The Right to Use Images of Athletes for Commercial Purposes — Gold Mine or Undermined?

Abstract

In today’s modern sporting world, image rights can hold enormous commercial value to both the professional athlete and his club. Image rights can be defined as the proprietary rights that arise from the commercial exploitation of a sporting personality’s name and image. Sports image rights are very valuable assets — the iconic 1970s English soccer player Kevin Keegan was the first sports personality to actively enter into what was known at the time as a “face contract” for what was essentially his image rights. This article analyses the concept of the image rights contract, a comparative analysis of the image rights regime in Europe and the United States of America, the regulatory challenges in the Nigerian Professional Football League, and the untapped commercial opportunities for athletes.

Introduction

The global obsession with footballers has created one of the great money-spinners of the entertainment industry. In return for captivating audiences with their skills on the pitch, international soccer stars are now earning many more millions of dollars off the pitch, appearing on television and other media and associating themselves with products ranging from soft drinks to vehicles and airlines. A recent broadcast deal is set to raise the stakes even higher on home shores. This lucrative five-year broadcast deal is certain to raise issues around the image rights of NPFL players, as more brands begin to leverage it. But does this mean more income for NPFL athletes, as it would for their international counterparts? The answer to this question might surprise you.

What are image rights?

In a football context, image rights are simply the right a player possesses to control, sell, license and otherwise monetise his or her likeness — that is, his or her image, name, nickname, voice, signature and all other characteristics unique to the player.

Image rights are broadly defined, using the expression “image” not in its narrow sense of “likeness” but in its wider sense of “persona” or “brand”, to use a marketing term.

In countries like England, Italy and Spain, where the commercial value of image rights is now recognised, players often seek to create image rights companies and then assign those rights to these companies. This is done for tax purposes, as revenue generated from the exploitation of a player’s image rights will be taxed at corporate tax rates, typically substantially lower than personal income tax rates. Non-UK players playing football in the UK will often set up both UK and offshore image rights companies — the player’s UK image rights are assigned to the UK company, and their global image rights to the offshore company.

Treatment of image rights in Europe and the United States

Image rights are known by different names, and are subject to different legal treatment, in different jurisdictions. In the United Kingdom, they are known as image rights; in continental Europe, as personality rights; and in the United States, as publicity rights. Nigeria has followed its colonial traditions by adopting the English position — the country’s colonial past has birthed the concept of “image rights” as viewed in most common law countries. In stark contrast to the laws of other foreign jurisdictions, neither English law nor Nigerian law offers a specific, statute-based protection in relation to image rights. France, for instance, has what is called “personality rights”, protected under Article 9 of the French Civil Code. In the United States, this is known as the “right of publicity”, which purports to protect against uncompensated commercial exploitation of a person’s (such as an athlete’s) likeness or identity. Every person, celebrity or non-celebrity, has a right of publicity — in short, the right to own, protect and commercially exploit one’s identity.

The protection afforded to the right of publicity in the United States stems from, and is intertwined with, the right of privacy. The term “right of publicity” was coined by Judge Jerome Frank in 1953 in Haelan Laboratories, Inc. v Topps Chewing Gum, Inc., 202 F.2d 866 (2d Cir. 1953), which for the first time affirmed that individuals (in this case, Major League Baseball players) possess a property right in their own images. This right varies from state to state within the United States. Nevertheless, the right of publicity underpins the protection which inures to a player in respect of uncompensated commercial exploitation of their image. The approach in England and most common law countries, including Nigeria, is to rely on a framework of statutory and common law intellectual property rights to prevent unauthorised exploitation.

Remedies available for breach of image rights

Infringements of image rights have become rife in the entertainment and sports industries. However, the absence of a statutory framework has not deterred rights owners from bringing actions in court. Players and image rights companies have often resorted to activating the provisions of trademark and copyright law, as well as the common law doctrine of passing off. One of the most notable cases in this area is the widely reported case of Robyn (Rihanna) Fenty v Arcadia Group.

As regards copyright, Nigerian copyright law automatically confers a property right on the author of original works, which can include literary, dramatic, musical or artistic works. There is, however, no copyright in a player’s face or name, because these are not original works — the copyright in a photograph of Cristiano Ronaldo belongs to the photographer (save where there is an assignment), and the copyright in an audio recording of a media interview belongs to the interviewer. As a result, the law of copyright is of limited use to professional athletes.

A trademark is a registrable intellectual property right comprising any sign capable of being reproduced graphically and capable of distinguishing the goods and services of one undertaking from those of another. Sporting personalities can apply to register trademarks comprising their name, slogans or logo, among others, but such signs will only qualify for registration in Nigeria if they are sufficiently distinctive and unique.

Intellectual property lawyers representing aggrieved athletes have devised an ingenious way of surmounting the procedural hurdles associated with seeking appropriate redress for their clients: the common law remedy of passing off. As notable cases on the point show, a greater percentage of successful lawsuits on breaches of image rights have succeeded where the players’ legal representatives relied on passing off. Two notable cases illustrate this: Rihanna (Fenty Group) and Arcadia Group, and the widely reported case of Mohamed Salah v Egyptian Football Federation. Even though the parties in the latter case managed not to institute any litigation, valuable lessons were learnt, not only by the parties to the dispute but by other football federations, on the extent of their powers with respect to exploiting a player’s image rights. It is pertinent to comment on both cases.

Robyn (Rihanna) Fenty v Arcadia Group

In this case, popular style and fashion icon Rihanna sued Topshop, a member of the Arcadia Group, for selling a T-shirt bearing her image. The image had been photographed by an independent photographer, and Topshop had obtained a licence to use the image from the photographer, but not from Rihanna herself. Rihanna argued that the sale of the T-shirt bearing her image infringed her rights on the grounds of passing off, on the basis that the general public would assume she had licensed the use of her image to Topshop. Topshop, on the other hand, argued that customers would always buy the shirt because they liked the product and the image for their own individual qualities, and that nothing on the T-shirt represented it as an item of Rihanna’s official merchandise. The judge found for the plaintiff, holding that Topshop’s conduct amounted to a misrepresentation to the general public that Rihanna had in fact endorsed the sale of the T-shirt, such that a large number of purchasers were likely to have been deceived into buying it.

Mohamed Salah v Egyptian Football Federation

The dispute between Egypt and Liverpool striker Mohamed Salah centred on the unauthorised use of his image. This dispute, after a long-simmering cold war, was only made public in April 2018 following a social media spat between the player’s representatives and the Football Association’s representatives.

In late 2017, Mr Abou-Rida, acting in his capacity as Egyptian Football Federation (EFA) chairman, allegedly made a phone call to Mr Salah and “encouraged him to give preference to the sponsors of the Egyptian Football Association” in relation to the licensing of Salah’s worldwide image rights, which are controlled by the player’s image rights company, MSCC.

In the days that followed, Mr Abbas received an unsolicited letter from a company called “Presentation”, which held itself out to “be the main and only sponsor of the Egyptian Football Association.” Presentation had signed a deal with the EFA for exclusive sponsorship and commercial rights surrounding the national team, and requested that Mr Abbas provide information relating to ongoing negotiations for the use of Mr Salah’s image rights, as well as guidance on what the EFA would have to do to purchase the rights to a photo shoot featuring Mr Salah.

Mr Abbas queried Presentation as to why it required this information, but received no response. He accordingly requested that the EFA, Presentation, Egypt Air, and any other relevant commercial partners cease and desist from using or authorising the use of Mr Salah’s image without express written consent from MSCC.

Mr Abou-Rida and the EFA maintained they had the right to use Mr Salah’s image, but shortly thereafter announced that the EFA would remove his image from its promotional materials and cease using it alongside the WE logo on the Egypt Air airplane. The parties somehow resolved their differences shortly before the World Cup in Russia. Had they failed to do so, Mohamed Salah would have been able to bring an action for passing off.

The Nigerian Professional Football League

At the outset of a player’s career, his image rights are owned by the player, in so far as they cannot be exploited, licensed or assigned without his prior consent. In general, elite international players will license their image rights to three broad categories of licensee: their club, their personal sponsors, and their national association.

Under the NPFL Rules, a player’s image rights obligations are expressly incorporated in Form 7 of the Rules, specifically Clauses 4.3 through 4.7. Clause 4.3 is the assignment clause recognising the club’s rights to exploit the player’s image rights. By Clause 4.4, the player agrees not to undertake any promotional activities on the club’s behalf, nor assign his image rights to any other person. The player is further obliged, under Clause 4.5, to undertake promotional activities on behalf of the club; this is complemented by Clause 4.6, where the player expressly assigns the copyright in his photographs to the club and grants the club permission to exploit his image for promotional purposes.

It is pertinent to note, however, that the exploitation of a player’s image imposes a corresponding obligation on the club to ensure such usage is not subjected to any greater use than that of his teammates, and that the player’s photograph or image does not imply an endorsement of the product or service being promoted. This was the thrust of the dispute between Mohamed Salah and the Egyptian Football Federation, where the player’s representatives alleged his image was subjected to greater use than that of his teammates, and gave the impression the player endorsed Egypt Air.

What happens where a player’s promotional obligations to a personal sponsor conflict with those owed to his club, or even the league? Take a hypothetical example: Hamidu plays for Benue Comets FC, sponsored by a soft drink brand; before signing with Benue Comets, he had a personal promotional obligation to a different soft drink brand. Would it be right for Hamidu to breach his obligations to his personal sponsor under the pretext of observing similar obligations to his club?

Curiously, the drafters of the NPFL Rules have made no provision for this. Typically, such situations are addressed by including non-compete clauses in standard contracts, precluding players from endorsing brands competing with the league’s or club’s own sponsors — Clause 4.3 of the English FA’s standard contract contains such a clause, precluding a player from endorsing a competing brand during the term of his contract. English and some European clubs have found ways to navigate this provision, especially for high-profile players. The case of iconic Swedish striker Zlatan Ibrahimović and Manchester United comes easily to mind: prior to joining the English club in 2016, the Swede had endorsed Swedish car manufacturing giant Volvo. This deal ensured Zlatan never endorsed American auto brand Chevrolet, one of the biggest auto brands endorsed by Manchester United; instead of dropping his personal sponsor, Zlatan carried on with it regardless. That is what can happen with a player of Zlatan Ibrahimović’s profile — what happens where the player is of less iconic status? In any event, European clubs typically respect existing endorsements by a player and make exceptions for such scenarios.

What options are available?

There are three main ways an athlete can seek to commercialise their rights:

Sponsorship. Under a sponsorship arrangement, a corporate brand pays the athlete (or provides them with products) in exchange for certain marketing rights, in order to promote the brand’s image generally — for instance, participation in advertising, or wearing branded clothing.

Endorsement. An endorsement arrangement goes one step further, involving the personal recommendation by the athlete of products made by the sponsoring brand, or at least a close association between the athlete and those products, aimed at affecting the purchasing patterns of the public. Many premium and luxury watch manufacturers, for example, have endorsement arrangements with athletes.

Merchandising. Merchandising arrangements monetise the athlete’s own image rights and status by applying them to a “personal” range of products. This generally requires considerable investment in protecting and growing the athlete’s own image and “brand”, including a trademark portfolio — beyond what most athletes would require, and outside the scope of this article.

It is understandable why the Nigerian league has not deemed it necessary to insert non-compete clauses into its standard player contracts — the league’s commercial profile is only just becoming enhanced by the signing of its first broadcast deal. It is only a matter of time before high-profile brands besiege the league’s headquarters to leverage its immense commercial potential. This would undoubtedly increase clubs’ purchasing power to sign high-profile players with existing personal brand sponsors, and the legal fireworks would start unless this lacuna is addressed. Can more be done within the framework of the NPFL Rules to empower Nigerian players to enjoy the commercial use of their own image rights?

References

1. On 7 November 2019, the League Management Company of Nigeria, regulators of the Nigeria Professional Football League (NPFL), announced a multi-million-dollar broadcast deal with communications giant Next TV worth US$225,000,000.

2. Carol Couse and Jake Cohen, “Case Review: US Soccer Federation v National Players Association (Use of Player Likenesses)”, LawInSport, 2 February 2017.

3. Haelan Laboratories, Inc. v Topps Chewing Gum, Inc., 202 F.2d 866 (2d Cir. 1953).

4. Robyn (Rihanna) Fenty v Arcadia Group [2013] EWHC 2310 (Ch).

5. Abdel Rahman Shuwaikh, “Solution for Salah’s Image Rights to See Light Soon”, Daily News Egypt, 11 October 2018.

6. KingFut, “Legal Letters Explain Dispute Between Mohamed Salah, Egyptian FA”, 25 April 2018.

7. Ibid.

8. Egypt Today, “Salah’s Dispute with EFA Escalated”, 28 August 2018.

9. Nick De Marco QC, Football and the Law (2018), pp. 242–243.

10. Form 7 of the NPFL Framework & Rules.

11–12. Rule 4 of the Premier League Rules 2017/18.

13. Fletcher, Paul and Grant, Tom, “Image Rights”, in Nick De Marco QC (ed.), Football and the Law (2018), pp. 239–241.

14. penningtonslaw.com, “The Lifecycle of an International Athlete: Negotiating Sponsorship and Endorsement Deals”.

Structuring an athlete image rights deal?

Kempes & Kaplan LP advises athletes, clubs and brands on image rights, sponsorship and endorsement agreements. Write to counsel@kandklp.com.