IP Insights

Intellectual Property such as image rights and trade marks are an asset of the sports personality with potentially large commercial value.  Therefore, in Australia and the global sporting stage it is criticle today and more than ever before that sports personalities protect their image from unlicensed use by others.  As the potential for sponsorships and endorsement grows, so do the opportunities for unauthorised use and profit by third parties seeking to monetise your hard work.

The right of publicity, otherwise called personality right, refers to the individual’s right to control the use of their likeness, name and identity for commercial use.  A company or individual cannot use an athlete’s name or image for monetary gains without permission or contractual agreement, this includes the use of a signiture on a product or the attempt to trademark an athletes name.  Image Rights are the expression of a personality in the public domain.  The provision of image rights in law enables the definition, valuation, commercial exploitation and protection of image rights associated with a person.

Unauthorised use of the sports personality brand can be manifested in a number of ways including:

• Trade mark infringement through direct use of the athlete’s registered trademarks

• Dilution of the mark by using look-alikes of the athlete’s distinctive and famous marks

• Unfair competition and false advertising

• Use of web names or domains containing the athlete’s name or distinctive logo such as Ronaldo’s CR7 distinctive logo

While sports personalities could possibly rely on unregistered rights such as common law claims for passing off, ‘misleading and deceptive conduct’ arguments or ‘dilution of their mark’ through the use of look-alikes, to prevent third parties from using their names and likeness, such claims and arguments can prove to be quite challenging and fact sensitive.

The best strategy to protect your sports personality brand, it is important for sports personalities to identify their relevant trademarks.  Most often, the protectable trademarks of a sports celebrity are his/her name, as well as his/her likeness. However as we have seen famous athletes like Tiger Woods or Rodger Federer they have created their own logo marks which are prominately placed on apparel such as caps and shirts using their initals in a creative scipt which further inhances their own licencing opportunities.  

Once trademark rights are established in a name or likeness or logo, the next step is to register these trademarks.  Sports Personalities in Australia with the assitance of a qualified attorney can regiser their name or logo as a Trade Mark with IP Australia, this is a relative straight forward process however athletes with any creative logo for their personal brand will want to have their attorney undertake a clearance search just in case the chosen logo infringes on another piror registered trade mark. I have recently seen this with some athletes logos very miror imaging famous movie marks which is sailing against the wind closely on infringement, and when movie production companies see any kind of infringement note they go hard on the legal defensive. 

If you wish to protect your Intellectual Property rights In the United States these trade marks can be registered with the USPTO and such registration expands common law trademark rights to the entire United States.  While in the United States the personality rights are to some extent recognised and protected, there are a number of countries including Australia, where there are no specific legislation which define image rights or address the harmful effect of the unlawful use of a person’s image, except for under the common law by taking action for Defamation, or under the Australian Consumer Law for Misleading and Deceptive Conduct and Passing Off.

Conclusion:

As a sports personality with a dedicated strategy to achive on field success, its important to consider how you can protect your personal brand in its early stages. 

Basic things such as registering social media handels and web domains can certainly pay off for the future and the next step is to also register your trade mark. At Legum ILP we work with various sports personalities in protecting their Intellectual Property rights, this includes structuring IP in the right ownership vehicle and commercial licencing and partnerships. 

Reach out to our team via info@legum.au for a confidential discussion.