Argentinian footballing legend, Diego Maradona, has seen red and decided to sue the makers of Pro Evolution Soccer, Konami, for its unauthorised use of his name and likeness. When playing the latest version of the well-known “ProEvo” series in “Legends” mode, a player referred to as a 23 year old, left footed supporting striker called Maradona, can be used. An image of the player is produced depicting a young man with a mop of jet black hair which bears more than a passing resemblance to the ex-Barcelona and Napoli strike man.
Maradona’s decision to pursue a claim against the Japanese gaming giant is another example of a celebrity looking to safeguard his or her image against unauthorised commercial exploitation. In an age where social media has spawned a new type of ‘celebrity’ the court system in England and Wales could well face a raft of similar claims, but how easy is it to protect your image rights?
Unfortunately (or not, depending on your perspective) there is no codified law of image rights or privacy in England and Wales, and as such an individual’s ability to protect his or her “image” can be a troubled process. As there is no one law which regulates these issues the individual if left to assess which of alternative option is the best fit:
Law of Privacy – Tort of breach of confidence
Whilst there is no tort for “invasion of privacy,” the right to privacy has long been recognised and is enshrined in the European Convention on Human Rights. However, this right focuses on the misuse of private information. This issue was examined in the landmark case of Campbell v MGN where the House of Lords confirmed that personal information can be protected if:
- The information used is private; or
- Disclosure of that information would give substantial offence to a person of ordinary sensibilities places in similar circumstances to that individual.
But how does that protect the use of somebody’s name and image? Historically, famous figures have relied upon Trade mark law both in the UK and internationally to try and prevent the unauthorised use of their ‘brand’. Examples of celebrities trying to protect their name and/or their image include:
- Name – David Beckham registered a European Union Trade Mark (EUTM) against his name in relation to wide variety of goods ranging from key-rings to jewellery, and perfumes to hair care products. Similarly, Tiger Woods has registered a EUTM in respect of a range of goods including sportswear and golf paraphernalia.
- Image – Ex-England football captain, Alan Shearer, registered an image of himself (a picture of his head and shoulders) against clothing, bags and sports articles.
Despite these efforts, the strength of the registered marks has yet to be tested by the courts and, ironically, it is the status of the individual who applies which may be a determining factor in whether security is afforded or not.
In order to successfully register a mark the applicant must show that it is distinctive in character (s.3(1)(b) of the Trade Mark Act 1994). The problem which a celebrity may face, therefore, is that due to their fame the public may not associate their mark with a particular type of goods. For example, in the case of Elvis Presley Enterprises v Sid Shaw Elvisly Yours the Court of Appeal refused to register the name “Elvis” and “Elvis Presley” against certain toiletries as members of the public who purchase Elvis Presley merchandise do so, not because they believed it originated from a particular source, but because it carried the name or image of Elvis.
An alternative option may, therefore, lie with the tort of passing-off. Indeed, given this tort is mainly used as a method of protecting commercial value, it may be the most suitable method of preventing exploitation of your name or image.
Previously the requirement for there to be a “common field of activity” between the claimant and defendant prevented celebrities for pursuing claims where there had been a false representation that they endorsed a particular product. However, the case of Edmund Irvine & Tidswell Ltd v Talksport Ltd marked a change in the law. In this case ex-Ferrari Formula 1 driver, Irvine, successfully sued Talksport, a UK based radio station, which had produced a brochure showing an image of Irvine listening to a Talksport branded radio. Mr Irvine claimed this image falsely suggested that he had endorsed the radio station.
In deciding the case, Laddie J confirmed that passing-off could be used to cover situations of false endorsement. The association with the celebrity’s name or image enhanced the attractiveness of the relevant goods or services offered to the betterment of the endorsee. It is for the celebrity to decide who can and cannot use his or her name and image and as such Laddie J concluded that Mr Irvine did not need to establish that he operated in a “common field of activity” to that of Talksport.
However, Laddie J did find that in order to bring a claim in passing-off you must be able to show that:
- At the time of the passing off, the celebrity had a significant reputation and goodwill; and
- The actions of the endorsee would give rise to a false message which would suggest, on the balance of probabilities, that it had been endorsed by the celebrity.
Whist this case may not, therefore, hold much importance for us mere mortals, it provides a measure of security against commercial exploitation for celebrities.
In terms of damages Mr Irvine was initially awarded £2000, that being the fee Laddie J considered he could have likely achieved had Talksport paid for the endorsement. This was increased, however, upon appeal by Mr Irvine, to £25,000, as he was able to demonstrate by reference to previous endorsement agreements that he would have charged Talksport significantly more for his endorsement.
What price then would one of the all-time footballing greats achieve for the use of his name and image in a computer game which is played by millions all over the world?