The long-awaited Image Rights legislation in Guernsey has now been published and, subject to the Guernsey legislature passing it into law next month, will be in force as of 3 December 2012.
This briefing note sets out the key points of the Image Rights (Bailiwick of Guernsey) Ordinance, 2012 (the “IR Ordinance”).
The IR Ordinance establishes a new form of intellectual property, previously unrecognised in a registrable form anywhere else in the world. It centres on two key concepts – the “registered personality” and “images” which are associated with or registered against that registered personality.
The core right is the registered personality. Personality refers to the personality of the following types of person or subject (described in the IR Ordinance as the “personnage”):
- natural or legal persons;
- a joint personality;
- a group; or
- a fictional character of a human or non human.
Ant & Dec and Laurel & Hardy may be joint personalities. Torvill and Dean may be both joint personalities and a group. Examples of a human fictional character would be James Bond, Tintin and Popeye and examples of a non human fictional character would be Shrek, Buzz Lightyear and Superman (being from Krypton and of extraterrestrial origin!).
The creator of the fictional character is, generally, the prospective proprietor of the fictional character’s personality, together with any image rights therein. A legal person’s personality can be registered, so arguably therefore, Disney could be a registered personality, thereby getting protection for cartoon characters associated with Disney, such as Mickey Mouse, Donald Duck and Winnie the Pooh, or these characters could be registered personalities in their own right.
The IR Ordinance also caters for both dead people and “extinct” legal persons. If the natural or legal person was “in existence” within the period of 100 years prior to the date of filing of the application for registration of the personality, it will also qualify for registration of its personality. In this respect, think of the continued significance and value of Michael Jackson, Marilyn Monroe, Elvis Presley or even Woolworths.
The starting point is therefore to be registered as the proprietor of a registered personality. That proprietor has the image rights and other rights and remedies provided by the IR Ordinance. The person registered as the proprietor is, by reason of the fact of registration alone, the legal owner of the registered personality and the image rights and other rights in that registered personality.
“Image rights” are defined as “exclusive rights in the images associated with or registered against the registered personality”. It should be noted that there is no requirement to register specific images associated with the registered personality (beyond the personality’s name itself), however there is benefit in registering in terms of easier enforcement (a registered image is presumed to be distinctive and of value, which are requirements for infringement, whereas these qualities must be specifically proven in order to enforce rights in an unregistered image). In addition, in proceedings for infringement damages or an account of profits will not be awarded where the defendant proves that at the date of infringement he did not know and had no reasonable grounds for knowing that the image was a registered personality’s image - however, this does not apply where the image infringed is registered.
Image refers to:
- the name of a personnage or any other name by which a personnage is known (e.g. David Beckham or “Becks”);
- expressions (verbal or facial);
- any other distinctive characteristic or personal attribute of a personnage; and/ or
- photographs, illustrations, pictures, moving images, electronic or other representations of a personnage and of no other person, except to the extent that the other person is not identified or singled out in or in connection with the use of such an image.
In this respect, think of Wilkinson’s pose as he is about to convert the try, the expression “You cannot be serious” or the ever changing face of Lady Gaga.
WHO IS THE PROPRIETOR?
In the context of the IR Ordinance, it is critical that the proprietor of the registered personality and hence the associated image(s) can be different from the actual personnage, as in many cases the personnage will have assigned the rights to exploit their image to a third party. The application process under the IR Ordinance therefore allows for the registered proprietor and the personnage to be different persons. The legal owner of the rights to exploit the personality’s images is the person entitled to be registered as the proprietor of the registered personality; if the personnage has retained rights in their image, they (or their personal representative) are entitled to be registered as the proprietor.
WHAT DOES THE IMAGE RIGHT GIVE YOU?
As explained above, the registration of a personality gives the registered proprietor exclusive rights in the images associated with or registered against the registered personality.
The registration of a personality lasts for a period of ten years from the date of registration and may be renewed for further periods of ten years. Where a specific image has been registered against the registered personality, the registration of that image lasts for three years and may be renewed for further periods of three years.
A registered personality and the image rights in it are personal or movable property and are accordingly transmissible by assignment provided that certain requirements are met, namely that an assignment is not effective unless it is in writing signed by or on behalf of the registered proprietor.
There are provisions requiring registration of certain transactions affecting registered personalities and image rights. These include, most importantly, assignment and granting of a licence.
Until the application has been made for registration of the registrable transaction, the transaction is ineffective as against a person acquiring a conflicting interest (provided no reasonable grounds of knowledge) and the ‘licensee’ has no rights or remedies in relation to infringement. Upon registration, the licensee acquires certain rights to call on the proprietor to bring infringement proceedings and/or bring infringement proceedings itself. This is a very important step in the protection of image rights. As they currently only relate to the individual and are currently drafted on a purely contractual basis, the licensee has to rely on the individual themselves to enforce the right. With registered image rights the club or the brand as licensee will be able to enforce directly under certain circumstances (mirroring trademark principles).
GROUNDS FOR REFUSAL
The IR Ordinance sets out various grounds for refusal of registration of a personality or an image. These effectively either complement or mirror existing trade mark laws and rules and fall into two categories – absolute grounds for refusal and relative grounds for refusal. It should be noted that the IR Ordinance additionally allows for grounds which may be determined by the Registrar.
An absolute ground is one where the Registry itself fundamentally objects to the registration of the right. Such an objection may be raised on the following grounds:
- what is applied for does not satisfy the definition of a personality or image;
- contrary to public policy or morality; (e.g. Jesus);
- deceptive to the public;
- the image or personality includes a representation of a protected emblem, such as a national flag, the Olympic symbol, image of the Queen etc.
- use prohibited by law;
- bad faith application (perhaps an employee registering an employer’s IP); and/or
- the image has, or in the case of a personality, the images associated with the personality have, become so customary or generic as to no longer identify a specific personality. This is quite a difficult concept to tackle when it comes to image rights. For trademarks, it might be something like the inability to register XL for clothing, but it remains to be seen whether this concept can be so easily applied for images.
A relative ground for refusal is where the personality or image applied for is deemed to be identical or confusingly similar to an existing registered personality or registered image, or similar to an existing registered personality or registered image where use without due cause would take unfair advantage or be detrimental.
The notion of what is identical or similar is much more difficult than it seems. Trade mark courts have been struggling for decades over what “confusingly similar” and “likelihood of association” may mean in practice. Would Lewis Hamilton’s eyes through a visor be similar to his face on its own? Would any two people wearing a crash helmet look the same if photographed from the same angle? If so, would it be confusingly so?
Another relative ground for refusal is where there is an earlier right in relation to the personality or image applied for, whether this be trade mark rights, copyright, design rights or otherwise.
In practice, we believe that the Registrar will not examine applications for relative grounds but will rely on the declaration that the applicant is required to make that the registration of the personality or image applied for is not, to the best of its knowledge, prohibited by virtue of any existing registered personalities, existing registered images or other earlier rights.
The IR Ordinance refers to the Registrar having power to adopt a classification system for registration of personalities and images. As yet, we are unaware of whether a classification system will be adopted and what form this might take.
INFRINGING THE IMAGE RIGHT
There is an additional layer of complication to the infringement provisions. Only a “protected image” can be infringed. To be a protected image, at the time of the alleged infringement the image has to be “distinctive”, have “actual or potential value” and satisfy the registrability requirements of an image (whether or not it is in fact registered).
An image is “distinctive” if it is recognised as being associated with the registered personality by a wide or relevant sector of the public in any part of the world, and various factors are provided for determining whether an image is distinctive. Notably, a registered image is presumed to be distinctive (although the presumption can be rebutted).
An image has “actual or potential value” if it can or has the potential to be exploited for valuable consideration. Again, a registered image is presumed to have actual or potential value, although this can be rebutted.
A registered personality’s image rights are infringed by the use for a commercial purpose or a financial or economic benefit, without the consent of the proprietor of the image rights, of an image:
- which is identical or similar to a protected image and because of that there exists a likelihood of confusion on the part of the public (which includes the likelihood of association with the registered personality); or
- which is identical or similar to a protected image and the use without due cause (i) takes unfair advantage of the distinctive character or repute of the personnage, or (ii) is detrimental to the distinctive character or repute of the personnage, or the value of the registered personality or its images.
There are several similarities to the infringement principles surrounding trademarks and this is very useful from a case law perspective.
The IR Ordinance provides a wide and nonexhaustive definition of what constitutes unauthorised use of an image, including:
- use of the image in a communication to the public (communication being broadly defined as any form of communication including without limitation, personal appearances, exhibitions, artistic works, drawings, documents, photographs, pictures, recordings, motion pictures, films, broadcasts, publications, websites and electronic communications);
- use of the image in connection with sponsorship or for the purposes of marketing or endorsing goods, services, activities or events;
- use of the image in relation to goods or image carriers;
- use of the image as a domain name or as a company name.
The Guernsey Court may analogise to English copyright and trade mark law in the interpretation of the concepts of “use” and “communication to the public”.
These are wide ranging definitions for infringement and they do not limit the use to particular goods or services as with a trade mark. As a result, this is a powerful right which is particularly attractive to brand owners.
There are a number of public interest defences or exceptions to infringement, including:
- comparative advertising, provided the use is in accordance with honest practices in trade, industrial, commercial or not for profit matters;
- incidental use;
- merely descriptive use where used fairly and in good faith only to identify something other than the personnage;
- fair dealing for the purposes of research;
- fair dealing for the purposes of news reporting, commentary and satire;
- fair dealing for the purposes of the arts;
- things done for the purposes of education;
- fair dealing for any other purpose;
- acts of public administration and law enforcement or done under statutory authority;
- making of temporary copies (internet);
- subject to any agreement to the contrary, use of an image by the personnage, or a person’s use of their own image;
- exhaustion of rights in goods put on the market.
Further, there are provisions in the IR Ordinance dealing with invalidity and revocation of registrations.
PART III OF THE IR ORDINANCE - ADMINISTRATIVE
There is provision made in the IR Ordinance for the register to be publicly searchable, but it is not known yet to what extent.
The main details that will be recorded on the Register of Personalities and Images are the name and address of the proprietor of the personality and image rights, together with date of registration.
It should be noted that the date of application will be the date upon which all of the appropriate paperwork for an application has been received by the Registry. This may be important as the ultimate registration date will be the application date - if there is a late filing of certain requirements this will affect when a proprietor can back date any claim for damages for infringement to.
Also entered on the register will be a list of any registrable transactions against a particular personality or image. Such transactions would be:
- assent by a representative;
- order of court; or
- other transactions as may be prescribed (such as security granted over the image rights).
Application for registration may be made by the personnage if they appear in person at the Registry, or by a Guernsey Image Rights agent, for the personality alone or with a specific image or images. An application for registration of a specific image may also be made at any time after the application for registration of the personality.
On submission, the Registry will check that the application satisfies all the relevant criteria required for a valid application. If this is the case, the application will be given an application date. Thereafter, the Registry will examine whether the application satisfies the requirements for registration (see absolute and relative grounds for refusal discussed above).
If the application is approved, it will then go through to the opposition stage, where it will be open for an “interested party” to object to the application if they see fit. An “interested party” includes (i) the personnage who is the subject of the application or whose personality is the subject of an existing personality; (ii) the registered proprietor of an existing personality or image rights attributable to an existing personality or someone who has an earlier right in the personality or image applied for; or (iii) the person entitled to be registered as the proprietor of the personality/image applied for.
If no opposition is received then the personality and/or the image(s) will be registered. It is not stated in the IR Ordinance how long the opposition period will be, but if this mirrors the existing arrangements for trade marks in Guernsey, this will be 20 working days. During this time, any interested party who wishes to object will have to give notice of the opposition to the Registrar, by filing the appropriate documentation and paying the opposition fees.
We are assuming that the opposition process will be much the same as for trade marks, whereby each party gives evidence and the Registry rules on the facts as presented to it.
There is no mention in the IR Ordinance of the level of fees for an application to register either a personality or an image. These will be set by the Registry nearer the time to the roll out of the Image Rights register from 3 December 2012.