Where personality & patrimony converge
14/10/2011

In the case of Julia Basetsana Kumalo v Cycle Lab (Pty) Limited [South Gauteng High Court, Johannesburg, Case No. 31871/2008], the court explored the interesting dynamic that exists between the infringement of a personality right and a related claim for patrimonial loss.

The facts were uncomplicated and largely undisputed. The defendant photographed the plaintiff, a celebrity, while she was shopping at its store. The defendant subsequently included the plaintiff's photograph in an advertisement for its store, which was published in a magazine and a brochure. While the plaintiff had no objection to being photographed, she did not consent to the use of the photograph for the purpose of advertising. The plaintiff relied on the actio iniuriarum and alleged the wrongful infringement of three separate personality interests, one of which was her identity. The court relied on Neetling’s ("The Law of Personality")(2 ed)(2005) 36 in holding that identity, as a specific personality interest, includes a person's physical appearance or image and is considered the subject of a separate right of personality.

The facts of the matter are not unprecedented in our law. The court relied on a number of decided cases and referred to academic authors in concluding that a person's right to identity is infringed if an element of that person's identity is used to create the false impression that he supports or endorses the advertised product or service. The cases in point are commonly referred to as "false-endorsement" cases.

The court concluded that the defendant's unauthorised use of the plaintiff's image in an advertisement was wrongful and infringed her personality rights, including her right to identity.

Two issues arose that required the court to distinguish between personality rights, on the one hand, and intellectual property rights, on the other, and the remedies available to a plaintiff in each case. The first of these arose from a defence raised by the defendant and the second from the fact that the defendant claimed patrimonial damages for the infringement of a personality right. The two issues are closely related.

The defendant argued that, because the plaintiff had chosen to exploit the intellectual property that attaches to her name, image and persona through a company, Maleshwane Trading (Pty) Limited, she had deprived herself of the right to control the use of her identity and, therefore, the right to sue for infringement. The court dismissed the argument by pointing out that personality rights are inseparably bound up with a person's personality and cannot be transferred. By contrast, intellectual property rights can be transferred. In claiming patrimonial damages, the plaintiff alleged that her name and likeness have proprietary value and that she sustained special damages in the amount of R250 000, being the diminution of that value caused by the defendant's unlawful conduct. The court recognised that a debate exists around whether an action for special damages arising out of the infringement of a personality right should be brought under the actio iniuriarum (the action concerned with the infringement of personality rights) or the actio legis Aquiliae (the general delictual action concerned with patrimonial damage). The court found it unnecessary to consider the issue as there was no evidence that the plaintiff had suffered any loss. In distinguishing again between personality rights and intellectual property rights, the court went on to remark that the defendant's conduct may, in addition to an iniuria, amount to passing-off (without saying whether this would be brought by the plaintiff herself or the company that controls her image rights). The elements of a person's identity, if that person is a celebrity, acquire commercial value and form part of the goodwill of the person or company that owns the rights. Whether or not harm to goodwill of that nature will eventually be held to constitute passing-off or some other unspecified delict remains to be seen.

What is clear is that damages in false-endorsement or similar cases will be as difficult to prove as damages in passing-off cases. In passing-off cases, it is extremely difficult to prove or quantify damages. In the case of Irvine v Talkport Limited [2002] 2 All ER 414, referred to by the court in the Cycle Lab case, the plaintiff successfully sued the defendant for passing-off on facts materially no different to those in the Cycle Lab case. The plaintiff produced evidence of endorsement fees that he had received in the past from the use of his name and image. He argued that the amount that he would have charged the plaintiff for the use of his name and image, had the defendant approached him for consent, represented the damage that he suffered. The court awarded the plaintiff damages based on what it believed would hypothetically have been fair under the circumstances, i.e. a reasonable royalty. The fact that the defendant would not have been prepared to pay that amount was said to be irrelevant. An interesting defence to the plaintiff's argument in the court of first instance was that it involved circular logic: the plaintiff’s entitlement to a fee justifies the cause of action, which in itself justifies the fee. The court dismissed the argument.

It is precisely this circular-logic defence that will non-suit a plaintiff claiming damages on the same facts in South Africa. In passing-off (and other delictual) cases, damages must be proved and quantified. The notion of a reasonable royalty does not exist at common law. The reality is often that the advertiser would not have used the image if payment had to be made.

The strongest recourse available to a well-known personality is possibly a complaint in terms of Clause 11 of the Advertising Standards Authority’s Code of Advertising Practice (“the ASA Code”), which prohibits advertisers from portraying living persons, without their express prior permission. Only limited exceptions apply and there is an express prohibition against the “unjustifiable commercial exploitation of the individual’s fame or reputation”. The provisions of the ASA Code allow for quick action to be taken but there is no provision for compensation.

Certain elements of a person’s identity can, in principle, be registered as trade marks. Personal names and signatures are obvious examples. Although unconventional, a person’s likeness (face) and voice may be capable of registration. Examples of elements of identity that probably cannot be registered as trade marks include a person’s hairstyle and dress sense. A potential problem with certain of these marks is that they will not in all cases satisfy the origin function of a trade mark. A singer, for example, could register her name as a trade mark in class 41 (for entertainment services) and class 9 (for CDs) but can she do so in classes 3 (cosmetics), 14 (jewellery) and 25 (clothing), for example, simply because she might have the intention of endorsing the cosmetics, jewellery and clothing rmanufactured by others? According to the test laid down by the Supreme Court of Appeal in the case of Verimark (Pty) Limited v BMW AG [2007] SCA 53 (RSA), i.e. that a trade mark serves to identify the trade origin of goods, the answer may be “no”.

This demonstrates that statutory trade mark protection will not, in most cases, supplement the scant offerings of the common law in false-endorsement cases by creating an entitlement to royalties.

Conduct that infringes a person’s right to identity by using an image in a promotion is not usually defamatory or insulting. As a result, any claims for financial remuneration to compensate for perceived loss are often so low that they do not justify legal action. The message is that it would probably be cheaper for advertisers to do unlawfully what should be done lawfully.

Policy perhaps dictates legislative intervention.
Alan Smith
Partner
Dale Healy
Partner