It’s been well reported that the singer Rihanna has sued the UK retail chain Topshop for US$5 million in damages for the unauthorised use of her image on a t-shirt. Rihanna is apparently suing for passing-off, the argument being that people seeing the t-shirt are likely to assume that she has endorsed the brand. This may have got you wondering what the law is in South Africa on the issue of unauthorised endorsement.
The celebrity whose photo is used without permission in order to promote a brand may possibly be able to claim copyright infringement. A photo does, of course, enjoy copyright, and it is an infringement of copyright to make unauthorised copies of the photo, or to sell articles that feature unauthorised copies of the photo. If there is an infringement, the owner of the copyright is entitled to an interdict (a court order preventing the activity), as well as damages. But copyright infringement proceedings will only be an option where the celebrity actually owns the copyright in the photo that has been used. Although some celebrities may own the copyright in certain photos of themselves – for example photos that form part of some kind of official collection - there are likely to be thousands of photos of them in which they don’t own the copyright. So, copyright infringement claims are likely to be rare.
Another possibility may be trade mark infringement, although there must, of course, be a trade mark registration. It is possible for a celebrity to register a photo or likeness of themself as a trade mark and this is, in fact, becoming increasingly common. A trade mark is, of course, registered for particular goods or services, and the trade mark owner must have a genuine intention to use it for those goods or services. There is an infringement of a trade mark registration if another party manages to cause consumer confusion, for example by using the same trade mark or a similar trade mark in relation to the same or similar goods or services. This means that the use of a photo that is different from the one that has been registered may still be an infringement. Celebrities would be well advised to register photos or likenesses of themselves as trademarks, certainly for those goods where merchandising is most likely to occur, such as clothing.
A further possibility is passing-off, which is the cause of action Rihanna has relied on in the UK. Passing-off occurs where one party owns a brand which enjoys a reputation or goodwill, and another party manages to cause confusion through the use of something similar. Passing-off can certainly occur in the context of celebrity endorsement, and there was a famous case in the UK where the Formula One driver, Eddie Irvine, sued a radio station that used his image in a print advert for the station - in that case the court accepted the argument that people would assume that he had endorsed the radio station. In deciding whether or not there has been passing-off in a celebrity endorsement case, the court will consider whether the public is likely to assume that the particular celebrity endorsed the product in question. In my view, a court will have little difficulty with the notion that the public is likely to assume that an entertainer has endorsed a fashion brand - the concept of celebrity endorsement is, of course, well-established these days, and it goes well beyond the entertainers and sportsmen to political figures and other luminaires. But passing-off proceedings are never easy to bring because they require evidence of usage and reputation.
South African law also recognises the right to identity. There have been a number of cases where this has come up, including a very old case where a man successfully sued a firearms shop that made unauthorised use of a photo of him in an advert for the business, and a more recent case where an attorney was able to use his right to identity to stop his former law firm using his name. In a well-publicised case former Miss South Africa, Basetsana Kumalo, sued Cycle Lab for using a photo of her in an advert without her consent, and the court held that her right to identity had been violated because the advert suggested endorsement. This right to identity that we have in South Africa is somewhat similar to the ‘publicity right’ that exists in US law. An example of this came up in a 2012 case where the Hebrew University - to whom Albert Einstein had bequeathed all his rights - claimed that Einstein’s publicity right had been violated by a company that used his image without consent. That claim failed because the court held that the publicity right expires 50 years after death.
Lastly, there are possibilities under the Code of the Advertising Standards Authority (ASA). The ASA Code is a bit vague on this, but it says that an advertiser cannot portray a live celebrity without their consent, except in cases that portrayal doesn’t interfere with the celebrity’s right of privacy or amount to an unjustified commercial exploitation - it goes on to say that if the celebrity is dead the portrayal must not offend people connected with the deceased. In one case, a former CEO of SAA who had been in the news for all the wrong reasons complained when Nando’s ran an ad that said ‘Chicken or beef Mr Nqdula, we suggest chicken peri-peri’. The complaint was dismissed because the ASA felt that this was not exploitative, but rather a witty and neutral commentary on a public figure and a public issue.
So there are certainly remedies available to the celebrity whose photo or likeness has been used without consent in connection with a business or product. But celebrities would be well advised to get trade mark registrations for photos or line drawings – a trade mark registration not only provides a measure of certainty, but it also creates rights which are easy to enforce.