There was an interesting decision in the USA recently on the issue of what Americans call ‘publicity rights’. It involved Albert Einstein, a man who died some 57 years ago, and who bequeathed his literary rights and property to the Hebrew University. The problem arose when GM used a photo of Einstein’s head, superimposed on a buffed and tattooed male torso, in an ad, together with the phrase ‘Ideas are sexy too’. The Hebrew University claimed that GM had infringed Einstein's publicity rights, which it owned.
A US court decided that the publicity right expires 50 years after the death of the individual. This despite the fact that in the USA copyright lasts for 70 years from the date of death of the author – the court said that the publicity right, although in some way akin to an intellectual property (IP) right like copyright, is also a personal right that relates to dignity and autonomy. This, of course, meant that Einstein’s publicity right had expired, and that GM had no case to answer. The court said that a period beyond 50 years would be unreasonable, and that after nearly 60 years Einstein’s ‘persona has become thoroughly ingrained in our cultural heritage’, with the result that it ‘should be freely available to those who seek to appropriate it as part of their own expression, even in tasteless ads’ .
What’s the law on this in South Africa? Cases of unauthorised endorsement make the headlines from time to time, but it’s not always clear what the basis of the complaint is - defamation, passing off, brand devaluation. In one well-publicised case, singer PJ Powers sued an advertising firm for using her name without consent in a print ad that appeared in urinals; in another, soccer boss Jomo Sono complained about a newspaper ad that linked his name to a beer brand. The Constitution does recognise the right of dignity, and South African courts have recognised that people have personality rights, one of which, the so-called right of dignitas, covers a person’s identity. In a very old decision, a man successfully sued a firearms shop which used a photo of him holding a revolver in an ad for its business. In another case, an attorney was able to enforce his identity right against his former law firm that continued to use his name. In a recent case an ex-Miss SA, Basetsana Kumalo, successfully sued Cycle Lab for using a photo of her in an ad. The court in that case held that Kumalo’s right to identity had been violated because the ad created a wrongful impression of endorsement. The court said that the right to identity is personal and that it cannot be transferred. Which means that the law in South Africa is not quite the same as it is in some other parts where it is seen as a commercial right that can be transferred - as we have seen, the Hebrew University might have been able to assert publicity rights in the USA up to seven years ago.
So much for personality rights, how about IP rights? IP rights may certainly be relevant in cases of unauthorised endorsement, and these rights can outlive the celebrity. For starters, there’s the common law action of passing off, which makes it unlawful to falsely suggest that there’s a commercial link between an individual and a product. With passing off no registration is required, simply a reputation or goodwill. There was a famous case in the UK a few years back where a Formula One racing driver successfully sued a radio station for using his photograph without authority in an advert, with the court recognising that the public might assume that he had endorsed the radio station. Locally in a case involving SAFA, a court accepted that character merchandising is understood in this country. But passing off cases are likely to depend on a number of practical issues. The public may, for example, more readily assume a commercial connection between the celebrity and the product if: the celebrity is still alive; the celebrity is someone who is likely to endorse products (David Beckham as opposed to the Pope); the goods are of a type where endorsement is likely (watches or fragrances rather than posters or figurines); if the ad shows the celebrity actually using the product rather than simply as a character in a story.
Trade mark law may also be relevant, because many celebrities have registered photos or line drawings of themselves. In some cases these registrations belong to the celebrities themselves, but in other cases they belong to film or management companies. In the case of a dead celebrity, it is quite conceivable that there are trade mark registrations for names or images in the name of the celebrity’s estate or representatives. Trade mark registrations are very powerful, but there are limitations. For example, the right to sue for infringement is defined by the products for which the trade mark is registered. In addition, the law does allow a certain amount of incidental or non-trade mark usage.
The Advertising Standards Authority (ASA) Code may be relevant too. The Code provides that no advertiser can portray a live celebrity without their consent, unless it doesn’t interfere with that person’s right of privacy or doesn’t amount to unjustifiable commercial exploitation. The Code also says that, in the case of a dead celebrity, an advertiser must not offend people connected with the deceased. A famous ASA case dealing with endorsement involved the former CEO of SAA, Khaya Ngqula, who at the time was in the news for all the wrong reasons. Nando’s ran an ad that said ‘Chicken or beef Mr Ngqula, we suggest chicken peri-peri’, and the ASA held that the ad was fine because it was not exploitative, but rather a witty and neutral commentary on a public figure and a public issue. Lastly, copyright law may be relevant as there may be copyright in the photos or film footage that the advertiser wishes to use.
If you do want to use a celebrity in an ad without getting their consent (or the consent of their heirs) you need to be careful. You certainly need to consider copyright law if you plan to use existing materials like photos rather than creating your own materials, perhaps with look-a-likes. You should run trade mark searches to see what, if any, registrations there are. And you need to consider what the chances are that the public may assume that endorsement has occurred.