Name sake

  • Author : Michael Shenkin
  • Date : February 2012
ABOUT THE AUTHOR: Michael Shenkin is an Associate Solicitor at Hawksford in St Helier, Jersey

What’s in a name? For some people, a lot. Image rights (known as ‘personality rights’ in the US) allow an individual to control the commercial use of their name, image, voice or other distinct aspect of their identity, and the States of Guernsey is now making bold strides in this area. On 28 September 2011, it approved the introduction of specific legislation for protecting images. The proposal will establish an Image Rights Register, making the island the first jurisdiction in the world to create a framework for protecting image rights.

It is not unusual for people whose careers make them internationally mobile to use offshore centres to manage their commercial arrangements. Sports stars may be keen to place their sponsorship and licensing agreements offshore before taking up employment in a new jurisdiction, for example. The idea that a person should seek to protect the intellectual property unique to their image, an aspect that adds significant value to those agreements, is not new. However, there are numerous obstacles to affording that protection, particularly in the UK, because of a lack of statutory recognition of such rights.

Star value

Image rights are valuable commodities. In 2006, cricketer Sachin Tendulkar reportedly sold a bundle of his image rights to a subsidiary of Saatchi & Saatchi for GBP22 million. In 2011, entertainment rights group CKX, which had majority stakes in businesses that managed the rights to the names and images of Muhammad Ali and Elvis Presley, was sold to Apollo Global Management for USD510 million.

In terms of a celebrity’s commercial arrangements, much value can be attributed to their image and the way it is managed and controlled. In 2005, Manchester United’s Sir Alex Ferguson failed to register ‘Alex Ferguson’ as a trade mark in the UK in an attempt to stop his name being used on unauthorised posters. It was rejected because it was already a widely used description on many traders’ goods, taking the form of photographs, posters or prints.

Note, however, that protection was given to former Formula 1 driver Eddie Irvine in his case against Talksport Radio under the tort of passing off. In a claim for passing off, the person concerned must be trading, and Irvine was able to show that he had substantial goodwill invested in his image, which was a business commodity to him. The new Guernsey legislation will similarly intend that image rights will only be enforceable for commercial purposes.

‘MUCH VALUE CAN BE ATTRIBUTED TO A CELEBRITY’S IMAGE AND THE WAY IT IS ARRANGED AND CONTROLLED’

France and Germany both have laws relating to image rights, but these stem from privacy laws relating to the individual rather than from concepts of commercial image rights. Guernsey is seeking to remove some of this uncertainty. The legislation will have the following key features:

  • Establishment of an Image Rights Register and a Registrar of Image Rights.
  • The creation of a right for a qualifying personality to be registered on the Image Rights Register (a ‘registered personality right’). Register features of a qualifying personality will include a personal name and any other associated distinguishing indications (such as voice, signature, photograph, character or likeness) that identify the personality uniquely.
  • Qualifying personalities will include any living or deceased natural person and could extend to some non-living entities, such as fictional characters.
  • Creation of an appeals mechanism for decisions of the Registrar of Image Rights.
  • A registered personality right relating to a living personality will have indefinite duration and can continue to exist after the death of the personality, subject to regular renewal or validation of registration on the Register of Image Rights.
  • Exclusive ownership rights will be created, which may be enjoyed and protected by the holder of a registered personality right and which may be assigned and otherwise dealt with as personality, subject to relevant registration requirements.
  • Exceptions and limitations to the exclusive use of rights will be created to ensure that images may be used where it is in the public interest to do so, such as in legitimate news coverage.
  • Only distinctive images will be enforceable. Distinctiveness will ultimately be a matter for the courts to decide.
  • All infringements of image rights will be actionable as civil, not criminal, matters.
  • In an action for infringement of image rights, all relief by way of damages, injunctions, accounts or otherwise will be available to the plaintiff as is available in respect of the infringement of any other intellectual property right.
  • The rights will be fully compatible and integrated with modern media, including broadcasting, satellite transmission, the internet and other electronic communications. This will be particularly important in providing protection in the mass media market.

Regardless of the particular right itself, it is interesting that the proposal seeks to offer the opportunity to protect a registered personality right forever, and that it may be extended to some ‘non-living entities’. Will it really be possible for comedian Sacha Baron Cohen to protect the voice or image of his character Borat? At first glance, it seems surreal, but when you think about the global commercial value tied up in a comedy creation like Borat, you can see the void that Guernsey is looking to fill. The proposal does not specify what type of fictional character can be protected and makes it clear that many provisions of the new law will be based on the principles of other Guernsey intellectual property legislation, in particular the Trade Marks Ordinance. This leaves the law draftsman with an unenviable task, given the conceptual differences.

Risky business

The proposal identifies certain risks associated with introducing image rights legislation. The most obvious one is acting against the public interest regarding freedom of expression and freedom of the press. To put it another way, ‘privacy legislation by the back door’, as acknowledged by the proposal. The new law intends to safeguard against this to ensure that various types of unauthorised use of an image are permitted where they are in the public interest. This includes freedom of the press, educational and private use.

California enacted the Celebrities Rights Act in 1985, but it has found itself in constant conflict with the First Amendment to the US Constitution (protecting rights such as free speech and freedom of the press) and competing intellectual property (IP) rights. The Guernsey proposal acknowledges that image rights could conflict or overlap with other IP rights vested in other people, such as copyright, and that in the case of such conflict it will be a matter for the courts to decide.

There is an element of uncertainty as to how a foreign court will perceive an image right in its own jurisdiction. While most are familiar with copyright and trade marks through their own domestic legislation, it is uncertain what approach, for instance, an English court would take to enforcing a property right (be it an injunction or a claim for damages) that had no equivalent in its own jurisdiction.

‘THE NEW LAW WILL ENSURE THAT UNAUTHORISED USE OF AN IMAGE IS PERMITTED WHERE IT IS IN THE PUBLIC INTEREST’

Take, for example, long-distance runner David Bedford and his claims against advertisements for UK telephone directory service 118 118. Independent regulator Ofcom agreed that 118 118 had breached the Advertising Standards Code by using a caricature of Mr Bedford, but awarded no compensation because he delayed his complaint and there were no findings that he had suffered financial harm. He would have had to cross more significant hurdles in the High Court to establish a successful claim for passing off, including demonstrating that 118 118 had taken his image without his permission, that the public thought Mr Bedford was endorsing 118 118 and that, as a result, he had suffered financial loss. If Mr Bedford had been able to avail himself of a registered image right in Guernsey and subsequently brought an action for breach of those image rights (rather than the tort of passing off) in the High Court, you can only speculate on how the High Court would have approached such a claim.

The drafting of the new law is being given high priority, with the intention to have it in force before the 2012 Olympic Games and the start of the European football transfer window. There is, of course, a risk with any piece of legislation being rushed through, and a higher risk of creating problems with pioneering legislation, but judgment is best reserved until the first draft of the new law is available for review. It is commendable that Guernsey is taking a lead in this often complicated and controversial area, and perhaps its approach could be summed up in the words of American poet Ezra Pound: ‘make it new’.


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