United Kingdom Journals

Owning Diana: From People's Princess to Private Property

Alan Story, LL.B., LL.M.*

Lecturer (On Leave)
The Law School
The University of Hull

<wheatand@ici.net>

* Thanks for tips, comments, and assistance: Greg Alexander, Hazel Carty, Rakesh Doegar, Roger Glover, Wendy Gordon, Andrew Hicks, Phil Jackson, Roger Kerridge, Mary Jane Mossman, John Motron, Helen Norman, David Vaver, David Wall, and the anonymous referee of the Web Journal of Current Legal Issues.

Copyright © 1998 Alan Story.
First published in the Web Journal of Current Legal Issues in association with Blackstone Press Ltd.

Summary

This article assesses the claims of the Diana, Princess of Wales Memorial Fund, to intellectual property rights, specifically copyright, trade mark and rights of publicity, in the name and image of the deceased Princess. Tribunals and the courts should not recognise such claims, the article argues, as they conflict with basic intellectual property doctrine and coherent policy objectives. Nor does basic succession law support many of the Fund's ostensible claims.

Using a social relations approach to property, the article suggests that the "the public", rather than the Fund or Diana's Estate, have a superior claim to intellectual property rights in Diana because of how her value was created. Diana's meaning and value should remain a common asset; their commodification would represent another step in the propertisation of the public domain. One consequence, among others, of such commodification would be to put part of Britain's culture behind a user-pay turnstile and to limit access to a cultural icon.

The analysis is introduced by an assessment of what is behind the merchandising strategy of the "Diana" brand and by a brief look at the history of treating famous persons as intellectual property.

Contents

1. Introduction
2. Diana as an Object of Intellectual Property

(a) Famous Persona as Intellectual Property
(b) Merchandising of the "Diana" Brand

3. Diana and Intellectual Property Doctrine

(a) Copyright
(b) Trade Mark
(c) Right of Publicity

4. Owning Diana's Name and Likeness:

(a) The Fund's claim: What does it really own?
(b) The Public's Claim: How were Diana's Name and Image Created?

5. Access to Diana's Meaning in Public Cultural Spaces

Bibliography

1. Introduction

Hours after Princess Diana died August 31, 1997 in a Paris car crash, Tony Blair told the British people that they had lost "the People's Princess." As the scale of international mourning mounted and as accountants tallied up the prospective commercial value of her name and image, Blair's government, the Royal family, Diana's friends and advisors, Earl Spencer, and their lawyers faced a clear choice about her future "life" on earth: Should her value - as a person and princess, as a name, as an image - be propertised and commodified as private intellectual property? Or, conversely, should her value and access to her multiple meanings remain in the public domain, should no user-pay turnstiles be erected, should no one own that value; in other words, should the people own, in an intellectual property sense, the "People's Princess"? They choose the first option; populism, either Blairite or royalist, has its limits. Their logic recalls what an American legal academic suggested about the intellectual property rights of another dead celebrity, Bela Lugosi, Hollywood's Dracula. To declare "no property interest" in the "elusive property" of such names and images would be to reproduce "the most primitive state of property law"(Goettsch 1981, pp 993-94). In coming months and years, intellectual property tribunals and courts in both Britain and the United States will also be making choices about the copyright, trade mark, and rights of publicity implications of Diana's persona and who, if anyone, owns her intellectual property rights. This article previews the intellectual property claims and policy questions they will - or should - adjudicate.

First a bit of factual background. One party to most of these proceedings will be the Diana, Princess of Wales Memorial Fund (hereafter "the Fund"), established quickly after Diana died as a charitable conduit to disperse the millions of pounds that flowed in from the public, commemorative recordings, and the like. The Fund will be a party because, soon after Diana's death, her solicitors carried out a court approved post-death variation of her 1993 will and added clauses devising Diana's intellectual property rights to her sons, William and Harry. In turn, they and Diana's executors transferred some of their rights to the Fund who have taken up the role - part custodial, part commercial, and part chivalrous - of, to use its words, "protector of the intellectual property rights granted exclusively to it by the Princess's Estate." Acting for the Estate and the Fund, London solicitors Mischon de Reya made several applications in the autumn of 1997 for a trade mark in Diana's name and her image, submitting 52 photographs (26 colour, 26 black & white) of Diana from numerous angles and in various guises. They also applied for a trade mark in her signature as part of a stylised Diana logo. Trade mark applications have reportedly been filed in a total of 172 countries. The solicitors also stated in press reports that they were claiming copyright in the name "Diana, Princess of Wales" (Castle 1998). As a flood of tacky Diana souvenirs and trinkets entered the marketplace, the Fund responded with its first two endorsed "Diana" products: tubs of Flora margarine bearing Diana's logo and Littlewoods' lottery Diana scratchcards. The Fund is considering more than 1,000 other licensing deals and, as of August 1998, had licensed six official Diana products, ranging from Royal Mail stamps to scented candles to a Princess Diana Beanie Baby. Then in May 1998, the Fund and the Estate commenced a trade mark / right of publicity infringement action in the U.S. District Court in Los Angeles against the Pennsylvania-based Franklin Mint. The suit claims that Franklin, a well-known manufacturer of memorial plates, porcelain dolls, and related bric-a-brac, was making unauthorised use of Diana's image on several of its products. In August, the Fund was itself sued in the U.S. District Court in Delaware by the Illinois-based Bradford Exchange Ltd., another maker of commemorative plates, dolls, and music boxes. This second suit claims the Fund does not control any publicity rights or intellectual property rights to Diana and that Bradford is licensed by contract with the Fund to reproduce Diana's name, image, and likeness. The Trade Marks Registry of the Patent Office, which has been examining the various Diana trade mark applications for almost a year, will be rendering its decision shortly on the trade mark claims. This may result in further hearings and court action. Other Diana-related intellectual property lawsuits are likely in coming months.

After briefly sketching the history of famous names as intellectual property and contextualising the branding of Diana, I first assess whether the Fund's copyright, trade mark, and rights of publicity claims to Diana should be recognised. I have concluded the first two claims are highly problematic, extremely difficult to enforce, and, if recognised by British courts, could lead to significant changes in British intellectual property doctrine. I argue the Fund's claims are actually a right of publicity claim, a cause of action not recognised in the UK, masquerading, in part, as copyright and trade mark claims. A right of publicity, sometimes also called the tort of "appropriation of personality" (Frazer 1983) is defined as a property right, usually exercised by a celebrity, to control the unauthorised commercial use of his/her name, likeness, or other recognisable aspect of personality. In the U.S., and particularly in states such as California which has a specific "Celebrities Rights" statute tailored to Hollywood's commodification needs, the Fund may be more successful in asserting property in Diana's name which English law denies. Whether, on policy grounds, it should succeed there either is questioned. The next section of the article focuses on the questions: who can legitimately claim ownership of intellectual property rights in Diana and what intellectual property rights did Diana actually own? Answering these questions directly opens up the wider issues of both treating Diana and her value as a private cultural commodity and the implications of this approach for access to her meaning.

Several commentators have recently expressed serious concerns about the growing trend toward the "propertization" of the public domain by intellectual property law (Drahos 1996; Lemley 1997). The theory of "propertization", treating intellectual property as if it was real property,⁽¹⁾ "suggests that strong pressure exists to make sure that all valuable information is owned by someone, simply because it is valuable"(Lemley 1997, p 906). Commodifying as intellectual property the value of Diana's name, a national symbol, would provide further momentum to this worrisome international approach. As one U.S. judge, concerned about the diminishing public domain, warned us:

"Overprotecting intellectual property is an harmful as underprotecting it. Creativity is impossible without a rich public domain" (White v Samsung Electronics America Inc. 989 F2d 1512 (9^th Cir. 1993), Kozinski J. dissenting).

If anyone was part of the public domain it was Diana.

This article is geared to the specialist reader, the more generalised law reader, and those net citizens who have followed the Diana story in the press and through literally thousands of websites and net discussion groups. Celebrity deaths often attract huge popular interest; Diana's topped all others in media coverage. Yet intellectual property questions, one strand of that coverage, are typically not the subject of dinner-table conversation and, in Diana's case, the media have both badly educated their readers/viewers about its basic parameters and failed to investigate the sometimes absurd intellectual property claims of the various players in the Diana drama.

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2. Diana as an Object of Intellectual Property

(a) Famous Persona as Intellectual Property

Until relatively recently, famous persons on both sides of the Atlantic seldom attempted to obtain intellectual property rights in their name or image. Fame itself (and the psychic benefits stemming from widespread public recognition) was considered sufficient reward. A "widely shared conception" viewed "famous persons as a kind of communal property freely available for commercial as well as cultural exploitation" (Madow 1993, p 149)⁽²⁾. Based on the same spirit of non-commodification, plaintiffs, whether famous or not, who complained that their name had been used without authorisation, for example in advertisements, usually were unsuccessful in court; neither names nor personal images were considered property (Dockrell v Douglas (1899) 80 LTR 556). Until at least 1900, "commodification of name and likeness had not advanced sufficiently...for judges to conceive of persona as a `thing' "(Armstrong 1991, p 455). Even as recently as 1935, when mass media advertising was becoming well established and personal product endorsement, especially by celebrities, had become one of the favoured presentational devices of that trade, an American court voiced ethical objections to treating people as property, declaring "[f]ame is not merchandise" (Hanna Mfg. Co. v Hillerich & Brodsky Co., 78 F 2d 763, 766 (5^th Cir.1935). In the UK, Lord Greer likewise concluded during this same period that those entering occupations which invite publicity should "without complaint" consider their names and reputations "as matters of public interest, and almost as public property" (Tolley v J.S. Fry & Sons, Ltd. [1930] 1 KB 467, 477 ).

Although by this time British and American jurisprudence had begun to diverge as to whether names and personal images themselves deserved legal protection,⁽³⁾ U.S. courts initially concluded that the unauthorised commercial use of another person's name involved unfair competition, breach of contract, or was a tort. Tort injury offends a personal right, not a property right, and, as such, it is not a right that can be transferred to descendants. By the 1950s, however, British and American jurisprudence began flowing in completely separate channels when a landmark U.S. case, Haelan Laboratories, Inc. v Topps Chewing Gum Inc. 202 F 2d 866 (2d Cir. 1953), created a new right, a right of publicity.⁽⁴⁾ Subsequent American cases decided that this right of publicity was a full-fledged property right and, in many states, descendable. Today, such cases have become a rapidly expanding litigation area in U.S. entertainment, celebrity, and sports law (McCarthy 1988; Goodenough 1992; Jollymore 1994). But in this country, despite academic criticism and annoyance at the supposed narrowness of British jurisprudence and its failure to accept market realities, such as personality merchandising (see Coleman 1983, Frazer 1983), names and personal images still are not, by themselves, recognised as intellectual property. (Before British courts, the main causes of action against the unauthorised commercial use of a name remain trade mark infringement and passing off).⁽⁵⁾ What is particularly noteworthy about the Diana case is that it has become one of the first cases in either country where the descendants of a famous public figure, as opposed to the usual "private" plaintiffs - movie stars, singers, game show hosts, human cannonballs, and assorted celebrities - has sought to acquire intellectual property protection in a name and market that fame. (For one of the rare U.S. cases involving a non-entertainer, see Martin Luther King Jr. Center for Social Change, Inc. v American Heritage Products Inc. 508 F Supp 854 (1981).)

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(b) Merchandising of the "Diana" Brand

But drawing this dichotomy between the well known public figure and the entertainer or celebrity-" a person who is known for his well-knowness," according to Boorstin's often-cited definition (cited by Nairn 1988, p 35) - is perhaps not so clear cut. The Fund's proposed branding of Diana fuses elements of three marketing strategies prominent in the public and private spheres: (1) royal hallmarking; (2) character /personality merchandising; (3) celebrity endorsement. Yet, the "Diana" campaign also somewhat diverges from these three strategies and implicates some differing legal and commercial questions.

Royal hallmarking, the use of the royal arms and an official designation that certain products are favoured by the Royal household, is a long-standing marketing device. Such a designation gives household products, such as foodstuffs like PEEK FREAN biscuits, a certain cachet; you are eating what the Queen eats. Companies securing this privilege guard it jealously, in the past even forming protection organisations such as the Royal Warrant Holders' Association. To claim falsely that a product has royal endorsement remains an enumerated offence (Trade Marks Act (hereafter "TMA")1994, s 99). Hallmarking is form of monarchical intellectual property protection. In part, the Diana campaign is based on the same associations with royalty. As one marketing expert said about the motives of American junk mass mailing companies who purchased millions of Diana commemorative stamps for use as a promotional gimmick, "they are implying they have royal patronage"(Devoy and Reid 1998). Yet, traditional royal hallmarking aims at venerating an institution, all Kings and Queens, not an individual "Queen of Hearts." And, unlike the veneer of up-market or at least mid-market refinement usually associated with royal hallmarked goods, the initial endorsement by the "Queen of Hearts" of tubs of margarine and betting scratchcards was decidedly downmarket. Such unrefined associations inflamed staunch monarchists and belatedly led to the Fund's attempted re-positioning of the Diana brand in the marketplace.

Character/personality merchandising and celebrity endorsement, the other two marketing elements, involve commodity tie-ups (Gaines 1991, p xiii), the creation of a relationship between merchandised goods and a notable character and, in this case, between Diana as an international cultural icon and scented candles or beanie babies. Considering the emotions generated by Diana's death, the Fund's decision to have her personality commemorated through such tie-ups is not surprising in this culture. "In the peculiar but familiar customs of consumer capitalism, our emotions are directed towards objects, rather than action " (Williamson 1985, p 12). If you want to cherish or emulate Diana, buy a Diana beanie baby rather than join a group protesting landmines or calling for more AIDS research. As a merchandising effort, the Diana campaign is replicating what worked for the Walt Disney Studios in the 1930's with Mickey Mouse and for the movie STAR WARS in the late 1970s, when the merchandising of goods depicting its characters netted well over $100 million in a few years. Recent full-page ads in the U.S. newspapers for the digitally restored version of the film, THE WIZARD OF OZ, urge us to "follow the yellow brick road" to stores selling "Special Edition Wizard of Oz merchandise." Certainly, recent changes in the attitude of the British judiciary towards character merchandising will assist the Fund's efforts to construct its own yellow brick road. (See e.g. the `Teenage Mutant Ninja Turtle' case, Mirage Studios v Counter-Feat Clothing [1991] FSR 145; see also Carty 1993.) What is distinctive about the projected character merchandising of Diana is that, to date, most British character merchandising has involved fictional characters directed at the under-ten set, one text citing "Sonic the Hedgehog pyjamas, Care Bear toothbrushes, Thomas the Tank Engine pyjamas, and Postman Pat soaps" as typical examples (Phillips and Firth 1995, p 309). Whether the policy justification for legally protecting Thomas the Tank Engine is the same as that for protecting Diana as a beanie baby character is another matter. One commentator has called such abuses of celebrities - and of the public - "disneyfication" (Phillips 1998).

Merchandising characters and celebrities not only move products off shelves, but simultaneously make the character/celebrity more famous as well. Consider the example of U.S. basketball star Michael Jordan, labelled "the greatest corporate pitchman of all time", and the elementary "mutualism" that has developed between Jordan and the products he endorses such as Coca-Cola and Nike.⁽⁶⁾ When he endorses Coke,"it helps sell the product and it makes Michael Jordan more famous", argues economist Tyler Cowen (Gates 1998, p 48). (Thomas the Tank Engine has profited from the same phenomenon.) This mutualism operates on another level as well. If the Diana marketing campaign is as successful as its promoters hope, not only will Diana's fame be perpetuated - we will see her likeness on store shelves everywhere - but her meaning will travel from her to the companies (and their products) paying hefty licensing fees for the use of her name and image. Think Diana, think beanie bears; think beanie bears, think Diana. (British newspapers have employed the same mutualism: think Diana, think Daily Mail, and vice versa.) Diana's other meanings, for example as a campaigner against landmines, will, in turn, become diluted through these associations. Perhaps sports stars and entertainers regard such dilution of their own non-commodified talents as inevitable and "just part of the business"; whether Diana's legions will concur in this approach - or for how long - is not as certain.

Already, the Fund is facing a contradiction in its character merchandising campaign. On the one hand, the Fund talks of only employing Diana's name "at a rarefied level" (Christensen 1998). On the other hand, it would be unusual indeed if the licensing agreements between the Fund and Diana merchandisers put a ceiling on how many beanie bears or scented candles could be marketed; that's not how merchandising works. Further, commemorative souvenirs and collectibles, including those celebrating monarchy, are, by their very nature, either relatively low-cost and within the pocketbooks of the masses or sold at rip-off prices. If "rarefied" means over-priced, we can, in time, predict consumer backlash, something that has not plagued those flogging Elvis Presley ashtrays and other knickknacks commemorating "The King of Rock and Roll".

Yet Diana is not the typical celebrity endorser, a Michael Jordan or a Tim Henman putting their signature and stamp of approval on a basketball or a tennis racket. Her celebrity endorsement, her stylised logo and signature affixed to a tub of margarine or beanie bear, is, with respect, the endorsement of a deceased celebrity. The notion that a celebrity-endorsed product is actually endorsed by that celebrity simply cannot be sustained. Perhaps, however, this is unimportant. While members of the Royal family have "had to become celebrities in recent years", the "British Royals are never just celebrities...they remain something more as well" (Nairn 1988, p 35; emphasis in original). They possess a certain "mystique", a "something extra", which means that, at least among their own subjects, "monarchy dwells in a category all of its own" and "in some enigmatic way, appetite feeds off itself and is never sated" (Id. pp 34-35). And so if Jordan or Henman can expect to star in fewer commercials when they retire from their respective courts, marketing experts predict Diana's mystique will have a long shelf life. If a trade mark is acquired, its use maintained, and the renewal fees paid, that shelf life will be exclusive and legally protected ad infinitum (TMA 1994, ss 42-43) which shows how high the stakes are. Even rights of publicity are usually presumed to have some termination date.

To prevent others perhaps ever trading in Diana's royal mystique, to protect the exclusivity of its personality, and to carry forward this global merchandising campaign, the Fund says the state must establish intellectual property rights in her name and image. Should it concur?

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3. Diana and Intellectual Property Doctrine

(a) Copyright

If it arises, the copyright claim in Diana's name should be the most straightforward and transparent issue for the courts to adjudicate.⁽⁷⁾ For the Fund's intellectual solicitors to even make such a claim reveals the well-known puffery and bluffery of much intellectual property litigation. If they are successful, the already mouldy instrumental justifications of copyright as a reward for labour, as an incentive for investment, and as vehicle for social/cultural enrichment will further decompose. With copyright's hurdles already so low that the sloping VISA mark gets copyright protection in Canada (Visa International Service Assn. v Auto Visa Inc. (1991) 41 CPR (3d) 77 (Que. S.C.)), awarding copyright in someone's name recalls that old limbo rock refrain, "how low can you go"?

To qualify for copyright protection, the author of a creative work, such as a book, photograph, or pop tune, must demonstrate, as an initial step, first, that he or she is the author who created it, second, a work has been produced, and third, this work is original. (Copyright, Designs, and Patent Act (hereafter "CDPA") 1988 ss 1,3, 9). Original and work, as copyright terms of art, mean the work originated from the author (University of London Press Ltd. v University Tutorial Press Ltd. [1916] 2 Ch 601 at 608) and involved some intellectual effort (Ladbroke (Football) Ltd. v William Hill (Football) Ltd. [1964] 1 WLR 273). While this paint-by-number overview greatly oversimplifies the contested concept of originality and authorship (see Vaver 1997, pp 41-45; Jaszi 1991) and while the Fund's solicitors (or, fancifully, Diana's parents) might play with various hypotheticals, the name "Diana" or "Diana, Princess of Wales" would likely fail to qualify as an original literary work of authorship.⁽⁸⁾

Admittedly, there is somewhat of a problem with the case law usually cited on this point. In Exxon Corp. v Exxon Insurance Consultants International [1981] 3 All ER 241, the Court of Appeal concluded that the invented (and trade marked) word "Exxon" was not an "original literary work" because it did not convey information or provide instruction or give pleasure (Exxon at 248 (per Stephenson LJ)). This approach has legitimately been criticised because most words convey some information and, in Diana's case, mention of her name does give pleasure, among other emotions and meanings, to many people. Yet, to argue that selecting an infant's name involves the requisite "work or skill or expense" (Ladbroke at 291 (per Lord Pearce)) to qualify for copyright offends copyright's de minimis work rule; even if it did not, Diana's parents, not Diana, would potentially hold copyright for their name selection skills. Certainly fictional names are considered neither property (Conan Doyle v London Mystery Magazine Ltd. [1949] 66 RPC 312) nor, by themselves, protected by copyright. And neither are the names of real people; "there is nothing akin to copyright in a name. This has been part of our common law for a long time", stated Laddie J. in Elvis Presley Trade Marks [1997] RPC 543, 547. Further, while Arthur Conan Doyle may have authored Sherlock Holmes, Diana was, like any other real person, not the author of her own name. Questioning the work or authorship requirements themselves would be to question basic categories of copyright doctrine, categories necessary for the very perpetuation of that doctrine (Gaines 1991, p 15). The name Diana should not become Diana ©.

The image of the most photographed woman in the world is as valuable and as ubiquitous as her name, perhaps more so. Here significantly, copyright in photographs again decidedly works against the Fund's claim to own Diana. Except for photographs taken under a contract assigning rights to her, copyright in the literally millions of photographs of Diana is held by the photographers who took them or, in some cases, by the photographers' employers (CDPA 1988, ss 1(1)(a), 4(1), 9(1), 11(1)(2)). The statutory language of s 9(1) particularly resonates in the case of Diana's image; the photographic "author, in relation to a work, means the person who creates it." Although this approach contains its own contradictions (see Edelman 1979), these photographers own her images and possess full rights to use/assign/licence her photograph in newspapers, on T-shirts or for tacky souvenirs. This multiple ownership of her various images creates obvious conflicts if the Fund acquires trade mark in her photographic image as well. But one jet-setting American photojournalist, who has taken Diana's picture numerous times, told me confidently in an interview, "I'd love to face the Fund in court; I own her image".

Most of the above doctrine is covered in the introductory lectures of any university course on copyright. Yet, the Fund, believing it is on to a "very good thing" with its claim to own and manage the Diana franchise, is attempting to expand its Diana claim into the "Very Good Thing" of copyright (Vaver 1995, p 71). For copyright protection, "no money needs to be spent...protection is world-wide....One can start, stop, and finish exploiting the product as one wishes, charge whatever prices will bear for the rights or products produced under it, refuse licences whenever one wants...with relative immunity from competition or antitrust action as long as one behaves with a modicum of diplomacy" (Id. p 71). In Diana's case, this very good thing would presumably subsist, to conclude this fantasy, until the year 2067, 70 years after her death (CDPA 1988, s 12).

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(b) Trade Mark

The Fund's trade mark claim involves more doctrinally complex issues than does its copyright claim and next I assess both registrability of "Diana, Princess of Wales" as a name and as a photographic image and some of the issues that might arise in upcoming trade mark infringement actions.

(i) Registrability

As defined by the TMA 1994 s 1(1), a "trade mark" means "any sign capable of being represented graphically which is capable of distinguishing goods or services from those of other undertakings." Many signs qualify, ranging from KODAK to the roar of the MGM lion or the colour combination on a drug capsule, from the YUM advertising Bailey's Irish Cream to the shape of a Coca-Cola bottle. On the other hand, there are various absolute grounds for the refusal of registration, such as lack of distinctiveness or a mark which designates the quality of a good, and various relative grounds, such as being identical with an earlier trade mark on an identical good (TMA s 3 (1)(b), 5(1)). To take one often-cited example, PERFECTION could not be registered for soap because it designated the purported quality of that soap and was not distinctive (Crossfield's Application (1909) 26 RPC 837; for one summary of current registrability requirements, see Cornish 1996, pp 581-605).

Perhaps the greatest hurdle to trade mark registration that "Diana, Princess of Wales" will face is that it may be considered devoid of distinctiveness, meaning that a proposed trade mark would fail to demonstrate that no other meanings could be attributed to it when marking goods and services. BOOTS can be (and is) registered for chemists, but BOOTS could not be registered for footwear. Some surnames have the possibility of being trade marked (see CIBA Trade Mark [1983] RPC 75 for examples); very common surnames, such as Green, face greater difficulties if they have not already been used as a trade mark. What of "Diana"? Predicting the registrability of a name is not like predicting what time the sun will rise tomorrow⁽⁹⁾ and judges often tend to favour the use of analogies. Perhaps the closest and recent case law analogy to "Diana" occurred in Elvis Presley Trade Marks [1997] RPC 543 in which a Soho souvenir dealer successfully opposed registration of a UK trade mark in "Elvis" and "Elvis Presley." Both proposed marks failed the distinctiveness test, ruled Laddie J., because "...the more famous Elvis Presley is, the less inherently distinctive are the words `Elvis' and `Presley' "(Elvis at 552)⁽¹⁰⁾. If Elvis was and is famous, Diana, in life and in death, is and was even more famous, even less distinctive, and certainly so in the UK. In other words, if you see the name BOOTS, you say to yourself, "yes, the chemist"; by comparison, if you see the name "Diana", you do not say to yourself, "yes, the Diana brand of scented candles."

The Elvis judgment also contains eerily prescient words for the "Diana" registration when it addresses the origin function of trade marks, that is, trade marks indicate to consumers the source from which goods originate. Laddie J. concluded that when fans buy a poster or a cup bearing the image of a star, "I have no reasons to believe they care one way or the other who made, sold or licensed it", citing, as an example, the indifference "as to source" that occurred "when a myriad of cheap souvenirs" of Prince Charles and Diana were sold in 1981 to commemorate their wedding (Elvis at 554).⁽¹¹⁾

The Fund would no doubt argue that the 1981 situation was radically different from that prevailing now and that consumers buying Diana merchandise now do want to buy it from licensees of the Fund because some of the purchase price will go to charities that the Fund supports. There is some legitimacy to this origin argument. Nevertheless, authorised Diana memorabilia will not emanate from a single source, but rather from tens or hundreds of disparate profit-driven sources. Further, whether or not Diana becomes a trade mark, there is nothing to stop Diana's supporters from giving money directly to the charities of their choice without a licensing middleman. The charities' financial health is not dependent on Diana trinket sales; if they are, they should have another look at their operations. So playing the "charity card" does not trump other policy interests. In any event, awarding a trade mark in Diana would set a worrisome precedent for later cases unless the holding of such a case is limited, which would be atypical, to its particular facts; that is, trade marks in non-distinct signs can be registered if some of the proceeds go to charity. The TMA 1994 does not provide for such circumstances and to grant a trade mark would be reminiscent of the special pleading that resulted in the awarding, by statute, of perpetual copyright in Peter Pan to a London hospital (CDPA 1998, s 301). The coherence of copyright - and trade mark - would suffer another set back if such Peter Pan reasoning were to escape the confines of statute.

The Fund could have side-stepped this distinctiveness problem, if before applying for a trade mark, it had begun marketing "Diana" as a trade mark on some products. A new proviso added to the TMA 1994 states that if, before the application date, the sign "has, in fact acquired a distinctive character as a result of a use made of it", a later objection that a sign lacked distinctiveness would not, by itself, prevent registration (TMA 1994, s 3(1) proviso). Once a sign is already performing trade mark-like functions (e.g. showing that a product originates from a particular source), a rival trader cannot later challenge the sign's distinctiveness as this has already been demonstrated in the marketplace. Perhaps in early September and December 1997, when the Diana applications were made, the Fund's solicitors believed they needed to act quickly and immediately challenge potential merchandising rivals.⁽¹²⁾ But this haste may, in the end, cause the Fund much greater registration problems.

Another potential question mark over the proposed "Diana" trade mark involves the use of a royal/national symbol, but I address this below in Part 5. As for turning a particular photograph or portrait of an individual such as Diana into a trade mark, such a step is, in most cases, quite acceptable (Rowland v Mitchell [1897] 14 RPC 37 (CA);⁽¹³⁾ for a royalty case, see the 1978 trade mark registration of "Elizabethan Mead"(Reg. No. 1,035,277) ⁽¹⁴⁾). Successfully registering a photograph or portrait does not, however, prevent someone else from registering and using a significantly different photograph/portrait of the same individual as long as there would be no confusion in the minds of potential consumers. If a highly stylised cartoon of a smirking Queen Victoria was accepted as a mark to sell condoms - mind you, some monarchists might object - a photograph of a stern Victoria might be registrable for baking powder. The Fund is attempting to solve this multiple usage problem (for them) by registering 52 photographic images of Diana, in short, by monopolising her image and monopolising it on a wide range of goods. If some other merchandisers attempt to use another photograph of Diana (perhaps a startlingly different photo) on their own goods, the Fund would then presumably commence an infringement action on grounds of consumer "confusion" and/or "likelihood of association" and/or taking "unfair advantage" of the Fund's trade mark (TMA 1994, s 10).

The Fund's attempted image monopolisation is not, however, supportable and contradicts the basic philosophy of trade marking. Unless the Fund is actually planning to license the use of all 52 images - a highly unlikely scenario that would result in frenzied commodification- what will occur is the bad faith stockpiling of marks and images of Diana simply because others might want to use them. (For case law forbidding defensive registrations and stockpiling, see Imperial Group v Philip Morris [1982] FSR 72 (CA).) The Act itself requires that a trade mark applicant must state that he or she has a "bona fide intention" to use (or license use of) the mark (TMA 1994, s 32(3)).⁽¹⁵⁾ Trade mark law has traditionally presumed that trade marks, as property rights, were given to traders by the state in exchange for commercial use and to assist in drawing a connection between a trade mark, the goods to which they were affixed, and the consuming public. Without use, obviously there can be no connection. To abrogate this use and connection requirement for Diana's 52 photographs would be undercut one of the central justifications for trade marks, much like denying the work and authorship requirement in copyright. It would be another manifestation of the further propertisation of intellectual property and a break from the purportedly commercial utilitarianism underlying trade mark law.

This monopolisation issue leads to related policy questions in trade mark law and to my conclusion that what the Fund is actually requesting is recognition of a right of publicity in Diana. Trade mark law assumes that there is some correlation between the development of a particular good or service and the name or brand under which it is sold. It does not aim to protect a name or symbol per se, but rather that name as an advertising or differentiating device. The symbol itself is not supposed to directly or independently create utility. In the case of Diana, however, her name, image, and personality have, by themselves, acquired wide fame for almost 20 years; only now is it being considered as a device, as a brand to sell specific products. One of the sometimes unstated reasons that trade marks cannot be acquired in a place name, such as "London", " New York" or "Liverpool", is that such permission, if granted, would endorse the private appropriation of fame, goodwill, and particular associations that a trader had no part in creating.⁽¹⁶⁾ In short, it would legitimise naked free-riderism. On occasion, existing valuable signs can become registered; Richard Branson's "Virgin" or "Sunlight Soap" are examples. One commentator has argued, however, that "in most cases" when a symbol acquires value before it is used as a trade mark, the trader acquiring that mark has only a "very small advantage" over competitors because "most of the value of any trade mark will be created with its product" (Economides 1988, p 537). Diana is not such a case. Without the "Diana" association, beanie babies or scented candles would just be typical beanie babies or scented candles. Propertising Diana's name and creating American-style publicity rights in her name under the guise of trade mark are the real stakes.

In the same vein, one of the main stated functions of trade marks is their investment function - "marks are cyphers around which investment in the promotion of a product is built and that is a value that deserves protection " (Cornish 1996, p 527). Yet, there has been no investment in creating the brand name "Diana" in association with a product. Registering a Diana trade mark would again endorse free-riderism rather than fulfil any investment function.

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(ii) Infringement

As a practical matter, the Fund will, I think, have great difficulty in actually enforcing a "Diana" trade mark on a world-wide basis even if chooses to establish and fund an expensive and proactive intellectual property litigation arm. Already, the Fund's legal bills have been the subject of controversy and the funding of an aggressive McDonald's-style global litigation department would likely have to be paid for by increased licensing fees and, in turn, by consumers. The "genie" of Diana has already escaped from the lamp on a global basis. The Fund will now find it extremely onerous to put it back in the lamp and undertake a controlled release behind the protective fencing of intellectual property law. Litigating and winning a few test cases will provide a minimal deterrent. Yet, on the other hand, if the Fund does not pursue known alleged infringers who are not paying the Fund for the use of Diana, current and potential licensees may well ask: why should we pay licensing fees?

A spokesperson for the Fund has already stated that it is "not into litigation" and has no intention of going after the many small merchants and street vendors who are selling shelves full of Diana memorabilia. As she said, "we have to be very careful that we're not overly vigilant" (Christensen 1998). The tightrope that the Fund is walking is to acquiesce to certain known infringements, such as those allegedly committed by smaller British traders, but to bring infringement actions against larger American traders. This "we're nice guys", public relations approach to enforcement may play well within British public opinion but, if maintained, may not play as well in court. First, any smaller traders who rely on the Fund's clear assurance not to bring infringement actions against them and who build up a "Diana" trade may well be able to use the defence of acquiescence if the Fund later decides to take action against them (see Vine Products Ltd. v Mackenzie & Co. Ltd. [1969] RPC 1).⁽¹⁷⁾ Such merchandisers have been given an implied license to trade in Diana goods. Second, such acquiescence is not a mistake made by McDonald's, the restaurant chain, who have few hesitations in taking the public relations flak involved in pursuing almost every potential infringer, such as the owner of McMunchies, a Milton Keynes sandwich shop (Moyes 1996). Many, including me, find such "big stick" litigation repugnant, but McDonald's reasons that, without stamping out all non-authorised uses of its trade marked name, the public will become confused, their strong trade mark will become diluted, and their property will, in time, lose its propertiness, its capacity to exclude. As one trade mark attorney advises, "to maintain a monopoly in a trade mark, it is important to act quickly when infringements come to light" (Fogg 1998, p 79 ). With a possible Diana trade mark already weak in distinctiveness, with her name and picture widely used on souvenirs without permission or sanction for almost 20 years,⁽¹⁸⁾ with her name and photo already saturating the media for the past 18 months, and with many traders already having an implied trading licence, maintaining the essential exclusivity and propertiness of a Diana's trade mark will be a daunting and expensive task. It will be interesting to see if stakeholders in the Diana legend, her fans, endorse such a crusade and are willing to pay for it.

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(c) Right of Publicity

As the right of publicity does not exist in the UK, I will discuss this issue briefly here. One place to start is to trace out the jurisdictional, temporal, and commercial trajectory of Diana's right of publicity from the time she was alive in the UK to a California (or other) U.S. court where the existence of Diana's right may, in future, be litigated. Here is that trajectory:

1. Diana was a public figure, in fact a public symbol, in the UK;
2. The right of publicity is not recognised in the UK;
3. Diana, while alive, never attempted to exercise this right anywhere in the world;
4. Diana, while alive, never attempted to exploit her name or image for commercial purposes or private gain;
5. Diana died and obviously can never herself exercise her right of publicity;
6. This non-existent right (in the UK) was bequeathed in a post-death variation of her will to her sons, meaning that neither Diana nor William and Harry had any expectation, often the touchstone or justification for recognising property rights, that such rights could have been exercised. (If they had such an expectation, such rights would, at a minimum, have been included in the will she drew up in 1993 with the assistance of presumably experienced solicitors.);
7. William and Harry turned over enforcement of this right of publicity to the Fund;
8. The Fund is now preparing to exercise that right in a foreign jurisdiction, such as California, that does recognise that right under what is popularly known as the "Celebrity Rights" act (California Civil Code s 990).

To sum up, legal "strangers" to a foreign public figure are attempting to enforce in Los Angeles a right, intended for the use of U.S. celebrities, that a deceased, non-commercial figure could not assert in her own country, never exercised, and never expected to exercise.

Certainly there have been few right of publicity actions that pack together so many issues concerning the jurisprudential basis of the right of publicity, descendability, duration, economic justification, cultural access, statutory interpretation, conflict of laws, and other assorted policy matters. Hefty U.S. law review articles have written on each one of these issues. If a Diana right of publicity case actually goes to court in the U.S., it will likely be a judgment of interest. Take the question of foreign nationals claiming such a right. According to Thomas McCarthy, the recognised U.S. expert on the right of publicity, there is only a single reported case during the nearly 50 years of this complex line of cases involving a foreign national successfully claiming a right of publicity in the U.S. and, hence, overcoming conflict of laws objections (McCarthy 1988, release #20 (6/98) p 11-13). In this case, Bi-Rite Enterprises, Inc. v Bruce Miner Co. 757 F2d 440 (1^st Cir. 1985), members of three British pop groups, Judas Priest, Duran Duran, and Iron Maiden, sought an injunction to prohibit distribution in the U.S. of unauthorised posters of their groups. They were successful. Yet the many differences between the two cases are obvious and these are perhaps best revealed in the quotation from Zacchini, the leading U.S. Supreme Court case on publicity rights, that was used by the U.S. appeal court in Bi-Rite as the "basic policy interests" underlying this right.

"Of course, [the] right of publicity here rests on more than a desire to compensate the performer for the time and effort invested in his act; the protection provides an economic incentive for him to make the investment required to produce a performance of interest to the public" (Zacchini v Scripps-Howard Broadcasting 433 U.S. 562, 576 (1977).

One might agree that human cannonballs, such as plaintiff Zacchini, need an economic incentive to hone their particular skills. But surely there are certain limits to publicity rights and their enforcement. What is the considered and coherent policy rationale that can justify awarding rights of publicity to princesses, prime ministers, or presidents, alive or dead? Do they need a further financial incentive, beyond their salaries, to perform their respective functions? And are they motivated by a need to provide financial security for their dependants, another justification cited for the right of publicity and its descendability (Felcher & Rubin 1979, pp 1618-1619). Those making such claims for Diana have, I believe, a heavy burden in justifying them; a successful claim to "Diana" by the Fund would represent a another significant and worrisome private appropriation of the public domain.

What is really at play, I suggest, is an attempt by the former inner circle of the deceased Princess to protect what might be called her dignity interests. They want to sweep tacky Diana merchandise off the shelves; they say it offends her memory. Displaying such merchandise is considered, in effect, a libel or a defamation of a deceased person. Yet other dead persons are sometimes defamed and there is no legal course of action open to their descendants (Hatchard v Mège (1887) 18 QBD 771). Reputation interests are "personal" interests and expire at death, even for princesses. Without such a limitation, courts would be clogged with libel suits following the release of an unflattering biography of a deceased person and historians would have to have their research vetted by libel lawyers. Even as vigorous a proponent of expansive publicity rights as McCarthy has warned that "the law should not allow `personal' dignity or reputational interests to be asserted under the guise of a post partem Right of Publicity" nor should this right "serve as a substitute for the forbidden action against the defamation of the dead" (McCarthy 1988, release #1 (2/88) p 19-16). Trade mark and copyright law should not serve that function either.

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4. Owning Diana's Name and Likeness:

(a) The Fund's claim: What does it really own?

When the contents of Diana's revised will were disclosed in March 1998, media attention focused on the amount of money Diana's had left to her sons, £12.9 million net, and on a collection of mementoes bequeathed to 17 godchildren. As a legal question, such transfers are straightforward. When she died, Diana held the money (mostly in the form of stocks and bonds) and the nature, description, and ownership of the mementoes were, presumably, beyond dispute. Hence, she had an unchallengeable legal right to transfer them. The media paid much less attention to the far more significant variation or, more accurately, post-death addition, to Diana's will undertaken by her solicitors: the ostensible transfer of her entire intellectual property rights to her sons. Most people assumed, no doubt, that these transfers were equivalent to the transfer of the money and mementoes; that is, rights to copyright are often included in a will, Diana owned all of the intellectual property rights in her name and image when she died, and thus she had a legal right to transfer them for her children's benefit. The Times reported that Diana's revised will ensures her sons will have "a potentially large income from intellectual property rights - copyright fees for the use of images of the Princess, for example"(Hamilton 1998). In other words, the transfer of her intellectual property rights was portrayed as another commonplace legal event and anyone else exercising these rights would be infringing the boys' rights. The fact that she had undisputed title to shares and mementoes was conflated with the purportedly undisputed title to Diana's intellectual property rights. This is a highly misleading assumption.

Perhaps the best way to unpack this assumption is to ask: exactly what intellectual property rights did Diana own at the time of her death? (A quick digression into basic succession law: (a) An ancient legal principle dictates that "No man can devise anything but what he has to his own use" (Bransby v Grantham (1577), 2 Plowd. 525, 526); (b) As explained above, there is no legally-recognised property interest in a name, whether Diana or John Doe, and hence no property interest to transfer; (c) A person can only transfer property which he or she owned at death: "a will speaks from death as to property"(Kerridge 1996, p 215); (d) a testator such as Diana does not hold title to property that he or she might obtain in the future, known as a "bare possibility."⁽¹⁹⁾ Such mere expectancies cannot, by themselves, be transferred (Jones v Roe (1793), 3 Term Rep 88).) ⁽²⁰⁾ Here is Diana's intellectual property inventory: I am not aware of any patent rights Diana held. As for copyright, her possible claims would be limited, in all likelihood, to the following: (a) copyright in any written works she authored, probably limited to personal letters; (b) possible (though much disputed) copyright in any tape recorded interviews, such as those conducted by Andrew Morton, author of the best-selling Diana, Her True Story-In Her Own Words ;⁽²¹⁾ (c) copyright in those photographs of Diana in which the photographer transferred copyright to her, for example, by gift or by contract as a commissioned portrait. In all other cases, copyright in her image would, as explained earlier, subsist with hundreds of photographers; (d) possible (though again debatable) copyright in her signature as an original artistic work.⁽²²⁾ As for trade mark, she had no property rights in a "Diana" trade mark as no such trade mark had been applied for before her death.⁽²³⁾ The possibility that Diana, if she were still alive, might have applied in the future for a trade mark in her own name or image does not give her Estate or the Fund any property rights today. As for publicity rights, she had none in the UK and may be successful in asserting such a claim in the United States or other jurisdictions that may recognise claims of foreign nationals. In sum, when Diana transferred her intellectual property rights to her sons, she was not transferring a great deal. Most of the intellectual property rights seemingly claimed by the Estate - because Diana purportedly devised them - did not and do not exist.

The notion that Diana held extensive intellectual property rights in her name and image was reinforced when the re-written will transferred her intellectual property rights to a separate fund to benefit either Harry and William or charities, such as the Memorial Fund. Harry and William understandably had no stomach (nor the required marketing infrastructure) to launch a world-wide "Diana" merchandising campaign that the Fund has undertaken. This seems quite straightforward. Yet, at the same time, the media suggested that this post-death transfer of intellectual property rights - first to the boys, then to the Fund - was motivated by a desire to reduce the tax liabilities of the two princes, a common method for richer families, such as the Windsors, one of Britain's wealthiest families, to shift and reduce tax liabilities. "Some of the tax liabilities might be alleviated if the intellectual property rights are transferred to the Princess of Wales Memorial Fund, which is a charity," The Times reported (Boffey 1987). The coherence and fairness of such post-death tax shifting can be challenged ⁽²⁴⁾ but, as a practical legal move in this case, it seemed to make sense. Yet to follow the logic of this motivation suggests that Diana owned sweeping intellectual property rights in herself when she died, that these rights were worth hundreds of millions of pounds, and, as The Times reported, that the resulting huge tax liability from her existing rights "could wipe out all the cash the young Princes would inherit." (Id.) In fact, as suggested above, the total monetary value of Diana's intellectual property rights at the time of her death was much more modest. Moreover, if neither Harry and William nor Diana's Estate and the Fund attempted to establish new rights, the tax bill would be negligible. What is at stake, then, is not the seamless transfer of existing intellectual property - from Diana to her sons to the Fund - but rather, the creation of new (that is, previously non-existent) intellectual property rights in "Diana." If these claims are not recognised by the courts, neither the Estate nor the Fund will be deprived of any property rights because they never existed. The conclusion: whatever happens, there will no intellectual property loss, only potential property gains.

This conclusion does not imply that, at the time of her death, Diana's name and image had no value in the legal sense of that word. But, except for the limited intellectual property rights mentioned above, such value was "propertyless" value. As Cohen explains, just as "property may exist without value," e.g. an individual's personal papers of no value to anyone else, "value may exist without property", e.g. air or sunshine (Cohen 1954, p 364). In other words, Diana's value or utility had the capacity to satisfy human needs and desires (and continues to do so), but, unless the state recognises a property right in her name and unless the state and the Fund create a scarcity in the Diana name and brand, a principal function of trade mark law, that value will not be property and certainly not private property. And creating scarcity is one of the main aims of the Fund's merchandising campaign. As a solicitor for the Estate explains, "I hate to use the word `brand' because it sounds horrible, but [Diana's] intellectual property rights are better used at a rarefied level" (Christensen 1998).

The above orientation significantly denaturalises the expansive claims of the Estate and the Fund reported by the media. Commercial enterprises involved in litigation with the Fund may have few hesitations in pointing this out.

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(b) The Public's Claim: How were Diana's Name and Image Created?

If the Estate and the Fund currently hold few intellectual property rights in Diana, are they any other possible claimants? An alternative orientation, sometimes called the "social relations" approach to property (Singer 1997, p 20-23), would ask: over the past 20 years, how did Diana's image become so valuable? Who created it? Was it an individual act of creation, the product of individual genius, or was it created by many people within a particular societal relationship, structure, and context? Given that Diana was a public figure par excellence and given the particular relationships and intimacy, real or imagined, that existed between Diana and her legions while she was alive, should private parties be given the power, now that she is dead, to exclude others - or exclude them unless they pay a licensing fee charged, in turn, to consumers? Should Diana's value, which during her lifetime lacked "private propertiness" because of its endless supply and its royal connection, now become commodified as private property, a scarce intellectual property resource?

Such a social relations approach to intellectual property can be uncovered in an 1980 U.S. Elvis Presley case. It involved an attempt by a not-for-profit foundation in Elvis' hometown of Memphis, Tennessee to sell pewter replicas of a planned Elvis statute in Memphis as a fund-raising technique. In refusing to issue an injunction requested by a company that had been assigned Elvis' rights of publicity, a U.S. appeal court explained: "fame is often fortuitous and fleeting. It always depends on the participation of the public in the creation of the image. It usually depends on the communication of information about the famous person by the media....The memory, name and pictures of famous individuals should be regarded as a common asset to be shared " (Memphis Development Foundation v Factors Etc., Inc. 616 F.2d 956, 958, 960 ( 6^th Cir., 1980) cert denied 449 US 453 (1980)).⁽²⁵⁾ After more than 18 months of unceasing media coverage that focused on the supposed unique fame and special qualities of "England's Rose", applying and deepening this orientation is helpful in challenging the conventional wisdom about Diana's fame, and, in particular, how it arose.

The transformation of Diana Spencer, kindergarten teacher, into Diana, Princess of Wales, was the result of both happenstance (meeting and marrying Charles) and of pre-existing structures (the existence of the monarchy). Although she certainly developed, in time, more style and public relations savvy than the rest of the royal family, Diana principally acquired her fame and celebrity status because she was a member of that taxpayer supported, constitutionally prescribed institution and family. Royal family membership is itself determined by chance - "after all, it is merely an accident of birth that has made Prince Charles and not my brother the heir to the throne," Williamson (1986, p 79) reminds us - and its pre-eminence is based on inherited titles, including the title "Princess of Wales." Moreover, her image was created and played out within an existing system of exalted social meanings and privileging roles, such as "princess" (with all the sense of fairy tale and of future destiny implicit in that word ), "wife" (for 15 years) of the future king, "mother" (forever) of his successor. Much (though not all) of Diana's fame, then, was not principally self-created, but rather, for the most part, pre-determined and inevitable. The cultural production that creates fame "is always (and necessarily) a matter of reworking, recombining, and redeploying already-existing forms, sounds, narratives, and images" (Madow 1993, p 196, emphasis in original). Even more than other deceased celebrities and icons - and Diana's fame is sometimes compared to that of Elvis and Marilyn Monroe - her fame was conferred primarily by her structured pre-existing relationship, a monarchical relationship, with the British people. Her title of "princess" made her a predestined candidate for extensive media coverage, no matter what her personality or talents. And, because of royalty's still exalted, though recently more tarnished, role in British society, she was also assured of having her fame recognised and, in turn, created by the British people, again without regard to personality or talent. You don't need either to be famous if you are a member of British royal family.

Of course, Diana was not, in some ways, a typical royal. It was precisely because of her personality, her talents (for example, at fund-raising for charities and at marketing royalty itself), her appearance,⁽²⁶⁾ and the happenstance of her unexpected death that her fame and role increased several fold in comparison with the typical royal. Some have suggested, in fact, that "her greatest achievement was to craft an `image' for herself "(Bhabha 1998, p 106). This individualised notion of creation further mythologises both the nature of image making and Diana; in any event, her fame was and still is a relational fame. As a legal subject, Diana became the "The People's Princess" precisely (and only) because of her relationship with "the people" and only because some of "the people", her subjects, recognised her as such. Similarly, when Diana spoke in 1995 of wanting to become a "Queen in people's hearts", that status could only be realised through a process of mutual recognition, by people finding a place within their hearts for her.⁽²⁷⁾ Diana was, as well, the object of more than the usual media fixation with the royals. It was this media attention and particularly the saturation photographic coverage of her every move - whether dancing with John Travolta at the White House or inspecting mine fields in Angola - which did much to give her name and image value. Even more than most other celebrities, Diana's image was, in large measure, a created image. Simultaneously and as a response to this coverage, it was participatory public events and spectacles, such as her 1981 wedding or the outpouring of grief when she died, that solidified her fame.

The point then is neither to deny agency to Diana nor to deny she had particular talents and abilities and became a highly personalised symbol for many people around the world. Rather, we need to emphasise what was principal and most determinative of her fame and its creation, and what was secondary. In such circumstances, the typical justifications for intellectual property ownership rights, such as a reward for labour and individual skill or for risky investment, cannot be coherently applied. Diana was primarily a public creation and should remain public, not owned and commodified as if she was a private creation.

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5. Access to Diana's Meaning in Public Cultural Spaces

The ownership of intellectual property, like other property relationships, expresses a legally sanctioned power relationship, the power over things, and the power to exclude. Here I want to suggest a few cultural consequences that will (or may) occur if the name and image of Diana, as a public creation, undergoes another transformation and becomes a privately owned trade mark or other form of intellectual property.⁽²⁸⁾

Using national symbols: When trade marks first became part of an internationally-recognised system at the 1883 Paris Convention for the Protection of Industrial Property, one entire article, Article 6, was devoted to the prohibition of trade marks in state emblems, flags, and other national symbols. Delegates believed such symbols should remain in the public domain and not be used to the advantage of individual traders. In the same spirit, the TMA 1994 ss 4, 57-59, contains prohibitions against registration of the Union Jack, the Olympic Symbol and, of particular interest in the case of Diana, representations of any member of the Royal family or devices suggesting Royal patronage (ss 4(1), 99). One can get into a spirited debate whether Diana was a member of the Royal family after her divorce; what is not debatable is that she acquired most of her fame and value while a member of that family. And certainly many prospective consumers of Diana memorabilia will think they are purchasing a representation of a royal figure, the admittedly unofficial "People's Princess" and "Queen of Hearts". In any event, such representations can be used with the consent of the Royal family. The end result, authorised or not, of turning Diana into a trade mark would be, however, the propertisation of a national symbol.

Symbols as communication tools: What distinguishes certain famous names and symbols - for example in the U.S., Martin Luther King Jr. or in the UK, Diana - from ordinary names is "that they are names which convey meaning....(they become) a symbol...a tool of communications, much like any other word in the dictionary ...(and) function principally to communicate a concept "(Jollymore 1994, pp 125, 130). Diana herself has become a tool of communication and taken on many meanings, ranging from "the greatest force for republicanism since Oliver Cromwell" to "the American princess we (Americans) never had", from a "philanthropic `transindividual'" to a "tremendous natural flirt" and "fashion icon". One of the main aims in acquiring intellectual property in a name or image is to control the meanings of that sign and to authorise or refuse its use by others. If, for example, an anti-landmines group wanted to use Diana's name or image to make a political point or as a device to sell own T-shirts, that is, as a communications tool, the Fund could refuse such a use or forbid certain other representations that it did not endorse. The Fund would be given power over Diana, it would become the cultural authority over her meaning, a move simultaneously reinforcing the authority of royalty itself. Alternatively, the Fund might suggest that the number of "Diana" representations should be restricted; scarcity usually increases value. This inhibiting approach has already taken hold at the Home Office which, with the consent of The Fund and Buckingham Palace, has rejected (as of July 1998) more than half of the 100 "serious applications" from local authorities and institutions wanting to name public buildings and other facilities after Diana. "We need to keep a tight rein on namings because we do not want to encourage a cult of Diana", said Paul Burrell, Diana's former butler now associated with the Fund (Hardman 1998). Coombes provides us with alternative orientation: intellectual property law prevents "us from using the most powerful, prevalent, and accessible cultural forms to express identity, community, and difference" (Coombes 1991, p 1855).

Free speech issues: The Fund demonstrated this "authority over" attitude in early 1998 when Mirror Television announced that it would be making a docu-drama movie, titled `The People's Princess - A Tribute'. Lawyers for the Fund quickly dispatched a letter stating that "[p]ermission to exploit the name, image and likeness of Diana, Princess of Wales is required before such a project can proceed"(Mirror Television press release, on file with author). This specious claim had no legal basis. No actual legal action followed and the movie was shown on television. Yet, if the Fund does acquire a trade mark in Diana, its legal basis to stop production and screening of such movies would be strengthened. Even if it did not succeed in court, it possesses significant financial and legal resources to harass filmmakers, photographers, authors, and others who might want to show works the Fund does not approve. Calling the Fund's application "a frightener", London media lawyer Robin Fry has said "what is worrying is that instead of being used for legitimate commercial purposes, this will be a means of censorship"(Moyes 1997).⁽²⁹⁾ In the U.S., its First Amendment occasionally provides at least some protection against such censoring attempts, though even here, in many conflicts between a property right (such as a right of publicity) and free speech, property interests tend to emerge victorious (Jollymore 1994, pp 138-141). In the UK, which does not provide constitutional protection for speech, such concerns about free speech are even more pressing as The Spycatcher case revealed.

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6. Conclusion

In a 1995 interview with the BBC, Diana concluded that "they've decided that I am still a product, after 15, 16 years that sells well, and they all shout at me, telling me that: `Oh, Di, look up. If you give us a picture, I can get my children to a better school' " (Christensen 1998). It should come as no surprise then that the Fund would decide to privilege one of her talents, that of royal/celebrity endorsement, nor that prospective licensees would recognise that her widespread fame could also be used to sell beanie bears and other commodities. Globalisation and the technological advances of the media in recent years have further increased her value. Shutting down the merchants of tacky Diana memorabilia, who also understand her value, is cited as one of the main reasons why the Fund requires intellectual property protection for Diana. Even if such a goal could be realised, the consequences - financial, social, legal, and cultural - do not justify such protection. The question remains: why must something be owned by someone simply because it is valuable?

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Bibliography

Armstrong, G (1991) `The Reification of Celebrity: Persona as Property' 51 Louisiana Law Review 443.

Bhabha, H (1998) `Designer Creations' in Merck, M (ed) After Diana (London: Verso) 103.

Carty, H (1993) `Character merchandising and the limits of passing off' 13 Legal Studies 289.

Castle, S (1998) ` Blair condemns tacky Diana industry' The Independent, 15 February.

Christensen, J (1998) `The commercialization of a princess' Cable News Network
<http://www.cnn.com/SPECIALS/1998/08/diana/diana.commerce/index.html>.

Cohen, F (1935) `Transcendental Nonsense and the Functional Approach' 35 Columbia Law Review 809.

Cohen, F (1954) `Dialogue on Private Property' 9 Rutgers Law Review 357.

Coleman, A (1982) `The Unauthorised Commercial Exploitation of the Names and Likenesses of Real Persons' 7 European Intellectual Property Review 189.

Coombes, R (1991) `Objects of Property and Subjects of Politics: Intellectual Property Laws and Democratic Dialogue' 69 Texas Law Review 1853.

Cornish, W (1996) Intellectual Property : Patents, Copyright, Trade Marks and Allied Rights, 3^rd edn (London: Sweet and Maxwell).

Devoy, A and Reid, T (1998) `Firms use stamps as business gimmick' The Daily Telegraph, 25 January .

Drahos, P (1996) A Philosophy of Intellectual Property (Dartmouth: Aldershot).

Dyer, C (1997)`Executors could halt Diana book' The Guardian, 4 October.

Edelman, B (1979) Ownership of the Image: Elements for a Marxist Theory of Law, trans. Kingdom, E ( London: Routledge and Kegan Paul).

Felcher, P and Rubin, E (1979) `Privacy, Publicity and the Portrayal of Real People by the Media' 88 Yale Law Journal 1577.

Fogg, J (1998) `Brands as Intellectual Property' in Hart, S and Murphy, J (eds) Brands-The New Wealth Creators (London: Macmillan Press).

Frazer, T (1983) `Appropriation of Personality--A New Tort?' 99 The Law Quarterly Review 281.

Gaines, J (1991) Contested Culture: The Image, The Voice and The Law (Durham: The University of North Carolina Press).

Gates, H (1998) `Annals of Marketing-Net Worth' The New Yorker 47, 1 June.

Goodenough, O (1992) `The Price of Fame: The Development of the Right of Publicity in the United States- Parts 1 & 2 14 European Intellectual Property Review 55 &90.

Goettsch, R (1981) `The Right of Publicity: Premature Burial for California Property Rights in the Wake of Lugosi' 12 Pacific Law Journal 987.

Gray, K (1993) Elements of Land Law, 2^nd edn (Butterworths: London).

Hamilton, A (1998) `Diana leaves £13m to sons after paying £8.5 million in tax' The Times, 3 March.

Hardman, R (1998) `Anti-cult curb on buildings in the name of Diana' The Daily Telegraph, 20 July.

Holyoak, J (1993) `United Kingdom Character Rights and Merchandising Rights Today' Journal of Business Law 444.

Jaszi, P (1991) `Towards a Theory of Copyright: The Metamorphoses of "Authorship"' 40 Duke Law Journal 455.

Jollymore, N (1994) `Expiration of the Right of Publicity - When Symbolic Names and Images Pass into the Public Domain' 84 The Trademark Reporter 125.

Kerridge, R (1996) Parry & Clark: The Law of Succession, 10^th edn ( London: Sweet & Maxwell).

Lemley, M (1997) `Romantic Authorship and the Rhetoric of Property' 75 Texas Law Review 873.

Lyons, D (1997) `Elvis All Shook Up by the High Court' 19 European Intellectual Property Review 613.

Madow, M (1993) `Private Ownership of Public Image: Popular Culture and Publicity Rights' 81 California Law Review 125.

McCarthy, J (1988) The Rights of Publicity and Privacy (New York: Clark Boardman).

McGeehan, A (1997) `Trademark Registration of a Celebrity Persona' 87 Trademark Reporter 351.

Michaels, A (1996) A Practical Guide to Trade Mark Law (London: Sweet & Maxwell).

Moyes, J (1996) `Big Mac chews out little Mrs McMunchie' The Independent, 24 September.

Moyes, J (1997) `Why patenting this face could help boost celebrity fortunes' The Independent, 3 December.

Nairn, T (1988 ) The Enchanted Glass: Britain and its Monarchy (London: Hutchinson Radius).

Phillips, J (1998) `Life after Death' 20 European Intellectual Property Review 201.

Phillips, J and Firth, A (1995) Introduction to Intellectual Property Law, 3^rd edn (London: Butterworths).

Reuters (1998), `Diana lawyers file new salvo in California lawsuit' 19 June.

Singer, J (1997) Property Law: Rules, Policies and Practices, 2^nd edn ( New York: Aspen Law and Business).

Vaver, D (1996) `Rejuvenating Copyright' 75 Canadian Bar Review 69.

Vaver, D (1997) Intellectual Property Law - Copyright, Patents, Trade-marks (Concord, Ont., Can,: Irwin Law).

White, T and Jacob, R (1986), Kerly's Law of Trade Marks and Trade Names , 12^th edn. (London: Sweet & Maxwell).

Williamson, J (1986) Consuming Passions: The Dynamics of Popular Culture (London: Marion Boyard).

Footnotes

^{( 1)} Yet intellectual property law, in appropriating real property discourse for its own purposes, has borrowed only part of that discourse, the part that emphasises absolutist Blackstonian notions of "sole and despotic dominion" over property. What it has ignored are the complex regulatory frameworks governing real property uses and the responsibilities of real property ownership. These are significant omissions.

⁽²⁾ Madow's article (1993), from pp 147-178, provides perhaps the best short legal narrative on how names and personal images came to acquire legal protection; this section draws on his work.

⁽³⁾ In both jurisdictions, it was of course possible, with varying degrees of difficulty, to register a name as a trade mark when it was associated with a particular product. Thus, "Wedgwood" could be registered as china, but Josiah Wedgwood did not have an intellectual property right in his own name per se.

⁽⁴⁾ There is not the space here to pursue the question as to why this divergence occurred. The perhaps off-handed suggestion of Madow (1993), p 154, n 127, that Britain has not developed a right of publicity because it is thought that prominent British persons "ought to shrug off unauthorised appropriation with a kind of aristocratic contemptuousness" is based, I think, on a distorted and outdated view of contemporary British society. Neither The Beatles nor Liam Gallagher and Tim Henman were or are aristocrats. Several factors explaining this divergence might include: 1) the relative underdevelopment of the British film industry compared to Hollywood, one of the most powerful lobbyists for celebrity rights of publicity; 2) similarly, because of the imperial hegemony of American popular culture compared to Britain's, the stakes are less; 3) British popular culture, such as the BBC, remains somewhat more public and non-commercialised, though recently the BBC has become aggressive in this area in its claims, for example, to protect "The Teletubbies" from misappropriation; 4) the right of privacy, a very limited right in the UK, has in the U.S. become transformed, by a circuitous route, into a right of publicity; 5) there is a more pervasive "rights" legal culture in the U.S. I have also omitted here any extended discussion of why, in the current era, persona has been transformed into property; Armstrong (1991) provides one of the most cogent explanations of this phenomena, as does Gaines (1991).

⁽⁵⁾ Bringing a passing off action would be another possible course open to the Estate and the Fund against alleged "Diana" infringers (see Cornish 1996, pp 533-562) ; for reasons of space and because the Fund is seeking to register Diana as a trade mark, I have omitted any discussion of passing off from this article.

⁽⁶⁾ The analogy to Michael Jordan is not accidental. One of Jordan's intellectual property lawyers, Mark Lee, is also representing the Fund in its action in California against the Franklin Mint (Reuters 1998, and personal conversation).

⁽⁷⁾ Yet when royalty is a party claiming intellectual property rights, judges can initiate some quite creative jurisprudential voyages as was the case in Prince Albert v Strange [1849] 1 Mac & G 25 which did much to establish breach of confidence law.

⁽⁸⁾ Again, the royalty factor might unfortunately be taken into account by judges.

⁽⁹⁾ For example, although Canada's approach to trade mark is derived, in great measure, from that used in the United Kingdom, PERFECTION is a registered trade mark for dairy products in that jurisdiction (Vaver 1997, p 199). Some cases are relatively clear-cut, but many others could potentially fall on either side of the registration divide.

⁽¹⁰⁾ The Elvis case was adjudicated under the former 1938 Trade Marks Act. Although the TMA 1994 does, in some instances, make registration easier, judicial interpretation of distinctiveness has not significantly changed on this particular question..

⁽¹¹⁾ The Elvis judgment is also not helpful to the Fund's claim for a trade mark in Diana's signature; see Elvis at 557-562 for why Elvis' signature was refused registration. As Laddie J explains at 559, "having regard to the wide infringement provisions of the 1994 Act, an unqualified registration of the [Elvis signature] mark might well give rise to protection far beyond the graphic style used " and include protection for the words "Elvis Presley" in any script or typographical style. In the case of Diana, the use of her name in any graphic style without the Fund's authorisation would potentially infringe if a signature trade mark is acquired. That is a truly Orwellian idea to contemplate. And an even more Orwellian idea: if rights of publicity or trade mark had been granted in the pen name of the late author Eric Blair, we might not be able to invoke Orwell's name to describe the phenomenon. Unless we get permission.

⁽¹²⁾ Yet, as explained in note 23 post, these rivals could not themselves have acquired a Diana trade mark, the real prize.

⁽¹³⁾ It is not possible, however, to register the photograph or portrait of a living person or of a recently deceased persons without permission from the person or, for the latter, their executors. Trade Marks Rules r 18.

⁽¹⁴⁾ Attached to this registration, which features a drawing of Elizabeth I drinking mead from a wine glass, are the words: this "registration shall give no right to the exclusive use of the words `Elizabethan Mead' and the device of a wine glass." What was registered was one particular image on one particular type of mead.

⁽¹⁵⁾ The TMA 1994 does provide for the revocation of a trade mark after five years of non-use under s 46(1)(a). Hence, a trade mark in any of the 52 unused Diana photos could be revoked if they are not used. But once the monopolisation of such photos for commercial purposes is legitimated, competitors will face a difficult time catching up later. Not even the United States Patent and Trademark Office, which employs one of the lowest hurdles for trade mark registration, allows the registration of multiple images of a celebrity in a single registration ( McGeehan 1997, pp 353-354).

⁽¹⁶⁾ The usually stated objection is unfair competition. If the Fund succeeds with its trade mark registration, there will no competition in the commercial exploitation of Diana.

⁽¹⁷⁾ This acquiescence is also sometimes called `estoppel by acquiescence'. Gray (1993) contains a full chapter on proprietary estoppel which he formulates for land law as follows: "If the owner of title in land has expressly or impliedly given some assurance respecting present or future rights in his land, he cannot conscientiously withdraw that assurance if the person to whom it was given has meanwhile relied upon it to his own detriment "(p 314). Proprietary estoppel is not as commonly used in intellectual property disputes as in land law, but the recent expansion and flexibility of the doctrine, as explained by Gray, suggest that it may have a greater role in the future.

⁽¹⁸⁾ There is not the space here to explore a wider question of acquiescence/estoppel. If an image/representation (for example, of Diana) has been traded without sanction, in fact usually with encouragement, for almost 20 years, and if the widespread public use of that image, including by the media, that done much to increase the value of that image, permitting the propertisation of that image after death creates a bizarre type of "death dividend." Given the emotionality that erupted over Diana's unexpected death, I appreciate that this is perhaps a somewhat indelicate matter to raise, yet it appears to underlie part of the Diana merchandising strategy.

⁽¹⁹⁾ Black's Law Dictionary defines a bare or naked possibility as a "bare chance or expectation of acquiring property or succeeding to an estate in the future, but without any present right in or to it which the law would recognise as an estate or interest".

⁽²⁰⁾ There are certain technical exceptions. If a trade mark applicant dies after the application is submitted but before it is actually entered on the Trade Mark registry, another person able to prove that he or she has the same rights as the applicant can claim rights in that trade mark if it is successfully registered. Trade Marks Rules r 62.

⁽²¹⁾ Significantly, although some legal commentators suggested Diana (and since her death, her Estate) owned copyright in the spoken words used in Morton's book (Dyer, 1997), the Estate did not try to stop publication of the book by claiming copyright infringement.

⁽²²⁾ Thanks to David Vaver for suggesting this item for Diana's potential copyright inventory. Copinger and Skone James on Copyright (13^th ed., 1991, with supps.) mentions, in para. 2-23, that an unreported decision has held that a signature can be accorded artistic copyright. Still, it remains an intriguing question whether writing your name requires sufficient skill, labour and judgment to qualify as an artistic work. And only an exact copy of the signature would likely infringe (Kenrick v Lawrence (1899) 25 QBD 99 (claiming copyright in a plain drawing of a hand used to show voters where to place their X on a ballot).

⁽²³⁾ The Estate does have the power to stop anyone else from registering "Diana" as a trade mark and, in the spirit of this article, I would support the exercise of this right against persons such as the opportunist Harrow timber merchant who, three days after Diana's death, applied for a trade mark in "Diana" and announced he wanted to use it to establish a world-wide garment industry. The same objections hold for the Franklin Mint's alleged attempt to trade mark "Diana". (In any event, such registrations would be considered bad faith registrations under TMA 1994, s 3(6)). The Registrar is permitted to refuse the registration of a trade mark containing the name or representation of any person living or recently dead person on a mark without the consent of that person or his/her executors or other legal representative. But exercising this "personal right" (and note it is not a "property right " because there is no property in a name) against unauthorised persons does not automatically give the executors themselves registrable rights to a name as there might be other objections. For example, the executors of "Ronald McDonald" would have a difficult time getting a trade mark in that name as it is already a registered trade mark of the McDonald's hamburger chain.

⁽²⁴⁾ Not all jurisdictions permit post-death variation of wills as wills are supposed represent the intent of the (living) testator. Such tax shifting can also be challenged on re-distributive grounds.

⁽²⁵⁾ A subsequent right of publicity statute, Tennessee Statute, ss. 47-25-1101 and 47-25-1108, has overridden this opinion.

⁽²⁶⁾ "What will remain in the memory...more than anything (is) her beauty" in how The Daily Telegraph explained the significance of her appearance in the second sentence of its 1 September 1997 obituary. A person's appearance is primarily a matter of luck or accident.

⁽²⁷⁾ For a much fuller treatment of this phenomenon, the reader is referred to the work of Edelman (1979), especially Chapters 1 and 2.

⁽²⁸⁾ Several commentators (Coombes 1991; Gaines 1991; Madow 1993) have written eloquently and at length about the relationship between intellectual property and cultural access and I will not repeat here their individual and collective insights.

⁽²⁹⁾ At this moment, Diana is perhaps an unlikely target for parody. If she ever is such a subject, courts are unlikely to look favourably on such a representation; see Schweppes Ltd. v Wellington Ltd. [1984] FSR 210 (CH) (infringement of copyright).