Famed photographer and director Estevan Oriol, whose iconic photographs capture the street scene and hip hop lifestyle, has recently instituted legal action in the United States against Swedish fashion brand H&M, as well as Brandy Melville, a fashion chain store, for infringing the copyright in his photograph “L.A. Fingers”.

H&M and Brandy Melville have allegedly made adaptations of Mr Oriol’s original copyright work by applying images similar to his well-known 1995 photograph, which is considered by many to be symbolic of Los Angeles street culture, to ladies clothing and offering the garments for sale in retail stores worldwide.

According to Mr Oriol, the images being used by H&M and Brandy Melville are clearly “copies” of his iconic photograph, which depicts the fingers of a model forming the letters “LA”. Mr Oriol also used his “L.A. Fingers” image on a line of clothing in 2006 and it has been published, legally, in various magazines worldwide.

Click here to view picture, image from Brandy Melville's catalogue

Click here to view picture, “LA Fingers”- Estevan Oriol

Whether or not the courts will agree with Mr Oriol remains to be seen but, if this matter were to be considered on the basis of South African copyright law, a number of considerations would be relevant.

In short, in order to be protected in terms of the Copyright Act of 1978, the work in question must be a “work” as defined in the Act, it must be “original” and the ownership in the copyright must be established.

Photographs are specifically included within the definition of an “artistic work” and the copyright in a photograph is owned by “the person who is responsible for the composition of the photograph”. The exception to this “general rule” is contained in Section 21(1)(c) of the Copyright Act, which provides that the person who commissions the taking of a photograph and who pays (or agrees to pay) for it in money or money’s worth, is the owner of the relevant copyright.

According to Section 7 of the Copyright Act, copyright in an artistic work affords its owner the exclusive right to do or to authorise the doing of a number of acts, including “making an adaptation of the work”.

The question of originality often hinges on the facts and circumstances of each case and generally does not require astounding levels of innovation, but rather a degree of individual labour and effort (as opposed to mere copying, for example) on the part of the artist or author of the work. The subject matter of the work should have some substance and not be trivial or commonplace and the courts are required to make a value judgment in assessing this.

Mr Oriol presumably owns the copyright in the photograph and was not commissioned by a third party to take it. In addition, his photograph is not, it is submitted, merely trivial or trite in nature and he certainly would have expended a degree of effort in its creation. The question would then be whether or not Mr Oriol’s copyright has been infringed.

On face value, Mr Oriol’s photograph, an artistic work, appears to have been adapted by H&M and Brandy Melville and applied to articles of clothing.

The merits of Mr Oriol’s case would appear to be fair. However, certain additional questions and considerations may also be relevant. For one, is the “L.A. Fingers” gesture commonplace? Is it widely used? If it is, did H&M and Brandy Melville copy Mr Oriol’s photograph or did they, with no reference to, or knowledge of, his artistic work seek to capture or depict a (commonplace) hand gesture that is in keeping with current trends and popular culture (and therefore a fashionable choice for their t-shirts)?

Considerations such as these often render copyright infringement matters far from clear cut and, given that Mr Oriol has used his photograph in respect of his own range of clothing in the past, at least in South Africa, he could consider relying on the common law rights he may have acquired in this image as an unregistered trade mark used in relation to goods. The common law delict of passing-off, depending on the extent of Mr Oriol’s use of the “L.A. Fingers” image, would offer an alternative route to him in this country. It is certainly arguable that members of the public would assume that H&M and Brandy Melville obtained Mr Oriol’s authorisation to use the image and that their goods are approved by him or even that H&M and Brandy Melville are stockists of his clothing range.

It is foreseeable that, with the rise of communications and social media, works of art seeking to capture and document popular culture, through their own popularity and by virtue of their ability to define people’s interests, views and lifestyles, may become increasingly vulnerable to copyright infringement. After all, if a generation identifies with an image, if it captures the prevailing culture and “coolness” of the day, who wouldn’t want to “be there, do that, and get the t-shirt”? Trendy artists should therefore be on the alert if they wish to protect their intellectual property rights and the artistic integrity of their works. Conversely, retailers may be well-advised to steer clear of using protected artistic works without having obtained authorisation to do so.