In the last Distinctive IP I said that the Rihanna celebrity endorsement case highlights the fact that a celebrity whose name or image is used without authority to promote a product has various legal options. There’s passing off, if there’s both a reputation and potential confusion. There’s the Code of ASA. There’s abuse of personality rights (image rights in the USA). And there’s trademark infringement, in cases where the celebrity registered their name, image or signature as a trademark.

Many celebrities do now register. There’s a case going on the USA where the issue is whether the trademark (Pharrel Williams if that means anything!) is confusingly similar to the registered trademark (of The Black Eyed Peas fame of course). And Beyoncé and Jay Z recently gave birth to a beautiful little brand…sorry girl called Blue Ivy (trademark filed within a month of the birth!).

A recent BBC posting gave an interesting insight into the high-stakes world of image rights. It dealt with Gareth Bale, the footballer who was recently sold by Tottenham Hotspurs to Real Madrid for a world record fee of GBP 85 million. The posting kicked off with admirable understatement: ‘The value of sports image rights have come a long way since former Formula 1 driver Eddie Irvine secured a £25,000 pay-out from a radio station for using his likeness in a 1999 advertising promotion without permission.’

Bale, we’re told, has ceded 50% of his image rights to Real Madrid, no doubt to help the club recoup its massive investment. The posting explained how footballers’ massive salaries are structured in a way to make them as tax efficient as possible – the figure agreed upon is split between wages and payment for image rights, with the image right portion being paid to a company owned or linked to the player. This company may, of course, be incorporated in a tax-friendly jurisdiction like Guernsey, which is the only place where you can actually register an image right. David Beckham led the way when he incorporated a company called Footwork to hold his trademark and image rights.

The posting mentioned that a sportsman’s image rights might extend to a ‘unique action, or goal celebration’. Indeed they may, and celebrities do sometimes register these things. Rugby star Jonny Wilkinson registered his clasped-hands routine, US footballer Tim Tebow registered his fist-on-forehead routine, and Gareth Bale registered his Eleven of Hearts’ goal celebration. Such registrations are rare and I’m not aware of a case where one has been enforced. So no, don’t expect the sheriff of the court to run out on to the Ellis Park pitch the next time Elton Jantjies lines up for a kick whilst shamelessly copying Wilko’s action. It’s far more likely that the gesture will be used, registered and enforced in respect of merchandise, and it’s likely to involve 2D rather than a 3D version, on a t-shirt perhaps.