Publicity on the Pitch? Football Superstars vs EA Sports

While the newest edition of the FIFA football game franchise is usually released in late September each year, it is not until later that the game enjoys its largest ‘buzz’ and sales, being an obvious Black Friday purchase or a Christmas gift for gamers of all ages. However, this November, the game’s creators at EA Sports, a division of the California-based Electronic Arts Inc. were faced with a different kind of publicity.

One of football’s biggest superstars, AC Milan’s Zlatan Ibrahimovic took to Twitter to question the use of his name and face in the game franchise for the past 18 years. Ibrahimovic stated that “Somebody is making profit on my name and face without any agreement all these years. Time to investigate”. His tweet was quickly followed by a similar one from another of the sport’s current stars, Tottenham Hotspur’s Gareth Bale.

Many fans were left puzzled by this commentary, not least because Ibrahimovic has actively participated in the game franchise’s public events before. Likewise, Bale was on the official cover of FIFA 14 and runs a professional e-sports team in partnership with EA Sports. While the suspected political reasons behind the campaign are beyond the scope of this article, we have examined whether, and if so to what extent, football players in England and Wales can object to their name and likeness being used in video games.

What are Image Rights?

Generally speaking, image rights (which are also called rights of publicity or personality rights) speak to the collection of interests that each person has in the usage of their likeness in the public domain. Although the laws of England and Wales do not formally recognise a codified image right as such, they are a legal concept widely used in sporting, entertainment, and endorsement contracts. The standard-form Premier League Contract¹, provides a relevant definition:

In relation to the Player’s Image and its potential use in licensed products, Clause 4.6 the Premier League Contract reads²:

Rule D.2 of the Premier League Rules also states³:

The standard English Football League (EFL) contract, which covers all non-Premier League English clubs in the FIFA franchise, is known to contain identical provisions. The FA Women’s Super League contract, which may cover the image rights of England’s top-tier female players, some of whom feature in the game, is not publicly available.

In reliance of contractual terms like those quoted above, Premier League clubs and EFL clubs sell all their video game licensing rights collectively, including all related intellectual property and attributes of all players.

Can Players object to the use of their Image Rights?

Ibrahimovic’s agent summarised the nature of the players’ issue with EA Sports as follows:

“FIFA and [players’ union] FIFPro are profiting from the rights that EA Sports happily buy from them but they buy rights that they don’t have. The individual image rights of the player are not with FIFA, FIFPro or AC Milan. They belong to the player himself.⁴"

This begs the question: to what extent does an individual footballer actually ‘own’ his or her image rights? More importantly perhaps, could a footballer object to the use of their image and attributes in a video game?

There are a number of possible avenues for individuals wishing to limit the use of their image in the promotion or use of products. These include actions under passing off, copyright and trade mark infringements, and breaches of privacy or data protection law.

Passing off

The principle underlying the tort of passing off is akin to counterfeiting, and thus seeks to prohibit someone from selling goods under the pretence that they are the goods of another. To succeed in a passing off claim, the claimant must first demonstrate that they have a significant goodwill or reputation associated with the particular goods or services in question. Secondly and thirdly, the claimant must demonstrate that the defendant has made a misrepresentation to the public which causes some sort of financial harm to the claimant.

Passing off has been used in image rights cases successfully in England, perhaps most famously by Rihanna against Topshop in 2015.⁵ In this present scenario however, it is arguable that neither misrepresentation nor financial harm have occurred. At the very least, it would be difficult to quantify the harm (if any) that a player suffered by being featured in the game, noting that the substantial salaries paid to players covers their grant of image rights to the Club, as noted above.

Copyright

There is no copyright inherent in someone’s name or images of their physical appearance: one does not own the copyright in a photograph or avatar simply by virtue of being depicted in it. There is likely a copyright element in the production of the computerised image used to create the player’s ‘character’ in the game (see e.g. this user-created image used to place David Beckham’s face into a FIFA game). However, the copyright will be owned by the artist – in this case EA Sports, and not the player himself. The player will therefore be unable to assert a claim on these grounds, as he will not be the requisite proprietor of the copyright in question.

Trade mark

While history remembers a number cases of English players who have trademarked their name, relevant CJEU case law⁶ provides that there is no infringement of a trademarked attribute when this is used for purely descriptive purposes. Doing so could, amongst other things, unfairly prevent others from using the mark (or name) for legitimate reasons. It is therefore notoriously difficult to trade mark an individual’s name, unless the name in question is eponymous with a particular brand.

In the end of October this year, shortly before winning his 7th Formula 1 World Drivers’ Championship title, Lewis Hamilton had to concede in a 3-year legal battle with a Swiss watch maker over the use of the “Hamilton” trade mark. The British racing driver attempted to cancel Hamilton International AG’s registration of the mark, but the EU Intellectual Property Office (EUIPO) refused his application, noting that “there is no ‘natural right’ for a person to have their name registered as a trademark, when that would infringe third parties’ rights”⁷.

Misuse of private information and data protection law

A common law action under the tort of Misuse of Private Information requires a “reasonable expectation of privacy”⁸ which is clearly not present in the case of a professional footballer’s name and other career-related attributes.

As for the UK’s key piece of data protection legislation, the General Data Protection Regulation (GDPR) (and the supplementary Data Protection Act 2018) would allow the Club and EA Sports use and exploit personal data (to include the player’s name, club and picture) if necessary for the performance of a contract⁹. The standard Premier League and EFL contracts discussed above are examples of such agreements. As the initial processing of personal data is unlikely to be based on the players’ consent, the revocation of such consent by the player at a later stage is likely to be immaterial.

Key points to remember

Long gone are the days when professional athletes’ sole or even main source of income was the remuneration they receive for their sporting performance. At times when the protection of personal branding and reputation is more crucial than ever, the importance of being able to navigate the complex and fast-developing area of image rights law cannot be understated.

At DAC Beachcroft, we offer business advisory services and can provide practical, strategic advice on how to both commercialise – and protect – your public image. Should you have any questions on branding and reputation strategies, please contact Kelsey Farish (Solicitor).

References 

¹Premier League Handbook 2020/21, Form 15 – Premier League Contract, pp. 315-342, accessible here
²As above, p. 295
³As above, p. 109
⁴Accessible here
⁵Fenty v Arcadia [2015] EWCA Civ 3
⁶Case C-2/00 Michael Hölterhoff v Ulrich Freiesleben, at para. 16
⁷Case R 351/2020-4, Fourth EUIPO Board of Appeal of 20 October 2020, 44IP Limited v Hamilton International AG, at paragraph 40, accessible here (in PDF)
8Campbell v Mirror Group Newspapers Ltd [2004] UKHL 22
9Regulation (EU) 2016/679 on the protection of natural persons with regard to the processing of personal data and on the free movement of such data, Article 6(1)(b)