INTRODUCTION
Lights and flashing cameras, microphones and interviews and the chant of their name echo everywhere they go. The life of professional athletes extends well beyond the boundaries of their respective fields. In a growingly commercialised space, their image as an athlete and as a person is a coveted source of revenue directly or indirectly, be it through broadcasting rights, licensing deals or social media endorsements. Thus, it becomes essential to safeguard this source from being exploited and that is where the question of Intellectual Property and Image Rights comes into play.This blog aims to shed light on image rights in the field of sports, by exploring the laws in place around the world, to protect the image rights of athletes and analysing the shortcomings of the same.
WHAT ARE IMAGE RIGHTS?
Image rights or personality rights refer to a person’s exclusive rights in their persona, including their image, name, stage name, likeness, signature, and other indicia that are inextricably linked to them. This extends to theirlegal capacity to profit from and prohibit an unauthorized party from using their persona. An individual avails this right to publicity owing to their association with any famous event, movie, sport etc.[1]
The money primarily comes from “personality merchandising” wherein goods and services are linked with the person to increase their marketability. It has a large amount of goodwill associated with it. When celebrities engage in it knowingly, it is implied that such use of their persona is authorised.
Judicial pronouncements in England, India and the US have tried to bring in legal metrics to determine the elements that constitute a person`s image rights. From the case of Haelan Laboratories, Inc. v. Topps Chewing Gum, Inc.[2], it is clear that courts recognize a “right to publicity” and the right to monetary gain from the said publicity and that in an event otherwise, prominent persons would be “deprived”. It is therefore essential to prove the validity and identifiability of the impugned name, picture, etc.tosuccessfully establish a case of infringement of image rights.[3]
LIMITATIONS/DRAWBACKS
Absence of Clear Statutory Regulations
There is an absence of a distinct statutory provision concerning image rights in India. We still rely on extensions and understandings of colonial intellectual property provisions and judicial pronouncements in this regard, which is highly problematic because judgments are supposed to be guided by and in line with such evolving statutes. This is particularly true in the fast-paced innovation era we are in. Further, these provisions lack the necessary definition of key terms and are highly ambiguous in the nature of their interpretation.
The Indian Copyright Act 1957, for example, doesn’t define the terms ‘personalities’ or ‘celebrities’ and Section 2(qq) does a poor job of defining a ‘performer’ as it is still unclear from its definition, whether a sports person would fall under the ambit of a performer, especially off the field[4].
Ubiquity And Depth of Media extend beyond domestic legislation
In a day and age of rampant media and paparazzi coverage of athletes, their persona is used in a particularly exploitative way to earn profit by these companies, social media influencers or news channels.
What makes this worse is the absence of an agreed international framework for dealing with image rights infringements. The Trips Agreement and the WIPO Copyright Treaties and guidelines are the best that exists in the status quo. Owing to the internet and highly globalised market, companies’ and individuals` image rights are subjected to international use. Therefore, there is a need for an international framework which transcends domestic legislation to avoid reliance on unfair or inequitable terms of domestic law.
Hard to Compute the exact economic value
Obtaining a trustworthy and impartial value of the related image rights is one of the legal challenges experienced in practice for business negotiations, tax and civil litigation purposes.Even prior to this, it must be determined whether the alleged infringement was for a commercial purpose that resulted in any direct or indirect loss to the plaintiff in their respective field[5].This is a challenge faced by Intellectual Property in general, as there are varying standards for the calculation of the monetary value of the image rights and the goodwill associated with it.
Problems arising out of morality
Sometimes it happens that once a well-renowned sports personality descends from grace owing to controversies in their personal or professional life. Instances of match-fixing in cricket and off-field issues such as accusations of sexual assault leading to their suspension affect their brand. However, there is no recognised mechanism to deal with image rights in such cases.
And on the other hand, it is imperative that companies should not be using the athlete`s image if and when they are engaging in any malpractice or humanitarian abuse. For e.g., reports of H&M using child labour in Myanmar and Adidas being called out for hypocrisy for promoting the FIFA World Cup in Russia might affect the image of athletes endorsing these brands.[6] This is important to protect the image rights of athletes and not ensure a drop in their valuation because of something they do not stand for.
REMEDIES TO CONSIDER
Licensing
As established in the Titan Industries Ltd. v Ramkumar Jewellers and Section 17 of the Copyright Act, the ownership of image lies with the famous personalities and only they control how their identity is utilised.[7]They therefore can decide to enter into licensing agreements to secure their image rights with any third party or a company to monetise their image, subject to certain terms and conditions that are beneficial to them.
Athletes as a team often grant the licences to the clubs they play for and the club then engages with other partners and players contractually become obliged to accept their image rights being used for example in games like FIFA and star in advertisements endorsing their sponsors. However, the athletes would be well compensated and any infringement of image rights is dealt with by the club legally on their behalf.
Trade Marks and “Well-Known” Standard
Section 2(m) of the Trademarks Act of 1999 includes the term “name” under its definition and is considered to be a “mark”.[8]This act protects the personality of individuals then owing to the legal process and proof of registering a trademark which then makes suing against infringement a lot easier and more structured in terms of the burden of proof.
The well-known standard is recognised by Section 2(1) (zg)of the act and states that any mark that has gained widespread popularity in public is well-recognisable and that use of the mark in relation to any utilities is considered to be a mark too. Given the fame of athletes, this is a very beneficial standard to prevent infringement of their rights as affirmed in the case of Sourav Ganguly v. Tata Tea Ltd.
This is stark in the case of Mahendra Singh Dhoni and Rhiti Sports Management Private Limited v. David Hanley[9], where a domain which is identically similar to the “MS Dhoni” trademark was registered in the name of the famous cricketer (as “msdhoni.com”) by the defendant. The WIPO Arbitration and Mediation Centre observed that since this was done strictly for commercial purposes without any alternative explanation, the defendant was a trademark squatter who registered the domain name in bad faith. The “well-known” standard is applied here as well.
Learnings from other countries
The UK Channel Island ofGuernsey implemented the world’s first image rights registry which was based on the idea of “personage.” This makes it possible for someone to register their image rights and get the label of “registered personality.” Such a registry could be plausible in India.
Like Germany(Articles 1 and 2) and France, it is important to bring in new legislation or amend old ones to recognise the right and lay down procedures and rules.
CONCLUSION
Sports is no longer just about the games, the passion of athletes playing them and the fans watching them. It is a billion-dollar industry filled with lucrative opportunities. Since licensing of image rights and trademarks of their names and brands is complex and often ambiguous, a comprehensive legal framework must be brought into place, particularly in India. It is their skills and efforts which translate into such monetary success and it is only fair that it be protected and athletes are rightly rewarded.
Author(s) Name: S. Sri Ganesh Prasad (NLU Jodhpur)
References:
[1] ICC Development (International) Ltd. v. Arvee Enterprises, 2003 (26) PTC 245 Del
[2]Haelan Laboratories, Inc. v. Topps Chewing Gum, Inc., 202 F.2d 866 (2d Cir. 1953)
[3]Titan Industries Ltd. v. Ramkumar Jewellers, [2012 (50) PTC 486 (Del)]
[4]Indian Copyright Act, 1957, s. 2(qq)
[5] Gautam Gambhir v. D.A.P. and Co.andOrs, [CS(COMM) 395/2017
[6]James Hitchings-Hales, “Hundreds of H&M and Gap Factory Workers Abused Daily: Report”, (Global Citizen, 5 June 2018) <https://www.theguardian.com/business/2016/aug/21/hm-factories-myanmar-employed-14-year-old-workers> Accessed 21 Feb 2022
[7]Indian Copyright Act, 1957, s. 17
[8]Trademarks Act, 1999, s. 2(m)
[9]Mahendra Singh Dhoni and Rhiti Sports Management Private Limited v. David Hanley, [Case No. D2016-1692]
