Guernsey's Image Rights Ordinance could mean the island offers a golden opportunity for those looking to protect their personality
For modern famous faces whose livelihood depends on – and is even generated by – a carefully crafted image, the advent of Guernsey's newest IP legislation could come as something of a revelation – and a great relief.
While, as previously highlighted in ITMA Review, worldwide approaches to image rights are varied and sometimes vague, the Image Rights (Bailiwick of Guernsey) Ordinance 20ı2 ("the Ordinance") means the island is the first jurisdiction in the world in which personalities and their associated image rights can be registered under the protection of statutory law. Specifically, the Ordinance allows for the protection of a personnage of a natural person (living, or deceased in the past ı00 years) and can also extend to corporate images, for instance a company such as Disney. The rights can include not only the name(s) of the individual (David Bowie, Ziggy Stardust etc), but also other defining characteristics, including voice, likeness, appearance, silhouette, features, face, expressions, gestures, mannerisms and other distinctive personal attributes or characteristics of personality. Just as with trade mark registrations, these image rights can be assigned and licensed.
The rights last initially for three years and can be renewed indefinitely, but unlike trade marks they are not restricted to any particular classes of goods or services and do not need to act as a badge of origin. Although the new legislation only applies in Guernsey, Guernsey has statutory reciprocal arrangements with the following territories that facilitate straightforward reciprocal recognition and enforcement of judgments: Guernsey, England and Wales, Italy, Israel, the Netherlands, Scotland and Northern Ireland, the Netherlands Antilles and Suriname. In addition, even in territories with which Guernsey does not have such reciprocal arrangements, it is likely that judgments in relation to image rights will be capable of recognition and enforcement at common law. Image rights go beyond the traditional ambit of copyright, and the test for infringement is borrowed from that of trade marks, since it relatesto confusing similarity and the trade mark trinity of riding on the coat-tails, dilution and tarnishing.
"The legislation offers a bespoke right that provides a unique level of protection for personalities who register under the new regime," explains Elaine Gray, Of Counsel at Carey Olsen (which represents the first image rights registrant, corporate and branding specialist Lesley Everett). "In particular, the personality can register a wide range of images associated with them, including the obvious images such as photographs, but extending also to other distinctive characteristics or expressions of themselves, such as nicknames, catchphrases and avatars. As with trade marks, the registered right is capable of indefinite renewal, which is useful given the limited period of copyright protection over images.
The regime also offers clear remedies for infringement, including specific provision for damages in circumstances of flagrant breaches." Gray was one of a panel of speakers that addressed a 200-strong audience of IP, sports and entertainment lawyers, as well as agents, accountants and brand managers, at an introductory seminar on the subject organised by Guernsey Finance in late January. The event's large audience was perhaps to be expected since these image rights – now with the option for protection with teeth – will constitute valuable assets. To give just two examples, top ranked golfer Rory McIlroy's image rights have been valued at as much as £56 million, while the personal and corporate image rights of Richard Branson have been valued at £3 billion.
Reflections and response
Infringement, enforcement and reputation management were touched on by a panel that included Dominic Crossley (Partner, Collyer Bristow), Mark Engelman (Head of IP, Hardwicke) and David Evans (Director, Collas Crill IP). Offering the background to the launch of the image rights register was John Ogier, IP Registrar of the Bailiwick of Guernsey IPO. Fiona Le Poidevin, Chief Executive of Guernsey Finance, gauged the responses of delegates and felt the legislation was well received, albeit with understandable caution: "Many I spoke to had already been talking to their clients about the image rights register. As with any new concepts, several also said they would be very interested when the first successful case was brought to the Guernsey courts, as this will clearly attract more clients to register their rights."
Reflecting on the importance of the legislation, Ogier welcomed the legal certainty that could be expected to follow from the new rights: "Image rights are a valuable IP Right, which are important in commercial trade, but for which there has been no legal certainty. In the UK, cases that have been brought before the courts have relied on areas of law including privacy, passing off, trade marks and copyright, which were not drafted for the policy purpose of protecting the image rights of a person. The Law Lords, in decisions on related cases, have highlighted the danger of the legal status of these rights effectively being made on a case-by-case basis without the scrutiny of the Parliamentary process." According to Ogier, Guernsey, in developing image rights: "Has created legislation that has been scrutinized through a policy process and is designed to meet the business needs of the commercial world of the 2ıst century.
These rights will work alongside existing IP and will be particularly valuable together with trade marks in protecting brand identity associated with a person." Understanding that there may be disquiet about the possibility of restrictions on the press, Ogier was also keen to point out that: "Care has been taken to balance the commercial interests of the rights owners with preserving the freedom of media reporting and personal non-commercial uses of images."
"I was asked 'Is there a compelling reason why Tom Cruise would want to register a Guernsey image right?',"
says Evans. "The fact of the matter is that I cannot see why Cruise would not want to register.
"The world has changed in the way it consumes and creates media content, and the way in which it creates media stars (witness the sudden and startling rise of Psy with Gangnam Style). These changes have led to a gap in the way in which traditional forms of IP protect the personalities concerned. The registration of these rights offers complete flexibility over the most valuable of rights and allows for the personality to control and manage their image in a way not previously possible," he continues. "The advantages of being able to deal with clarity over such rights, together with the succession planning and licensing opportunities, make these rights compelling for a wide range of personalities and celebrities.
"Having spoken to a large number of delegates at the seminar, I can only take from this that many IP practitioners understand the needs for these rights and the benefits that they will bring to the marketplace," adds Evans.
Coming at it from the perspective of a UK lawyer, Crossley was optimistic about what the Guernsey legislation can, potentially, add to his arsenal and whether it can make his representation of clients more effective: "Much of what I do is to protect my clients' reputations and brands. These clients can be high-profile individuals, but also highly private individuals and corporate entities. UK law currently provides me with a number of tools to enable me to ply my trade.
"UK IP law, privacy rights and the law of libel are all there to protect a brand. Passing off has been used in the UK to develop an 'image right', but bringing a claim for misuse of your image based on passing off is by no means straightforward. Likewise, bringing a claim for the misuse of private information has many challenges – not least that the court has demonstrated a desire to prevent privacy claims being applied to protect commercial assets," he says. "The Guernsey-registered image right scheme is a way of attempting to add clarity to image-right protection," Crossley concludes. "It remains to be seen how litigators make use of it. However, it could add security to the valuable reputations and brands of our clients."
FAQ: The Guernsey Ordinance
- The Image Rights (Bailiwick of Guernsey) Ordinance 2012 was approved on Wednesday 28 November 2012
- The Guernsey Registry's IPO began taking image rights registrations from 3 December 2012
- At the end of January 2013, three personnages had registered their personalities and associated image rights
- A personnage maybe a natural person (alive or died in the past 100 years); a legal person (ie a corporate); a joint personality (duo); a group; or a fictional character
- A personnage meeting the criteria may register their personality along with their associated images, which may have characteristics such as aliases, signature, voice, mannerisms, gestures etc
- Registration fees are as follows (initial and renewals): Natural person – £1,000 for ten years; Legal person –
- £5,000 for 10 years; Image – £100 for three years. For a full list of fees, go to guernseyregistry.com
Originally published in ITMA Review, January 2013
For more information about Guernsey's finance industry please visit www.guernseyfinance.com.
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