The new image rights legislation offers flexibility and unique protection for famous names, says Jason Romer.
What was your overriding memory of this year's Olympic games? Was it Bradley Wiggins winning the cycling road race or perhaps Mo Farah's double athletics victories or Usain Bolt's trio of successes. Whatever the standout moment, it would probably be fair to say that any such memory has a strong image associated with it. Each of the above examples might conjure up sideburns, the 'Mobot' pose or of course the now obligatory Bolt victory stance. These and others like them are synonymous with the athletes themselves. Despite the fact that these images are so instantly recognisable around they world, they can not, for the most part, be protected.
We live in a world where image is king, the cult of celebrity is all pervasive and where iconic status can be earned in a few short moments of glory. Overnight, sportsmen and entertainers can be converted into globally recognised brands. Such treatment of stars gives rise to questions about how these brands can be best protected and this in turn raises issues which fall beyond the scope of traditional intellectual property protection.
Current IP and its limitations
The main way to protect the IP in a personality has always been trade mark rights. Whilst there are other related IP rights which come into play such as copyright and design rights, it is trade marks which are the most relevant. Trade marks protect the mark in relation to goods and services for which the subject of the mark does 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 the protection of brands for celebrities and others in the public eye.
Let us suppose that Celebrity A wishes to protect his name through a trade mark registration. In order to do so, he will have to register in respect of the goods and services for which he expects to do business. This might include clothing, perfume, razor blades, sunglasses, CDs, DVDs, etc. There are two problems with this - the first is that there are things that won't be registered because Celebrity A has no interest in these and the second is that because the function of a trade mark is provide clarity as to the origin of the goods or services in question, does anyone actually believe that these goods or services actually come from Celebrity A himself.
It was this issue of trade mark origin which 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") who were trying to register 3 trade marks in the UK, being the signature of Elvis, and the word marks for 'Elvis' and 'Elvis Presley'. EPE were prevented from successfully registering these due to opposition filed by the owner of a mark 'Elvisly Yours' which owned a shop selling Elvis memorabilia. The case went to the Court of Appeal, where EPE were again defeated and where Lord Justice Simon Brown made the following comment
"...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 case2 again highlighted this inherent limitation of trade marks. Lady Gaga brought the case for an interim injunction to complain about the use of her depiction as an animated cartoon character called Lady GooGoo, who was about to release a single in her own right. Whilst the press focussed on the fact that Lady Gaga was successful in preventing the release of the single, 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.
Whilst 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, who's interests are far more wide ranging than clothing and perfume.
Guernsey Image Rights
The Guernsey Image Rights legislation, which is due to come 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 images 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 provide a formal registrable right which 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 in any way with goods or services that the personality provides. This means that 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 are able to be licensed, assigned, and generally dealt with separate to one another, allowing for complete freedom as to their use and operation by the personality or their licensees. This flexibility is key to the structuring and ownership of the rights themselves and allow owners to decide exactly how they want the rights to be managed and maintained.
Key to this process is the matter of succession planning for the personality rights and the image rights themselves. There have been a spate of recent dealings involving high profile individuals such as Kurt Cobain3, J.D. Salinger4 and Seve Ballesteros5, where the deceased's image rights are in dispute as to their ownership or commercialisation. These problems occur because such rights are currently unregisterable 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 that any current provision for such rights in the US or through privacy laws elsewhere in Europe.
It should also be noted that there is the ability for the image rights of dead personalities to be registered, provided that they died within 100 years of the rights being registered. This again allows for great flexibility on behalf of estates and their beneficiaries to effectively control and commercialise these valuable rights long after the date of death of the personality, another world first for these rights.
Built-in Limitations and safeguards
These new rights will clearly be very powerful in their nature 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 a fair one. The Guernsey law has been drafted with these exclusions firmly in mind and there are a number of carve outs to protect innocent use of another's rights. It will only be use of a commercial nature that 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. This role requires a thorough understanding of how image rights fit into the larger picture of IP rights generally and it will be a requirement of anyone making an application on behalf of another, that they have satisfied themselves 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.
These new rights are the result of a unique piece of legislation which provides the opportunity for celebrities and other people or corporations whose image is a key asset to fully protect and be able to deal with their image rights effectively and with clarity. They come at a time when the role of celebrity is valued above most others in our society. Traditional forms of IP have struggled to cope with this proposition and Guernsey should be applauded for having the foresight to develop and bring to market such an exciting and innovative right.
This article first appeared in the STEP Journal
1 Elvis Presley Enterprises Inc v. Sid Shaw Elvisly Yours  RPC 567
2 Ate My Heart Inc v Mind Candy Ltd  EWHC 2741 (Ch)
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