The Viewpoint: The role of Intellectual Property in protection of image rights of athletes

The sporting industry has manifested into something much more than play on the field. Although competitive spirit prevails, the commercial aspect has also occupied a front seat in driving contractual negotiations between sportspersons/players and various stakeholders. A sportsperson’s skill, no doubt, makes for most of their value. But in recent times, different commercial aspects have proven to be a greater revenue source through a players image.

Since a player’s skillset translates into valuable image rights, their licensing and protection becomes imperative. This is made possible with the help of Intellectual Property Rights. However, the subject of image rights is dealt with differently under different legal systems, and also differs in terms of the nature of sport: collective or individual. This article will discuss image rights in its various manifestations and scenarios.

What are image rights?

Subject to the relevant legal systems, every individual has the right to determine how their picture, movements or voice is used. A player’s image can include his name, nicknames, likeness, image, photograph, signature, autograph, initials, statements, endorsement, physical details, voice, and other personal characteristics.

Sportspersons, particularly those who are popular and upcoming, tend to monetise these rights by entering into various kinds of commercial contracts. The two most popular ways through which image rights are utilised to earn revenue are brand endorsements and being the face of a sports organisation. Since these rights carry substantial value, their protection becomes essential and therefore creates a need to bring in the IP rights. Image rights were introduced as IP recently. The first image rights contract in sport was entered into by Kevin Keegan, an English football player. As part of the “face deal,” his image was use to promote football boots to road safety campaigns on television.

Before delving into how the subject of image rights is addressed under different legal systems, it would be pertinent to briefly understand how they are put to commercial use.

Licensing image rights

The ownership of image rights always vests with the individual and cannot be transferred. However, it can be dealt with as property only through licensing. The player, as the absolute owner of his image, can license his image rights to a company, a third person or his sports affiliate, through an image rights licensing agreement. This agreement will broadly state that the player permits the other party to monetise their image, within the terms of the agreement.

The nature of such licensing agreements, depending on the sport, can either be collective, i.e., a group of players together granting the right to use their image to the concerned sports affiliate, or individual, where the athlete, as an individual, will license their image rights. It is not unusual for sportspersons to enter into both these kind of agreements at the same time, and also license their rights to various brands at once.

In fact, the concept of image rights has gotten so intertwined with a player’s identity, that it is a standard clause in their contracts. The multiplicity of these deals has led to image rights companies being formed, with the sole and important objective of getting the players, who hire their services, the best image rights deals possible. In the context of football for example, the company will enter into an agreement with the football club to market the player’s image rights, as well as with other commercial brand partners. Players and clubs will enter into agreements by which the club will pay the player an agreed amount in exchange for the ability to use the player’s image in their general commercial, marketing and promotional materials.

Protecting image rights

Since it is established that a sportsperson’s image rights can only be exploited with his consent, those who freely use a popular athlete’s image will essentially be infringing upon these rights. As mentioned earlier, the fast pace and sophistication of the internet has opened a doorway for violations and unauthorised use of images of famous personalities, including the sporting world. In this light, it becomes essential to ascertain the degree of recognition and protection that image rights have under prominent legal systems around the world.

Image rights under different jurisdictions

1. United States

Image rights in the United States are afforded protection under the ‘right to publicity’. Although this right is not recognised at the federal level, a majority of the states do so either through statute or precedent. This right makes it illegal to use, without a license, the real identity of a person to attract attention to an advertisement or product. The phrase “right to publicity” was first introduced by Judge Jerome Frank in the case of Haelan Lab v. Topps Chewing Gum. This right broadly protects the name, picture, portrait, likeness, voice, signature, gesture and persona aspects of a sportsperson (or any individual, in general). It is important to note that no commercialisation is necessary for an identity to have a protectable right of publicity.

To enforce this right, a civil suit can be brought before a state or federal court through the Lanham Act, alleging unauthorised use of a person’s identity in advertising. Therefore, the right of publicity “protects a property right”.

In White v. Samsung Electronics America, Inc, Vanna White, who had gained fame and recognition through the show “Wheel of Fortune” sued Samsung, alleging violations of her statutory and common law rights of publicity under California law. Samsung had depicted the likeness of White in its ad campaign without her consent. The Court, after observing that the depiction coincided with how White portrays herself on “Wheel of Fortune”, held that Samsung had appropriated her identity, and granted her a motion for summary judgment.

2. United Kingdom

In contrast to the express ‘right of publicity’ available in the United States, the United Kingdom has not accorded any statutory recognition to image rights. Therefore, sportspersons whose interests fall within this jurisdiction should rely on a bundle of rights under trademark, passing off, right to privacy, and data protection to safeguard their image rights.

The tort of passing off appears to be the most reliable route for a sportsperson to pursue an action for illegal use of their image. This can be illustrated by the case of Irvine v. Talksport Ltd, in which Eddie Irvine, a Formula One racing driver, alleged that Talksport used an image of him holding a Talksport radio for their advertising without his consent. Irvine was awarded damages to the tune of £25,000 by the Court of Appeal.

Guernsey Law on Image Rights

Statutory advancement with respect to image rights took place in 2012, wherein the UK Channel Island of Guernsey implemented the world’s first image rights registry. This centres around the concept of “personnage”, i.e., the character behind a personality. This enables a person to register their image rights, thereby earning the status of a “registered personality”. This legislation also addresses the infringement of these rights i.e., unauthorised use by third parties. Similar to the enforcement of trademark rights, either the owner or the authorised licensee can bring proceedings and take action against any infringement, without necessarily having to involve the owner themselves.

3. India

In India, image or personality rights are not concretely dealt with by any independent statute. Despite this, image rights agreements are in play. Broadly recognising this concept, the Delhi High Court in the case of ICC Development (International) Ltd. v. Arvee Enterprises observed thus,

“The right of publicity has evolved from the right of privacy and can inhere only in an individual or any indica of an individual’s personality like his name, personality trait, signature, voice, etc. An individual may acquire the right of publicity by virtue of his associate with an event, sport, movie, etc.”

However, no one other than the individual is entitled to profit from this right. Subsequently, in the case of DM Entertainment Pvt Ltd v. Baby Gift House and Ors, the Delhi High Court upheld the claim of the plaintiffs and held that the defendants were guilty of passing off and violating the plaintiff’s right to publicity, by having toys that were identical to theirs.

With India boasting a number of celebrities, both on and off the sporting field, much is to be done to protect their image rights and publicity in the commercial sense and provide a feasible framework for their exercise and enforcement. The most recent example being that of PV Sindhu’s image rights company, Baseline Ventures serving legal notices on 20 brands including the likes of Pan Bahar, Eureka Forbes, Vodafone Idea and others to take down social media posts unauthorisedly associating themselves with her by cashing in on her victory. They have also sought damages to the tune of ₹5 crore.

Conclusion

The sporting industry has grown into such popularity that it has become a primary platform for commercial advertising and endorsements. While this presents sportspersons with lucrative earning opportunities by licensing their image rights for use by various brands, the impending threat of unauthorised use is not pleasant. This calls for a comprehensive framework to be established, which deals with what falls under the umbrella of image rights, how they can be licensed, and the remedies available in the event of infringement of the same. While legal systems like those in US, Germany and the Channel Islands of Guernsey offer sufficient protection, India is yet to catch up to that level and provide a sense of legal comfort to its sports personalities.

Prashant Shivadass and Rachana Pise are Founder and Associate respectively with Shivadass & Shivadass (Law Chambers).

The contents and comments of this document do not necessarily reflect the views/position of Shivadass and Shivadass (Law Chambers) but remain solely of the author(s). For any further queries or follow up, please contact admin@sdlaw.co.in.