A Mes­si Patch­work of Image Rights

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 in hot water 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.

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