Some time ago, Charlize Theron featured in an advertisement for a gambling business entity. However, would it be playing roulette to use her name or likeness without her permission?
The Kumalo case
Recently, in the decision of the South Gauteng High Court in Kumalo v Cycle Lab, the well-known celebrity Basetsana Kumalo instituted court proceedings against a retailer of bicycles and cycling products. While looking at their merchandise, someone took a photo of herand the shop then used the photo in a magazine advertisement. Following this, Kumalo alleged that she had suffered an infringement (iniuria) to her personality rights.
The court confirmed that the remedy known as the actio iniuriarum could be used to protect an individual’s right to privacy, dignity and identity. It held that the right to identity is infringed when someone’s image is used, without his permission, for advertising purposes, thereby creating the false impression that heauthorised the advertisement or endorsed the product. Closely related thereto is the right to privacy. The court then found that as Kumalo’s image was publicly exposed without her permission, both her right to identity and privacy had been infringed.
The court also considered the question of whether she had surrendered her right of privacy, in other words whether she was not entitled to a reasonable expectation of privacy while shopping. It was, however, held that although as a public figure she should accept that she will receive more attention when appearing in public, this would not justify the unauthorised use of her image in an advertisement. The court, holding in favour of Kumalo, also rejected the argument that the remedy is only available if an individual’s image is portrayed in a degrading or humiliating manner.
How will the dice fall?
It was never in doubt in our law that personality rights would be infringed where an individual’s image was used in a degrading context. However, the Kumalo case takes the matter one step further, and makes it clear that third parties may not create the false impression that a celebrity, or any individual, for that matter, has endorsed their product.
It is not clear if this remedy also applies where there is no apparent endorsement. For example, it could be argued that photos of well-known rugby players featured in electronic rugby games are merely depictions of the players in a context in which they have become famous. The depictions do not necessarily create the impression that they are endorsing the electronic product, with the effect that the action iniuriarum may not apply.
In such an instance, the player could consider lodging a complaint with the Advertising Standards Authority (ASA). The ASA Code hinges on the “unjustifiable commercial exploitation of the person’s fame or reputation”. However, is it unreasonable to depict a player such as, for example, Bakkies Botha as a “mere” player in an electronic game of rugby? It certainly seems reasonableas he is not endorsing any product, including the computer game. The ASA may therefore not be the best forum to lodge a complaint in these circumstances and it is also not a classical type of passing off.
If the sports personality in question has registered his name or even his nickname as a trade mark, he may be able to stop unauthorised use based on trade mark infringement (mentioned only indirectly in the Kumalo case). The registration of, for instance, John Philip “Bakkies” Botha, Pieter “Slaptjips” Rossouw, Tendai “the Beast” (rugby), Mtawarira, Katlego "Killer" Mphila, Itumeleng “Spider Kid” Khune (soccer), Gary “the Black Knight” Player and Ernie “the Big Easy” Els (golf) springs to mind, but it is also possible to register a player’s signature, or a likeness of him.
The potential problem here is that a registered trade mark must eventually be used by the player in order to retain its status on the Register of Trade Marks. For example, only if Bakkies Botha has registered and actually sells electronic games under his name, will he be able to prevent infringing use by someone else. A mere defensive registration of the name, i.e. only for the purpose of blocking others from using and registering the mark, will not assist him in the long run.
A related point is that trade mark protection extends only to goods or services identical or similar to those in respect of which the mark is registered. Therefore, as another example, a registration in relation to electronic games will probably not assist Bakkies if someone uses his name on energy drinks. Electronic games and energy drinks are clearly not similar.
The protection available to proprietors of so-called famous marks could also be relevant in these circumstances. Famous marks, which could include celebrities’ names and images, provide wider protection insofar as use of the mark in respect of dissimilar goods can also constitute an infringement. Applied to the beforementioned example, Bakkies’s fame may help to prevent use of his name in relation to energy drinks, even if it is only registered in relation to electronic games. He will, however also have to show that there is detriment to the mark or that an unfair advantage has been derived therefrom (so-called dilution protection). Also, he will only be able to rely on this remedy if he is actually using the mark himself in relation to electronic games. In this regard, the mere endorsement of electronic games may not suffice as this will probably not constitute bona fide use. In the absence of bona fide use, his registration can be cancelled and the famous mark protection will also fall away.
Taking the odds
Given that none of the above remedies will necessarily prevent the unauthorised use of a celebrity’s name or image, particularly in the absence of unfair advantage or a link between the unauthorised product and the celebrity, it may be an opportune time for our courts to extend the protection of personality rights to such cases. In other words, even if the situation is not degrading, or creates the impression of endorsement, the celebrity should be able to derive income for any type of merchandising of his name or likeness. Until such time, however, the odds appear to be stacked against celebrities, no matter who they are.