A tiny island in the English Channel, officially known as the Bailiwick of Guernsey, is about to become the very first jurisdiction in the world to enact an image rights law that puts in place a new form of intellectual property right which can be registered and commercialised.
The draft of the new law was approved by the Guernsey Parliament in September 2011. Following its publication, a 30 day consultation period was launched, which expired on 7 March 2012. The final draft of the legislation is expected to be approved by June (i.e. right in time for the London Olympic Games). If so, Guernsey will introduce a new type of image right, valid against the world and different from any other statutory provisions currently used in other countries, including trademark, copyright, data protection, the US right of publicity, and the passing off doctrine developed in the UK. While many jurisdictions prevent the unauthorized commercial use of one person’s name and likeness, so far none ever introduced the possibility to register them.
Under the terms of the Guernsey draft legislation, celebrities, sports stars and other publicly recognisable figures will be able to obtain the registration of their “image”, which includes certain definable aspects such as their name, or the one they are known by, voice, autograph, expressions, gestures or other distinctive attributes.
The property expires one year from the registration date but it is always renewable subject to payment of the relevant registration fee. The protection is available to “natural persons” (e.g. Beckam), “legal persons” (e.g. Disney) as well as fictional characters. The law foresees, however, a minimal threshold to be met in order to apply for registration: images must be distinctive and have an “actual or potential value”. It remains to be seen how the Guernsey Registrar of Intellectual Property will define and apply these eligibility requirements.
Registration entails exclusive rights to exploit the registered image. That is to say, use by any third party of the same image or any image similar to the registered one, without that person’s prior consent, constitutes an infringement of the (registered) image right. The legislation provides that the image rights of a “registered personality” are infringed by the use of an image which is either “identical” or “similar” to the protected image, thus entailing “likelihood of confusion on the part of the public, which includes the likelihood of association with that registered personality”. In other words, the law aims at safeguarding not only the protected images but also similar images that have not been registered under the Guernsey law. In the latter case, though, in order to bring action for infringement of the image rights the registered personality will have to demonstrate the infringed image is distinctive and has actual or potential value.
The infringement of image rights results in the right of the “proprietor of the registered personality” to seek court injunctions and damages, similar to other intellectual property rights. However, the draft legislation does provide a few exceptions allowing use of the registered image (i) for non-lucrative benefit; or (ii) for educational purposes; or (iii) for the purpose of identifying the personality, or (iv) as an incidental inclusion in material that is publicly available. In any case, the exploitation must necessarily be “not detrimental” and must not “take unfair advantage, without due cause, to the distinctive character or repute of the registered personality”.
The cornerstone of the new law is that the registered personality is considered as a tangible asset, whose legal ownership is vested in the person registered as the image proprietor. That is to say, the registered personality may be transferred by the proprietor by assignment, testamentary disposition, or licensed out.
As a matter of fact, the new law sets forth a means of protection of someone’s image that is stronger than copyright and trademark, in that it is not limited to goods and services and has no expressed territorial limits. Yet, it is hard to imagine how the protection afforded under the new legislation will be actually applied outside the borders of the Bailiwick. Issues may stem also from conflict of laws provisions: By way of example, under Italian law personality rights are effective erga omnes, non-transferable and non-heritable. Italian conflict of laws rules provide that personality rights remain subject to the national law of the individual whose personality is concerned, such law being mandatory. It follows, that the new Guernsey regime, whereby personality rights can be registered and commercialised, may conflict with mandatory rules of foreign jurisdictions.