sign in sign up
<<
Home , Courts of Guernsey

inbrief

Guernsey Image Rights

Inside What can be registered? What is protected? Ownership and exploitation Infringement Exceptions Comparisons to existing protections Remedies and enforceability inbrief

Introduction What can be registered? Unlike trade marks, there is no requirement Famous sportspeople, entertainers The to register the images in relation to specified The Image Rights (Bailiwick of ) , the small British territories or particular goods or services: in Ordinance 2012, enables the registration of a essence the protection is universal (although Crown dependency in the English personality and “images” associated with the see notes below re enforceability outside Channel known as an offshore tax personality. haven, has achieved a ‘world first’ by Guernsey). There is an option to limit the scope A personality includes the personality of: of a registration by territory and/or by goods and establishing a unique registered image services, thereby allowing the original owner to rights regime. This is a bold step for • Natural persons (either alive or who have died within the 100 years prior to the registration carve up their assets, having different proprietors the tiny island, but are the new rights being filed); for different purposes. a useful tool for global personalities? • Legal persons (either existing or which have Protection will continue for as long as the ceased to exist within the 100 years prior to personality (and associated images) are registered, the registration being filed); but renewals will be required every 10 years in the case of a personality and every 3 years in the case • A “Joint Personality” (2 or more natural or of an image. legal persons who are intrinsically and publicly linked, eg Laurel and Hardy or Ant and Dec);

• A “Group” (2 or more natural or legal persons Ownership and exploitation who are linked for a common purpose and The proprietor of the registered personality’s together form a collective group or team, eg image rights can be any person or entity that Coldplay or Manchester United), and note that has the right to exploit the personality’s image the members of a Group can change; or and who cannot be prevented from doing so by someone with prior rights (either under a prior • A fictional character registered image right or, for example, under trade “Images” which can be registered against the mark law or the law of passing off). The proprietor personality include not just images within their may therefore be a celebrity themselves, their natural meaning (ie photos and illustrations), image rights company, the estate of a deceased but also the personality’s name(s), nick names, star, or any other person or entity that has lawfully voice, signature, likeness, mannerisms or acquired the rights. personal attributes, as well as film footage of the The registered personality’s image rights are a personality. Images can also include “distinctive form of property that can be exploited like any characteristics” which we understand the registry other. They can be licensed, assigned or used as has accepted might include a logo or shirt security. number, or artwork created by or associated with the personality.

Infringement What is protected? A protected image is infringed if an image identical or similar to it is used without the The personality isn’t protected per se, it is proprietor’s consent for “a commercial purpose the “protected images” associated with the or a financial or economic benefit”. The use must personality that are protected (but remember the create a likelihood of confusion or association with wide definition of “image”). An image will be the registered personality, OR must take unfair a protected image if it is distinctive and if it has advantage of, or be detrimental to the repute or actual or potential value. All registered images economic value of the personality, without due will be presumed to be distinctive and valuable, cause. but other images will also be protected if they meet these criteria and crucially, an image will be A person is deemed to have “used” a protected distinctive if “it is recognised as being associated image if, for example, they use it for: marketing with the registered personality by a wide or or endorsing goods, services, activities or events; relevant sector of the public in any part of the in connection with sponsorship; on business world.” papers; or by affixing the image to goods or their packaging. inbrief

Importantly, there is no requirement of implied in which businesses are still able to ‘exploit’ the like Guernsey, this is possibly the most difficult endorsement. goodwill in a celebrity without compensating type of infringement for a business to avoid. them. This was reiterated in the recent action It’s unclear how damages will be assessed but at brought by Rihanna in the English courts for no time does the Act limit its scope to the Bailiwick unauthorised use of her image on t-shirts by Exceptions and therefore a court may assess damages with a Topshop. The Judge concluded that, due to As expected there are a range of activities global outlook. It also has the right to consider the Topshop’s prior promotional activities involving which will not constitute infringement including “flagrancy of the infringement” and can award Rihanna, her status as a style icon and fashion (amongst others): use of the personality in crowd “additional damages as the justice of the case designer/endorser, and the nature of the image shots where they are not singled out; in news may require”. used, at least some Topshop customers would reporting, commentary and satire; for education; have been deceived into believing the t-shirts were There is also the question of how to enforce any in comparative advertising; and for the purposes endorsed by Rihanna. She therefore succeeded Guernsey judgment (assuming that it’s unlikely of the arts. in her claim for passing off. However, the Judge the infringer will go out of their way to go to There is also a defence which in some respects made clear that there is no freestanding image Guernsey). Reciprocal enforcement legislation in echoes the defence to trade mark infringement right in England and in many circumstances, the the UK should mean that Guernsey judgments which allows use of a trade mark to indicate the use of a celebrity’s image on merchandise would are enforced by UK courts. And if you obtain an characteristics of the goods or services. However not amount to passing off. injunction against an infringing party in Guernsey the defence under the Guernsey image right is and have this ratified in the UK then they could Another example where it seems the English significantly narrower, only allowing use of an potentially be held in contempt of court in the UK, law offers limited protection, would be the use image “that is merely descriptive and used fairly if they continue to infringe in Guernsey. of an athlete’s image in an online advertisement and in good faith only to identify or describe promoting a betting company and the odds you something other than the [personality].” The can get on that athlete winning a race or scoring legislation indicates that use to describe or Conclusion a goal etc. identify “a place, a legacy or a style” would be Although there are still question marks over acceptable. Presumably someone advertising a The Guernsey right is very young and it is enforceability and the extent of damages likely to hotel in Edinburgh, Scotland would not then unclear how the exceptions will be interpreted be awarded, it is clear that registering image rights infringe an image right registered for Sean but it seems that the intention is that the use could usefully provide greater certainty when Connery by describing the city as “birth place of of protected images on merchandise would licensing or assigning rights, or when succession Sean Connery” along with other features of the infringe, without the need to show that there is planning. And, as a minimum, registering image city, but if they were to prominently use a picture any misrepresentation as to the product being rights in Guernsey could prove to be a useful of him, presumably this wouldn’t be “only” to endorsed or official. And while a betting company deterrent, particularly with respect to businesses describe the place and would not be considered may be able to argue the factual use of an operating across the UK and the “fair” use. athlete’s name in relation to quoting odds is only in cases where English law does not currently descriptive and done fairly, in good faith, could prevent use due to lack of implied endorsement. they say the same about use of a picture of the Comparisons to existing athlete? protections Although celebrities are offered varying degrees of ‘personality rights’ in many US states and Remedies and enforceability protection is high in several European jurisdictions, It seems likely that the none offer a registered regime. will accept jurisdiction if there is actual use of a registered image in Guernsey. UK based Under English law, no specific personality rights businesses with outlets in, or which distribute to, exist. Celebrities regularly rely on defamation, and/or advertise in Guernsey will therefore need to privacy, trade marks and the tort of passing off be aware of the consequences of the new rights. to protect their commercial rights, and under Broadcasters within Guernsey(and the businesses the UK Code of Broadcast Advertising, the use that advertise on their channels) will also need of living persons in television adverts without to be alert. And of course, any online activities permission is controlled. There are however a (unless geo-blocked) have the potential to be number of situations (particularly where there is viewed, and therefore infringe, in Guernsey. Given no suggestion of endorsement, no invasion of the practical challenges of geo-blocking an area privacy, and no trade mark has been registered) inbrief

For further information on this subject please contact:

Dominic Farnsworth Partner T + 44 (0) 20 7074 8088 [email protected]

Alex Kelham Managing Associate T + 44 (0) 20 7074 8211 [email protected]

This publication provides general guidance only: expert advice should be sought in relation to particular circumstances. Please let us know by 5 Chancery Lane – Clifford’s Inn email ([email protected]) if you would prefer London EC4A 1BL not to receive this type of information or wish DX 182 Chancery Lane to alter the contact details we hold for you. T +44 (0)20 7074 8000 | F +44 (0)20 7864 1200 www.lewissilkin.com © September 2013 Lewis Silkin LLP