The onshore effect of Guernsey’s proposed personality and image rights
Guernsey is about to introduce legislation which provides protection for registered image rights. As we have discussed elsewhere this month, the UK provides piecemeal and, some would say, incomplete protection for image rights. Other jurisdictions, for example on the continent and the US, provide more complete protection. But Guernsey is, it says, the first state in the world to provide a statutory registrable personality and image rights regime which prevents unauthorised commercial uses of those rights.
The proposed offshore rights
Any natural or legal person (including any such person that has died/been wound up within the last 100 years), any two or more persons who are perceived to be intrinsically linked (e.g. Ant & Dec) or who are perceived to be linked in a common purpose and who form a group (e.g. Take That) or any fictional human character (e.g. James Bond) would be registrable in Guernsey as a registered personality. It would also be possible to register one or more registered images against a registered personality. The scope of images is wide; it includes names, signatures, characteristics, likenesses, gestures, photographs and illustrations. For example, Usain Bolt would be able to register his signature arrow pose and Mo Farah would be able to register the 'Mobot'.
A registered personality is a legal property right (similar to a trade mark) which will vest in the registered proprietor simply by virtue of the registration and can then be assigned and licensed like a trade mark can. The proprietor of the registered personality has exclusive rights in the images registered against or associated with that registered personality. It is therefore possible for images to be protected even if they are not registered; registration of the personality’s images is not mandatory. So, if Mo Farah only registered his name and image, he could still protect the Mobot against unauthorised uses if he could prove that people associated it with him.
Given the very wide definition of an image, the provisions governing infringement are particularly important. Sensibly, and as would be expected, these largely concern commercially exploitive uses of an image. While registration process and criteria are akin to the trade mark process (e.g. there is absolute and relative ground examination), infringement and permitted uses are a hybrid of trade mark law (e.g. confusion is relevant) and copyright law (e.g. fair dealing is a defence).
An image of a registered personality would only be infringed if it is a protected image – one that (i) has actual or potential value and (ii) is distinctive in that it is recognised as being associated with the registered personality by a wide sector of the public in any part of the world. Registered images will be presumed to have value and be distinctive, unless proved otherwise by a defendant. This will provide an incentive for personalities to register as many images as possible against their personality, rather than having to prove to court that they are associated with an image.
A protected image is infringed by use of an image which is:
- identical to the protected image;
- confusingly similar to the protected image; or
- similar to the protected image and takes advantage of or is detrimental to the distinctive character or repute of the registered personality.
“Use” includes in connection with sponsorship, for the purposes of marketing or endorsing goods and affixed to goods or their packaging.
A registered personality's image rights would not be infringed by, among other things:
- fair dealing for the purposes of news reporting or satire;
- fair dealing for any other purpose which does not unreasonably affect the legitimate interests of the personality or the proprietor of the registered personality;
- incidental inclusion of an image; and
- use of an image in connection with goods or services (and any lawful dealings relating to such goods or services) which have been put on the market with the proprietor's consent.
Online publishers and companies running promotions or selling “image carriers” will have to pay particular attention to the new legislation and the state of the register. Through the publication or distribution or their material or goods in Guernsey, they may find themselves inadvertently infringing the rights of registered personalities even if no such infringement is occurring in the UK. In the case of online material, some businesses may opt to simply block Guernsey to avoid this issue. Distributors of promotional material and goods featuring celebrities, sportspeople and other well-known personalities without their consent, should carry out clearance searches in Guernsey when determining their marketing and distribution.
It is arguable that rights owners can sue English-domiciled defendants in England for infringing foreign intellectual property rights. This follows the UK Supreme Court’s decision in the Star Wars Stormtroopers case, in which it was held that where an English Court has personal jurisdiction over a defendant, they can be sued in England for foreign copyright infringement (See our analysis of this case here). It would require a test case to see if the courts were willing to extend this principle to the new image rights (which are an intellectual property right whose existence is dependent on registration, unlike copyright) and, in any case, there would need to be (i) infringement in Guernsey; and (ii) no dispute as to the validity of the registration of the registered personality.
Even if infringement is found to have occurred, it will be interesting to see the levels of damages (e.g. a reasonable licence fee) that are awarded given Guernsey's relatively small population. If the Guernsey court were to take into account overseas unauthorised use (even if not contrary to local law), then damages could be much higher. It is likely that the majority of infringers will not be domiciled or present in Guernsey, so overseas enforcement of any judgments will be needed. This will depend on reciprocal enforcement arrangements with the home country and whether they would enforce judgments finding infringement of a right that does not exist under domestic law and awarding damages that may be out of step with what a local court would award.
It is unlikely, however, that someone would register his or her image in order to prevent offshore or onshore unauthorised uses of the image. The benefits of being able to enforce the rights seem small. It is much more likely that the property right will be used as a tax planning measure. Being able to identify a property right and house that right in a friendly tax and corporate structure jurisdiction may make tax structuring of image rights arrangements and earnings more efficient. It may encourage celebrities and sportspeople, for example, to assign their registered image rights to a Guernsey company. Licensees of image rights should contract with those companies as well as the individual.
We await with interest to see whether the new rights will lead to a flood of infringement actions offshore or onshore and/or a change in the behaviour of those businesses that legitimately exploit image rights onshore.
"A registered personality is a legal property right (similar to a trade mark) which will vest in the registered proprietor simply by virtue of the registration and can then be assigned and licensed like a trade mark can."