Supreme Court

Jamaica

C.L. R115 of 1992

The Robert Marley Foundation

Clarke, J.

Injunction - Plaintiff sought an injunction restraining the defendant from manufacturing, printing, distributing or in any way dealing in any T-
shirts or other items bearing the name, likeness, signature, image, photograph, and biography of Bob Marley without the proper written consent
of the plaintiff — Injunction granted.

Tort — Passing off Cause of action Plaintiff's business includes (a) selling T shirts bearing Markey's name and image or likeness etc. on T shirts
or otherwise Defendant employed goods of inferior quality to the plaintiff's in making the false representation according to which the public has
been misled into believing that a commercial arrangement exists between the plaintiff and the defendant Passing off is committed where a trader
so conducts business as to lead the public to believe that his goods or business are the goods or business of, or are associated with, another
trader as a result whereof the business or goodwill of the latter is really damaged Statement of claim discloses a cause of action for passing off
No exceptional features on public policy grounds justify withholding a remedy.

Tort — Appropriation of personality Whether Jamaican law recognizes the existence of property or any other right in, or attached to, personality
which comprises a natural person's name and likeness or other indicia of identity Jamaican law recognizes a civil wrong, known in Canada as
“appropriation of personality” Commercial use of Bob Marley's name and likeness or image by the defendant without the plaintiff's consent
constitutes an invasion of impairment of the plaintiff's exclusive right resulting in damage to the plaintiff Defendant's conduct constitutes the tort
of appropriation of personality, separate and distinct from the tort of passing off Damages Quantum of damages $86,040.50 awarded to the
plaintiff.

Michael Hylton, Peter Goldson and Miss Debbie Fraser instructed by Myers, Fletcher & Gordon for the plaintiff.

Enos Grant instructed by Maurice Long of Clough, Long & Co. for the defendant

Clarke. J.

1.

In this suit the plaintiff claims damages under three heads: (1) passing off, (2) “appropriation of personality” (which counsel for the plaintiff urge

me to recognize as an independent tort) and, in the alternative, (3) moneys had and received. The plaintiff seeks, too, an injunction restraining the

defendant whether by its servants or agents from manufacturing, printing, distributing or in any way dealing in any T-shirts or other items bearing

the name, likeness, signature, image, photograph, and biography of Bob Marley without the prior written consent of the plaintiff.

2.

When the case came up before me for trial the defendant through its counsel admitted that all the factual allegations made in the statement of claim

are correct. Some of the admitted facts are amplified by unchallenged documentary evidence adduced on behalf of the plaintiff. And as counsel on

both side indicated, the question of the proper inferences to be drawn from the primary facts apart, the live issue, as foreshadowed by the statement

of defence is one of law: do the fact. establish cause(s) of action?

3.

Omitting tho claim for relief, the statement of claim reads as follows:

“1. The Hon. Robert Nesta Marley, O.M. (herein after referred to as “Bob Marley) was a Songwriter and Musician of international stature who

died on Play 11, 1981, intestate. During his lifetime Bob Marley wrote and/or recorded numerous songs, millions of copies of which have been

sold worldwide, both before and after his death. His name and his face are immediately recognizable throughout the Island of Jamaica, and in

many other parts of the world.

2. At all material times, the sole Administrator of Bob Marley's Estate has been Mutual Security Merchant Bank and Trust Company Limited
 (hereinafter called “The Administrator”).

3. Pursuant to an agreement made in April 1988, and approved by this Honourable Court, the Administrator transferred to Island Logic Inc.

various rights and property including the right to use and/or to authorize others to use Bob Marley's personality, name, likeness, signature,

image, photographs and biography anywhere in the world, including the Island of Jamaica. Island Logic Inc. thereafter transferred the said

rights to Stitching Bob Marley, a Dutch Corporation.

4. The plaintiff is a company incorporated under the laws of Jamaica and limited by Guarantee. Stitching Bob Marley has transferred the

aforesaid rights to Bob Marley Music Inc., a corporation formed under the laws of the State of California in the United States of America,

which, in turn, transferred same to the Plaintiff in relation to the Island of Jamaica. The plaintiff therefore has the sole right to use or license

others to use the personality, name, likeness, signature, image, photographs and biography of Bob Marley within the Island of Jamaica.

5. The plaintiff operates the Bob Marley Museum in Kingston, Jamaica and sells there and elsewhere T-shirts and other souvenir items bearing

Bob Marley's name, photograph and or likeness.

6. The plaintiff has licensed and is negotiating to license various persons in Jamaica to use Bob Marley's likeness or name on T-shirts or

otherwise and Bob Marley Music Inc., and its Assignees and Licensees have licensed and authorized numerous persons worldwide to do so.

7. The plaintiff's existence and purposes are a matter of public knowledge.

8. The defendant is a company incorporated under the laws of Jamaica and carries on the business inter alia of manufacturing and selling T-

shirts labeled AFun Tops”.

9. The defendant has manufactured and/or sold a number of T-shirts bearing Bob Marley's image and bearing the words “Bob *1945-1981”

throughout the island of Jamaica. The defendant neither sought nor obtained the approval or consent of the plaintiff and has failed and/or

refused to cease manufacturing or selling the said T-shirts despite demands from the plaintiff to do so.

10. The T-shirts sold by the defendant are made of a material and undergo a printing process which are inferior in quality to that used by the

plaintiff and its licensees.

11. The defendant has misled the public into believing that an association, whether it be commercial or otherwise, exists between the plaintiff

and the T-shirts being sold by the defendant to the detriment of the plaintiff.

PARTICULARS

(a) The plaintiff has the exclusive right to do, and does deal in and license others to deal in the use of the personality' image, photographs, name

and biography of Bob Marley.

(b) The defendant, prior to dealing in T-shirts with the late Bob Marley's image and name, had knowledge of or should have been put on

enquiry to ascertain (a) above.

(c) The defendant manufactures, deals in, and markets the said T-shirts.

(d) The defendant thereby caused the public to believe that the T-shirts manufactured and/or sold by the defendant had the approval and

sanction of the plaintiff, or that a commercial arrangement between the plaintiff and the defendant exists, a belief which is untrue.
12. The defendant, in manufacturing and/or selling the said T-shirts, has appropriated for its own use and benefit the plaintiff's proprietary right

in the exclusive marketing for gain in Jamaica of the licence to use Bob Marley's personality, image, photographs, name and biography.

13. In the premises the plaintiff has suffered loss and damage.

PARTICULARS

4.

Counsel for the defendant contends that the facts pleaded therein do not establish a cause of action. The suit, he says, must therefore be dismissed.

The plaintiff's counsel on tho other hand asks for judgment averring that the statement of claim discloses the disputed causes of action.

5.

Were the plaintiff to succeed because, for instance, I concluded that the statement of claim pleads facts establishing the passing off action, Mr.

Grant properly conceded that the appropriate remedies would be damages and an injunction as prayed.

Passing Off
6.

Take first the tort of passing off. Undoubtedly an established tort, it is committed where a trader so conducts his business as to lead the public to

believe that his goods or business are the goods or business or, or are associated with, another trader as a result whereof the business or goodwill of

the latter is really likely to be damaged. In this area of the law, the term trader is wide, especially where as here the defendant's activities are of a

commercial nature. The term includes incorporated non-profit and charitable bodies which, like the plaintiff, sell or distribute goods in connection

with the activities they were formed to promote. See Lagos Chamber of Commerce Inc. v Registrar of Companies (1956) 72 R.P.C. 253 and Dr.

Barnardo's Homes: National Incorporated Association v. Barnardo Amalgamated Industries Ltd. (1950) 66 R.P.C. 103. And although the plaintiff is

a company formed for promoting art, science, religion or charity, the law and the company's very constitution sanction its trading activities. So, Mr.

Grant's submission that such a company has no business interest to be protected by the doctrine of passing off has only to be stated to be rejected.

7.

Warnink and Another v. Townend & Sons and Another [1979] A.C. 731 or [1979] 2 All E.R. 937 is a leading case on the passing off action. That

case went up to the House of Lords. The plaintiffs had for many years manufactured and distributed in Britain a popular liquor called “Advocaat”.

Made in the Netherlands by a number of manufacturers including the plaintiff it had been sold in Britain for many years where it had acquired a

substantial reputation and goodwill as a distinct and recognizable beverage. The defendants made and marketed in England a similar (but differently

constituted) drink described as a “Keeling Old English Advocaat”. Although it could not be shown that it was mistaken for Dutch advocaat it

captured a substantial part of the plaintiffs' English market.

8.

The plaintiffs' passing off action succeeded. The defendants, it was held, were seeking to take advantage of the goodwill attached to the name,

Advocaat, as a description of the Dutch product by misrepresenting that their product was related or connected to that product. The leading

speeches, Lord Diplock's and Lord Fraser's, make it plain that a product, which had gained a reputation in the market by reason of its recognizable

and distinctive qualities of name and composition and had thereby generated the relevant goodwill, should be protected from deceptive use of its

name by competitors. The injunction granted at first instance was restored because all the tests for a passing off action were met.

9.

By combining the tests propounded by Lord Diplock and Lord Fraser, a learned editor, has, in my view, correctly analysed the essential ingredients

of a passing off action as follows:

“(1) That the plaintiff's business comprises selling in [Jamaica] a class of goods to which the particular trade name [face, likeness or image]

applies;

(2) That the name [face likeness or image] is distinctive of the plaintiff's goods;

(3) That goodwill is attached to the name [face, likeness, image and is the plaintiff's;

(4) That the defendant has made a representation;

(5) That he has done so in the course of trade to customers or ultimate recipients of the goods;

(6) That the business or goodwill of the plaintiff is really likely to be damaged” - see Clerk & Lindsell on Torts 16th edition 30-29.

10.

There can therefore be no valid cause of action for passing off if there is no invasion of the goodwill of a trader's business by a false representation

made by another trader in the course of trade.

11.

As far as concerns the question of misrepresentation the plaintiff in the instant case obviously has no cause of action-for passing off in the classic

form of a trader representing his goods as the goods of another. Mr. Grant submitted before me that if the misrepresentation is not so limited it is
unavailing. That was what counsel for the respondent had unsuccessfully submitted before the House of Lords in the Warnink case. That is of

course, not the law. The law has developed at least to -The point where it is enough that the misrepresentation is calculated to give one trader the

benefit of another's goodwill.

12.

This development has been engendered by Lord Parker's seminal identification of the nature of the proprietary right “the invasion of which is the

subject of … passing off actions” as the “property in the business or goodwill likely to be injured by the misrepresentation” : Spalding and Bros. v.

A.W. Gamage Ltd. (1915) 84 L.J. Ch. 449, 450, and see the speech of Lord Diplock in Warnink v. Townend (Supra).

13.

In the instant case the misrepresentation is not in dispute. By manufacturing and selling T-shirts bearing Bob Marley's image or likeness and the

appellation, “Bob *1948-1981”, the defendant has misled the public to believe that an association, be it commercial or otherwise, exists between the

plaintiff and the T-shirts being sold by the defendant: see paragraphs 9, 11 and 11(a) of the statement of claim.

14.

That is, however, not all. The statement of claim must plead not only facts showing the defendant's acts of misrepresentation, but must also plead

facts leading to the conclusion that the plaintiff is entitled to the relevant goodwill. This, Mr. Grant submitted, has not been done.

15.

Although goodwill as a concept is wide, “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” : Star Industrial Co. Ltd. v. Yap Kwee Kor [1976] F.S.R. 256, 269, per Lord Diplock. It is,

as Lord McNaghten once said, “the benefit and advantage of the good name, reputation and connection of a business. It is the attractive force which

brings in custom” : Inland Revenue Commissioners v. Muller & Co. [1901] A.C. 213 at 223 and 224.

16.

Now, the late Bob Marley was a musician and songwriter of international stature. Millions of copies of the songs he wrote and recorded have been

sold worldwide both before and after his death in 1981. From these primary facts I conclude that he was a celebrity who had a music and

songwriting ‘business’ of international proportions. And whilst it has not been shown that he was involved in manufacturing and/or selling T-shirts,

he had, as I will show later in this judgment the sole or exclusive right (subsequently acquired by the plaintiff) to use or license other persons to use

in Jamaica his name and likeness for commercial gain.

17.

The plaintiff's business includes (a) selling T-shirts bearing Marley's name and image or likeness etc. and (b) licensing persons to use Marley's

name, image or likeness etc. on T-shirts or otherwise. The Plaintiff “whose existence and purposes are a matter of public knowledge” has in fact

licensed' and is negotiating to license, various persons in Jamaica to use Marley's name and likeness as aforesaid. Indeed, two non-exclusive license

agreements, made between the plaintiff and third persons for valuable consideration were admitted in evidence. So, the clear and reasonable

inference must be that “because of the good name, reputation and connection of [the plaintiff's] business” various persons have for commercial

purposes paid, or are prepared to pay the plaintiff for use on T-shirts etc. Bob Marley's name and likeness or other indicia of his personality. These

are clearly “the attractive force which brings in custom.” Add to that the allegations admitted by the defendant' that its use of Bob Marley's name

and likeness on T-shirts it sells, has led to the public's mistaken belief that there is a connection between its goods and the plaintiff, resulting in loss

and damage to the plaintiff.

18.

The facts as pleaded therefore lead to the inescapable conclusion that goodwill is attached to Bob Marley's name and likeness in connection with the
plaintiff's business. And that goodwill belongs to the plaintiff. It has been invaded by the defendant's aforesaid misrepresentation.

19.

The detriment suffered by the plaintiff by this invasion of its goodwill is underscored by this, that the defendant has employed goods of inferior

quality to the plaintiff's in making the false representation according to which the public has been misled into believing that a commercial

arrangement exists between the plaintiff and the defendant. So I disagree with Mr. Grant's submission that in manufacturing and selling the said T-

shirts the defendant was merely satisfying a popular demand.

20.

Mr. Grant submitted that, in any event, an action in passing off is not maintainable as, according to him, the facts show that the parties are not

engaged in a common field of activity. A number of things must be said about that submission. First, of all, although only the plaintiff licenses

person to utilise in Jamaica Bob Marley's name and likeness, both parties sell T-shirts with Bob Marley's name and likeness printed thereon.

Second, as the businesses of the parties therefore overlap, this case does not violate the principle of the decision of the English Court of Appeal in

McCullock v. May [1947] 2 All. E.R. 845 (relied on by Mr. Grant) that in a passing off action the parties must have a common field of activity, on

the basis that otherwise they would not be business rivals. Third, with great respect, I am not persuaded that I ought to accept that proposition for,

even though it has not been violated by the instant case, as Evatt C.J. and May J. reasoned in rejecting it in the Full Court of the Supreme Court of

New South Wales, “[if deception and damages are proved, it is not easy to see the justification for introducing another factor as a condition of the

Court's power to intervene:” Radio Corporation v. Henderson [1960] N.S.W. 279, 282.

21.

In that case the plaintiffs were well-known professional ballroom dancers. Their photographs had been used, without consent, by the defendants on

the cover of a gramaphone record of dance music. Even though a common field of activity was found to exist, there is much force in the learned

judges' reasoning and I respectfully adopt it.

22.

From the foregoing analysis I consider it plain that the facts presented by the statement of claim disclose a cause of action for passing off. The

requirements of the tort have been met and no exceptional features on public policy grounds justify withholding a remedy.

Appropriation of Personality

23.

Mr. Grant next submitted that, although recognized in Canada and some States of the United States of America, the concept of appropriation of
personality as an independent tort is in this country jurisprudentially novel and esoteric. He further submitted that so far as the courts in Jamaica are

concerned the categories of heads of tortious liability are closed and may only be opened or increased by Parliament.

24.

Now, at the invitation of Mr. Hylton I take judicial notice of this that “much modern commercial activity focuses upon the creation of a public

perception of an association between a consumer product and a celebrity figure for the purpose of marketing the product.” This constitutes,

according to one academic writer to whom the quoted words in this paragraph are attributable, “a valuable by product of [the] fame [of most

celebrities] allowing them to sell their persona for a user fee” : Robert Howell in an article in the Intellectual Property Journal 1986 at page 150.

This interest, Mr. Hylton submitted, would be protected so far as the plaintiff is concerned by the recognition by the common law of Jamaica, in

consonance with some other common law jurisdictions, of an independent tort known in Canada as “appropriation of personality” and in the United

States as “breach of the right of publicity”. He further submitted that such a tort rests on the juridical basis that:” When a person has a persona

which is commercially marketable another person should not be allowed to take commercial advantage of that persona without permission.”

25.
And, as I understand his argument, that is precisely the basis of the plaintiff's claim for damages for appropriation of personality as set forth in

paragraph 13 of the statement of claim as follows:

“The defendant in manufacturing and/or selling the said T-shirts, has appropriated for its own use and benefit the plaintiff's proprietary right

in the exclusive marketing for gain in Jamaica of the license to use Bob Marley's personality, image, photograph, name and biography”.

26.

If no exclusivity of control or ownership of personality exists anyone may, in the absence of some existing tortious or contractual obligation,

appropriate or market such personality without permission. In such a case there is no legal right and therefore no duty situation arises. In the absence

of a duty cast upon the would-be appropriator, the celebrity or his personal representatives or assignees would have no proprietary right to

exclusively market for gain his personality.

27.

A fundamental question that must needs be determined, therefore, is whether our law recognizes the existence of property or any other right in, or

attached to' personality which in this context comprises a natural person's name and likeness or other indicia of identity. The question arises against

the background of the notorious commercial practice of the use without permission of the name and likeness of another. In examining the authorities

which include some 19th century English cases I bear in mind the following dictum of Scott L.J. expressed some 53 years ago:

“The common law has throughout its long history developed as an organic growth, at first slowly under hampering restrictions of legal

forms of process, more quickly in Lord Mansfield's time, and in the last one hundred years at an ever - increasing rate of progress as new

cases' arising under new conditions of society, of applied science and of public opinion, have presented themselves for solution” - see

Haseldine v. Daw [1941] 2 K.B. 343, 362.

28.

In Routh v. Webster (1849) 10 Beav. 561 the defendant published without authority the plaintiff's name as a trustee/promoter of a joint stock

company O The court granted an injunction enjoining the unauthorised use on the basis that the use of itself exposed the plaintiff to financial risk. In

that case' despite Lord Langdale's admonition not to use the name of persons without their authority, in another case the following year, that judge
refused to restrain the unauthorised use of the plaintiff's name: Clark v. Freeman (1850) 11 Beav. 1120. There the defendant took advantage of the

name and reputation of the plaintiff, an eminent physician, by advertising pills purporting to relieve consumption as “Sir J. Clark's Consumption

Pills. Holding that to grant the injunction would falsely imply that the court had jurisdiction to stay the publication of a libel, Lord Langdale at page

118 concluded that persons of the plaintiff' standing must accept such exposure as the price of eminence:” Other persons try to avail themselves of

their names and reputations for the purposes of making profit for themselves, that unfortunately continually happens.”

29.

Clark v. Freeman (supra) was followed in a line of professional cases characterised by this, that the name of a prominent expert had been

appropriated for advertising purposes by a manufacturer: see for instance, Williams v. Hodge (1887) 4 T.L.R. 175; Dockrell v. Dougall (1899) 80

L.T. 556; B.M.A. v. Marsh (1931) 48 R.P.C. 565. In Dockrell v. Dougall the plaintiff's claim in libel failed, but he further claimed that a person has

a property in his own name, a claim which echoed the view of some judges expressed obiter in earlier cases. Cairns L.J. for instance, said in one

case. “It always appeared to me that Clark v. Freeman might have been decided in favour of the plaintiff on the ground that he had a property in his

own name” : see Maxwell v. Hogg (1867) L.R. 2 Ch. 307, 310. In Dockrell v. Dougall (supra) however, Smith L.J. rejected the plaintiff's contention

and held that no injunction could be granted unless the plaintiff could show injury in his property, business or profession. While Williams L.J. found

no authority to support the notion of property in a name per se, he held that the plaintiff could only succeed in his claim for an injunction if he could

show that the defendant had done something more than use his name without authority. Williams L.J. agreed that the unauthorised use of another's

name would be actionable if it led to an infraction of his rights of property or any injury to him in his property, business or profession.
30.

In Corelli v. Wall (1906) 22 T.L.R. 532 the defendants sold without the consent of the plaintiff, a novelist, postcards depicting bad portraits of her.

She claimed an injunction on two grounds: libel and the publication of her portrait without her consent. Swinfin Eady J. refused to issue it on either

ground. In so far as the second ground was concerned, the learned judge held that there was no authority for the plaintiff's claim to a right as a

“private person” to restrain the unauthorised publication of her portrait.

31.

Those two cases were relied on by Greer L.J. in Tolley v. Fry & Sons Ltd. 1 K.B. 467, 478 as authority for the proposition that the unauthorised use

of another's photograph, caricature or name is not actionable in the absence of defamation. With great respect, that proposition is too wide and

categorical. Neither of the two cases on which the learned Lord Justice relied went that far. And it is obiter, as witness the fact situation of Tolley v.

Fry & Sons Ltd. itself. There the plaintiff, a renowned amateur golfer, was caricatured by the defendant, without his consent, in an advertisement of

their chocolate which depicted him with a packet protruding from his pocket. Represented with him was a caddy who also had a packet of chocolate

the excellence of which he likened to the excellence of the plaintiff's drive. The plaintiff sued to recover damages for libel alleging in his innuendo

that the defendant” thereby meant that the plaintiff had agreed to let his portrait be exhibited for advertisement, that he had done so for gain, and that

he had thus prostituted his reputation as an amateur golfer. The sole issue was whether the advertisement was capable of any, or the alleged,

defamatory meaning.

32.

Except for the unauthorised issue of portrait, the material facts of that case are essentially dissimilar to those of the case before me. Mr. Tolley as an

amateur golfer was concerned to preserve his amateur status and reputation in golf. He could assert no right, or no exclusive right, to market his

personality for gain, for his status as an amateur sportsman would have been inconsistent with any such assertion. Accordingly, appropriation of his

name and likeness, though capable of being defamatory, could not injure him in his “property, business or profession.” Given his status those would

be inapplicable. In my view, that is why the unauthorised use of Mr. Tolley's portrait for commercial purposes was not actionable in the absence of

defamation.

33.

Interestingly, the contention raised in Dockrell v. Dougall that a person has a property in his own name per se was also in effect raised in Sim v.

Heinz [1959] 1 W.L.R. 313. There the plaintiff sued in respect of an advertisement utilising a voice made to sound like his o In an application for an

interlocutory injunction to restrain the appropriation of his voice the plaintiff, while not in terms claiming property in his voice, claimed that “in the

case of a professional man like an actor, his reputation in the mind of the public, based upon his performances, is a right of property capable of

invasion, just as the right of property contained in a particular kind of goods or method of get up of goods …” However, as the proceedings were

interlocutory McNair J. refused to rule as to whether an action in passing off would lie, though in his view it would be “a grave defect in the law if it

were possible for a party for the purpose of commercial gain, to make use of the voice of another party without his consent.”

34.

Although no West Indian or English decisions recognize property in personality per se, dicta in cases such as Clark v. Freeman and Dockrell v.

Dougall (supra) support the concept of a property interest as distinct from a privacy interest attached to personality. Just as the law recognizes

property in the goodwill or a business so must the law recognize that property rights attach to the goodwill generated by a celebrity's personality. On

that basis those rights are violated where the indicia of a celebrity's personality are appropriated for commercial purposes. And the principles of

unjust enrichment demand that a person must not unjustly benefit at the expense of another.

35.

The common law is not static. It has the capacity to develop “as new cases, arising under new conditions of society … [present] themselves for
solution.” Indeed in Canada and in several States of the United States of America the common law (in the widest sense) has developed to take

account of the commercial practice of utilizing without consent the name and likeness or image of celebrities. In that connection Mr. Hylton cited

Canadian and American cases including Krouse v. Chrysler Canada Ltd. (1973) 40 D.L.R. (3d) 15, Athans v. Canadian Adventure Camps Ltd.

(1977) 80 D.L.R. (3d) 583.

36.

In Krouse v. Chrysler Canada Ltd. (supra) an action picture of a professional football game was used in a device for advertising cars. The plaintiff,

one of the football players who was identified by the number on his uniform, had not consented to the use of the photograph and sued to recover

damages against the car advertisers on the basis of passing off and misappropriation of personality. Although the plaintiff's action failed, the Ontario

Court of Appeal recognized that it is possible to establish in certain circumstances the tort of appropriation of personality even if there be no passing

off proved.

37.

The court based such a tort on a right in the nature of a property right to the exclusive use of a celebrity's personality. In doing so the court

acknowledged that persons in the position of the plaintiff possess a notoriety as a by product of their status, and took judicial notice of community

recognition of the practice of persons to make their notoriety itself an object of commerce see pages 26, 28 and 30 of the Report. The Court held

however, that on the facts of the case the car advertisers had not committed the tort because the photograph had not been used to associate the

plaintiff with the commercial enterprise. It was the game of professional football that had been deliberately incorporated in the advertising device

and not the personality of the plaintiff who was only one of the participants of the game.

38.

As Mr. Hylton submitted, in the instant case it is Bob Marley's name and likeness which the defendant has exploited and associated with its

commercial enterprise O His is the only face on the T-shirts.

39.

In Athans v. Canadian Adventure Camps Ltd. (supra) the plaintiff was a professional water-skier of international repute. A drawing of his

photograph was used by the defendants in a brochure advertising a summer camp. The Ontario High Court held, relying on Krouse v. Chrysler
Canada Ltd. that although no case of passing off was established, the defendants were liable for the tort of appropriating the plaintiff's personality,

the unconsented representational image of the plaintiff by the defendant for commercial advantage being an invasion of the plaintiff's exclusive right

to market his personality.

40.

So, as has been pointed out, both Canadian cases acknowledge that the true object of proprietary protection in the tort is the celebrity's personality as

a commodity with a marketable business value, his name and likeness simply being indicia of that property interest: see Robert Howell op. cit. pp

175 and 176.

41.

From the foregoing analysis I respectfully conclude that our law recognizes a civil wrong, known in Canada as “appropriation of personality” and in

several States of the United States as, “breach of the right of publicity”. It is not so much that the cases have “uncovered a piece of the common law

and equity that had [hitherto] escaped notice …. as Cross J. once expressed himself in a passing off action - see Vine Production Ltd. v. McKenzie

& Co. Ltd. (1969) R.P.C. 1, 23 - but rather, the declaration of the tort results from the application of recognized principles of law seven if hitherto

diffuse) to particular fact situations arising under “new conditions of society”. The tort consists of the appropriation of a celebrity's personality

(usually in terms of his or her name and likeness etc.) for the financial gain or commercial advantage of the appropriator, to the detriment of the

celebrity or those claiming through him or her.

In the present case the detriment must be seen not only in terms of financial loss but in terms of loss of quality control in relation to the said T-shirts

manufactured and sold by the defendant. Such a control (as evidenced by the aforesaid non-exclusive license agreements which I hold, contrary to

Mr. Grant's submission, do not contravene the Fair Competition Act, 1993) is maintained by the plaintiff over the licencees of its right to use Bob

Marley's name and likeness etc. There is no question, however, that without permission the defendant manufactured and marketed for financial gain

T-shirts, of a quality inferior to the plaintiff's bearing the name and likeness of the late Bob Marley whose fame and reputation the plaintiff seeks to

protect as evidenced by the said agreements. The question whether the statement of claim discloses a cause of action against the defendant for

appropriation of personality depends, therefore, on whether that tort can be committed even though the celebrity is dead.

43.

Closely reasoned and helpful decisions in two American cases (again cited by Mr. Hylton) make it clear that the “right of publicity” defined as a

celebrity's right to the exclusive use of his or her name and likeness, is inheritable and devisable and that the owner of such right need not have

commercially exploited it before it can survive his or her death: Martin Luther King J Centre for Social Change Inc. v. American Heritage Products

Inc. (1983) 694F 2d 674; The State of Tennessee, Ex. Rel. The Elvis Presley International Memorial Foundation et al v. Gentry Crowell (1987) 733

S.W. 2d 89.

44.

In the Martin Luther King case the plaintiffs claimed inter alia that the manufacture and sale by the defendants of busts of Dr. Martin Luther King

violated Dr. King's “right of publicity” which they sought to enforce as assignees of the exclusive use of his name and likeness. After declaring that

the “right of publicity” is a recognized and distinct right in the particular jurisdiction; the United States Court of Appeals for the Eleventh Circuit

held (at page 682) as follows:

“For the reasons which follow we hold that the right of publicity survives the death of its owner and is inheritable and devisable.

Recognition of the right of publicity rewards and thereby encourages effort and creativity. If the right of publicity dies with the celebrity, the

economic value of the right of publicity during life would be diminished because the celebrity's untimely death would seriously impair, if

not destroy, the value of the right of continued commercial use. Conversely, those who would profit from the fame of a celebrity, after his or

her death for their own benefit and without authorization have failed to establish their claim that they should be the beneficiaries of the

celebrity's death. Finally, the trend since the early common law has been to recognize survivability, notwithstanding the legal problems

which may thereby arise.”

45.

Mr. Grant argued that since the plaintiff in the instant case has not shown that Bob Marley had himself licensed or authorised anyone to put his

name and likeness on T-shirts or other clothing, the plaintiff should not have the exclusive right to licence persons to do so now. So the question that

arises is this: must the owner have commercially exploited the right before it can survive his death? That question was answered by the Court of

Appeals, Eleventh Circuit in the Martin Luther case and I hold that that court's reasoning and conclusion are applicable here as well. There the

majority opinion states at page 683 this:

“That we should single out for protection after death those entertainers and athletes who exploit their personae during life, and deny

protection after death to those who enjoy public acclamation but did not exploit themselves during life, puts a premium on exploitation.

Having found that there are valid reasons for recognizing the right o, publicity during life' we find no reason to protect after death only those

who took commercial advantage of their fame. …. a person who avoids exploitation during life is entitled to have his image protected

against exploitation after death just as much if not more than a person who exploited his image during life.”

46.
In the Elvis Presley case also, the Court of Appeals of Tennessee concluded that recognizing that the right of publicity is descendible would accord

with principle in that:

“(1) The Court recognizes that an individual's right of testamentary distribution is an essential right. If a celebrity's right of publicity is treated

as an intangible property right in life, it is no less a property right at death.

(2) One of the basic principles of Anglo American jurisprudence is that “one may not reap where another has sown nor gather where another

has strewn.”

(3) Recognizing that the right of publicity is descendible is consistent with a celebrity's expectation that he is creating a valuable capital asset

that will benefit his heirs and assigns after his death.

(4) Concluding that the right of publicity is descendible recognizes the value of the contract rights of persons who have acquired the right to use

a celebrity's name and likeness. The value of this interest stems from its duration and its exclusivity. If a celebrity's name and likeness were to

enter the public domain at death, the value of any existing contract made while the celebrity was alive would be greatly diminished.

(5) Recognizing that the right of publicity can be descendible will further the public's interest in being free from deception with regard to the

sponsorship, approval or certification of goods and services. Falsely claiming that a living celebrity endorses a product of service violates the

law. It should likewise be discouraged after a celebrity has died.

(6) Recognizing that the right of publicity can be descendible is consistent with policy against unfair competition through the use of deceptively

similar corporate names.

47.

Again, those factors are equally applicable to the case before me. I hold, therefore, that Bob Marley, a celebrity of renown at home and abroad, had

a right to the exclusive use of his name and likeness or image. The right entitled him to exploit it commercially. He could, for instance, for a fee,

license persons to use his name and likeness etc. for commercial gain. That right survived his death. The plaintiff is the assignee of that right in

Jamaica. And as the statement of claim pleads, the plaintiff is invested with the proprietary right in the exclusive marketing for gain in Jamaica of

the license to use his image, photograph, name, all indicia of his personality. In my judgment, the commercial use of Bob Marley's name and

likeness or image by the defendant without the plaintiff's consent constitutes an invasion or impairment of the plaintiff's exclusive right as aforesaid

resulting in damage to the plaintiff. Such conduct on the defendant's part constitutes the tort of appropriation of personality, separate and distinct

from the tort of passing off.

Moneys had and received

48.

In the context of this case the plaintiff succeeds because the statement of claim discloses causes of action for passing off and appropriation of

personality respectively. Accordingly it is wholly inappropriate to consider the alternative claim for damages for money had and received on the

ground of unjust enrichment.

Remedies

49.

Mr, Grant agreed that if because of action for passing off is disclosed an injunction and damages would be appropriate remedies.

50.

Having regard to all the circumstances of this case including the fact that the defendant has shown no clear intention of discontinuing the wrongful

acts, I grant the plaintiff a permanent injunction in the teens sought as set forth in the first paragraph of this judgment.

51.

Although the statement of claim discloses two causes of action damages will not be awarded twice over. A single award of damages will suffice.
52.

In any case, counsel on both sides agreed that in the event that the plaintiff succeeds, the quantum of damages award able is $86,040.50. That sum is

based on what the plaintiff would have received had the defendant made and sold the T-shirts with the plaintiff's approval. The plaintiff, I am told

by counsel, has accepted the defendant's figures as to the number of T-shirts it has made and sold and as to the wholesale selling price therefor. The

agreed quantum has been arrived at by applying to those figures the royalty rate of 15% which, as the evidence indicates, the plaintiff applies to

sales made by its licensees.

53.

Accordingly, in addition to the injunction I award the plaintiff damages against the defendant in the sum of $86,040.50.

54.

The defendant must pay the plaintiff's costs which are to be taxed if not agreed.