Passing off.  The case of the Leonard Lion

Passing off can be a valuable weapon in safeguarding the rights to one's personality, as Jason Leonard, the world record most capped International Rugby player, showed recently in his successful protection of his image rights concerning the manufacture and sale of the “Leonard Lion” by Ty and the RFU.
   
The RFU and Ty produced the “Leonard Lion” without reference to Jason Leonard and commenced a sales initiative with the product in December 2005. Magrath LLP, instructed on behalf of Jason Leonard argued that any consumer of Rugby gifts and toys was likely to assume that the product was endorsed or licensed in some way by Jason Leonard.

After receiving the initial letter of claim the product was removed from sale and an accounting exercise is underway so as to compensate Magrath LLP’s client for the unauthorised use of his image rights.

The case has a similarity to the dispute between the then Formula One driver, Eddie Irvine who pursued an action against Talk Sport in 2003.

In that case, Talk Sport had run an advertisement, without permission, featuring a photograph of Irvine on which Talk Sport had superimposed a Talk Sport radio over the mobile phone Irvine was holding. Irvine sued. The Court held that the law of passing off should recognize that manufacturers and retailers pay for well-known figures to endorse their products, and noted, "the endorsee is taking the benefit of the attractive force which is the reputation of goodwill of the famous person". It awarded Irvine £25,000 on appeal. This decision represented a significant victory for celebrities against advertisers who would exploit their personality rights without permission.

The legal hurdles

However, celebrities seeking to protect their personalities through such an action must first establish the three elements required to succeed in a claim for passing off: goodwill, misrepresentation and damage. To succeed, a celebrity must be able to show that:

1. At the time of the conduct complained of, they have a significant reputation or goodwill;

2. The conduct complained of is likely to mislead a significant section of the market into believing that the goods have been endorsed or are approved of by the celebrity; and

3. He or she has suffered damage as a result.

Damage

The damage does not need to be damage to the celebrity's goodwill itself: it will be enough if the value of that goodwill to the celebrity can be shown to have been reduced by the unauthorized user encroaching upon the celebrity's exclusive right to their own goodwill, which is their personal property. The Court in Irvine found that "it is not necessary to show that the claimant and the defendant share a common field of activity or that sales of products or services will be diminished either substantially or directly, at least in the short term".

A key factor in the Irvine case was that Irvine had an active career endorsing products, so the misrepresentation and damage were not hard to prove. However, celebrities who are not known to endorse products generally may have more difficulty establishing

1. That the public believed the endorsement was authorized and
2. That there was appreciable damage to their goodwill.

With the Jason Leonard case, it seems that the RFU recognise the fact that the unauthorised use of Mr Leonard’s image rights should not have been countenanced without his permission. Those rights have been preserved by the prompt action of Magrath LLP