Court Diary

Eddie's a Racing Cert

In 1999, Talksport, then known as Talk Radio, undertook a promotional campaign to advertise its coverage of the Formula 1 motor racing Grand Prix and highlight its move to an "all sport" radio station. Part of this campaign included a flyer bearing a representation of Mr Eddie Irvine, the well known F1 motor racing driver, holding a radio with the words Talk Radio emblazoned upon it, together with the strap line "we've got it covered". The photograph itself was doctored to show Mr Irvine to be holding a radio - he had in fact been holding a mobile phone. Mr Irvine, who had not approved the use of his image on the flyer, sued Talksport for passing off.

Central to Mr Irvine's claim was that the law of passing off should recognise and protect the growing trend of advertisers to pay celebrities large sums to endorse goods or services as an encouragement to consumers that they (the celebrities) have somehow approved it. The claimant argued that this was an "endorsement" case, which could be distinguished from a "merchandising case" such as Elvis Presley Trade Marks [1999] RPC 597, as merchandising products in no way suggest to the consumer that they have been somehow endorsed, or approved, by (e.g.) the film maker etc.

The key question for the court to decide in the present case was whether the law of passing off was wide enough to protect an individual's goodwill against misappropriation, when the goodwill in question was attached only to the individual, and not to a particular class of goods or services. Laddie J held that it did, and in departing from the narrow definition of passing off put forward in McCulloch vs. May (65 RPC 58), recognised that the only connection needed between the claimant and a defendant for an actionable passing off was that the defendant's activities damaged (or were likely to damage) the claimant's goodwill. No "common field of activity", or perhaps in this case "common field of expertise", was required. The court recognised that an endorsee takes advantage of the attractive force of a celebrity's goodwill to market its products, such that the law of passing off should protect this goodwill against those who seek to take unfair advantage of it (by falsely endorsing their products). On the vexed question of damage, Laddie J adopted the approach set down in Taittinger vs. Allbev Ltd [1993 FSR 641], holding that the type of damage Mr Irvine could suffer was the potentially long-term 'insidious' damage of erosion of the exclusivity of his goodwill (to endorse others' products).

Mr Irvine succeeded in his claim for passing off, by establishing that Talksport's actions gave rise to the false message that he somehow endorsed, recommended or approved its F1 coverage. However, he was only awarded nominal damages, and worse no costs, as he refused an earlier offer from Talksport which was higher than the damages awarded by the court. As no injunction was needed ( Talksport's promotion being a one off) Mr Irvine may have won his case, but at a considerable cost.

Comment

In the writers view, this case is important only insofar as it recognises that passing off can protect a celebrity's ability to endorse products or services. By doing so, it recognises the power of the celebrity to sell, and the fact that the public may care that the celebrity approves the product. It does not extend the law of passing off to the wider business of film & television merchandising, as here there can be no suggestion (to the consumer) that a particular individual has somehow approved a product. Moreover, the ability to protect an individual's name & image through passing off will only presumably last as long as that individual is alive, as it is clear that a dead individual cannot approve a thing. In these cases, it would appear that once again a registered trade mark is the only effective means of protection available.