Zlatan Ibrahimović has been reported as consulting his lawyer about the use of his name and images in video games – namely in the FIFA series.
Ibrahimović threatened a major row with the hugely popular EA Sport series when he tweeted, ‘Who gave FIFA EA Sport permission to use my name and face? @FIFPro? I’m not aware to be a member of FIFPro and if I am I was put there without any real knowledge through some weird manoeuvre. And for sure I never allowed or FIFPro to make money using me”.
Electronic Arts dismissed the allegations by stating that they take great care to secure rights to players likenesses via proper channels, i.e. the FIFPro organisation, which they have always done. In addition, they mentioned that they have contractual rights to include the likeness of all players currently featured in FIFA 21, which have been acquired directly from leagues, teams and individual players.
The Ibrahimović v EA spat follows on from one in 2017, when the late Diego Maradona
, proclaimed that Pro Evolution Soccer had infringed his image rights by including him in its game. Similarly, Konami (the publisher of Pro Evolution Soccer) countered stressing that the player’s image was being used aptly according to a licence they obtained with FC Barcelona to allow them to use the images of current and former players.
What are image rights?
Image rights refer to an individual’s commercial right in their personality. This can be used to prevent unauthorised use of a name, likeness or other personal indicia, such as distinct physical or style characteristics, signatures, nicknames, slogans or sometimes anything else associated with them.
Importance of image rights today
The sporting video games industry has seen an incessant demand for more realistic gameplay which has increased in parallel with the development of graphics and gameplay over the last 20 years. Using up to date images of players, squads, kits, and stadiums enhances players’ gaming experience and so satisfies consumer demand. In turn, the use of image rights is just one part of this experience.
Legal protection in the UK
The law in the UK does not recognise these so-called ‘image rights’ per se and there is no automatic right to protect or enforce it. However, incidents involving unauthorised use may still be prevented through the law of passing off. ‘Passing off’ does not have a statutory basis and images do not need to be registered to be effective. In addition, players could increase their protection through trade marks.
On the other hand, in the USA, image rights are recognised as an economic right which is preserved in the constitution. Much of Europe also recognises image rights, as a legal personality right, due to the growing commercial value in celebrity images.
Under English law the concept of ‘passing off’ is a claim that can be brought by athletes based on unauthorised use of their image rights – namely where one party exploits another party’s image rights (commercial goodwill), without authority.
To succeed in such a claim, the athlete would have to prove that they have trading goodwill in their name, brand, and image, and the unauthorised use of their name, brand and image would amount to a misrepresentation to the general public that they have officially endorsed the product.
Trade mark protection
Players can also consider trade mark protection.
A trade mark is a sign which can be represented graphically and which is capable of distinguishing goods or services of one undertaking from those of other undertakings. A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging.
Unsurprisingly, many intellectual property-savvy players have sought to capitalise on the popularity of football and gaming. Many have successfully developed their own unique brands and even secured trade marks for signs, emblems and words to protect their image.
Cristiano Ronaldo is a perfect example. He has taken huge steps by expanding his brand, teaming up with the likes of Armani, Calvin Klein and Nike (to name a few). He has many registered marks which include CR7, CR9 and CRISTIANO RONALDO.
It is always best to register a trade mark early to avoid the possibility of an application being rejected on the basis that it is descriptive of the subject of the goods. This is best illustrated by the decision involving the application to register the mark ALEX FERGUSON which involved former Manchester United manager Sir Alex Ferguson.
Sir Alex applied to register the trade mark ALEX FERGUSON in seven classes. The application was rejected in relation to image carriers (posters, photographs, transfers, stickers, decalcomanias) on the basis that the mark was devoid of any distinctive character and descriptive of the designated characteristics of the goods in question i.e. goods that were about or features Sir Alex. For image carriers, the name of the famous person or group is likely to be seen as the subject matter of such goods, therefore non-registrable.
In contrast ex-footballer Jermaine Jenas was able to successfully register his name as a trade mark in relation to the same goods, on the basis that he enjoyed limited fame and the goods relating to image carriers would not be considered descriptive. This raises the question of whether a trade mark application for SIR ALEX FERGUSON would have been considered registrable for image carriers if registration had been sought when he started his managerial career.
Take home points
- Athletes and sports professionals should review all possible agreements between their clubs, their sponsors and trade union bodies to understand the use of their image and IP rights.
- They should also try to protect as much as they possibly can by obtaining trade mark protection early. This is because the alternative of bringing a claim through the law of passing off brings with it a significant evidential burden.
- It is easy for publishers to fall into the trap of infringing an athlete’s image rights whilst trying to make sports video games look as realistic as possible, in order to enhance the gaming experience. If in doubt, publishers should always consider the scope of their IP agreements and, if no licence has been obtained for the use of image rights within the game, it is best that they err on the side of caution and refrain from using any distinguishable images, marks, logos and names of athletes.
If you have any questions about these issues in relation to your own organisation, please contact a member of the team or speak with your usual Fox Williams contact.