The images of well-known sports personalities are undoubtedly very valuable. It was reported that in 2013 the turnover of David Beckham’s image rights company, Footwork Productions Limited, was in excess of £16 million. Indeed, a large portion of many top sports people's income is now derived from endorsement and sponsorship deals, which are based on the licensing of image rights. This non-playing income has the ability to continue long after playing income ceases – just think of Gary Lineker and Walkers crisps!
It is not just the image and likeness of a sports personality that can be very valuable. Think also of other personal attributes, such as their signatures, which can be used in marketing materials or on packaging to endorse commercial products.
There is an old saying in English intellectual property law, that “what is worth copying is worth protecting”. Registered protection, in the form of trade marks and, in Guernsey, image rights, is available.
Anything that can be written down or represented graphically, such as a player’s name and signature, has potential to be registered as a trademark if it is sufficiently distinctive. A registered trademark can be a valuable asset that can be commercially licensed and which also enables effective action against people making unauthorised use of the mark by claiming trademark infringement. If a sports person does not register their name as a trademark, if someone makes unauthorised use of their name to promote a product, in the UK it would be necessary to rely on bringing an action for false endorsement under the law of “passing off”. This can be complex and costly, and success would be far from guaranteed.
Trademark protection is territorial: a registered trademark covers only the country in which it is registered. However, it is also possible to register a “Community Trade Mark”, which would have effect throughout the European Union (including the UK). It is therefore important to consider in which countries one wishes to protect a player’s name or signature.
When registering a trademark, it is necessary to specify the types of goods and services in respect of which the mark is to be registered. Registering in respect of clothing and footwear is often key for sports personalities. Wayne Rooney and David Beckham have both registered their names as trademarks in respect of a broad range of goods and services, from bags and key rings to cameras, CD players, toys, perfume and jewellery.
A further consideration: Guernsey registered image rights
Guernsey, a British Crown dependency with its own legal jurisdiction, has recently established a new registered image rights regime. Accordingly, it is worth considering whether, in particular circumstances, the registration of image rights in Guernsey would be worthwhile.
The UK tax authority, HM Revenue and Customs (HMRC), has acknowledged that Guernsey image rights, due to their registered nature, are a valid and distinct intellectual property right. This is significant because HMRC has questioned, in recent years, the validity of arrangements based solely upon an assignment of “goodwill” from an individual to an image rights company (which is traditionally how image rights arrangements were structured).
At a time when we are representing a number of footballers whose Image Rights Companies are being challenged by HMRC, many are looking at the registration of trademarks and/or registering their image rights in Guernsey as sensible steps to avoid such a challenge.