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Why are Jose's 'image rights' allegedly holding up the Manchester United deal?

29 May 2016

Over the past 24 hours, the UK press has widely reported that negotiations around Jose Mourinho’s image rights are holding up his keenly-awaited appointment as Manchester United Football Club’s new manager.

But what are ‘image rights’ and how could they be causing such a delay?

Unlike in the United States, ‘Image rights’ are not a stand-alone intellectual property right in the UK; instead this term is used to refer to a combination of different statutory and common law rights that an individual can hold in their personality (giving them the right to protect against unauthorised use of their name, likeness or other personal identifiers).

The concept of image rights (or ‘personality rights’ as they are sometimes called) as an asset has become increasingly popular in the UK. Both registered and common law rights can be employed.

Common law rights in a reputation can be relied upon in a claim for ‘passing off’, where another party is using the image or likeness of a famous personality to falsely suggest that they endorse goods or services. Passing off was deployed to some success by Formula One racing driver Eddie Irvine against Talksport radio station when the station used Mr Irvine’s image for promotional purposes.

The ‘image rights’ causing Man United trouble in this case, are trade marks, which are increasingly being used as an asset by famous personalities. A trade mark application can be relatively inexpensive and give the owner a broad scope of protection for a long period of time (as trade marks, once registered and provided that they continue to be used in practice, are renewable indefinitely).

As with his actions on the pitch, David Beckham has led the way for footballers here; with a UK trade mark registered for his name from as early as 2000. Many sports personalities and celebrities are increasingly becoming aware of the profitability of image rights, with some brand agencies estimating that up to a third of a celebrity’s overall income can come from image rights. Who could forget Gareth Bale’s application – subsequently surrendered - to register a trade mark for his ‘Eleven of Hearts’ goal celebration in 2013? Wayne Rooney holds (via an incorporated company to which he assigned these rights) a number of trade marks for his name and signature, as does Sir Alex Ferguson for his name.

Jose’s former club - Chelsea Football Club - from which he was sacked in 2015, own a number of EU trade marks for Jose’s name and his signature (which were filed between 2005 and 2013). These trade marks are registered for a wide range of goods, permitting the club the exclusive right, to the exclusion of all others, to use the trade mark on a huge range of profitable merchandise (including clothing, after-shave, computer games and DVDs).

Should United wish to use Mourinho’s name or signature on any of the protected forms of merchandise in future, to avoid claims for trade mark infringement they will need to either:- 1) take a licence from Chelsea to use the trade marks, 2) require Mourinho to purchase the ownership of the trade marks from Chelsea (or purchase this themselves), or 3) challenge whether the broad scope of protection of Chelsea’s registrations should still apply (i.e. if they have only used the trade mark for certain types of goods in practice – e.g. key fobs- then they will not be entitled to maintain a wide monopoly of protection for all of the other goods currently covered by the registrations) and avoid use of the trade mark on those goods which they have not been able to challenge.

It is certainly unusual for a football club, or any employer entity, to own image rights of an individual. We cannot know how it was agreed that Chelsea could apply for these trade marks in the first place, but it is a useful lesson for those of you considering protection of your image rights in future. It seems illogical, for something as personal as a name or signature, but there is no rule in the UK that the applicant for such a trade mark must be the owner of the name or signature (however there are circumstances in which the person in question could challenge the application as being in ‘bad faith’).

A more interesting question, which will surely be considered in due course by the UK courts as the popularity of trade marks as a means of protecting the asset of personality grows, is how enforceable these trade marks are against third parties who appear to be infringing them. Trade marks used to protect a personality, such as these, are unlikely to prevent Mr Mourinho from using his own name for any promotional purpose at all, but can be used to protect certain limited merchandising rights, depending on the circumstances in which those trade marks were registered. Further, as Jose has, since departing Chelsea moved between various clubs before (hopefully) settling at United, there is certainly an argument that his brand and reputation is decreasingly associated with Chelsea; thus limiting their hold on his image rights under common law. However, we suspect that this is a fight that United are not keen to have and hope to see their image rights headache resolved soon.

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The content on this page is provided for the purposes of general interest and information. It contains only brief summaries of aspects of the subject matter and does not provide comprehensive statements of the law. It does not constitute legal advice and does not provide a substitute for it.

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