08 January 2013

Guest Post - Kate Storey: Guernsey's Image Rights




Many thanks for your interest in Guernsey's innovative image rights legislation. Your blog gives me the opportunity to highlight the benefits of having Guernsey registered image rights if you are a personality based outside Guernsey, anywhere in the world. By 'personality' it is meant the personality of any individual, corporate entity or fictional character, or a group or double act, whether alive/in existence or deceased/dissolved within 100 years prior to the date of application (in this latter regard, think of the continued commercial significance of Elvis, Michael Jackson and Marilyn Monroe). The Guernsey legislation will be of interest to those in the public eye, or those at the beginning of their careers who anticipate being well known in the future, in a wide or relevant sector of the public in any part of the world.

The below listed benefits are extracted from an article I co-authored, which is due to be published in the Entertainment Law Review later in the year.

It is important to note that the Guernsey registered image right is not a tax product, but a new form of intellectual property right, which is welcomed by those seeking clear legal recognition of image rights. Addressing the question of whether protection for the personality should be a decision for the courts or for the legislator, Lindsay J has stated (in Douglas v Hello! [2003] EWHC 786 (Ch): "…if Parliament does not act soon the less satisfactory course, of the courts creating law bit by bit at the expense of the litigants and with inevitable delays and uncertainty, will be thrust upon the judiciary". The Guernsey legislature has answered this call.

Being rights which apply in Guernsey, they are not proposed as the worldwide panacea to enforcement issues, but rather to assist with recognition of image rights as specific rights and to add clarity to Guernsey or non-Guernsey structures established to hold and licence image rights and the licensing contracts themselves. They are also proprietary rights transmissible by will and so will be useful in estate planning.

Registration of Guernsey image rights is more expensive than registration of trade marks, but if you take the example of TiĆ«sto, the Dutch DJ, who has recently registered Guernsey image rights, as an individual as opposed to a corporate personality he will have paid £1,000 registration fees for registration of his personality and £100 per specific image registered. The registration of the personality lasts for 10 years and gives protection for any unregistered distinctive images associated with his personality, so £100 a year. The registration of an image (which has presumed distinctiveness by virtue of registration) lasts for 3 years, so £33.33 a year. Of course there will be agent's fees on top of the registration fees, but when looked at over the full period of protection, costs of registration do not seem so steep for the benefits provided.

Benefits of Guernsey registered image rights:
  • legal certainty as to the scope of protection for a personality's image by statutory clarification of the rights and the public interest exceptions to the rights;
  • publication to the world by means of the online Register of Personalities and Images of the bundle of image rights which the registrant considers to be his protectable rights (and to which reference can be made in licensing/assignment contracts);
  • adds clarity to existing structures already set up by personalities to market their image rights and provides another form of intellectual property right to add to their existing portfolio of intellectual property rights and contractual rights, which may be helpful in enforcing those other rights;
  • attractive to those at the beginning of their career, as there is no requirement to be famous to register - they can watch the value of their Guernsey image rights grow as their career develops;
  • Guernsey image rights can be held in a Guernsey structure, which offers tax neutral treatment of income arising from those image rights and no capital gains tax on a disposal (or they can be held in a structure based outside of Guernsey);
  • one of the main attractions of the legislation, from a succession planning viewpoint, is that it enables personalities to incorporate image rights formally into their succession planning for the first time, since Guernsey image rights are property assets which can be perpetually renewed and last beyond death, and can be passed on to beneficiaries by will;
  • wider scope of protection than that given by registered trade marks, as follows:
-    for Guernsey image rights there is no requirement for the personality to be well known in order to register, whereas a registered trade mark must have inherent distinctiveness or acquired distinctiveness through use prior to registration in order to be registrable;
-    the protection given by Guernsey image rights is not tied to particular classes of goods/services as for a registered trade mark;
-     there are no specific use requirements for Guernsey image rights, in contrast to required user within 5 years of registration for registered trade marks;
-      wider definition of infringing use for Guernsey image rights than for registered trade marks infringing use under the Ordinance includes copyright infringing acts;
-     registration of a personality gives protection for unregistered images associated with the personality, as well as images specifically registered against the personality.
The above are the views of the writer alone and should not be relied upon as legal advice.

For further information call Kate Storey on +44 (0)1481 734244, email  kate.storey@collascrill.com. 

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