South Africa: Can A Person's Image Be Registered As A Trade Mark? The South African Perspective...

Last Updated: 6 April 2017
Article by Vicky Stilwell
Most Popular Article in South Africa, April 2017

Those with an interest in intellectual property will be aware of the recent disagreement in the US courts between the representatives of Marilyn Monroe's estate and the alleged unauthorised use by AVELA of Marilyn's image.

Although the Marilyn Monroe dispute is an intriguing one, it gives rise to another interesting issue - whether a person's image or likeness can be protected as a trade mark and, if so, to what extent.

It is trite that in South Africa, as in many other countries, a person can rely on his or her personality rights to prevent the unauthorised use of his or her image whilst he or she is alive. The problem is that personality rights cease to exist when a person dies. In the case of famous people like politicians, actors and other celebrities, it is not uncommon for third parties to use their image or likeness on memorabilia or other commemorative items after their death and from a personality rights perspective, this is not necessarily problematic. A perfect example in the South African context is the image of the late Mr Nelson Mandela, which has, on an increasingly prolific basis since his death in 2013, been stuck to almost every conceivable object known to man and then sold to the public as "memorabilia". In the case of Mr Mandela, countless businesses and individuals have produced and sold items featuring his image and in many cases their intentions seem to have been less than honourable, despite the fact that they claim to be celebrating the life of the great man and promoting his charitable and humanitarian causes.

So this begs the question, what can be done to protect a famous person's image after his or her death? Is it possible to protect it and acquire stronger rights by registering it as a trade mark?

Looking briefly at the situation in the United States, section 43 of the US Trademarks Act prohibits the use of false designations of origin and false descriptions where the use of such designations is likely to confuse the public. Celebrities have relied on this section to sue for trade mark infringement when others use their persona to suggest a false endorsement or affiliation with goods or services.

The South African Trade Marks Act does not contain an equivalent provision, but the common law principles relating to passing-off, and various other legislation and regulations in South Africa prohibit the use of false or misleading trade descriptions and, in the correct circumstances, these principles can be used to prevent the unauthorised use of a person's image or likeness.

The United States courts generally hold the view that a celebrity likeness can function as a trade mark, but only if it is used to identify the source of particular goods or services and only if the same image is used consistently as a source indicator, so as to create a continuing and distinct commercial impression1.

The Second Circuit Court of the United States Court of Appeals in Pirone v MacMillan Inc, which dealt with the image of the famous baseball player Babe Ruth, stated that "unlike a stylized flying horse or similar picture marks, an individual's likeness is not a consistently represented fixed image – different photographs of the same person may be markedly dissimilar. Thus a photograph of a human being, unlike a portrait of a fanciful cartoon character, is not inherently "distinctive" in the trademark sense of tending to indicate origin...Under some circumstances, a photograph of a person may be a valid trademark – if, for example, a particular photograph was consistently used on specific goods".2

The South African courts have not yet been called upon to rule on a dispute involving the use of a celebrity's image in the context of trade mark law and principles, so to consider the question from this perspective, it is necessary to summarise the basic principles applicable to trade marks in South Africa. The South African Trade Marks Act defines a mark as "any sign capable of being represented graphically, including a device, name, signature, word, letter, numeral, shape, configuration, pattern, ornamentation, colour or container for goods or any combination of the aforementioned"3. The Act goes on to define a trade mark as "...a mark used or proposed to be used by a person in relation to goods or services for the purpose of distinguishing the goods or services in relation to which the mark is used or proposed to be used from the same kind of goods or services connected in the course of trade with any other person"4.

The Act therefore does not specifically state that an image can be protected as a trade mark but it is well established that the signs specified in the definition of a mark are not exhaustive and that provided that something is capable of being graphically represented, it can fall within the definition of a mark. Over the years the South African courts have developed additional jurisprudence on this matter and the principle has been established that not only must the sign be capable of being represented graphically but it must also be sufficient to enable the public to determine with sufficient certainty what the scope of the monopoly is5.

In principle a person's likeness or image may be registered as a trade mark and it has, in fact, been done in a few instances in South Africa. For example, a photograph of the likeness of the late Mr Nelson Mandela has been registered by the Nelson Mandela Foundation in classes 16, 35, 36 and 41. The image that is the subject of the registrations, as it appears on the South African Trade Marks Register, is depicted below.

On the face of it the situation seems simple. But the questions that arise are whether a representation of a person's image or likeness is registrable as a trade mark and, if so, how far the proprietor's monopoly extends. For example, would use of a stylised version of a photographic image that is registered, for example, constitute infringement?

As mentioned, goods featuring stylised or silhouette versions of Mr Mandela's image are widely available for purchase in South Africa and internationally, and investigations reveal that few, if any, emanate from, or are authorised by, the Nelson Mandela Foundation. If the photograph of Mr Mandela was registered in all classes covering the items of "memorabilia" featuring his image, would the foundation have been able to rely on the registrations to prevent the use of any image of him in the course of trade?

South African trade mark law, like the trade mark laws of most other jurisdictions, provides that a registered trade mark is infringed by the unauthorised use, in the course of trade, of an identical or a confusingly similar trade mark in relation to goods or services in respect of which the trade mark is registered or in relation to similar goods or services where such use is likely to give rise to confusion in the minds of the public.

So just how far does the monopoly in an image or likeness that is registered as a trade mark extend?

The answer to this question is, in my view, twofold. Firstly, would a photograph such as the one of Mr Mandela registered by the Nelson Mandela Foundation constitute a valid and enforceable trade mark? Secondly, if the answer to the first question is in the affirmative, would the use of a stylized or silhouette version of the person's image constitute trade mark infringement?

Dealing with the first question, it is clear that an image or photograph of a person in principle falls within the definition of a mark. Moving on to the second question, provided that the image is used, or intended to be used, in the course of trade in relation to goods or services and is capable of distinguishing the proprietor's goods and services, it would fall within the definition of a trade mark.

In my view, the same principles applicable to normal logo or device trade marks are applicable. It is well established that a proprietor cannot claim a monopoly in a broad concept. Therefore, using the same example as the court used in the Babe Ruth Case, if one party uses and registers a device or logo featuring a depiction of Pegasus, they cannot necessarily prevent third parties from using or registering another logo or device featuring Pegasus that is totally different in appearance.

It must therefore follow that the situation in South Africa is similar to that in the United States – that in the context of a photograph or image of a celebrity that is registered as a trade mark, the applicant would have to show that the particular representation sought to be registered is used or intended to be used consistently in relation to the relevant goods or services and, as is the case in the United States, the proprietor's rights would be limited to that particular representation or to a version that is substantially similar to the registered version.

Is it worth a celebrity or an association representing a celebrity registering the likeness of that celebrity as a trade mark in South Africa? It seems that the answer is that it would be, provided that the image registered is used consistently in relation to the goods or services in relation to which it is registered, but it is clear that the mere fact that an image of a celebrity has been registered is not, per se, sufficient to entitle the proprietor to prevent third parties from using any image of that celebrity.

Originally published September 2016

Footnotes

1. Understanding Trademark Law, Mary LaFrance

2. Pirone v MacMillan Inc 894 F2d 579

3.Section 2(2), Trade Marks Act 194 of 1993

4. Section 2(2), Trade Marks Act 194 of 1993

5. Triomed (Pty) Ltd v Beecham Group PLC; [2001] All SA 126 (T)

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.