A world first - RBC International Wealth Management by wuxiangyu


									                                        A world first - Guernsey
                                        introduces innovative image
                                        rights legislation
                                        The long-awaited image rights legislation        With so many products and services now
                                        in Guernsey has now been passed by the           being sold on the back of endorsements,
                                        legislature, making Guernsey the first           it’s not surprising that growing numbers of
                                        jurisdiction to create a registrable image       celebrities and other “marketable” people
                                        right. In essence, this will enable the          are seeking to prevent corporations or others
Alan Pearce
                                        effective management and control of the          from using their name or image without
Managing Director, Guernsey
                                        commercial use of a person’s identity, and       authorization. Historically, celebrities have
                                        images associated with that person, including    sought to protect their image through a
RBC Trustees (Guernsey) Limited
                                        distinctive expressions, characteristics or      number of different means, none of which are
Canada Court, St Peter Port, Guernsey
                                        attributes.                                      ideal. Thus, many celebrities have protected
Channel Islands, GY1 3BQ
                                                                                         their images indirectly through the use of
Phone: +44 (0) 1481 744 143
                                        Image is everything                              trademark rights. However, as illustrated by
Email: alan.pearce@rbc.com
                                        “Image is everything” may be an old adage,       recent cases, the use of trademark legislation
                                        but it is more pertinent in today’s society      provides an inadequate level of protection in
                                        than ever before. Whether it be an athlete,      today’s commercial world.
                                        actor or entertainer, the talent or profession
                                        that the individual is famous for is seldom      Confusion reigns
                                        the sole or, in many cases, even the primary     In some common law jurisdictions, there is
                                        source of income. Take football, for example.    a disparate body of publicity rights which
                                        The assertion that David Beckham was             give individuals limited control over the use
                                        the greatest footballer of his generation        of their image or other unique aspects of
                                        would probably be met with some degree of        their identity. The remedy for infringement
                                        skepticism, but few would dispute his status     is usually brought under the mantle of a
                                        as the most marketable. From hair products       “passing off” action or a claim for false
                                        and soft drinks to clothing and razors, the      endorsement, where there is an attempt
                                        Beckham brand has always been about much         to imply endorsement of a product by
Colin Le Bachelet
                                        more than football.                              associating a celebrity’s image with it without
Private Client Senior Manager
                                                                                         their consent.
RBC Trustees (Guernsey) Limited
Canada Court, St Peter Port, Guernsey
Channel Islands, GY1 3BQ
Phone: +44 (0) 1481 744 042
Email: colin.lebachelet@rbc.com


Trust and fiduciary services
A world first - Guernsey introduces innovative image rights legislation continued

By contrast, in some civil law jurisdictions       Not only has the existing legislation left            as Bond, etc. and various associated images,
an individual’s image gains some protection        people exposed to image theft, but to                 such as the “007” logo, the gun barrel and
under civil code provisions related to general     challenges about the validity of a claim over         Bond’s Aston Martin.
privacy rights. These rights are usually limited   the existence of any rights in their image.
to invasions of privacy, however, and are also     For example, a number of cases have been              In addition to the unique opportunity to
limited in that such rights cannot survive         brought by HMRC since the turn of this                obtain a statutory property right over images,
after the death of the individual. However,        century against Premier League football               there may also be other advantages in having
the situation is not clear cut, with some          clubs in particular, with a number of players         image rights registered and held in Guernsey,
jurisdictions having a mixture of common law       being challenged on the value of their image          as a low tax jurisdiction. The structuring of
and civil law. Moreover, in some jurisdictions     rights. Perhaps understandably, HMRC has              image rights might involve the use of trusts,
there is no clear distinction between privacy      challenged the claim of some less successful          companies and other entities in which
rights and publicity rights.                       footballers that there is any great value, or         Guernsey’s finance industry specializes. For
                                                   indeed any value, in their image right. The           example, the image rights could be owned by
In the UK, the courts recognize that image         absence of specific legal provisions under            a Guernsey company, which in turn could be
rights exist in the commercial world but           which celebrities can register images was             owned by a Guernsey or other offshore trust,
are not provided for in legislation, and           obviously to their detriment.                         with the rights being licensed for use across
although, as with other countries, a degree                                                              the world. In such cases, any royalties or other
of protection is provided by combining             Guernsey’s solution                                   income arising would not be subject to any
existing intellectual property rights such as      Recognizing the limitations of the existing           taxes in Guernsey provided the beneficial
copyright or trademark provisions, the scope       legislation, the States of Guernsey in                owner of the company is not resident in
for protection under these is very narrow.         consultation with professional advisors               Guernsey. More complex structures may be
This can be contrasted with the US where, for      and the local finance industry identified an          appropriate, depending on the tax jurisdiction
example, it is accepted that a person’s name,      opportunity to introduce legislation which            of the parties involved, and where the image
voice and likeness can be protected by law.        would bridge the gap between existing                 rights are to be licensed.
                                                   intellectual property legislation and business
The lack of a clearly defined legislative          practice in the sports and entertainment              There may also be non-tax reasons for
framework in the UK has been evident in            industry. For the first time, this legislation will   holding the image rights in a separate
a number of cases over the years where             allow celebrities, sports professionals, teams,       legal entity such as a limited company; for
individuals have sought to bring legal actions     companies and other media personalities               example, estate planning. A recent study
in relation to unauthorized use of images.         – whether living or dead, real or fictional,          by Forbes estimated royalty revenues still
For example, in Irvine v Talksport, 2002,          human or other – to register their image              being earned by the late Michael Jackson at
the decision was based on the principle            rights within a clear and certain legislative         around $170 million in 2012. The ability to
of “passing off” (which is usually aimed at        framework.                                            plan for the use of image rights after death
protecting the goodwill in an unregistered                                                               is therefore a significant advantage of the
trademark). Irvine sued a radio station for        The image rights legislation is able to               legislation. There have been other cases
using his image in an advert without his           offer protection beyond associated goods              involving disputes over deceased celebrities
consent and while he initially lost the decision   and services to any activity involving the            and sportsmen’s image rights, which might
he was successful on appeal. Incidentally, the     “personnage” (which is how the legislation            have been avoided had it been possible to
damages awarded were only a fraction of what       will define the total personality being               register the rights and have them treated as
had been claimed because of the difficulty in      registered – e.g. “James Bond” could be a             part of the deceased’s estate. It will also be
establishing the value of his image.               registered personnage). The facets of the             possible, uniquely, to register the image rights
                                                   personnage could include, for example, voice,         of persons already deceased, provided they
In the Lady Gaga and Moshi Monsters                signature, silhouette, expressions, gestures          have died within 100 years of the rights being
case, while Lady Gaga was successful in            and moving images.                                    registered; for example, Marilyn Monroe,
preventing the release of a single by a cartoon                                                          Albert Einstein, whose iconic images are
caricature of herself, she was unable to use       Thus, in the case of James Bond, not only             still in daily use. This is where the Guernsey
the trademark legislation to prevent a similar     would his name and photographic image                 image right offers a significant advantage
character (Lady Goo Goo) being used by             be registerable, but so would names such as           to celebrities; for example, although Cecil
Moshi Monsters in a game. The Lady Gaga            “007” and the various theme tunes from the            Beaton’s estate owns the copyright in some
case was only partially successful because the     films, in addition to well-known phrases, e.g.        of the most iconic photographs of Marilyn
action had to be brought under the trademark       “shaken not stirred”. It could also encompass         Monroe, that copyright will run out in the
legislation in the UK.                             images of Sean Connery as Bond, Daniel Craig          next few years as copyright only lasts for
A world first - Guernsey introduces innovative image rights legislation continued

70 years after death. The Guernsey legislation    standards on enforcement of intellectual
enables Marilyn Monroe’s estate to protect        property rights. That being so, traditional
those images going forward.                       freedoms and ‘fair use’ / ‘fair dealing’
                                                  exceptions have been preserved such as the
Having image rights held within a company         freedom to use registered images in news
may also facilitate licensing, assignment and     reporting or satire or for private purposes.
sales of images. Corporate ownership may          In the event of a breach of a Guernsey right
also simplify matters such as securitization      occurring or accessible in Guernsey (bearing
of the rights, against lending, for example,      in mind that much infringement is likely to
because there is a tangible registered right      be online nowadays), action can be taken in
to which a value can be attributed. In the        Guernsey and pursued through the courts
case of sports clubs, there would also be         of the wrongdoer in reliance either on
the opportunity of structuring the recipient      the statutory scheme for recognition and
companies within Guernsey, perhaps with           enforcement of judgments, or the well-
the same service provider, with the possibility   established common law principles in this
of also taking advantage of the financial         area.
centre’s infrastructure for legal, banking and
investment advice. For example, the use of        The introduction of this new ground-breaking
cell companies for group or team images may       legislation will complement Guernsey’s
be of interest to clubs and associations.         existing intellectual property legislation and
                                                  expertise offered by its offshore trust and
As regards enforcement, Guernsey has been         company industry, and establish the Island
careful to ensure that the legislation has been   as a centre of excellence in the area of image
drafted in compliance with international          rights.
A world first - Guernsey introduces innovative image rights legislation continued

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