Image rights and personal branding of athletes
Every jurisdiction regulates the branding of athletes in some way. Ernesto M Meade and Galia Moss Tabachnik of Uhthoff, Gomez Vega & Uhthoff explain what happens in Mexico
Athletes in Mexico, as in many other countries, have achieved a privileged place in society. People see them as role models, kids wish to be as their idols and big companies like to link their products and services with them and the values that they represent.
As their principal assets, athletes have the rights of their own image and their personal branding. Those rights generate millions of dollars and business, even when the athlete has retired. Therefore, to find the best way to protect these assets, they should clearly understand their intangible rights and how they are regulated in Mexican legislation.
Image rights under the LCLP
Image rights can be determined to be moral rights worthy of protection, given their very personal character, or heritage rights, giving the holder the possibility of committing them to commercial traffic, and therefore determining the manner and the conditions in which a person (an athlete) may allow a third party the use.
Personal branding also presents a double aspect: (1) possible protection against interference of third parties that try to take advantage through unfair or illegal actions, the popularity and fame of the athlete on the market; and (2) it allows the development of marketing campaigns and publicity surrounding the athlete, promoting the possibility of negotiating the optimal transfer of rights of image, whether it is in contracts, merchandising, etc.
As a general rule, someone becomes a public figure voluntarily or incidentally – by participating in public affairs or by allowing others the use of images displaying a person's identity in public media, either motionless as in photographs or with motion integrated as in audiovisual forms.
In exercising publicity rights, a person has the right for his or her image to be perceived by the public without elements affecting, diminishing or damaging his or her fame, reputation or honour. In Mexico, since 2006, the Law on Civil Liability for the Protection of Private Life, Honour and Self-Image (LCLP) abolished the provisions about publicity, image protection and moral damage that were formerly included in the Local Civil and Criminal Codes.
Although it is a local provision of Mexico Federal District (Mexico City), the description of the rights of image and some other related regulations stated in it could be used in all the Mexican territory by federal and local authorities and courts, bearing in mind that there is no other Mexican law that defines this right, so, it should be considered a proper source of law.
An image is defined by Article 16 of the LCLP as the identifiable reproduction of the physical characteristics of a person in any possible material means. Every person in Mexico has the right over his or her self-image and has the ability to authorise or not the fixation of his or her image and the public communication thereof in any available media. In this context, the Law qualifies conduct as illegal when someone publicly communicates the image of a person without proper authorisation. The Law also forbids capturing, taking, reproducing or publishing motionless or motion-integrated images of people in private events or moments.
When someone's self-image is affected, the matter can be settled by a local civil judge. The remedies foreseen by the LCLP consist of a publication or disclosure in media about the final resolution declaring the existence of damages against the moral patrimony of the affected party and an economic indemnification to be determined by the judge in view of (1) the degree of disclosure of the expression causing the damage, (2) personal conditions of the affected party and, (3) the special circumstances of the case. In any event the indemnification could not exceed the amount of 350 days of minimum wage applicable in Mexico City (around $1,500).
Due to the very restricted amount that our Law establishes for the indemnification, it is important to fully consider, before suing, if the matter under consideration may be valued at the maximum amount allowed by the Law. Otherwise, we prefer seeking a decision based on the general provisions of the Mexican Civil Code.
The LCLP specifically establishes that it will apply not only to individuals but also to companies or organisations in those aspects compatible with their nature.
When an athlete authorises the use of his or her image for advertising a product or service, the Federal Copyright Law foresees that the applicable contract to be entered into would be a so-called publicity agreement. A publicity agreement has special rules applicable to payments and the periods of time in which the authorised person will have the right to use the performance or image of the concerned athlete. In terms of Article 74 of the Federal Copyright Law, advertisements can be publicly communicated up to six months as its first publicly disclosure. Concluded this initial term, the holder of the authorisation can continue using the advertisement for another two additional six-month terms, but the involved athlete would be entitled to receive an economic compensation at least equal to the one originally received for the initial term. Once the three six-month terms were concluded, the term for the use of the advertisement will be subject to a new negotiation between the involved athlete and the person willing to obtain an authorisation for the use of the materials for a new term.
Additionally, if a third party uses an athlete´s image for profit, without the express consent of the athlete, it could be pursued and punished, since according to the Mexican Copyright Law, this activity is considered an infringement.
On the other hand, the registration of the personal brandvof an athlete (name, signature, initials, nickname, domain name, a logo characteristic to differentiate the sportsman, etc) is a necessary complement to the protection granted by the fundamental right of honour and personal image.
Mexican Industrial Property Law
As sport is one of the topics that generates more emotion in people, it has absorbed a very important part of the global entertainment industry, turning it into a real product of mass consumption. Companies seek athletes to associate their names or pictures in their trade marks through advertising campaigns that convey to the potential consumer of that product or service a guarantee of quality associated with the values that the athletes represent.
In Mexico, a trade mark is registered to distinguish a product or service. Taking this into account, the athlete can register as a brand:
his/her Image, name and sign;
a combination of the above;
a variant of his person in cartoon;
a drawing representing the special characteristics of the athlete (as an example, the drawing that is made of the basketball player Michael Jordan in a leap to throw the ball to the basketball); and
a description of someone that may be related to the activity and success of a special and recognised athlete.
Therefore, it is of utmost importance not to overlook the registration of the personal mark, not only for sport services, but also for other activities outside their natural environment such as the world of fashion clothing or merchandising services. This helps to:
ensure proper use of the name and image;
avoid third parties trying to appropriate the mark for purely speculative purposes or to exploit it commercially; and
prevent spoofing of athletes in social networks, as well as the creation of websites or portals on the internet containing content that is contrary to the interests and values that the athlete wants to transmit.
Article 90 of the Mexican Industrial Property Law, paragraph 12, states:
The following may not be registered as marks:
XII. The names, pseudonyms, signatures and portraits of persons, without the consent of the persons concerned or, if they are deceased, of their surviving spouse, blood relations in direct line and by adoption and collateral relations, both down to the fourth level of relationship, in that order;
Once they obtain the protection of the trade mark, its effects would be the following:
exclusive right to use the mark in the course of trade;
right to prohibit third parties, without their consent, using any identical or similar sign which involves risk of confusion, both in products and in advertising, labelling, use in networks, etc, and
right to prevent traders or distributors to eliminate brand products or services marked, without express permission of the owner.
In terms of Article 95 of the Law, a trade mark registration will be valid for 10 years from the date of filing of the application and it may be renewed for periods of the same duration.
Trade mark owners must use it for legal reasons since the Mexican IP Law states the obligation on the owner to use the trade mark in the product or services protected by the registration. If not used in a period of three consecutive years from the registration date, the trade mark registration may be contested by a third party on the grounds of non-use.
Benefits for athletes who register their mark:
exclusive right to use the mark in trade;
enforceability against external interference: to prevent third parties from using the trade mark for speculative or trading purposes;
exploit with greater assurance of success his image rights: position preferred or negotiate contracts for the use of his image, merchandising and brand licensing;
openness to new business opportunities; and
generate new revenue sources.
The best way to protect their rights would be by signing licence agreements with the sponsors and interested companies, which include the rights to use and exploit the image of the athlete and its personal branding, and an appropriate compensation or royalty.
In many cases, athletes constitute companies, owned and controlled by them as majority shareholders, dedicated to manage their image and brands. They assign their rights to such companies, and said corporations are in charge of negotiating and signing the licence of use agreements, renewing the corresponding rights, collecting the obtained royalties and paying the corresponding taxes.
These companies could have different lines of business and tax structures, so it could be very useful for the athletes to avoid the payment of excessive income taxes.
If any third party uses without consent the image of the athlete or its personal branding (registered trade mark), it could enforce its rights through the following procedures:
a) Infringement action before the Mexican Institute of Industrial Property: Article 213 of the Mexican IP Law states that "using a mark or a mark confusingly similar to another registered mark to protect products or services identical or similar to those protected by the registered mark" constitutes an administrative infringement. Article 231 of the Mexican Copyright Law states that "using the image or portrait of a person for profit, without its consent" also constitutes an infringement action.
b) Criminal complaint before the federal deputy agent of the General Prosecutor's Office: Article 223 of the Mexican IP Law states that "falsifying marks, protected by this Law" and/or "producing, storing, transporting, introducing into the country, distributing or selling, on a commercial scale and with ill intent, items which display falsifications of marks protected by this Law, as well as knowingly providing or supplying in any form raw or other materials intended for the production of objects which display falsifications of marks protected by this Law", constitute offenses. The punishments derived from the infringements and crimes are fines, but also imprisonment of the culprit.
Once the decisions in the administrative and criminal proceedings are final and conclusive, the athlete could claim payment of damages.
According to the Mexican Law, compensation for material damages or indemnification for damages and harm due to violation of the athlete's rights shall in no case be less than 40% of the public sale price of each product or the price of the rendered services.
Ernesto M Meade
Ernesto M. Meade is an associate in the litigation group of Uhthoff, Gomez Vega & Uhthoff SC. He holds a law degree from the Barra Nacional de Abogados, Faculty of Law and a masters degree in international business law from the Universidad Iberoamericana, Faculty of Law. He also holds specializations in intellectual property law from the Universidad Nacional Autonoma de Mexico and in sports law from the Universidad Austral (Buenos Aires, Argentina).
He was professor of intellectual property and administrative law for five years at the Barra Nacional de Abogados, Faculty of Law.
He is coordinator of the Sports and Entertainment Law Committee of the Asociación Nacional de Abogados de Empresa (ANADE) and coordinator of the IP Law Committee of the Ilustre y Nacional Colegio de Abogados de Mexico (INCAM).
He is also member of the International Trademark Association (INTA) and the Asociación Mexicana para la Protección de la Propiedad Industrial (AMPPI).
Meade is fluent in Spanish and English.
Galia Moss Tabachnik
Galia Moss Tabachnik is a legal intern at the corporate and sports law practice of Uhthoff, Gomez Vega, Uhthoff.
She is studying at the Universidad del Valle de México to obtain her bachelor of laws. Also she is studying to hold a diploma of sports law at Escuela libre de Derecho.
Moss has an important history in the Mexican sport, being the first Latin-American woman to cross the Atlantic Ocean solo sailing. As a result of her experience dealing with legal matters to get sponsorship and pro-bono activities, she has been involved since then in the legal practice of sportspeople.
She is also a motivational speaker for businessmen, academics, entrepreneurs and general audiences. She is the author of the book "Navegando por un Sueño".