The future of sports data: image rights in sport – The state of play

United Kingdom

The second article in our The Future of Sports Data series examines what we mean by “image rights” in the UK and how a combination of intellectual property and other legal rights may be used by athletes to challenge the use and commercialisation of their image and likeness, particularly where the athlete feels they are not getting their fair share of remuneration for that usage.

There have been a number of headline-grabbing stories recently involving sports stars wading into the murky waters of image rights. This article looks at the current state of play and where we might be headed. It focuses on the position in the UK with a hefty health warning that the position in other jurisdictions is likely to be quite different. In particular, the UK has a reputation for being an unfriendly place to seek to enforce the rights in an individual’s name or likeness, whereas many continental European jurisdictions have a long-standing history of protecting image rights.

The issue of image rights in sport came to the fore again at the end of 2020 when Zlatan Ibrahimović (who was then backed up by Gareth Bale) took to social media to complain that his name and face were being used by the FIFA video game franchise to make money without his consent. This immediately gives rise to two questions: (1) Does EA Sports (the publisher of the game) need Ibrahimović’s consent? and (2) if so, has he given it? To answer the first question, we look at the avenues for legal protection of image rights in the UK. We then look at football’s current licensing arrangements to try to answer the second question.

Although this article focuses on football, and that is certainly the sport where image rights are most valuable, at least in the UK, image rights disputes in sport are by no means confined to football.  For example, it was reported in late 2020 that the cricket players’ union, FICA, had made a legal challenge against the International Cricket Council (ICC), the cricket governing body, alleging that the ICC is using players’ image rights in a manner which has not been authorised by the players, including for the purposes of fantasy cricket games and behind the scenes documentaries. 

1. Legal Protection of Image Rights in the UK

To answer the first question, it is necessary to consider what action a sports player could take to prevent the use of his image in the UK. Image rights are particularly complex under English law. There is no codified or consolidated legislation that protects image rights as such. Instead, sports stars need to rely on a patchwork of laws including intellectual property rights, passing off, privacy laws, defamation and advertising regulations to prevent authorised exploitation of their image.

Passing off

This is perhaps the cause of action in the UK which is closest to an image right and indeed one of the leading cases in the area is sports related; Formula 1 driver Eddie Irvine’s claim against Talksport Radio. It is generally considered the most obvious means of enforcing the image right of a sports star because its three constituent elements appear well suited to the types of scenarios in which sports stars will be wanting to take action. It first requires a goodwill, which when you are dealing with famous sports stars can often seem like a given. Next it requires a misrepresentation, which again can appear obvious when a sports star’s name or likeness has been used to imply their connection to a certain product or service which does not reflect reality. Finally, it requires some damage to have been caused. All sports stars today are acutely aware of the value of their sponsorship and merchandising deals and would immediately point to any situation which could jeopardise their position under those deals as clearly causing them damage.

However, the situation is not as clear cut as it would first appear. The UK courts have been very reluctant to provide sports stars with broad rights merely because they have a high degree of recognition amongst the public. First, being famous does not necessarily equate to having a goodwill, which refers specifically to the power of attraction generated by some business. Sports stars will need to show that they are regularly in the business of commanding fees for product endorsements before a court will agree that a goodwill exists in their name or image. Second, the alleged infringement must involve a genuine deception. Unless consumers are actually likely to believe that the sports star is associated with or has authorised the alleged harm then a court is unlikely to accept that an actionable misrepresentation has occurred. So the evidence required to succeed in a passing off claim often makes such a claim untenable.

Trade marks

Registered trade mark protection is one of the few registered rights which sports stars can obtain to seek to protect their name, nickname or any logos associated with them. For example, Cristiano Ronaldo owns “CR7” and Roger Federer has his “RF” logo. David Beckham owns a huge range of registered trade marks including even SMOKEY BECKHAM (which was assigned to him following a dispute with a businessman who tried to trade mark the name). There was also the famous example of trade mark registrations for Jose Mourinho’s name holding up negotiations regarding him becoming Manchester United manager as the marks were still owned by his former club, Chelsea.

Registered trade mark protection has its benefits; if a third party uses the owner’s identical name on identical goods/services for which the trade mark is registered, the owner does not need to prove that consumers would actually be confused or that the third parties use would take advantage of the owner’s reputation. However, they also have their limits. First, registries are reluctant to accept trade mark applications from sports stars in respect of goods which would simply bear the person’s image rather than designate the origin of the goods. For example, Alex Ferguson failed to secure registrations for his name in relation to goods such as posters, photographs, transfers and stickers for this reason. Ultimately, trade mark registrations are a limited tool which can be used only in quite specific circumstances.

Copyright / Performer’s rights

Copyright is of narrow use in protecting image rights since no intrinsic copyright exists in an individual (e.g. their face or name). The copyright in any photograph of a sports star would belong, in the first instance, to the photographer. However, if the sports star acquires the copyright in any works (such as photographs, drawings, films) of them, then they could exploit those specific works by licensing them to third parties. Performers’ rights, whereby an individual can control the dissemination or exploitation of their performances are not relevant because a “performance” for the purposes of the legislation is a dramatic or musical performance, or a reading or recitation of a literary work, which is a live performance. It would not include, for example, a player’s performance on a football pitch (even though some performances may seem like they could be classed as ‘dramatic’!) although these rights may arise in other sports that are more akin to dance, such as ice dancing or gymnastics floor.

Privacy / Breach of Confidence

Celebrities have successfully relied on the law of privacy to protect commercial image rights in the past (the most famous example being that of Douglas v Hello! which involved unauthorised photographs taken for Hello! Magazine at the wedding of Catherine Zeta-Jones and Michael Douglas). This case led to the recognition of the right to sell private information for profit in order to protect those who have entered into exclusive arrangements regarding the publication of information that would otherwise be considered confidential. However, it was key to that case that considerable control was exercised over the images (and the attendees at the wedding) such that an obligation of confidentiality was created. It is likely that this would apply to photographs taken of sports stars only in very specific circumstances, such as where those photographs were taken at a private event.

Data Protection

The General Data Protection Regulation (GDPR) and the Data Protection Act 2018 impose broad obligations on those who collect and process personal information, the key obligation being to process personal data “lawfully”. It also grants significant rights to individuals in respect of an organisation’s processing of their personal data, including rights in certain circumstances to access what data is being processed about them, to object to the processing and to obtain erasure of their personal data. Sports stars seeking to protect their image may therefore be able to rely on these rights to prevent the unauthorised publication of photographs or film bearing their image.

However, obtaining an individual’s consent is not the only way for commercial parties to process that individual’s personal data “lawfully”. The primary argument that a publisher of an image of a sports star would raise in response to any objection from the individual that they had not consented to the use would be that there is a “legitimate interest” for the publisher’s actions.  This is the most flexible basis on which to justify the processing of personal data about an individual, but it is not always appropriate to rely on it (and it also has not yet been tested in any detail by the courts). In order to rely on this condition for lawful processing, a commercial party must balance its (or a third party’s) interests against the player’s rights, interests and freedoms, including the likelihood of the publication to cause unjustified harm. However, one key consideration is whether the individual could reasonably expect their image to be published. In the case of a sports star, who more than most should be aware that their image taken in their professional capacity is likely to be published extensively in multiple different contexts, an objection on data protection grounds may be more difficult.

Defamation / Malicious Falsehood

If the name or image of a sports star were used without their permission in a manner which is inaccurate and potentially harmful to their reputation, they could consider a claim for defamation or malicious falsehood. However, although a sports star might consider that the use of their name or likeness to endorse a certain product harms their reputation in the opinion of the public, the bar for an actionable claim is set high. Firstly, there must be the publication of a statement or allegation that is false and defamatory, which is not straight forward in false endorsement cases. Secondly, the Defamation Act 2013 introduced a requirement that a statement must have caused, or be likely to cause, serious harm to the individual’s reputation for it to be classified as defamatory. This condition means that the circumstances in which a sports star could bring a defamation claim in relation to the use of their name or image to promote a product are likely to be rare. As for a malicious falsehood claim, although “serious harm” is not required, evidence of “malice” is. That typically requires that the defendant knew that the relevant statements were false, was reckless as to their truth or falsity when publishing them or, even though the defendant believed the statements to be true, their dominant motive in publishing the statements was to injure the claimant’s interests. Again, this seems unlikely to be satisfied in promotional material.

Advertising Regulation

The regulation of advertising in the UK is conducted with reference to the CAP and BCAP Codes[1],  which contain specific measures dealing with the use of images of individuals that could be relied upon by players in making a complaint to the Advertising Standards Authority (“ASA”) in the event they are portrayed or referred to in advertisements without their permission. Although breaches of the codes would not provide the players with any right to compensation or other remedy from the advertiser, a successful complaint to the ASA would typically result in the ASA demanding that the advertiser withdraw the offending ad and publishing their adjudication against the advertiser. An example of this in the sports world is the ASA complaint lodged by David Bedford (a runner in the 1970s) against a TV advert for 118 118 directory enquiries services, in which he claimed his image had been exploited by the actors caricaturing him. No action was taken against the ads, despite them being held to be a breach of advertising rules, in part because it was not clear that Mr Bedford had actually suffered any financial loss as a result.

2. The Licensing of Image Rights

The second question, as to whether sports stars such as Ibrahimović might have already given their consent to the use of their image, is equally complicated. Companies like EA Sports acquire their rights to the sports stars’ images they use in their games through a weave of separate direct agreements with clubs, leagues, governing bodies, players’ unions and individual players.

To add further complexity, some football clubs sell their licensing rights for video games collectively (such as those in the Premier League), whereas others do not (Italy’s top-flight sides, for example, agree their own separate licensing deals). However, in either scenario, almost all top clubs will obtain the rights to use their players’ image to promote both the club and the relevant league’s licensed products and services in their contracts with the players. These rights would allow the clubs to license on the use of the players’ image to third parties such as EA Sports.

In football in England, there is a “Standard Player’s Contract” with the Premier League. This contains a specific clause under which the player grants the club the broad rights to use his image, including in relation to products or services which are endorsed or produced under licence from the club or the Premier League. This clause cannot be varied in way which would affect the rights granted to the Premier League.

It seems unlikely that Ibrahimović’s contract with AC Milan (his current club) would not permit the use of his image in the FIFA video game series. However, interestingly, there is a specific exclusion that prohibits the use of a player’s image or photograph to imply any brand or product endorsement by the player. It may be, therefore, that there is a distinction to be drawn between a player’s image being used in the FIFA game itself and the image being used, for example, on the front cover of the game’s packaging (as Bale’s image was used for the FIFA 14 version of the video game) which might imply that the player endorses the video game itself.

In Ibrahimović’s original social media post about the issue, he also referred to Fifpro (the International Federation of Professional Footballers). Fifpro is a global players’ union, consisting of 65 national member associations around the globe, which acquires image rights via those national players’ unions and makes them available to EA Sports (and others in the video gaming industry). However, Ibrahimović complains that he was not aware that he was a member of Fifpro and, if he was, it was “without any real knowledge”. Since one of Fifpro’s key principles is that “[a] player's name, image and performance may only be commercially utilised with his or her consent, voluntarily given” it is less than ideal that players appear not to know that they are members, nevermind that they have purportedly consented to the use of their image via such membership arrangement.

Both EA Sports and Fifpro released statements in response to the Ibrahimović/Bale complaint, with Fifpro saying that it “is reaching out to the players and their representation that have recently raised concerns so we can address their questions” and EA Sports stating:

“To be very clear, we have contractual rights to include the likeness of all players currently in our game. As already stated, we acquire these licenses directly from leagues, teams, and individual players. In addition, we work with Fifpro to ensure we can include as many players as we can to create the most authentic game. In these instances, our rights to player likenesses are granted through our club agreement with AC Milan and our long-standing exclusive partnership with the Premier League, which includes all players for Tottenham Hotspur.”

The same disputes are beginning to surface in other sports. The allegation made by FICA against the ICC raised similar claims that, whilst players give the ICC certain limited rights to use their image in specific ways during ICC Events and for a short period before and after them, the ICC is using player attributes and other commercial rights outside of this and in a way that hasn’t been authorised by the players.

These disputes highlight the importance of carefully checking the scope of all contractual arrangements, although arguably the hardest part is knowing all the contracts that apply to a specific individual or set of circumstances.

Conclusion

While matters on this front have gone quiet over the past few months, it seems fairly certain further issues surrounding image rights will surface in the near future, and it is certainly an area to keep a close eye on. Super-agent Mino Raiola (who represents Ibrahimović as well as a host of other big names such as Paul Pogba and Romelu Lukaku) has claimed that over 300 players are ready to join Ibrahimović in his battle with EA Sports.

As discussed above, data protection laws are one potential component of an image rights claim and in the UK we may shortly see this play out in the courts.   It is reported that there is a legal action pending from over 400 professional footballers against gaming, betting and data-processing companies over lucrative player performance data. The effort, known as Project Red Card, is understood to be based on a complaint that these companies are using the players’ personal, performance and tracking data without their consent in breach of the players’ rights under data protection laws. This will be covered in more depth in the next article in this The Future of Sports Data series.



[1] “CAP” is the Committee of Advertising Practice and “BCAP” is the Broadcast Committee of Advertising Practice