The Right to Use Images of Athletes for Commercial Purposes – Gold Mine or Undermined? By Steve Austin Nwabueze – TheNigerialawyer

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 being on television and other media; associating themselves
with products from soft drinks to vehicles and airlines. A recent
deal is set to raise the stakes even higher on home shores. On
November 7, 2019 the League Management Company of Nigeria;
regulators of the Nigeria Professional Football League (NPFL),
announced a multi-million-dollar broadcast deal with communication
giants, Next TV worth a whopping US$225, 000, 000 (Two
Hundred &Twenty-Five Million United States Dollars).
This lucrative 5-year broadcast deal is certain to bring up issues
on the image rights of the NPFL Players as more brands begin to
leverage on this broadcast deal. But does this actually mean more
income for NPFL athletes as it would with their international
counterparts? The answer to this question might surprise
you.  

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 enter actively into what was known at the time as a
“face contract” for what were essentially his image rights.

What are image rights

In a football context, image rights are simply the right a
player possesses to control, sell, license and otherwise monetize
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 recognized, most players often seek to
create image rights companies and then assign those rights to these
companies. This is done for tax purposes, as the revenue generated
from the exploitation of the player’s image rights will be taxed at
corporate tax rates, which are typically substantially lower than
personal income tax rates. Non-UK players who are playing football
in the UK will often set up both UK and offshore image rights
companies. In these situations, the player’s UK image rights will
be assigned to the UK image rights company, and his global image
rights will be assigned to the offshore image rights companies.

Treatment of image rights In Europe and the United
States

Image rights are also known by different names and 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. Accordingly, the country’s colonial past has
birthed the concept of ‘image rights’ as they are viewed in most
common law countries. Therefore, in stark contrast to the laws of
other foreign jurisdictions, neither English law nor Nigerian law
offers a specific, statute-based law protection in relation to
image rights. France for instance, has what is called “personality
rights” which are protected under Article 9 of the French Civil
Code. In the United States, it is known as the ‘right of
publicity’. The right of publicity purports to protect against
uncompensated commercial exploitation of a person (such as an
athlete’s) likeness or identity. Every person, celebrity or
non-celebrity, has a right of publicity – which in short, is 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, 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
in the United States, it must be stated, varies from state to
state. Nevertheless, the right of publicity underpins the
protection which inures to a player in respect of uncompensated
commercial exploitation of a player’s 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 unauthorized 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 in seeking a redress has not deterred their
owners from bringing actions in court. Players/image rights
companies have often resorted to activating the provisions in the
trademark and copyright law as well as the common law doctrine of
passing off.  Some of the notable cases in this area is the
widely reported case of Robyn (Rihanna) Fenty v Arcadia Group. As
regards copyright, Nigeria 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 his name because they are not
original works. The copyright in a photograph of Cristiano Ronaldo
will belong to the photographer (save there is an assignment).
Likewise, the copyright in an audio recording of a media interview
will belong 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 which
comprises any sign capable of being reproduced graphically and
capable of distinguishing goods and services of one undertaking
from those of another undertaking. Sporting personalities can apply
to register trademarks comprising their name, slogans, logo
(amongst 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 an appropriate redress for their clients.
They have resorted to the common law remedy of passing off. As some
of the notable cases on the point would show, a greater percentage
of the successful lawsuits on breaches of image rights succeeded
where the players’ legal representatives relied on the common law
remedy of passing off. One of the two notable cases in this area is
the case of Rihanna (Fenty Group) and Arcadia Group. The second
case is the widely reported case of Mohammed Salah v Egypt Football
Federation. Even though the parties in this case somehow managed
not to institute any litigation on this case, valuable lessons were
learnt by not only the parties to the dispute but other football
federations on the extent of their powers with respect to
exploiting the image rights of a player. It is pertinent at this
point to make comments 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 that 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 there was
nothing on the T-shirt which represented it as an item of Rihanna’s
official merchandise. In arriving at its decision, the judge found
for the plaintiff and held that Topshop’s conduct amounted to a
misrepresentation to the general public that Rihanna had in fact
endorsed the sale of the T-shirt. As a result, it was found that a
large number of purchasers were likely to have been deceived by
Topshop into purchasing the T-shirt.

Mohammed Salah v Egyptian Football
Federation

The dispute between Egypt and Liverpool striker, Mohamed Salah
centered on the unauthorized use of the former’s 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 Egypt
Football Federation 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
licencing of Salah’s worldwide image rights, which are controlled
by the player’s image rights company, MSCC.

In the days following, 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 signed a deal with the EFA for
the exclusive sponsorship and commercial rights surrounding the
national team. Presentation 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 in order to purchase the rights to a photo shoot featuring Mr
Salah.

Mr Abbas queried Presentation as to why it would require this
information but did not receive a response. Accordingly, Mr.Abbas
requested that the EFA, Presentation and Egypt Air, and any and all
other relevant commercial partners cease and desist using or
authorizing the use of Mr. Salah’s image without express written
consent from MSCC.

Mr Abou-Rida and the EFA maintained that they had the right to
use Mr Salah’s image, but shortly thereafter, announced that the
EFA would remove Mr Salah’s image from its promotional materials
and cease the use of his image alongside the WE logo on the Egypt
Air aeroplane. Somehow, the parties resolved their differences
shortly before the world cup in Russia. Had the two parties failed
to resolve this dispute, Mohammed 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 (i) their club (ii) their personal sponsors and (iii)
national association.

Under the NPFL Rules, the player’s image rights obligations are
expressly incorporated in Form 7 of the Rules, specifically in
Clause 4.3 through 4.7. Clause 4.3 of the contract is the
assignment clause that recognizes 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 article 4.5 of the contract to undertake promotional
activities on behalf of the club. This clause is complemented by
clause 4.6 where the player expressly assigns the copyright to his
photographs to the club and grants to the club, permission to
exploit his image for promotional purposes. However, it is
pertinent to point out that the exploitation of a player’s image
imposes a corresponding obligation on the club to ensure that such
usage is not subjected to any greater usage than that of his
teammates. The club is also obliged to ensure that the player’s
photograph or image does not imply an endorsement by the player of
the product or service being promoted. This was the thrust of the
dispute between Mohammed Salah and the Egypt Football Federation
where the player’s representatives alleged that their client’s
image was subjected to greater use more than that of his teammates
and gave the impression that the player endorsed the use of Egypt
Air.

What happens where a player’s promotional obligations to a
personal sponsor conflicts with that of his club or even the
league? Take a hypothetical example; Hamidu plays for Benue Comets
FC who are sponsored by a soft drink brand. Before signing up with
Benue Comets, he had a personal promotional obligation to another
soft drink brand. Would it be right for Hamidu to breach his
obligations to his personal sponsors under the pretext of observing
similar obligations to his club?

Curiously, the drafters of the NPFL Rules have made no
provisions in this regard. Typically, these situations are
addressed by including non-compete clauses in the standard
contracts which precludes the players from endorsing competing
brands with the league’s or club’s sponsors. Clause 4.3 of the
English FA standard contract contains such clause which precludes
the player from endorsing a competing brand during the term of his
contract. English and some European clubs have found a way to
navigate this provision especially when it comes to club’s
high-profile players. The case of iconic Swedish striker, Zlatan
Ibrahimovic and Manchester United easily comes to mind. The swede
had prior to joining the former English champions in 2016 endorsed
Swedish car Manufacturing giants, 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 sponsors, Zlatan did the exact opposite and carried on
with his personal sponsors. That is what can happen with a player
with the profile of Zlatan Ibrahimovic. What happens where the
player is of a less iconic status? In any event, European clubs
typically respect existing endorsements by a player and make
exceptions of such scenarios.

What are the different options available?

There are three main ways that an athlete can seek to
commercialize his or her rights.

• Sponsorship. Under a sponsorship arrangement,
  a corporate brand pays the athlete (or provides the athlete with
  products) in exchange for being granted certain marketing rights by
  the athlete, in order to promote the brand’s image generally. The
  marketing rights might take the form of participation in
  advertising, or wearing branded clothing, for instance.
• Endorsement. An endorsement arrangement
  goes one step further than this. It involves 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. In this case, the brand in question is not merely
  seeking to raise its profile but to affect purchasing patterns of
  the public. For example, many premium and luxury watch
  manufacturers have endorsement arrangements with athletes.
• Merchandising. Merchandising arrangements
  operate by monetizing the athlete’s own image rights and status, by
  applying it to the athlete’s ‘personal’ range of products.
  Generally merchandising requires considerable investment of
  resource into protecting and growing the athlete’s own image and
  ‘brand’, including investment in a trade mark portfolio. This goes
  beyond what most athletes would require and this blog does not
  provide further detail on merchandising.

It is understandable why the Nigerian league has not deemed it
necessary to insert non-compete clauses in the standard player
contracts. The burgeoning commercial profile of the league is just
becoming more enhanced with the signing of the first broadcast deal
last week. It is only a matter of time before high profile brands
besiege the league headquarters to leverage on the immense
commercial potentials of the league. This would undoubtedly
increase the purchasing power of the clubs to buy high profile
players with existing personal brands sponsors and then the legal
fireworks would start unless this lacuna is addressed
immediately.  Can more be done within the framework of the
NPFL rules to empower Nigerian players to enjoy the commercial use
of their image rights?

References

1. Carol Couse and Jake Cohen, ‘Case review: US Soccer Federation
   v National Players Association (use of player likenesses)’,
   LawInSport, 2 February 2017, last accessed 9 April 2019, available
   at https://www.lawinsport.com/topics/articles/item/case-review-us-soccer-federation-v-national-players-association-use-of-player-likenesses^[1].
2. KingFut, “Legal letters explain dispute between Mohamed Salah,
   Egyptian FA” KingFut, 25 April 2018, last viewed 9 April 2019,
   available at https://www.kingfut.com/2018/04/25/mohamed-salah-egyptian-fa-exclusive^[2].
3. Abdel Rahman Shuwaikh, “Solution for Salah’s image rights to
   see light soon,” Daily News Egypt, 11 October 2018.
4. Egypt Today, “Salah dispute with EFA escalated, 28 August 2018,
   last viewed 19 March 2019, available at https://www.egypttoday.com/Article/1/56730/Salah-s-dispute-with-EFA-escalated^[3].
5. Haelan
   Laboratories, Inc. v. Topps Chewing Gum, Inc^[4]., 202 F.2d 866 (2d
   Cir. 1953).
6. Robyn (Rihanna) Fenty v Arcadia Group (2013) EWHC2310
   (Ch).
7. Rule 4 of the Premier league Rules 2017/18
8. Rule 4 of the NPFL Framework Rules 2015/16
9. Form 7 of the NPFL Rules.
10. Fletcher, Paul and Grant, Tom (Image Rights; Article
    publication in Football and the Law by Nick De Marco, QC) 2018 page
    239, 240 and 241.
11. Nick De Marco, QC (Football and the law; 2018) page
    242-243
12. https://www.penningtonslaw.com/news-publications/latest-news/2017/the-lifecycle-of-an-international-athlete-negotiating-sponsorship-and-endorsements-deals^[5]

Steve Austin Nwabueze is a lawyer; Senior Associate and
the team lead of the Sports and Entertainment team of Perchstone
and Graeys LP, Lagos.

(08032336584)