PATRICK CONLIFFE
Irish Formula One racer Eddie Irvine received damages in the English courts, in 2002, on foot of his image being used by a radio station without his consent. Irvine was portrayed in a doctored photo, holding a radio to his ear carrying the words "Talk Radio", the precursor to TalkSport.
Irvine successfully argued the common law principle of “passing off” and the court held that the radio station’s advertisement confused the public and falsely portrayed Irvine as endorsing it, and he was awarded £2,000 in damages.
He and celebrities stars have had to apply to the costly High Courts of Ireland and the UK to protect their images using arguments based on unreliable common law principles without being able to rely on concrete legislation. The courts have struggled to fill this "image rights gap".
To succeed in a claim for passing off, the claimant must prove they have built an image, reputation or goodwill worth protecting and that the public would be confused as to whether the claimant was endorsing the product or not.
In Ireland, in 2001, Olympic gold medallist Mary Peters, who represented Northern Ireland and Great Britain at the 1972 Olympics, sued Ark Life assurance company for using her image without her consent in a promotional campaign. Ark Life ran with the title, "Remember when Mary Peters won Gold?" Her argument was that her reputation had been "pirated". The case was settled outside of court.
In 2008, Clare hurler Diarmuid McMahon brought a case against the Clare People newspaper for using his image in promotional material without his consent. The case was struck out, reportedly because a High Court action would have clashed with the Clare hurler's championship campaign. The Gaelic Player's Association has subsequently spoken up on how the issue of image rights needs to be tackled.
Recent cases include those of Diego Maradona, who successfully sued two Chinese online gaming companies for the unauthorised use of his image, and actress Scarlett Johansson, who is currently suing a French publishing company for portraying in a book an allegedly identical character to that of her own.
There still remains no legislation in Ireland or England that allows a person or company to register their image rights. Individuals enjoy certain privacy rights, and trademarks and designs can be registered, but characteristics and personal traits cannot be registered.
In November 2012, however, the Guernsey parliament approved the Image Rights (Bailiwick of Guernsey) Ordinance and the Guernsey Intellectual Property Office, which opened for business on December 3rd, 2012. It is the world's first registrable image rights system.
The legislation allows an individual or a company to register just about anything they want with respect to their image, costing from £100 to £2,000.
The rationale behind the legislation is that, firstly, one should have control over one’s image and how it is used and, secondly, one should have the capacity to earn a livelihood from that image. It allows for protection of an image of a natural person (living or deceased in the past 100 years) and also applies to corporate images, fictional characters and joint images, such as Jedward. Registrable rights include defining characteristics such as appearances, voices, gestures, expressions, faces, photos, cartoons, videos, signatures and distinctive personal attributes or characteristics of personality.
Take, for instance, English Premiership footballer Gareth Bale’s signature heart-shaped goal celebration (the subject of a current trademark application in England and the EU), where he gestures a heart shape every time he scores a goal. This can be registered as an image right in Guernsey without the evidential requirements of a trademark application. The holder of the image rights can then sell and license their rights as a legal commodity which they previously could not. It will add value, protection and clarity to their image and can also be used for succession planning and tax saving schemes.
Since its inception, the Guernsey Register has received applications from personalities such as British tennis player Heather Watson, DJs Tiesto and Afrojack and Greek classical guitarist Elefheria Kotzia. But the potential to register does not apply only to celebrities and sports stars, as the legislation has tried to make a distinction between a person's day job and the value of their image. For instance it recently had applications from the owner of a London hair salon and an English town councillor, who each wished to protect and place a value on their images.
The question of whether any judgment obtained on foot of an image rights infringement can be enforced in Ireland falls under international law and the international enforcement of judgments. Guernsey has statutory reciprocal enforcement links with several jurisdictions including England and Wales, Scotland, The Netherlands, Italy and Israel. Ireland is not on this list. However, because Ireland is a common law jurisdiction similar to Guernsey, it is possible any Guernsey judgment obtained may be enforceable here.
Enforcement aside, a court may query the value of one’s image if one did not register one’s rights in the only such register in the world. The US and Canada have implemented certain image rights and privacy laws to cater for high-value image-rights commodities. Irish and English law is out of touch with modern commercial realities when it comes to image rights and Guernsey may offer a welcome opportunity to those who value their image rights.
Patrick Conliffe is a solicitor and a Football Association registered lawyer in McHale Muldoon (Dublin & Manchester)