IN BRIEF
In the wake of international football star Lionel Messi's recent fine and jail sentence associated with the earnings from his image rights, some may be curious as to whether image rights exist in Australia. In simple terms, image rights as they apply in Europe or the USA do not exist in the same manner in Australia. However an individual's image can be protected and exploited in Australia using a patchwork of legislative and common law provisions.
Lionel Messi, an Argentine professional footballer who plays as a forward for Spanish football club FC Barcelona, was recently sentenced to 21 months imprisonment and fined approximately €2 million in Spain for using tax havens to conceal earnings from his image rights. Image rights principally mean the right to control the use of an individual's image. Understandably, they can be quite lucrative for celebrities through merchandise and endorsements as major companies will often wish to associate themselves with a successful individual's fan base.
A constitutional right exists in Spain in an individual's own image. In the USA, such a right is covered under a 'right of publicity'. Australia, however, does not have a specific concept of 'image rights'. Instead individuals must use a combination of copyright, consumer law, trade mark and common law rights to protect and exploit their image.
Copyright and trade marks
Copyright can exist in films or photographs displaying the individual's image. However, the rights of copyright in such works generally vest in the author of the work, such a as photographer. The ownership of copyright in photographs and film needs to be correctly documented so that these works can be assigned and licensed. It is important to emphasise that the mere ownership of the copyright in photographs and film does not of itself give the owner the right to exploit the individual's image without the authorisation of that individual.
An individual may also seek to register a trade mark over their name, an image, their signature or even a distinctive catch phrase. Trade mark registration allows for exclusive use of the mark and can also be sold or licensed for profit.
Consumer law protections
If the use of an image is likely to cause confusion and mislead or deceive the public, then an individual may be able to use sections 18 and 29 of the Australian Consumer Law to prevent its use. For example, if an individual regularly endorses and supports particular products of Company A and their image is then used in connection with the marketing and sale of an additional product from Company B, the public may be misled into thinking that the individual has also endorsed Company B's product. The critical component in this approach is the ability to mislead or deceive, as courts are reluctant to find in favour of an application in circumstances where there is nothing misleading or deceptive in relation to the unauthorised use.
Common law protections
An action for passing off can provide alternate protection to an action brought under a consumer law provision as discussed above. An individual will need to establish the existence of reputation and then argue that a particular misrepresentation by another has caused, or is likely to cause, damage to the individual. Defamation can also be a handy tool, however use of an individual's image of itself will not amount to a cause of action for defamation. It will be necessary to demonstrate that such use has lowered the public's opinion of the individual, exposed the individual to ridicule or hatred, or caused the person to be avoided or rejected.
A patchwork
Clearly, the treatment of image rights in Australia is not a simple as it appears elsewhere around the world. A well measured and considered approach is needed by individuals seeking to protect and exploit what can be a valuable asset to elite athletes like Messi and other celebrities alike. We will also be watching the government's response to the report into 'Remedies for the Serious Invasion of Privacy in NSW' published by the NSW Legislative Council Standing Committee on Law and Justice to see whether new avenues for protection may arise from a privacy perspective.
For further information, please contact:
James Skelton, Solicitor
Phone: +61 2 9233 5544
Email: JAS@SWAAB.COM.AU
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
