Is your Image worth anything?

Jeffri Cheong provides a write-up on image rights

 

 

BACKGROUND

In a world which is fixated with the lives and lifestyles of the rich and famous, celebrities aided and abetted by their professional advisers have become experts in the lucrative art of exploiting their image rights.

 

This article seeks to explore examples of the various protective mechanisms for such rights.

 

Big Steaks, Big Cars and Big Money

 

The United States of America, a land renown for its large steaks, large automobiles and since 2008, large corporate bailouts, is also a land of immense rewards for mega-sports personalities.

 

Before his much publicised marital infidelities, Tiger Woods stood unchallenged at the top of the list of highest paid sports personalities, earning around USD100 million a year in prize money, endorsements and appearance fees.

 

Kobe Bryant of the Championship winning Los Angeles Lakers and basketball legend Michael Jordan come in second, each taking home a cool USD45 million a year through salary and endorsement deals. David Beckham, currently in the twilight of his playing career, trails not far behind, pocketing USD42 million, mostly from endorsements.

 

 

The Beautiful Game

In the English Premier League, football players may include in their contracts with their teams provisions which provide for the exploitation of “image rights” which may or may not necessarily include the rights to sponsorships and endorsements. Generally players let the club use their image under license in exchange for an annual payment.

 

It has been reported that this payment goes into the player's 'image company', many of which are based offshore, prompting investigations by the UK Inland Revenue Board as the money may be finding its way back to the players as a tax-free bonus disguised as income.

 

At times, players may reserve the right to exploit their image rights to endorse products themselves. For example, Fernando "El Nino" Torres has a boot-sponsorship deal with US sporting goods giant, Nike, whereas his team Liverpool is sponsored by their German rival, Adidas.

 

In Spain, the spend thrift Real Madrid paid their first generation galacticos Luis Figo and Zinedine Zidane USD56 million and £21.5 million respectively for their image rights.

 

 

LEGAL BASIS

Unquestionably, sports personalities and other celebrities seek to protect the value in their image rights through various legal mechanisms, rooted in the belief that these are legitimate proprietary rights derived from their own name, likeness, personal attributes, style characteristics, nicknames or slogans associated with them.

 

Celebrities may justify this entitlement as the rights that they create out of the labour involved in becoming famous, keeping it in line with the fundamental principle of intellectual property law which protects creations. These rights are sometimes described as "image rights" although they may also be referred to as "personality rights" or "publicity rights”.

 

 

United States of America

The United States of America are leaders in this area where the laws of many American states have created an intellectual property right of publicity, that is the inherent right of every human being to control the commercial use of their identity. For example, the California Civil Code prohibits anyone from knowingly using another’s name, voice, signature, photograph or likeness in any manner on or in products, merchandise or goods without such person’s prior consent.

 

 

The United Kingdom

There is no legislation in the United Kingdom which recognises a statutory right of an individual to control the commercial use of his image.

 

The primary basis for the commercial exploitation of an individual's image lies in the law of contract. In sponsorship and endorsement deals, the personalities grant an exclusive licence to the advertiser to enhance the reputation of their products or goods due to the association with the star while they are compensated through royalty payments for the right of the advertiser to exploit their image.

 

Interestingly, there is nothing to prevent celebrities from registering their names as trade marks provided the requirements of the trade mark legislation are satisfied. Eric Cantona, the French footballer renown for his imperious presence on the pitch and kung-fu kicks off it, has not only registered the name "Cantona 7" as a trade mark, but also his famous slogan "ooo…aaah Cantona". Alan Shearer and Ryan Giggs have followed Cantona’s footsteps.

 

The protection of one's image against unlawful exploitation is achieved through the assertion of the right based on an inventive combination and use of separate legal doctrines such as copyright infringement, passing off, trade mark infringement and the statutory right of privacy. Where appropriate, defamation, libel and malicious falsehood are thrown in as related causes of action.

 

The value of a celebrity's image may be utilised as a yardstick in determining the amount which he can seek from a third party who has used his image without authorization or consent which could depreciate the value of the celebrity's image by being associated with inferior goods, services or materials or deprive him from other lucrative endorsement contracts due to loss of exclusivity in addition to the loss of royalty payments.

 

 

Malaysia

With the rare exceptions of Nicol David and Lee Chong Wei who are presently the world's top-ranked players in squash and badminton respectively, the Malaysian market is not ripe for local athletes and celebrities to attach astronomical values to their image. Notwithstanding the same, the law does provide protection for such rights, regardless of its value.

 

Although there is no law which confers a statutory right on an individual to control the use of his image, it is submitted that the legal doctrines applied in the United Kingdom for the exploitation and protection of image rights are generally applicable in Malaysia, except for the right of privacy which is provided under specific legislation in the United Kingdom.

 

Regulatory codes for the advertising industry in Malaysia prohibit the use of misleading or deceptive advertisements, including portraying a living person without his prior permission. However, these codes are generally toothless from the perspective of the aggrieved person as they do not provide for damages or compensation to be awarded to him.

 

 

SOME INTERESTING CASES

The cases below briefly highlight the developments in this area of law.

 

 

The King's Estate

The estate of Elvis Presley in 1999 failed in their action against a trader for using the term “Elvisly Yours” to promote its products premised upon the reason that consumers would be misled into believing the products were endorsed or licensed from the Elvis Presley estate.  The UK Court of Appeal rejected the concept of a freestanding general right to character exploitation enjoyable exclusively by a celebrity.

 

The Court further explained that the estate of Elvis Presley could not have monopoly over the use of images and names, unless they had established some prior right or reputation for the image and name in association with particular products. Generally names are descriptive indicators and do not function as a mark of origin for certain goods and services.

 

This reasoning echoes the sentiments from 1930 in a case where the Court stated that sometimes men and women voluntarily enter professions which invite publicity, public approval and disapproval and therefore they should submit without complaint to their names, occupations and reputation being treated almost as public property.

 

 

Fast Eddie

The paradigm shift in this legal reasoning occurred in 2002 when former Formula One driver Eddie Irvine successfully sued a radio station on the basis of passing off when they manipulated a photograph of him by removing the mobile phone in his hand and replacing it with a radio inscribed with the words “Talk Radio”.

 

The Court held that Eddie Irvine had established a substantial reputation among the general British public and such use of his image confused the public into believing that Irvine was associated with the Talk Radio when he in fact was not. The Court added that Irvine had a proprietary right in his goodwill which he can protect from unlicensed appropriation consisting of a false claim or suggestion of endorsement of a third party’s goods or services. This was a significant step towards the recognition of image rights under English law.

 

 

Making the Tabloids Pay

The law of libel, defamation, malicious falsehood, breach of confidence and privacy is another avenue for celebrities to protect their images if the unauthorised use thereof has defamed them or violated their dignity.

 

In 2008, Max Moseley, the then-President of the Federation Internationale d l'Automobile (FIA), was the subject of a story and online video which depicted sex sessions he was engaged in with women whom he had paid. He was awarded a £60,000 payout for invasion of his privacy by the High Court after the News of the World failed in its public interest defence.

 

Earlier in 2004, the House of Lords upheld Naomi Campbell’s claim for breach of confidence, when the Mirror newspaper published an article on her attendance to a drug rehabilitation centre. She claimed the publishing of the article had breached the confidence between her and the drug rehabilitation centre.

 

These cases also turned on the recognition of the right to privacy provided by the Human Rights Act 1998 which states that everyone has a right to respect for his private and family life, his home and his correspondence. This section of the Human Rights Act 1998 imposes a positive obligation on the UK government to provide effective respect for private life including in the sphere of the relations of individuals between themselves. With the limited recognition of such principles in Malaysia, the right to privacy may be an unconvincing argument in the realm of Malaysian courts.

 

 

PULLING THE PLUG

The importance of celebrities who enjoy endorsement contracts maintaining the image which their sponsors seek to be associated with cannot be overstated. For just as quickly as sponsors hop on the bandwagon, many do not hesitate to end their association with the celebrity just as quickly when events arise which diminish the value of the relationship.

 

As Tiger Woods found out to his detriment, several of his major sponsors, namely Gillette, Accenture, General Motors, AT&T and Gatorade ended their sponsorship arrangements with him within 6 months of the outbreak of his off-course exploits.

 

Similarly, Nike terminated their boot-sponsorship deal, reportedly worth £40,000 per year, with Newcastle footballer Joey Barton after he was convicted of assault in the English court.

 

 

"TIMES ARE A CHANGING"

Although Malaysian personalities may not be able to attach similar commercial values to their image rights as their counterparts in the United States or the United Kingdom, their consistent hard work, effort and labour in their respective fields in order to achieve their accomplishments and popularity, whether locally or regionally, are deserving of protection under the law.

 

Malaysian celebrities Tony Eusoff, Diana Johor Zainal Abidin and Zahnita Dorothy Hussein Wilson have each brought legal proceedings against a company for unauthorised use of their images late last year and early this year. A successful outcome of these claims will auger well for the development on the law on protection of image rights in Malaysia.*

 

More importantly, if local celebrities manage and exploit their rights wisely, it could possibly lead to a dramatic increase in the overall commercial value of local personalities’ images.

 

 

JEFFRI CHEONG SIU-KONG ( This e-mail address is being protected from spambots. You need JavaScript enabled to view it )

 

* According to a spokesman for the company, Tony Eusoff has agreed on an out-of-court settlement with the company on his claim against them (The Star, 6 July 2010).

 

 
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