Sally Wilkinson, Managing Director of Harbour Intellectual Property, examines the protection offered by Guernsey's new image rights law.
As we all know, professional players have the potential to use their images for commercial purposes and to continue to generate an income from them long after they have given up playing. These images need protection just as any other valuable property does. Similarly, clubs have valuable images that can be protected or exploited financially in much the same way. The island of Guernsey recognised that there was no official register of image rights and introduced the world's first register at the end of 2012. One needs to join 3 dots to understand the value of Guernsey Image Rights, "Registration – Internet Infringement – London Enforcement".
Put simply, following registration on the Guernsey Register, the rights will be infringed by the inevitable third party use on the web and orders of the Guernsey Court enforced in London.
Who can register?
Any individual such as a player or manager can register their personal image. It is also possible for clubs to register their own images in a similar way. Such an image could take the form of team photographs (of historic as well as current squads), mascots, badges, shirts, etc., and other branding inextricably linked to the clubs, even club songs. It is also possible for a team to have a registered image, with the image changing as team members come and go.
To register an image will involve the services of an officially approved Guernsey image rights agent.
Registered images can include:
- A name or nickname
- A signature, likeness, appearance or any other distinctive or personal attribute, for example goal celebrations
- Club badges, strips and mascots
- A player's on-field and off-field persona
Benefits of registration
A player's status may take years to become well-established. However, once it has been established and even after his retirement, there remain tremendous commercial opportunities by way of product endorsement through the use of the player's celebrity image well into their old age and beyond. Many clubs already have contracts for the exploitation of their players' image rights and registration of an image gives legal certainty as to who is the proprietor and who holds the rights to control its use. Because a registered image can survive the death of the player there are advantages in registration to protect the image right as part of a succession plan and other the player's estate a source of continuing income. In certain circumstances the player may choose to assign their image to a special purpose vehicle in a tax neutral jurisdiction for tax planning.
For instance for non-UK players moving to a Premier League club there may be potential advantages in having any pre-existing image rights held in a trust to ensure that the income they generate remains, as far as possible, UK tax free. Likewise there could be UK tax advantages in a young player giving his image to a trust whilst he was relatively unknown. At that early stage in his career it would attract no significant value thereby avoiding any capital gains tax treatment upon the disposal of that right to the trust.
Clubs can also register their own iconic images as protection against their misuse on unauthorised merchandise or websites. We all know of the recent spate of false Facebook sites which wrongly purport to be those of the players when they are in fact operated by unconnected and often malevolent third parties. It is also not unusual for the immediate family of a well-known player to be targeted by the press and their images may also be protected by registration.
Protecting an image from infringement
A player's or club's registered image rights may be infringed by the unauthorised commercial use of their registered image, for example for illicit marketing or product endorsement purposes. These will appear unavoidably on the internet triggering infringement of the Guernsey right.
Remedies for infringement
Infringement entitles the player or club to a legal remedy dependent on the particular circumstances of the infringement. One very interesting use of the register is its potential to enable the taking down of images from the internet once they no longer remain part of current news. This could be of tremendous interest to players who do not want photographs of their past youthful misdemeanours available on line indefinitely and which might affect any future sponsorship potential.
Assuming that the image right of the person has been infringed then the Guernsey Court may order the removal of the infringing image, an order enforceable in the United Kingdom.
Not all unauthorised use of a registered image can be considered an infringement for example use of one in "current" news reporting, commentary and satire is permissible, however, stale news and internet coverage is not.
The Guernsey Image Rights Register offers the unique ability to officially register images in a politically stable and tax neutral jurisdiction that has drafted specific legislation for the purpose, and to protect them from unauthorised use.
As the Guernsey Image Rights Register has only been open since late 2012 its use by professional footballers has yet to be fully explored, although there are several other sportsmen and women already registered. Very clearly Guernsey has introduced a world's first for protecting the image rights of players and clubs.
Originally published in FC Business, November 2013.
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The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.