The Australian Open saw a new champion in Naomi Osaka, who despite winning the US Open, was not seen as a favourite to win. Osaka was in the headlines for a different reason in the lead up to the final. It was reported that her image had been “whitewashed” for an advert with a Japanese company, Nissin Foods Holdings, with which she has an endorsement deal.
The image in question is a cartoon depiction of Osaka and although this is not the first time a tennis player has had a cartoon variation of them created (remember the Roger Federer emoji designed by Michael Lau in March 2016) this is a good opportunity to consider the image rights that athletes may have when their image is used for marketing purposes.
“Whitewashing” is the situation in which the skin tone of non-white women, when depicted, particularly in magazine covers and advertisements, is digitally retouched or modified to appear whiter. There is no real debate as to whether the advertisement in question, “Hungry to Win” which was designed by Takeshi Konomi, a well known manga artist whitewashes Osaka as her skin tone in the advert is noticeably different.
It has been reported that representatives of Osaka were involved in the creative process, and when asked about the situation in a press conference, Osaka said that she should be consulted next time she is portrayed. The question that this situation raises, is what brand protection can an athlete rely on when allowing their image or likeness to be used for endorsements?
The Osaka situation appears to have been resolved, with Nissin withdrawing the advert and apologising, but would Osaka have a course of action if Nissin chose (and if they were in the contractual rights) to continue using the advert?
There is no codified protection of image rights in the UK. As a result, athletes would have to rely on a variety of contractual provisions and common law causes of action to protect their image from unauthorised use. The endorsement contract is the best place to protect the image value and athlete has.
Contractual provisions
A key protection that an athlete can rely on, when their image is used as part of an endorsement agreement, is the contractual right or rights which which allow a sponsor to use their likeness. Where and how the image is used, the level of consultation should be set out in the contract, particularly when the athlete does not own the copyright in the image/ cartoon (as was the case with Osaka).
Clear provisions on the ownership in the copyright of the image and use of the image will keep the parties’ interests aligned, or at least ensure that the parties know where they stand. This is where the relative bargaining powers of the parties will come into play.
Athletes who have built up image recognition should consider how a new endorsement or promotional campaign will impact on their existing goodwill, particularly given the relatively short playing career they will have to. Sponsors will be mindful, following this case, to make certain that any representation of an athlete is accurate, and not offensive, particularly when considered in an international context, which may not be the market in which the product is promoted.
To ensure that an athlete is not whitewashed, clauses could be drafted so that the athlete, or their representative, has the final say before a cartoon in which they are depicted is published, but sponsors and artists may not want to hand over this level of creative control.
Trade mark registration
A registered trade mark may also be way to protect the image of an athlete from unauthorised use as use of the same or similar mark may open a cause of action for infringement. A number of celebrities have registered their names, signatures and even images. Alan Shearer registered a photograph of himself as a trade mark in relation to a variety of goods, however, this has since expired. It also remains to be seen whether such a mark would be enforceable in court. One significant issue that has to be addressed is that of distinctiveness, which is a requirement for trade mark registration. Individual logos, cartoons or emoji’s may be less prone to rejection by a trade mark registry and so may be useful for commercial exploitation.
Passing Off
For unauthorised use of an athletes image, an athlete may be able to rely on the tort of passing off. This is designed for protecting the commercial value of an athlete’s image/ reputation. A successful passing off claim must pass a three part test: there must be goodwill in a good or service; there must be a misrepresentation by the defendant to the public; and there must be damage suffered.
A good demonstration of passing off, although heavily fact specific, was set out in the decision in Robyn Rihanna Fenty and others v Arcadia Group Brands Ltd (t/a Topshop) and another [2013] EWHC 2013 (Ch). Prior to this decision there were no reported case in the UK in which a celebrity had successfully prevented a third party from using their image using passing off. For a look at the Fenty case, see this article about Roger Federer – https://ipologist.wordpress.com/2018/07/02/nike-federer-and-the-intellectual-property-of-rf/.
An athlete may be able to rely on passing off if their image is used without their permission and it gives the impression that they are endorsing products when there is actually no endorsement deal agreed.
Overall, the best way for an athlete to avoid their image being represented in an unapproved manner is to ensure that there is a well drafted contract which addresses any concerns. The tennis tour schedule is full of tournaments all year round and so reliance on representatives may be required. With an individual’s image becoming more and more valuable, athletes will want to ensure that the way they are represented in the correct manner.
John Shaw 