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
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
The Ugg boots case revolves around who holds the trade mark rights to the word 'Ugg' in relation to sheepskin boots.
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