The Substantive Right
What are Guernsey image rights?
Guernsey image rights are property rights acquired by the registration of a "personality" in Guernsey's Register of Personalities and Images, which gives the proprietor of the registered personality exclusive rights in the images associated with or registered against that registered personality.
What is a "personality" for the purposes of the IR Ordinance?
Guernsey image rights, like any other form of registered intellectual property in any jurisdiction, are territorial rights restricted to the territory in which they are registered
Guernsey image rights, like any other form of registered intellectual property in any jurisdiction, are territorial rights restricted to the territory in which they are registered, so will only be infringed by unauthorised use in the Bailiwick of Guernsey. However, Guernsey image rights have been designed to be fully compatible and integrated with modern media, including broadcasting, satellite transmission, the Internet and other electronic communications, to provide protection in the global mass media market. The Guernsey Court may analogise with UK and European intellectual property case law as to what may constitute infringing use in a cross-border context.
In any event, there are benefits to registering image rights in Guernsey, which are not dependent on enforcement of those rights in an infringement situation, such as clear and public definition of what are considered to be a personality's protectable rights.
How do I enforce my image rights?
Image rights will generally be enforced through an infringement action in the Royal Court of Guernsey.
Are there any defences or exceptions to infringement?
There are a number of public interest defences or exceptions to infringement, including:
Comparative advertising, provided the use is in accordance with honest practices in trade, industrial, commercial or not for profit matters; Incidental use;
- Merely descriptive use where used fairly and in good faith only to identify something other than the personnage
- Fair dealing for the purposes of research
- Fair dealing for the purposes of news reporting, commentary and satire
- Fair dealing for the purposes of the arts
- Things done for the purposes of education
- Fair dealing for any other purpose
- Acts of public administration and law enforcement or done under statutory authority
- Making of temporary copies (internet)
- Subject to any agreement to the contrary, use of an image by the personnage, or a person's use of their own image
- Exhaustion of rights in goods put on the market.
Further, there are provisions in the IR Ordinance dealing with invalidity and revocation of registrations.
There is also a right to continue use begun before registration, whereby a person who lawfully, before registration of a personality (i) does in good faith an act which would constitute infringement of the registered personality's image rights, or (ii) makes in good faith effective and serious preparations to do such an act, has the right, notwithstanding registration, to do the act for a period of 12 months from registration of the personality.
What remedies are there for infringement?
All remedies as are available in respect of the infringement of any other intellectual property right, such as damages, injunctions, accounts of profits. In addition, the following specific remedies are provided for an order:
- To cease production etc, of offending image
- For delivery up of infringing goods, material, publications or articles
- As to disposal of infringing goods, material, publications or articles.
It should be noted however that damages or an account of profits will not be awarded where the defendant proves that at the date of infringement he did not know and had no reasonable grounds for knowing that the image in question was a registered personality's image - however, this does not apply where the image infringed is registered.
How are damages assessed?
The IR Ordinance provides that, save where punitive damages are appropriate (see below), and where a defendant knew, or had reasonable grounds to know that at the date of the infringement the image was a registered personality's image, any damages awarded to the plaintiff shall be appropriate to the actual prejudice the plaintiff suffered as a result of the infringement. When awarding such damages all relevant factors are to be taken into account, including in particular:
- the negative economic consequences, including any lost profits, which the plaintiff has suffered, and any unfair profits made by the defendant, and
- elements other than economic factors, including the moral prejudice caused to the plaintiff by the infringement.
Where appropriate damages may be awarded on the basis of royalties or fees which would have been due had the defendant obtained a licence.
There is also provision for additional punitive damages, which the court may award as the justice of the case may require, having regard to all circumstances and in particular to:
- the flagrancy of the infringement, and
- any benefit accruing to the defendant by reason of the infringement.
I would like to make an application - what do I do now?
Please contact us by email enquiriesgicollascrillip.com.
A registered personality is, and a registered personality's image rights are, transmissible by assignment, testamentary disposition or operation of law, and may be licensed
A registered personality is, and a registered personality's image rights are, transmissible by assignment, testamentary disposition or operation of law, and may be licensed, in the same way as other personal or movable property. To be effective, an assignment, assent or licence must be in writing signed by or on behalf of the proprietor.
In addition, until an application has been made for registration of such transactions, the transaction is ineffective as against a person acquiring a conflicting interest (provided no reasonable grounds of knowledge) and the 'licensee' under the transaction has no rights or remedies in relation to infringement. Upon application for registration, the licensee acquires certain rights to call on the proprietor to bring infringement proceedings and/or bring infringement proceedings itself.
Infringement & Enforcement
What constitutes infringement?
A registered personality's image rights are infringed by the use for a commercial purpose or a financial or economic benefit, without the consent of the proprietor of the image rights, of an image:
- which is identical or similar to a protected image and because of that there exists a likelihood of confusion on the part of the public (which includes the likelihood of association with the registered personality); or
- which is identical or similar to a protected image and the use without due cause (i) takes unfair advantage of the distinctive character or repute of the personnage, or (ii) is detrimental to the distinctive character or repute of the personnage, or the value of the registered personality or its images.
Only a "protected image" can be infringed. To be a protected image, at the time of the alleged infringement the image has to be "distinctive", have "actual or potential value" and satisfy the registrability requirements of an image (whether or not it is in fact registered).
An image is "distinctive" if it is recognised as being associated with the registered personality by a wide or relevant sector of the public in any part of the world, and various factors are listed in the IR Ordinance for determining whether an image is distinctive. Notably, a registered image is presumed to be distinctive (although the presumption can be rebutted).
An image has "actual or potential value" if it can or has the potential to be exploited for valuable consideration. Again, a registered image is presumed to have actual or potential value, although this can be rebutted.
The IR Ordinance provides a wide and non- exhaustive definition of what constitutes unauthorised use of an image, including use of the image:
- In a communication to the public (communication being broadly defined as any form of communication including without limitation, personal appearances, exhibitions, artistic works, drawings, documents, photographs, pictures, recordings, motion pictures, films, broadcasts, publications, websites and electronic communications)
- In connection with sponsorship or for the purposes of marketing or endorsing goods, services, activities or events
- In relation to goods or image carriers
- As a domain name or as a company name.
These are wide ranging definitions for infringement and they do not require the use to be in relation to particular goods or services, as with a trade mark.
Can image rights be infringed outside Guernsey?
Anyone anywhere in the world can register a personality
There is no requirement that an applicant/ proprietor be resident or established in Guernsey; anyone anywhere in the world can register a personality provided the applicant is legally entitled to exploit rights in the personality by virtue of being the actual personnage or a person in whom the personnage's rights have been vested (and provided the personality meets the requirements for registration). In the case of a fictional character, in the first instance (and subject to any agreement to the contrary) its creator is the person entitled to be registered as proprietor unless it was created pursuant to a commission or in the course of employment.
Can I register in the name of a company?
Yes, if the legal entitlement to exploit rights in the personality is vested in that company, either by transfer of these rights to the company or by virtue of the company being the personnage itself.
I represent the estate of a deceased person - can I register?
Yes, provided the legal entitlement to exploit rights in the personality is comprised in the estate and has not been transferred to a third party.
Who can register specific images associated with a personality?
The person legally entitled to exploit the specific image, which, where the personality is registered, may be the proprietor of the registered personality, or a third party to whom rights in respect of that image have been transmitted.
Do I need a registered personality before I can register an image?
An application for registration of an image may be made at the same time as, or at any time after, an application for registration of the personality in respect of which that image is to be registered.
Are there any grounds for refusal of registration of a personality/image?
The IR Ordinance provides for various grounds for refusal of registration of a personality or an image, including grounds which may be determined by the Registrar.
Prescribed grounds for refusal include:-
- what is applied for does not satisfy the definition of a personality or image;
- contrary to public policy or morality (e.g. Jesus); deceptive to the public;
- the image or personality includes a representation of a protected emblem, such as a national flag, the Olympic symbol, image of the Queen etc. use prohibited by law;
- bad faith application (perhaps an employee registering an employer's IP); and/or
- the image has, or in the case of a personality, the images associated with the personality have, become so customary or generic as to no longer identify a specific personality.
The above are so called absolute grounds.
There are also so called relative grounds for refusal, i.e.:
- where the personality or image applied for is deemed to be identical or confusingly similar to an existing registered personality or registered image (or application therefor), or similar to an existing registered personality or registered image (or application therefor) where use without due cause would take unfair advantage or be detrimental; or
- where there is some other earlier right enforceable in the Bailiwick in relation to the personality or image applied for, whether this be trade mark rights, copyright, design rights or otherwise, and where in each case consent of the earlier right owner to registration has not been obtained.
If an application for registration of a personality or image has not been refused by the Registrar on any of the above grounds, the Registrar will publish the application and it will then be open for an "interested party" to object to the application on any of the above grounds if they see fit. An "interested party" includes (i) the personnage who is the subject of the application or whose personality is the subject of an existing personality; (ii) the registered proprietor of an existing personality or image rights attributable to an existing personality or someone who has an earlier right in the personality or image applied for; or (iii) the person entitled to be registered as the proprietor of the personality/image applied for.
What are the costs of registration?
These will be set by the Registry nearer the time of roll out of the Image Rights register from 3 December 2012. Please see the Collas Crill IP website for an indication of our fees.
How long does a registration last? Can the registration be renewed?
The registration of a personality lasts for a period of ten years from the date of registration and may be renewed for further periods of ten years. Where a specific image has been registered against the registered personality, the registration of that image lasts for three years and may be renewed for further periods of three years.
Dealings with image rights
Do I have to use the registered personality/ registered images to keep them?
There are no use requirements as such (such as apply to registered trade marks), however, an image will not be protected under the IR Ordinance if the use made of it, or its lack of use, results in the image not being distinctive of the registered personality, or having no value. The image not being distinctive (because it has become customary or generic, or misleading) would also be a ground for revocation of its registration.
Can Guernsey image rights be assigned or licensed or otherwise transferred?
Do I have to be famous to register?
No, not at the point of registration, but in view of the requirements for infringement discussed below, the personnage's personality will have to be recognised by a wide or relevant sector of the public (in any part of the world), at the time of alleged infringement. In this way it is easier to register a personality than a trade mark, since a trade mark must be inherently distinctive or have acquired distinctiveness through use at the point of registration. This is attractive to those at the beginning of their careers who are relatively unknown, who will be able to see the value of their registered image rights grow with time.
One of the requirements for infringement of image rights is that the particular image which it is alleged has been infringed be "distinctive" at the time of infringement. Distinctiveness is presumed in the case of a registered image - a real advantage of registering specific images (although this presumption can be rebutted). An image is distinctive if it is recognised as being associated with the registered personality by a wide or relevant sector of the public in any part of the world. The IR Ordinance provides a non-exhaustive list of factors for assessing whether an image is distinctive.
These infringement requirements do not imply that the personnage has to be a global superstar, or be in the media & entertainment or sports industries; anyone in the public eye in any part of the world can use the legislation, whether an individual, corporate or fictional character, or collections of individuals or corporates, but to enforce their rights their image will have to meet the recognition requirements discussed above by the time of the alleged infringing use.
What is protected?
The proprietor of a registered personality has exclusive rights in the images associated with or registered against that registered personality.
An "image" is a representation of the personality and is widely defined as including (a) a personnage's name or any other name by which they are known, (b) the voice, signature, likeness, appearance, silhouette, feature, face, expressions (verbal or facial), gestures, mannerisms and any other distinctive characteristic or personal attribute of a personnage, or (c) any photograph, illustration, image, picture, moving image or electronic or other representation ("picture") of a personnage and of no other person, except to the extent that the other person is not identified or singled out in connection with the use of the picture.
There is no requirement to register specific images associated with the registered personality (beyond the personality's name itself), however there is benefit in registering images in terms of easier enforcement and availability of damages.
A registered personality's images are only protected if they fulfil the distinctive, value and registrability requirements (discussed below under "What constitutes infringement") at the time of alleged infringement (although an image does not have to have been registered to be protected).
Who can register a personality?
A "personality" is a person's essential brand, i.e. the name by which the person is known
A "personality" is a person's essential brand, i.e. the name by which the person is known. To be registrable under the IR Ordinance, it must be the personality of one of five types of person or subject, referred to as the "personnage".
What is a personnage?
Under the IR Ordinance the person or subject whose personality is registered is known as the "personnage". A personality can only be registered if it is the personality of one of the following five types of personnage:
- a natural person, i.e. a human being who is alive or has died within the period of 100 years preceding the date of filing the application for registration of the personality,
- a legal person, i.e. a body corporate or other body having legal personality that is currently in existence, registered or incorporated or has ceased to be in existence, registered, or incorporated within the period of 100 years preceding the date of filing the application for registration of the personality,
- a joint personality, being two or more natural persons or legal persons who are or who are publicly perceived to be intrinsically linked and who together have a joint personality, e.g. a comedy double act,
- a group, being two or more natural persons or legal persons who are or who are publicly perceived to be linked in a common purpose and who together form a collective group or team, e.g. a sports team or pop group, or
- a fictional character of a human or non human, e.g . Popeye (human), Superman (non human), Mickey Mouse (non human).
Why are there different categories of personnage?
The IR Ordinance treats joint personalities and group personalities differently in that the persons forming a joint personality may not change from time to time, whereas for a group they can. This is to accommodate changes in the persons making up a group such as a football team or pop band from time to time - the personality of a group goes on despite changes in the underlying persons, whereas a joint personality would not exist without the specific persons who formed it.
The IR Ordinance also provides for moral rights of personnages who are natural persons, but not for other types of personnage. These moral rights are the right to be identified and the right not to be subjected to derogatory treatment and are quite separate from image rights.
Do I have to be famous to register?