Are only the likes of Bob Marley afforded protection of their image even after they are gone?

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20 March 2015

A number of entities have knowingly used the image of the famous reggae singer, Bob Marley, on t-shirts and other merchandise, without the permission of the company Fifty-Six Hope Road Music Ltd., which had succeeded on Marley’s death to the business he had established during his lifetime dealing in memorabilia products bearing his name and image. The shares in Fifty-Six Hope Road Music Ltd. were inherited and owned by Marley’s children.

This issue was decided recently by the USA appeal court and the court awarded $300 000 in damages, more than $750 000 in profits, and more than $1.5 million in attorney’s fees, to the Hope Road company.

This case was decided on the basis of the intellectual property rights held by the Hope Road company and the fact that the use of Marley’s image was used as a trade mark and was associated with this company, even during Bob Marley’s lifetime. In particular the court held that consumers were falsely led to believe that the unauthorised use of Marley’s image was endorsed by the Hope Road company and this interfered with the company’s prospective economic advantage.

In South Africa, there is a similar approach to the rights in trade marks of this nature. If this case had been held before a South African court, our courts would have likely reached a similar conclusion, and would have ruled in favour of the Hope Road company, namely on the basis of the rights flowing from the Hope Road company’s long established usage of the Bob Marley name on memorabilia products.

Even though this case dealt with the use of an image of a person, this matter was decided on the basis of intellectual property rights and not on the basis of personality rights.

In South Africa the right to one’s image is protected under the common law of personality rights. A case that illustrates the protection afforded by these rights is the South Gauteng High Court case of Kumalo vs. Cycle Lab (Pty) Ltd.

In this case Julia Basetsana Kumalo, a celebrity and public figure who has built a successful career as a model, television presenter, magazine editor and businesswoman, visited the Cycle Lab store with the intention of purchasing a bicycle and related cycling items. While trying on cycling helmets, a man approached her and took her photograph. Cycle Lab thereafter incorporated this photograph in an advertisement for its store. Kumalo did not agree to the taking of her photograph, nor to its further use for advertising purposes.

The court held that the use of Kumalo’s photograph without her permission constitutes an infringement of her common law rights to her personality and identity as well as a violation of her constitutional right to dignity and privacy.

Furthermore, the Code of Conduct of the Advertising Standards Authority of South Africa makes provision for the protection and exploitation of an image of a person being used without permission and expressly requires that permission be obtained prior to the use of an image portraying any living person in an advertisement.

The question then remains, do the people who survive us after our death have any control over the use of our image? The answer is NO. Personality rights only apply to a person during his/her lifetime. It is only if the portrayal of the deceased’s image leads to deception and confusion with a business entity using that image, that a protectable right will be recognised.

The US court illustrated the basis on which it found the Hope Road company enjoyed a protectable right by contrasting its position with that pertaining to the imagery of the late Princess Diana. During her life and after her death, pervasive unauthorised use of her image took place. Even during her lifetime, Princes Diana did nothing to prevent such use of her image. This use diluted the perception that her image was endorsed by anyone and therefore weakened any association that consumers may have had with her image and her estate. There has been significant unauthorised use of Marley’s image. However it was not uncontested, as in Princess Diana’s situation, resulting in the rights to his image being preserved. Similar considerations would, I believe, apply under South African law.

In conclusion, enjoy your rights in your image for as long as you live, and if you want to enjoy any rights in your image from beyond the grave, use and register your image as a trade mark or secure the copyright to your photograph.

Quick summary:

The case of the unauthorised use of the Bob Marley image was decided on the basis of intellectual property rights. In South Africa one’s image can be protected on the basis of one’s personality rights, and the constitutional right to privacy and dignity. These rights terminate on death, unless preserved through other means such as registered trade mark protection which can be passed on to heirs, or under the common law of passing off, if the goodwill of a business can be proved by the party claiming the rights thereto.