How can celebrities successfully protect their personality rights and image rights wordwide? Hear it from the expert on the registration of image rights Keith Laker, Partner, Icondia

1. Protecting The Image Rights of
Celebrities & Brands:
Keith Laker M.Sc. ACIS, TEP
10 February 2015

2. 2
• A specific category of intellectual property.
• Recorded on a public register
• Defined as: “A registered personality is personal or movable property, [with] legal
ownership… vested in the person registered as the proprietor of the registered
personality” Sec 51.(1)
• These rights are not limited by class or geographic area.
• Registering these rights in Guernsey does not mean you have to hold them in
Guernsey
The Image Rights (Bailiwick of Guernsey)
Ordinance 2012…
Protecting The Image Rights of Celebrities & Brands: 10 February 2015
…a quick recap:

3. 3
• Proprietor. (Not in public domain)
• Personnage: The real person behind the personality (e.g. Robyn Fenty)
• Personality: The personality being registered (e.g. Rihanna). This is the core
property right
• Images: Any definable characteristic distinctive to the registered personality.
• Includes: name, voice, likeness, expression, gestures, mannerisms + any
other distinctive characteristic or attribute
• Unregistered images also protected.
The components:
Protecting The Image Rights of Celebrities & Brands: 10 February 2015

4. 4
• Is there economic loss?
• Is the image distinctive?
• “An image is distinctive if it is associated with the registered personality by
a wide or relevant sector of the public in any part of the world” Sec 28 (2)
• Can the infringement be viewed in Guernsey?
The Infringement Test:
Protecting The Image Rights of Celebrities & Brands: 10 February 2015

5. 5
• You own a car.
• You’re seconded to a foreign club
for a year
• You return to find someone else
driving your car (without your
permission!)
• You go to the authorities to report
the theft
• The court will ask you to prove you
own the vehicle
• You provide a copy of your
registration details
Protection - an example
Protecting The Image Rights of Celebrities & Brands: 10 February 2015

6. 6
• Proprietor: - Not disclosed. e.g.
Holdco Ltd.
• Personnage: Robyn Rihanna Fenty
• Personality: Rihanna
• Images: Name, face, voice,
signature, nicknames, trademarks,
etc.
Rihanna - an example
Protecting The Image Rights of Celebrities & Brands: 10 February 2015

7. 7
• Economic loss? YES
• Is image associated with the registered
personality? YES
• Is image viewable in Guernsey? YES
Rihanna - an infringement?
Protecting The Image Rights of Celebrities & Brands: 10 February 2015

8. 8
• Seek injunction in Guernsey Court
• Seek money judgment order
• Enforceable in UK - under Judgments
(Reciprocal Enforcement) (Guernsey)
Law, 1957
• Breach of order becomes contempt of UK
court
• IRO likely to be upheld in some US states.
Rihanna - possible legal action
Protecting The Image Rights of Celebrities & Brands: 10 February 2015

9. 9
• Katherine Heigl
• Photo taken leaving a pharmacy
store
• Heigl objected to the commercial
use of her image
• Duane Reade argued they were
entitled to as image was in public
domain
• Eventually settled out of court
Protection - an example
Protecting The Image Rights of Celebrities & Brands: 10 February 2015

10. 10
• Monkey ‘Selfie’
• Copyright disputed
• Obtained control over image by
registering in Guernsey
Protection - an example
Protecting The Image Rights of Celebrities & Brands: 10 February 2015

11. 11
Consider Harley Davidson
• Trade Marks and logo
• Key personnel images
• Commercial images
• Colloquial terms associated with the
brand
• Sounds distinctive to the brand
• Any other associated device, image
or characteristic.
What can we register?
How to Protect The Image Rights of Celebrities: 10 February 2015
Notes:
1. The Proprietor is the owner of the registered personality. It can be a company or a person. It is not public information.
2. The Personnage is the real entity behind the registered personality. It is not public information.
3. This is the personality registered on the Image Rights Register in Guernsey. It is publically viewable.
4. These are the names and trademarks and other identifiers by which the personality is known.
5. People associated with the company such as the founders (Messrs. Davidson & W.S. Harley) and current CEO (Keith Wandell)
6. Phrases not covered by trademark, plus nicknames given by Harley Davidson users to parts of the motorcycle
7. Harley Davidson famously failed to trademark the distinctive sound of the motor. They could register sounds as an image
instead.
8. The online store and existence of external licensing agreements can be registered as images
Fig. 1
Proprietor
HD#USA#
LLC#
Harley#Davidson#
Inc.#
Personnage
Images
Harley#
Davidson#
NOTES
1
2
3
4
5
6
7
8
9
Personality
Photograph#
Other miscellaneous
images
etcAny#others#
Name, Logos & Trade Marks etc
Logo#
‘Harley#Davidson’,#
‘Harley’,##‘HDMC’#
‘Electra#
Glide’#
etcPhrases including
nicknames/slang terms
‘Fathead’,#‘Shovelhead’,#
‘Panhead’#
‘Snogs’,#‘Pipe#Mice’,#
‘Susie’s#Knobs’#
Sounds etc
Tickover#–#‘Potato#
Potato’#sound#file#
Full#throOle#
sound#file#
Motorclothes:#‘Freedom#
in#Every#SRtch’#
Merchandising: HD online store
+ external licensing
etc
Corporate Divisions etc
‘HOGTN’#
NYSE#Ticker#symbol##
‘Harley#Davidson#
Motorcycles’#
‘Harley#Davidson#
Financial#Services’#
People etc
‘Harley#Davidson#
FoundaRon’#
HD#TV#channel###

12. 12
• Property rights that protect an evolving
personality or brand
• Property you can prove by virtue of a
register
• WIPO/TRIPS compliant
• Money judgments enforceable
• Tax planning opportunities
• Simple to register.
Summary - Key Points
Protecting The Image Rights of Celebrities & Brands: 10 February 2015

13. Tel: +44 1481 740490
Email: enquiries@icondia.com
You’d
be
nuts
not
to!
A presentation for: