The protection of image rights in video games and the metaverse

For celebrities such as sportspeople or entertainers, image rights are a potentially lucrative income stream that warrant protection. Agreeing to brands using their likeness is big business, and so well-known persons should guard these rights fiercely. Once a celebrity moves into the realm of video games and online spaces however, what protections apply?

Image rights

The UK has no single specific law protecting image rights per se – however, there are a number of legal avenues that can be pursued to protect what, in other jurisdictions, are codified as personality or publicity rights. IP rights form part of the patchwork of protection that a celebrity can stitch together (both in the physical world and the metaverse) to protect their image.

Passing off

The key route for individuals in the UK is the tort (or wrongdoing) of passing off. Passing off involves one party misrepresenting their goods or services as being those of another party or (in this particular context) a false message that those goods or services are endorsed by the well-known person.

The two most well-known examples of passing off claims of this type being successfully pursued in the UK (albeit in the real not online world) are the cases of Irvine v Talksport Ltd and Fenty v Arcadia Group Brands Ltd.

In Irvine, the former race car driver, Eddie Irvine, sued Talksport after it had used a manipulated image of him listening to its radio station, wrongly suggesting his endorsement of the station. In Fenty, pop star Rihanna brought a successful claim against TopShop for selling a t-shirt emblazoned with her image and which gave the false impression that she had authorised the licence of her image on the clothing.

Passing off in video games and the metaverse

The metaverse, which we have further discussed here, is the virtual world in which users represented by avatars interact. 

Passing off is as relevant in the metaverse as it is in the physical world. An avatar representing a famous person in the metaverse without their consent could give rise to a claim of passing off or false endorsement in the same way as in the Irvine and Fenty cases.

Trade marks in the online world

In addition to a claim of false endorsement, trade marks can be wielded to control unauthorised use of a well-known person's image. A celebrity can register their name, nickname, logo, signature and a graphical representation of their image as a trade mark. David Beckham, for example, has registered various UK trade marks which incorporate his name in relation to a wide range of goods. In September 2020, Lionel Messi won his case to register a figurative UK trade mark which incorporates the word MESSI (image below), despite some opposition.

Sports personalities have also attempted to register 'motion' trade marks. Cole Palmer made headlines earlier this year in his effort to register a motion trade mark for his celebratory "cold" or "shivering" gesture. The application included as the description of the motion mark a video of Palmer performing the celebration in a plain black t-shirt (notable perhaps because he was ensuring the motion is not linked to any particular football club.)

Sports personalities have also successfully registered nicknames. Paul Gascoigne registered "Gazza" and John McEnroe registered his infamous catchphrase, “You cannot be serious”. Alan Shearer also registered his photograph for goods such as posters.

Ensuring that trade marks are registered in the right owner's name is crucial. In 2016, Jose Mourinho ran into difficulty when he became the manager of Manchester United Football Club. His name and signature had been registered as trade marks in the name of his previous employer, Chelsea Football Club.

Similarly, Roger Federer had difficulty with an "RF" logo that had been created by Nike whilst he was linked to them by a sponsorship contract. In 2018 the agreement with Nike ended, and Federer entered into a new sponsorship contract with Uniqlo. The RF trade mark belonged to Nike, but Federer felt strongly about being able to use it, stating "They are my initials. They are mine". The case was settled out of court, with the trade mark being assigned to a company controlled by Federer.

These are just a few examples from the world of professional sportspeople, demonstrating the commercial value of these rights. This has led to disputes when likenesses of well-known athletes are used in video games and the sportspeople in question believe this is to their detriment.

Image right disputes in video games

In 2020, image rights entered mainstream news when Zlatan Ibrahimovic and Gareth Bale questioned the right of football's governing body and FIFPro to sell their likenesses for use in Fifa 2021, a best-selling videogame.

EA Sports, the maker of the game, claimed that its deals with individual clubs entitled it to players' likenesses, stating that "…we have contractual rights to include the likeness of all players currently in our game. As already stated, we acquire these licences directly from leagues, teams, and individual players. In addition, we work with FIFPro to ensure we can include as many players as we can to create the most authentic game".

In signing up to a contract with a club, a famous sportsperson may have granted the club a licence or an assignment to use their image rights in a personal and club capacity, and not realised the full implications of this grant. The sort of publicly aired dispute involving Ibrahimovic and Bale shows the complexities that can arise when player likenesses come to be commercially exploited in ways they had not imagined.

There can also be disputes over identifying features of celebrities. In the US the tattoo artist responsible for Mike Tyson's distinctive facial tattoo, Mr Whitmill, successfully sued Warner Brothers for its use of the tattoo in the promotion of The Hangover Part II. Mr Tyson had signed an agreement confirming that Mr Whitmill owned all the rights in the tattoo and he therefore had grounds to pursue a claim.

Tattoos in video games have received mixed treatment from the US courts, with videogame publisher Take-Two Interactive successfully defending a claim from tattoo artist company Solid Oak Sketches regarding the reproduction of Le Bron James' tattoos in the "NBA 2K” video game franchise, albeit that a contrasting decision was reached against the same publisher in a case brought by tattoo artist Catherine Alexander over the reproduction of wrestler Randy Orton's tattoos in the popular WWE 2K video games.

In the NBA case, the tattoos in question featured on only three out of four hundred available players and were unlikely to be included in average game play. Not only that but the tattoos were reproduced at a significantly reduced scale and it was difficult to discern even the shading due to the player's "quick and erratic" movements up and down the court. Importantly, the tattooists were held to have granted the players non-exclusive licences to use the tattoos as part of their likenesses, and Take-Two had an implied licence to use those tattoos through its agreement with the NBA, which in turn had a deal with the players including Le Bron James.

The WWE case was different – Alexander had secured registered copyright under US law for five of the six tattoos in question. She also claimed that WWE had offered her a small payment to use a design in their merchandise and she had turned that down. Interestingly, a U.S District Judge did set aside the jury awarded damages to Alexander as she had failed to prove that she was financially harmed.

Ultimately, identifying features of well-known persons should be equally capable of protection in the online space as in the physical space – but when it comes to identifying features that have been created with input from others, such as tattoos, the legal position can become more complex.

Protection of personal data

Perhaps not immediately obvious, another avenue through which image rights are also capable of protection in the UK is through data protection laws. Under the Data Protection Act 2018 (the DPA) personal data includes personal indicea that are used to identify a person such as gestures, dance moves, likeness, and other distinct features.

For the DPA to apply, the celebrity must be based in the UK and the brand using their likeness must also be established in the UK or targeting its goods at customers in the UK. Any avatar of a celebrity that is then created would count as processing personal data and the brand would be required to show a lawful basis for that processing. Without the celebrity's consent, the processing of their data is arguably unlawful.

Our thoughts

As illustrated above, image right protection in the UK is a complex mesh of different areas of law. Careful analysis and due diligence is crucial to understand what rights exist and in whom they vest, and how they can be lawfully used and monetised.

Disputes over image rights don't just raise financial issues – the impact of a personal likeness being used without permission can be emotional too. Trusted advisors are needed to provide guidance and support.  

Our team of expert dispute resolution specialists is experienced in providing bespoke dispute resolution services in high-stakes disputes. If you require advice on any aspect of image rights, contact us today to discuss how we can support you.