#TecnoPayWangechi: The Right of Publicity

Recently, we were all treated to the famous rapper, Wangechi telling Tecno:

“Tecno better have my money. Pay me what you owe me. Don’t act like you forgot it.” This was with regards to the use of her image in a campaign, all traces of which have mysteriously disappeared like public money from Treasury coffers at the sound of a tender.

This brings us to an intellectual property dilemma, which would prevail between copyright and the right of publicity?

The right of publicity refers to the right to limit the public use of one’s name (includes nicknames and former names), image and likeness (drawings, paintings, prints, photos, videos, film etc.), voice, signature or identity; particularly for commercial purposes. The right of publicity is closely associated with the law of trademarks, under unfair competition and the doctrine of misappropriation; as the right of publicity enables a celebrity to prevent others from reaping unjust rewards by appropriation of the celebrity’s fame; and the right to privacy where the individual gets to control information about himself/herself, more accurately summed up as “the right to be left alone.”

To show infringement of the right of publicity, the following must be proven:-

  1. That the Plaintiff owns an enforceable right in the identity or persona of a human being;
  2. That the Defendant has intentionally used aspects of that persona without permission; and
  3. That the Defendant’s use of the Plaintiff’s persona is likely to cause damage to its commercial value.

The above requirements are of course, under American law, with a pervasive celebrity culture that has somehow found its way into the statute books. However, under Kenyan law, there is no express provision for the right of publicity. Any action would have to be under the tort of “passing off.” This position is quite similar to that in the United Kingdom, as was held in Fenty & Others v Arcadia & Another.

The Plaintiff, Robyn Fenty (known to most as Rihanna) sued a fashion boutique for using her image in selling their line of T-shirts. She had not given her consent for such use and she argued that the presence of her image on the t-shirt amounted to a misrepresentation that she was associated with it, encouraging members of the public to buy it and resulting in damage to her reputation and goodwill as a fashion icon, particularly among young women between the ages of 13-30. The Defendant, on the other hand, argued that the T-shirt was simply an item of high-fashion clothing liked by consumers and that there was nothing that overtly represented it to the public as being part of Rihanna’s official merchandise. Rihanna won an injunction prohibiting the sale of T-shirts bearing her image and likeness in both the High Court  and in the Court of Appeal.

In both cases, the courts held that the sale of the T-shirt by the Defendants amounted to passing off because it was likely to lead people to buy it in the false belief that Rihanna had endorsed it. Kitchin LJ (at the Court of Appeal) and Birss J (the trial judge at the High Court) stated that what is in issue in passing off is that the Plaintiff has a relevant goodwill; that the impugned activity involves a false representation that there is a material connection between the Plaintiff and the goods, which greatly influences the purchaser’s decision to buy.

I’m not saying that this case did this, but…

 

There is a huge elephant in the room: The Terms and Conditions stipulated here. Attention is drawn to this, in particular:

“By submitting your photos or videos, you give TECNO the consent to use your work. TECNO reserves the right to make any final decisions.”

If it were the photographer who submitted the work, then technically speaking under the law of copyright, the picture belongs to him/her. TECNO owes Wangechi nothing, because several things are assumed:

  1. Wangechi posed for the picture and gave consent;
  2. The photographer secured all relevant rights from Wangechi to the picture before submitting it to TECNO

The problem with this line of argument (as I’ve seen in the Nairobi Wire, which authoritatively states that“…But The Law is Against Her”) is that the consent of the subject must be sought, unless the rights are assigned through a release, or otherwise. In Wendt v. Host International, Inc., although a production company holding the rights to a popular TV series licensed the rights to another company to make life-size robotic replicas of the characters, the court held that the right of publicity of the actors who portrayed the characters were infringed. The TV production company ought to have secured a release from the actors. Similarly, the photographer ought to have secured a release from Wangechi, her management, or whoever has the image rights before submitting the pictures to Tecno.

Suppose sufficient releases had been obtained, copyright could be used as a good defence to infringement of the right of publicity where a person’s image is contained in the copyrighted work of another someone is the subject of a work that is wholly transformative (emphasis mine) in which case, the right to freedom of expression and copyright will prevail. A good example would be the “Obama Hope” poster.

kindofbloop_obama-20100706-184513

Image sourced from: http://waxy.org/random/images/weblog/kindofbloop_obama-20100706-184513.png

The key distinction to be made is whether the work’s transformative value is less likely to interfere with the economic interest protected by the right of publicity (emphasis mine). In ETW Corporation v. Jireh Publishing, Inc.,  a painting of Tiger Woods was held to be significantly transformative, whereas in Comedy III Productions, Inc. v. Gary Saderup, Inc., a charcoal drawing reproduced on a T-shirt was held tp have had no significant transformative or creative contribution on the artist’s part and instead exploited the celebrities’ fame for endorsements.

On a prima facie basis, it is just a picture of Wangechi. There seems to be no transformative element to the nature of the work and therefore, there is a strong case to be made for infringement. (Disclaimer: This is a statement of opinion, not a fact).

wangechi11

Image sourced from Wangechi’s twitter feed: @WangechiKenya  (It had mysteriously disappeared from Tecno’s pages).

Closer home, the High Court of Uganda recently ruled in Asege Winnie v Opportunity Bank (U) Ltd & Another (HIGH COURT CIVIL SUIT NO. 756 OF 2013) [2016] UGCOMMC 39  on image rights. Here, the court categorized the personality right comprising as both the right of publicity and the right to privacy, which are enforced in common law under the tort of passing off. The court stated while the copyright in the Plaintiff’s image was held by New Vision newspapers, it was meant for news and recognizing her achievements as a farmer; such rights could not be used to promote the Defendant’s new agricultural banking product which capitalized on the Plaintiff’s fame as a noted farmer. The court found that the Defendant had breached the privacy rights of the Plaintiff and had engaged in misrepresentation, passing off and false endorsement, and awarded the Plaintiff 5% of the proceeds of the campaign as royalties, Ug.Shs.80,000,000/- for invasion of privacy, Ug.Shs. 50, 000,000/- as general damages and Ug.Shs.20, 000,000/- as aggravated damages.

Wangechi would be successful if she brought an action under the tort of passing off. Clearly, she did not authorize the use of her picture for commercial purposes, which Tecno fully exploited in promoting the line of devices.

 

P.S. I have used a lot of American cases because the laws surrounding the right to publicity are well developed in that jurisdiction.

Martin Maitha

Mr. Maitha is an Advocate of the High Court of Kenya. He specialises in legal research and writing, and has a keen interest in corporate, commercial, media and ICT law.

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About Martin Maitha 16 Articles
Mr. Maitha is an Advocate of the High Court of Kenya. He specialises in legal research and writing, and has a keen interest in corporate, commercial, media and ICT law.