33 - Brand protection: another row about a celebrity’s image and a t-shirt…
Elle shot to stardom following the 2019 Women’s World Cup and, being a French icon, managed to secure a few small sponsorship deals in France. The international goalkeeper has been well received during her first season at Paddington FC. Her Instagram following has blossomed from around 10,000 to 100,000 and she has started to receive invites to glamorous red-carpet events, which has started to see Elle shape her presence as an emerging “influencer” in the UK. She is still hoping to secure a clothing line, boot deal or other sponsorship with a UK brand but, as we shall see from the actions of a certain sporting company (Fleet Feet), it would appear that her image could be a valuable asset to her in the UK.
Fleet Feet’s new business venture
Fleet Feet (a premier sports footwear and apparel brand) intends to capitalise on the upward trajectory of women’s football in England (especially following the success of the Women’s Euro 2022). As a starting point, the company want their new product range to appeal to those involved in women’s football, and so it was decided by Fleet Feet that promoting the success of footballers (such as Elle) should be the focal point of their campaign. Fleet Feet’s new loungewear T-shirt, which has recently hit the shelves in the UK, is shown below:
Elle doesn’t own rights in the image of her displayed on the T-shirt (as any such rights would usually, but not always, be owned by the photographer), but she feels that the brand is trading off her reputation, without her permission, in order to generate revenue for the company. Elle also feels that Fleet Feet has falsely represented her endorsement of the product. People close to Elle are outraged by the whole affair. She has been advised that Fleet Feet’s actions are an “infringement of her image rights” and that she should “go legal” by suing the brand. Those same individuals directed Elle to the successful case brought by Rihanna against a well-known fashion retailer for selling a T-shirt bearing her image without her consent1.
Reputation alone isn’t enough
However, fame, celebrity status and reputation aren’t enough on their own, to successfully establish a claim for what is known as “passing off”. Sporting personalities must (amongst other things) show that brands actively exploit their image by engaging in licensing activity in the UK. Despite the advice Elle has received from her close friends, it’s a common misconception that a celebrity can prevent a third party from exploiting their image by simply relying on their fame or reputation as a footballer et cetera.
Global pop-star Rihanna was successful in preventing Topshop from using her image on merchandise but that case turned on its facts. Rihanna relied on the law of passing off and the Court held that Topshop’s sale of the T-shirt amounted to a misrepresentation that Rihanna had endorsed it. The Court of Appeal noted that this case was “close to the borderline”, with the first instance Judge confirming that: “The mere sale by a trader of a t-shirt bearing an image of a famous person is not, without more, an act of passing off”.
Rihanna was however known to engage in licensing activity connected to the use of her image. She had been associated with Topshop in the past, she had made an effort to promote a specific association in the public mind between herself and the world of fashion, and the image in question was taken from a music video shoot and was similar to other images used on her promotional merchandising.
To establish liability for passing off, a claimant must prove three elements. First, goodwill attached to the goods or services in the UK. Second, a misrepresentation by the defendant to the public leading, or likely to lead, the public to believe that the goods or services offered by the defendant are those of the claimant and third, damage.
Unlike Rihanna, Elle does not run a very large merchandising, endorsement and licensing operation in the UK, and she is unlikely to have sufficient goodwill to satisfy the first limb of the test .
Image rights
In English law, there is no “image right” as such to allow a celebrity to control use of their image. Instead, a potential claimant (such as Elle) seeking to prevent unwanted use of their image may rely upon causes of action such as:
copyright infringement;
trade mark infringement (if there are registered rights);
passing off; and/or
breach of contract.
Brand protection strategies
In a football context, players often exploit their image for commercial value, through sponsorship and endorsement activities. So, for emerging players such as Elle it is always better (sooner rather than later) to develop (with a specialist IP lawyer) a brand protection strategy. Such strategies are employed to prevent the unauthorised use of a player’s image and more generally put individuals such as Elle in a better position to leverage formal sponsorship and endorsement deals.
So, how could Elle look to protect her ‘brand’?
Setting up a structure to manage Elle’s “image”
As part of a brand protection strategy, one potential option for sporting stars such as Elle is to set up a structure to manage her “image”. Under this structure, the rights associated with her image are independently valued and formally transferred to a company. By doing this it allows Elle to separately manage her image and this company could negotiate contracts on her behalf, including with her club. Money received through the use of her image is paid directly to the company and therefore taxed under corporation tax rates of 19% as opposed to the 45% rate paid by higher earners on their income tax. Given the tax advantages, HMRC monitor these arrangements quite closely. A player must have an image which has independent value to sponsors and her club must have a robust business plan in place for how her image will be exploited. Given that Elle’s profile has risen dramatically following her appearance at the 2019 World Cup and has the potential to grow even further at the upcoming 2023 World Cup, setting up such a structure to manager her image could be a viable option.
Registered trade marks
As part and parcel of a brand protection strategy, footballers, athletes and celebrities who shoot to fame often consider whether it is beneficial to their interests to secure, if they can, trade mark protection relating to their name, likeness, signature and logos. These rights may not always be limited to football or clothing, with some players (such as Cristiano Ronaldo and David Beckham) obtaining protection for goods such as toiletries and fragrances in a number of countries.
Trade mark law can be a tool for celebrities such as Elle to protect their image. The proprietor of a registered trade mark has exclusive rights in the trade mark which are infringed by use of the trade mark without his/her consent.
Trade marks in relation to a footballers likeness can however, be difficult to register and enforce. Often the use of a footballer’s name or image on products can be deemed as merely descriptive rather than indicating trade origin which may prevent the trade mark being registered. Trade marks do not therefore provide complete protection for players wishing to protect their image.
Data protection
A photograph of Elle, such as the one used on Fleet Feet’s T-shirt, constitutes personal data. The handling of such data must be done so according to UK data protection laws and this legislation provides significant rights to individuals in relation to how their data is collected and processed. Sports stars could therefore potentially rely on these rights to block the use of their image where they have not given consent. However, again, the limitations here are that consent may not be the only lawful basis of processing the personal data. Companies might therefore be able to rely on other grounds to justify publishing the image.
Conclusion
Elle should speak with IP lawyers to form a brand protection strategy which incorporates an array of varying legal rights. These laws can be utilised to effectively protect and monetise a player’s image.
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In 2015, pop-star Rihanna successfully brought a claim against retailer Top Shop who sold a t-shirt featuring a photo of Rihanna without obtaining her permission. This was on the basis that marketing the item without Rihanna’s approval amounted to “passing off”. ↩