Salvador Dali’s publicity right found to be alive and kicking

In a novel development of the court-made law protecting the right of publicity, in Fundacio Gala-Salvador Dali v VS Marketing (Israel 2005) Ltd (CC (Central Distr) 3247-01-08, August 28 2016), Justice Aharon Makover of the Central District Court has held that the right of publicity in respect of the name of Salvador Dali had survived the death of the artist for at least 25 years and devolved on the artist’s estate, represented by the Gala-Salvador Dali Foundation. The estate was awarded compensation for the unauthorised use of the artist’s name on the ground of unjust enrichment.

The Gala-Salvador Dali Foundation is a Spanish cultural organisation established to promote and protect the artistic, cultural and intellectual oeuvre of the painter Salvador Dali. The foundation acts on behalf of the Spanish government, to which Dali bequeathed all of his works.

In 2011 the foundation reached a settlement agreement with two Israeli companies – VS Marketing (Israel 2005) Ltd and Atid Brands Ltd (collectively ‘the companies’ or ‘VS’) – regarding the use of an artistic work called “El Triomf i el Rodoli de la Gala i en Dali” (‘the work’), in which the companies claimed to have acquired independent rights. A settlement agreement, which received the effect of a court judgment, addressed the permissible use that the companies could make of the work; among other things, it prohibited the use of Dali’s name other than for the purpose of attributing the work, in a defined form, and the use of Dali’s likeness.

In 2013 the foundation and its subsidiary, Demart Pro Arte BV, brought suit against the companies for breach of the settlement agreement and infringement of the foundation’s IP rights. The foundation claimed, among other things, that the companies and their franchisees had made excessive use of the name Salvador Dali and had thus improperly capitalised on Dali’s fame and goodwill. The foundation alleged copyright and trademark infringement, passing off, unjust enrichment and a tort under the Consumer Protection Law. 

The foundation also sued two other defendants (nationwide retail chain Ha-Mashbir La-Tzarchan and clothing retailer Beverly Hills Fashion Brands Ltd) who had offered for sale in their stores – for a period of 10 months, before the goods were taken off the shelves – menswear designed and manufactured by Beverly Hills Fashion (under a franchise from VS) that allegedly used the name of Salvador Dali improperly.

The foundation sought to rescind the settlement agreement with VS on the ground of breach of the agreement, and to obtain injunctive relief, an order for accounts and compensation from all of the defendants.

The foundation attempted to assert its registered trademark SALVADOR DALI in Class 3 for perfumes, arguing that clothing (which the foundation markets in other countries) and perfumes belonged to the same family of goods.

Interestingly, in 2016 the Israeli trademark office, by a decision of the deputy registrar (opposition to the registration of trademark 247693 (2016)), rejected an opposition by the foundation to the registration of the name of the work as a trademark by VS, but stressed in its decision that registration of the mark did not derogate from the registrant’s undertakings under the settlement agreement.

Refusing to rescind the settlement agreement, the court held that many of the alleged breaches (those by VS related primarily to its website and promotional materials) were within the confines of permitted use under the settlement agreement. It found that other breaches (notably, the use of the words “by Salvador Dali” on hangers and tags separately from the work), although in violation of the settlement agreement, did not justify the rescission of the agreement.

The court further held that trademark infringement had not been established, as the plaintiffs had failed to adduce proper registration certificates. It was noted that, even assuming that there were registrations in force, the plaintiffs’ marks that included the name Salvador Dali as the artist’s signature in stylised form (in Class 3 for perfumes, Class 14 for precious metals including jewellery, and Class 33 for alcoholic beverages) were not in respect of goods “of the same description” as the defendants’ goods (clothing) and, thus, did not fall within the scope of ‘registered trademark infringement’ under Section 11(9) of the Trademarks Ordinance (New Version) 5732-1972. The court also rejected the plaintiffs’ claim that their mark was a “well-known trademark” and the claim of passing off.

The case therefore hinged on the scope of protection afforded by the right of publicity. In this respect, the court applied Israeli judge-made law, laid down by the Supreme Court in its 2004 ruling in McDonald (Aloniel Ltd v McDonald (CA 8483/02 [2004]) and McDonald v Aloniel Ltd (ACH 4813/04 [2004])), which recognised the right of publicity – the right to control the commercial exploitation of one’s image, voice and name – as a valuable economic right, the infringement of which gives rise to an action on the basis of the unjust enrichment laws (rather than on the basis of the protection of privacy).

In this case, the court was faced with a question of first impression in Israeli law, which was specifically left unresolved by the Supreme Court in McDonald: whether the right of publicity survives a celebrity’s death and, if so, for what duration. An additional question was whether it could be transferred by succession (by way of comparison, the right of privacy under Israeli law is actionable for half a year after a person’s death, and the action is to be brought by family members).

While addressing comparative law – primarily the non-uniform approach to the right of publicity in various US state jurisdictions – and the rationale of protection afforded to the right of publicity under Israeli court-made law as a valuable property right, the court held that the right of publicity remains after the death of the celebrity. Having reviewed the duration of protection of various IP rights under Israeli law, as well as the duration of the right of publicity in various US jurisdictions, the court held that, without having to determine the overall duration of the right of publicity in Israel, such right should survive for at least 25 years after the celebrity’s death. In the present case, the alleged infringement of the right of publicity had taken place within 25 years of Dali’s death.

Lastly, the court held that, as a property right, the right of publicity can be transferred or passed on by succession and is thus actionable by the celebrity’s estate.

The court held that Beverly Hills Fashion and Ha-Mashbir had infringed, to a varying degree, Dali’s right of publicity through the sale of clothing and accessories bearing the name of Salvador Dali beyond what was permitted under the settlement agreement.

While the foundation estimated that compensation should amount to IS5,000,000, the court awarded, by way of judicial assessment, a total amount of IS450,000 (IS250,000 against VS for breach of the agreement via its website and presentations, and IS150,000 against Beverly Hills Fashion and IS50,000 against Ha- Mashbir for infringement of the right of publicity).

Legal costs were adjudicated at 55% (IS100,000) against VS (with another IS100,000 adjudicated in respect of the counterclaim), 11% (IS 20,000) against Ha-Mashbir and 34% (IS 50,000) against Beverly.

Over the course of autumn 2016, each party appealed to the Supreme Court.

This article first appeared on WTR Daily, part of World Trademark Review, in January 2017. For further information, please go to www.worldtrademarkreview.com