One of the stumbling blocks that has appeared to be holding up Jose Mourinho's expected appointment by Manchester United has been a conflict over the ownership of the former Chelsea manager’s so-called image rights.
This comes as no surprise when you consider the potential costs to United should they have no control over the Special One's lucrative image rights.
In particular, it would appear United have raised concerns over the fact that Chelsea still retain ownership of a number of Jose Mourinho-related trademarks that date back over a decade as well as Mourinho’s pre-existing sponsorship commitments.
It is not uncommon for contract negotiations of this nature to be held up by these issues especially as, under English law, there is no freestanding ‘image right’ as such. As a result, it can be difficult for personalities like Mourinho — or indeed his employers — to prevent others from taking commercial advantage of his name, physical/pictorial image, voice, signature, or nickname.
Registering trademarks is one of the main ways that parties seek to protect what they believe is rightfully theirs, be they distinctive characteristics, such as a signature or a particular pose, which Chelsea were fully entitled to do on behalf of Mourinho.
United's options will now depend on what was agreed in the contract between Mourinho and Chelsea.
A well-drafted agreement from Mourinho’s perspective would have ensured that Chelsea’s rights over his name and image ceased when he left the club last year. A failure to include this back then may result in the slightly bizarre situation whereby United would either need to pay Chelsea a licence fee in order to use the Mourinho trademarks going forward, or offer to purchase the trademarks outright from Chelsea.
United and Mourinho might want to file their own trademark applications to prompt a challenge from Chelsea and then fight it out or investigate whether Chelsea’s marks are vulnerable to challenge — an option for any goods and services of which the trademarks have not been used for five years. Yet none of this seemed to be an issue when Mourinho managed some of Chelsea’s European rivals.
In recent years, several English clubs have followed the likes of Real Madrid in Spain by insisting that their personnel assign all of these types of right to the club under their employment contracts. This is to ensure that the club are able to attract big sponsors with guarantees that those associated with the club will not be affiliated themselves to their sponsors’ rivals.
The fact that Mourinho has his own sponsorship arrangements that conflict with United’s provides a perfect example of why clubs increasingly insist on all deals needing to be negotiated through them. United may be in breach of their own contracts with their sponsors by allowing the club’s manager to endorse rival goods.
The fall-out could be worth millions.
As a result, I would expect that both sides will be desperately reviewing the contracts to see what kind of leverage they have to agree a compromise that will keep everyone happy.