Think trade marks offer full protection? Think again. David Evans, director of Collas Crill IP in Guernsey, discusses why Guernsey's new image rights legislation helps well-known clients' succession planning.
What's in an image? For some, it's a great deal. Rihanna was recently minded to take on the might of Topshop when it used her image on a T-shirt without permission. The pop star was successful in an action for passing off, but only because she was found to have a reputation in fashion and her fans might think that she had endorsed the items.
The judge in this case said: "There is today in England no such thing as a free-standing general right by a famous person (or anyone else) to control the reproduction of their image." This clearly states the position question of what other well-known clients can do if they believe their image has been infringed and they do not have the requisite reputation in a specific field to launch a Rihanna-style offensive. The answer may be found in the Guernsey image right, which wasbrought into force in December 2012.
The legislation allows personality rights and their associated image rights to be registered, enabling a whole host of personal identifiers to be formally registered for the first time anywhere in the world. Personality rights deal with the core registration, which lasts for ten years and allows any one of five categories of applicant to obtain registration, namely:
- joint personalities (the constituent parts of which cannot change)
- groups (the constituent parts of which can change)
- fictional characters; and
- legal entities.
In addition are the image rights themselves, which are associated with the personality and form a set of identifiers relating to that personality. Image rights are not simply graphics of the personality but just about anything that represents them: nicknames, gestures, mannerisms, voice clips, video clips and well-known phrases and sayings can all be registered. This offers immense scope, but why not just get a trade mark?
Make your mark
Rihanna has a number of relevant trade mark registrations yet none of them helped her case because they do not represent her image in any way. Instead, they deal with the business end, such as her name and the logos she uses for endorsed goods and services. Trade marks, in fact, have been notoriously deficient for the well-known client since the days of the Elvis case in which his estate was unable to enforce rights against a retailer using the name Elvisly Yours. This was because a trademark's primary function is to denote where goods and services come from, and nobody actually expects them to come from the celebrity concerned. This is where the Guernsey image right comes in. It seeks to fill this void, which is increasing in today's celebrity obsessed world.
There is a huge gap in that trade marks are able to protect, and the scope of that security in a constantly evolving media-savvy environment. By focusing on the personality as the subject of the right, it turns the protection round to the subject of the application and, in doing so, effectively creates a way to register personal brands. When compared with other onshore territories, such as the EU or US, in terms of size and reach, Guernsey has a limited territorial scope of protection. But enforcement is only a small part of why someone would consider an image rights registration. Other issues such as wealth planning, clarity of right and succession all make compelling reasons in their own right. Taking these items in turn, each offers the client benefits unavailable elsewhere.
Most celebrities, be they in sport or entertainment, make a large part of their income from extra-curricular activities, such as licensing and endorsement. This income can be treated separately to their 'day-job' income and can, if properly managed, be rolled up and used at a later date. By registering a Guernsey image right, these rights can be managed in a structured and cohesive way, which enables the income to be segregated from player or performance income in an efficient way.
Having a right that is readily identifiable on a formal register means it can be referred to and detailed within contracts. Instead of a long, wordy description of the rights that are being licensed, for example, there would now be a specific reference made to the registration. Furthermore, it is possible for each of the image rights themselves to be licensed to separate entities or to be full or partly assigned. This flexibility adds a level of clarity and offers a new way in which to deal with these rights effectively.
More than any of the reasons mentioned, succession planning is perhaps the one where the Guernsey image right excels.
Previously, there was no mechanism by which a celebrity could simply pass on their image rights to the next generation in a way that clarified the intention of the testator and the subject matters ofthe bequest. If a celebrity doesn't want their image rights to be commercialised after death, this can be built easily into any specified wishes or will.
Guernsey image rights apply to someone who has been dead for up to 100 years before the date of application and potentially they can be renewed in perpetuity, thereby allowing a unique set of rights for the client wishing to pass them on. The value of a star's image rights is often worth substantially more post-death and, as a result, the income from these rights is likely to see a sharp increase, certainly in the period immediately after they've died. You only have to consider the estates of celebrities such as Michael Jackson to witness the huge increase in sales on death and the commercial opportunities to be dealt with by the estate. There's even a new level of commercial interest in stars who died a while ago. Audrey Hepburn, Frank Sinatra and James Dean have all appeared in recent adverts, reportedly earning their estates significant sums from these endorsements. At a time when many current stars are considered difficult or are potentially scandalous, using a deceased star makes commercial and practical sense.
In all these cases, a Guernsey registration would make sense as the subject of the rights can have any new images that have been morphed from original photos registered against their personality. This means protection remains relevant and is able to be licensed out to the particular parties simply and with clarity.
The Guernsey image right offers something not available anywhere else. It deals with something of huge value in our evermore celebrity-driven society, which is not being given recognition by any other rights, in the UK, the EU or further afield. While other countries offer recognition for the truly famous through privacy rights or the like, Guernsey is the first to offer a clear, formal regulated alternative.
If you ask most advisers of celebrity clients what protection trade marks offer their clients, they will say that any scope is limited, either by the goods and services they are registered for, by territory or for the subject matter of the mark itself.
By addressing these limitations, Guernsey's answer offers something more than traditional forms of intellectual property for celebrities and other high profile personalities (Manchester City manager Manuel Pellegrini has recently applied to register his image rights). It is unique and compelling for clients who have so far been overlooked by intellectual property protection of any kind.
Originally published by Private Client Adviser, November 2013.
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