Image rights are widely defined as the right to the commercialisation of the expression of a personality as a “persona” or “brand”. They can be very valuable, often forming part of negotiations between sports personalities and their teams, management, or sponsors.
With the emergence of esports and the commercial opportunities the sector brings, now is the right time to consider your rights and how you can effectively exploit them.
Image rights are a type of intellectual property (IP) right. All IP rights are territorial, that is to say that they are only enforceable in the countries or territories in which they are valid or registered. Different countries have different names and different laws covering such rights, for example, in Europe, they are called personality rights, and in the USA they are called publicity rights.
Image rights are not legally recognised in the UK per se, (except for tax purposes). However, through a combination of intellectual property rights and contractual obligations, there are mechanisms by which a personality may protect and exploit the rights to their persona in the UK:
- Copyright – this protects works such as photographs and recordings of a personality. The rights in copyright works will automatically vest in the author (e.g. photographer) unless there are contractual obligations to the contrary, so consider ensuring that rights in copyright works are assigned to you or your management/sponsor for appropriate exploitation where possible.
- Trade marks – these are registrable rights so are relatively easy to enforce, license and assign. Consider registration of any specific names, slogans (such as catch-phrases), logos or even moving images. Registered trade mark rights can be denoted using the ® symbol which can act as a useful marketing tool as well as a warning to would-be infringers.
- Passing off – simultaneously a broader and narrower right than registered trade mark rights or copyright works. Passing off rights can be used to enforce more of the “look and feel” of something such as an artistic interpretation of a personality, rather than a direct copy of an image, but you will need to show that you have goodwill in that representation, that the use is misleading that there is an association or affiliation with you, and that this has or will lead to damage. The burden of proof can be quite high, so retaining copies and information regarding instances of use of your persona from the start is advisable.
- Commercial confidentiality/contractual obligations – drafting clauses into contracts is one of the best ways of defining who is permitted to exploit what rights. Be specific, and if possible include a schedule of rights with clear definitions. Sponsors will often include “Morality clauses” which impose rules on how the personality must conduct themselves so as not to bring the sponsor into disrepute and so that they don’t lose out financially. Remember that adhering to such clauses will not only avoid a breach of contract but will increase your bargaining power and value in the future.
There are various avenues by which a persona can enforce their rights if necessary, including through infringement, passing off, and breach of contract actions. As with other IP and contractual rights, remedies include interim injunctions, injunctions, account of profits and damages.
It is often difficult to value an infringement for the purposes of the calculation of damages, particularly where the persona has no comparable contracts in place against which to compare the commercial value, and damages recoverable in the UK and Europe will be lower than that in USA.
However, that should not prevent fair recovery and I would encourage all esports personalities who consider they have a right to exploit or enforce to speak to us. As with most IP rights, early identification of “image rights” is paramount to successful enforcement and monetisation.
Our specialist esports team includes expert intellectual property and commercial lawyers who can provide advice and support to any organisation – check out our esports page for more information.
