It’s a knockout! Publicity rights in the Philippines
01-10-2012
Augusto Bundang
The Honorable Court of Appeals upheld the right of publicity in the case of Andres Sanchez v Honorable Judge Ramon Paul Hernando, Emmanuel Pacquiao and the Office of the City Prosecutor of Quezon City.
The Honorable Court of Appeals (CA) upheld the right of publicity in the case of Andres Sanchez v Honorable Judge Ramon Paul Hernando, Emmanuel Pacquiao and the Office of the City Prosecutor of Quezon City, decided on July 7, 2009.
The case started when Emmanuel Pacquiao, the Philippine boxing icon and eight-time world champion, initiated a criminal suit for violation of Section 169.1 in relation to Section 170 of the Intellectual Property Code of the Philippines (IP Code), which reads:
“Section 169. False Designations of Origin; False Description or Representation, 169.1—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;”
“Section 170. Penalties—Independent of the civil and administrative sanctions imposed by law, a criminal penalty of imprisonment from two to five years and a fine ranging from 50,000 pesos to 200,000 pesos ($1,200 to $4,800) shall be imposed on any person who is found guilty of committing any of the acts mentioned in Subsection 169.1.”
“Pacquiao has a right to be protected from any unauthorised product endorsement which would falsely imply that he endorsed or approved certain goods and services.”
Pacquiao claimed that two entities, G2K Corporation owned by petitioner Sanchez, and In-A-Jiffy Enterprises (IAJ), publicly misrepresented and unlawfully used his name, image and goodwill without his prior permission, with the intention of conveying his personal endorsement of the entities’ product called the ‘Wow Magic Sing microphone’.
G2K and IAJ, which both supported Pacquiao in his 2006 bout against Morales by placing advertisements in the fight’s television coverage, purchased 3,125 copies of Pacquiao’s CD album with the plan of giving Pacquiao’s CD album free to customers who would buy a Wow Magic Sing package as part of its promotion.
The case was filed against Sanchez who sought to quash it. The trial court denied the move of Sanchez and ruled that the ‘image rights’ pertaining to a public figure are protected in Section 169.1 of the IP Code which mirrors the US Lanham Act and should apply on the basis of the statutory construction principle of ‘adopted statutes’.
The so-called ‘right of publicity’ in the US says that the use of a private person’s name or likeness in order to advertise a commercial product would be grounds for the issuance of an injunction and the award of damages for the invasion of the private person’s right to be let alone.
In denying the motion for reconsideration of Sanchez, the trial court cited the opinion of author V. Amador in his book Intellectual Property Fundamentals, which says that:
“A party acquires a protectable interest in a name or equivalent designation under Section 123.1(a) (of the IP Code) where the name or designation is unmistakably associated with, and points uniquely to, that party’s personality or persona. A party’s interest in a name or designation does not depend upon adoption and use as a technical trademark or trade name.”
Image rights, said the lower court, fall within the category of protected matters under the IP Code. Sanchez appealed but the CA denied it and explained that it is enough that it can be deduced from the filing that there was false or unauthorised product endorsement which would likely cause confusion to the public.
The registration of Pacquiao’s ‘image rights’ as a trademark is not mandatory as claimed by Sanchez, since Pacquiao is a high profile celebrity. As his name is at stake, he has a right to be protected from any unauthorised product endorsement which would falsely imply that he endorsed or approved certain goods and services.
On a similar note, the June 1, 2011, decision of the Supreme Court in Fredco Manufacturing Corporation v President and Fellows of Harvard College, which declared ‘Harvard’ a well-known name and mark, referred to Section 4(a) of Republic Act No. 166, the old trademark law, (now Section 123.1[a] of the IP Code) as identical to Section 2(a) of the US Lanham Act which is intended to protect the ‘right of publicity’ of famous individuals and institutions from commercial exploitation of their goodwill by others.
The High Court concluded that the act of Fredco in using ‘Harvard’ to evoke a desirable aura to its products exploited Harvard University’s goodwill commercially without its consent.
Augusto Bundang is a partner at Sapalo Velez Bundang & Bulilan. He can be contacted at: info@sapalovelez.com