From the Track to the Marketplace: The Case of Julien Alfred
Rahym R Augustin-Joseph
From the moment Julien Alfred won Saint Lucia’s first Olympic Gold and Silver Medal in the Women’s 100m and 200m respectively, entrepreneurs and fans in Saint Lucia and across the world, started to ‘create’ merchandise and paraphernalia in her ‘likeness’ and ‘image’ to show support and/or make profit. Social media was ablaze with Alfred inspired T-shirts, bags and other materials suggesting that she was in support of global movements and political campaigns, such as the Kamala Harris’ presidential campaign.
Interestingly enough, the Minister of Youth and Sports, Hon. Kenson Casimir, when questioned about whether the Government was providing paraphernalia for sale, encouraged the private sector to do so.[1] Of course, I do not doubt that the Minister meant within the confines of the law. However, his invitation raised potential legal issues which will be analysed in this blog post. Subsequently, the concerns raised by Attorney-at-Law, Ms. Jadia Jn. Pierre,[2] who galvanised the inspiration for the interrogation of this issue and resultantly this short piece, are accurate as there may be some intellectual property issues that our entrepreneurs in their haste to capitalise on this achievement must be aware of.
Albeit, in the minority, there seems to be a small sub-section of local and international retailers who may believe that the practice of making celebratory merchandise is harmless. They see it as an opportunity to show love and support. In their view, it is just a ‘shirt with a picture I got online and I trying to make some money.’ Unfortunately, the lack of public education and litigation in the Caribbean have caused many to believe that these actions are legal. However, there are key areas of the law, such as the tort of passing off, personality rights, trademarks, and copyright, which may regulate the activity of such entrepreneurs and protect the interests of athletes such as Alfred. So, let us briefly get into some hypotheticals which emerge from the Minister's statements and other commercial developments.
This blog post focuses on the tort of passing of. Passing off can be defined as when a party tries to pass off their goods or services as though it were that of another without their consent and in so doing, takes advantage of the other party’s goodwill.[3] In the Sporting context, in order for a party to be liable for passing off, the claimant would have to prove that (1) the athlete has built up goodwill around the commercial use of their name and image, (2) the alleged infringer made a misrepresentation which led the public to believe that the product or service in some sense was endorsed by, licensed by or officially connected with the sportsperson and (3) that the sports star’s goodwill in his or her image is in fact or is likely to be, damaged by the misrepresentation.[4] Should one be liable, they would be required to pay damages to the claimant, among other remedies.
The difficulty with the first prong, [5] which may fail, as suggested by Dr Jason Haynes and J Tyrone Marcus in Commonwealth Caribbean Sports Law, is that many athletes have built up a reputation, but it is usually through sporting performances as opposed to the commercial use of their names or images. However, this difficulty in my view can be addressed through athletes:
1. Establishing a personal brand by consistently using their name, image and likeness across media, endorsements and appearances which can cause the public to associate them with particular qualities and skill sets;
2. Utilising and enhancing their social media presence which if it has a significant following and engagement can be a key indication of their influence and reputation, particularly if they utilise it for commercial purposes for advertisements with third-party companies and to engage in influencer activities;
3. Having brand partnerships such as Alfred does with Puma which can contribute towards the commercial use of her name;
4. Creating or being part of a brand partnership which allows for their own line of merchandise or branded products which will show that their image has tangible commercial value;
5. Trade marking their name, personal logo, nicknames, possibly ‘JuJu’ as she has been affectionately known, which would protect her name and allow her to assert commercial control;
6. Creating copyright content which can further enhance the value of their name in commercial ventures; and
7. Paying attention to sale figures from possible products, featuring the athlete's name or images.
If any of the above are present, the first step for establishing passing off is likely to be satisfied.
The second prong, provides requires that the alleged infringer made a misrepresentation which leads the public to believe that the product or service was endorsed by, licensed by or officially connected with the sportsperson. The alleged infringer does not need to have an intention to deceive the public, but if it is found that they were intentional, it will almost automatically show that it was achieved. Unless there has been express authorisation from Alfred and her affiliated organisations, the claimant would have to prove that the public believed that when they saw Alfred’s face or image on the paraphernalia, they believed that she had endorsed, licensed or it was connected to her. So, if she appears, for example on a celebratory t-shirt, and the public believes that she endorsed the product, then it would run afoul of the tort of passing off. In determining whether the public was deceived, the experience, perceptiveness and standards of literacy and awareness of the public in purchasing the merchandise will be assessed.
The UK case of Irvine v Talksport[6] is quite instructive, where the court held that depicting the celebrity listening intently to a radio bearing the radio station’s logo was a clear way of conveying that the celebrity had endorsed the company. The case of Robyn Rihanna Fenty v Arcadia Group Brands Ltd and Topshop[7]is also instructive where the public believed that the t-shirts being sold by Topshop bearing her image were endorsed by her. In both cases, the defendants were liable for passing off.
Finally, the ‘goodwill’ must be or likely to be damaged by the misrepresentation. If it can be proven that the athlete portrayed themselves in a particular way, and the image portrayed them in another way, then it can be argued that that their image was tarnished by the misrepresentation. Alternatively, the mere loss of a licensing opportunity is sufficient to establish damage for the purpose of passing off.
Future Caribbean Development
There have been calls from individuals like Roxanne Miller[8] and Yana Samuels[9] in the Caribbean, who have suggested that there must be legislative intervention that would give all person’s statutory rights over their images as seen in Guernsey. In Guernsey, a regime was created where one could register their personality rights resulting in property rights in one’s image.[10] However, what the Caribbean instead has is the case of Robert Marley Foundation v Dino Michelle Ltd,[11] which sought to create a separate tort of ‘personality rights’. This approach has not yet been expanded to other parts of the Caribbean.
Next Steps for Alfred
It would be advisable that Alfred trade marks her name, nickname ‘JuJu’, and logo in order to gain exclusive control over the use of the core elements of her brand. This will also provide Alfred with the ability to more confidently engage in licences for the commercialisation of her brand.
In the end, the Office of the Registrar of Companies and Intellectual Property, the Bar Association and others should utilise this opportunity to educate and engage the public on the legal issues attached to this issue. Recognising our global fame, Saint Lucia must ensure that there is a firm understanding of the intellectual property issues present in the world of sports.
[1] ‘Office of the Prime Minister of Saint Lucia’, ‘The Briefing Room’ (September 9th, 2024)
< https://www.youtube.com/watch?v=kK6os-v1fko> accessed 23rd September 2024
[2] Tony Nicholas, ‘Legal Issues Raised Over Using Julien Alfred’s Image’ (Saint Lucia Times, 19TH September 2024), https://stluciatimes.com/166069/2024/09/legal-issues-raised-over-using-julien-alfreds-image/ accessed 23rd September 2024
[3] ‘Image Rights- Do they Exist and Who Should Own Them?’ (Sport and Technology Newsletter, 14th July 2008), Jason Haynes & J. Tyrone Marcus, Commonwealth Caribbean Sports Law (Routledge, 2019) 132
[4] Dan Harrington, ‘Image Rights- Part Two’ (2002) Sports Law Administration and Practice 12, Reditt & Coleman Products v. Borden Inc [1900] 1 All ER 873 HL
[5] Ibid [5] 133
[6] [2002] 1 WLR 2355
[7] [2015] EWCA Civ 3.
[8] Roxanne Miller, ‘Time for Image Rights Statute’ (DunnCox Attorneys-at-Law, Kingston, Jamaica, 2008)
[9] Yana Samuels, ‘Copyright Warning: Intellectual Property Advocates Concerned about Abuse of Athletes Image Rights’ (Jamaica Gleaner, 20th August 2013)
[10] Ibid [10]
[11] JM 1994 SC 30
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