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 of
qualities, 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 to
control use of their own name, image, voice or distinguishing characteristics
from 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 personality
rights and where they fit into the legal landscape requires our attention.
Together with the Internet came an increased ability to exercise and abuse
what were relatively established boundaries and rights in a virtual dimension
that necessarily adds new character and scope to those rights.

This article examines the nature of publicity and personality rights across
jurisdictions, and addresses virtual extensions of personality such as
employed through use of avatars, robots, smart programs (like Cleverbot) and
vocaloids and highlights certain issues raised by application of the laws of
multiple jurisdictions to the ever expanding dimension that our virtual
personalities 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 extent
to which an individual may have a right to appropriate their own
characteristics, including voice, image, likeness and name. Consider the
characteristics of individuals which are required to create programs and
technology 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. 3 Robots are machines with artificial
intelligence 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 machines
with artificial intelligence everyday, iPhones for example. In the case of
vocaloids, the donor of the voice or holographic image characteristics
contributes to the creation of a virtual persona that is protectable under a mish
mash of intellectual property rights. What have the donors contributed other
than voice, an aspect of their personal identity that may not be recognized
under the law? How are the rights to works created using vocaloid software
defined and protected in various jurisdictions worldwide? Exploring such
questions 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 personality
rights across jurisdictions.
Today as happened before in human history, technology has greatly
increased the ease and access to intellectual property protected and
protectable works. The law is in an ongoing battle to develop in response to
the 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 practically
overnight with little or no investment by publishing and broadcasting works
captured by themselves of themselves (You Tube), develop products without
ever leaving their home (virtual environments and cloud computing services
offering access to databases, supercomputing power, development platforms
and tools), distribute copies and easily make offers for worldwide sale of not
only their products but also the products of others (via blogs, webpages and
PayPal). The general consensus of national laws requires personality rights to
be 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 those
absolute rights, which were vested in them by the immutable laws of nature;
but which could not be preserved in peace without that mutual assistance and
intercourse, which is gained by the institution of friendly and social
communities. Hence it follows that the first and primary end of human law is to
maintain and regulate these absolute rights of individuals . . . .’

Individual rights, including those identifiable as personality rights, can only be

enforced in an actual location and therefore exist within a limiting jurisdiction-
by-jurisdiction based context. The level of protection of those rights is
currently identified in the constitutions of some nation states, international
conventions, 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 personality
under intellectual property law, which are seen as obstacles to federal
legislative 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 of
protection could be justified and because the person to whom the personality
right belongs is often not engaged in trade, namely they are the only ones
benefitting from their personality aspects and no interest of the general
consuming public to protect. Amending copyright laws presents a more
theoretical issue surrounding lack of creation and corresponding social benefit
that 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 develop
in Germany. The difference is usually attributed to Germanys focus on human
rights after the Second World War. The more predominant approach,
however, taken in France, the United Kingdom, United States, Japan, Canada
and Australia, is that the courts have been used to identify the boundaries of
the right.5

In the United States, the scope and nature of publicity rights depends on state
and federal law, specifically, the Lanham Act and state right of publicity
statutes. It may be possible for foreigners and individuals who are not resident
of that state to take advantage of certain rights if certain conditions are met. In
Bi-Rite for example, British plaintiffs residing solely in the United Kingdom
sued in New York for right of publicity violation based on unauthorized
merchandising activity.6 The court held in their favor finding that “the law of
the states in which plaintiffs or their exclusive licensees reside controls.” 7
Generally speaking however publicity rights only protect the identity of
celebrities from exploitative commercial use.8

In Germany, the development of a general right of personality began with the

proclamation of their Basic Law (Grundgesetz – GG) specifically, the German
Constitution of 1949. Article 2 I of the GG provides that ‘every one has the
right to the free development of his personality, in so far as he does not
violate the rights of others or offend against the constitutional order or the
moral code.9

Section § 22 of the German Act on Copyright in Works of Visual Arts, covers a

broad array of images including likeness traits.10 That provision of the German
Copyright Act formed the basis of one claim to protect the typical costumes
and gestures of Marlene Dietrich in Blue Angels, one of her famous movie
roles, from infringement. 11 A successful action under the provision requires
that the person depicted must be recognizable.12

In another Marlene Dietrich case it was held that the economic interest
protected by personality rights in Germany is descendible. The court granted
an injunction and damages based on the complaint of Dietrich’s daughter
against a producer of a musical about the actress. The producer sold
merchandise bearing the name and image of Dietrich and even granted a car
manufacturer the right to produce a special model called ‘Marlene’. 13

Although courts do not recognize a right of publicity per se, the specific rights
under § 12 BGB and § 22 KUG are used to protect interests in personality
against the more common forms of unauthorized commercial use. There is an
often-cited exception to § 22, outlined in § 23, that permits publication without
consent of images ‘of persons of contemporary history’. It is a popular
defense because celebrities and noteworthy individuals can often be regarded
‘persons 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 holding
that the public interest extends beyond the area of politics and includes
entertainment even gossip. 15 Also, courts make a distinction between
‘absolute’ or ‘relative’ persons of contemporary history.
Absolute persons are capable of being depicted whenever there is public
interest however relative persons may be depicted only in contexts relevant to
those that made that individual well known. The European Court of Human
Rights in the Hannover case criticized the distinction between absolute and
relative persons.16 The court also commented that the public interest in gossip
may 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 and

although Oliver Kahn was successful in a claim to prevent the use of his
likeness for a virtual player in a video game, other plaintiffs were not so
fortunate. 18

The approach to tort liability under German law is reflected in three different
provisions of law namely, § 823 I BGB, protecting subjective rights, § 823 II
providing 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 the
image of persons from dissemination. Plaintiffs must turn to related rights in
order to protect their interests. For example in Douglas v. Hello, a successful
action by celebrities Catherine Zeta and Michael Douglas, for economic loss
based on breach of confidence, the publisher of OK! magazine contracted
with Douglas and Zeta-Jones (the Douglases) for the exclusive right to publish
photographs 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 those
photos. Although they went to some serious lengths to prevent it from
happening, a freelance photographer infiltrated the wedding and took
photographs which he sold to Hello!.21

Examples of these measures included: confidentiality agreements prohibiting

each service company and each vendor which signed them (including each of
their respective employees) from keeping, disclosing, using or selling any
“photograph, film, videotape, etc.” which were obtained at the wedding
reception. Guests were also under obligations not to photograph or capture
the wedding in any way. 22

Despite all these precautions the unauthorized photographer posing as either

a waiter or a guest, took photos at the wedding and sold them to the rival
magazine Hello!, that published the photos of the wedding with full knowledge
that these were unauthorized images. In writing the majority opinion of the
decision, Lord Hoffman supported the decision of the court of first instance,
specifically that there was a valid cause of action, stating ‘It is first necessary
to avoid being distracted by the concepts of privacy and personal
information…..Whatever may 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 nothing
more….What matters is that the Douglases, by the way they arranged their
wedding, were in a position to impose an obligation of confidence. They were
in control of the information.’ 23

In addressing the disagreeing portion of the court, who were of the opinion
that once the approved photos were published, the publication of the
unauthorized photographs was not a breach of confidence, the judge
commented that

‘it is certainly the case that once information gets into the public domain it can
no longer be the subject of confidence….In this case, however, the point of
the transaction was that each picture would be treated as a separate piece of
information which OK! would have the exclusive right to publish. The picture
published by OK! were put into the public domain and it would have to rely on
the 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 the
public domain merely because they resembled other pictures which had.’ 24

Judge Hoffman also discussed the interpretation of his opinion in terms of its
effect of extending the practice of torts by stating “…There is in my opinion no
question of creating an “image right” or any unorthodox form of intellectual
property. The information in this case was capable of being protected, not
because it concerned the Douglases image any more than because it
concerned their private life, but simply because it was information of
commercial value over which they had sufficient control to enable them to
impose an obligation of confidence.’ 25

Although the courts of England and Wales do not recognize a right of

publicity, the rights are exploited commercially and are recognized in certain
instances as having significant commercial value. Her Majesty’s’ Revenue
and Customs (HMRC) is currently waging a battle against provisions of the
Premier League which allow soccer clubs to issue payments to players for
exploitation 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 are
‘keen’ to provide relief when alternative causes of action, involving subject
matter 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 reasoned

that the only issue on cross-appeal was whether ‘… the image on the front of
the 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 be
understood by a not insignificant section of its market to mean that its radio
programme or station had been endorsed, recommended or approved of by
Mr. Irvine”.27
The evidence was examined, much of it expert testimony and the testimony
offered by recipients of the promo pack as to their opinions. Finally the judge
concluded ‘that a not insignificant number of recipients of the brochure would
have made the same assumption as Mr. Phillips had made: that is to say, that
Mr. Irvine had endorsed Talk Radio.’.28

The judge concluded on the issue of liability that: “Mr. Irvine has a property
right in his goodwill which he can protect from unlicensed appropriation
consisting of a false claim or suggestion of endorsement of a third party’s
goods or business.”. 29

After addressing a submission to the effect that the limited distribution of the
Formula 1 Pack (981 recipients) meant that Irvine failed to prove substantial
damages, the judge concluded on the issue of liability that: “For reasons given
above, Mr. Irvine has a property right in his goodwill which he can protect from
unlicensed appropriation consisting of a false claim or suggestion of
endorsement of a third party’s goods or business.”.30 The judge held that
there was no substance in TSL’s appeal on liability and dismissed it, adjusting
the damage award from £ 2,000 to £ 25,000. This was an amount that “a
reasonable company in [TSL’s] position would have been prepared to
spend….’”.31

In contrast, to the U.K., courts in France from the mid-nineteenth century

recognized the exclusive right in name and likeness.32 The right to ones name
was considered as a property right.33 In France, like most jurisdictions, an
exception to the enforcement of personality rights is the legitimate interest of
the public to obtain information about people whom the public has an interest
to 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 or

notoriety of the person involved. The information that the public would
legitimately need to know about a politician is much higher than for an actor
for 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 community
reached the opinion that personality rights should be recognized as a new
category of subjective rights. 37

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

French courts, in actions claiming infringement of image rights, have imposed

a requirement that the features of the claimant are recognizable by persons
who know him. 39 It is also worth noting that, in France, as in most
jurisdictions, such actions brought by an unknown person are more likely to
be dismissed whereas those brought by famous persons are more likely to
result in prohibition.40
That is definitely the case in California, where the state publicity statute
requires that the individual bringing the claim is ‘well known’.41 Whereas in
New York, the legislature enacted section to the Civil Rights Law to protect
against “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 is
not so simple. For example, uses that merely suggest certain characteristics
without literally using a persons name, portrait or picture are not actionable
under the statute.43

In Burck v. Mars, the plaintiff was a street entertainer with registered

trademarks to ‘The Naked Cowboy’ name and likeness.44 The defendant Mars
Inc. 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 defendants
violated his right to publicity under New York law and infringed his trademarks
under federal law by using his likeness, persona, and image for commercial
purposes and by falsely suggesting that he endorsed M & M candy. 45

The District Court for the Southern District of New York dismissed Burck’s
publicity rights claim on the grounds that the New York statute protects the
name, portrait, or picture of a living person and ‘not a character created or a
role performed by a living person.’

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

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

The complaint in Burck alleged that the M & M Cowboy characters, dressed
just like the Naked Cowboy falsely implied, that Burck’s character, The Naked
Cowboy, endorsed the M & M product.48 Accordingly the defendants’ motion
to dismiss the trademark infringement claim was denied. 49

Just as states in the U.S. have different levels of protection for personality
rights, Canadian provinces have each developed specific approaches to
address personality rights. For example Quebec, has a Charter of Human
Rights 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 of

privacy to prevent exploitation of the right to exploit one’s name.51 In Krouse,
the court found that the claim was not based on a property right in his name
per se, but an injury to his property, namely his commercially valuable
property 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 plaintiff’s personality, image
and name.53

Name, likeness and signature rights are recognized in Japan, without a

statute codifying publicity rights as such.54 It has, like most other jurisdictions,
developed protection mechanisms through judicial precedent, enforced by
reference to the Constitution, the Civil Code, the Copyright Act or all three.
Although it is not always required of individuals that their identity was
commercialized in order to recover, those entitled to a right of publicity are
celebrities, actors, performers and persons of distinction.55

A relatively recent judgment of the Tokyo District court held in favor of a

defendant publisher in an image rights claim asserted by a previously famous
female singing duo. The duo demanded compensation for infringement of
their publicity rights by a weekly magazine publisher.56

The court found that an infringement determination in a right of publicity action

is determined by whether the alleged infringer used the name or likeness
because of its appeal to consumers. In this case, the court considered the
monochrome nature of the photographs, their size, the contents of the article
and the ratio of the photos to that used in the article and decided that the
defendant did not infringe the plaintiffs’ publicity rights. 57

In Japan, foreign citizens also have a protectable right of publicity. The Tokyo
District Court held in the Mark Lester case, that actors have a right to legal
remedy for unauthorized use of their name or likeness as a result of injury to
the economic interests in their personality attributes. The court noted in
section (Ii) the names of actors and cited various interests related to celebrity
images, in particular noting their economic value because of their use to
promote 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 and
unfair competition law, specifically the Lanham Act, for relief.

The scope of Section 43 of the Lanham Act has been held to extend beyond
disputes between commercial goods and their producers. 59 The Act also
permits celebrities to defend rights in their identities against allegedly
misleading commercial use by others. This ability to defend ones’ name and
or likeness against unauthorized use is reasoned to have arisen as a result of
the economic interest that celebrities have in their identities ‘akin to that of a
traditional trademark holder.’60

The language of § 43(a) is broad but not broad enough to cover personality
rights in name.61 In Parks v. LaFace, the civil rights icon, Rosa Parks brought
suit against La Face Records and the music duo OutKast for using her name
as the title of their song, ‘Rosa Parks’. Parks argued the use constituted false
advertising under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and
intruded on her common law right of publicity under Michigan state law. 62
Defendants 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 a
violation, their First Amendment freedom of artistic expression would be a
defense as a matter of law to each of the claims. In addition Parks contended
that the Defendants actions rendered them liable under Michigan law for
defamation and tortious interference with a business relationship.

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

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

On appeal, citing Rock & Roll Hall of Fame & Museum, Inc. v. Gentile
Productions,68 defendant LaFace contended that Parks' § 43(a) claim must
fail because they made no trademark use of her name. The court concluded
however, that the Defendants misconceived the legal basis of a Lanham Act
claim. ‘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.’ 69 It is important to note however that Parks’ fame
was not in question. Both parties stipulated to her international fame and to
her prior authorization of television programs and books.

CHARACTERS, TRADEMARKS AND ONLINE USE

When compared to actual individuals whose fame and prior commercialization
of likeness are in question however, it may be easier to protect against
unauthorized use of an avatar or character particularly if it is used in
connection with the offer of goods and or services to identify their source.
Consider as an example, Sony’s Kevin Butler (VP of various fictitious
departments). Kevin Butler was a marketing character created by an ad
agency played by actor Jerry Lambert and used as part of advertising
campaigns for PlayStation 3 in North America.70
The use of the character in relation to particular products or services must
support a finding that consumers make a connection between those products
and the trademark owner. This is especially so when it comes to characters
because they can easily become in and of themselves a functional product
which would result in their being considered copyrightable subject matter
rather than source indicators.
Consider the case of Fleischer Studios, Inc., v. A.V.E.L.A., 71 that appeal was
based on the decision of the district court to grant summary judgment holding
that Fleischer held neither a valid copyright nor a valid trademark in the Betty
Boop character and lacked standing to sue.

Fleischer the plaintiff in this action, was ‘a distinct and separate entity from the
now defunct Original Fleischer which first owned Betty Boop.’ 72 In the early
1970’s the family of Max Fleischer incorporated its new entity under the same
name as Original Fleischer and attempted to repurchase intellectual property
rights to the Betty Boop character.

Fleischer based on the belief that its intellectual property purchases allow, it
as 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 owned
by 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 that
Fleischer failed to satisfy its burden of proof regarding the transfer of rights.
The district court also dismissed Fleischer’s trademark infringement claim,
holding that Fleischer failed to submit proper evidence of a registered federal
trademark in the Betty Boop image. Further, the court held that the fractured
ownership and use of the registered trademark of the name ‘Betty Boop’
destroyed Fleischer’s trademark rights and that Fleischer did not establish
that it owned common-law trademarks in Betty Boop’s name or image. 73

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

‘The copyright provided by this title shall protect all the copyrightable
component parts of the work copyrighted, and all matter therein in which
copyright is already subsisting, but without extending the duration or scope of
such copyright. The copyright upon composite works or periodicals shall give
to 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 separate

copyrightable component of one of Fleischer’s films. On appeal however the
court found that through the UM&M agreement, UM&M did not obtain rights to
the Betty Boop character, it obtained the “totality of rights commanded by
copyright” for the Betty Boop films, id. quoting Gardner v. Nike, Inc., 279 F.3d
774,778 (9th Cir. 2002).’75

In its review of the district court’s decision to dismiss Fleischer’s trademark

infringement claim, the court noted that neither party cited to controlling case
law to resolve the questions presented on appeal such as whether cartoon
characters are protectable as trademarks, whether Fleischer owns a
registered image trademark in Betty Boop’s image and name, whether the
fractured ownership of the Betty Boop copyright precludes Fleischer from
asserting a trademark claim, and, finally, whether A.V.E.L.A. infringed
Fleishcer’s marks.

The case that no one cited was International Order of Job’s Daughters v.
Lindeburg & Co..76 In that case, plaintiff’s Job’s Daughters sued defendant
Lindeburg “for trademark infringement arising out of Lindeburg’s manufacture
and sale of jewelry bearing the Job’s Daughters insignia.” 77 Lindeburg began
selling the jewelry and related items after failing to negotiate a license.

The same trademark infringement claims asserted there were being asserted
in the case on appeal. In the earlier case the court held that “Lindeburg was
not using the Job’s Daughters name and emblem as trademarks.” 78 The court
then concluded that the same conclusion and reasoning used in Job’s was
applicable to the appeal.

The role of the court in determining whether an infringer’s use of an image

and name was for functional or trademark purposes: “[A] court must closely
examine the articles themselves, the defendants merchandising practices,
and any evidence that consumers have actually inferred a connection
between the defendant’s product and the trademark owner.” 79

The court held in Job’s, that the name and emblem were functional aesthetic
components of the product, not trademarks. There could be, therefore no
infringement.80

Then examining the issue on appeal the court concluded that ‘Job’s
Daughters is directly applicable to Fleischer’s trademark claims. Even a
cursory examination, let alone a close one, of “the articles themselves, the
defendant’s merchandising practices, and any evidence that consumers have
actually inferred a connection between the defendant’s products and the
trademark owner,” reveal that A.V.E.L.A. is not using Betty Boop as a
trademark 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 that
where a copyright is in the public domain, a party may not assert a trademark
infringement action against an alleged infringer if that action is essentially a
substitute for a copyright infringement action. 83

Fleischer’s infringement claim was barred. The court concluded that ‘If we
ruled that A.V.E.L.A.’s depictions of Betty Boop infringed Fleischer’s
trademarks, the Betty Boop character would essentially never enter the public
domain. 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 of
perpetual patent and copyright, which Congress may not do”).’84
In the European Union, availability of goods on the Internet is considered use
of a trademark, regardless of whether the goods were actually purchased in
that country. This includes advertising so long as the advertisement is
directed towards consumers in the relevant jurisdiction. It is also possible to
use 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 Germany
states “Transactions regarding goods and services over the Internet have
become a common variant of the general business life in the Federal Republic
of Germany, which offer, order and delivery are the domestic business
anyway attributable if - as in this case - the Internet advertising (also) in
German Language is kept and the production of goods promoted domestically
made. Given these conditions, the representation of the trade-marked goods
and their concrete offer for sale on the internet is basically a suitable use for
action 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 and
distinguishing signs such as company names. 86 There are two ways to
acquire trademark protection in Germany, either through use or registration. 87

In the Bach case, a trademark was registered to protect the name and
likeness of a long dead icon, Johann Sebastian Bach, and subsequently used
to obtain royalties from traders of goods who incorporated the name in their
products. One trader brought suit for trademark infringement, the Court of
Appeals (Oberlandesgericht Dresden) held that the use of the name
‘JOHANN SEBASTIAN BACH’ did not constitute infringement due to both lack
of use and lack of confusion. 88 Lack of confusion because there was no
association in the minds of the consuming public between all Bach marked
goods. Consumers did not assume that all goods marked BACH originated
from 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 in
1993.90 The claim included three defendants in Germany, one who owned
and operated the domain name www.zappanale.de. The primary defendant,
was an association founded in 1993, and as of that year, took over the
organization of an annual festival “Zappanale”. The second defendant was the
president of the association. The plaintiff sought that all defendants cease
their use of the name ‘Zappa’. 91

The plaintiff challenged the use by the defendants of the name Zappa for the
festival and the website. Plaintiff based this claim on their community
trademark no. 001933944 for the verbal mark ‘ZAPPA’ applied for on
November 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 magazines
with articles related to music;
production of records, services of music publication and entertainment in the
form 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 the
German figurative mark applied for March 24, 1994 and registered on April
26, 1995. The defendants alleged non-use and the court of first instance
agreed, dismissing the complaint in accordance with their counterclaim.

The court of first instance found that there was no use of the trademark within
the registered list of goods and service in the area of the European Union
within the period of five years from the date of registration, ie after 1 August
2002 and that there was no danger of confusion as regards claims by the
plaintiff concerning the figurative mark. 92

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

If, in accordance with Article 15 Paragraph 1 of the community trademark

regulations, the holder of the community trademark in relation to goods or
services for which it is registered, within five years from the date of
registration, has not put the trademark to genuine use in the community or if in
a continuous period of five years has not used the trademark in relation to
goods and services for which it is registered, then the common trademark is
subjected to sanctions provided for in the Regulation on the Community
Trademark, unless there are justifiable reasons for non-use. 94

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

On appeal it was determined that the mark did not meet the standard of
genuine use in the community simply by virtue of that the plaintiff operates a
website, www.zappa.com.95 The appeals court was doubtful however whether
that conclusion was justified by the reasoning of the national court.

The national court considered that the webpage was used in Germany
because it was not directed to the domestic German public. The court
concluded so based on the following facts 1) the language of the webpage
was English and 2) the values expressed were in USD. Therefore, the opinion
of 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 a
marking function.97 Accordingly, the public will see a statement of origin of
goods and services in relation to the company, which are offered under these
names on the Internet (on this point with further evidence).

However, it is a different situation when a domain name has a very clear

address position or when it is seen only as descriptive data.98

Use of the trademark as an integral part of the domain name cannot be

evaluated as a use which maintains the right, the Appeal court stated “ the
consuming public must be able to distinguish that trademark by use of the
name, not as the company itself, but one marking specific good or service that
originates 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 is
less used as a trademark, which is characteristic of poor marking
character.”100

The use of the retained right of the trademark “ZAPPA” by virtue of Zappa
Records was also excluded. The court stated “the public sees the webpage
marked as "Zappa" as a site that deals with Frank Zappa. The site is
addressed primarily to those who know the artist Frank Zappa and seek more
information about his life and work. That circle of people associate, "ZAPPA"
in the domain name, with information about the artist, not about goods and
services.” 101 Therefore all uses presented by plaintiff were found to be
descriptive and the Appeals court reasoned that question of whether the
website referred to or was directed toward the domestic market became
irrelevant.102

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

What constitutes genuine use for name and image trademarks is a

complicated issue in Europe, even without considering use solely on the
Internet.

Regarding the scope of protection afforded to celebrities under the Lanham

Act, the appeal court opinion reasoned Ԥ 43(a) extends beyond disputes
between producers of commercial products and their competitors. It also
permits celebrities to vindicate property rights in their identities against
allegedly misleading commercial use by others.’ 103

Celebrities have standing to sue under § 43(a) because they possess an

economic interest in their identities akin to that of a traditional trademark
holder.104
In order to prevail on a false advertising claim under § 43(a), a celebrity must
show that use of his or her name is likely to cause confusion among
consumers as to the "affiliation, connection, or association" between the
celebrity and the defendant's goods or services or as to the celebrity's
participation in the "origin, sponsorship, or approval" of the defendant's goods
or services.. “likelihood" means a "probability" rather than a "possibility" of
confusion.105
Defendants also alleged that even if Parks' evidence demonstrated some
likelihood of consumer confusion regarding their song and album, their First
Amendment right of artistic expression trumps that concern. The court
examined all three approaches to balance First Amendment interests with the
protections of the Lanham Act: (a) the "likelihood of confusion" test; (b) the
"alternative avenues" test; and (c) the Rogers v. Grimaldi test.
The first approach was inferred from the Ninth Circuit and endorsed by the
Tenth Circuit as well. 106 It relies solely on the "likelihood of confusion" factors
applied in other, more traditional, trademark cases. Specifically, that 1) the
strength of the plaintiff's mark; 2) the relatedness of the goods; 3) the
similarity of the marks; 4) evidence of actual confusion; 5) the marketing
channels used; 6) the likely degree of purchaser care; 7) the defendant's
intent in selecting the mark; and 8) the likelihood of expansion in the product
lines of the parties. 107
Next the court examined the “alternative avenues” test endorsed by the Eighth
Circuit. Under that test, a title of an expressive work will not be protected from
a false advertising claim if there are sufficient alternative means for an artist to
convey his or her idea. 108
Finally the court examined the Roger v. Grimaldi test, under which a title of a
work will be protected unless it has “no artistic relevance”, to the underlying
work 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 that
the song is about her or that she is affiliated with the OutKast or LaFace
Records, especially because of the placement of the CDs next to a Tribute
album that she did endorse in record shops. La Face argued that 1) Parks did
not have a trademark right in her name and 2) she did not make a trademark
use of her name. Even though Rosa Parks had no registered trademark and
the use in question involved her actual name, in this case as in Burck, the
court concluded that a viable cause of action exists under § 43(a) ‘even
though the defendants were not selling Rosa Parks brand CD’s, if consumers
falsely believed that Rosa Parks had sponsored or approved the song, or was
somehow affiliated with the song or the album.’.110

The court concluded that the Rogers test, which has been endorsed by panels
in the Second, Fifth, and Ninth Circuits, was the most appropriate used by
courts to balance the public interest in avoiding consumer confusion with the
public interest in free expression.111 A decisive difference between the Rogers
case and the decision in Parks however was that the title to the movie ‘Ginger
and 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 individual’s image
requires their permission and has its root in the right of privacy and is
therefore also protected by Article 8 of the European Convention on Human
Rights. 112

These protections do not address commercial exploitation; that has been

afforded status under case law as a descendible right to control commercial
use of the image of an individual without authorization. Interestingly the tort
provision of the civil code only provides injunctive relief for an unauthorized
act, however it does not usually allow for other than nominal compensation.113

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

The Merriam Webster Online dictionary as describes an avatar: ‘an electronic

image that represents and is manipulated by a computer user (as in a
computer game).’ It is important to note that not all avatars reflect humanoid
form. Some avatars are graphic characters including fanciful species such as
‘fuzzies’ and as such do not reflect their human users image or any human
image whatsoever. In 3D virtual environments, however, it is possible for any
avatar representation to display human personality traits such as voice and
the image.

In the Second Life virtual world a new user during the process of establishing
their account is required to select a first and last name for their avatar from
the extensive list provided by Linden Research (aka Linden Labs). Account
user avatar names are provided in many virtual so that the choices are limited
to those first and last names provided by the service, and as such may not
always be capable of reflecting the exact name of the user. Perhaps it is a
nickname in that case, where does the law stand?

The United States Patent and Trademark Office has registered avatar
likenesses as figurative trademarks in classes covering design and scripting
services. 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 works
similar 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 OS
controls the way that we use the computer various viewer has various tools
and applications. The viewer has a search tool that provides the option of
searching in world by avatar name and the result allows users to review the
profile of the avatar. In addition, each user has the ability to click on and view
the profile information of any avatar within its view or line of vision. The avatar
profile usually displays together with a photo of the avatar a description of the
goods 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 note
card containing a request for more information or perhaps an order for goods
and services. The avatar profile also includes groups to which that avatar
belongs.

Courts in the United States, specifically in California, are exploring the

boundaries of use of image and likeness rights as applied to virtual
representations, specifically avatars. In the case No Doubt v. Activision, the
decision hinged on whether Activision would be found to hold a valid license
to use No Doubt’s likenesses in the manner in which they are used in Band
Hero.116

As with all Guitar Hero games, players advance and can “unlock” characters
and use them to play songs of the player’s choosing, including songs the
player composed as well as those of other artists. 117 The band became
aware 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 to
impersonate No Doubt in order to create the representations of the band
members’ performances of the additional musical works other than the No
Doubt songs licensed for the game. 118

No Doubt initiated a claim after Activision refused to remove the unlocking

feature for No Doubt avatars. The complaint sought injunctive relief and
damages for Activision’s allegedly unauthorized exploitation of No Doubt’s
name, performances and likenesses. One of the six causes of action alleged
was violation of statutory and common law right of publicity others included
breach of contract and unfair business practices under California laws.

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

On appeal, the relevant parts to the Agreement as presented by the court

were as follows: “This Agreement sets out the terms upon which Artist [No
Doubt] has agreed to grant to Activision certain rights to utilize Artist’s
name(s), likeness(es), logo(s), and associated trademarks(s) and other
related 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 (including
Artists’s 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: “Artist’s likeness
is as implemented in the Game (the ‘Character Likeness’), any use of Artist’s
name and/or likeness other than in a ‘billing block’ fashion on the back of the
packaging for the Game, and the b-roll and photography or other
representation of the Services of Artist, shall be subject to Artist’s prior written
approval.”

“Activision shall submit each of the above (i.e. the Character license, name
uses, and b-roll and photography or other representation) to Artist for review
and Artist shall have ten (10) business days to either approve or
disapprove….”

“Activision shall not be required to submit for approval uses of previously

approved assets, provided such uses fall within the rights granted herein (e.g.,
using a previously approved Character Likeness depiction in multiple
advertising materials).”121

Activision agreed to license no more than three No Doubt songs for use in
Band Hero, subject to No Doubt’s approval over song choice. Images and
recordings of the band singing their own songs and performing their on stage
moves were captured by Activision so that the members’ avatars would
accurately reflect their appearances, movements and sounds. After viewing
the avatars the band approved.

The court found that Activision’s use of No Doubts avatars was not
transformative. A determinative fact was that unlike in Kirby, the No Doubt
avatars are not depicted as fanciful characters or anyone else doing anything
else other than exactly what they do, performing rock songs.122 The court held
that there was nothing creative in the elements of Band Hero that elevated the
depictions of No Doubt to something more than “conventional, more or less
fungible, images” of its members that No Doubt should have the right to
control and exploit.

In Kirby, the court held that video games are considered “expressive works”
subject to First Amendment protections. 123 Further the court found that “there
is a public interest which attaches to people who, by their accomplishments,
mode of living, professional standing or calling, create a legitimate and
widespread attention to their activities…” 124

The court discussed how federal courts have applied the Lanham Act to
artistic works alleged to infringe trademarks noting that most courts apply a
‘likelihood of confusion’ test that asks whether use of the plaintiff’s mark is
‘likely to cause confusion or deceive as to the affiliation, connection, or
association’ of the two products. 125 The Second Circuit however held in
Rogers v. Grimaldi, that “in general the Act should be construed to apply to
artistic works only where the public interest in avoiding consumer confusion
outweighs the public interest in free expression. 126 The Ninth circuit adopted
that test in Mattel.

The court concluded that No Doubt was not obligated to prove that the use of
its avatars in Band hero was “explicitly misleading” because that standard
‘comes in to play only after a determination has been made that a challenged
use of a trademark is worthy of First Amendment protection.’ 127 No Doubt
was still required, in order to succeed in its section 17200 claim, to
demonstrate that members of the public were likely to be deceived by
Activision’s use of the likenesses. 128

Across jurisdictions provisions and or jurisprudence on the question of

whether image rights are descendible or transferable are also very different.
In one of the Marlene Dietrich cases, a German court held that the economic
interest protected by personality rights is descendible. The court granted an
injunction and damages based on the complaint of Dietrich’s daughter against
a producer of a musical about the actress. The producer sold merchandise
bearing the name and image of Dietrich and even granted a car manufacturer
the right to produce a special model called ‘Marlene’. 129

In contrast to Lanham Act actions brought by US celebrities, in the UK, even

celebrities may not be successful in actions brought under passing off. Under
the goodwill approach, utilized in passing off actions, private individuals lack
recourse as they may or may not have goodwill in their image or established
goodwill in respect of their professions.

Further, it has been held by English courts that an action in passing off does
not cover cases where the claimant is represented as having endorsed a
particular product or service unless it could be shown that the plaintiff and
defendant shared a common field of activity. In early cases, a successful
claim for appropriation of personality required a demonstration by the plaintiff
that 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 broader
sense. In Reckitt and Coleman Products Limited v. Borden Inc., Lord Jauncey
of Tullichettle conducted a thorough examination of the general law applicable
to passing off actions including in part the following:

‘There was for some time doubt as to the precise rights which were entitled to
be 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 Lord
Parker of Waddington, identified the right as: "property in the business or
goodwill 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 goodwill
likely to be injured by the misrepresentation made by passing off one person's
goods as the goods of another. Goodwill, as the subject of proprietary rights,
is incapable of subsisting by itself. It has no independent existence apart from
the business to which it is attached." ‘133

However, it is not essential to the success of a passing off action that the
defendant should misrepresent his goods as those of the plaintiff. It is
sufficient that he misrepresents his goods in such a way that it is a reasonably
foreseeable consequence of the misrepresentation that the plaintiff's business
or goodwill will be damaged.

A misrepresentation achieving that result is actionable because it constitutes

an invasion of proprietary rights vested in the plaintiff; so long as the plaintiff's
goods have acquired a reputation in the market and are known by some
distinguishing feature. Additionally, ‘It is also a prerequisite that the
misrepresentation has deceived or is likely to deceive and that the plaintiff is
likely to suffer damage by such deception. Mere confusion which does not
lead to a sale is not sufficient.” 134

In Erven Warnink B.V. v. J. V. Townend & Sons (Hull) Ltd., Lord Diplock, set
out five essential characteristics of a passing off action in the following
manner,:
" (1) a misrepresentation, (2) made by a trader in the course of trade, (3) to
prospective customers of his or ultimate consumers of goods or services
supplied by him, (4) which is calculated to injure the business or goodwill of
another trader (in the sense that this is a reasonably foreseeable
consequence) and (5) which causes actual damage to a business or goodwill
of the trader by whom the action is brought or (in a quia timet action) will
probably do so." 135

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

Goodwill was defined by Lord Macnaughten in Inland Revenue

Commissioners v. Muller & Co.'s Margarine Ltd., as "the benefit and
advantage of the good name, reputation and connection of a business. It is
the attractive force which brings in custom." 136 Get-up is the badge of the
plaintiff's goodwill, that which associates the goods with the plaintiff in the
mind of the public. Any monopoly which a plaintiff may enjoy in get-up will
only 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 by

recognizing a monopoly in a particular outlook, it will not recognize a
monopoly in the article itself. So that one producer can compete with another
by copying their goods provided that the use is not done in such a way as to
suggest 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 party
are likely to be passed off as those of another, a plaintiff, to succeed, must
establish (1) that his goods have acquired a particular reputation among the
public, (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 damage
thereby.137

As seen in Zappa however there are factors that courts in Europe tend to
consider when they are confronted with questions that require decisions
regarding whether a trademark used solely on the Internet. Those factors
were articulated in the WIPO Joint Recommendation provisions, published in
August 2010. 138 One, for example, is that the use of a sign on the Internet will
be treated as use in a Member State, only if the use has a commercial effect
in that particular Member State. The Recommendation outlines certain factors
to assist a competent authority in determining whether a sign has been
genuinely used in a given Paris Convention or WIPO member State when the
use offered by the right holder is Internet based. 139

The competent authority would be free to consider other or additional factors

and 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 whether
an act of competition constitutes an act of unfair competition. 140

Other circumstances that may be relevant in determining whether use of a

sign on the Internet constitutes use of a sign in a Member State, which
basically 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 has
undertaken significant plans to do, business in the Member State in
relation 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, or
entered into commercially motivated relationships with persons, located in the
Member State; 2) whether the user stated that there will be no delivery offered
to the Member State and whether that statement is followed; 3) whether other
commercial activities are undertaken by the user which are related to the use
of 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, an
address, telephone number or other mean of contact in the Member State and
6) whether the sign is used in connection with a domain name which is
registered under the ccTLD (country code Top Level Domain) referring to the
Member State.141

Regarding what constitutes trademark use on the Internet in France, in

Google France v. Louis Vuitton, the court recognized the practice of ascribing
economic value to certain words and marks for advertising purposes. It
remains untried whether this practice would be receive the same treatment if
the facts were based on a virtual world hosting service rather than an internet
referencing service and whether if there is value attributed to an individuals
name or likeness whether it would constitute evidence of commercial
appropriation for the purposes of obtaining protection of personality rights. 142

Three questions were presented, the two relevant to current advertising

practices in virtual environments and trademarks are presented, 1) whether
making trademarks available to advertisers as keywords (reproducing
registered trademarks and arranging ad placement according to the terms of
an agreement between the service and the advertiser) is using those
trademarks in a way which their proprietor may prevent? and 2) If not, can the
provider be categorized as an Information Society Service Provider (‘ISSP’)
for the purpose of being shielded from liability until its notified by the
trademark 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 from
those factors that the referencing service provider operates ‘in the course of
trade’ when it permits advertisers to select, as keywords, signs identical with
trademarks, stores those signs and displays its clients’ ads on the basis
thereof, it does not follow, however, from those factors that the service
provider 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 the
service provider is paid by its clients for the use of those signs because the
fact of creating the technical conditions necessary for the use of the sign and
being paid for that service does not mean that the party offering the service
itself uses the sign.

‘To the extent to which it has permitted its client to make such a use of the
sign, it role must, as necessary be examined from the angle of rules of law
other than Article 5 of Directive 89/104 and Article 9 of Regulation No
40/94….’145

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

Specifically, the Court determined that an internet referencing service

constitutes an information society service consisting in the storage of
information supplied by the advertiser, with the result that that information is
the subject of ‘hosting’ within the meaning of that article and that the
referencing service provider therefore cannot be held liable prior to its being
informed of the unlawful conduct of that advertiser.’ 146

So the question that remained was whether Google did have control over the
content presented on their site namely the advertisement (commercial
communication under the directive) rather than simply being a passive host of
third party content. If they are only passively hosting advertisements then they
are not be liable but if they write advertisements for third parties and post
them 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 the
advertisement whether that would constitute use for the purposes of
establishing rights under trademark law or establishing evidence of value in
keywords such as avatar names or particular cleverbot programs.

The Court further defined the essential function of a trade mark as ‘…to
guarantee 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 from
others which have another origin.147

NAME BASED UNFAIR COMPETITION AND TRADEMARK INFRINGMENT

CLAIMS

In Germany, § 12 BGB provides relief whenever the right to use of a name is

disputed by another person or when another person using the same name
violates the interest of the right holder. The legitimate holder can demand the
cessation 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 which
is (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 legal
person and has been used to prevent the registration and use of other
persons or entities names as domain names.149 If a trade name is protected
by trademark law, the section does not apply.150

A risk of confusion may be assumed when the use gives the public a false
impression that the holder of the right consented to the use. A real obstacle to
effective enforcement under this provision occurs because the claimant would
not have consented to the defendants use. 151

The Act against Unfair Competition, § 3 of the Gesetz Bekämpfung des

unlauteren Wettbewerbs (Act Against Unfair Competition of 2004 – UWG),
provides that ‘acts of unfair competition, which are likely to affect competition
to the detriment of competitors, consumers or other market participants to
more than immaterial extent, are prohibited’. Prohibited acts are specified
under § 4. The most relevant provisions to the context of personality rights are
subsections (9) and (5). Subsection (9) prohibits the intentional obstruction of
a 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 of

the alleged infringer. 153 Under § 2 (3) a plaintiff is considered to be a
competitor when it is in a competitive relationship with the defendant.

In one of the Marlene Dietrich cases, a German court commented that the
lawsuit initiated could not have been brought under unfair competition laws
because ‘the grant of rights concerning marketing is not possible based on
unfair competition but only on the basis of personality rights. 154
Also worth noting is that in its decision in DHL Chronopost, the Court of
Justice of the European Union has ruled that a prohibition against further or
threatened infringement issued by a Community trademark court must, as a
rule, extend to the entire area of the EU; however the territorial scope of the
prohibition may, in certain circumstances, be restricted. As a result a decision
of the German court sitting as a community trademark court to protect the
‘ZAPPA’ mark against infringement in Germany may now be enforceable also
in other jurisdictions where protection was extended under the CTM. This
decision provides an effective weapon against the Internet based
infringements that may cross jurisdictions. 155
In the United States there are also use issues in relation to establishment of
common law trademark rights and trademark use in commerce, particularly
when 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 a

trademark or business name. The right to ones name is considered as a
property 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 by
the right holder. 157 Further, under French law, each use that implicates the
right 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 their
voice, name, or image right. 159

Typically courts in the U.S. will apply the laws of the domicile of the claimant
even in actions to determine whether a particular right of publicity is
descendible.160 The differences among the levels of protection and the scope
of publicity rights from state to state and deciding which laws to apply to a
particular case is determinative of the outcome. 161 But even the approach of
whether to apply the laws of the claimants domicile varies. Indiana has a state
right of publicity statute that provides for its application ‘to an act or event that
occurs within Indiana regardless of a personality’s domicile, residence or
citizenship.” 162

French case law has stated that a name because of its inclusion in a
company’s bylaws may become a distinctive sign at which point it detaches
from the individual and attaches to the legal person becoming a descendible
property right. 163

Let’s consider the first of the Popeye cases in Japan. 164 The issue was
whether the use of the name ‘POPEYE’ and a drawing of a character similar
in appearance to the POPEYE cartoon character on undershirts constituted
infringement. The claim was based in part on copyright, trademark, and
design rights. The plaintiff was the trademark owner and the defendant a
licensee based on copyright. 165

The court reasoned that the name of the character Popeye was not
copyrightable, neither were the corresponding Katakana characters which
could not be seen in the comic work. The court held that the use by the
defendant 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 a
trademark. The difference being that the defendants in the second case
bought material containing the mark and character which was created under
license 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 be
deemed to be an infringement of the Popeye trademark owned by the plaintiff,
since the defendant didn’t use the character as a trademark. 166

Article 2 of the Trademark Law defines “trademark”, as used in the context of

“mark” and “use of mark” as “a practical trademark now used in actual trade”
or “a mark or a trademark as a generally accepted social idea.”167

The court found that “’a proper trademark should be attached to products in
order to distinguish products of the trademark owner from those of other
manufacturers. It is generally admitted that besides this primary function to
show the source of products, a trademark has other functions, to guarantee
the quality of products and to advertise them. Therefore, the protection of a
trademark under the Trademark Law should be the legal protection of the
proper trademark against an illegal action to disturb such functions of a
trademark as stated above, namely, the indication of the source of the
designated products. etc.’”

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

The Nagoya District court in Japan held that the commercial value of dead
famous racehorse names should be protected under publicity rights. The
Nagoya High Court supported the judgment but the Second Branch of the
Supreme Court dismissed the decision on appeal. The Court reasoned that
there could not be infringement of publicity to property (other than a natural
person), and concluded that the use of the name of other than humans is
protected by the Japanese Trademark Law, Copyright Act and Unfair
Competition Prevention Act. 168

ROBOTS, AND VOCALOIDS AND CLEVERBOTS…OH MY!!!

Take a moment to consider actual robots, not the science fiction ones we all
know and love like R2D2 or even his ancestor, Maria a robot actress from the
1927 film ‘Metropolis’, but honest to goodness fully functional robots.

Although technology has not yet lent personality to these robots in a

‘meaningful’ 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 can
either hold a simple chat conversation with the program or communicate via
the cleverbot avatar EVIE (Electronic Virtual Interactive Entity). It holds
conversations by using previous discussions over the Internet as fodder to
expand 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 a

research project between the Pompeu Fabra University in Spain and the
Yamaha Corporation. The software is available in English and Japanese. It
works by using synthesizing technology to allow manipulation of the voices of
actors and singers, which were specially recorded to provide singing data. In
order to create songs users must input melody and lyrics. There are various
singing styles employed including classical, male and female versions are
available. The software is offered under license and each licensee has access
to a database of vocal fragments sampled from real people. Because of the
legal implications involved with this activity, one company creating Vocaloids
changed their focus from imitation of singers to creating characteristic vocals.
Late in 2010 the same firm, Crypton Future Media, announced its publication
service, which would seek copyright royalties if songs are used
commercially.170

SIRI is an example of artificial intelligence. The program in essence turns your

iPhone into a robot. Technically Siri is referred to as an intelligent personal
assistant but the technology behind SIRI makes it an amazing feat with
serious potential. The program places communications within context and is
designed to provide results based on patterns of speech. This type of
‘thought’ is what makes it stand apart from voice recognition applications. 171

Hatsune Miku, a synthesized singing application created by Crypton Future

Media, is a female character that utilizes hologram technology. She has
performed ‘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 under
what strategy would result in enforceable rights to that robot? Depending on
its use and development any form of intellectual property could result. Based
on the necessity to use human interaction as both an initial as well as a
continuous reference point would such technology be anything other than a
representation of human personality traits? The point being that we have
difficulty clarifying the personality rights of humans; how long will it take the
law to address specifically the basis of protection of virtual personas and
intelligent machines?

CONCLUSION

Because of the way these programs collect and utilize data based on
individual user actions, it is important to note the nationality of the holder and
grantor of related licenses, and related provisions under particular terms of
service agreements. The location of consumers of relevant goods and
services really matters as does currency and language particularly when the
rights are applied to virtual spaces. Attention must be given to legal
implications such as jurisdiction based use and rights including application of
provisions concerning validity of transfers of rights and resolution of disputes
under 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 used
to create the vocaloid software, or to develop AI programs, but other concerns
and rights involving privacy and other aspects personality rights still exist. It is
basically problematic to require fame as a pre-requisite for the enforcement of
personality rights in human attributes such as voice, name and likeness. The
fact that technology with commercial applications is designed to exploit these
attributes should be enough to recognize that there is economic potential
connected to them as well as a corresponding social benefit. Based on that
fact, if human attributes are developed or exposed in any way that can be
reproduced and copied they should be protectable on some level.

In addition, the policy discourse surrounding personality rights should

recognize that while we might not all become well known, it is likely that we all
have our fifteen minutes of ‘fame’ or at the very least contribute to the wealth
of user generated content on the web. At some time, some attribute of our
personalities contributes to collective economic and social benefit. Such a
reality must have mechanisms in place to allow individuals to control its
commercial exploitation and obtain recourse in the event of its unauthorized
use.

Although an international body of law does secure certain basic personality

rights, provisions on privacy and publicity rights vary from country to country.
In any potential international framework provisions must be made for those
other than famous people and implemented in such a way as to protect basic
human interests in attributes such as name, image, voice and likeness; it
would be preferable to have a uniform system of personality rights protection
reflecting a mesh of international court practice and legislative endeavors in
the area of privacy and human rights law.

1
Immanuel Kant, Critique of the Power of Judgment 5:313 (Paul Guyer ed. &
trans., Eric Matthews trans., Cambridge Univ. Press 2000).
2
http://dictionary.reference.com/browse/individuality
3
http://en.wikipedia.org/wiki/Vocaloid
4
See generally p.160-164; Privacy, Property and Personality; Civil law
Perspectives on Commercial Appropriation, Huw Beverly-Smith, Field Fisher
Waterhouse London, Angsar Ohly, University Bayreuth Germany, Agnes
Lucas-Schloetter, Ludwig Maximilians-Universitat Munchen; November 2005,
Cambridge University Press.
5
supra
6
See Bi-Rite Enters., Inc. v. Button Master, 555 F.Supp. 59 (S.D.N.Y. 1983 at
1197.)
7
Id. at 1197
8
See paragraph 138, Parks v. La Face, citing See Carson v. Here’s Johnny
Portable Toilets, Inc., 698 F.2d 831, 835 (6th Cir. 1983).; stating that “The
theory of the right is that a celebrity’s identity can be valuable in the promotion
of products, and the celebrity has an interest that may be protected from the
unauthorized commercial exploit of that identity.” Id.
9
See p. 100, Privacy, Property and Personality; Civil law perspectives on
Commercial Appropriation, Huw Beverly-Smith, Field Fisher Waterhouse
London, Angsar Ohly, University Bayreuth Germany, Agnes Lucas-Schloetter,
Ludwig Maximilians-Universitat Munchen; November 2005, Cambridge
University Press.
10
See § 22 of the German Act on Copyright in Works of Visual Arts,
[Kunsteurheberrechtsgesetz – KUG]
11
See BGH GRUR 2000, 715 – Der Blaue Engel
12
BGHZ 26, 349 at 351 – Herrenreiter, BGH GRUR 1962, 211 –
Hochzeitsbild; BGH GRUR 1979, 732 – Fussballtor.
13
See BGHZ 143,214 – Marlene Dietrich at p.109; Privacy, Property and
Personality; Civil law perspectives on Commercial Appropriation, Huw
Beverly-Smith, Field Fisher Waterhouse London, Angsar Ohly, University
Bayreuth Germany, Agnes Lucas-Schloetter, Ludwig Maximilians-Universitat
Munchen; November 2005, Cambridge University Press
14
§ 23 KUG
1. Without the consent required by § 22 the following may be disseminated
and 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 his
relatives is violated.
15
See BGHZ 20, 345 Paul Dahlke, BGHZ 143,214 Marlene Dietrich
16
See generally Von Hannover v. Germany, Application No. 59320, 24 June
2004, paras 63, 65, 72.
17
See generally Von Hannover v. Germany, Application No. 59320, 24 June
2004, paras 63, 65, 72.
18
See OLG Hamburg MMR 2004, 413 – Oliver Kahn, but compare BGHZ 49,
288 at 293 et. seq – Ligaspieler, BGR GRUR 1979, 732 at 733 – Fussballtor
19
§ 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 of
personality rights, such as reputation, not explicitly mentioned in section 823
are not protected. Additionally § 823 II provides ‘The same obligation arises
for anyone who violates a statutory provision intended to protect another
person.’
20
See Douglas v Hello! Ltd [2005] EWCA Civ 595, paragraph 17-18.
21
See Douglas v Hello! Ltd [2005] EWCA Civ 595, paragraph 140
22
Id. at paragraph 23
23
See OBG Ltd v Allan [2007] UKHL 21, p. 14 paragraph 39-44
24
Id. at paragraphs 39-44
25
Id.
26
See HMRC and Portsmouth City Football Club Limited, [2010] EWHC 2013
(Ch), Case No. 1554/2010
27
See Irvine v. Talksport Ltd [2003] EWCA Civ 423 at paragraph 37
28
See Irvine v. Talksport Ltd [2003] EWCA Civ 423 at paragraph 45
29
See Irvine v. Talksport Ltd [2003] EWCA Civ 423 at paragraph 47
30
Id. at paragraph 47
31
Id.
32
See Tribunal civil de la Seine (Trib. Civ. Seine) 16.6.1858, Rachel, Dalloz
1858, 3, 62.
33
[Trib.civ.Havre 9.2.1924, Gazette du Palais (Gaz.Pal.)
34
[TGI Paris 14.5.2001, Légiprese 2001, No. 184, I, 104: ‘the rule of freedom
of information leads to the limitation of the right to one’s image in some
circumstances concerning current events or the public or professional life of
those whose fame exhibits them to the inquisitiveness of the public’.]
35
See generally p.172-6, Privacy, Property and Personality; Civil law
perspectives on Commercial Appropriation, Huw Beverly-Smith, Field Fisher
Waterhouse London, Angsar Ohly, University Bayreuth Germany, Agnes
Lucas-Schloetter, Ludwig Maximilians-Universitat Munchen; November 2005,
Cambridge University Press
36
See Art. 1382 C.civ.
37
See CA Paris 16.3.1955, Marlene Dietrich, D. 1955, jur., 295, CA Paris
30.6.1961, D. 1962, jur., 208; CA Paris 6.7.1965, Picasso, Gaz.Pal. 1966, 1,
39.
38
See Privacy, Property and Personality at page 169 citing Tribunal civil de la
Seine (hereafter Trib. civ. Seine) 16.6.1858, Rachel, Dalloz 1858, 3, 62.
39
Id. citing TGI Paris 2.6.1993, Gaz. Pal. 1994, 1, 133. See also Logeais, The
French Right to One’s Image: A Legal Lure? (1994), 5 Ent LR 163
40
Id. citing CA Paris 6.6.1984, D. 1985, inf. rap., 18: ‘even if the resemblance
between the actor playing a lawyer in a movie and a practising lawyer was
perfect, . . . the person concerned is not entitled to claim his right to his image,
since he does not appear in person in the movie, which does not at any time
use his image’. Compare TGI Paris 17.10.1984, D. 1985, somm., 324;
prohibiting the sound alike of actor Claude Piéplu TGI Paris 3.12.1975, D.
1977, jur., 211.
41
See Waits v. Frito-Lay, 978 F.2d 1093 (9th Cir. 1992).]
42
See Finger v. Omni Publ’ns. Int’l, Ltd., 77 N.Y.2D 138, 141 (1990).
43
See Allen v. National Video, Inc., 610 F.Supp. at 624.
44
See Robert Burck d/b/a The Naked Cowboy v. Mars Incorporated and
Chute Gerdeman, Inc., 2008 WL 2485524 (S.D.N.Y.)
45
See Figurative mark for graphic character of Naked Cowboy in black and
white cartoon figure in Class 25 Registration number 2760208; ‘NAKED
COWBOY’ word mark Class 41 US trademark no. 3792432
46
See Robert Burck d/b/a The Naked Cowboy v. Mars Incorporated and
Chute Gerdeman, Inc., 2008 WL 2485524 (S.D.N.Y.) citing at p.8 Albert v.
Apex Fitness, Inc., No. 97 Civ. 1151(LAK), 1997 WL 323899, at *1 (S.D.N.Y.
Jun. 13, 1997) (quoting J. Thomas McCarthy, McCarthy on Trademarks and
Unfair Competition § 28:15 (4th ed. 1996)).

Section 43 (a) creates liability for “any person who, on or in connection with
any goods or services,… uses in commerce…false or misleading
representation of fact, which is likely to cause confusion … as to the origin,
sponsorship, or approval of his or her goods, services, or commercial
activities by another person.” 15 U.S.C. 1125(a)(1).
47
Id. citing Warner Bros. Entm’t Inc. v. Ideal World Direct, 516 F.Supp.2d 261,
268 (S.D.N.Y.2007); Albert Furst von Thurn und Taxis v. Karl Prince von Turn
und Taxis, No. 04 Civ. 6107(DAB), 2006 WL 2289847, at *10-11 (S.D.N.Y.
Aug. 8, 2006).
48
See Burck v. Mars at p. 9
49
Id.
50
See Privacy, Property and Personality; Civil law perspectives on
Commercial Appropriation, Huw Beverly-Smith, Field Fisher Waterhouse
London, Angsar Ohly, University Bayreuth Germany, Agnes Lucas-Schloetter,
Ludwig Maximilians-Universitat Munchen; November 2005, Cambridge
University Press at page 35 citing Privacy Act, RSM 1987 c. P125; Privacy
Act, RSBC 1996, c. 373; Privacy Act RSN 1990 c. P-22; Privacy Act RSS
1978, c. P-24.
51
See Krouse v. Chrysler Canada Ltd. (1971) 25 DLR (3d) 49.
52
See Krouse, (1971) 25 DLR (3d) 49,68.
53
See Athans v. Canadian Adventure Camps Ltd. (1977) 80 DLR (3d) 583.
54
See , Right of Publicity 2011; Getting the Deal Through; Chie Kasahara
(Atsumi & Sakai) at page 47.
55
Id. at page 47.
56
See generally (Tokyo District Court, Heisei 19 (wa) No. 20986 and
Intellectual Property High Court, Heisei 20 (me) No 10063)
57
Id.
58
See Mark Lester (Tokyo District Court, 26 June 1976)
59
See Parks v. LaFace, 329 F.3d 437, 445 (6th Cir. 2003), cert.denied, 124
S.Ct. 925 (2003).
60
Id. at 63, citing Waits v. Frito Lay, Inc., 978 F.2d 1093, 1110 (9th Cir. 1992)
(celebrity suit against snack manufacturer for unauthorized use of his
distinctive voice in a commercial)
61
It provides:
(1) Any person who, on or in connection with any goods or services, or any
container for goods, uses in commerce any word, term, name, symbol, or
device, or any combination thereof, or any false designation of origin, false or
misleading description of fact, or false or misleading representation of fact,
which
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the
affiliation, connection, or association of such person with another person, or
as to the origin, sponsorship, or approval of his or her goods, services, or
commercial activities by another person ...
shall be liable in a civil action by any person who believes that he or she is or
is likely to be damaged by such act. 15 U.S.C. § 1125(a).

62
329 F.3d 437, 445 (6th Cir. 2003), cert.denied, 124 S.Ct. 925 (2003).
63
See Parks v. LaFace Records, 76 F.Supp.2d 775, 780-84 (E.D.Mich.1999).
64
Id. at 780
65
Id. at 783
66
Id. at 784.
67
Id. at 783.
68
See134 F.3d 749, 756 (6th Cir.1998),
69
Id. at paragraph 67.
70
Wikipedia Kevin Butler (character)
http://en.wikipedia.org/wiki/Kevin_Butler_%28character%29
71
See generally Fleischer Studios, Inc., v. A.V.E.L.A., Inc., DBA Art & Vintage
Entertainment Licensing Agency, Case No. 09-56317
72
Id. at page 2769
73
Id. at page 2770-1
74
Id. at page 2771
75
Id. at 2775
76
International Order of Job’s Daughters v. Lindeburg & Co., 633 F.2d 912
(9th Cir. 1980)
77
Id. at 914.
78
Id. at 920. [Fleischer at page 2780]
79
Id. at 919. [Fleischer at pages 2779-2780]
80
Id. at 920. [Fleischer at page 2780]
81
See id at 919. [Fleischer at page 2780]
82
Darkstar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003).
83
Id. at 33. [Fleischer at page 2781].
84
Fleischer at page 2782.

85
See INTA Online trademark use chart,
www.inta.org/Advocacy/.../Online%20Trademark%20Use.pdf

86
See § 5 II MarkenG
87
See § 4 (1) MarkenG.
88
See OLG Dresden NJW 2001, 615 – Johann Sebastian Bach
89
See generally p.121-125, Privacy, Property and Personality; Civil law
perspectives on Commercial Appropriation, Huw Beverly-Smith, Field Fisher
Waterhouse London, Angsar Ohly, University Bayreuth Germany, Agnes
Lucas-Schloetter, Ludwig Maximilians-Universitat Munchen; November 2005,
Cambridge University Press.
90
See Im Namen Des VOLKES URTEIL I-20 U 48/09 Judgment was brought
on 15.06.2010. by The National Court in Düsseldorf dismissing Plaintiffs
appeal against the judgment brought 21st January 2009 by the Civil Chamber
of the National Court in Düsseldorf
91
Id at p.2
92
Id.
93
See Im Namen Des Volkes Urteil (Zappa), I-20 U 48/09 at p. 3
94
See Article 15 Paragraph 1 Council Regulation (EC) No 40/94 of 20
December 1993 on the Community trade mark, amended by: Council
Regulation (EC) No 422/2004 of 19 February 2004 amending Regulation (EC)
No 40/94 on the Community trade mark.
95
See Im Namen Des Volkes Urteil (Zappa) I-20 U 48/09 at page 5.
96
Id.
97
German Supreme Court - Protection of Industrial Property and Copyright
2006, 1055 - "airdsl", with further evidence.
98
German Supreme Court on this point; Protection of industrial property and
copyright 2008, 912 - Metrosex
99
Im Namen Des Volkes Urteil (Zappa) at page 10 citing (German Supreme
Court - Protection of industrial property and copyright 2008th, 6167 - AKZENT
).
100
See Zappa at page 6 citing "Ingerl / Rohnke" Trademark Act, 2nd edition
2003, Article 26. "Rn" 3.
101
See Im Namen Des Volkes Urteil (Zappa) at page 7.
102
Id. at page 12.
103
See Parks v. LaFace at paragraph 63 citing Waits v. Frito-Lay, Inc., 978
F.2d 1093, 1110 (9th Cir.1992) (celebrity suit against snack manufacturer for
unauthorized use of his distinctive voice in a commercial); Allen v. Nat'l Video,
Inc., 610 F.Supp. 612, 624-25 (S.D.N.Y. 1985) (celebrity suit against a video
retailer for use of a celebrity look-alike in its advertisements); Landham v.
Lewis Galoob Toys, Inc., 227 F.3d 619, 626 (6th Cir.2000) (actor sued toy
company for creating an action figure named after one of his movie
characters); Abdul-Jabbar v. Gen. Motors Corp., 85 F.3d 407, 410 (9th
Cir.1996) (professional basketball player sued car manufacturer for using his
birth name to sell cars).
104
See Waits, 978 F.2d at 1110. See also 4 J. Thomas McCarthy, McCarthy
on Trademarks and Unfair Competition § 28:15 (4th ed.2002)(discussing
cases).

105
See Parks at paragraph 64 citing Elvis Presley Enters., Inc. v. Capece, 141
F.3d 188, 193 (5th Cir.1998); Wynn Oil Co. v. Thomas, 839 F.2d 1183, 1189
(6th Cir. 1988) (finding a "clear likelihood of confusion" because it was "highly
probable" that a purchaser would believe a car wax was affiliated with another
manufacturer); 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition § 23:3 (4th ed.2002)(citing cases). But cf. Daddy's Junky Music
Stores, Inc. v. Big Daddy's Family Music Ctr., 109 F.3d 275, 284 (6th
Cir.1997) (noting that a plaintiff need only show "a sufficient potential of
confusion, not actual confusion").

106
Id. at paragraph 73
107
See Frisch's Rests., Inc. v. Elby's Big Boy of Steubenville, Inc., 670 F.2d
642, 648 (6th Cir.1982) (adopting the test from AMF, Inc. v. Sleekcraft Boats,
599 F.2d 341, 348 (9th Cir.1979)); see also Polaroid Corp. v. Polarad Elecs.
Corp., 287 F.2d 492, 495 (2d Cir.1961) (creating a variant of the test).
[paragraph 72]

108
Id. at paragraph 75 citing See Mutual of Omaha Ins. Co. v. Novak, 836
F.2d 397, 402 (8th Cir.1987) (creator of parody tee-shirts not protected by
First Amendment because he could still produce parody editorials in books,
magazines, or film); Am. Dairy Queen Corp. v. New Line Prods., Inc., 35
F.Supp.2d 727, 734 (D.Minn.1998) (no First Amendment protection for an
infringing movie title because there were other titles the producers could use);
cf. Anheuser-Busch, Inc. v. Balducci Publ'ns, 28 F.3d 769, 776 (8th Cir.1994)
(First Amendment protection not available to parodist because the confusing
trademark use was "wholly unnecessary" to the parodist's stated purpose).

109
Id. at paragraph 77 citing Rogers, 875 F.2d at 999.
110
Id. at paragraph 69
111
Id. at paragraph 84
112
http://www.law.harvard.edu/faculty/martin/art_law/image_rights.htm

113
Article 1382 C. civ.; requiring proof of fault, damage and a causal link.
114
See N. Sarkozy v. Sté Ryanair and C. Bruni Tedeschi v Sté Ryanair,
TGI Paris, 5 February 2008, JCP 2008, Act. 117.
115
US Trademark Reg. No. 3531683 (Nov. 11 2008). FTNT** Although at the
time of writing this article I am unaware of any verbal or word marks protecting
an avatar name and or likeness, both are commonly used as brands in the SL
virtual world to designate the source of goods and services. These may
however comprise common law marks used almost exclusively via the
Internet.
116
See No Doubt v. Activision Publishing Inc., Los Angeles County
Super.Ct.No. BC425268), Filed2/ 15/11 at page 11.
117
No Doubt at page 3.
118
No Doubt at page 5.
119
Id. at page 3.
120
Id. at page 4.

122
Id. at page 20.
123
Id. at page 9 citing Kirby v. Sega of America, Inc., (2006) 144 Cal.App.4th
47, 58 (Kirby); see Video Software Dealers Assn. v. Schwarzenegger (9th Cir.
2009) 556 F.3d 950, 958, cert. granted sub nom. April 26, 2010,
Schwarzenegger v. Entertainment Merchants Ass’n (2010)_U.S._[130 S.Ct.
2398, 176 L.Ed.2d 784].
124
Id. citing Stewart v. Rolling Stone LLC (2010) 181 Cal. App.4th 664, 677-
678 [magazine publication of “indie rock” bands’ names was matter of public
interest].).
125
See No Doubt at page 23 citing Mattel, Inc. v. Walking Mountain
Productions (9th Cir. 2003) 353 F.3d 792,) 806-807).
126
Rogers v. Grimaldi, (2d Cir 1989) 875 F.2d 994.
127
No Doubt v. Activision at page 27.
128
Unfair competition under California Business and Professions Code section
17200
129
See BGHZ 143,214 – Marlene Dietrich.
130
See Irvine v. Talksport, para. 31, citing McCulloch v. Lewis A. May
(Produce Distributors) Ltd. (1948) 65 RPC 58.
131
See Reckitt and Coleman Products Limited v. Borden Inc., at page 16.
132
See Star Industrial Co. Ltd. v. Yap Kwee Kor [1976] F.S.R. 236
133
Id. at p. 269
134
Reckitt and Coleman Products Limited v. Borden Inc., Lord Jauncey of
Tullichettle; paragraph
135
Erven Warnink B.V. v. J. V. Townend & Sons (Hull) Ltd. [1980] R.P.C. 31
at p. 93
136
Inland Revenue Commissioners v. Muller & Co.'s Margarine Ltd. [1901]
A.C. 217, 223.
137
See Reckitt and Coleman Products Limited v. Borden Inc., at page 16.
138
THE WIPO JOINT RECOMMENDATION CONCERNING PROVISIONS ON THE
PROTECTION OF MARKS, AND OTHER INDUSTRIAL PROPERTY RIGHTS IN SIGNS,
ON THE INTERNET, SCT/24/4 Annex II, at page 2.
139
List of Paris Convention and
[http://www.wipo.int/treaties/en/ShowResults.jsp?lang=en&search_what=B&b
o_id=5]; World Intellectual Property Organization member states
[http://www.wipo.int/members/en/].
140
SCT/24/4 Annex II, page 7
141
SCT/24/4 Annex II, page 9
142
See generally Google France v. Louis Vuitton Joined Cases C-236/08, C-
237/08 and C-238/08
143
Id. at paragraph 57.
144
Id.
145
Id.
146
See Google France v. Louis Vuitton at paragraph 105.
147
Id. at paragraph 82 citing to that effect, Case C-39/97 Canon [1998] ECR I-
5507, paragraph 28, and Case C-120/04 Medion [2005] ECR I-8551,
paragraph 23.
148
See Privacy, Personality and Property at page 110.
149
BGHZ 155, 273 – maxim.de; BGH GRUR 2004, 619 – kurt-biedenkopf.de
150
BGHZ 149, 191 – shell.de
151
BGHZ 30,7 – Caterina Valente
152
BGH GRUR 1960 Bambi; BGH GRUR 1963, 485 – Micky Maus-Orangen;
OLG Frankfurt GRUR 1984, 520 at 521- Schlümpfe
153
(§ 8 III (1) UWG)
154
[BGH GRUR 2000, 709 at 715]
155
DHL Express (France) SAS v. Chronopost SA, Case C-235/09 12.04.2011
at paragraph 40.
156
Trib.civ.Havre 9.2.1924, Gazette du Palais (Gaz.Pal.) 1924 ‘the case law of
the first instance and appeal courts, confirmed by the Supreme Court is laid
down in that the surname is a property’.
157
See Cass. Civ. 3.4.2002, JCP 2001, II, 10524 (Johnny Hallyday).]; Cass.
Civ. 3.4.2002, No. 195, III, 170 (Stephen Grimaldi).
158
See CA Versailles 21.3.2002, D. 2002, jur., 2374; CA Paris 27.2.2002,
CCE 2003, comm., No.11 p.40.
159
See TGI Paris 11.7.1973, JCP 1974, ii, 17600.
160
See Cairns v. Franklin Mint Co., 24 F.Supp. 2d 1013, 1025-26 (C.D. Cal.
1998).
161
See Donahue v. Warner Bros. Pictures, Inc. 194 F. 2d 6 (10 Cir. 1952)
(finding successors of entertainer properly commenced action in Utah, the
location of the infringing act even though they and entertainer were residents
of California which did not recognize the descendability of publicity rights at
that time).
162
See generally Ind. Code § 32-13-1-1(a).
163
See Cass. Com. 12.3. 1985, JCP 1985, II, 20400; D. 1985, jur., 471.] at
page 200, Privacy, Property and Personality; Civil law perspectives on
Commercial Appropriation, Huw Beverly-Smith, Field Fisher Waterhouse
London, Angsar Ohly, University Bayreuth Germany, Agnes Lucas-Schloetter,
Ludwig Maximilians-Universitat Munchen; November 2005, Cambridge
University Press.
164
See Osaka Sankei Co. v. Kanematsu Gosho Co. (Tokyo District Court,
1973 (WA) 7060. April 19, 1974, Affirm).
165
See Osaka Sankei Co. v. Kanematsu Gosho Co. (Tokyo District Court,
1973 (WA) 7060. April 19, 1974, Affirm). [page 450-1, Legal Protection of
Character Merchandising in Japan, Riichi Ushiki (1980)
166
Id. at page 452.
167
Id.
168
Nagoya District Court judged (on 19 January 2000); Nagoya High Court
decision supporting the judgment on 8 March 2001; Second Branch of the
Supreme Court dismissing district court judgments13 February 2004; Is
Japan Ready to Welcome the Virtual World Age? Second Life’s Bubble
Bursts as a Business Tool in Japan, Takashi Nakazaki, The Computer and
Internet Lawyer Volume 26 Number 11, November 2009 at page 24
169
http://www.lifeslittlemysteries.com/1747-artificial-intelligence-cleverbot.html
170
Crypton Starts a Music Publication for Vocaloid Creators. They aim to
Achieve a Balance Between Free Uses and Royalties;
http://www.itmedia.co.jp/news/articles/1011/29/news095.html.Retrived
December 2, 2010.
171
http://www.unwiredview.com/2011/10/12/how-siri-on-iphone-4s-works-and-why-
it%E2%80%99s-a-big-deal-apple%E2%80%99s-ai-tech-details-in-230-pages-of-
patent-app/