Protecting Image Rights through Trademarking
As individuals we hold a proprietary right in our own personality and have the right to prevent unathorised use of our name and likeness. It is not an absolute right, but generally there is a right to stop exploitation. The value of a person’s image will depend on who that person is. Celebrities such as Cristiano Ronaldo and his ‘CR7’ are a brand in themselves.
Social media influencers, celebrities, and people in the public eye can successfully utilise their status and personality to create value. An image right is therefore a commodity that can be bought and sold and it is necessary to protect it. By protecting it a person can prevent exploitation and ensure its proper use to maximise its value.
A celebrity’s image can be exploited in a variety of ways, such as through endorsing of products and merchandising. Businesses can benefit from being associated with a particular person and it is common for celebrity’s to discover businesses using their name or image without consent, and it may be being used in a way which the celebrity does not approve of. Protecting image rights can prevent such unauthorised use.
There is no official way to protect image rights per se in the UK, therefore it will be necessary to take several steps to do so.
Registered trade mark rights
A registered trade mark may be one of the predominant ways to protect image rights.
Any mark which is capable of being “distinctive” and also capable of graphic representation may, in general terms, be registerable, including a word, slogan, sound, smell, or even a colour.
Registering a person’s name as a trade mark is not always straightforward, as a name could lack the required distinctiveness to be registered. For example “Steve” or “John” is generic and not distinctive. However names that acquire distinctiveness are capable of being registered. The relationship between the trade mark law requirement for distinctiveness, and the consequences of fame, in particular, is a difficult one. It took Lionel Messi over 9 years to finally trademark his name.
Having a registered trademark is proof that the proprietor is the owner of the registered mark and in the event of infringement, the trade mark holder can enforce against the infringer without having to prove first use or that they have rights over the image, as would be necessary for a claim in passing off – an alternate cause of action when there is no registered trademark. Therefore, potentially, a person’s name, likeness, signature, voice, or a nickname or slogan associated with them could be registered as a trade mark.
Many celebrities have registered their names and/or their images as UK trade marks or EUTMs in respect of certain goods. To give a few examples:
- Names: David Beckham has registered his name as an EUTM in relation to a range of goods, including perfumes, hair care cosmetics, key rings, figurines and jewelry (see EUTM registration number 1796721). TIGER WOODS has been registered as an EUTM in respect of various goods, including sportswear and golf balls, golf clubs, golf gloves, golf tees and golf club protectors (see EUTM registration number 504704).
- Images: The footballer Alan Shearer has registered his image (a photograph) in relation to goods such as clothing, bags and sports articles (see UK registration number 2117215).
In practice, a celebrity is likely to seek to register their name or image in relation to specific categories of goods in relation to which they are exploiting their image or intend to exploit their image in the future.
The nature of these goods will depend on the celebrity in question – for example, a sports star is likely to consider registering their name and/or image for categories of goods which include merchandise, sportswear and sporting articles in classes 25 and 28. It may also be worth considering registering the name or image in relation to services which reflect the celebrity’s role – for example, an entertainer can be registered in relation to class 41 entertainment services.
An application should only be made in relation to goods or services in relation to which there is a bona fide intention to use the mark (including by granting licences to others). Trade mark applications will be rejected if it can be shown that they have been made in bad faith under section 3(6) TMA, which would include the applicant registering a mark that is not for genuine use but rather as a spoiling mechanism to try to stop someone else from registering or using the mark / name in that particular area. The application form must contain a statement by the applicant that the mark is either in use or there is a genuine intention to use it.
The main problem presented by attempts to register the name or image of a famous person as a trade mark is that, due their fame, there is a question as to whether the public will regard the mark in question as distinctive for the purposes of section 3 of the TMA. If the famous person’s reputation does not stem from a trade in the goods or services applied for, the average consumer may simply see the use of their name or image in relation to goods or services as an indication that the goods or services are about the person whose name it is, rather than as an indication that they are supplied by, or under the control of, one undertaking. For example, a poster or T-shirt featuring the name and/or photograph of a football star such as David Beckham may simply be seen as a David Beckham poster or T-shirt, rather than a poster or T-shirt produced by someone licensed by David Beckham.
How to protect image rights if you cannot specifically register “image rights”
Trademarking is one of the predominant ways to protect a celebrity’s image rights. It proves ownership and can be used to prevent infringement. In whatever a person wishes to trademark, it must be distinctive. Therefore it is not possible to register a photograph or true likeness of a person alone (this would also fall foul of the rules on freedom of press and people taking photographs which is not considered in this article).
Ways to successfully register trademarks to protect image rights in addition to attempting to register the person’s name would be to register trade marks of specific products owned or created or services offered by that celebrity which contains the celebrity’s name, or creating a catchphrase or name synonymous with the celebrity, for example Cristiano Ronaldo’s “CR7”. For example in the mid 2000’s Paris Hilton trademarked her signature catchphrase “That’s hot” which she had become synonymous with for saying on her reality-TV programme.
Image Rights Companies
Knowing what to register needs to be considered. Who is to be the owner of that image right also needs to be considered. Having an image rights company has benefits as it can allow a celebrity to own a vehicle created with the special purpose of holding their image rights and in which value can be built in a tax efficient way. The image rights company can then be used to buy, sell and contract with third parties in order to further grow the value of the celebrity’s name, whilst also providing significant benefit’s and protection to its owner.
At Ai Law we advise various personalities and image rights companies relating to the protection of image rights and other intellectual property protection. If you have any questions about image rights or are an influencer in need of protection and brand profiling, please get in touch with us here and give us a call today.
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