On 28 November 2012 the States of Deliberation (Guernsey’s Parliament) passed the Image Rights (Bailiwick of Guernsey) Ordinance, 2012 (the “IR Legislation”). The IR Legislation comes into force on 3 December 2012. From this date a new form of registered intellectual property right in a personality and its associated images will exist in Guernsey. This Red Guide explains how the IR Legislation works in practice and outlines some of the practical issues that potential users of the IR Legislation should bear in mind.
Why all the Fuss?
Celebrity image or personality rights are big business. Celebrities want to manage and exploit their image rights in the way that best meets their current and future needs. For example, it is reported that Lord Coe recently capitalised on his Olympic Games success by transferring his image and publicity rights for the next 15 years to a communications and sports marketing group for an estimated sum of £12 millioni. Associated with this, a celebrity will also want to preserve the commercially exploitable value of their image by controlling its use and preventing unauthorised use by third parties. In this regard, the recent case involving the clothing brand Burberry and the heirs of actor Humphrey Bogart is a good example. It is reported that an out of court settlement was reached between the parties over the use of Bogart’s image from the film Casablanca in Burberry’s advertising. Bogart’s heirs had claimed that the use of the actor’s image gave the public the false impression that he endorsed Burberry’s coatsii.
Problematically, the laws of many jurisdictions have been slow, or have simply failed, to recognise a legal right in one’s personality and image that can be exploited fully and also protected to secure its value. The IR Legislation is intended to provide a potential solution to this failure by creating, for the first time, a registered property right in a personality and its associated images. Guernsey’s legislators have been keen to point out that the IR Legislation is intended to deal with the public expression and exploitation of a personality, not the right to privacy that often arises as an issue in the celebrity industry. The IR Legislation has also been crafted to strike an appropriate balance for fair dealing in the public interest, as detailed further below.
The IR Legislation centres around the legal concept of a “personnage”, being the person or character behind a personality. The personality of a personnage is registered to create a “registered personality” under the IR Legislation. More detail on the registration process is set out below. The person in whose favour the registration is carried out is known as the “registered proprietor”. The personnage and registered proprietor do not necessarily have to be the same person, recognising that image rights are a transferable commodity which are often transferred by a celebrity to a third party to manage and commercially exploit, as in the case of Lord Coe above.
The following types of personalities can be registered:
- natural persons;
- legal persons;
- joint personalities (e.g. two or more persons who are intrinsically linked in the eyes of the public);
- groups (whose membership can be interchangeable); and
- fictional characters (human or non-human).
The IR Legislation allows for the personality of a deceased person to be registered for up to 100 years after their death. Similarly, the personality of a legal person can be registered up to 100 years after its dissolution.
Of particular significance, there is no fame or public recognition threshold in order for a personnage to have their personality registered under the IR Legislation. Any personnage, no matter how obscure, can be registered. This allows young aspirants to register with an eye to their potential image rights in the future. Upon registration of a registered personality, one or more images associated with that personality may then also be registered against it, to create “registered images”. The IR Legislation defines “image” very widely to include:
- the name or alias of a personnage;
- the voice, signature, likeness, appearance, silhouette, feature, face, expressions (verbal or facial), gestures, mannerisms and any other distinctive characteristic or personal attributes of the personnage; or
- any photograph, illustration, image, picture, moving image or electronic or other representation of a personnage.
The Effect of Registration
Upon registration the registered proprietor of a registered personality has exclusive rights in the images associated with (i.e. unregistered images), or images registered against, that personality. Registration creates a property right in the registered personality and the image rights associated with it. This is important, as the image rights arising from registration are then deemed to be located in Guernsey for jurisdictional purposes.
The IR Legislation recognises that commercial arrangements surrounding image rights can be complicated, and allows for co-proprietors, limited or partial registrations and also for the images registered against a registered personality to be owned by different proprietors.
The IR Legislation’s treatment of registered images as against unregistered images is important, and may encourage those registering images to register the different aspects of a personnage’s image as widely as possible. Under the IR Legislation only infringement of “protected images” gives rise to the statutory infringement procedures. Registered images are automatically protected images in that they are presumed to be distinctive and to have actual or potential value (although these presumptions are rebuttable).
Further, the statutory defence available to a defendant to infringement proceedings, where they can prove lack of knowledge that an image was a registered personality’s image, does not apply in the case of a registered image. More details on infringement proceedings under the IR Legislation are set out below.
The Register and Registration Process
The Register of Personalities and Images will be maintained by the Guernsey Registry via its online registry (see www.guernseyregistry.com). Registration of a personality or any associated image may be undertaken either by registering online via a registered image rights agent (e.g. a lawyer in Guernsey or a Guernsey licensed corporate services provider who has been registered with the Registry); or by the personnage, their personal representative or the prospective registered proprietor, in each case in person at the Registry. Registration of a personality will require photographic identification and a plain photo or illustration of the personnage.
In practice, it is anticipated that most registrations will be carried out by image rights agents on behalf of their clients for both practical and commercial reasons. These include the fact that there are restrictions on registering personalities and images identical to or similar to existing registered personalities and images. The applicant for registration is required to make a declaration to the Registrar that the registration is not prohibited by these restrictions. This means that an element of searching and due diligence will need to be carried out by the applicant, much the same as for trade mark registrations. Where there are already contractual arrangements surrounding a personnage’s image rights, the agent will need to verify the contractual chain of ownership and that the person purporting to be registered as the proprietor of a personality or certain images is in fact the rightful owner of those items. Similarly, an applicant will need to be sure that there are no other competing intellectual property rights such as copyright in the images to be registered. Copyright images are registerable, but only with the consent of the copyright holder.
All of this means that the application process needs to be undertaken with some care, and is likely to become a specialist area for image rights agents who have the necessary experience in legal and intellectual property matters. Once registered, there is also likely to be an ongoing role for agents in monitoring subsequent registration applications for possible opposition proceedings and for general infringements of a registered personality’s image rights.
Otherwise, the actual registration procedure follows quite closely the process for trade marks. The Registrar’s grounds for refusal of registration of a personality or image include that the application:
- does not meet the requirements of the IR Legislation;
- is contrary to public policy or accepted principles of morality;
- is deceptive to the public;
- contains an image which is a protected emblem (e.g. Royal Arms or flags);
- infringes an existing registered personality or registered image;
- is made in bad faith; or
- relates to a personality or image that has become customary in use.
Assuming that none of these grounds are relevant following examination, the Registrar will accept the application and then publish it on the Registry website for 20 working days. During this period interested parties may make observations on, or file a notice of opposition against, the application. If no such filings are made or are otherwise disposed of, the Registrar will register the relevant personality or image with an effective date of the original filing of the application.
Registration of an individual personality (including fictional characters) costs £1,000, a legal personality £5,000, a joint personality £1,500 and a group £2,000. In each case these are the Registry fees exclusive of any image rights agent or legal fees.
Registration of a simple image costs £100 and the first image can be registered free of charge at the time the personality is registered. Series of images or more complex images (presumably sound and video images) will cost £200.
Registration of a personality lasts for ten years, with a right of renewal every ten years. Registered images have a life of three years with similar rights of renewal.
Viewable Details on the Register
The Register of Personalities and Images will be publicly viewable, with users being required to register their details with the Registry prior to being able to view the Register. Publicly viewable information will be limited to the registered personality, registered images, the relevant dates of registration and renewal, the responsible image rights agent and details of any registered transactions (see below). Proprietor details will not be publicly searchable.
The IR Legislation and the associated Register of Personalities and Images specifically cater for typical image rights transactions, including licensing, assignment and granting security over a registered personality or image. Counterparties to transactions will be able to record them on the Register and benefit from the legal certainty of having done so.
In relation to licensing of image rights, the IR Legislation provides that any licence must be in writing and signed by the registered proprietor in order to be effective. Importantly, the IR Legislation expressly gives an exclusive licensee the right to bring infringement proceedings in its own name as if it were the registered proprietor. For all other licences, the IR Legislation gives the licensee a statutory right to require a registered proprietor to bring infringement proceedings, but this right can be excluded in the licence itself. If the proprietor fails to do so within two months then the licensee may bring proceedings in its own name.
A fundamental premise of the IR Legislation is that image rights are only infringed, and the infringement proceedings available under the IR Legislation are only applicable, where an infringing image is used for a commercial purpose or a financial or economic benefit. As stated above, the IR Legislation focuses on the commercial exploitation and protection of image rights, not an individual’s right to privacy. Therefore, the IR Legislation requires infringements to be commercial in nature.
Unlike trade mark infringements, the protection afforded by image rights is not restricted to particular categories of goods and services. Nor do image rights have to serve as a badge of trade origin, which has been problematic in some cases where celebrities and organisations have tried to rely on trade marks to protect their brand or image.
The infringing use of an image must be one:
- where, because the infringing image is identical or similar to a protected image, there exists a likelihood of confusion on the part of the public (including as to association with the registered personality); or
which uses an image identical or similar to a protected image and the use:
- takes unfair advantage of the distinctive character of the personnage; or
- is detrimental to the distinctive character of the personnage or the value of its personality or images, in each case without the registered proprietor’s consent.
As stated, only protected images can be infringed. A protected image is an image which is:
- has actual or potential value; and
- satisfies the requirements for registration under the IR Legislation (whether or not it is actually registered).
In order to qualify as being distinctive, an image must be recognised as being associated with the registered personality by a wide or relevant sector of the public in any part of the world. Importantly, registered images are presumed to be distinctive, as well as having actual or potential value. The IR Legislation goes on to set out the relevant factors that should be considered in determining the distinctiveness of an image, which draw heavily from international trade mark practice and WIPO guidance.
Finally, in terms of the pre-requisite criteria for infringement proceedings, the IR Legislation defines “use” of an image very widely to include, amongst other things:
- public communications;
- marketing or endorsement;
- affixing an image to goods or packaging or offering goods to market under an image;
- using an image in business papers; or
- using an image as an internet domain name or company name.
The IR Legislation at the same time is careful to seek to balance legitimate use of images for fair dealing and other public interest purposes. Therefore, the IR Legislation specifically provides that the following matters do not constitute an infringement of image rights:
- certain comparative advertising;
- public or crowd images;
- use of an image for purely descriptive purposes to identify something other than the personnage;
- news reporting, commentary or satire;
- artistic use;
- incidental inclusion;
- educational use;
- acts of public administration or law enforcement;
- temporary copy use; or
- subject to any agreement to the contrary, a personnage using their own image.
In terms of remedies for infringement, the IR Legislation provides for statutory remedies including an order to cease production of offending images, an order for delivering up of infringing goods (to be used in conjunction with an order for destruction), an order for disposal of infringing goods and for damages generally.
In relation to a claim for damages, the IR Legislation contains two important provisions:
- first, in a claim for damages for infringing image rights (other than in relation to a registered image), it is a defence to show that at the date of infringement the defendant did not know, or had no reasonable grounds to know, that the image was that of a registered personality (this defence does not affect any injunction proceedings); and
when assessing damages in proceedings for image rights infringement, where the defendant knew, or had reasonable grounds to know, that at the date of infringement the image was that of a registered personality, any damages should be appropriate to the actual prejudice that the plaintiff suffered as a result of the infringement. The factors that the Court may have regard to in any such assessment include:
- the negative economic consequences suffered by the plaintiff;
- any unfair profits made by the defendant;
- moral prejudice caused to the plaintiff;
- royalties or fees that would have been payable for authorised use of the image;
- the flagrancy of the infringement; and
- any benefit accruing to the defendant by reason of the infringement.
Practicalities of Enforcement
Given that image rights are global, and the most lucrative markets for exploitation are outside of Guernsey, the question that inevitably arises is to what extent will the IR Legislation have effect outside of Guernsey? This certainly appears to be the aspect of the IR Legislation generating most international comment.
At the outset, it is worth remembering that IR Legislation is primarily intended to be a commercial exploitation and structuring tool, and that it is only likely to be infringements at the more valuable or serious end of the scale that will warrant the time and cost of formal infringement proceedings. In most cases this will start with, and may never proceed beyond, a “cease and desist” type letter and some form of compromise or settlement. However, if further action is needed then a plaintiff may look to obtain a judgment in the Guernsey Courts. In doing so there may be important questions of jurisdiction to consider, for example where the actual infringement or defendant is located outside of Guernsey.
Further, in these cases, plaintiffs and the Guernsey Courts will need to consider issues such as whether to bring proceedings on an ex parte basis (for the most serious infringements which need swift action) or to seek leave to serve proceedings outside of the jurisdiction. In any event, the plaintiff is likely to reach a point where it is necessary to have the IR Legislation recognised in a foreign jurisdiction, either through enforcing overseas a judgment obtained in the Guernsey Courts, or having an overseas court recognise proceedings commenced in the Guernsey Courts.
In some cases, it may even be possible to plead an infringement of Guernsey image rights in an action brought directly in the foreign jurisdiction, albeit most probably in conjunction with other proceedings such as passing off or trade mark infringement.
Ultimately, the unknown element is whether, on grounds of public policy, the courts of a foreign jurisdiction will be prepared to recognise Guernsey’s image rights laws. Much will depend on the jurisdiction in question. Some jurisdictions which have more developed image rights laws that specifically recognise a similar concept, albeit not in a registered form, may be more likely to recognise the IR Legislation. On the other hand, some jurisdictions simply do not recognise image rights. Others do, but view them as nontransferable personal rights (e.g. not a transferable property right in the same way as the IR Legislation does). Recognition and enforcement in these jurisdictions will be more difficult. However, it is clear that image rights and their inherent value are becoming more commonly recognised around the world, which can hopefully only strengthen the chances of international recognition.
Guernsey’s IR Legislation is an exciting and innovative piece of legislation, enacted with a view to attracting new clients to Guernsey’s already well established financial services industry. However, its novelty is also naturally its vulnerability, and like the international enforcement issues raised above, there are many issues that remain to be resolved through actual experience of the law in practice. Nonetheless, there are very real benefits for commercial exploitation and structuring. Now that the law is coming into force, Guernsey and the outside world are waiting in anticipation to see who takes up the opportunity.