Court considers misuse of personality rights in advert

In Kumalo v Cycle Lab (Pty) Ltd ((31871/2008) [2011] ZAGPJHC 56, June 17 2011), cycling star Andrew McLean’s shop Cycle Lab (Pty) Ltd was called upon to defend claims by ex-Miss South Africa and business personality Basetsana Kumalo that her rights had been abused. The rights at stake were Kumalo’s identity, image and dignity.

At issue was whether a photograph of Kumalo taken while she was shopping in Cycle Lab and subsequently used for advertising the shop, without obtaining her explicit consent, was unlawful.

Kumalo’s lawyers claimed that the publication was an iniuria and sought damages on four separate grounds:

1. sentimental damages based on the actio iniuriarum (outcome: successful);
2. alternatively to No 1, constitutional damages arising from a violation of the plaintiff’s rights to dignity and privacy (not relevant because of No 1); 
3. patrimonial or special damages (outcome: not successful due to lack of evidence); and
4. unjustified enrichment (abandoned).

Although commented on in the judgment, claims based on passing off and trademark infringement were not pleaded. The amount of the damages award was held over for later determination.

Judge Boruchowitz’s analysis of the law and claims constituted a highly useful summary:

“... [T]he plaintiff’s image has been used in a misleading way. It generates the false impression that she endorses the lady-specific cycling products sold by the defendant and the defendant’s campaign to promote cycling among women. Use of her image in this manner constitutes a violation of her right to identity. The appropriation and misuse of the plaintiff’s image is wrongful and would be considered by persons of ordinary and reasonable sensibilities to constitute an iniuria which is deserving of legal protection.”

“In a broad sense, the plaintiff’s right to dignity has also been infringed.”

"... [H]er photograph in an advertisement cannot be justified on the basis that she is a public figure or celebrity.”

The court added:

“That the defendant did not use the plaintiff’s name in the advertisement is legally irrelevant.”

“It is also not necessary for the attachment of liability that the photograph depict the plaintiff in an objectively degrading, humiliating or insulting manner.”

“Whilst it is true that the plaintiff uses a company to promote her image and persona, she has not thereby abandoned the right to choose who is to have access to her image. Personality rights are inseparably bound up with one’s personality. They do not exist independently of the human personality and are incapable of being transferred. There is a fundamental distinction between personality rights and intellectual or immaterial property rights which are capable of being transferred and have a separate legal existence.”

With regard to animus iniuriandi (intent), the court stated that:

“... It is well settled that what this encompasses is not only the intention to achieve a particular result, but also the consciousness that such a result would be wrongful.”

The court concluded as follows:

“[N]o evidence has been presented by the plaintiff to prove that any diminution in the commercial value of her image or her patrimony was caused as a result of the publication of her photograph."

“...The immaterial or intellectual property rights held by the plaintiff exist independently of the plaintiff’s personality rights and are capable of separate enforcement. The plaintiff has not sought to enforce these rights. The appropriation by the defendant of the plaintiff’s image may constitute the delictual wrong of passing off but the plaintiff does not assert such claim. In foreign jurisdictions, the remedy of passing off is often utilised for the protection of advertising images. Neither was the plaintiff’s case pleaded or argued on the basis that the court should recognise a free-standing or independent patrimonial immaterial property right to identity along the lines contended for by certain academic writers.”

The facts of this case sit at the crossroads of passing off, trademark infringement (not mentioned by the judge), common law personality rights and the constitutional right to privacy. It seems clear that a case based on passing off would likely have succeeded and, arguably, this claim would have been the cheapest and easiest to prove in the circumstances:

• there would be no need to show “intention”;
• the case could have been made and tried on the papers (instead of using the more risky and costly trial procedure); and
• damages, which have been equated to a “reasonable royalty” in other jurisdictions (for further details please see "Eddie Irvine moves up the grid on damages claim"), may have been easier to prove.

The judge re-affirmed a principle that personality rights are inextricably linked to the person and cannot be transferred (see "Protecting your image: questioning publicity", which deals with what happens to personality rights when the person dies - in many territories, they too expire).

Those with valuable image rights are urged to try and use conventional IP rights such as trademarks (eg, name, signature and effigy) and, where possible, copyrights to protect their image together with a licensing and enforcement programme that controls and educates about the use of their image. Unlike personality rights, IP rights can be transferred, infringements can be easier to prove and the financial-minded may better understand their value on the balance sheet. However, one should be aware of the limitations in using trademarks to protect image rights.

Darren Olivier, Bowman Gilfillan Inc, Johannesburg