A BRIEF INTRODUCTION TO IMAGE RIGHTS IN SOUTH AFRICA Rachel Sikwane and Zaid Gardner, senior associates, Edward Nathan Sonnenbergs – www.ens.co.za

Our modern society has become transfixed with celebrity. The mass media lap up every little detail of news about actors, music stars, sport stars, politicians, royals, socialites and other famous people and sell it to consumers who eagerly await the next celebrity scandal. Business people and marketers also endeavour to cash in on the popularity enjoyed by such stars and have realised the value of associating their merchandise or trade-marks with the rich and famous. However, this creates difficulties when the attributes of an individual are used without their consent. In this context, image rights have become valuable commercial assets for internationally acclaimed athletes and celebrities. However, as with any asset of value, image rights are subject to some form of risk and the threat usually comes from the misappropriation of the star's image or image rights by both unscrupulous entrepreneurs and big business. As a result, new questions at law have arisen, including whether the law should protect celebrities against the unlawful use of their image rights and, if so, to what extent should such protection be granted. This article looks at the legal position in South Africa in relation to the management and exploitation of image rights of celebrities, as well as the protection available to those celebrities who may find themselves in a position where their image rights have been exploited or used without their authority. South African law does not expressly recognise the concept of a ‘right of publicity’ as is the case, for example, in certain jurisdictions in the United States of America or the protection based in tort that is available in Canada. There is also no specific legislative protection available to celebrities in these cases, apart from the possibility of trade mark protection under the relevant South African statute (discussed in more detail below). Accordingly, the basis for protection of image rights is found mainly in the common law (as in other jurisdictions with similar common law systems, including England and Australia), relating to the protection of the right to privacy. By way of example, under the common law, an

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infringement of the right of privacy would occur where there is an unlawful intrusion on an individual’s personal privacy or where there is an unlawful disclosure of private facts about a person, with the unlawfulness being judged in the light of the contemporary boni mores (good morals) and sense of justice of the community. There have been a number of landmark cases in South Africa that have led to the current legal landscape regarding the recognition and protection of image rights. In terms of South African law, every individual possesses a number of personality rights and protection against the infringement of such rights is available in terms of the common law right to privacy (mentioned above), as well as in the common law remedy for defamation, namely the unlawful, intentional publication of words or conduct about an individual which has the effect of prejudicing such individual’s good name or reputation. However, it was only in 2005 that the South African Supreme Court of Appeal finally established a clear legal principle regarding the protection of image and personality rights. In the case of Grutter vs Lombard, both parties had been practising as attorneys under the name “Grutter and Lombard”. Grutter terminated the partnership, but Lombard continued to use the name “Grutter” as part of his practice. In the Appeal Court, Grutter did not claim exclusive right to the name “Grutter” nor did he claim passing-off. Instead, his claim was that it was well-known that the name “Grutter” referred to him directly and he did not want to be associated with the firm anymore. The Appeal Court found that the matter rested on the violation of the right to privacy and went on to say that the right to privacy is merely a part of the concept of personality rights, and that a person’s protection of their identity against exploitation cannot therefore be separated from this right. The court found that Grutter was entitled to protection as identity is that uniqueness which identifies each individual from another, and identity manifests in different guises such as personality, character, name and so forth. An individual should, therefore, have an interest in their identity and how it is used. The court went on to say that any unauthorised use of such identity is a violation of that person’s right to determine who should or should not have access to his/her image, likeness and so forth. Thus it was confirmed that every individual has a right to identity, and consequently, when such identity is violated, then a personality right is infringed upon. More recently, a South African court found a retail outlet guilty of infringing a local celebrity’s right to identity and privacy in that the retail outlet had published a photograph of the celebrity, taken while she was visiting one of the retail outlet’s stores, and had used the photograph in an advertisement. The celebrity sued the retail outlet for the infringement of her personality rights in the form of identity, privacy and dignity. In this case, the court

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linked an individual’s personality rights to the Bill of Rights in the Constitution of South Africa and, specifically that section of the Constitution that provides for the protection of an individual’s inherent dignity and the right to have that dignity respected. From this very brief exposition of the protection of image or personality rights in terms of South African law, it is clear that celebrities do enjoy protection against the infringement of their personality rights arising from the unauthorised or unlawful commercial exploitation of their image rights. This will be the case where such conduct by a defendant has in fact infringed one or more of a celebrity’s personality rights, including their right to privacy, dignity and identity. Thus, where such unauthorised use has the effect of lowering the reputation of the celebrity in the eyes of the public, a defamation action would be available; and where such unauthorised use infringes the privacy of the celebrity, an action for breach of privacy would be available either under the common law or by virtue of the constitutional protection afforded to the right of dignity in the South African Bill of Rights. As mentioned above, South African law does not recognise any specific proprietary interest and property rights in the image, likeness, voice or other aspects of the persona of individuals, including celebrities. Consequently, protection for the patrimonial value of such interests must be found in other areas of the law. In certain circumstances, the image of a celebrity may be recognised and protected as a trade mark, and there are a number of examples in South Africa where sports stars, politicians, past-presidents and celebrity personalities have sought protection from the statutory laws governing trade marks. In this regard, trade mark law is a useful protectionist piece of legislation for the image rights of celebrities as it gives the celebrity a monopolistic control for a certain period of time, maybe even indefinitely, over their registered image trade mark and, thereby, preventing third parties from registering, attempting to register or making unauthorised use of an identical or similar image trade mark. The South African Trade Marks Act, 1993 makes provision for the protection of, amongst other things, devices, signatures, words as trade marks. Where celebrities themselves, or through their management companies, have registered their images as trade marks, trade mark infringement proceedings may be instituted against an infringer who makes unauthorised use of the image or an image confusingly similar to the registered image trade mark. While there is evidence that more and more celebrities have started to resort to registering their likeness, names or autographs as trade marks, in the absence of such specific precautionary conduct, a celebrity will be limited in their options for recourse against

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unscrupulous celebrity merchandisers to a common law claim for unlawful competition (which could, for example, be based on passing off). Despite these legal frameworks to protect and manage the image rights of sports stars, actors and other celebrities, it is still regarded by many industry experts that South African law does not do enough in this regard. The law seems to fail in the growing commercial reality that the exploitation of image rights by, for example, advertisers and vendors without the permission of a celebrity may cause patrimonial damages in the form of the dilution in the value of certain marketing aspects of a celebrity’s image, or result in the substantial loss of royalty earnings or licence fees associated with the lawful use and exploitation of a celebrity’s image. While other countries have made significant progress into recognising and creating laws to protect the image rights of stars and celebrities, South Africa does not yet recognise a so-called "stand alone image right". It is hoped that judicial acceptance of such a stand alone image right will find favour in South Africa and that our laws will align with the commercial realities of the modernised world in which we live. In the meantime, our sports stars and celebrities would be well advised to take the time to seek professional help and guidance in managing their commercial rights, especially when it involves aspects of their image and character merchandising rights, and use should be made of trade mark registrations, wherever possible, as well as a properly negotiated and structured agreements to ensure legitimate exploitation of such rights to the benefit of the celebrity.

Rachel Sikwane – [email protected] (senior associate: Intellectual Property Department) and Zaid Gardner – [email protected] (senior associate – Corporate Commercial Department) Edward Nathan Sonnenbergs - www.ens.co.za

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