The new image rights legislation offers flexibility and unique protection for famous names, according to Jason Romer of Collas Crill.

What was your overriding memory of this year's Olympics? Was it Bradley Wiggins winning the cycling road race? Perhaps it was Mo Farah's double athletics victories or Usain Bolt's trio of successes? Whatever the standout moment, it would be fair to say that any such memory has a strong image associated with it. These examples may conjure up sideburns, the 'Mobot' pose or, of course, the Bolt victory stance. These and others like them are synonymous with the athletes themselves.

Despite these images being recognisable around the world, they cannot, for the most part, be protected. We live in a world where image is king, the cult of celebrity is pervasive and iconic status can be earned in a few short moments of glory. Overnight, sportspeople and entertainers can be converted into globally recognised brands. Such treatment of stars gives rise to questions about how these brands can be better protected, and this in turn raises issues that fall beyond the scope of traditional intellectual property (IP) protection.

Current IP restrictions

The main way to protect the IP in a personality has always been trade mark rights. While there are other related IP rights that come into play, such as copyright and design rights, trade marks are the most relevant. They protect the mark in relation to the goods and services that are part of the subject's business – the main function of a trade mark being to distinguish one business from another. This fundamental strength of the trade mark system is actually its weakness when it comes to protecting brands for celebrities and others in the public eye. Suppose that celebrity A wishes to protect their name through a trade mark registration. To do so, they will have to register the goods and services they expect to involve in their business. This could include clothing, perfume, razor blades, sunglasses, CDs, DVDs, etc.

There are two problems with this. First, some things won't be registered because celebrity A has no interest in them. Second, because the trade mark's function is to clarify the origin of the goods or services, does anyone believe those goods or services come from celebrity A themselves? The issue of trade mark origin was the main reason why the first major celebrity trade mark case failed on the celebrity's part. The case1 concerned Elvis Presley Enterprises (EPE), which tried to register three trade marks in the UK: Elvis's signature and the word marks for 'Elvis' and 'Elvis Presley'. EPE was prevented from successfully registering these because of opposition filed by the owner of the mark 'Elvisly Yours', which owned a shop selling Elvis memorabilia. The case went to the Court of Appeal, where EPE was again defeated and where Simon Brown LJ commented: '... distinctive though undoubtedly they are by their universal association with the late great celebrity, [the marks] would, as registered trade marks, serve to distinguish not the producers but rather the product: they would describe the essential nature of the goods being traded (Elvis Presley memorabilia in the widest sense) but say nothing as to their trade origins.'

The more recent Lady Gaga/Moshi Monsters case again highlighted this inherent limitation of trade marks. Pop star Lady Gaga brought the case for an interim injunction to complain about her depiction as an animated cartoon character called Lady GooGoo, who was about to release a single in her own right. The media's focus was on Lady Gaga's success in preventing the single's release, but she could do nothing about the use of the Lady GooGoo character in the Moshi Monsters game, as her existing protection did not cover this. While there was a victory on one level for Lady Gaga, it is clear that trade marks can only go so far in protecting the rights of the modern celebrity, whose interests are more wide ranging than clothing and perfume.

Guernsey image rights

The Guernsey image rights legislation, which is due into force before the end of this year, addresses the needs of the modern marketplace by allowing a personality to formally register not only images, but also other characteristics of themselves. This groundbreaking piece of legislation will work on two levels: the registered personality right and the underlying registered image rights. As mentioned, these image rights are not necessarily just images, but can be any characteristic associated with the personality, such as signature, voice, mannerisms, gestures, or other indicia.

The main benefit of this is to create a formal registrable right that provides clarity and flexibility. It also takes away the need for the requirement of a link to specific goods and services. Neither the personality nor the image rights have to be associated with goods or services that the personality provides. This means they are effectively able to cover all manner of activity conducted in the personality's name. This in turn offers a high degree of protection when considering the use of the celebrity's image by unauthorised third parties. In addition, both the personality right and the image rights can be licensed, assigned and generally dealt with separately, allowing complete freedom in their use and operation by the personality or their licensees. This flexibility is key to the structuring and ownership of the rights and allows owners to decide exactly how they want the rights to be managed and maintained. Key to this process is succession planning for the personality rights and the image rights themselves.

There has been a spate of recent dealings involving high-profile individuals such as musician Kurt Cobain, author JD Salinger and golfer Seve Ballesteros, where the deceased's image rights are in dispute as to their ownership or commercialisation. These problems happen because such rights are currently unregistrable and at best only recognised in a few states in the US. The Guernsey law will provide for the registered rights to be treated as part of the deceased's estate and it can then easily be specified how these rights are dealt with and who should benefit from them. This is far wider reaching than any current provision for such rights in the US or through privacy laws elsewhere in Europe.

Also note that the image rights of dead personalities can be registered, if they died within 100 years of the rights being registered. This again allows flexibility for estates and their beneficiaries to effectively control and commercialise these valuable rights long after the personality's death – another world-first for these rights.

limitations and safeguards

These new rights will clearly be very powerful and there is a balance to be found between them and those of free speech and parody or satire. It is of course fundamental that infringement of an image should not occur when the use is fair. The Guernsey law has been drafted with these exclusions firmly in mind and there are carve-outs to protect innocent use of another's rights. Only use of a commercial nature will be considered capable of infringing a registered right.

In addition, only suitably qualified individuals will be able to call themselves Guernsey image rights agents, as the role requires a thorough understanding of how image rights fit into the larger picture of IP rights generally. Anyone making an application on behalf of another must be satisfied that no conflicting earlier rights exists anywhere in the world. This provides a safeguard to the Registry and its users that the register will have integrity and will not be the subject of inappropriate or defensive applications.

World-first legislation

These new rights are the result of a unique piece of legislation that allows celebrities and other people or corporations whose image is a key asset to fully protect and deal with their image rights clearly and effectively. They come at a time when the role of celebrity is often valued above others in our society. Traditional forms of IP have struggled to cope with this, but Guernsey has had the foresight to develop and bring to market an exciting, innovative right.

Originally published in The Step Journal, November 2012

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