Celebrity photos have long been favored by advertisers. In comparison with portraits, stills of movie or television stars capture the public eye and are powerful marketing tools. However, infringement often traces the possibility of wealth. China has witnessed the filing of several infringement lawsuits because of the unauthorized commercial use of a star’s photos by businesspersons. Does unauthorized commercial use of stills constitute infringement? In addition, whose and what kind of rights has been infringed? No direct answers are available under current Chinese law. These issues remain the focus of controversy in litigation, having triggered disputes in China’s legal circles and courts.

1. Do stars have portrait rights in their stills?

1) The position of China’s judiciary: stills may constitute the portraits of actors.

In several similar lawsuits filed by actors, their rights to portraits were violated by the unauthorized use of their stills. The main issue in these actions was whether stills belonged to the portraits of actors. There are no clear-cut provisions under Chinese law regarding this issue. However, the judiciary’s position has become clearer, since the divergence from an earlier period.

Early judgments held that stills did not constitute actors’ portraits. Two decisions in 1996 and 1997 are representatives. In the case of Zhuo Ma v. Inner Mongolia Yili Industrial Group Co., Ltd. et al (Yili) for infringement of portrait rights on the grounds that Yili used in its advertisement the image of the role her father played in a film work. In this case, Si Hesen, the plaintiff’s father, was a famous actor in China. Between 1993 and 1994, defendant Yili, in its advertisement for its product “Yili Milk Tea Powder”, used Si’s still in the film Marco Polo, in which Bechtol, the chief of a tribe played by Si, was drinking alcohol to celebrate a victory. Si died in 1989. His daughter Zhuo Ma brought the lawsuit because the defendant infringed on the portrait rights her father. In 1996, the Huhhot Hui People District Court held in the first instance judgment that not much variation could be seen from Si’s image in daily life, and in the image of Bechtol, the still in question could not be taken as the reproduction of Si’s personal image. Thus, the image in the still was not a portrait of Si, and the defendant’s act did not constitute infringement of his portrait right. The plaintiff appealed. In 1997, the Huhhot Intermediate People’s Court rendered a judgment that the role-played by an actor in a film or television no longer represent the actor’s personal image, but the image of the role after art processing. Therefore, the plaintiff’s claim of infringement of portrait right was denied. A similar judgment was entered in 2005 in the case “Zhao Benshan v. Guangzhou Huadu Juxing Electric & Technology Co., Ltd. (Juxing) and Guangzhou Hongxiang Audio & Video Manufacturing Co., Ltd. (Hongxiang) for infringement of portrait right”. In this case, defendant Juxing used Zhao’s still on the exterior packaging of its products SVCD and SDVD as well as in the color pages of its advertisement without Zhao’s consent. The Guangzhou Huadu District Court ruled in the first instance judgment on similar grounds to that of the Zhua Ma case, that Juxing’s conduct did not constitute infringement of Zhao’s portrait right.

Recent years have witnessed dissimilar judgments, i.e., stills are also portraits of actors. The typical judgment was the case of “Lan Tianye v. Beijing Tianlun Dynasty Hotel and Beijing Film Studio (BFS) for infringement of portrait right and reputation right” in 2003. In this case, plaintiff Lan Tianye was a famous performance artist in China. Defendant Tianlun Dynasty Hotel used in an advertisement Lan’s still, in which “Master Qin,” a role played by Lan in the film Teahouse, was drinking tea, without Lan’s consent. The defendant contended that they used an image of a film character, “Master Qin,” played by the plaintiff, rather than the plaintiff’s portrait. Thus, they did not violate the plaintiff’s portrait right. The Beijing Dongcheng District Court concluded that film still reflecting the features of the actor’s facial image conveyed not only a specific film shot but also the actor’s facial image, which had the nature of dual identification and cannot be replaced by each other. The still in question showed the facial features of the plaintiff clearly, which enabled the public to not only discern that it was a shot from the movie Teahouse, but also recognized Lan as “Master Qin” the plaintiff. Hence, the plaintiff had portrait right in the disputed still.

The finding in the Lan Tianye case was a reversal of the Zhuo Ma case. Given the several important judgments made subsequently, its significance in serving as the transition of the courts’ position can also be seen explicitly. For instance, in the case “Jacky Cheung v. Zhejiang Aoge Clothing Co., Ltd. for infringement of portrait right,” the defendant used the still of Hong Kong star Jacky in the musical Snow Wolf Lake as the packaging pictures of its costume products and outdoor advertisement. In 2005, the Beijing No.2 Intermediate People’s Court held that the use of the still in question was the use of the plaintiff’s portrait and the unauthorized use infringed on the portrait right of the plaintiff. As to the aforesaid Zhao Benshan case, dissatisfied with the first instance judgment, the plaintiff appealed. In 2006, the Guangzhou Intermediate People’s Court on appeal reversed the first instance judgment holding that the use of the works relating to Zhao Benshan’s portrait constituted infringement of Zhao’s right to use his own portrait. In another case “Zhang Tielin v. Anhui Golden Seed Winery Co., Ltd. and China Welfare Lottery Issuance Center (CWLC)”, defendant the Golden Seed used in the welfare lottery issued by CWLC the still of the plaintiff wearing the emperor’s costume of the Qing dynasty to advertise its products “Golden Seed Wine” and “Seed Wine”. The Beijing No.1 Intermediate People’s Court ruled that though the character used in the advertisement wore the costume of the emperor of the Qing dynasty, the art image played by Zhang must be based on Zhang’s portrait. Therefore, it was an undeniable fact that Zhang’s personal portrait was used in the advertisement, and the defendants violated the plaintiff’s portrait right.

Currently, Chinese courts are moving towards convergence on this issue, i.e., in cases where an actor is recognizable from a still, the still belongs to the portrait of the actor, and the use of the still constitutes the use of the portrait of the actor.

2) The standard for judging whether a still belongs to portrait:the recognizability of portraits.

The standard for judging whether a still belongs to portrait: the ability to recognize portraits is the key in determining whether a still falls within the portrait of an actor, and whether the actor can be recognized from the still. The General Principles of the Civil Law provides that a citizen’s right to portrait be protected. However, the relevant laws and judicial interpretations fail to define portrait. Theoretically, a portrait refers to any representation of a person’s appearance or likeness in a manner in which the person can be identified. There are various ways to represent a portrait, photography, painting, sculpture, film, and television. However, the most important is the recognition of a portrait. Those works not directly depicting a person’s facial features may be held as a portrait of a person such as, a picture of the back of a famous football player, as long as others recognize the person being represented. From this angle, the first instance judgments in the foregoing Zhuo Ma case and Zhao Benshan case are incorrect, because the courts’ rulings that stills did not constitute actors’ portraits was made on the condition that the general public was able to recognize the actors themselves. The courts based their rulings on the fact that what a still evoked was the art image of the role the actor played in the film rather than the actor’s personal image. Therefore, a still was not the actor’s portrait. This opinion seems reasonable, but ignores the fact that the test for determining whether a still constitutes a portrait is the ability to recognize a portrait instead of the representing form or content. It is true that a still is a portrait with a special quality. Nevertheless, as long as the actor is identifiable from a still, the photo is no different from other forms of portraits, such as paintings, daily life pictures, and sculptures except in form and content. It is the author’s view, that the correctness of the judgments in the Lan Tianye case and similar cases were based on the recognition test of portraits.

On the contrary, if an actor is unrecognizable in a still, it can be assumed that the still is not the actor’s portrait. For example, in Chinese drama, thick makeup makes it impossible for others to recognize the actor. Stills of this type fall short of the criterion of a portrait. However, if the accompanying words thereof reveal the actor’s identity, the stills can be deemed as the actor’s portraits.

2. The correlation between the copyright in stills and the actor’s right to portrait

In the Lan Tianye case, defendant Beijing Film Studio argued that the copyright of the stills in question belonged to them and they had the subsequent right to authorize use of the said stills. The Tianlun Dynasty Hotel had purchased the rights to use the stills of the Teahouse, and so the Hotel’s use of the stills did not infringe the plaintiff’s right to portrait. In the cases of Jacky Cheung and Zhao Bensha,n the defendants also raised similar defenses. They posed the following issues: whether permission from an actor is needed if the copyright holder of the film/television works has granted the commercial use of a still? Or conversely, the commercial use of a still merely needs to be granted by the actor?

1) Copyright in stills does not exclude the existence of an actor’s right to portrait

First, stills are part of a film work. Under Article 15 of the Copyright Law, copyright in stills belongs to film/television producers.

Second, the existence of copyright in a still does not deny an actor’s portrait right in the still. As stated earlier, if an actor is recognizable from a still, then the actor should be held as having portrait right in the still. The subject matter of copyright in stills is the stills, e.g. the works, and whereas the subject matter of portrait right is the actor’s portrait in the stills, both of which are embodied in stills in terms of physical form. The actor’s performance in a film or television work is not the waiver of his portrait right. On the contrary, giving permission to others to record his own performance in the form of cinematographic or television works is both the exercise of the actor’s right as provided in Article 37 of the Copyright Law, and the exercise of the right to produce his portrait as included in the portrait rights. With regard to those portraits that have been produced, i.e. the stills, an actor still possesses other rights (mainly the right to use his portrait) as included in the portrait rights other than the right to produce his portrait. Copyright in a still and an actor’s portrait right differ from in that they have different subjects and different right contents, which cannot be substituted by each other but co-exist. In the Lan Tianye case, the court correctly held that the still involved was a portrait work and there exist dual rights in the still, i.e., portrait right and copyright in the portrait work.

2) The relationship between copyright in stills and an actor’s portrait right in terms of the exercise of rights

If the two rights exist concurrently, then the use of stills is also the use of portraits, and vice versa. The exercise of one right involves the other right, thus resulting in the issue of the correlation in the exercise of these rights.

Generally, the exercise of copyright in stills cannot replace and exclude the exercise of the portrait right of an actor. In cases of commercial use of stills, the third party needs to obtain permission from the copyright holders of the stills and the actor in the stills. Though direct use of a cinematographic or television work by the copyright owner may also involve the portrait right of an actor, it does not constitute infringement. This is because the actor’s participation in the performance and work entail the stipulation that the copyright holders (i.e. producers) of the cinematographic or television work can use the actor’s portrait with the cinematographic or television work. If the performance contract fails to stipulate expressly the scope of the license, the industry practice or general understanding should be followed. As a rule, the use must be for the film. It is obviously beyond the usual scope of the film’s purpose to authorize any third party to use a still for profit. In such case, the actor cannot be assumed to have waived in advance in the performance contract his portrait right related to the commercial use of the still. In response to this, the court in Lan Tianye stated clearly in its judgment that: “The exercise of copyright in a portrait work cannot annihilate the right to portrait. Films are within the category of portrait works. The copyright holders of a film need not seek permission from the actors when exercising their copyright in the form of film playing because the agreement of the actors to play the roles in the film is the promise that their portraits can be used in the form of film within the scope of playing the film.” However, this use is limited. There should be a license from the actors or a special stipulation where the use exceeds the scope of engaging in and using or publicizing the film work.

For a still to be used commercially, the user should seek express permission from the actor because it involves their spiritual interests in the portrait, which are important. The public, if recognizing the actor from the still, may think that the actor is publicizing a commodity or service, or the actor is satisfied with the quality and taste of the commodity promoted, and he is pleased to recommend it to others. Just as an individual’s act may trigger comments among the public and build his individual image in society, the commercial use of an actor’s still may also imply the actor’s values, taste, social responsibility, and is building and affecting the actor’s social image. If the image of an actor, who has joined an antismoking organization, appears in a tobacco advertisement, or in an advertisement for fake and inferior goods, the actor’s public image will definitely be negatively affected. Hence, an actor should have the final say in such matters as whether his/her stills can be used in a commercial context and under what circumstances such commercial use can be carried out.

In the absence of express stipulation, the exercise of an actor’s portrait right shall not substitute and exclude the exercise of copyright in a still. Thus, the third party should obtain licenses not only from the actor, but also in principle from the copyright owners of the still if his use of the still is for commercial purpose. Further, due to its profit nature, the commercial use of a still falls outside the provision of Article 22 of the Copyright Law that “without permission from, and without payment of remuneration to, the copyright owner provided the work is used in a reasonable manner”. Often, the actor in a still rather than the copyright owners of the still brings an action against infringers for use of a still for commercial purpose without permission. A reasonable explanation therefore is that the commercial use of the still primarily makes use of the actor’s reputation and influence instead of the still’s influence, i.e., the actor outweighs the still in terms of contribution.

Actors and the producers of cinematographic or television works may make stipulations as to the distribution of license interests between them when licensing to a third party to use a still for commercial purposes. Though disputes over distribution of interests between the copyright owners and actors are unheard of, given the difficulties in distinguishing and measuring the influence of an actor and a still image work in terms of the degree of their contribution to the commercial value of the still image, it is no doubt of significance that both parties stipulate interests distribution so as to eliminate disputes. Particularly for those stars with a high social status, such stipulation will be proved wise.

About the author:

Chen Longjiang is an associate professor of School of Law, Hainan University.

                         
(Translated by Zhang Meichang)