Image Rights: A New Global Product

The Crown Dependency of Guernsey has just launched innovative legislation for the protection of individual or corporate Image Rights against unauthorised exploitation by a third party for commercial gain. On enactment of The Image Rights (Bailiwick of Guernsey) Ordinance, 2012, the Image Rights Register opened for business on Monday 3^rd December 2012. In this article I intend to discuss the rationale for enacting this legislation (a world first), the benefits and costs involved and some of the implications for both onshore and offshore worlds in respect of tax, structures and wealth management. I shall also look at some of the current issues that the legislation is facing and how it can begin to gain some real momentum to establish itself as a genuine new ’global product’.

Image Rights can be included with the set of intellectual property intangible assets that include patents, trade marks, copyright, trade names, domain names, and know-how. These assets have become increasingly important and valuable across the globe for both individuals and corporates, as they can often represent a large percentage of their overall income generation.  Guernsey set out as early as 2002 to create legislation that could be used to register and thereby help protect one’s image rights, and in that year Guernsey was given permission by Privy Council to amend its Intellectual Property legislation to incorporate Image Rights. But what was the rationale for going down this road? I would put this down to two principal reasons – that of opportunity and diversity.

It was clear that there was no global register or record available that could demonstrate and prove the registration of one’s image which could in turn be used to help protect an individual, a group or a legal entity from having their image exploited commercially without their permission.  A lack of any statutory definition of an “Image Right” left this whole area uncertain, and the only recourses available to exploited individuals were an assortment of remedies that included false endorsement, passing off, defamation or breach of privacy. These usually involved a court process, which were often lengthy, costly and of uncertain outcome –often ending up in the Court of Appeal. The following high-profile cases exemplify the difficulties involved in defending one’s Image Rights – Eddie Irvine v Talksport (2003), Naomi Campbell v Daily Mirror (2004) and Max Mosley v News of The World (2008). Guernsey felt there was a clear ‘gap in the market’ and decided to create legislation that would fill that hole.

Guernsey throughout its history has always been ‘light on its feet’ and pro-active, looking to create new opportunities and diversify the income stream to the Island. Guernsey has historically been quite canny at seeing and exploiting new opportunities – the examples throughout the ages are numerous, and include “Roman Garum” production, the “Entrepot” Wine Merchants, Ship-Building, Victor Hugo, the Tomato and Flower Industries and the Finance Industry of later years.  A register that was open to ‘one and all’ globally would provide a service that could develop this sector of industry, providing increased business activity based on a niche opportunity.

I became involved personally in the latter stages of the development of the legislation, joining the Commercial Group of the Guernsey Registry’s Intellectual Property Office in 2011. This was clearly an interesting (though very minor) role for me to have played in proceedings, but it has helped me to develop an understanding which I now carry over into my professional life. And it is certainly fascinating to be involved in ‘selling’ brand new legislation – often meeting questions or issues that have not actually been considered or addressed before.

When I meet up with prospective Image Rights clients or intermediaries (such as bankers, agents and lawyers), I find the same questions keep coming up. What can I register? What are the benefits? How much does it cost? How long does it last? Does it replace Copyright and Trade Mark? I address all these below.

In terms of what can be registered, this breaks down simply into either a natural person or a legal entity. A natural person can include a single person, a group of persons, a team, a fictional character or even a deceased person. A legal person can be any company, organisation or business entity.

A registration is made of a ’Personality’, and this personality will have a representative image registered with it. This image can include the following – photo, signature, catch-phrase, logo, voice, silhouette, hair-do or even a gesture. I am currently working with a musical celebrity and we are considering registering not only the personality and photo, but her distinctive silhouette. Any amount of images or photos can be registered but these are only representative – what is being protected are all images that are recognisably of the individual or entity.

The benefits of making such a registration I would list as follows:

1.   An extra layer of client or company protection, which can sit alongside Trade Mark, Patent, Copyright etc, none of which specifically focus on Image protection. One of the key advantages of this protection is that there is no expiry date on such a registration, provided fees are paid and the rights renewed, as is the case with Trade Marks.

2.   A public record that can act as evidence and a threat to possible infringers. This could well save the need to have to go to court to seek enforcement of infringements. It could even help celebrities to get the Paparazzi off their backs at last, as a couple of Film Producers recently suggested to me.

3.   A great marketing opportunity – particularly for new companies or individuals looking to get global exposure. My first IR registration (a Greek guitarist) saw huge increased hits on her website after her registration, and the number of record sales has also increased dramatically. We also used her IR registration as an opportunity to market her name, via a special concert in Guernsey and a number of media interviews. One real advantage of the Image Rights Register is the fact that the register is a public record that can be accessed by anyone globally via the Intellectual Property Office of the Guernsey Registry. The exposure that this affords is potentially immense, and not only does it list the personalities registered, it also lists the Image Rights Agents and their linked offices (Law Firms, Trust Companies) who all regularly monitor the site - http://ipo.guernseyregistry.com/

4.   Image Rights are designated as an “Asset Class” and can be valued, bought, sold, licensed and used for collateral.

5.   In the early stages, at least, there is an opportunity to be the “first” of one’s type or professional class to register.

6.   There are opportunities for appropriate tax planning in appropriate tax neutral jurisdictions.

7.   Image Rights can sit readily within a managed Company, Foundation or Trust structure and form part of the assets under management.

8.   A very solid, well-regulated and well-respected jurisdiction whose Common Law is very much aligned to that in the UK.

I believe the costs are remarkably low, considering what it would cost to place advertising to achieve the same effect, or to register marks throughout countless numbers of jurisdictions. I include the two sets of costs that would be incurred, one set of fees for the Registration at the Guernsey Registry, and the other set of fees to the Image Rights Agent:

The fees due to the Registry for the registration are:

•  Individual - £1,000 (Includes one free image) + £100 per additional image, signature etc.

•  Company - £2,000 (Includes one free image) + £100 per additional logo, image etc.

IR Agent fees due for registration and administration work:

•  Individual - £2,000

•  Company -£2,500

The total cost covers 10 years registration, with no additional or annual renewal fees:

•  Individual - £3,000*

•  Company - £4,500*

* These figures are based on a basic registration of the personality and 1 single free image.

So, provided fees are paid and the rights are renewed, an Image Rights registration can last indefinitely, as with Trade Marks. This differs from Copyrights or Patents which have a set lifespan. And there are no jurisdictional issues, as this is the only register of its kind anywhere in the world. Image Rights can certainly sit alongside the other types of Intellectual Property and, who knows, in the future they may even help to take over protection once these other types of asset protection have expired.

Another question that is asked regularly is what is the use of this legislation if I can only enforce it in Guernsey? What if there is an infringement or abuse in Holland, or in China?

Well, put quite simply, this has yet to be tried and tested. However, a court order secured in Guernsey is a threat that, up until now, has not existed in the world of protection of Image Rights.  Not only is the IR Registry evidence of the recording of these Image Rights, but the threat of a Guernsey court order would be another stick to wave at potential infringers, in whatever jurisdiction they may be operating.

There are still currently only a couple of handfuls of Image Rights registrations and I believe that there are a couple of reasons for this. Firstly, it is brand new legislation and new things always take time to be understood, develop and blossom. Secondly, I sense a lot of the legal people (especially the corporate and litigation lawyers) are sitting on their hands and waiting to see what happens. And a lot of this hesitation probably stems from the enforcement issue just mentioned.

All I can say at this point - and I can base it on the experience of two of the clients I personally registered – is that the protection that the registration offers is not necessarily the driving reason why they registered. They are in the world of publicity and marketing, where their income generation depends greatly upon their public exposure. The register itself for some will prove the principal reason – with the protection representing an added bonus.

One final question I have been faced with - do you think it will be a success? As it is part of my business I am duty bound to say yes. In all honesty, from my own perspective as a registered Image Rights Agent I can see that things are starting to take on some momentum. There is growing interest and awareness in this story, which I can personally evidence. I have now registered four clients and am preparing a good handful more, including a couple of recently established London-based businesses looking to use their registration as a real marketing opportunity.

It will only take a couple of things to advance this situation dramatically and positively. Firstly, a big celebrity, rock star or sports star registers. Secondly, a precedent is set by applying a Guernsey Court order in another jurisdiction – and winning. At this point it will definitely be confirmed as a must-have ’global product’.

©Jose Luis Romanillos, joseromanillos@finsbury-ci.com, All Rights Reserved