means for an artist toconvey his or her idea. 108

Finally the court examined the Roger v. Grimaldi test, under which a title of awork will be protected unless it has no artistic relevance, to the underlyingwork or, if there is artistic relevance, the title explicitly misleads as to the

source or the content of the work.109

Parks contended that the Rosa Parks title misleads people into believing thatthe song is about her or that she is affiliated with the OutKast or LaFaceRecords, especially because of the placement of the CDs next to a Tributealbum that she did endorse in record shops. La Face argued that 1) Parks didnot have a trademark right in her name and 2) she did not make a trademarkuse of her name. Even though Rosa Parks had no registered trademark andthe use in question involved her actual name, in this case as in Burck, thecourt concluded that a viable cause of action exists under 43(a) eventhough the defendants were not selling Rosa Parks brand CDs, if consumersfalsely believed that Rosa Parks had sponsored or approved the song, or wassomehow affiliated with the song or the album..110

The court concluded that the Rogers test, which has been endorsed by panelsin the Second, Fifth, and Ninth Circuits, was the most appropriate used bycourts to balance the public interest in avoiding consumer confusion with thepublic interest in free expression.111 A decisive difference between the Rogerscase and the decision in Parks however was that the title to the movie Gingerand Fred was relevant to its content.

In France, the moral concept of the image right is codified in Article 9 of the

French Civil Code. This provision states that any use of an individuals imagerequires their permission and has its root in the right of privacy and is


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therefore also protected by Article 8 of the European Convention on HumanRights. 112

These protections do not address commercial exploitation; that has beenafforded status under case law as a descendible right to control commercial

use of the image of an individual without authorization. Interestingly the tortprovision of the civil code only provides injunctive relief for an unauthorizedact, however it does not usually allow for other than nominal compensation.113

In the Ryanair case, however, Carla Bruni sought EUR 500,000.00 fordamages, because according to her, that was the commercial value of herimage for visual advertising on French territory.114

The Merriam Webster Online dictionary as describes an avatar: an electronicimage that represents and is manipulated by a computer user (as in acomputer game). It is important to note that not all avatars reflect humanoid

form. Some avatars are graphic characters including fanciful species such asfuzzies and as such do not reflect their human users image or any humanimage whatsoever. In 3D virtual environments, however, it is possible for anyavatar representation to display human personality traits such as voice andthe image.

In the Second Life virtual world a new user during the process of establishingtheir account is required to select a first and last name for their avatar fromthe extensive list provided by Linden Research (aka Linden Labs). Accountuser avatar names are provided in many virtual so that the choices are limitedto those first and last names provided by the service, and as such may notalways be capable of reflecting the exact name of the user. Perhaps it is anickname in that case, where does the law stand?

The United States Patent and Trademark Office has registered avatarlikenesses as figurative trademarks in classes covering design and scriptingservices. The first of these registered was for Aimee Weber.115

The brands in world are used in commerce in world in a variety of ways.Logos are used by fashion designers as elements included in their workssimilar to the way in which fashion houses in real life have used specific

patterns or logos on their articles of clothing to identify the source of the good.

The viewer that controls the interface for the world much like windows or OScontrols the way that we use the computer various viewer has various toolsand applications. The viewer has a search tool that provides the option ofsearching in world by avatar name and the result allows users to review theprofile of the avatar. In addition, each user has the ability to click on and viewthe profile information of any avatar within its view or line of vision. The avatarprofile usually displays together with a photo of the avatar a description of thegoods and services offered by the avatar, a retail location link (slurl and or url)and an option allowing the viewing avatar to immediately send a message to

the profiled avatar or hand that avatar a piece of inventory, perhaps a notecard containing a request for more information or perhaps an order for goods


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and services. The avatar profile also includes groups to which that avatarbelongs.

Courts in the United States, specifically in California, are exploring theboundaries of use of image and likeness rights as applied to virtual

representations, specifically avatars. In the case No Doubt v. Activision, thedecision hinged on whether Activision would be found to hold a valid licenseto use No Doubts likenesses in the manner in which they are used in BandHero.116

As with all Guitar Hero games, players advance and can unlock charactersand use them to play songs of the players choosing, including songs theplayer composed as well as those of other artists. 117 The band becameaware of the unlocking feature of the game only two weeks prior to its release.

When No Doubt complained about the use of their likenesses to perform

songs other than their own. Activision admitted that it hired actors toimpersonate No Doubt in order to create the representations of the bandmembers performances of the additional musical works other than the NoDoubt songs licensed for the game. 118

No Doubt initiated a claim after Activision refused to remove the unlockingfeature for No Doubt avatars. The complaint sought injunctive relief anddamages forActivisions allegedly unauthorized exploitation of No Doubtsname, performances and likenesses. One of the six causes of action allegedwas violation of statutory and common law right of publicity others includedbreach of contract and unfair business practices under California laws.

Activision filed a special motion to strike and argued that No Doubts claimsarose from protected activity. The court found however that No Doubt haddemonstrated a probability of prevailing in its claims. Activision appealed.

On appeal, the relevant parts to the Agreement as presented by the courtwere as follows: This Agreement sets out the terms upon which Artist [NoDoubt] has agreed to grant to Activision certain rights to utilize Artistsname(s), likeness(es), logo(s), and associated trademarks(s) and otherrelated intellectual property rights (the Licensed Property) .119

The Agreement specifically provides Artists grant to Activision the non-exclusive, worldwide right and license to use the Licensed Property (includingArtistss likeness as provided by or approved by Artist) solely in the one (1)Game for all gaming platforms, and formats, on the packaging for the Game,and in advertising, marketing, promotional and PR materials for the Game.120

In the approval rights section of the Agreement is stated that: Artists likenessis as implemented in the Game (the Character Likeness), any use of Artistsname and/or likeness other than in a billing block fashion on the back of thepackaging for the Game, and the b-roll and photography or other

representation of the Services of Artist, shall be subject to Artists prior writtenapproval.


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Activision shall submit each of the above (i.e. the Character license, nameuses, and b-roll and photography or other representation) to Artist for reviewand Artist shall have ten (10) business days to either approve ordisapprove.

Activision shall not be required to submit for approval uses of previouslyapproved assets, provided such uses fall within the rights granted herein (e.g.,using a previously approved Character Likeness depiction in multipleadvertising materials).121

Activision agreed to license no more than three No Doubt songs for use inBand Hero, subject to No Doubts approval over song choice. Images andrecordings of the band singing their own songs and performing their on stagemoves were captured by Activision so that the members avatars wouldaccurately reflect their appearances, movements and sounds. After viewing

the avatars the band approved.

The court found that Activisions use of No Doubts avatars was nottransformative. A determinative fact was that unlike in Kirby, the No Doubtavatars are not depicted as fanciful characters or anyone else doing anythingelse other than exactly what they do, performing rock songs.122 The court heldthat there was nothing creative in the elements of Band Hero that elevated thedepictions of No Doubt to something more than conventional, more or lessfungible, images of its members that No Doubt should have the right tocontrol and exploit.

In Kirby, the court held that video games are considered expressive workssubject to First Amendment protections. 123Further the court found that thereis a public interest which attaches to people who, by their accomplishments,mode of living, professional standing or calling, create a legitimate andwidespread attention to their activities 124

The court discussed how federal courts have applied the Lanham Act toartistic works alleged to infringe trademarks noting that most courts apply alikelihood of confusion test that asks whether use of the plaintiffs mark islikely to cause confusion or deceive as to the affiliation, connection, or

association of the two products.

125

The Second Circuit however held inRogers v. Grimaldi, that in general the Act should be construed to apply toartistic works only where the public interest in avoiding consumer confusionoutweighs the public interest in free expression. 126 The Ninth circuit adoptedthat test in Mattel.

The court concluded that No Doubt was not obligated to prove that the use ofits avatars in Band hero was explicitly misleading because that standardcomes in to play only after a determination has been made that a challengeduse of a trademark is worthy of First Amendment protection. 127 No Doubtwas still required, in order to succeed in its section 17200 claim, to

demonstrate that members of the public were likely to be deceived byActivisions use of the likenesses. 128


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Across jurisdictions provisions and or jurisprudence on the question ofwhether image rights are descendible or transferable are also very different.In one of the Marlene Dietrich cases, a German court held that the economicinterest protected by personality rights is descendible. The court granted an

injunction and damages based on the complaint of Dietrichs daughter againsta producer of a musical about the actress. The producer sold merchandisebearing the name and image of Dietrich and even granted a car manufacturerthe right to produce a special model called Marlene. 129

In contrast to Lanham Act actions brought by US celebrities, in the UK, evencelebrities may not be successful in actions brought under passing off. Underthe goodwill approach, utilized in passing off actions, private individuals lackrecourse as they may or may not have goodwill in their image or establishedgoodwill in respect of their professions.

Further, it has been held by English courts that an action in passing off doesnot cover cases where the claimant is represented as having endorsed aparticular product or service unless it could be shown that the plaintiff anddefendant shared a common field of activity. In early cases, a successfulclaim for appropriation of personality required a demonstration by the plaintiffthat they and the defendant were engaged in a common field of activity. 130

Passing off is used in the UK to protect goodwill, not reputation in its broadersense. In Reckitt and Coleman Products Limited v. Borden Inc., Lord Jaunceyof Tullichettle conducted a thorough examination of the general law applicableto passing off actions including in part the following:

There was for some time doubt as to the precise rights which were entitled tobe protected by a passing off action but this was finally resolved in A. G.Spalding & Bros, v. A. W. Carnage Ltd. (1913) 32 R.P.C. 273, 284 where LordParker of Waddington, identified the right as: "property in the business orgoodwill likely to be injured by the misrepresentation." 131

More recently in Star Industrial Co. Ltd. v. Yap Kwee Kor132, Lord Diplock,delivering the judgment of the Board, said:"A passing off action is a remedy for the invasion of a right of property not in

the mark, name or get-up improperly used, but in the business or goodwilllikely to be injured by the misrepresentation made by passing off one person'sgoods as the goods of another. Goodwill, as the subject of proprietary rights,is incapable of subsisting by itself. It has no independent existence apart fromthe business to which it is attached." 133

However, it is not essential to the success of a passing off action that thedefendant should misrepresent his goods as those of the plaintiff. It issufficient that he misrepresents his goods in such a way that it is a reasonablyforeseeable consequence of the misrepresentation that the plaintiff's businessor goodwill will be damaged.

A misrepresentation achieving that result is actionable because it constitutesan invasion of proprietary rights vested in the plaintiff; so long as the plaintiff's


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goods have acquired a reputation in the market and are known by somedistinguishing feature. Additionally, It is also a prerequisite that themisrepresentation has deceived or is likely to deceive and that the plaintiff islikely to suffer damage by such deception. Mere confusion which does notlead to a sale is not sufficient. 134

In Erven Warnink B.V. v. J. V. Townend & Sons (Hull) Ltd., Lord Diplock, setout five essential characteristics of a passing off action in the followingmanner,:

" (1) a misrepresentation, (2) made by a trader in the course of trade, (3) toprospective customers of his or ultimate consumers of goods or servicessupplied by him, (4) which is calculated to injure the business or goodwill ofanother trader (in the sense that this is a reasonably foreseeableconsequence) and (5) which causes actual damage to a business or goodwillof the trader by whom the action is brought or (in a quia timet action) willprobably do so." 135

These five characteristics cover two types of cases the first is where onemisrepresents their goods as being those of another and the second is wherethe misrepresentation involves the quality of their own goods.

Goodwill was defined by Lord Macnaughten in Inland RevenueCommissioners v. Muller & Co.'s Margarine Ltd., as "the benefit andadvantage of the good name, reputation and connection of a business. It isthe attractive force which brings in custom." 136 Get-up is the badge of theplaintiff's goodwill, that which associates the goods with the plaintiff in themind of the public. Any monopoly which a plaintiff may enjoy in get-up willonly extend to those parts which are capricious and will not embrace ordinary

matters which are in common use.Although U.K. common law will protect goodwill against misrepresentation byrecognizing a monopoly in a particular outlook, it will not recognize amonopoly in the article itself. So that one producer can compete with anotherby copying their goods provided that the use is not done in such a way as tosuggest that those goods are those of the other producer.

In a case such as in Reckitt, where the issue is whether the goods of a partyare likely to be passed off as those of another, a plaintiff, to succeed, mustestablish (1) that his goods have acquired a particular reputation among thepublic, (2) that persons wishing to buy his goods are likely to be misled into

buying the goods of the defendant and (3) that he is likely to suffer damagethereby.137

As seen in Zappa however there are factors that courts in Europe tend toconsider when they are confronted with questions that require decisionsregarding whether a trademark used solely on the Internet. Those factorswere articulated in the WIPO Joint Recommendation provisions, published inAugust 2010. 138 One, for example, is that the use of a sign on the Internet willbe treated as use in a Member State, only if the use has a commercial effectin that particular Member State. The Recommendation outlines certain factorsto assist a competent authority in determining whether a sign has been

genuinely used in a given Paris Convention or WIPO member State when theuse offered by the right holder is Internet based. 139


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The competent authority would be free to consider other or additional factorsand to determine which factors, if any, are relevant in each particular case.

Competent authorities are administrative, judicial or quasi-judicial authorities,

which are competent to determine whether a right has been acquired,maintained, or infringed, for determining remedies, or for determining whetheran act of competition constitutes an act of unfair competition. 140

Other circumstances that may be relevant in determining whether use of asign on the Internet constitutes use of a sign in a Member State, whichbasically means whether a sign has commercial effect in that Member State,include but are not limited to:

a. circumstances indicating that the user of the sign is doing, or hasundertaken significant plans to do, business in the Member State inrelation to goods and services which are identical or similar to those for

which the sign is used on the Internet.b. the level and character of commercial activity of the user in relation to

the Member State.;c. the connection of an offer of goods and services on the Internet with

the Member State.;d. the connection of the manner of use of the sign on the Internet with the

Member State.;e. the relation of the use of the sign on the Internet with a right in that sign

in the Member State .

Under b), examples of circumstances indicating the level and character of

commercial activity include 1) whether the user of the mark has customers, orentered into commercially motivated relationships with persons, located in theMember State; 2) whether the user stated that there will be no delivery offeredto the Member State and whether that statement is followed; 3) whether othercommercial activities are undertaken by the user which are related to the useof the sign on the Internet but which are not carried out over the Internet; 4)whether the prices are stated in the official currency of the Member State; 5)whether the user has indicated, in conjunction with the use of the sign, anaddress, telephone number or other mean of contact in the Member State and6) whether the sign is used in connection with a domain name which is

registered under the ccTLD (country code Top Level Domain) referring to theMember State.141

Regarding what constitutes trademark use on the Internet in France, inGoogle France v. Louis Vuitton, the court recognized the practice of ascribingeconomic value to certain words and marks for advertising purposes. Itremains untried whether this practice would be receive the same treatment ifthe facts were based on a virtual world hosting service rather than an internetreferencing service and whether if there is value attributed to an individualsname or likeness whether it would constitute evidence of commercialappropriation for the purposes of obtaining protection of personality rights. 142


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Three questions were presented, the two relevant to current advertisingpractices in virtual environments and trademarks are presented, 1) whethermaking trademarks available to advertisers as keywords (reproducingregistered trademarks and arranging ad placement according to the terms ofan agreement between the service and the advertiser) is using those

trademarks in a way which their proprietor may prevent? and 2) If not, can theprovider be categorized as an Information Society Service Provider (ISSP)for the purpose of being shielded from liability until its notified by thetrademark proprietor of the unlawful use of the sign by the advertiser? 143

Regarding the nature of the use the ECJ concluded Although it is clear fromthose factors that the referencing service provider operates in the course oftrade when it permits advertisers to select, as keywords, signs identical withtrademarks, stores those signs and displays its clients ads on the basisthereof, it does not follow, however, from those factors that the serviceprovider itself uses those signs within the terms of Article 5 of Directive

89/104 and Article 9 of Regulation No 40/94.144

That conclusion of the Court was not to be questioned by the fact that theservice provider is paid by its clients for the use of those signs because thefact of creating the technical conditions necessary for the use of the sign andbeing paid for that service does not mean that the party offering the serviceitself uses the sign.

To the extent to which it has permitted its client to make such a use of thesign, it role must, as necessary be examined from the angle of rules of lawother than Article 5 of Directive 89/104 and Article 9 of Regulation No40/94.145

In this part of the decision the Court found the basis of Googles liability mustbe determined under the E-Commerce Directive and not the TM Directive, asGoogle was determined to be an ISSP.

Specifically, the Court determined that an internet referencing serviceconstitutes an information society service consisting in the storage ofinformation supplied by the advertiser, with the result that that information isthe subject of hosting within the meaning of that article and that the

referencing service provider therefore cannot be held liable prior to its beinginformed of the unlawful conduct of that advertiser. 146

So the question that remained was whether Google did have control over thecontent presented on their site namely the advertisement (commercialcommunication under the directive) rather than simply being a passive host ofthird party content. If they are only passively hosting advertisements then theyare not be liable but if they write advertisements for third parties and postthem then they are liable under the directive.

It remains to be determined whether it would constitute use if a third party

such as an associated user or service provider writes and posts theadvertisement whether that would constitute use for the purposes of


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establishing rights under trademark law or establishing evidence of value inkeywords such as avatar names or particular cleverbot programs.

The Court further defined the essential function of a trade mark as toguarantee the identity of the origin of the marked goods or service to the

consumer or end user by enabling him to distinguish goods or service fromothers which have another origin.147

NAME BASED UNFAIR COMPETITION AND TRADEMARK INFRINGMENTCLAIMS

In Germany, 12 BGB provides relief whenever the right to use of a name isdisputed by another person or when another person using the same nameviolates the interest of the right holder. The legitimate holder can demand thecessation of the interference. If any further interference is to be expected, he

may also apply for injunctive relief.

There are three elements required to establish an infringement of 12: (1)use of an identical or similar name causing a risk of confusion in a way whichis (2) unjustified and which (3) results in a violation of the claimants interest.148

The provision covers every word or sign used to identify a natural or legalperson and has been used to prevent the registration and use of otherpersons or entities names as domain names.149 If a trade name is protectedby trademark law, the section does not apply.150

A risk of confusion may be assumed when the use gives the public a falseimpression that the holder of the right consented to the use. A real obstacle toeffective enforcement under this provision occurs because the claimant wouldnot have consented to the defendants use. 151

The Act against Unfair Competition, 3 of the Gesetz Bekmpfung desunlauteren Wettbewerbs (Act Against Unfair Competition of 2004 UWG),provides that acts of unfair competition, which are likely to affect competitionto the detriment of competitors, consumers or other market participants to

more than immaterial extent, are prohibited. Prohibited acts are specifiedunder 4. The most relevant provisions to the context of personality rights aresubsections (9) and (5). Subsection (9) prohibits the intentional obstruction ofa competitors business and (5) prohibits misleading advertising.

Subsection (9) is often used in actions involving character merchandising. 152

An unfair competition action in Germany must be brought by a competitor ofthe alleged infringer. 153 Under 2 (3) a plaintiff is considered to be acompetitor when it is in a competitive relationship with the defendant.

In one of the Marlene Dietrich cases, a German court commented that thelawsuit initiated could not have been brought under unfair competition laws


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because the grant of rights concerning marketing is not possible based onunfair competition but only on the basis of personality rights. 154

Also worth noting is that in its decision in DHL Chronopost, the Court ofJustice of the European Union has ruled that a prohibition against further orthreatened infringement issued by a Community trademark court must, as arule, extend to the entire area of the EU; however the territorial scope of theprohibition may, in certain circumstances, be restricted. As a result a decisionof the German court sitting as a community trademark court to protect theZAPPA mark against infringement in Germany may now be enforceable alsoin other jurisdictions where protection was extended under the CTM. Thisdecision provides an effective weapon against the Internet basedinfringements that may cross jurisdictions. 155

In the United States there are also use issues in relation to establishment ofcommon law trademark rights and trademark use in commerce, particularlywhen the use is Internet based. Use of a trademark by its owner is required to

establish and maintain trademark rights in the United States.

In France, trademark law is implicated when a name or image is used as atrademark or business name. The right to ones name is considered as aproperty right in France. 156

In France personality rights cannot technically be either transferred or waived,even if the use relates to information that had been disclosed previously bythe right holder. 157 Further, under French law, each use that implicates theright to image must be consented to separately.158 The consent must clearly

state that the holder of the right will not oppose the use being made of theirvoice, name, or image right. 159

Typically courts in the U.S. will apply the laws of the domicile of the claimanteven in actions to determine whether a particular right of publicity isdescendible.160 The differences among the levels of protection and the scopeof publicity rights from state to state and deciding which laws to apply to aparticular case is determinative of the outcome. 161 But even the approach ofwhether to apply the laws of the claimants domicile varies. Indiana has a stateright of publicity statute that provides for its application to an act or event thatoccurs within Indiana regardless of a personalitys domicile, residence orcitizenship. 162

French case law has stated that a name because of its inclusion in acompanys bylaws may become a distinctive sign at which point it detachesfrom the individual and attaches to the legal person becoming a descendibleproperty right. 163

Lets consider the first of the Popeye cases in Japan. 164 The issue waswhether the use of the name POPEYE and a drawing of a character similarin appearance to the POPEYE cartoon character on undershirts constituted

infringement. The claim was based in part on copyright, trademark, and


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design rights. The plaintiff was the trademark owner and the defendant alicensee based on copyright. 165

The court reasoned that the name of the character Popeye was notcopyrightable, neither were the corresponding Katakana characters which

could not be seen in the comic work. The court held that the use by thedefendant constituted use as a trademark.

The second case involved same issues as the first but a different defendant.The court held that the use by the defendant did not constitute use as atrademark. The difference being that the defendants in the second casebought material containing the mark and character which was created underlicense by the plaintiff and using that material to make and sell clothing.

The Osaka District Court ruled that the act of the defendant should not bedeemed to be an infringement of the Popeye trademark owned by the plaintiff,

since the defendant didnt use the character as a trademark. 166

Article 2 of the Trademark Law defines trademark, as used in the context ofmark and use of mark as a practical trademark now used in actual tradeor a mark or a trademark as a generally accepted social idea.167

The court found that a proper trademark should be attached to products inorder to distinguish products of the trademark owner from those of othermanufacturers. It is generally admitted that besides this primary function toshow the source of products, a trademark has other functions, to guaranteethe quality of products and to advertise them. Therefore, the protection of atrademark under the Trademark Law should be the legal protection of theproper trademark against an illegal action to disturb such functions of atrademark as stated above, namely, the indication of the source of thedesignated products. etc.

So as it turns out, Popeye was another example of the same legal principle inoperation on the opposite side of the planet.

The Nagoya District court in Japan held that the commercial value of deadfamous racehorse names should be protected under publicity rights. The

Nagoya High Court supported the judgment but the Second Branch of theSupreme Court dismissed the decision on appeal. The Court reasoned thatthere could not be infringement of publicity to property (other than a naturalperson), and concluded that the use of the name of other than humans isprotected by the Japanese Trademark Law, Copyright Act and UnfairCompetition Prevention Act. 168

ROBOTS, AND VOCALOIDS AND CLEVERBOTSOH MY!!!

Take a moment to consider actual robots, not the science fiction ones we allknow and love like R2D2 or even his ancestor, Maria a robot actress from the

1927 film Metropolis, but honest to goodness fully functional robots.


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Although technology has not yet lent personality to these robots in ameaningful way, the capability is not as far away as one might think.Primarily thanks to programs like Cleverbot and software like Vocaloid.

Cleverbot refers to a particular chatbot, or interactive online character

program, it came online in 1997. On the site www.cleverbot.com users caneither hold a simple chat conversation with the program or communicate viathe cleverbot avatar EVIE (Electronic Virtual Interactive Entity). It holdsconversations by using previous discussions over the Internet as fodder toexpand its knowledge database. The creator of the chatbot, Rollo Carpenter,described it as a conversational Wikipedia.169

The vocaloid software for synthesizing singing was developed under aresearch project between the Pompeu Fabra University in Spain and theYamaha Corporation. The software is available in English and Japanese. Itworks by using synthesizing technology to allow manipulation of the voices of

actors and singers, which were specially recorded to provide singing data. Inorder to create songs users must input melody and lyrics. There are varioussinging styles employed including classical, male and female versions areavailable. The software is offered under license and each licensee has accessto a database of vocal fragments sampled from real people. Because of thelegal implications involved with this activity, one company creating Vocaloidschanged their focus from imitation of singers to creating characteristic vocals.Late in 2010 the same firm, Crypton Future Media, announced its publicationservice, which would seek copyright royalties if songs are usedcommercially.170

SIRI is an example of artificial intelligence. The program in essence turns youriPhone into a robot. Technically Siri is referred to as an intelligent personalassistant but the technology behind SIRI makes it an amazing feat withserious potential. The program places communications within context and isdesigned to provide results based on patterns of speech. This type ofthought is what makes it stand apart from voice recognition applications.171

Hatsune Miku, a synthesized singing application created by Crypton FutureMedia, is a female character that utilizes hologram technology. She hasperformed live to sold out audiences in Asia. Her voice is derived from the

Japanese voice actress Saki Fujita.

What happens when these technologies are embodied in machines and underwhat strategy would result in enforceable rights to that robot? Depending onits use and development any form of intellectual property could result. Basedon the necessity to use human interaction as both an initial as well as acontinuous reference point would such technology be anything other than arepresentation of human personality traits? The point being that we havedifficulty clarifying the personality rights of humans; how long will it take thelaw to address specifically the basis of protection of virtual personas andintelligent machines?
http://www.cleverbot.com/http://www.cleverbot.com/http://www.cleverbot.com/http://www.cleverbot.com/http://www.cleverbot.com/http://www.cleverbot.com/http://www.cleverbot.com/


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CONCLUSION

Because of the way these programs collect and utilize data based onindividual user actions, it is important to note the nationality of the holder and

grantor of related licenses, and related provisions under particular terms ofservice agreements. The location of consumers of relevant goods andservices really matters as does currency and language particularly when therights are applied to virtual spaces. Attention must be given to legalimplications such as jurisdiction based use and rights including application ofprovisions concerning validity of transfers of rights and resolution of disputesunder the Terms of Service provisions of online and internet service providers.

Persona donors may not be famous, such as in the case of those voices usedto create the vocaloid software, or to develop AI programs, but other concernsand rights involving privacy and other aspects personality rights still exist. It is

basically problematic to require fame as a pre-requisite for the enforcement ofpersonality rights in human attributes such as voice, name and likeness. Thefact that technology with commercial applications is designed to exploit theseattributes should be enough to recognize that there is economic potentialconnected to them as well as a corresponding social benefit. Based on thatfact, if human attributes are developed or exposed in any way that can bereproduced and copied they should be protectable on some level.

In addition, the policy discourse surrounding personality rights shouldrecognize that while we might not all become well known, it is likely that we allhave our fifteen minutes of fame or at the very least contribute to the wealthof user generated content on the web. At some time, some attribute of ourpersonality has collective economic and social potential, which requiresmeasures in place to compensate and control its commercial exploitation.

Although an international body of law does secure some basic personalityrights, provisions must be made for those other than famous people andimplemented in such a way as to protect basic human interests in attributessuch as name, image, voice and likeness; it would be preferable to have auniform system of personality rights protection reflecting a mesh ofinternational court practice and legislative endeavors in the area of privacy

and human rights law.

1Immanuel Kant, Critique of the Power of Judgment 5:313 (Paul Guyer ed. &trans., Eric Matthews trans., Cambridge Univ. Press 2000).2http://dictionary.reference.com/browse/individuality

3http://en.wikipedia.org/wiki/Vocaloid4See generally p.160-164; Privacy, Property and Personality; Civil lawPerspectives on Commercial Appropriation, Huw Beverly-Smith, Field FisherWaterhouse London, Angsar Ohly, University Bayreuth Germany, Agnes

Lucas-Schloetter, Ludwig Maximilians-Universitat Munchen; November 2005,Cambridge University Press.
http://dictionary.reference.com/browse/individualityhttp://dictionary.reference.com/browse/individualityhttp://dictionary.reference.com/browse/individualityhttp://dictionary.reference.com/browse/individuality


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5supra6See Bi-Rite Enters., Inc. v. Button Master, 555 F.Supp. 59 (S.D.N.Y. 1983 at1197.)7Id. at 11978

See paragraph 138, Parks v. La Face, citing See Carson v. Heres JohnnyPortable Toilets, Inc., 698 F.2d 831, 835 (6th Cir. 1983).; stating that Thetheory of the right is that a celebritys identity can be valuable in the promotionof products, and the celebrity has an interest that may be protected from theunauthorized commercial exploit of that identity. Id.9See p. 100, Privacy, Property and Personality; Civil law perspectives onCommercial Appropriation, Huw Beverly-Smith, Field Fisher WaterhouseLondon, Angsar Ohly, University Bayreuth Germany, Agnes Lucas-Schloetter,Ludwig Maximilians-Universitat Munchen; November 2005, CambridgeUniversity Press.10See 22 of the German Act on Copyright in Works of Visual Arts,

[Kunsteurheberrechtsgesetz KUG]11SeeBGH GRUR2000, 715 Der Blaue Engel12 BGHZ 26, 349 at 351 Herrenreiter, BGH GRUR 1962, 211 Hochzeitsbild; BGH GRUR1979, 732 Fussballtor.

13See BGHZ 143,214 Marlene Dietrich at p.109; Privacy, Property andPersonality; Civil law perspectives on Commercial Appropriation, HuwBeverly-Smith, Field Fisher Waterhouse London, Angsar Ohly, UniversityBayreuth Germany, Agnes Lucas-Schloetter, Ludwig Maximilians-UniversitatMunchen; November 2005, Cambridge University Press14 23 KUG1. Without the consent required by 22 the following may be disseminatedand exhibited:

1. Pictures from the sphere of contemporary history;2. Pictures on which the persona are only portrayed accidentally as

parts of a landscape or any other location;3. Pictures of gatherings, processions or similar activities in which the

persons portrayed participated;4. Pictures not having been made to order, if the dissemination or

exhibition serves a higher interest of art.2. This authorization does not justify any dissemination or exhibition by which

a justified interest of the person portrayed or, if the person is deceased, of hisrelatives is violated.15See BGHZ 20, 345 Paul Dahlke, BGHZ 143,214 Marlene Dietrich16See generally Von Hannover v. Germany, Application No. 59320, 24 June2004, paras 63, 65, 72.17See generally Von Hannover v. Germany, Application No. 59320, 24 June2004, paras 63, 65, 72.18See OLG Hamburg MMR 2004, 413 Oliver Kahn, but compare BGHZ 49,288 at 293 et. seq Ligaspieler, BGR GRUR 1979, 732 at 733 Fussballtor19 823 I provides that Whoever willfully or negligently injures the life, body,health, freedom, property or any other right of another person illegally is

bound to compensate him for any damage arising therefrom. All aspects ofpersonality rights, such as reputation, not explicitly mentioned in section 823


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are not protected. Additionally 823 II provides The same obligation arisesfor anyone who violates a statutory provision intended to protect anotherperson.20See Douglas v Hello! Ltd [2005]EWCA Civ 595, paragraph 17-18.21

See Douglas v Hello! Ltd [2005]EWCA Civ 595, paragraph 14022Id. at paragraph 2323See OBG Ltd v Allan [2007]UKHL 21, p. 14 paragraph 39-4424 Id. at paragraphs 39-4425Id.26See HMRC and Portsmouth City Football Club Limited, [2010] EWHC 2013(Ch), Case No. 1554/2010

27See Irvine v. Talksport Ltd [2003] EWCA Civ 423 at paragraph 3728See Irvine v. Talksport Ltd [2003] EWCA Civ 423 at paragraph 4529See Irvine v. Talksport Ltd [2003] EWCA Civ 423 at paragraph 4730 Id. at paragraph 4731Id.32See Tribunal civil de la Seine (Trib. Civ. Seine) 16.6.1858, Rachel, Dalloz1858, 3, 62.33[Trib.civ.Havre 9.2.1924, Gazette du Palais (Gaz.Pal.)34[TGI Paris 14.5.2001, Lgiprese 2001, No. 184, I, 104: the rule of freedomof information leads to the limitation of the right to ones image in somecircumstances concerning current events or the public or professional life ofthose whose fame exhibits them to

virtual personality: avatars, robots, vocaloids and publicity rights

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