by Richard Wee and Samuella Kong
Sports has evolved from an extra co-curricular activity to a booming industry over the last 50 years. The sports industry generates large funding and financial turnovers which creates a financial market on its own. In the middle of this entire gigantic industry remains the soul of sports, which is the athlete. In competitive sports, every athlete carries the goodwill and brand of that sport. Speaking of brands, it is common to read about athletes creating and maintaining their image rights. This concept of image rights is very much part of that earlier-mentioned sports industry above. Some athletes gain much financial income from their respective image rights.
On the other hand, an increasing number of corporate companies have come to realize the potential of being associated or connected to the sports industry. Major brands like Coca Cola, McDonald’s and Samsung have constantly invested in sports sponsorship to ensure that their brand is seen to be connected to sports brands. This hunger that corporations have to link up with sports has become a driving force for the creation of a win-win situation for both parties. In all of this, sports lawyers have a unique role in bridging the gap between these demanding corporations and their desired sports.
In Malaysia, the concept of image rights and its use in the sports industry is a foreign topic, an income-inducing opportunity unseized by many local athletes. However, with the rampant growth of globalization, a failure to properly manage one’s image would significantly hamper the individual’s ability to take control of possible additional income. It is especially relevant to sports athletes who have been granted celebrity status which may be used as a gauge of the athlete’s worth in the market. An example would be Datuk Lee Chong Wei.1 His income is based mainly on his competition winnings but he also earns lucrative income by controlling the use of his image in endorsement deals with the likes of ‘100 Plus’ and ‘Yonex’
In order to get a clearer definition of image rights in the sports industry, a panoramic comparison of image rights in the United Kingdom (UK) and the United States (US) has to be made. In the UK, there is no specific statutory provision for a right to one’s image, nor has it been expressly adjudicated within common law.2 However, image rights is interlinked with the law in regards to intellectual property rights that protects creations. There are two aspects to the protection of image rights, which are to protect a person’s right to privacy and a person’s ability to commercially promote oneself.3
Prior to the US case of Haelan Laboratories, Inc. v. Topps Chewing Gum, Inc.2,4 the right to privacy first protected individuals against the unauthorized use of their likeness for commercial purpose. It was developed in the Haelan5 case where it formed the basis for the right of publicity.6 This right provides that every individual has full control over the commercial use of their identity which includes their name, voice, signature and photograph. It aims to prevent unauthorized and uncompensated exploitation of an individual’s image. Because of this, US is deemed to be the forerunning country for protecting an individual’s image rights. However, the First Amendment to the US Constitution limits the right to publicity7 in an attempt to form a balance between the aforementioned right and the right to freedom of expression. This is considered to be a necessary amendment to prevent infringing the freedom of press.
How are Image Rights Protected?
As there is no specific law for image rights, intellectual property law aids in protecting an athlete’s image rights through various means, for example: through the law related to trademarks and passing off.
Trademarks are recognizable insignias or words used to identify and differentiate a particular product from another, also indicating its source. Trademarks are registered to allow legal action to be taken if the trademarked brand is used without permission. In relation to image rights, athletes can register their name or their signature as trademarks. This however does not include their image. An example would be the world renown footballer, Paul ‘Gazza’ Gascoigne who trademarked his nickname ‘Gazza’, bringing about the Gazzamania fandom. These trademarks are protected under various trademark laws like the US Lanham Act and the UK Trade Marks Act 1994.
Another means of protection is through the law of passing off. Where trademarking is a precautionary measure, the law of passing off is a post-conflict step. As celebrities, it is common for an athlete’s image to be used in endorsement deals. An unauthorized use of the celebrity’s image to endorse a product is considered passing off. It must be proven (1) that at that point in time, the individual had a significant amount of goodwill or reputation and (2) that a significant amount of the general population would mistake the false endorsement as a genuine endorsement by the celebrity. The athlete will then be entitled to compensation under the law of passing off.
The Role of Lawyers in Marketing Image Rights
Malaysia applies similar law to that of UK whereby an athlete’s image rights are protected via trademarking their name. In addition to trademarks for individual athletes, sports teams like the JDT Football Team or the KLBC Badminton Team may take steps to register the team brand. This is where sports lawyers with intellectual property knowledge enter the picture.
Once the brand names are registered, it is encumbered upon relevant characters or teams to promote the brand commercially. Co-branding efforts or selling of the brand to corporate organizations are examples of commercializing an athlete’s image rights. Sports lawyers are involved in each stage of trademarking and marketing the said brand whereby they may also act as marketing advisors cum publicity agents.
Despite being a relatively uncommon field of practice in Malaysia, sports law is in great demand in Western countries. Sports lawyers draft and formalize commercial contracts between parties, ensuring the athlete is legally protected. In this modern age where having a significant presence on social media would greatly enhance the athlete’s brand, it is the sports lawyer’s duty to advise the athlete how to manage social media sites and the content that appears on their page. They filter the content to be posted on the site and advise the athlete on politically correct means of managing conflict. In terms of marketing efforts, a commercial post is planned and timed by the lawyer for maximum impact.
The commercial benefits of controlling one’s image is evident when analyzing football giants, Manchester United. Their nickname ‘The Red Devils’ has received much global recognition from corporations and fans alike. The strategic marketing of that name is a significant factor as to why they are ranked No. 1 on Forbes 2016 list of the World’s Most Valuable Sports Teams with a gross value of $1.86 billion.8 The commercial team together with the sports lawyers of Manchester United have successfully developed their brand and image rights, forming beneficial commercial partnerships with a diverse group of elite brands (ie. Nike and Adidas). The ever-growing desire of certain corporate companies to be associated with successful sports clubs as mentioned earlier above, drives this economic pursuit for sponsorship through the image rights of the club, the team and/or the athlete.
In summary, the driving force behind a successful union between the corporate and sports sector is actually the demand potential sponsors generate by their need to be constantly fed. The relationship between the sectors has become so congruent that the absence of one would greatly impact the commercial wealth of the other. In order to satisfy this ever-growing hunger, image rights in the sports industry have to be properly created, registered and commercialized. Nonetheless, despite the hunger of sponsors, the many commercial opportunities they seek would be non-existent if it were not for the sport itself and the role the athlete plays. The centerpiece of the sports industry has always been and will always be the winning goal shot in by the athlete, the winning point scored at the final buzzer, fulfilling their principal intent of achieving victory. The spirit and soul of sports shall always remain paramount.
1Jeffri Cheong, “Is your Image worth anything?” <http://www.skrine.com/is-your-image-worth-anything> accessed 7 July 2016
2InBrief.co.uk, “Is there a Right to Protect your image under UK Law” <http://www.inbrief.co.uk/human-rights/image-rights/> accessed 7 July 2016
3“Is there a Right to Protect your image under UK Law” by InBrief.co.uk <http://www.inbrief.co.uk/human-rights/image-rights/> accessed 7 July 2016
4202 F.2d 866 (1953)
5202 F.2d 866 (1953)
6Luca Ferrari and Stella Riberti, “Comparing How Image Rights Laws Apply to Sport in the US, UK and Europe” (British Association for Sport and Law, 22 December 2015) < http://www.lawinsport.com/articles/item/comparing-how-image-rights-laws-apply-to-sport-in-the-us-uk-and-europe> accessed 7 July 2016
7Luca Ferrari and Stella Riberti, “Comparing How Image Rights Laws Apply to Sport in the US, UK and Europe” (British Association for Sport and Law, 22 December 2015) <http://www.lawinsport.com/articles/item/comparing-how-image-rights-laws-apply-to-sport-in-the-us-uk-and-europe> accessed 7 July 2016
8Forbes, “The World’s Most Valuable Sports Teams” <http://www.forbes.com/pictures/mli45fdhk/no-1-manchester-united/#6e5d6c9e2270> accessed 7 July 2016