Australia: Commercial Use Of ‘Generic’ Sporting Images

Originally published in World Sports Law Report, Volume 5, Issue 6, June 2007 -'Australia: Image rights: commercial use of 'generic' sporting images', Claude Harran | Dibbs Abbott Stillman | Lawyers, http://www.e-comlaw.com/WSLR

Leo Barry’s case against Australian betting company, TabCorp, for the use of his image in promotional material, highlights the need for sporting organisations to consider what images can be used without obtaining further player consent when signing commercial agreements. Claude Harran, of Dibbs Abbott Stillman Lawyers, examines Barry’s claim and its chances of success.

What, if anything, is a sports personality’s image rights worth? When one considers the number of well paid sports superstars, it is clear that the value attributed to these individuals is not only as a result of their ability to be covered as news, but also because of the tribunal following they are bestowed with, resulting in businesses being able to exploit a fan’s passion through the use of the sports superstar and their image for sponsorship, endorsements and character merchandising. In addition, sporting organisations clearly place a premium on the image rights of their sporting personalities, otherwise why would they develop contractual agreements that seek to limit the rewards the sports personality is able to reap from use of their image? Forbes runs an annual celebrity rich list, and although there are only a handful of sports starts in this list, the ones that do make the top 30 clearly illustrate that given the correct image (or in fact a "bad boy" image in the case of Kobe Byrant), the sports star’s newsworthiness and sheer talent can result in a sports start’s image being worth more to them by way of commercial endeavours than they receive from their salary for their sport participation or prize earnings. A clear example of this is provided by Muhammed Ali. For the year 2006, Ali was placed in lucky number 13 sport, even though his health is fragile and he has not competed in decades. Ali is recorded as having sold the rights to his name and image for US$50 million dollars. This is an example of a sporting superstar being able to rely on his name and image well after he has ceased to actively participate in the sport that made him famous. Forbes reports that "Ali’s name has generated between $4 million and $7 million annually over the past five years, largely through endorsement deals with companies like Adidas and Electronic Arts (EA)" [1]. As will become evident, the latter of these endorsement arrangements with EA is what continues to make the action of passing off – in the context of celebrities and sports stars – important outside of those jurisdictions that do not recognise a personality right, per se.

Now, imagine being a sports superstar. Imagine playing in the finals of a major sporting event. Imagine being responsible for the match winning play. Imagine all the people. Imagine a photograph immortalising your match winning play all over the front page of the morning newspapers the next day. Pure euphoria. Then, imagine the exact same image being used, without your permission, on a poster in a betting shop arguably promoting the betting company’s commercial activities. This is exactly what has happened to Leo Barry of the Sydney Swans as a result of his match winning "mark" [2] in the Australian Football League (AFL) Grand Final in 2005. Given the restrictions and penalties imposed on players not to become involved in betting on the sport that they participate in, sports starts are reluctant to be associated with betting companies and therefore Barry, apart from the contractual payments he might be entitled to, will want to ensure that there is no confusion that he does not have an association with the betting company, TabCorp Holdings Limited (TabCorp). Barry has brought an action in the Federal Court of Australia in Melbourne against the AFL and TabCorp for the use of a photograph of his 2005 Grand Final contested mark. Barry alleges that the photograph of the mark has been used without his consent. Australia, unlike the United States, does not explicitly recognise a personality or image right. As a result of the lack of a recognised personality right, Barry has brought an action based upon:

• an alleged breach of the Collective Bargaining Agreement 2004 (CBA) between the Australian Football League Player Association and the AFL;

• an alleged contravention of the Australian Trade Practices Act 1974 (TPA) by both the AFL and TabCorp; and

• for passing off

The contractual claim

The motivation for commencing the action lies with the fact that Barry, if regarded as a "featured player" under the CBA (which Barry alleges he is), then in accordance with the CBA and the AFL Licensing Operations Guidelines, Barry is entitled to "80% of the net receipts from the licensing activity", being the licensing by the AFL to TabCorp of the use of the 2005 AFL Grand Final contested mark taken by Barry. Critical to Barry’s claim that he is entitled to 80% under the CBA is that he can establish that he is a featured player and that his consent to use of his image was not obtained. The outcome of this limb of Barry’s claim will be based upon the interpretation of what constitutes a featured player under the CBA.

TabCorp has brought a separate action against the AFL on the basis that the AFL instructed it that Barry’s consent was not required under the CBA.

The Trade Practices Act 1974

The TPA claim lodged by Barry is a uniquely Australian remedy based upon legislation specifically passed in Australia to encourage competition with the marketplace. Given the commercial nature of sport and the application of the Act specifically to the sporting arena, commercial and competition law principles clearly form a part of the sporting landscape. Barry has brought a claim under section 52 of the TPA, which deals with matters relating to misleading and deceptive conduct in trade and commerce and is the section of the legislation most often relied upon by sporting personalities. Barry’s claim under this heading alleges that the TabCorp poster using the image of him making the contested mark moments before the final siren (end ensuring that Sydney Swans won the 2005 AFL Grand Final) misleads or deceives consumers into believing that Barry has a commercial arrangement with TabCorp and its betting business. Barry has no such arrangement with TabCorp.

The passing off claim

If the breach of contract and infringement of the TPA can be put to one side, then this is arguably an opportunity for the Australian courts to reconsider their position with respect to personality rights.

Passing off can be defined as a misrepresentation causing, or likely to cause, damage to the business or goodwill of the sports superstar by alleging an association between them. In order to successfully bring an action based on passing off, Barry will have to provide evidence of an established reputation or goodwill, a misrepresentation and damage, or the likelihood of damage to such reputation or goodwill.

Despite the actions available to image rights holders under section 52 (and 53) of the TPA, passing off remains an important potential personality rights protection mechanism. The continued importance of passing off is clearly illustrated by the challenges emerging with the advent of new media technologies. A not too dissimilar case to that of Barry’s was brought by Oliver Kahn, the World Cup winning German and FC Bayern Munich goalkeeper. In Kahn’s case, Electronic Arts (EA), a computer games producer involved in developing sport computer games, used Kahn’s image in its FIFA World Cup 2002 game. EA sought to establish that it had obtained a license to use the names and images of the soccer players featured in the game from the international players’ association, FIFPro. Oliver Kahn argued that he had not granted EA a license to use his name, image, mannerisms and personality traits. EA had in this case paid FIFA for the use of Kahn’s name in the game and reached an agreement with FIFPro over the use of Kahn’s name, but importantly they had not spoken to the players individually. Kahn was ultimately successful in his action on the basis that EA had not obtained his consent to use of his name, image, mannerisms and personality traits.

Similarly, Barry alleges that TabCorp has used his image without his consent, even though TabCorp had paid the AFL for the use of the photograph on the assurance by the AFL that Barry’s consent was not required in accordance with the terms and conditions contained in the CBA.

A further example of the legal challenges emerging as a result of the advancement of new media technologies is a recent Belgian case, involving several of the leading European football clubs and football stars. The Belgian court found that an online betting company was able to use player images and club intellectual property without requiring their consent, on the basis that the use of images was not primarily for the commercial purposes of the betting company. The Belgian court held that the use of the images by the online gaming agency was for the purpose of providing its clientele with information in order to permit them to make informed betting decisions. This is not an isolated incident, as a Paris court reached a similar decision in 2005 [3] and the commercial and non-commercial distinction has also found support in Australia.

In Australia, Gary Honey, a successful Australian long jumper, brought an action against Australian Airlines and House of Tabor for use of a photograph of him participating in the Edinburgh Commonwealth Games. Honey took action based on both misleading and deceptive conduct under the TPA and for passing off, but failed on both counts. The court held, amongst other things, that as the Commonwealth Games were an amateur competition, the public would not be misled into believing that there was a commercial connection between Honey and Australian Airlines or Tabor House. The artificial "non-commercial" amateur nature of the Commonwealth Games therefore influenced the court’s decision.

Whether Barry’s case will be decided in the same manner as the Belgian case is questionable. In order to find in favour of Barry, the poster will have to have been used for the promotion of the commercial activities of TabCorp. Classification as commercial use will undoubtedly be influenced by the interpretation of whether Barry is a featured player. As a featured player, Barry is entitled to 80% of the licensing fee obtained by the AFL for the use of the photograph, which has financial and commercial implications for Barry. Where there are commercial implications for Barry, the court is arguably more likely to ascertain that the use by TabCorp is for promotion of its commercial purposes and as a consequence, where Barry is able to provide evidence of an established reputation or goodwill, a misrepresentation – determination of which is influenced by the commercial nature to which the picture is being put – and damages to such reputation or goodwill, then passing off remains a real remedy for Barry.

Whether the action for passing off in Australia should be expanded upon in order to recognise a US style personality right, whether it should remain the same or be restricted in a similar manner to the recent European trend, is open to debate and is something best left to the courts to consider.

If TabCorp is using the photograph to promote its commercial activities, which given the fact that it paid the AFL for the use of the photograph and the use to which the photograph has been put it is difficult to see how it is not being used for commercial purposes, then Barry ought to be entitled to rely upon both section 52 and passing off as a means of claiming damages. In itself, the photograph is not misleading or deceptive, but given that Leo Barry has become well known for taking the mark and has acquired a valuable goodwill and reputation as a consequence of his exploits in taking the mark, it is reasonable that a significant number of AFL supporters would consider that any use of the photograph by TabCorp to promote its commercial activities was approved by Barry. In this regard, the supporters are misled and deceived into believing that Barry has endorsed or consented to his image being used by a betting company, when in fact he has not so consented. Ultimately, the matter will be resolved on the contractual question. Where there is a settlement on the contractual issue, the TPA and passing off claim will fall away.