The Moon Over The Sun – Can You Find a Personal Photo in a Public Image?

Issue 25 By X. David Zheng,[Copyright]

There is a common question: which came first, the chicken or the egg?

In the controversy regarding “stage image rights” and one’sover the right of portraiture, people seem to be preoccupied with an actor’s image and his personal likeness. Failing to find a proper solution, they have to content themselves with some theory to tie the stage image to a personal portraiture, only to createfind an awkward sresolution.

In Lan Tianye v. Tianlunwangchao Hotel, the Beijing Dongcheng District Court found that the actor, Lan Tianye, was entitled to the right of portraiture over a screen capture of a movie he was in (because Mr. Lan could unmistakably be identified), and, therefore, use of the screen capture without his permission was an invasion of his right to his own portraiture. In another lawsuit, the comedian Zhao Benshan’s image was used, again without permission, on certain product packaging. The court in Guangdong determined that the comedian’s image on the packaging was not his personal portrait, and, therefore, found no invasion of his personal right to his portraiture. These two, conflicting decisions aroused considerable controversy among scholars and the judiciary, who were split almost exactly fifty-fifty over the decisions.
In the opinion of this author, if there is some economic value in a performer’s stage image, then it should be protected in some way. The problem is, however, that such protection cannot be snugly found under the Copyright Law. The Law of Authorship in defining “performance” in Chapter IV, Section Two, Art. 37, provides that a performer may “authorize others to reproduce or publish audio/visual works which include his performance, and remunerate therefrom.” Such right of authorization is generally deemed to be given, and remuneration received when the performer signs the performance contract, and therefore exhausted. As to screen captures, it is usually considered as a joint work of authorship as between the producer, the director and the photographer, but the snapshot is hardly a work of the performer. It would hardly be convincing to label a stage image snapshot or a scene capture as a personal portraiture either by using common sense or a legal definition. However, it may well be worthwhile to consider similar situations in other jurisdictions involving the protection of one’s stage image.

What is worth noting, first of all, is that a stage image should not be compared to a personal portraiture. What is a personal portraiture? There is no absolute, conclusive legal definition, but it is generally understood to be a depiction of what a person looks like in his natural state. In this author’s view, it is a photographic recording of the “closest likeness of a person’s face.” For example, a personal ID photo taken in a photo shop can be a typical photographic recording of one’s personal likeness, which may be used for purposes of personal identification, a work permit, etc. Such a photographic recording may be pleasant to look at, or ugly, but we would not routinely consider it to be a piece of art, nor contemplate its economic value. Think of it: can a movie star use his brilliant movie image on his personal ID? By the same token, do movie-goers go to the theater to watch the movie stars’ personal portraits? Although a performer’s stage image and his personal portrait share some common elements – both can be traced to the performer as a person – it would be misleading to confuse a stage image with a personal portraiture.

The right to one’s own portraiture is a personal right; an inherent and inalienable natural right, which must be respected and protected whether stipulated by law or not. But a stage image (and broadly speaking, a “public image” of a public figure) is apparently different. Apart from identifying a person’s likeness, it possesses many characteristics that differ from a personal portrait. In fact, whether it is termed “stage image right,” “public image right,” or “portrait right,” what the plaintiff/actor sought in essence is a “moral right.” Recognition of moral rights often leads to an certainty of other existing lawful rights, and has been one of controversies between Anglo-American and continental jurisprudences.

First, a stage image exists only in public, in contrast to the privacy of a personal photograph. All performers are dying to make their images better known. Even the most shy, the most conservative, and the most private performer will have to understand that his profession is to show himself to the public, by the basic means of placing himself in public view. Hence, the right to a public image must, by definition, involve publicity. In this sense, any intention by a performer to seek privacy protection will conflict head-on with the nature of their performing profession.

Secondly, a performer’s public image has commercial value; an ordinary person’s image does not. For example, Zhao Benshan’s image will enhance the sale of some products; my picture, even if I pay to have it printed on a product, on the other hand, would never move anyone to make a purchase. Undeniably, all public image litigations involve some commercial activities (for authorized use or not); whereas, no allegation can ever be brought against one who covers his bedroom walls with pictures of movie stars, for this is a purely personal hobby, and no personal or commercial right is violated.

Moreover, the right to one’s public image differs depending on whether it is being used as a personal right, or whether it is being treated as a commercial right in the market economy. For instance, Zhao Benshan cannot, even if he so desires, allow another to use his own picture as a photo ID by that person; he may, however, if he so consents, allow others to use his image for commercial purposes and benefit from that agreement, or exclude others from any such use.

Accordingly, if it is a commercial right, how do we protect a public image? It is certainly uncomfortable to place it in the same category as a personal portrait, but other solutions, in this author’s view, are already available in the present legal framework, such as registering the image as a trademark. Taking out a trademark registration for one’s own public image is commonplace in other countries (e.g., Paul Newman of the Newman’s Own brand, and the “Colonel” of Kentucky Fried Chicken). Besides, any unauthorized use of a registered trademark can easily be found to infringe the mark. It is true, though, that trademark protection has its shortcomings, e.g., the range of protection has to be precisely laid out (by designating specific goods or services), and the purely commercial nature of trademark registration would hardly appeal to any public figures.

Beyond this, can we find any other solutions for redress? Litigation might be one choice, yet in the experience of this author, litigation alone is difficult to establish the existence of a protectable right. As China follows civil law practice, it is next to impossible to move a court to grant a right unspecified by the statutes. But it is not entirely impossible, 1 and foreign experiences may shed some light on the issue.

In the United States, a performer may claim a right of publicity, which may be fully protected. Johnny Carson once had an awkward case2 in which the household phrase, “Heeeeere’s Johnny!” that was also used every night when the famous comedian entered the stage was unflatteringly taken by the defendant as part of its company name to refer to a children’s portable toilet.3 In that case, the court faced the problem of whether a performer had the right of publicity in a theatrical introductory phrase that did not mention him by name at all. The court opined that a publicity right should not be so narrowly defined as to be limited only to one’s facial likeness, but should also include any image, sound, or phrase that is capable of being associated with the image of a public figure. Yet, can all public figures be automatically entitled to protection under this publicity right? Not necessarily. The conditions laid out by the court include the following:  (1) a publicity right is accorded only to public figures in public activities; (2) the contended right must have commercial value; (3) such commercial value must be consciously recognized and actively exploited by the public figure himself; and (4) such a right must have been infringed.

Using the analysis described in the Johnny Carson case, both the Lan Tianye and Zhao Benshan cases ought to be reversed. In Lan Tianye, the plaintiff asserted a privacy right to his portraiture, which, in this author’s view, could not have existed in a scene capture because it is hard to imagine that a public figure, after signing a performance contract and presumably being paid for his performance, could obtain a natural right (that is inalienable) to exclude others from exploiting a promotional scene snapshot. 4 In his complaint, the plaintiff claimed that he took great pride in his own image, and never allowed it to be used for any commercial purposes. In other words, he himself denied the possibility of exploiting the commercial value of his image. If neither a personal right nor a publicity right can be established, then what is the right that the plaintiff was seeking to protect? For this reason, the Lan Tianye conclusion was based on a faulty foundation.

The Zhao Benshan case is a totally different story. “Uncle Zhao” is a familiar face in various TV commercials, and Zhao, as a public figure, has been actively engaged in the commercial exploitation of his public image. In this sense, Zhao has a protectable publicity right, the infringement of which ought to be enjoined.

Does case law ever play a role in China, to any significant extent, as a source of written law with precedential value, in spite of the civil law tradition? Of course! Pizza Hut Inc. v. Hongtao, which was personally prosecuted by this author, is an unmistakable example of this. Prior to 1986, the “first-to-file” doctrine was absolute in China’s trademark practice. But after this case introduced the concept of well-known marks under the Paris Convention, such absolutism in the first-to-file rule was uprooted. The conclusion reached in that case was later codified into articles 31 and 41 of the Trademark Law (a registration obtained through fraudulent means or other unfair method may be removed from the register). It can be seen that the civil law system in China is not a hard and fast rule, and cases may be a source for legislative consideration. This, of course, cannot be achieved except by the concerted and unrelenting efforts of both the litigant and his agent. For this very reason, the author believes the public image of a public figure may be protectable either through the trademark law, or through litigation. The success of Mr. Lan may not be duplicated by others, as facts in each case may differ, while Mr. Zhao followed the wrong path and reached a wall. Can we not learn a lot from each of these cases?

Endnotes:
1. At the very least, the decision by Beijing Eastern District Court exemplifies that a stage image may be accepted as a personal photo, thereby extending protection of privacy right to such public images.
2. Johnny Carson v. Here’s Johnny Portable Toilet, Inc., 98 F.2d 831 (6th Cir. 1983).
3. The term “John” is a reference to a men’s bathroom and “Johnny” for the boys’ bathroom.
4. The scene snapshot involved in the lawsuit included several other actors; and the question presented to the court was whether each and every one of these actors may claim a separate personal right to his image.

About the author:
X. David Zheng is a professor of law at the Beijing Foreign Studies University, School of Law.

 (Translated by X. David Zheng)

 

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