{php}echo $_SESSION['the_Crumb'];{/php}

Games & Gaming

Get Your Game Face On: image rights in the US and Europe

June 2009

Fight for Your Rights

In November last year, Jon Fitch, a welterweight mixed martial arts fighter in the Ultimate Fighting Championship found himself and other UFC fighters released from the UFC for reportedly refusing to sign up to an agreement which would effectively give the UFC the exclusive right in perpetuity to license his likeness for UFC-themed video games (specifically in respect of THQ’s recently released UFC 2009 Undisputed). Twenty four hours and a sudden change of heart later, Fitch and his fellow fighters, Christian Wellisch, Josh Koscheck and Cain Velasquez, all signed the deal and returned to the UFC.

At least Fitch knew where he stood (the considered response of Dana White, the president of the UFC, to Fitch and the other fighters wanting to discuss alternate terms was, reputedly: “[Expletive] him. These guys aren’t partners with us. [Expletive] them. All of them, every last [expletive] one of them.”); other sports stars have found themselves frozen out of lucrative licensing deals with games companies without realising it.

After a lengthy legal battle finally came to close at the end of last year, a San Franciscan District Court jury awarded $28 million to a group of retired NFL football players in a class-action suit against their union, the National Football League Players Association, and its licensing affiliate Players, Inc. The court held that the NFLPA, when negotiating licensing deals (including licensing for Electronic Arts’ Madden video game series), failed to properly represent the interests of the former players. Evidence which surfaced during the trial included an alleged email from an ex-NFLPA executive to EA instructing EA to “scramble” the identity of players in vintage teams, making them visually unrecognisable and giving them different jersey numbers, so that the NFLPA did not have to compensate them. The judge in the case declined to overturn the jury verdict and the NFLPA recently reached a $26 million settlement with the retirees.

The revenue generated by such licensing deals can be huge. Sales figures from VG Chartz show that – in various formats – the Madden NFL series regularly sells 6-8 million copies each year; the last iteration, Madden NFL 09, released in August 2008, sold over 4 million copies in the first 5 months and pre-orders for Madden NFL 10 due for release later this summer are reportedly set to be higher than last year. This article looks at the rights of individuals to control their likenesses in the UK (in contrast to the US and other major European regions) and considers the potential claims games companies may face by using unauthorised images.

I, Robot

The US has a long history of protecting individuals’ “rights of publicity”: the individual's right to control and profit from the commercial use of his/her name, likeness and persona. The right of publicity currently varies from state to state but the law in almost every state protects certain individuals from the unauthorised exploitation of their identity (balanced by the First Amendment freedom of speech). A couple of Californian cases (known as the “robot cases”) illustrate just how far the US will go to assert an individual’s publicity rights:

The first involved Vanna White, the Wheel of Fortune hostess. Samsung produced a series of adverts set in the future designed to show the longevity of Samsung products. One advert showed a futuristic Wheel of Fortune set featuring a robot dressed in a wig, jewellery and a long gown pointing at a letter tile. Vanna White had not agreed to the advert, sued and won – the court finding that Samsung had appropriated her image without authority (that Samsung referred to the advert as the “Vanna White ad” probably didn’t help their cause).

The second case was brought by George Wendt and John Ratzenberger, actors who played Norm and Cliff in the long-running series Cheers. Paramount Pictures licensed the series and its characters to Host International who built a chain of Cheers-themed bars in airport lounges. Host populated each bar with two, life-sized animatronic figures, named Hank and Bob, who would sit on bar stools and say lines similar to those said by Norm and Cliff in the show. Importantly, the figures roughly resembled their counterparts only in size, dress, and bar placement - they did not look like Norm and Cliff nor use any of the actual lines from the Cheers script. However, Wendt and Ratzenberger sued on the basis of infringement of their publicity rights and the court ruled in their favour.

Image Rights in the UK

In the UK, the concept of an individual having absolute “image rights” does not exist. This means that individuals do not have a clear right to control all commercial use or exploitation of their image, voice or likeness. Whilst many sports stars enter into contracts with their associated clubs, allowing the club to exploit their image rights on their behalf (witness the recent revelations in the Sunday papers about Newcastle United’s annual payments of £675,000 for the image rights of Joey Barton) any remedy they might have for infringement of these rights comes from a jumble of statutory and common law causes of action, none of which is particularly satisfactory.

An individual could claim that authorised use of their image constitutes "passing off" – where a commercial entity either tries to pass off their goods or services as another's or falsely implies that another has endorsed their goods or services taking advantage of that person's brand, reputation or goodwill.

For example, the ex-Formula 1 racing driver Eddie Irvine brought a successful claim against Talk Radio (now TalkSport) when it doctored a picture of him using a mobile phone by digitally removing the phone and replacing it with a Talk Radio-branded radio, then distributed this image in promotional materials. Eddie Irvine sued Talk Radio on the grounds that it had passed off its radio station as having been endorsed by him. The courts upheld his claim and awarded him damages equivalent to a “reasonable endorsement fee” that he would have been able to charge in order to endorse the station in this way at the time. The court held that it was immaterial that the image was not genuine and was clearly a joke.

Depending on the way in which individuals are portrayed in a video game, it is possible that they could allege their depiction is defamatory. The test is whether the image would lower the person in the estimation of "right thinking members of society" generally or to cause him to be shunned or avoided or to expose him to hatred, contempt or ridicule, or to disparage him in his profession or business. This will obviously depend upon the way in which the individual is portrayed in the game and whether the image invokes such negative connotations.

It is also possible that in some circumstances the use of an image of a person in a game could be a trade mark infringement. A number of sporting celebrities (such as David Beckham and Tiger Woods) have registered their names as trade marks in respect to certain goods. Whilst it is not possible to register a general trade mark in respect of an individual's image, some individuals (for example, Alan Shearer) have registered particular photographs or iconic images of themselves as trade marks in the UK and EU. If the images used in the game closely resembled any such image then this could constitute an infringement of the trade mark.

France and Germany

French law is similar to the US in that individuals have a general right to control the use of their own image, but this general right does not apply where the image is justifiable for freedom of speech purposes. Unauthorised use of a person’s image for commercial purposes may well constitute breach of the general law.

In Germany too, the general position is that an individual is protected against someone using his image without consent. Celebrities and other “absolute persons of contemporary history” have a more limited protection, but this tends not to extend to unauthorised commercial exploitation: German goalkeeper, Oliver Khan, successfully prevented his image and name being used in EA’s FIFA World Cup 2002, as Khan did not belong to any of the football federations or players’ associations which had licensed image rights to EA.

UK Advertising

Any adverts for the relevant game must comply with the relevant advertising codes of practice (for broadcast and non broadcast media, depending on the context). The UK Code of Advertising Practice, a self regulatory code for advertisers which applies to non-broadcast advertising. Using unauthorised images may well be judged to breach the Code. If the advert is held to be in breach of the CAP Code this is likely to generate negative publicity and the Advertising Standards Agency may also impose additional sanctions against the advertiser in the event of persistent breaches.

An analogous situation regarding the unauthorised use of images exists in the context of television advertising standards. The runner David Bedford complained to the Independent Television Commission about the 118-118 (“Got your number”) adverts which featured two runners sporting a similar 1970’s hairstyle and moustache combination and wearing kit similar to Bedford’s distinctive two-hooped vest and shorts. The ITC upheld Bedford’s complaint, deciding that the athletes depicted in the adverts clearly portrayed or caricatured Bedford without his permission and so breached the ITC Advertising standards code (now the TV Advertising Standards Code).

Conclusion

Unauthorised use of image rights can be a minefield; games companies and developers should ensure they have certainty over what images they can use.

If you have any questions or would like to discuss anything in this article in more detail, please contact Andy Moseby at Kemp Little LLP on 020 7600 8080.