It is somewhat trite to describe the world as image obsessed. The media are prone to describe the current era as an Instagram age, a time when the selfie rules all. Images of particular individuals can be of sizeable commercial value. The association of a celebrity with a product or service is intended to suggest a link between them, in the hope of making the product or service desirable.
The commercialisation of images of individuals is not new ground; the contracts governing virtually every aspect of the lives of stars in the Hollywood system of the early twentieth century are prime examples of this. However, the value of image rights is now bigger business, and relevant to more businesses, than ever before. Whether it is the purchase of an eponymous brand or the creation of an association with a celebrity to promote a product, image rights are becoming a key consideration for many brand owners. This is so despite the fact that the UK lacks a true image right.
This article outlines how image rights can be exploited commercially despite the absence of a specific image right in the UK. It examines a number of commercial scenarios in which image rights may be engaged: acquisitions of eponymous brands; sponsorships; endorsements; and merchandising.
Image rights can encompass many aspects of a person's life or character. They can include sounds, such as a well-known voice, or even a particular movement, such as the Michael Jackson moonwalk or the Elvis Presley hip thrust. In this article, the term "image rights" is used to denote any aspect of the name or image of a celebrity which is so distinctive that its commercial exploitation is considered desirable.
The term "celebrity" is used to describe the person whose image rights are being commercialised, although many people who choose to commercialise their image rights may not be viewed as celebrities in the tabloid sense, such as sportspeople and public figures. Unless otherwise specified, the term "company" is used to refer to the party seeking to benefit commercially from the celebrity association. This article does not address the tax or competition issues that may arise when entering into agreements relating to image rights, but both of these areas may need to be considered.
THE ABSENCE OF AN IMAGE RIGHT
There is no composite and discrete image right in the UK, and the courts have resisted attempts to create one (see "Rihanna and Topshop"). There are a number of countries, including the US, where a more distinct image right is recognised. Indeed, Jersey has introduced a registered image right, the first of its kind.
While the UK lacks a distinct image right, this does not mean that the images or other distinguishing features of people, celebrities or not, can be exploited with abandon. There are a number of different legal rights that can be used in various circumstances to stop others using a person's image, particularly where this is for commercial purposes. Passing off, defamation, trade mark infringement, copyright, privacy, breach of confidence and data protection all have a role to play in the patchwork of rights that protect various aspects of image rights in certain circumstances in the UK.
In addition to the legal protections that relate to image rights, there can be negative commercial implications when using a person's image without consent. While a company might receive valuable short-term gains from the unauthorised use of a celebrity's image to promote a product or service, this is not always worth the potential damage to the brand or the company's reputation if it is sued by that celebrity. For example, Katherine Heigl sued the US drug store Duane Reade for $6 million for posting a photo of her carrying one of its shopping bags on social media. The case settled out of court in 2014 but attracted a lot of media attention and made it abundantly clear that Ms Heigl was anything but delighted to be associated with the brand.
While the absence of a specific image right does not stand in the way of effective commercialisation, careful thought is required to get it right (see "Defining image rights" below).
ACQUIRING AN EPONYMOUS BRAND
Acquiring image rights outright is at the more difficult end of commercialisation, while sponsorship, endorsements and merchandising are more straightforward.
There are many examples of eponymous brands (that is, where a brand name is that of a real person), such as Marc Jacobs, Victoria Beckham, Conran and Paul Smith. However, many eponymous brands end up being sold; Christian Dior, Jo Malone and Laura Ashley were all originally eponymous brands that are now owned by others.
Difficult conceptual issues arise when acquiring an eponymous brand. There are questions as to whether an individual's name or image can, in reality, be bought, and whether an individual's image can ever be truly separated from that person. Under an assignment, rights are transferred so that they are owned by the buyer, and therefore they are no longer owned by the seller. But can all rights to an individual's image really be alienated? This matters because a company acquiring an eponymous brand will not want the celebrity to be able to interfere in the manner in which the company subsequently uses the celebrity's image and, equally, will not want the celebrity to be able to compete by continuing to exploit their own image.
Image rights are still a nascent area and the nature of image rights in many jurisdictions is somewhat ill-defined or effectively a patchwork of other legal rights with many gaps in protection. Therefore, it is not always clear how, or to what extent, a celebrity's image rights can be assigned. For example, although it is easy to transfer a registered trade mark in a celebrity's name or signature, many countries have an own-name defence that would operate to protect the celebrity from being prevented from using their own name. In addition, while the copyright in photographs taken of a celebrity can be acquired, it is impossible to stop more photographs being taken in the future. Equally, the rights in the sound recordings of a celebrity's voice can be transferred, but the celebrity cannot be stopped from talking.
There is no easy answer to these conceptual issues, but the pragmatic solution lies in a two-pronged approach of: taking a comprehensive assignment of the intellectual property rights that do exist; and obtaining meaningful contractual undertakings from the celebrity about what they will and will not do in the future.
While this area of the law develops, there are a number of practical measures to consider when buying an eponymous brand.
Definition. The definition of the image rights that are to be acquired must be as clear and comprehensive as possible.
Licence. It is advisable to provide in any acquisition agreement that, to the extent any aspect of the image rights that are being acquired cannot for any reason be assigned to the company, the company is granted an exclusive, perpetual, irrevocable, royalty-free, freely assignable and sub-licensable licence to use and apply any aspect of those image rights.
Post-acquisition permissions. If the celebrity is still alive, they will unavoidably need to continue using their own name and image to some extent simply by virtue of continuing to exist. Acquisition agreements can deal with this by defining what the celebrity will and will not be permitted to do with their own name and image post-acquisition. For example, they may be entitled to continue using their name and image for personal, domestic, historical, family, biographical, purely factual or non-commercial purposes. There may also be some non-related business purposes that the celebrity can legitimately continue to carry on under their own name. If this issue is not addressed explicitly, there is a risk that a court will be willing to imply a term that the celebrity can continue to do certain things. It is much better to define the ambit of the use upfront than wait to see what a court does with the issue.
Third parties. It is advisable to consider any restrictions on the celebrity with regard to other businesses for which the celebrity's image can be used. These could include brands that the celebrity could set up themselves and, importantly, competitors that they might align with. It is also important to consider how far the restrictions will reach, for example, if the celebrity's surname is part of the rights that the company is seeking to acquire, immediate and extended family members who share the same surname may need to be restricted to some extent. If this is the case, either those third parties would need to be directly bound under the contractual obligations or obligations would need to be imposed on the assignee to procure compliance by the other family members, although there may be difficulties in how effective that is likely to be in practice.
Undertaking. The company should seek an undertaking from the celebrity not to bring any proceedings against the company for any claim or cause of action, whether known or unknown, for defamation, invasion of rights to privacy, appropriation of privacy, infringement of rights of publicity or personality, intrusion, false light or public disclosure of private facts, breach of human rights or any similar matter, based on or relating to the use, application or exploitation of the celebrity's name and image rights. In agreeing to this type of undertaking, the celebrity might equally seek an undertaking about the manner in which the company will exploit the celebrity's image rights; for example, creating restrictions on certain types of products that they do not wish to be associated with.
Data protection. Depending on exactly what aspects of the celebrity's persona are being acquired, and what the company will do with them, the company might be involved in the processing of sensitive personal data. The acquisition agreement should recite the celebrity's consent, or any other mechanism, that legitimises this data processing or transfers it outside of the EEA.
Death. In some jurisdictions, image rights are transmissible on death. Therefore, to the extent that any residual rights are left with the celebrity, the company should consider whether those rights might pass to next of kin or otherwise on death. For example, the late Robin Williams bequeathed his image rights to a trust, which restricts the exploitation of his image rights for 25 years following his death.
Previous transfers. It is advisable to conduct due diligence to ascertain whether the celebrity has transferred, whether by assignment or licence, any image rights previously. It may also be necessary to obtain warranties as to any previous transfers of rights.
Past conduct. In addition to the usual due diligence checks, focus may also fall on the behaviour of the celebrity in order to protect the brand from risk. This may result in some uncomfortable personal questions to ascertain whether there are any potential risks to the brand as a result of the celebrity's past conduct. For example, warranties may be needed as to criminal conduct, substance abuse or ethical behaviour. These can be extremely difficult conversations to have and naturally need to be judged in light of the relevant celebrity's risk profile.
Future conduct. Future conduct is equally relevant, as what the celebrity does may continue to have an impact on the brand or image rights that are being acquired. Undertakings about future behaviour may be needed, together with provisions about the consequences of any breach. Mechanisms might include a retention of purchase price or an earn-out clause for a period of time to incentivise compliance.
Role of the celebrity. If the celebrity will be involved in the brand going forward, it is important to define their role carefully. Depending on the extent of their role, the considerations raised in respect of sponsorship and endorsement may also come into play (see "Endorsements" and "Sponsorships" below).
Endorsements can be valuable and may be sought at many stages during the life cycle of a product. At the launch stage, endorsements can help to get a product noticed. For long-established products and brands, endorsements can be a way of emphasising a particular feature of a brand or helping to expose it to a new audience.
A core part of an endorsement strategy will often be social media and the promotion of the endorsement on the social media accounts of the relevant celebrity. Social media makes it easy for celebrities to publicly endorse products and share their (company-funded) enthusiasm. A key consideration will be ensuring that it is clear to those who are viewing the endorsement that it is, in fact, an endorsement.
Social media posts by celebrities about specific products and services have been attracting increasing attention from the UK's advertising regulator, the Advertising Standards Authority (ASA). The ASA's decisions, while not binding, provide some guidance around what companies should bear in mind when asking a celebrity to publicly endorse their goods or services using social media (see "The ASA's role").
The main takeaway from these decisions is that it should be clear to anyone viewing social media posts that they are an advertisement. This can be done with the inclusion of a clear identifier such as #ad or #spon. While it will be the celebrity posting or tweeting, the company behind the product should provide guidelines on how to post about the product and also take care to monitor the posts.
There may be some uncertainty around where the line should be drawn with regard to endorsements. For example, where a product is sent to a celebrity (or to bloggers, who are a cornerstone of the marketing strategies of most major beauty brands) as a gift and they post about it on social media, is this an endorsement? Where celebrities are invited to an event and given a goody bag to take home, and they then take a photo of the contents and post it on Instagram, is this an endorsement?
There is no hard and fast rule but, where a product is sent or given as a gift with no explicit or implicit request or expectation for the celebrity to talk about it publicly, and they then proceed to talk about it on social media, this is arguably not an endorsement. There will, of course, be practical considerations: the celebrity may be just as likely to talk about the product negatively as positively.
If, however, there is any pressure on the celebrity to talk about the product positively (or an inducement, monetary or otherwise) or a threat of the gift being taken back should they not talk about it positively, this could fall on the wrong side of the line and require the brand behind the relevant product to take more care around how any posts or public-facing messages are phrased and communicated. In short, the intention of the gift should be considered carefully.
Specific provisions to consider when negotiating an endorsement arrangement include the following:
- Restrictions on how the celebrity interacts with third parties on social media. For example, the company is unlikely to want the celebrity to post positive comments on a competitor's posts.
- Guidelines for social media posts, together with a right for the company to approve social media posts relating to the product before they are posted and possibly even control over social media accounts, although this is unlikely to be obtained.
- Restrictions on the registration of any aspects of the brand, including composite rights comprising elements of the celebrity's name or image together with the brand.
- Restrictions on public appearances, statements and behaviour. Companies should consider not only what the celebrity can do, but what they cannot do. It will be important to negotiate terms that are as specific as possible to provide the greatest chance of enforceability. For example, a general obligation on a celebrity not to alter their appearance may be hard to enforce, but if they are endorsing a hair product, an obligation not to change the length or colour of their hair without the company's prior approval is clear and specific, and therefore more likely to be complied with and more likely to be enforceable, such as by triggering a termination right.
- Specific provisions about what the celebrity must do to promote the brand, such as attending events, photo shoots or premières. Companies should be wary of paying a great deal of money for a personal appearance at a particular venue only to find that the celebrity turns up at 3 am for ten minutes. Instead, companies should be very specific about when, where and for how long the celebrity should appear. Celebrities' behaviour can also be incentivised, for example, payment instalments could be contingent on certain services being provided. In addition, a termination right that is triggered on a non-appearance can be included.
- Provisions regarding approval rights over marketing or other materials, and whether the company will have the right to approve any communications that the celebrity makes.
- Details on what the company will provide, if anything, in addition to payment, such as sports equipment or other products.
Sponsorships, where a company sponsors a celebrity in return for brand recognition, may translate into a more involved contractual arrangement, often because they are longer term relationships, although that is not necessarily so. The line between endorsement and sponsorship is a blurry one and many of the issues relating to endorsements are equally relevant to a sponsorship arrangement. However, they may take on a different degree of importance depending on the length and depth of the intended relationship. The tone in an endorsement is subtly different from a sponsorship. The emphasis in an endorsement is that the celebrity says that they like the brand, whereas the emphasis in a sponsorship is that the company supports the celebrity and hopes that the celebrity's appeal rubs off on the company.
When setting up a sponsorship arrangement, there are a number of practical issues that companies should consider.
Employment law. If a sponsorship involves a particularly close or long-term relationship, it is important to be alive to potential employment law issues, particularly if the celebrity will effectively become the company's brand ambassador. The more control that the company exercises over the services that the celebrity provides, such as personal appearances, interviews and photo calls, and the less discretion that the celebrity has about when, where and what they do to earn their fee, the more risk there is that the relationship could be characterised as one of employment rather than independent contractor. This may or may not be desirable in any particular instance but it can have material consequences in terms of tax treatment, termination rights, benefits and statutory protections for the celebrity.
Conflicts and rules. Sponsorship will often require, at the very least, the celebrity to use the brand or products of the company. In the sports world there will often be a requirement to display a trade mark on sports kit. The company must check carefully that what it is asking for is possible. For example, there may be conflicting deals, such as another sponsor of the team, or overriding rules, such as the ban on brands at the Olympics, which will have an impact on what the celebrity can do.
Competitors. The company must consider very carefully who else the celebrity will be permitted to work with. While this may also be a consideration for endorsement arrangements, it tends to be more acute for sponsorship relationships and the issue of who the celebrity is or is not allowed to take on as an additional sponsor can be hard fought.
While endorsement is about the product, with the celebrity used as a marketing tool, merchandising is more about the celebrity behind the image, and the sale of a range of products under that celebrity's name and image.
Merchandising will often involve a number of different parties. The celebrity will be at the core of the marketing campaign but it is unusual for them to be responsible for every, or even any, element of the design or production of the goods. The celebrity, or their management team, may have overall strategic control. Alternatively, a company with experience in the field of, for example, perfume manufacturing and sales, may seek permission to use the celebrity's name so that the arrangement is more in line with a standard licensing arrangement.
The definition of the products and reputational concerns are both important issues to be considered in the context of exploiting image rights for merchandising.
Product definitions. The celebrity will often be motivated to define the products narrowly because granting exclusive rights in respect of a broad category of goods could result in a lost opportunity. For example, if a celebrity gives a third party exclusive rights to "clothing" when they will, in practice, only make children's clothing, the celebrity could lose the opportunity to sell merchandising rights for men's and women's clothing to someone else.
Reputation. Reputational issues are often very important, giving added focus to issues such as quality control and product liability. It is not just the direct financial liability that is of concern if a product is faulty or dangerous, but also the potential effect on the celebrity's personal reputation. A celebrity will not want their face on a toy that later injures a child, or on a food product that poisons someone. The celebrity may be very concerned with approval rights, inspection, and the track record for safety and product recalls. Increasingly, focus will also be on ethical business practices and supply chains, with the celebrity wanting to know about issues such as the company's code of business practices, payment of the living wage, environmental policies, political affiliations and its approach to the use of child labour.
There may be other scenarios where a company might seek to get authorisation to use image rights, for example, an app or a computer game may seek to feature a celebrity's likeness. Given the lack of a coherent image right, there is a question over whether a formal licence should be obtained: if there is no right, and no trade marks are being used, is there any point? Many companies might choose to proceed without any formal agreement in place and deal with any implications (negative or otherwise) should they arise, but others may prefer to mitigate the risk of any unforeseen impediments by negotiating a detailed written agreement.
With the inexorable rise of the cult of celebrity and the increasing evidence of the value, whether monetary or otherwise, of associating a product or service with a darling of the public eye, the question remains whether a clearer and more legally defined image right might arise in the future. This is difficult to predict, but there is unlikely to be a slow down with regard to the commercialisation of image rights, and those in the spotlight are likely to become increasingly savvy.
Rihanna and Topshop
The most recent case of note with respect to image rights in England is Robyn Rihanna Fenty and others v Arcadia Group Brands Ltd and another ( EWCA Civ 3).
Rihanna brought an action for passing off against Topshop, which sold a t-shirt featuring a photo of her taken on a video shoot. Topshop had a licence from the photographer and so the position in relation to copyright in the photograph was not at issue. However, Rihanna had not licensed her image to be used on the t-shirt.
The Court of Appeal held that this amounted to passing off but it made it very clear that the decision does not create an image right in the UK. The court emphasised that there is no image right or character right in English law that allows a celebrity to control the use of their image. The decision was largely based on a very specific set of facts, including Rihanna's previous commercial activities in the world of fashion.
Defining image rights
Definitions are key when drafting agreements to commercialise image rights. Care should be taken to be as explicit as possible about what is meant by image rights in the relevant commercial context. It is not advisable to refer in loose terms to "image rights". The particular aspects of the celebrity's image that are to be commercialised need to be considered, for example, a company might wish to exploit a celebrity's name, image, signature, voice, caricature, or even use them as an avatar. The following is a suggested definition of "image rights" that is intended to be as all-encompassing as possible:
"Image rights" means all rights including intellectual property rights in Party A's name, initials, nicknames, likeness, caricature, voice, signature, image, silhouette, features, face, expressions (verbal or facial), gestures, mannerisms and any other distinctive or identifying aspects of Party A's identity, image or persona.
The definition of image rights should cover all intellectual property rights in the aspects of the image of the celebrity. The patchwork way in which image rights are protected under English law means that many types of intellectual property may be engaged: from the traditional, such as registered and unregistered trade marks, to the more modern, such as social media handles and accounts. Therefore, in addition to the more traditional elements included in a definition of intellectual property rights, it is recommended to refer expressly to image rights, rights of publicity and social media accounts, identifiers, handles or similar.
The ASA's role
The Advertising Standards Authority (ASA) is the UK's advertising regulator and oversees the application of the Committee of Advertising Practice code for non-broadcast advertising and the Broadcast Committee of Advertising Practice code for broadcast advertising.
The ASA's remit extends to all kinds of media, including social media. The ASA acts on complaints and also runs checks on adverts. Its main focus is on adverts that could be misleading, harmful or offensive, but this can be quite broad in terms of the kinds of advertisements that it catches. The ASA's decisions are not legally binding but provide helpful guidance for business as to the kinds of practices that may breach advertising guidelines.
For example, on 18 November 2015, the ASA held that an Instagram video featuring Made In Chelsea's Millie Mackintosh doing yoga should not appear again in its current form as it was not obviously identifiable as an advertisement for J20, the brand owned by Britvic Soft Drinks Ltd. The ASA found that even though the end frame of the video was branded and included the product name, as well as a prominent hashtag for the advertising campaign, this was not sufficiently obvious because it appeared at the end of the video. It was unlikely to be immediately apparent to consumers that the material was a sponsored post and a marketing communication.