The Saucy Fish Company™: A Brand with an Image to Uphold

Image rights involve the commercial appropriation or exploitation of a personality’s identity and associated images. In this case, we are dealing with a fish on a mission. He (?) has distinctive expressions, characteristics or attributes of, or associated with, his personality made available to public perception. Image rights are an integral part of his artistic and creative expression. This fish is a celebrity. He has a following of 5 million people (not just other fish) and has earned £35 million in 3 years. Visual image, sound bites and the cult of the celebrity are powerful forces, which can determine success or failure in nearly every aspect of public life, be it politics, performing arts or social communication of how amazing fish really is. The commoditization of image has real value, both directly – for the fish concerned – and indirectly, in terms of generating income for The Saucy Fish Company specializing in fish evangelism.

The Saucy Fish Company needs to register as a personage and more fully exploit the benefits and protections of a registered personality in the Fish. (Does he/she/it have a name?) There are numerous ‘images’ that are both static and dynamic which would be expensive to register individually as trademarks but which could find a happy home in the Image Rights Registry. There are several similarities between the infringement principles for image rights and those surrounding trade marks. Image rights are commercially valuable and build upon international standards for intellectual property. The IRO provides a legal framework which protects both economic and dignitary interests, without having to sacrifice one for the other.

The benefits are numerous: any person, be they a natural person or a legal entity, can register their personality as a unique and exploitable asset. Moreover, the term ‘personality’ includes fictional personalities or the personalities of persons who have died within the last 100 years. It also permits joint and group registrations. Accordingly, The Saucy Fish Company, for example, could choose to register The Fish as a personality. The registration of a personality immediately captures all present, historic and future images associated with that personality. In the context of the law, ‘image’ is framed extremely widely and means the name of the person and includes:

“…the voice, signature, likeness, appearance, silhouette, feature, face, expressions (verbal or facial), gestures, mannerisms, and any other distinctive characteristic or personal attribute of a personage, or…

…any photograph, illustration, image, picture, moving image or electronic of other representation (‘picture’) of a personage and of no other person …”[1]

Therefore, if the personality concerned is capable of expressing something unique by any means, it can be protected as a ‘registered image’ under the law. Moreover, as registered, protected intellectual property, a registered image (or the entire registered personality) can be sold or licensed for the authorized use by others recognizing the value that was hitherto difficult to clearly define and capture.

Traditionally, there are two aspects of image rights that a celebrity (aquatic or otherwise) is concerned with, namely:

1. exploitation of image rights through sale and transfer (e.g. licensing arrangements); and
2. protection of the image rights (and therefore their inherent value) through possible registration and (if necessary) infringement proceedings.

Inevitably, the ability to record one’s legal property in an image right through registration aids both the economic exploitation of the right and also its protection. Historically, copyright and trade mark legislation has been used by celebrities to try and carry out this function. These tools, which are described in greater detail below, are purpose-specific and therefore ultimately limited in their application. For those attempting to stop another person actually trading on their image or personal goodwill without consent, a combination of the legal remedies have often been used together to build a less than perfect case to restrain an offending party and account for profits earned. In short, there has been a demonstrable void in the law prior to the IRO to enable a person to adequately exploit and protect distinctive attributes of a person’s character, or personality.

Copyright

Copyright law is effectively limited in its application to the protection of creative works including pictures and literary works, and will only then protect the specific pictures in which the copyright exists, not an “image” in the more general sense of the word.[2] Worse still from an image rights perspective; it is the person taking the picture that enjoys protection at law, not the person who may be the subject of the picture.[3] Copyright, therefore, confers no ability on a person/fish to control the use of his/her image taken by another person.[4] It is also established that there is no copyright in a name.[5]

The Fish’s acting chops are protected by copyright in the advertisements. His jokes are as well on the website. Even the fishy personality predictors are protected. But they are static and must be fixed to attract copyright protection. The Fish is dynamic constantly changing colour and swimming around the site. This very personable-ness cannot be captured only once; it must be appreciated and protected in an on-going manner. His personality demands it.

Trade Marks

The oft-attempted use of Trade Mark legislation to protect personality is littered with conflicting historical case law and subsequent appeals, all of which ultimately serve to illustrate that Trade Marks were designed to do just that – to serve as a recognizable indicator of the origin (i.e. the manufacturer) of goods or services, not one’s personality or image.[6] Turning your name into a trademark is an increasingly common legal move for celebrities seeking to protect the commercial use of their name to sell goods and services. By way of recent example, in 2012 singers Beyoncé and Jay-Z attempted to register the name of their daughter, Blue Ivy, as a trade mark. Initially, the application failed. However, after negotiations with other rights holders, they were able to secure the registration. Registrations relating to famous people often fall into the trap of being more descriptive of the person themselves rather than denoting origin. For example, the mark “DAVID BECKHAM” as applied to a poster may simply describe the image depicted on that poster, rather than indicate the commercial source from which it originates. It is arguable that the more famous the celebrity, the more likely that use of his name or likeness will be deemed descriptive and so not amount to trade mark use.[7]

Passing Off

The laws pertaining to the tort of Passing Off (misrepresenting goods or services as being associated with those of a claimant when, in fact, they are not) have also been used in some jurisdictions with varying degrees of success to restrict the unauthorized use of image by others. However, to be effective a claim for passing off must satisfy three criteria: ‘reputation’, ‘misrepresentation’ and ‘damage’.[8] For parties with no competing commercial activities, the element of misrepresentation, which requires the conduct, complained of, to be such that it leads or is likely to lead the public to believe the goods or services offered by the defendant are the goods or services of the complainant, is often missing, thus negating any possible protection via this route.

3 Limitations of Current Laws

Most of the existing laws described above deal with consequences of infringement. They provide a degree of redress in certain specific situations. They do not provide a pro-active means to register, exploit and protect one’s image rights. A key feature of the IRO is that it is linked to an on-line, publically searchable database[9] of Registered Images maintained by the Guernsey Intellectual Property Office.

None of the laws described above approach the scope and flexibility of the IRO, which has been drafted from a clean slate and in a bespoke manner to specifically fill the existing legal void and cater for the registration, exploitation and protection of image rights. However, the Guernsey law relates to, and is compatible with, elements of the laws of each of the above jurisdictions and this may be seen as further confirmation that the world will be receptive to the protection offered by the Image Rights Ordinance. No other jurisdiction does what Guernsey does now. Currently, there is patchwork protection based on whether or not the plaintiff can dress a grievance up as a particular cause of action cobbled from a variety of ill-fitting protections. There is no clarity, consistency or continuity. Sometimes, a person will have to pursue a claim on offended dignity and a right to privacy. Alternatively, they will have to claim on a violated economic interest (publicity), but if there is no economic loss, then they will lose. Protecting celebrity status is precarious. Registration under the IRO is aimed to make this easier.

More than anything else, the overwhelming reason for the Fish to register on the Image Rights Register (IRR) is believed to be the ‘catch all’ nature of the law. Unlike other laws that address specific aspects and are effectively fixed as a snapshot in time, by virtue of one simple registration, the IRO protects all current, historic and future characteristics of the registered personality – no matter how they evolve during their lifetime. Although not an insurance product, the analogy of ‘insurance for future successes conveys something of what an early registration can provide.

Registered Personality

According to Section 2(1) IRO, “A registered personality is a property right obtained by the registration of a personality in the Register in accordance with the provisions of this Ordinance.” Personality refers to the personality of the following types of person or subject which is described in the Image Rights Ordinance as the “personnage”. Section 1(1) IRO describes a “personnage” as follows:

(a) a natural person,

(b) a legal person,

(c) 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 (“joint personality”),

(d) two or more natural persons or legal persons who are or who are publicly perceived to be linked in common purpose and who together form a collective group or team (“group”), or

(e) a fictional character of a human or non-human (“fictional character”),

Whose personality –

(i) is registered under this Ordinance (and is accordingly a “registered personality” for the purposes of this Ordinance), or

(ii) is the subject of an application to be so registered.

“Personality” is defined in Section 1(2) IRO as “the personality of the person, two or more persons or character referred to in subsections (1) (a) to (e).” Section 1(6) IRO defines a “legal person” as a body corporate or other body having legal personality that – (a) is currently in existence, registered or incorporated, or (b) has ceased to be in existence, registered or incorporated, for example by reason of having been liquidated, dissolved, wound up or struck off, within the period of 100 years preceding the date of filing the application for the registration of the personality. The Saucy Fish Company could register as the Personality. Or the Fish, as a fictional non-human character, could be registered as the Personality. Or the Fish could be an Image of the Personality that is The Saucy Fish Company.

As to fictional characters, the creator of the fictional character is, generally, the prospective proprietor of the fictional character’s personality, together with any image rights therein. A legal person’s personality can be registered, so arguably therefore, Disney could be a registered personality, thereby getting protection for cartoon characters associated with Disney, such as Mickey Mouse, Donald Duck and Winnie the Pooh, and/or these characters could be registered personalities in their own right.

“Image rights” are defined in s 5(1) IRO as “exclusive rights in the images associated with or registered against the registered personality.” Section 3(1) IRO defines “image” as:

(a) the name of a personnage or any other name by which a personnage is 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 or in connection with the use of the picture.

Note that there is no requirement to register specific images associated with the registered personality beyond the personality’s name itself. However, for there to be a benefit in registering and for easier enforcement, specific images are useful. A registered image is presumed to be distinctive and of value, which are requirements for infringement, whereas these qualities must be specifically proven in order to enforce rights in an unregistered image. Further, infringement 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 was a registered personality’s image. These conditions do not apply where the image infringed is registered.

This note is only intended to give a brief summary and general overview of this area of law. It is not intended to be, nor does it constitute, legal advice and should not be relied upon as doing so.

Dr Angela Adrian, BBA, MIM, JD, LLM, PhD

Angela is a dual-qualified lawyer (US Attorney and English Solicitor). She is a leading authority on Intellectual Property and is the editor of the International Journal of Intellectual Property Management. Angela is respected academic, having published numerous papers and books and having taught IP at several international universities. Angela is a director and Chief Knowledge Officer of Icondia

Icondia comprises a team of experts that focus exclusively on the registration and management of image rights for an international customer base.

For further information visit www.icondia.com

© A. Adrian 2014