by Dr Ewan Kirk, senior lecturer in Intellectual Property Law at Birmingham City University

Reports this week in football have been dominated by the expected appointment of Jose Mourinho as the next Manchester United manager. However one issue that appears to have caused a delay in this agreement, reported by the BBC, is that of image rights in Mourinho’s name.

This is due to the fact that Mourinho’s name and signature are currently registered on the UK Trade Marks Registry by Chelsea Football Club for a range of products which would have been sold by Chelsea as merchandise for the club whilst he was manager there. Obviously this is something that, since Mourinho’s sacking by Chelsea during the 2015/16 season, they would no longer be interested in doing. However their registration is still current.

The ability to exploit one’s image has become increasingly important in sport, particularly football because of the value of merchandising as part of revenue at football clubs. It is not unusual for a footballer, manager or other sportsperson to have some form of agreement regarding commercial rights or sponsorship. However, the interesting issue that this raises is about who has control of rights which affect a person’s image, because it is Chelsea and not Jose Mourinho himself that own the trade mark. With no inherent right to own your own image, this results in situations such as this.

Although there have been calls on occasion for a dedicated image rights, the UK does not have an image right as such. Any way in which celebrities and sports personalities have control or rights over their image is through other intellectual property rights like trade marks, confidentiality (as in the case with Catherine Zeta-Jones and Michael Douglas’s wedding photos and Hello! Magazine) or other legal mechanisms, such as passing off (as shown in the case involving Topshop and Rihanna). Other jurisdictions such as parts of the United States recognise a right of publicity as a separate right.

The consequence of the current situation over Mourinho’s name ultimately means that he does not have the right to commericalise that name by attaching it to any of the extensive list of product types that Chelsea have it registered for, unless some agreement to transfer or license the name to him or to Manchester United were arrived at. Chelsea even have Mourinho’s signature registered as a trade mark. It may also be possible for an action to be taken against Chelsea to have their registered trade marks removed from the register, because the likelihood of them using them is extremely slim. (Trade marks can be removed from the register if they are not used.) However the legal cost of such an action makes it unlikely.

Ultimately this issue is unlikely to cause problems for the expected agreement for Mourinho to become Manchester United’s next manager, particularly as the rights were first registered when Mourinho was Chelsea manager the first time around, and he has managed Inter Milan and Real Madrid since then. However it does raise an interesting question about ownership and control of image for famous celebrities, particularly where the rights are owned by someone other than that person. It is possible, it would seem, for someone else to own rights in your name.

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