Image rights are an asset of the sports personality with potentially large commercial value. Therefore, it is imminent today more than ever before that sports personalities protect their image from unlicensed use by others. As the potential for sponsorships and endorsement grows, so do the opportunities for unauthorized use and profit by third parties.
The right of publicity, otherwise called personality right, refers to the individual’s right to control the use of their likeness, name and identity for commercial use. A company or person cannot use an athlete’s name or image for monetary gains without permission or contractual agreement. Image Rights are the expression of a personality in the public domain. The provision of image rights in law enables the definition, valuation, commercial exploitation and protection of image rights associated with a person.
Unauthorized use of the sports celebrity brand can be manifested in a number of ways including:
- Trade mark infringement through direct use of the athlete’s registered trademarks
- Dilution of the mark by using look-alikes of the athlete’s distinctive and famous marks
- Unfair competition and false advertising
- Use of web names or domains containing the athlete’s name or distinctive logo such as Ronaldo’s CR7 distinctive logo
While sports personalities could possibly rely on unregistered rights such as claims for passing off, ‘false advertising’ arguments or ‘dilution of their mark’ through the use of look-alikes, to prevent third parties from using their names and likeness, such claims and arguments can prove to be quite challenging and fact sensitive.
In order to protect their sports celebrity brand, it is important for sports celebrities to identify their relevant trademarks. Most often, the protectable trademarks of a sports celebrity are his/her name, as well as his/her likeness. Once trademark rights are established in a name or likeness, the next step is to register these trademarks. In the United States these trademarks can be registered with the USPTO and such registration expands common law trademark rights to the entire United States. While in the United States the personality rights are to some extent recognized and protected, there are a number of countries including the UK, where there are no specific legal tools which define image rights or address the harmful effect of the unlawful use of a person’s image.
In the case of image rights of sports and other personalities, the traditional tools of copyright and trademark protection are not clearly able to offer the required protection to celebrities in relation to the unlicensed use of their image and/or likeness. For a claim to succeed in court the celebrity must be able to demonstrate that:
- At the time of the event he or she had a significant reputation and/or goodwill
- The actions of the defendant gave rise to a false message which would be understood by a not insignificant section of the general public that their goods/products/services, have been endorsed, recommended and approved by the celebrity.
The creation of the International Image Rights Registry of Guernsey presents a solution for the protection of sports celebrity image rights. Through this registry, it is possible to register the image rights of a sports personality as a kind of trademark and thereby gain some international legal protection for them. According to Guernsey Law the core right is the registered personality. Registration means that a right exists and protection commences on the date the application is made. Personality refers to the personality of the following types of person or rights:
- Natural or legal persons
- A joint personality
- A group such as a sports team or pop group
- A fictional character
The main benefits and key features of registered Image Rights are:
- They provide legal certainty as to the scope of protection for the celebrity’s image by statutory clarification of the extent of the rights and the public interest exceptions to the rights
- They present an opportunity to clearly set out to the world by way of an online publicly accessible register the bundle of Image rights which the registrant considers as his/her own and which he/she intends to protect (to which reference can also be made in licensing/assignment contracts)
- Instead of reliance on contractually defined image rights, the Guernsey register image right will provide a proprietary right, which is capable of assignment in the same way as any other intellectual property rights
As the value of endorsement and sponsorship revenue of sports personalities continues to grow exponentially, the need to protect this type of revenue becomes more and more urgent. For more information and guidance on how to protect your sports celebrity brand and your image rights you may contact us at [email protected].