The lifecycle of an international athlete: Part 4 – Dealing with branding and image rights

Published 26 September 2017 | Authored by: Gavin Stenton

In the fourth in Pennington Manches’ series of blogs for international athletes and their advisers, trade marks specialist Gavin Stenton explains the key legal points they should consider when coming to compete in the UK.

For athletes and sports personalities, in their capacity as “brand owners”, registering their personal brands is an important investment that generates significant practical, commercial and legal benefits, and enables them to prevent unauthorised usage and take full advantage of any licensing and/or other commercial opportunities.

This blog explores some of the core intellectual property rights that might form part of an athlete’s brand portfolio. Specifically it looks at:

  • How does the protection of image rights in England and Wales compare to other countries?

  • Is there anywhere image rights can be registered? 

  • Are there alternative means of protecting image rights in the UK?

    • Passing off

    • Registered Trade Marks

 

How does the protection of image rights in England and Wales compare to other countries?

Whilst globally many countries have legislation which expressly protects a person’s image rights, in England and Wales there is no statutory regime governing image rights.

In the United States, the right of publicity varies from state to state, but, broadly speaking, affords athletes and sports personalities the right to protect their image against commercial misuse and those who would unjustly benefit from using their likeness.

Similarly, in the European Union many member states have national laws that protect a person’s image against unauthorised commercial exploitation. Generally speaking, if an image is not used for purely informational purposes (but rather influences the public’s understanding/interpretation for the purpose of commercial gain) then such use is likely to be actionable.

 

Is there anywhere image rights can be registered?

Guernsey claims to be the first country in the world to provide a person with a registerable image right under the Image Rights (Bailwick of Guernsey) Ordinance 2012.1 A person’s image can be registered if they are: alive, died fewer than 100 years ago, are two or more people who are intrinsically linked (for example, the Williams’ sisters), two or more people who are linked in a common purpose and who together form a group (for example, ice-skaters Torvill and Dean, or a football team) or a fictional character (for example, a team mascot).

The regime enables applicants to register/protect (potentially indefinitely) personal attributes such as their voice, signature, likeness, appearance, silhouette, features, face, expressions (verbal or facial), gestures, mannerisms, and/or any other distinctive characteristics contained in any photograph, illustration, image, picture, moving image or electronic or other representation of the person. However, the enforceability of these rights (such as before the English courts) remains untested and subject to question.

 

So what are the means of protecting image rights in the UK?

Passing Off

The common law tort (i.e. wrongful act) of “passing off” is one way in which athletes can seek to take action against those using their image rights. In 2001 Formula One racing driver Eddie Irvine successfully demonstrated2 and invoked his valuable reputation and goodwill in order to sue a radio station, Talksport, for manipulating a photograph in a promotional brochure to falsely suggest that Mr Irvine endorsed the radio station.3

 

How easy is it to prove passing off?

Cases based on passing off are not always successful and can be costly. By way of example, in 1999 the Elvis Presley Estate sought to take action in respect of certain (unauthorised) products that bore Elvis Presley’s name and image.4 The cause of action ultimately failed5 on the basis that the Elvis Presley name and image was in such widespread use that it no longer functioned as a genuine indication of a product’s origin and did not therefore imply/suggest any form of endorsement from the Elvis Presley Estate.

 

What do I need to prove to succeed with a passing off action?

The 2013 case6 in which Rihanna won her action against high street retailer, Topshop, for using her image on a range of t-shirts without her consent, clearly showed that the outcome of passing off cases is entirely fact-specific. The burden of proof will fall squarely on the athlete or personality to show that (in the eyes of the consumer) the offending use extends beyond mere merchandising and actually implies endorsement.

In the Rihanna case, the image in question was taken by an independent photographer at the (much publicised) shooting of the artist’s music video for the 2011 hit single, “We Found Love”. Although Topshop sought and obtained the necessary permissions from the photographer to use the image, it did not seek permission from Rihanna herself. In essence, Rihanna claimed that by using her image on the range of t-shirts, Topshop was implying that she had endorsed the range.

Although the judges agreed that merely using an image of an individual on a t-shirt is not enough in itself to constitute passing off, in Rihanna’s case, because she was publicly perceived as a style icon and had licensed use of her image in previous deals with Topshop, Gucci, Armani and River Island, it was held that consumers would be led to believe that she was associated with the label and had endorsed the product range. The extent of Rihanna’s fame (goodwill) coupled with the parties’ past dealings had a significant role to play in the final decision.

Registered Trade Marks

Registered trade mark rights afford their owners automatic statutory rights that are simple and easy to enforce against third parties and can potentially last forever. As such, and in order to avoid/mitigate the risks, uncertainty and costs that are associated with a common law passing off action, athletes and sports personalities are strongly encouraged to obtain registered trade mark protection (so far as possible).

Where can I register my trade mark?

In addition to being able to obtain national registered trade mark rights in the UK7 (and other European countries) athletes can also apply to register their trade marks with the European Union Intellectual Property Office (EUIPO), which will result in their trade marks being protected throughout all 28 (current) Member States, in a single registration, although what the UK position will be with regard to such pan-EU rights post-Brexit remains to be seen. 

Can I register my name and signature as a trade mark?

Any personal name or signature can potentially be registered as a trade mark. Fred Perry was one of the first sports personalities in the UK to register his signature as a trade mark back in 1965. Since then, numerous athletes and sport personalities have registered their names and/or signatures as trade marks, including Andy Murray®, Roger Federer®, Wayne Rooney®, Lionel Messi®, Nico Rosberg®, Usain Bolt® and Lewis Hamilton®. 

Can I register a logo?

As with names and signatures, any logo that has the capacity to distinguish the goods and/or services of one undertaking from those of another is potentially capable of registered trade mark protection.

Lewis Hamilton art imageLewis Hamilton registered a logo for his brand (see left) that is actively used on his website and on various branded products. The logo, which was registered on 4 February 2016, is registered throughout the European Union and covers an eclectic range of goods (Details of the trade mark can be found here: https://euipo.europa.eu/eSearch/#details/trademarks/014365936).

 

A Murray Logo

It is also possible for an athlete or sports personality to register his/her initials in a stylised format as a logo. For example, Andy Murray has a trade mark registered throughout the EU which, as a logo, includes his initials and the number 77 (77 representing his win at Wimbledon on 7 July) the fact that he is the first British player to win Wimbledon in 77 years and it is also the name of his management company. In 2015 Andy Murray signed a deal with Under Armour to commercialise his logo for four years; this deal is reported to be worth £15 million.8 (Details of the trade mark can be found here: https://euipo.europa.eu/eSearch/#details/trademarks/013647573).

What else can be registered?

Many athletes have signature moves, whether it’s their stance before they take a penalty kick or their celebration when they win. What isn’t so well-known is that these stances and movements are potentially capable of trade mark registration.

Jonny Wilkinson tmIn 2003 Jonny Wilkinson registered an image of his well-known kicking stance. This was successfully registered throughout the European Union, giving Jonny Wilkinson the exclusive right to use the trade mark commercially in relation to a broad range of goods. (Details of the trade mark can be found here: https://euipo.europa.eu/eSearch/#details/trademarks/003592458).

Usain Bolt has not only registered his name and signature as trade marks but also owns registered trademarks featuring his famouslightning bolt” stance. These were registered extensively between 2008 and 2011 and cover a broad variety of goods and services (Details of the trade mark can be found here:
https://euipo.europa.eu/eSearch/#details/trademarks/007454523)

Gareth Bale logo

In 2013 Gareth Bale sought to register his “eleven of hearts” goal celebration as a UK trade mark back.Having successfully registered the mark in July of that year, it was subsequently surrendered for an undisclosed reason. (Details of the trade mark can be found here: https://www.ipo.gov.uk/tmcase/Results/1/UK00002657917).

Examples of other types of potentially registrable trade marks include slogans/catchphrases, sounds, colours, shapes and even smells.

As with all of our blogs, this is for your information only. Please always seek legal advice if you are uncertain about any rights you may have in relation to intellectual property.

 

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About the Author

Gavin Stenton

Gavin Stenton

Associate, Penningtons Manches

Gavin is a trade mark, designs and brand protection specialist, advising brand owners in a wide range of industry sectors including fashion, retail, sport, drinks, education, publishing, IT, biotech and professional services.

He handles all aspects of trade mark and design filing, prosecution and enforcement, and is regularly involved in complex, multi-jurisdictional filing programmes and cross-border disputes. His practice incorporates all elements of trade mark and design portfolio management, advice to brand owners on the registerability and availability of their brands, and conflict resolution through opposition, cancellation and/or infringement proceedings. He also advises brand owners on the proper usage and commercial exploitation of their brands as well as on the acquisition of third party brands and related due diligence.

Gavin is a dual-qualified solicitor and chartered trade mark attorney. He is co-head of the firm’s fashion and luxury brands group and a member of MARQUES' international trademark law and practice team and the Bucharest Bar Association. He is recommended by The Legal 500, is a regular contributor to CITMA Review and has recently spoken at the World Intellectual Property Organization on the topic of Brexit. Although based in Oxford, Gavin frequently works out of the London office.

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