Comparing how image rights laws apply to sport in the US, UK and EuropeLuca Ferrari, Stella Riberti
The interaction between the rights to privacy and publicity (image rights) on the one hand, and free speech and freedom of the press on the other, is a complex issue that differs across jurisdictions. A number of recent cases have helped clarify key aspects of the content and extent of such rights, and where the line is drawn between them.1
This article compares developments in the U.S., the U.K., and Europe, to help clarify the current position for athletes.
The U.S. – Right of Publicity
The right of publicity purports to protect against uncompensated commercial exploitation of a person (such as an athlete’s) likeness or identity. Every person, celebrity or non-celebrity, has a right of publicity – which in short, is the right to own, protect and commercially exploit one's identity.
The protection afforded to the right of publicity in the United States stems from, and is intertwined with, the right of privacy.
The term "right of publicity" was coined by Judge Jerome Frank in 1953 in Haelan Laboratories, Inc. v. Topps Chewing Gum, Inc.2, which for the first time affirmed that individuals (in this case, Major League Baseball players) possess a property right in their own images.
Before Haelan, the right of privacy represented the means of protection for individuals against the unauthorized use of their likeness for commercial purposes. In Haelan, Judge Frank went beyond the action in tort based on the privacy right and extended the right of privacy (the right to be left alone). Judge Frank included a right of publicity (the right to be public) with a view to protecting against commercial misappropriation and preventing the unjust benefiting of others from a person’s likeness. In As Judge Frank explained:
"For it is common knowledge that many prominent persons (especially actors and ball-players), far from having their feelings bruised through public exposure of their likenesses, would feel sorely deprived if they no longer received money for authorizing advertisements, popularizing their countenances, displayed in newspapers, magazines, busses, trains and subways. This right of publicity would usually yield them no money unless it could be made the subject of an exclusive grant which barred any other advertiser from using their pictures."
The right of publicity is limited under U.S. law by the First Amendment, which establishes and protects the freedom of expression as an essential quality "intrinsic to individual liberty and dignity and instrumental in society’s search for truth".3
As the U.S. Court of Appeals, Seventh Circuit effectively pointed out in Jordan v. Jewel Food Stores, "there is no judicial consensus" on the interaction between right of publicity and right of free speech.4 The extent to which the right of publicity is recognized in the U.S. is determined state by state, not at federal level. Only about half of the states, including California and New York, have distinctly recognized the right of publicity either on a statutory basis or by way of common law.
The 'Transformative Use’ Test
With respect to the safeguarding of image rights belonging to athletes and celebrities, interesting recent cases5 have arisen from putative class actions. These actions were brought by a number of current and former NCAA6 Division I football and basketball players against the creator and developer of the video game 'Madden NFL', Electronic Arts, Inc. (‘EA’). EA's video game featured players having the same field or court position as those of the claimants, as well as a physical likeness (e.g. height, weight, bald head, skin tone, jersey number) resembling that of the claimants.7
The Courts, therefore, had to resolve the tension between First Amendment rights and the right of publicity. While the rulings recognized that, in principle, works such as video games are protected under the First Amendment, EA’s freedom of expression must be balanced against the players' right to make commercial use of their celebrity.
As stated in Hart v. Electronic Arts, Inc. , "the protection afforded to games can be limited in situations where the right of free expression necessarily conflicts with other protected rights". In doing so, courts have applied the so-called "transformative use test", which was developed by the Supreme Court of California in Comedy III Productions, Inc. v. Gary Saderup, Inc..8
Under the "transformative use test", the judge examines "whether the product containing a celebrity’s likeness is so transformed that it has become primarily the defendant’s own expression rather than the celebrity’s likeness". In all the civil actions in concern, the courts ultimately found right of publicity violations and rejected EA’s contention that the use of the player’s physical characteristics was, as a matter of law, a "transformative use" protected by First Amendment.
The conclusion reached by the courts in these cases followed the same line of reasoning as that in No Doubt v. Activision Publishing, Inc.;9 in this case, the California Court of Appeal addressed the use of avatars in the video game ‘Band Hero’. The Court of Appeal concluded that the developer’s use was not "transformative" because the video game characters were "literal recreations of the band members" doing "the same activity by which the band achieved and maintains its fame".
However, in other recent decisions concerning claims brought by professional athletes against entities that allegedly profited from the broadcast and use of the athletes’ names, likenesses and images without permission, the courts did not take a stance in favour of claimants’ right to publicity.
Using Images for Informational vs. Commercial Purposes
The Dryer Case
In Dryer et. al v. National Football League (2014)10 a putative class action brought by a group of former professional National Football League ('NFL') players. The players claimed the right to be compensated for the NFL Film's use of their names, images and likeness in game footage taken during their playing careersused to promote the NFL. Most of the original plaintiffs reached a multi-million settlement with the NFL, whereas three of the defendants (including Mr. Dreyer) opted not settle and instead to pursue their claims against the NFL. The footage at issue was not about these three plaintiffs per se, they were "essentially compilations of clips of game footage" based on the NFL films-dedicated cameras, showing the players on the field and, in some cases, being interviewed.
The District Court of Minnesota sided with the NFL’s principal argument that the First Amendment protects its use of game footage and outweighs plaintiffs’ interests in their right of publicity. To make this determination the District Court had to balance plaintiffs’ right to profit from their own likeness and the NFL’s freedom of expression. The District Court had to determine first whether or not these productions were "commercial speech", namely a message whose content is commercial in character and whose intent is making a profit or, according to the Supreme Court of the United States,11 "proposing a commercial transaction".
The District Court found that the challenged productions were "non-commercial speech", thus the First Amendment protected use of game footage and prevailed over the plaintiffs’ right of publicity. More specifically, according to the District Court the plaintiffs' claim was groundless, as a matter of law, because:
- The NFL productions were not exploiting the claimants’ images for the "singular purpose of brand enhancement or other commercial gain"; rather, the District Court stated that the films were "a history lesson of NFL football" and that "while the NFL certainly reaps monetary benefits from the sale and broadcast of these productions, the use of any individual player’s likeness is not for commercial advantage but because the game cannot be described visually any other way";
- Newsworthiness and public interest exceptions outweighed the right of publicity claims in the productions as the challenged films were intended to provide the public with factual, historical information;
- The right of publicity claims are pre-empted by copyright law: "Plaintiffs’ performances on the football field are ‘part of the copyrighted material, and [their] likeness cannot be detached from the copyrighted performances that were contained in the films."
The Maloney Case
The Dryer ruling was quoted in another relevant ruling rendered by the California District Court on 6 March 2015 (Maloney v. T3Media, Inc. (2015))12, a lawsuit filed by former college athletes alleging that the licensing of copyrighted photographs from their NCAA playing careers violated their publicity rights.
The claim arose in connection with the website operated by the defendant (paya.com), through which users could view and download for their own personal use13 a collection of photographs licensed by the NCAA. The photographs visually recorded more than 70 years of NCAA sport history.
In the California District Court's view, the plaintiffs’ claim, just like the claims in the Dryer case, was pre-empted by the U.S. Copyright Act of 1976 (the 'Copyright Act') as they "did not allege (or offer prima facie evidence to suggest) that [T3Media] used their likenesses for any purpose beyond the four corners of the copyrighted photographs themselves" and dismissed the claim.
The Marshall Case
In another ruling rendered on 4 June 2015, the plaintiffs’ right of publicity, federal antitrust violations and false endorsement claims were dismissed by the U.S. District Court, Middle District of Tennessee (Marshall, et al. v. ESPN Inc., et al. (2014).14 The lawsuit was filed by current and former college athletes (the 'athletes') against television networks, licensing and marketing businesses, and member conferences of the NCAA.
The athletes principally claimed that the defendants had violated their right of publicity and had engaged in a conspiracy with the NCAA "to create an anticompetitive market where Students Athletes are powerless to realize the commercial value of their names, images and likenesses."
The athletes contended that while the NCAA has in place "multi-billion dollar agreements" with the defendant (i.e. television and sports networks and licensing and marketing businesses) relating to member conference football and basketball games in the U.S., "the Students Athlete receives nothing or, at most, the cost of attendance"; and, in order to participate in NCAA sports, the student athletes are required to sign a form that allows the NCAA to use their likeness to generally promote NCAA events, activities, or programs.
The athletes based their publicity right causes of action on both the right of publicity under Tennessee common law and the statutory protection to that right established by the Tennessee Personal Rights Protection Act of 1984 (‘TPRPA’). However, the District Court ruled that the common law in Tennessee does not recognize – and plaintiffs did not cite any state authority establishing – participants in sporting events’ right to publicity in sports broadcasts.
Additionally, the District Court pointed out that the TPRPA prohibits the use an individual’s likeness only in connection with an advertisement and it instead considers "a fair use [omissis] if the use of a name, photograph, or likeness is in connection with any news, public affairs, or sports broadcast."
The District Court further dismissed the athletes’ complaint alleging that the athletic conferences, broadcasters, and licensing entities conspired with the NCAA to implement anticompetitive rules, in that they prohibited college athletes from competing in the marketplace for the value of their rights to publicity.
The District Court noted that the NCAA was not a defendant in the proceeding and that the plaintiffs’ arguments were countered by previous case law, in which it was established that most NCAA regulations were justifiable means of fostering competition among amateur athletic teams and therefore pro-competitive.
The Kienitz Case
The legal principles (and hurdles) that have developed in the area where publicity rights and free speech intersect, was dealt with in another recent dispute involving copyrighted work, Kienitz v. Sconnie Nation LLC (2014).15 The case concerned the use of a photograph of Paul Soglin, Mayor of Madison, Wisconsin, taken by a photographer Michael Kienitz (with the Mayor’s consent), which was then downloaded from the website by the defendant, altered and printed on commercial t-shirts.
The Court of Appeals for the Seventh Circuit upheld the Wisconsin District Court's grant of summary judgment based on "fair use", but did so on different grounds than the lower court. Specifically, the Court of Appeals noted that "transformative use" is not one of the four statutory fair use factors under Section 107 of the Copyright Act, which takes into account the following factors:
- the purpose and character of the use (including whether commercial or non-profit/educational scope);
- the nature of the copyrighted work;
- the substantiality of the portion of the copyrighted work used;
- the effect of the use upon the potential market for, or value of, the copyrighted work.
Instead, it is simply one aspect of the first fair use factor, i.e. the purpose and character of the use. Therefore, the Court of Appeals "stuck with the statutory list, of which the most important usually is the fourth", namely the market effect. In this regard, the Court of Appeals examined "whether the contested use is a complement to the protected work [allowed] rather than a substitute for it [prohibited]." Given that the t-shirt was "no substitute for the original photograph" and Mr. Kienitz did not argue that the defendant disrupted any plans to license the photograph for apparel, this factor weighed in favor of fair use.
Considering that Wisconsin is one of the States that recognize the publicity right at a statutory level, it would have been interesting to see what the ruling would have been if Mayor Soglin, instead of Mr. Kienitz, had brought a claim against the t-shirt manufacturer for the (non-transformative) use of his image without his consent.
The U.K. – Passing Off
The right to control the use and commercialisation of one’s image has recently been considered in a decision of the English Court of Appeal,16 involving the pop music star Rihanna. The case derives from the sale by Topshop, a fashion retailer, of t-shirts bearing the singer’s image deriving from a photograph taken during a video shoot for a single from her ‘Talk That Talk’ album.
While the photograph was duly licensed by the photographer, Topshop had not obtained the consent of Rihanna, who thus contended that Topshop activities amounted to passing off and reportedly claimed £3.3m for loss of reputation and damage to her goodwill in the prêt-à-porter sphere.
Unlike the U.S., the U.K. legal system formally ignores or denies the existence of image rights.17 As the Court of Appeals made it clear in the Rihanna case, "There is in English law no ‘image right’ or ‘character right’ which allows a celebrity to control the use of his or her name or image."
In this respect, the Court made reference to the Douglas & ors v. Hello! & ors case (2008)18 concerning the publication of unauthorised photographs taken surreptitiously at the Douglas wedding, in which it was established that "under English law it is not possible for a celebrity to claim a monopoly of his or her image, as if it was a trademark or brand. Nor can anyone (whether celebrity or nonentity) complain simply of being photographed."
Accordingly, Rihanna based her claim on the well-established passing-off common law tort.19 Yet, both the High Court and the Court of Appeals affirmed that in the eyes of U.K. law, the mere sale by a trader of a t-shirt bearing an image of a celebrity does not, in and of itself, amount to passing off.
Passing off claims are not easily successful, as the burden on the claimant includes a need to prove three elements:
- that the claimant has goodwill (in this case, an association in the public mind between Rihanna and the world of fashion);
- that the defendant has committed a misrepresentation, leading consumers to believe that the t-shirt was licensed or endorsed by the claimant; and
- that the claimant has, as a result, been damaged. Moreover, the false representation must be relevant in inducing the consumer to buy the goods or Register to the service.
The limits of the law of passing off as a protection of a celebrity complaining of "false endorsement" were thoroughly reviewed in Irvine v Talksport Ltd (2001)20. Until Irvine, protecting a celebrity's name and image has often been rejected, as in Elvis Presley Trade Marks (1999),21 in which it was held that traders may use famous peoples' names or images on, in or in connection with products, in that consumers would not be lead to think that such use indicates a specific trade source.
The Irvine decision instead affirmed that "if someone acquires a valuable reputation or goodwill, the law of passing off will protect it from unlicensed use by other parties", provided that the above-mentioned burden of proof be discharged.
Meeting the burden of proof
In Rihanna, the Court of Appeals upheld her passing-off claim based on the specific circumstances of the case, including her previous public association with Topshop,22 her collaborations with Gucci in 2008, Armani in 2011 and 2012, her agreement in 2012 with River Island to design clothes, and the peculiar features of the image itself. According to the Court, given the particular circumstances of the case Rihanna's image on Topshop t-shirt could well have been understood by her fans as being part of her promotional campaign for the new album.
As such, the judge considered that all passing off hurdles were overcome and that Topshop’s use of the image amounted to a misrepresentation that the garments had been authorised and approved by the singer, with ensuing loss of control over her reputation and damage to her goodwill.
It follows that, even though Rihanna's lawsuit was successful, specific facts of the case eased the burden that plaintiffs seeking protection for unauthorised use of their fame are up against.
Even though under certain circumstances and within specific limits, sports personalities may safeguard their image under data protection, trademarks and copyright regulations, protection of the "right of publicity" in the U.K. legal system remains weak.
Contrary to the U.K., image rights enjoy protection in Europe, where in most countries these rights are clearly established.23
Italy – Personality Rights
Italy is one of many countries where image rights are safeguarded. Image rights are considered a ‘personality right’ inherent to the person (as such, imposing an obligation of respect on anybody) and unauthorised use by others constitutes a violation per se.
The protection reserved for the image stems from the joint provisions of Art. 10 of the Civil Code and Art. 96 of the Copyright Law (Law No. 633/41), which establish the principle that a person’s likeness cannot be displayed, reproduced or sold without the individual’s consent.24 Therefore, as a general rule, consent of the image right holder must be provided, even if tacit or presumed (namely implied by behaviour incompatible with the intention not to grant consent).25
As to the image of a celebrity, the law strikes a balance between the right "to be left alone" and the freedom of the press. Less protection is given to the individual when his/her image or private details are used as a fact of public interest: the celebrity's image must therefore be used within an informative purpose or rather, as part of facts that occurred in the public’s eyes.
Still, consent is required for the dissemination of a celebrity's image for commercial purposes, with no exceptions.
Unauthorised use of celebrities' likeness
The Weah Case
In this respect, it is worth mentioning the order rendered by the Court of Milan on 27 July 1999 in the case of Weah v. Soc. For Service and EPI,26 in connection with a petition for a temporary injunction filed by AC Milan players against the abusive use of their name and image within a football calendar marketed to supporters of AC Milan.
While the defendants attempted to maintain that the petitioners’ fame justified such use, the Court of Milan replied that the exception allowing non-authorised use of a celebrity's image is only granted if such use is strictly for "informational purposes, while it is certainly indifferent to whether this also happens in the pursuit of profit". However, in the case of a calendar, the informative benefit (if any) is second to the purpose of selling for profit a merchandising item.
Accordingly, a cease and desist order was granted as the Court of Milan did not find calendars to convey (primarily) news or other information of public interest.27
The Hepburn Case
What if the exploitation does not concern the image of a celebrity but merely the elements that evoke such a person? Earlier this year, the Court of Milan had the chance to tackle a novel issue in a case brought by Audrey Hepburn’s heirs against the Italian company Caleffi S.p.A..28
The claimants alleged the unauthorised use in an advertisement of elements evoking the image of the actress looking at Tiffany’s window (as in the well-known scene in the film Breakfast at Tiffany’s). The Court of Milan held that, despite the fact that neither the image nor other features of Audrey Hepburn had been reproduced in the advertisement, the defendant’s intent was clearly to evoke the image of the actress in the public’s mind.
The Rivera Case
Under a similar set of facts as those set forth in the Dryer et. al v. National Football League ruling discussed above, the Court of Milan partially upheld the claim filed by a famous former football player, Giovanni Rivera (2015).29 The claimant challenged the commercial use of his image for the sale of certain merchandising items by the most circulated sports daily newspaper in Italy (La Gazzetta dello Sport).
The merchandising items in question consisted, on the one hand, of videos reproducing national and international matches mainly played by A.C. Milan30 as well as interviews given by the players. In this respect, the Court of Milan disagreed with the claimant’s view that his consent should have been required for the following reasons:
- as for the matches, the consent must be inferred from the original consent given by each player upon conclusion of the employment agreement, whereby the player undertook to play for the club and (albeit implicitly) agreed to be recorded while playing; as to the interviews, consent was implicit as he rendered them out of his own will, knowing he was being filmed; and
- the mere documentary purpose of the videos justified the use of the claimant’s image as it fell under one of the exceptions of Art. 97 of the Copyright Law, namely the right to information.
The Court of Milan ruled that the same conclusion was not applicable in respect of some photographs published on the cover of the defendant’s brochure named 'Campionato ti amo' (depicting the claimant in a context other than his former professional activity), and merchandising medals showing an individual similar to the claimant lifting trophies won with his club. In these instances, the Court of Milan held that the commercial and lucrative goals outweighed the documentary scope, therefore the exemption under Art. 97 would not apply.
As was confirmed in Dryer in the U.S., outside of the information and freedom of speech remit, the consent of the depicted person is a condition necessary.
Information vs Commercial Purpose
Similar principles were established in a case before a Belgian Appeal Court (2013),31 in which the Royal Belgian Football Association ('RBFA') claimed that a photograph on the cover of a book infringed on the Belgian national team's image rights. The picture depicted six players celebrating after their team scored a goal during a World Cup qualification match. The RBFA claimed that the photo had been used, without the RBFA’s prior consent, for commercial purposes, as the picture was eye-catching for potential buyers. However, the Belgian Appeal Court agreed with the book's publisher in that the photo could be freely used on a book, whose main purpose was to inform readers about the Belgian league and national team in the 2012/2013 season.
By the same token, in 1989 the Court of Frankfurt32 rejected the claim filed by the former tennis champion Boris Becker in connection with the use of his image on the cover of a book, without his consent. The judge considered that the information purpose pursued by the book, whose goal was to illustrate the techniques of top tennis players, prevailed over the Mr. Becker's image rights.
In a ruling handed down on 4 June 2015, the Court of Milan went further. In another civil action brought by Giovanni Rivera,33 the latter sought a cease and desist order and compensation for damages against the Italian telecommunication company Telecom Italia S.p.A. ('TIM') in connection with TIM's slogans promoting the 'TIM Young' offer, which were superimposed on several videos available on YouTube showing interviews rendered by the player in 1978.
The defendant's view that these advertising messages were merely contained in the 'Google commercial notices' frame and had to be considered independent and separate from the videos at issue, was rejected. Conversely, the Court of Milan found that the fact that TIM's promotional slogan was superimposed, resulted in the videos creating "an unlawful and univocal association" between the plaintiff's image and the defendant's promotional campaign and, therefore, in the absence of Mr. Rivera's consent, constituting an unlawful exploitation of his image rights.
Furthermore, the judge pointed out that:
"in order for an advertising initiative to be considered a violation of a person's image rights, the use of such rights needs to influence the understanding of the public as to the content of the initiative."
According to the Court of Milan, in the present case the commercial slogan showed in the videos engendered in the mind of the public an assumption that Mr. Rivera himself approved and sponsored TIM's services.
In other words, it was established that the defendant had been falsely suggesting an endorsement of its offer by the plaintiff. A conclusion, which is remarkable in that for the first time the principles underpinning the tort of passing off are recalled in the Italian case law.
The case law in both the U.S. and continental Europe seems to be strengthening the protection of fundamental rights such as image rights, particularly in cases where a celebrity's likeness is used, without his/her consent, for purposes falling outside the boundaries of the public's "right to know".
Given the commercial value of sports stars' image, an enhancement of the protection afforded (in addition to other legal remedies such as data protection and copyright) would be certainly welcomed in the U.K. as well.
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- Tags: Belgium | Europe | First Amendment | Image Rights | Intellectual Property | Italy | National Collegiate Athletic Association (NCAA) | National Football League (NFL) | Passing Off | Tennessee Personal Rights Protection Act of 1984 (TPRPA) | The Royal Belgian Football Association (URBSFA) | United Kingdom (UK) | United States of America (USA) | US Copyright Act of 1976
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About the Author
Luca Ferrai is the Global Head of Sports at Withers. He specialises in sports marketing and sports law and provides legal advice to athletes, footballers, agents, coaches, managers, clubs, leagues, federations, investors and sponsors. He provides advice on: sponsorship contracts; playing contracts; coaching contracts; managers employment contracts; international player transfers; agency contracts; intellectual property licensing and audio-visual rights licensing. He also has long-standing experience in national and international sports regulatory issues as well as in sports commercial litigation, and in particular national and international sports arbitration.
Stella's practice focuses on Sports & Media Law, including advising athletes, agents, coaches, clubs, leagues and companies on sponsorship, endorsement and merchandising contracts, as well as assisting in international sports arbitration proceedings.
In addition, Stella also advises domestic and foreign clients on drafting and negotiating international commercial agreements (e.g. consultancy; agency; supply; distribution; licence; franchising; merchandising; general terms and conditions).