Being a sports celebrity can have its drawbacks; others may want to ride on your success by illegally using your name and likeness to help sell their products. This article
seeks to demonstrate the importance and methods of protecting your personality rights.
Everyone wants a piece of the action: spectators, athletes, media companies and would-be sponsors. Companies have paid large sums of money to be associated exclusively with a sport or an athlete (including off field). The
names, likenesses, images, voices and other identifying characteristics of successful sports stars have become commodities of high value. David Beckham earned around £10m last year alone from his pay and various sponsorship deals,
including million-pound deals with Brylcream and Police sunglasses. Tiger Woods signed a five-year sponsorship contract with Nike for around US$40m which was renewed for a substantially higher sum.
Sport has taken on greater significance in Asia more recently. With the Beijing Olympics, Omega PGA in Hong Kong, Malaysia Grand Prix and so many other international tournaments held in Asia, parties are jostling for a larger
slice of the action. There is a role for everyone: event organisers, international governing bodies, sports federations, sports venue owners, merchandisers, broadcasters, participating teams/clubs and management consultants.
Formulating effective strategies to exploit and protect these 'commodities' can be done through careful consideration of intellectual property ('IP') rights.
To what extent can a sports star control the use of his name and likeness by others in the sporting arena?
Personality Rights
Unlike countries like France, in Hong Kong, there is no recognised or protectable personality right. Instead, sports celebrities have traditionally relied on common law and statutory rights such as passing off, defamation,
breach of confidence, trade mark law and copyright law for protection. They have not been successful in every case.
Although Hong Kong recognises the right of personal privacy to a limited extent, this has not evolved to the more extended right to protect against unauthorised exploitation of personality. This is in direct contrast to the UK
where the Court of Appeal recognised the right to personal privacy in accordance with art 8 of the European Convention of Human Rights in the recent Michael Douglas and Catherine Zeta-Jones case against Hello! magazine.1
In Hong Kong, the Bill of Rights Ordinance only protects private individuals from invasions of privacy by the government and public authorities and not invasion of privacy by private persons or organisations. Stronger rights exist
in the People's Republic of China ('PRC'). Under art 99 of the General Principles of the Civil Law of the PRC, citizens have the right to enjoy their personal names. Interference with, usurpation of and false representation of a
personal name are prohibited. Article 100 provides that the use of a citizen's portrait for profit without his consent is prohibited. In this manner, a star's photograph may not be used to endorse a product without his consent.
The Law on the Protection of Rights and Interests of Women also provides against the commercial use of a woman's portrait without her consent. A combination of these laws will protect athletes, enabling them to prevent the
commercial exploitation of their personality rights.
Common Law
The common law tort of passing off protects the goodwill and reputation of individuals and companies from being used without their authority in the course of a business in a manner which is likely to misrepresent facts and
cause damage. Celebrities often sue for passing off to stop unauthorised commercial exploitation of their images. However, relying on this law to protect a star's image is expensive and often has unpredictable results, as so much
depends on the evidence of confusion. If it appears to the court (as it did in one case) that only a 'moron in a hurry' would be confused, then no injunction will be granted.
The famous Hong Kong entertainer Andy Lau2 failed to obtain an interlocutory injunction to prevent Hang Seng Bank from
issuing credit cards bearing his name and image without his authorisation. The court held that the bank did not misrepresent to the public that the plaintiff had endorsed or licensed the credit cards. It was simply offering to
affix Mr Lau's photograph on its credit cards or phone cards from a choice of photographs.
Since Hong Kong courts do consider English law, the recent English decision of Edmund Irvine & Tidswell Ltd v Talksport Ltd [2002] EWHC 367 (Ch) may be of assistance to athletes. In this case, the well-known Formula One
driver Edmund Irvine's photograph was manipulated and reproduced in the defendant's brochure so that he was holding a portable radio bearing the former name of the defendant, 'Talk Radio'. Irvine commenced legal proceedings
against the defendant for damages for passing off. Laddie J made it clear that the law of passing off can protect the goodwill of celebrities from unlicensed appropriation.
Defamation
The law of defamation may also be used to protect a sports person3 from unauthorised commercial exploitation of his
persona. For example, if the image of a well-known vegetarian tennis player is used to advertise beef burgers or a teetotaller's image is used to advertise alcohol, they would be able to commence proceedings for defamation as
there is an innuendo of hypocrisy.
Trade Marks
Another way to stop unauthorised use of a distinctive sign, be it in the form of a star's eyes (Damon Hill) or his helmet (Villeneuve) is to register a trade mark for that distinctive 'sign'.
Many sports stars have registered their names, nicknames, photographs, images and other identifying features as trade marks on a wide variety of goods and services - Eric Cantona, Jacques Villeneuve, Alan Shearer and Damon Hill
to name a few. Hong Kong's own international movie star, Chow Yun Fatt has registered his photograph in relation to goods in Hong Kong. The aim of these registrations was for the stars to secure monopoly rights over the commercial
use of their photographs from being used to sell or exploit goods for which the trade mark was registered. However, trade mark law does not always help a star - it will depend on how the mark is being used.
In Arsenal Football Club plc v Matthew Reed [2001] RPC 46, Arsenal failed to stop the defendant from selling both official and unofficial merchandise bearing Arsenal-registered trade marks such as 'ARSENAL', 'GUNNERS'
and the club's crest and logos. Laddie J held that in order for there to be trade mark infringement, the use of the offending sign must be a trade mark use, ie a use which indicates trade origin. In this case, he said that there
was no trade mark use as the public who bought merchandise bearing Arsenal's trade marks viewed the marks as badges of allegiance to the club and not indicators that the merchandise was produced by or under licence from the club.
The case was then appealed to the European Court. The Advocate General's recent opinion is that use of a trade mark signifying support or allegiance to a club for commercial exploitation can be prevented by the trade mark
proprietor. His opinion is not binding on the court but they will take it into consideration when making their decision.
Not every trade mark application to register a photograph will succeed. For example, the estate of Princess Diana was unsuccessful in protecting the exploitation of her image, immediately following her death, by applying to
register various photographs. The UK Trade Marks Office refused to register a large number of photographs of Princess Diana for a wide variety of goods as it was of the view that the Diana, Princess of Wales Memorial Fund was
unable to show that the mark was distinctive.
In the Elvis Presley case,4 the English Court of Appeal confirmed that the names 'Elvis' and 'Elvis Presley' could not be
registered as trade marks as they did not distinguish the goods of one trader from another. It was considered that members of the public buy Elvis Presley merchandise not because it comes from a particular source but because it
carries the name or image of Elvis Presley.
Domain Names
Many sports stars like Giancarlo Fisichella, Jaap Stam and Serena and Venus Williams found that others used their names as domain names. Brand owners should ensure that they have a proper strategy to secure their rights over
the internet. It is possible to take cybersquatters to task under the ICANN Uniform Domain Name Dispute Resolution Policy and other similar dispute resolution procedures. World Intellectual Property Organisation ('WIPO') recently
transferred back to FIFA 13 domain names containing the registered trade mark 'world cup' on the basis that these domain names were confusingly similar to the registered trade mark, and the domain-name holder had no legitimate
interest in the domain names and had acted in bad faith.
Copyright/Media Rights
Photographs, graphic works, text, broadcasts, sound recordings, video recordings all attract copyright protection. There is no copyright in a name even if it is invented, unless it is presented in such a stylised way as to
qualify as an artistic work. The photographer or his employer usually owns copyright in photographs unless they have been assigned or exclusively licensed to a third party. Sports stars or their representatives, therefore, need to
check who owns such rights.
The main income stream from sport comes from broadcasting rights. Before its recent financial problems, Kirch Gruppe and its partner, EM TV, paid Bernie Ecclestone US$2.6bn for their stake in Formula One's commercial rights.
The European Commission has recently called into question who actually owns the rights to the events themselves. With the amounts at stake, the different interest groups that make up each sport, have to carefully consider the
various platforms of exploitation when negotiating with each other including future technology.
Conclusion
Without well-considered agreements, that envisage future growth, technology and proper protection of IP rights, sports stars and sponsors will encounter difficulties in the future. Stars, sponsors and broadcasters need to
negotiate carefully when entering into sponsorship, broadcasting and merchandising agreements. For example, a sponsor paying several million dollars for David Beckham to wear their branded kit should take care to ensure that the
contract requires him to wear its brand off field as well. The last thing they would want to see are photographs of him in the newspaper wearing a competitor's brand in his leisure time. Vigilance and enforcement of IP rights are
all part of the strategy that needs to be employed to maximise the revenue stream in this sector.
Bina Cunningham
Denton Wilde Sapte Hong Kong
Endnotes