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
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;  All SA 126 (T)
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