A New Intellectual Property Right.
With effect from yesterday, 3 December 2012, new "image rights" legislation came into force in Guernsey. The new legislation was approved last week by Guernsey's legislative assembly and the Image Rights (Bailiwick of Guernsey) Ordinance 2012 will now create a new intellectual property right, creating the world's first image rights register. The legislation provides high profile celebrities with the option of registering image rights and protecting their image where existing rights, such as trade marks, do not provide enough protection.
The image rights legislation allows personalities to gain protection of not only image rights but also rights in their name, voice, signature, likeness, appearance, photograph or catchphrase (to name but a few). Image rights registrations last for 3 years, and like trade mark registrations, are renewable indefinitely.
The protection extends to personalities both alive and dead, corporations and fictional characters. Once registered, the personality becomes the legal owner of all the image rights and other rights associated with that personality. However, the owner need not be (and often cannot be) the personality themselves. For example, the creator of a fictional character can apply, as can the company which commissioned the creation of the character. The protection also extends to those who have deceased, providing they were alive less than 100 years prior to registration. It is the proprietor who can then enforce their rights and who has access to the remedies supplied by the Ordinance.
Whilst protection and enforcement of this new right is limited to Guernsey, it will certainly attract wider attention. It is expected that, if this new legislation proves successful, it will encourage the adoption of image rights legislation in other jurisdictions in the coming years.
Trade Mark Infringements Across the Country.
A Fish and Chip Shop in Essex has been forced to change its name after Hollywood Studio Warner Bros reportedly threatened it with legal action.
The shop, previously known as "Scooby Snax", first faced legal action when owner John McNeill attempted to register the shop's name as a trade mark. Upon notification of the attempt to register the trade mark, lawyers for Warner Bros wrote to Mr McNeill alleging intellectual property infringement. "Scooby Snacks" are the favourite food of Warner Bros character Scooby Doo, and the phrase "Scooby Snacks" was filed as a trade mark in the UK back in 2005 although it has been in use for significantly longer.
Mr McNeill argued that he had begun trading under the name "Scooby Snax" long before Warner Bros registered their trade mark in the UK and that the shop was actually named after his pet dog, not the fictional character. Nevertheless, with the threat of substantial legal fees to challenge Warner Bros, the restaurant decided instead to rebrand itself as "Johnny Mac's Plaice", removing all Scooby references from its signs, menus and uniforms at an estimated cost of £20,000.
Meanwhile, in Cardiff, a new juice bar and patisserie opened under the name "facefood".
The shop's sign has caused considerable commotion as it is said to resemble the well known "Facebook" logo. Facebook confirmed that it is investigating the use of this sign; however the shop owner confirmed that he had not yet heard anything from the social media giant. Owner Mr Bougaci is confident that Facebook will not pursue him any further, claiming there are many cafes and restaurants around the world which use similar variations of the Facebook logo. Mr Bougaci also claimed that the different wording at the end of his sign (the use of 'food' instead of 'book') meant there was no chance of confusion.
However Mr Bougaci must tread carefully as by using the word "face" in an arguably confusingly similar style to that of Facebook's logo, the owners are taking an enormous risk of litigation if Facebook does decide to fight this battle.
And finally, Gloucestershire based telecommunications company Total Ltd has commenced legal proceedings against new TV internet company "YouView" claiming trade mark infringement.
Total is the registered proprietor of the trade mark "Your View", which was registered in 2009 in respect of telecommunications services. However, "YouView" was not registered until the beginning of 2010. Total provides a telecoms service whereby companies can subscribe to get access to their employees' company phone records and internet history, to ensure they are on the correct tariff; and YouView is a new internet television and set-top box service, chaired by Lord Sugar.
Total opposed YouView's registration of the trade mark with the Intellectual Property Office, which has already led to legal proceedings. However mid-way through November, the High Court rejected an appeal from YouView, ruling that the two marks were "confusingly similar" – both in name and in the area of services provided.
Total has now launched trade mark infringement proceedings as YouView continues to trade under and use the contested mark on their products and services. YouView has had a number of set backs in its short lifespan; having been delayed by a number of years and with critics arguing the set-top box is overpriced. If Total is successful, YouView may also have to rebrand too.