Publicity Isn'T Really Public (Midterm Paper in Intellectual Property Law)

PUBLICITY ISN’T REALLY PUBLIC
(Midterm Paper in Intellectual Property Law)
TO:
ATTY. GLORIA ANASTASHA LASAM-AQUINO
PROFESSOR, CSU LAW
BY:
KRISTEL MAE J. BUNAGAN
18-01692
I. INTRODUCTION
Publicity implies the deprivation of most private aspect of someone’s life.

Especially with the proliferation of social media, celebrities are no longer just
people who act or sing, they are now influencers who have extensively developed
personal brands. Compare, for instance, a lipstick with the name of a famous artist
e.g. Kylie1 with another brand named “Ellana”2 on it. Despite being the same
product, the market perception is very different. This is because Kylie Jenner’s
personal branding is distinct from Ellana’s branding. This paper will discuss the
legal issues whenever the name, image or likeness of a celebrity or key persona is
used for commercial purposes.
With strong conviction, I humbly submit that the use of the name, image or
likeness of a famous person or key persona is used for commercial purposes
without his/her consent is illegal based on the following dispositions, to wit:
1. The Right of Publicity is recognized in the Philippines;

2. Image rights fall within the protected matters under the Intellectual Property
Code of the Philippines; and
3. Every person is accorded the right to privacy and does not lose it even when
they become celebrities.
II. JURISPRUDENCE AND LEGAL BASIS
1. The Right of Publicity in the Philippines is borrowed from the Lanham Act or
the Trademark Law of the United States. This was first introduced in the case
of Fredco vs. President and Fellows of Harvard College (Harvard
University)3 where the Supreme Court held that: “Section 4(a) of R.A. No. 166
is identical to Section 2(a) of the Lanham Act, the trademark law of the United
States. These provisions are intended to protect the right of publicity of
famous individuals and institutions from commercial exploitation of their
goodwill by others. What Fredco has done in using the mark "Harvard" and
the words "Cambridge, Massachusetts," "USA" to evoke a "desirable aura" to
its products is precisely to exploit commercially the goodwill of Harvard
University without the latter’s consent.”
In that case, the Supreme Court struck down a petition for cancellation of
registration filed by Fredco Manufacturing Corporation against Harvard
University alleging that the trade name “Harvard” has been first used by it for
its products. It was held that Fredco’s use of the mark “Harvard” coupled with
its claimed origin in Cambridge, Massachusetts, obviously suggest a false
connection with Harvard University. This act alone violates Section 4 (a) of
R.A. No. 166 which provides that:
“Section 4. Registration of trade-marks, trade-names and service- marks on the

principal register. ‒ There is hereby established a register of trade-mark, trade-
names and service-marks which shall be known as the principal register. The
1
www.kyliecosmetics.com
2
www.ellanacosmetics.com
3
G.R. No. 185917, June 1, 2011
owner of a trade-mark, a trade-name or service-mark used to distinguish his
goods, business or services from the goods, business or services of others shall
have the right to register the same on the principal register, unless it:
(a) Consists of or comprises immoral, deceptive or scandalous manner, or

matter which may disparage or falsely suggest a connection with persons,
living or dead, institutions, beliefs, or national symbols, or bring them into
contempt or disrepute;
(b) x x x “
It was also mentioned in that case that Section 4(a) of RA No. 166 is identical
to Section 2(a) of the Lanham Act, which the latter provides:
“(a) Consists of or comprises immoral, deceptive, or scandalous matter; or
matter which may disparage or falsely suggest a connection with persons,
living or dead, institutions, beliefs, or national symbols, or bring them into
contempt, or disrepute; or a geographical indication which, when used on or in
connection with wines or spirits, identifies a place other than the origin of the
goods and is first used on or in connection with wines or spirits by the
applicant on or after one year after the date on which the WTO Agreement (as
defined in section 3501(9) of title 19) enters into force with respect to the
United States.”
2. The name, image or likeness of a celebrity fall within the protected matters
under the Intellectual Property Code of the Philippines.
Section 123(c) of the Intellectual Property Code4 provides for the protection
against use of the “name, portrait or signature identifying a particular
living individual except by his written consent, or the name, signature, or
portrait of a deceased President of the Philippines, during the life of his
widow, if any, except by the written consent of the widow.” (Emphasis mine).
It is thus expressly stated therein that there must be consent of a particular

living individual before one can use his/her name, portrait or signature
identifying him/her. This means that any particular living individual be it a
celebrity or key persona has the right to protect his/her name, portrait or
signature against any use of exploitation whether commercial purposes. This is
made manifest by falling under the category of non-registrability in the said
law.
3. In a concurring and dissenting opinion of Justice Bersamin in the case of

Pollo vs. Constantino David5, he cited an American tort scholar, W. Posser
who published his review on the various decisions of the US Supreme Court
and od privacy laws. Notably, the law on privacy comprises of four distinct
kinds of invasion of privacy, which are: (a) intrusion upon seclusion; (b)
public disclosure of private facts; (c) shedding false light; (d) appropriation of
name and likeness. The fourth kind is relevant in this article. This is also
called the right of publicity or personality rights. It is the right of an individual
to control commercial use of his or her name, image or likeness or other
4
RA No. 8293
5
GR No. 181881, October 18, 2011
unequivocal aspects of one’s identity. It is penalized by Section 169 of
Republic Act 8273 which provides that:
“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; or
(b) In commercial advertising or promotion, misrepresents the nature,

characteristics, qualities, or geographic origin of his or her or another person's
goods, services, or commercial activities, shall be liable to a civil action for
damages and injunction provided in Sections 156 and 157 of this Act by any
person who believes that he or she is or is likely to be damaged by such act.”
This manifest that one cannot just use the name, portrait or signature of a
particular living individual for commercial purposes as it may have legal
consequences. Hence, one must not just use the name, image or likeness of a
person just because it carries advertising and marketing advantages. Every
individual is afforded the right to privacy which should not be trampled upon
even when one becomes the famous person in the world.

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PUBLICITY ISN’T REALLY PUBLIC

(Midterm Paper in Intellectual Property Law)

Publicity implies the deprivation of most private aspect of someone’s life.

1. The Right of Publicity is recognized in the Philippines;

II. JURISPRUDENCE AND LEGAL BASIS

“Section 4. Registration of trade-marks, trade-names and service- marks on the

(a) Consists of or comprises immoral, deceptive or scandalous manner, or

It is thus expressly stated therein that there must be consent of a particular

3. In a concurring and dissenting opinion of Justice Bersamin in the case of

“Section 169. False Designations of Origin; False Description or

(a) Is likely to cause confusion, or to cause mistake, or to deceive as to the

(b) In commercial advertising or promotion, misrepresents the nature,

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