Abstract

Publicity rights fall in the intersection between classic intellectual property rights law, unfair trade practices law and privacy rights law. This is an area that has recently witnessed notable judicial decisions in Kenya which have not gained ample exposure and is therefore worth looking into as an area for potential emerging jurisprudence. A look at the existing practices across different jurisdictions in the world reveals various positions and approaches with respect to publicity rights. On one hand, there are jurisdictions in which publicity rights are categorized within the broad spectrum of personality rights, while in other jurisdictions these rights are treated as proprietary rights. Some jurisdictions also take a hybrid approach that amalgamates both proprietary and personality rights approaches. Publicity rights cut across four broad legal areas: tort, property, privacy and unfair trade practice law. These rights also have common similarities with copyright and trademark rights, although they are not synonymous. A significant number of countries which recognize a right of publicity have a mixture of elements of these areas, either as a form of common law approach based on the tort of passing off, or specific statutory enactments on publicity rights. Legal practice and development in each jurisdiction must be considered in the knowledge that each country has developed specific publicity rights mechanisms in response to the socio-economic needs and realities existing in its particular jurisdiction. This study surveys the legal landscape with respect to development of personality rights in Kenya. It also takes a brief look at several other select jurisdictions in an attempt to answer the question whether there is a jurisprudential justification for the recognition of a publicity right in Kenya.

I. Introduction

Publicity rights are a unique category of rights through which an individual controls the use – particularly the commercial use – of their image, name, likeness, or any other aspects which are emblematic of their identity (including, for example, voice, tattoos and signatures). Publicity rights cut across privacy law, intellectual property law (copyright and trademark), tort and property theory. The right was most notably defined in the UK as follows:

‘[T]he right for any commercial or promotional purpose to use the Player’s name, nickname, slogan and signatures developed from time to time, image, likeness, voice, logos, get-ups, initials, team or squad number (as may be allocated to the Player from time to time), reputation, video or film portrayal, biographical information, graphical representation, electronic, animated or computer-generated representation and/or any other representation and/or right of association and/or any other right or quasi-right anywhere in the World of the Player in relation to his name, reputation, image, promotional services, and/or his performances together with the right to apply for registration of any such rights.’1

The definition provided in Proactive – a case which is discussed in more detail later in this paper – reveals the nature of publicity rights as a bundle of rights attached to personality, and therefore the phrase ‘publicity rights’ as used in this paper shall include image rights. The rise in use of images in communications, advertising and entertainment as part of commercial marketing strategy has led to the realization that value can be derived from the use of an individual’s image.2 It has been argued that the use of a prominent person’s name, photograph or likeness in advertising and marketing can be of significant pecuniary value3 and that this value cannot be adequately protected under a privacy rights theory or any other traditional legal theory.4 Although no statutory image or publicity rights framework exists in Kenya, existing case law on the subject might lead to the allusion of a common law right of publicity anchored in the law of privacy.

Significantly, different jurisdictions have different approaches on this matter. In the United States, publicity rights are recognized and protected under state law.5 However, there is no federal publicity rights law in the USA and therefore no centralized legal framework for publicity right laws.6 Neither the UK nor Australia have a specific legal framework recognizing the right of publicity, but claims for unauthorized commercial use of a person’s image are generally framed within the tort of passing off or unfair trade practices laws.7 In South Africa, publicity rights claims fall within the broad ambit of privacy rights.8 The concept of a ‘right of publicity’ is not expressly recognized in South African law and therefore the basis for protection of image rights is fundamentally anchored in the common law akin to jurisdictions with similar common law systems relating to the protection of the right to privacy.9 The Bailiwick of Guernsey was the first jurisdiction to introduce a comprehensive legal framework for image rights in 2012.10 In Germany there is no statutory right of publicity although a broad general right of personality is recognized which grants protection from unauthorized use of an individual’s name, image and likeness. Advocates of publicity rights render forceful and, in my view, cogent and persuasive arguments that even with significant overlaps and similarities between publicity rights and intellectual property rights (specifically copyright and trademark), the two are entirely different legal regimes. With respect to copyright, Greenberg and Lovitz (2012) note as follows;

‘The Right of Publicity has little to do with copyright. Copyright applies to the bundle of rights one acquires in original works of authorship fixed in any tangible medium of expression … so the exclusive rights held by a copyright owner apply to the work itself. … An advertisement featuring a celebrity’s picture may require authorization from the photographer for the copyright use, and from the celebrity for the Right of Publicity use. Because these are wholly distinct claims with independent parties charged with standing to assert them, federal copyright laws generally will not preempt a state based, Right of Publicity claim. Under copyright law, a work is controlled by its creator. Thus, a book about a person belongs to its author, a sculpture of a person belongs to its sculptor, and a photograph of a person belongs to its photographer. Under the right of publicity, however, control is often placed in the hands of the subject depicted in the creative work.’11

In terms of the intersection between rights of publicity and trademark law, scholars posit that the right of publicity shares similar characteristics with the doctrines of unfair competition and misappropriation which are essential components of trademark law.12 However, publicity rights are only ‘analogous, not identical, to the law of trademarks.’13 Trademark laws are designed to protect consumers from confusion caused by deceptive trademarks. The objective of trademark is to protect members of the public against the deception of purchasing a good or service they are falsely led to believe originated from a particular source.14 To succeed in a trademark claim it is important to prove that there was either false or deceptive use of a mark which is likely to cause confusion. The right of publicity on the other hand protects against ‘the commercial use of non-deceptive, non-private references to an individual.’15

Significantly, jurisdictions with a specific legal framework on the right of publicity have entrenched fairly broad rights which traverse elements of privacy, personhood and property law.16 In stark contrast, Kenyan courts have characterized publicity rights within the limited right of privacy. This is a practice which in my view is nonetheless a restrained approach, informed and justified by the practical needs and realities currently obtaining in the country. The practice in Kenya is supported by scholars who maintain that publicity rights are rooted in privacy rights17 and that the right of publicity is the reverse side of the coin of privacy rights.18 However, the range of remedies available in privacy rights claims are limited to damages for injuries sustained for violation of privacy rights. The claimant has to prove that he had a legitimate and reasonable expectation to privacy and that the unauthorized use of his image infringes that expectation and so injures him in some way. These elements are hard to prove in the case of public personalities such as celebrities. Indeed, Kenyan courts have held in Jemimah Wambui Ikere v Standard Group Limited & Nation Media Group that an individual claiming violation of their right to privacy must demonstrate that they had a legitimate and reasonable expectation to privacy, a test which may prove difficult in the case of public personalities. 19 Moreover, today the indicia of identity protected by rights of publicity is much wider than images, and includes one’s name or likeness look-a-likes, sound-a-likes, voices, styles, distinctive phrases, distinctive objects, biographical information, settings strongly associated with particular celebrities, fictional characters or roles strongly associated with particular celebrities who portrayed the same, and signature music styles.20

This paper has four main objectives. The first of these is to discuss existing legal developments and models for the protection of publicity rights across several key jurisdictions in the world and attempt to draw lessons from them. Secondly, the paper attempts to evaluate the extent to which publicity rights or their equivalent are protected in Kenya and whether, if at all, other comparable legal remedies exist for the protection of publicity rights. This evaluation will then interrogate the limitations of the privacy rights approach as a potential foundation for publicity rights and explore the suitability of other alternative remedies. Thirdly, the paper will probe the relationship between publicity rights and property rights with the goal of answering the question whether property rights can be developed over insentient aspects of an individual’s identity. Finally, the paper will attempt to draw lessons and chart a possible way forward. It is hoped that this enquiry should at the very least enable the reader to determine in a dispassionate and independent manner whether a sui generis model recognizing publicity rights is appropriate in Kenya and provide a basis for further deeper enquiry into the subject.

II. Publicity rights across select jurisdictions

In the following sections, I will describe the legal framework for the protection of publicity rights in the aforementioned jurisdictions. The choice of Germany, Australia, South Africa, the UK, the USA and the Bailiwick of Guernsey is not by any means presumed to provide a nuanced account of the different approaches with respect to the right to publicity, but rather a comparative bird’s eye view of the different approaches on personality or image rights across select civil and common law jurisdictions.

1. Germany

Germany has a long established tradition as regards personality rights.21 Although there is no statutory right of publicity in Germany, individuals enjoy similar if not identical protection against unauthorized exploitation of the commercial value of their identity within three rights. The first two rights – the ‘right to one’s image’22 and ‘right of name’ – are statutory, and a third broader ‘general right of personality’ has been developed by the courts. The general right of personality protects other aspects of an individual’s identity which are not protected under the right to one’s image or the right of name (including voice, signatures, distinctive tattoos, hair styles, and so on). In its current form, the general right of personality is a bundle of rights which protects different aspects of an individual’s personality from unauthorized exposure. The right is founded on the need to protect human dignity and the right to freely develop one’s personality.23

The ‘right to one’s image’ and ‘right of name’ are statutory rights. The ‘right to one’s image’ (Recht am eigenen Bild) first statutorily recognized in 1907, is found in Secs. 22 and 23 of the Act of Artistic Creations (KUG ‒ Kunsturhebergesetz). Section 12 of the German Civil Code (Bürgerliches Gesetzbuch) provides for the ‘right of name.’24 Over and above the statutory-based rights, German courts have filled in the gap to protect other aspects of a person’s identity on a case-by-case basis. This body of cases led to the development of a ‘general right of personality’ (allgemeines Persönlichkeitsrecht) which specifically provides protection against defamation and unauthorized exploitation of the commercial value in a person’s identity.25 The courts apply the ‘general right of personality’ only when prevailing statute-based rights are not applicable.26 The Federal Supreme Court recognized the general right of personality in 1954 as constitutionally guaranteed fundamental rights under Arts. 1 and 2 German Constitution of 1949 (GG ‒ Grundgesetz) and protected under Sec. 823(1) of the German Civil Code (BGB – Bürgerliches Gesetzbuch). However, the scope of the right of personality has not been defined, notwithstanding that it has been used by the courts to apply to a wide range of identity misappropriation claims.27 In determining the scope of the general right of personality, courts treat each case on its merits and give consideration to the particular circumstances of the individual and his personal values.28 The courts have applied the right of personality to both natural persons and corporate entities as seen in the Carrera case,29 where the German Federal Supreme Court found the general right of personality is a fundamental right which applies to both natural and domestic legal persons to the extent that such rights permit.

a) The right to one’s image

Sections 22 and 23 of the Act of Artistic Creations (KUG ‒ Kunsturhebergesetz) provide for the right to one’s image and allow the holder exclusive right to display and distribute their own likeness whether privately or publicly.30 Holders of this right are entitled to decide whether, when, where and how his image should be presented to third parties or to the public. Importantly, Sec. 22 KUG applies only to distribution and display and not to production or reproduction of the image.31 An exception to the right to one’s image is provided in Sec. 23 KUG for publication of newsworthy events and likenesses of persons of contemporary history.32

In determining whether there is an infringement under Sec. 22 KUG, the medium or format on which the image is published is immaterial; what matters is whether the person depicted is recognizable. Recognizability can be determined by clothing, hair-style or gestures of the person(s) depicted, even if the face is not shown.33 Therefore an advertisement showing the back of a famous football (soccer) goalkeeper was held by the Federal Supreme Court in the Fußballtor case to amount to an infringement of the goalkeeper’s image as the goalkeeper was easily recognizable by his particular stature, posture and haircut.34 Similarly in the Nacktaufnahme case, the Federal Supreme Court held that a picture showing the back of a nude woman amounted to a violation of her image right under Sec. 22 KUG as she was identified by her husband and therefore should be protected from unauthorized appropriation even though her facial features were hidden.35

Portraits of look-alikes do not fall within the scope of Sec. 22 KUG although initially, courts considered imitations to be likenesses. Imitations are currently considered within the remit of the ‘general right of personality.’36 Persons depicted in parodies can claim infringement of their image right under Sec. 22 KUG only if there is a strong likelihood of confusion, or if the parody is defamatory. In the Heino case37 the lead singer of the punk group ‘Tote Hosen’ imitated a well-known folk-music singer ‘Heino’ during a stage performance. Heino sued and sought injunctive relief. The court found that Heino had a clearly distinctive image including light blonde hair and therefore when the lead singer of Tote Hosen imitated Heino on stage there was no likelihood of confusion as the public would not mistake the lead singer of the punk group for the folk singer. However, the court found that advertising posters for the next ‘Tote Hosen’ concert would create the false impression that Heino would perform at the concert as part of the punk group, and on this basis the posters depicted a likeness which was actionable under Sec. 22 KUG and granted an injunction against the posters.38

For the distribution or display of an individual’s image or likeness to be lawful, the person depicted must have given their consent either expressly or implicitly. Consent can be implied if the subject of the image accepted remuneration for such depiction, distribution or display. In the Beckenbauer case,39 the court held that individual circumstances surrounding each case must be considered when determining whether or not there was consent. In Paul Dahlke, it was held that where the image is used commercially, implied consent cannot be assumed because it must be established that the claimant/depicted person was aware of the particular purpose for which the picture or image was used.40 In the Paul Dahlke case, a photographer took a picture of Paul Dahlke, a renowned German actor sitting on a motorcycle and informed Dahlke that the photo would be used in a television programme magazine. However, the picture was sold to the manufacturer of the motorcycle who produced an advertisement with the caption ‘famous man on famous motorcycle.’ At issue was whether Dahlke had implicitly consented to the use of his image in the advertisement, a question which the Federal Supreme Court found in the negative. The Court found that Dahlke had no reason to think that the picture would be used commercially and therefore could not be imputed to have implicitly given consent.41 In cases of publishing of the image or likeness of a person who has been deceased for less than ten years, consent of the next of kin (spouse, children or parents) must be obtained.42

In distinguishing between publication that is in the public interest and publication that infringes an individual’s image right under Sec. 22 KUG, the courts have recognized a special category of persons with respect to whom consent to publish their images or likeness is not required, as a matter of public interest. Any person who is within the realm of contemporary history who is linked to newsworthy events or matters of public interest from the past, present or future is regarded as a ‘person of contemporary history’ (Person der Zeitgeschichte). Images or likenesses of persons of contemporary history generally fall within the public interest. There are two categories of persons of contemporary history, namely absolute and relative persons of contemporary history. Absolute persons of contemporary history are permanently bound to contemporary history including politicians, actors, royal family members, singers, athletes and talk show hosts.43 Relative persons of contemporary history are those linked to a specific event such as an important trial, a game or talk show, or news event. An actual and recognizable connection between the image or likeness of an individual and the specific event must be established in order for publication of the image or likeness to be deemed to be of public interest as a person of relative contemporary history.44

Events that fall within the category of persons of relative contemporary history are generally newsworthy events where public information is the priority. Advertising and merchandising are excluded and therefore if a person’s picture is used to draw public attention to a product, the courts will generally not find such use to be in the public interest.45 The courts judiciously distinguish between commercial interests and public interest in determining whether the use of a public personality’s image infringes his or her right to image under Sec. 22 KUG. In the Ligaspieler case,46 the defendant made and sold trading cards with pictures of famous German soccer players. The cards were sold in sealed packages and the purpose was to incite buyers to collect the pictures and buy more cards in order to get the full collection. The claimant, a footballer whose picture was one of those used on the cards claimed a Sec. 22 KUG infringement against the defendant while the defendant stated that the claimant was a person relevant to contemporary history and that the use of his picture without consent was in the public interest. The court decided against the defendant, holding that the soccer players had a legitimate interest in controlling their commercial exposure. The court found that the purpose of using the pictures was not to convey a public interest motive but a secondary commercial purpose and therefore Sec. 23 defense could not apply. However, in the Beckenbauer decision47 the picture of Franz Beckenbauer, a famous soccer player, was used on the front page of a soccer calendar. In contrast to the Ligaspieler decision, this time the court found that the use of the picture was in the public interest even if the publisher might have had commercial interest in the publication. The court took into consideration the facts that Mr. Beckenbauer was at that time the most famous German soccer player, the publication took place after a major event, and the picture showed other soccer players in addition to the claimant. Similar to the Ligaspieler decision, the Hamburg Court of Appeals in Oliver Kahn v EA Sports48 held that the use of Mr. Kahn’s image in a computer game without consent was not for public interest information purposes but for financial gain and profit. The court issued an injunction.

The use of an image without consent for satirical purposes may be protected under Germany’s constitutional right of freedom of expression as held in the Oskar Lafontaine case.49 Relatedly, the use of an image for artistic purposes may be protected within the constitutional right of freedom of expression. Here the courts, in weighing between the conflicting the constitutional interests of freedom of expression and right to one’s image, will consider the nature of the artistic use of the image in question.50 In the Martin Kaymer decision51 the defendant used the claimant’s photograph in a pop art work using several colour combinations and sold the artistic pictures online. The court found that the dissemination of the portrait without the claimant’s consent violated his personality rights to his image and further that the defendant was not fulfilling any public information interest. The portrait was not an artistic achievement but of decorative character and therefore did not fall under the exception of the freedom of art protection in Art. 5(3) of the Constitution (GG).

German courts have been consistent in upholding the ‘person of contemporary history’ (Person der Zeitgeschichte) exception. The Regional Court of Appeals in Frankfurt reached a decision similar to the Beckenbauer decision in the Boris Becker case.52 Similar to Beckenbauer, the Boris Becker case involved a publication of Boris Becker’s picture on the cover page of a tennis book. Here too, the court found the publication weighed more towards public interest than to the publisher’s commercial interest because Becker, being one of the most famous tennis players of all time, was an absolute public person of contemporary history. The picture showed him in action in a typical tennis match and was relevant to show the general concept and content of the book.53 In the Abschiedsmedaille decision,54 a medal showed the head of former German Chancellor Willy Brandt (a deceased politician and statesman) embossed on one side with information about his public life and achievements on the other. The court held that Brandt’s rights under Sec. 22 KUG were not infringed because his image was used in connection with his achievements as a politician and was therefore in the public interest as an absolute person of contemporary history. Similarly in Chris Revue,55 an advertising brochure for a drugstore featuring the picture of Chris Revue, an actor, was held not to infringe his rights to his image as the brochure also had a short article on the actor inside and therefore the freedom of the press outweighed the individual’s interest because readers of the brochure would not assume that the celebrity had endorsed the brochure or any products.

b) Right of name

Section 12 BGB protects against unauthorized use of an individual’s name. The first name or pseudonym (penname) of an individual is protected ‘if it is so closely [connected] to one person that the general public would think of that person when hearing the name.’56 The likelihood of confusion is the main determinant considered by courts in deciding whether there is unauthorized appropriation of an individual’s name under Sec. 12 BGB. Confusion depends on the distinctiveness of the name and the field in which the name holder gained that reputation.57 In Romy,58 the name of Romy Schneider, a famous actress, was used as a title for a movie that had no connection to the actress. The Munich Court of Appeals held in favor of Romy, holding that simply mentioning the name ‘Romy’ would evoke memories of the actress in the public. Furthermore, the name was used in the same field of industry where she obtained her reputation and therefore the likelihood of confusion in the eyes of the public was high.

Misappropriation of the name will also arise if the mention of the name commercially to draw attention to a product such as in an advertisement leads the public to believe that the holder has consented to the use of their name and endorses the product.59 The public use of an individual’s name will not lead to an action under Sec. 12 BGB if there is no appropriation or defamation. In Catarina Valente, the name of Catarina Valente, a famous actress, was mentioned in a denture advertisement. Although the mention of Catarina’s name was not found to amount to misappropriation, the court found that the words used in the advertisement were defamatory in relation to Catarina.60 While the right to one’s image or likeness and the right of name are statutory, protection for other aspects of identity such as voice falls within the broader ‘general right of personality.’ In Heinz Erhardt61 an actor’s voice was imitated and terms which bore specific reference to the deceased actor Erhardt were used. The court drew a parallel to the statutory protection of name, likeness and image and extended it to protect voice.

c) Transferability of the general right of personality

The ‘general right of personality’ is not transferrable because it is a right in personam. This is one of the most significant differences between the ‘general right of personality’ and the right of publicity, the latter being a property right and therefore transferrable. However the ‘right to one’s image’ is considered to have a commercially exploitable value which allows the holder to grant consent in advance and can therefore be licensed to third parties.62 However, the extent to which such licenses vest rights in a licensee, and whether the licenses are transferrable is unclear.63 In Nena,64 a famous German pop singer licensed all her commercial rights including rights to her image to the plaintiff, a collecting society. The plaintiff sued the defendant for compensation for selling various merchandise bearing the image and likeness of Nena. The Federal Supreme Court held in favor of the plaintiff finding that the issue at stake was not whether the right to one’s image under Secs. 22 and 23 KUG is transferrable, but rather whether ‘the defendant’s use of Nena’s likeness gave rise to the plaintiff’s right to recover the usual fee for permission to utilize likeness.’65 However, despite the Nena decision, the extent to which third parties can seek injunctive relief as licensees of the right to one’s image remains unsettled.66 The protection a licensee enjoys is therefore limited. Although a licensee can seek monetary damages for infringement of the right, the licensee does not have locus standi to enjoin third parties for unauthorized use of a licensor’s image, even in the case of exclusive license.67

d) Inheritability of the general right of personality

Similar to the position as regards transferability, the ‘general right of personality’ is not transmissible or inheritable in succession. The right cannot be bequeathed to beneficiaries or form part of a deceased person’s estate. However, as we saw above as regards the ‘right to one’s name’ under Sec. 22 KUG, consent of the right holder’s next of kin must be obtained to use the image or likeness of the right holder within ten years from the date of the right holder’s demise. The next of kin can, within this ten-year period, demand license fees for unauthorized appropriation of the right holder’s image or likeness.68 The Federal Supreme Court in Heinz Erhardt69 confirmed that the protection of the ‘general right of personality’ encompassed all continuing use of the artist’s work. Significantly, the court gave all aspects of personality – name, image, likeness, voice etc. – the same scope of protection after death.

The Heinz Erhardt decision is seen to have extended to the right holder’s next of kin the right to market the right holder’s image or likeness, give their consent, and waive the right to seek an injunction in exchange for a license fee.70 However, given that the ten-year limitation of protection expressly applies to the right to one’s image under Sec. 22 KUG, the Erhardt decision did not elaborate on whether the ten-year limit also applies to rights under the general right of personality, or to the right of name under Sec. 12 BGB. Subsequently in Emil Nolde,71 the Court held ‘the duration of posthumous personal protection depends on the circumstances of each case, and above all, on the renown and significance of the individual’s personality.’72 The infringement in the Emil Nolde case occurred 30 years after the painter’s death. The Court did not, however, place a limit on posthumous protection meaning that next of kin can potentially demand license fees for as long as this protection lasts.

e) Remedies

The range of remedies available to claimants differs depending on the nature of the infringement. The available remedies include monetary compensation or injunctive reliefs.73 If the infringement of the ‘general right of personality’ involves defamation, claimants can seek monetary compensation for pain and suffering in addition to compensation for economic loss. If the infringement is not defamatory, the monetary award is limited to economic loss conditional to proof of loss of profits in connection to the unauthorized use of the image or likeness. Courts can also award a fictitious license fee for the amount which would potentially have been paid by the infringing party if it had negotiated in good faith a license in advance.74 Notably, courts cannot award both monetary damages and fictitious license fees on the rationale that if the claimant receives fictitious license fee, consent is deemed to have been given ex post facto obviating the need for monetary damages.75 Fictitious licensee fees are determined on the evidence of licensing expert opinions which are based on fees actually paid in similar licenses in the respective area. Importantly, only the right holder can obtain injunctive relief and not licensees, even where the license is exclusive.76 This is because injunctive reliefs are in personam, and this points to the nature of the general rights of personality as personality rights.

In conclusion, the right to one’s image is moving away from the law of defamation which does not have any commercial aspects, and is evolving into a commercially exploitable right. German courts are increasingly recognizing that some aspects of personality have commercial value and are marketable. However, as regards the general right of personality, the courts conceptually approach this as a traditional non-commercial right.77 As one author notes, ‘German courts do not draw the distinction between a right of privacy … and a right of publicity, which allows one to control his commercial use. The primary purpose of the German ‘general right of personality’ is not to protect property and commercial values, but to guarantee human dignity and the right of free development of the personality.’78 Ultimately, the choice between the German approach of personality rights and the US approach, where the right of publicity is recognized as a property right, depends on the value one places on celebrities’ rights over the public interest.

2. Australia

Despite the growth of celebrity and character merchandising in Australia involving the use of names or images of well-known personalities or public figures, Australia does not recognize a general right of publicity or tort of invasion of privacy.79 Claimants can, however, pursue alternative legal remedies to protect against unauthorized commercial use of their image. This is mainly by instituting actions under trade practices legislation such as the Australian Consumer Protection Law80 and State Fair Trading Acts or common law actions of passing off.81 Lynne (2001) asserts this position as follows:

‘In Australia, like the United Kingdom, there is no “right of publicity”. Put simply, other people can use a celebrity’s personality without permission. Celebrities do not “own” their personality, in the sense they do not own the commercial value of their personality. … While in Australia, no formal personality rights exist, there are options available when seeking to protect or exploit “personality”. A defamation suit may be available to a celebrity if the use of the merchandise was considered derogatory to the individual … An action in passing off or under the Trade Practices Act 1974 (Cth) for misleading or deceptive conduct may be available. These measures essentially come into force if consumers would be confused or misled into thinking there was endorsement or connection to the product.’82

Australian copyright law has been considered a ‘limited utility in protecting celebrities against unauthorized use of their identity’83 because the scope of copyright excludes ‘facets of identity such as image or nickname.’84 Trademark law has been regarded inadequate as a means for protecting personality rights because personality facets are not registrable in Australia as trademarks.85 One author succinctly notes as follows:

‘Trademarks themselves were intended to distinguish the product, not be the product. Therefore non-traditional celebrity image marks, when used for purposes other than indicating the origin or source of the product or service, arguably stretch the purpose of trademarks beyond the point where legal protection is justified. If legal protection should be granted to celebrities, perhaps this should be accomplished through other measures, rather than by blurring the legal role of trade marks.’86

Protection of personality rights in Australia are anchored in consumer protection law, specifically in the law relating to passing off and unfair trade practices.87 In Australian Trade Practice Law liability for misleading or deceptive conduct and for false representation may arise under Secs. 52 and 53 of the Trade Practices Act 1974 (reproduced in part below):

Misleading or deceptive conduct

52. (1) A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

False or misleading representations

53. A corporation shall not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services-

  • represent that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have;

  • represent that the corporation has a sponsorship, approval or affiliation it does not have;88 …’ (emphasis added)

The above provisions may be relied upon in passing off actions in view of the unauthorized commercial use of a celebrity’s image. The elements required to establish misleading or deceptive conduct are found in the wording of Sec. 52(1) which are, a corporation in trade or commerce and engaging in misleading or deceptive conduct. Conduct which is likely to give rise to a false perception that the defendant’s products or services are in one way or another promoted by, associated with or connected to the applicant in any way can be construed as misleading and deceptive if false, provided that such a perception goes beyond mere uncertainty. For a passing off action to succeed, the claimant must establish that there was a false representation of approval, consent or connection between the endorser and the endorsed product.89 A person with a well-established reputation who engages in product endorsement could rely on his reputation and provide evidence of commercial endorsements as evidence of goodwill in his image and reputation. This would enable him to institute a cause of action on misleading and deceptive conduct if the public is falsely led to believe, as a result of unauthorized commercial use of his image by a third party, that the celebrity has endorsed the product. The same applies if the public is falsely led to believe that by publishing the celebrity’s image in connection to the goods or services, a connection or association is assumed to exist between the celebrity and the entity offering the goods or services. An express disclaimer of association will void liability, as it negates an implication of connection between endorser and endorsee.90

In Talmax Pty. Ltd v Telstra Corporation Ltd91 Kieran Perkins, an Olympic swimmer, filed a court action against Telstra for the unauthorized use of his image in an advertisement. The advertisement contained a photograph showing the claimant wearing a swimming cap bearing Telstra’s logo together with a statement promoting its services in preference to those offered by another company, Optus. The court held that the use of the photograph with the statement together implied that Perkins preferred Telstra’s service to that of Optus, when in fact he had not made a statement about his preference. The court found that Telstra's conduct was misleading and deceptive. Similarly, the unauthorized use of two ballroom dancers’ photographs on a record cover in Australia was held to be misrepresentation that caused reputational damage.92

a) Australian law on passing off

In contrast to Australian trade practices law – which requires evidence of misleading conduct – the common law tort of passing off is designed to protect against deceptive misappropriation of personal identity by third parties.93 Using an image for the purpose of advertising a product or service, which leads consumers to infer a connection or association between the maker of the goods and the subject of the image, can constitute passing off.94 As noted earlier, for a passing off claim to be successful, a claimant must establish either misrepresentation of approval, consent, or a connection between himself and the maker of the product. If that connection is not identified, claims founded on passing off will fail.95 This means that using an image, likeness or other personality aspect of a well-known personality alone is not sufficient, especially if it is unlikely that consumers of that product or service would infer a connection between the personality and the maker of the goods or entity offering the service in question. The plaintiff must demonstrate that he has a commercially valuable and exploitable reputation and that there is misrepresentation by the defendant which has caused, or is likely to cause, damage to the plaintiff. Because the tort of passing off requires evidence of having a commercially viable reputation, it is of limited use by persons who are not public personalities or celebrities. Establishing a commercially viable reputation is a question of fact not of law, which means each case will be determined on its merits. Importantly, scholars have argued that the true nature of the interest being protected is a proprietary right to exploit commercially one’s personality, image and name. This means that it is not members of the public who are being protected from misrepresentation caused by false association, but rather protection of ‘the celebrity’s proprietary interest in exploiting the goodwill, or potential goodwill, in their identity or reputation. What courts are guarding against is not so much a misrepresentation but an appropriation … the wrongful appropriation of reputation.’96 Indeed it has been argued that ‘Australian courts have been forced to use the legal fiction of misrepresentation to protect personal identity from appropriation by others.’97

In Henderson v Radio Corp Pty Ltd,98 Radio Corp used a photograph of Henderson’s on a record cover label without obtaining permission. Henderson was a well-known ballroom dancer and he instituted a passing off action. The Supreme Court of New South Wales found for Henderson holding that the unauthorized use of the photograph on the record cover constituted misrepresentation of an association between the defendant and the claimant, and that in so doing the record company denied Henderson the potential to exploit his image, name and reputation for his own gain. The Court found that the use of the image on the cover would lead the public to assume, falsely, that the claimant had recommended or approved of the record. The mere use of a celebrity’s image or likeness in an advertisement in association with a product or service was, however, not enough to sustain a passing off action. The claimant must also demonstrate that the unauthorized use of the image suggests apparent approval or endorsement of the product or service by the claimant, as established in 10th Cantanae & Others v Shoshana Pty Ltd & Another.99 In this case an advertisement showed a woman who resembled the claimant and her name was mentioned on a screen message. The court held that mere mention of a name in an advertisement does not necessarily connote that the goods advertised have been approved, or even examined, by the person named.100 This decision was confirmed in Honey v Australian Airlines Ltd & Another101 where the claimant’s photograph was used by the defendant airline in an advert to market the airline. The claimant was a well-known long jump athlete. The court found that a mere association with the defendant was not sufficient to establish a passing off claim. The claimant had to establish that in the circumstances the public would have inferred endorsement or approval by the claimant of the advertisement.

An express disclaimer of association between the advertiser and the personality in the advertisement and the use of a lookalike picture (as opposed to an actual picture of the celebrity) will not be construed as amounting to passing off as held in Olivia Newton-John v Scholl-Plough (Australia) Ltd.102 Australian Courts have been far more liberal in their application of passing off to claims of ‘misappropriation’ of personality particularly in respect to character merchandising. Significantly, the Federal Court of Australia in Hogan v Koala Dundee103 held it was no longer necessary to establish misrepresentation to prove passing off. The claimant was the writer and main star of the film ‘Crocodile Dundee’. He brought an action against two tourist shops which sold clothing, hats, t-shirts and other merchandise containing the name ‘Dundee’ and image of a koala bear. The Federal Court of Australia granted the relief denying that there was need to establish misrepresentation. The court based its decision on the ‘wrongful appropriation of reputation or, more widely, wrongful association of goods with an image properly belonging to an applicant.’104 However, the Federal Court of Australia reversed its position in Hogan the following year in a similar subsequent case – Hogan v Pacific Dunlop105 – by holding that there was need to establish misrepresentation involving the use of the image in question to convey a representation of a commercial connection between the plaintiff and the defendant’s goods and services.106 These cases demonstrate the overlap between trade practices law and the law of passing off in personality rights claims. The cases also bring out the dilemma that courts in Australia face as to the nature of the tort of passing off in personality rights claims, specifically as to whether misrepresentation is required. In some circumstances, a person’s image may be regarded as ‘personal information’, the unauthorized publication of which may be considered infringement of privacy as demonstrated in ABC v Lenah Game Meats,107 where the Australian High Court hinted at the possibility of establishing a tort of unjustified invasion of privacy, or tort of harassment, in future. Notwithstanding legal developments with respect to privacy, as of the writing of this paper there has been no recognition of a general tort of invasion of privacy in Australia which would protect against unauthorized use of an individual’s image or likeness.

Calls for the recognition of a special right of publicity are gaining momentum with specific recommendations for the recognition of either a general publicity right or a tort of misappropriation of identity.108 Ralston (2001), relying on the US Supreme Court decision in Zacchini v Scripps-Howard Broadcasting Co,109 has argued that, morally speaking, a Lockean justification recognizing the right of publicity is possible, stating that ‘it would be unjust for the exploiter to be enriched by using someone else’s identity for his or her gain.’110 A case has been made for the recognition in Australian law of a specific right of publicity on the basis that by recognizing a right of publicity, consumers stand to benefit from the integrity of endorsements, which is a ‘by-product of the right of publicity.’111 The difficulty experienced by courts in Australia in establishing misrepresentation to protect against misappropriation of image and personality has been cited as yet another reason for the need to recognize a publicity right.112 The moral justification for intellectual property rights premised on Locke’s labour justification has been used to support calls for recognition of a right of publicity on the basis that ‘The right of publicity … is consistent with the fundamental rationales underlying intellectual property law. It is a feasible and desirable evolution in the development of law in this area and it is likely the courts will be given an opportunity to take this path before long.’113 Australian law on this subject is still developing and it remains to be seen which direction it will eventually settle on.

3. South Africa

South African law does not recognize a general right of publicity.114 It differs from Australia, where we find a combination of trade practices legislation and a tort-based approach to protection of personality rights; the UK, which does not recognize a general right of publicity but has a common law approach based on the tort of passing off; and the US, where we have extensive state-based statutory legislative frameworks on the right of publicity. Instead, South African common law recognizes personality rights under the umbrella of the right to privacy.115 This was established in Kumalo v Cycle Lab (Pty) Ltd,116 where the Plaintiff, a local celebrity and public figure, successfully sued a retailer for the use of her image in advertising without permission on the ground that the use violated her personality rights. The plaintiff had gone to purchase a bicycle and other accessories from the defendant’s shop, and her photo was taken while she was there. The defendant used the photograph in an advertisement brochure and magazine without the plaintiff’s authorization. The plaintiff asserted that she did not consent to the photo being taken or used for any purposes and that she feared that using the picture in the way that the defendant did would lead to the false presumption that she consented to the use of the photo to market the defendant’s business. The plaintiff successfully claimed that three personality interests had been infringed – identity, privacy and dignity – and claimed damages for iniuria. The court held as follows:

‘[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.’117

South African courts have also considered the applicability of defamation law under an action for ‘false light’ for spreading information about a person which is false and offensive.118 In Kidson v SA Associated Newspapers Ltd119 a photograph of three nurses was used by the defendant in an advertisement which stated ‘lonely nurses looking for boyfriends to provide more than company.’ One of the nurses submitted a claim against the defendant on the grounds that she was insulted by the advertisement. Kuper J agreed that the advertisement constituted ‘an intentional infringement of the right to personal privacy and was an unjustified aggression upon her dignity.’120

South African law has since moved beyond the requirement of insult. In the landmark Supreme Court of Appeal decision in Grutter v Lombard and Another121 it was recognized that an individual’s image is an aspect of their personality capable of legal protection. The plaintiff was a former partner in the defendant law firm. After the partnership ended, the defendant continued using the plaintiff’s name in the name of the law firm. The plaintiff, desirous of being completely disassociated with the defendant law firm, instituted this lawsuit. In a unanimous judgment for the plaintiff, appellate Judge Nugent determined that privacy was merely one of a variety of interests which enjoyed recognition as a personality right within the context of actio iniuriarum (actions for infringement of personality rights). This falls within the South African Law of Delict which is substantively similar to the English Law of Tort. The respondents were ordered to desist from using the plaintiff’s name and rectify the matter within 30 days.

In another landmark South African case, Angella Wells v Atoll Media (PTY) Ltd & another122 it was held:

‘[T]he appropriation of a person’s image or likeness for the commercial benefit or advantage of another may well call for legal intervention in order to protect the individual concerned. That may not apply to the kinds of photographs or television images of crowd scenes which contain images of individuals therein. However, when the photograph is employed, as in case, for the benefit of a magazine sole to make profit, it constitutes an unjustifiable invasion of the person rights of the individual, including the person’s dignity and privacy. In this dispute, no care was exercised in respecting these core rights.’123

This case recognized that ‘features of a personal identity are capable and indeed deserving of legal protection.’124 The decision also establishes that a public interest element exists with respect to the protection of personality rights in that photographs and images of persons which, for instance, are taken in a crowd, will not attract the same level of protection.125 It has been noted that South African law does little to protect publicity rights of celebrities and public personalities, prompting calls to align laws with the commercial realities of the modern world through recommendations for recognition of a specific personality right.126 Legal developments in this area continue to be closely watched.

4. United Kingdom

There is no general right of publicity or personality in the United Kingdom, and English law has consistently declined to embrace a principle that persons are legally entitled to their names or other personality aspects such as image.127 Legal culture in the UK is inimical to the development of new causes of action. However, English law recognizes that goodwill can arise through the use of a celebrity’s image, likeness, and even voice, although this is a question of fact not law.128 For well-known personalities, the non-consensual use of their name, image or voice could amount to a misrepresentation that the personality endorses, or is connected with, the products or services in question. This can give rise to a cause of action in passing off if the misrepresentation is likely to confuse consumers or lead to loss of income for the plaintiff.129 Admittedly, the option of a passing off action is more curative while the contractual licensing option is preventative. Although it is arguably easier for courts to determine the parties’ rights in a straightforward contract, contracts have two main limitations. Firstly, it is assumed that all celebrities and well-known personalities do in fact conclude licensing agreements with different parties covering all manner of conceivable uses and users of all aspects of their personality and image. In reality this level of contracting is not possible. Secondly, a contract only binds the parties to it and does not cover persons who are not party to the contract, and so may therefore not be enforceable against third parties. Given these limitations of contracts, the option of instituting a passing off action is very important, particularly given the increasing use of celebrity images in advertising, product and service endorsements, and merchandising. As there is no right of publicity in the UK, celebrities have to find different legal routes, although as one commentator put it ‘trying to protect the right of publicity through the various related laws in the United Kingdom is like trying to put a square into a round hole.’130 In an action for passing off a plaintiff must prove that they have goodwill attached to their image and likeness, and that by using that image or likeness attached to goods or services the defendant has misrepresented, and as a result the plaintiff suffered damage.131

The fact that celebrities conclude image rights contracts is evidence that value can be derived from a person’s image and likeness. This was demonstrated in Proactive Sports Management Ltd v Wayne Rooney & 3 others132 which concerned the premature termination by Wayne Rooney, a professional football player, of an Image Rights Representation Agreement (IRRA) he had signed with his former agents, Proactive Sports Management Ltd. This case did not concern image rights per se, but rather whether Proactive was entitled under the agreement to liquidated damages and commissions allegedly owed to them for various sponsorship contracts negotiated by them (Proactive) prior to the premature termination of the image rights representation contract. Image rights agreements in sports management are ‘off-field representation agreements’ concluded between the personality in question and management agents for the purpose of commercial exploitation of the personality’s image. Goodwill arises from the use of the image, likeness and voice. It does not exist intrinsically in the image, likeness or other indicia of identity. This distinction is important because it emphasizes the use of the image as the source of goodwill and not the image itself. This allows actions for the unauthorized commercial use of images, likeness, or voice of an individual to be founded on the tort of passing off. The tort of passing off is aimed at preventing other traders from passing off their goods as those belonging to other traders.133 Because of the requirement of establishing the existence of goodwill and a likelihood of confusion, passing off actions are said to be less likely to succeed.134

The tort of passing off covers not only sale of goods but also services, and it extends beyond deception as to the origin of goods and services to also include deception regarding the quality of the goods or services. The tort can be invoked in cases involving deception where goods or services have been licensed by another trader, which makes this the appropriate basis for claims of ‘misappropriation’ of personality (or publicity) rights in the UK. Passing off actions therefore include misrepresentations made by a trader in the course of trade to prospective customers or ultimate consumers of goods and services that are calculated to injure the business or goodwill of another trader (in the sense that this is a reasonable consequence), and cause actual damage to the plaintiffs business or goodwill.135

Three essential elements are required to establish a claim in passing off in the UK:

  • The claimant must have goodwill;

  • The defendant must have made a misrepresentation which is likely to deceive the public; and,

  • The misrepresentation damages the claimant’s goodwill.136

a) Goodwill

Goodwill has been defined as ‘the magnetism that leads customers to return to the same business or buy the same brand’137 or – according to Browne-Wilkinson V-C in Peter Waterman v CBS138 – as the ability to attract customers and potential customers to do business with the owner of the goodwill. Goodwill can arise from a person’s image,139 likeness or voice.140 To establish goodwill, it is not enough for the claimant to assert that consumers are confused about the source of a product or service; the claimant must also establish that the product or service in question has goodwill in the marketplace. Lord MacNaghten in IRC v Muller & Co.’s Margarine141 defined goodwill as ‘the benefit and advantage of the good name, reputation, and connection of a business. It is the attractive force that brings in custom. It is the one thing which distinguishes an old-established business from a new business at its first start.’142 In HFC Bank v Midland Bank143 the court held that for goodwill to exist, customers must be purchasing the goods or using the services as a direct result of the reputation that those goods or services have acquired. If an individual’s image, likeness or voice is used to market particular goods or services, goodwill will be imputed to exist if it is factually established that ‘there is a relevant connection between the celebrity and the goods or services in issue.’144 Relevant connection means that the defendant’s misrepresentation should lead one to infer ‘that the claimant has some type of control or responsibility over the goods or services in question.’145

b) Misrepresentation

Protection for unauthorized commercial appropriation of an individual’s personality is limited due to the difficulty of establishing misrepresentation. In Lyngstrad v Annabas Products146 the pop group ABBA complained that the defendant sold paraphernalia bearing the name and image of the group. The court declined to grant the reliefs sought holding that it could not be reasonably imagined that the popstars had approved the use of their image on the paraphernalia. The court held that all the defendants were doing was ‘catering for a popular demand among teenagers for effigies of their idols.’147 In Elvis Presley Trade Marks148 it was held that the public must think that the personality endorses the goods or services in question therefore, although labelling a product with the words ‘approved by’ a particular personality would be treated as misrepresentation, the unauthorized use of a celebrity’s image on an advertisement may or may not be treated as misrepresentation.149 Justice Laddie did not think that the use of the words ‘Elvis’ or ‘Elvis Presley’ on toiletries and perfumes suggested a connection with Elvis’ estate because when people bought those items they probably did not care who made, sold or licensed them. In Irvine v Talksport150 an image of Eddy Irvine, then a famous Formula 1 racing driver, was used in a promotional advertising brochure for the Talksport Radio Station. Laddie, J found that the brochure created a false impression that Irvine had endorsed the radio station.

c) Damage

The third element to sustain a passing off action requires a claimant to prove that he has suffered or is likely to suffer damage as a result of the misrepresentation or misappropriation of his personality.151 There are five types of damage recognized by courts in passing off claims, namely: (1) a loss of existing trade and profit; (2) a loss of potential trade and profit; (3) a loss of licensing revenues; (4) damage to reputation; and (5) damage arising from dilution of goodwill as a result of the misrepresentation.152 For claims alleging misappropriation of personality or image rights, the third and fourth types of damages must be demonstrated. Loss of licensing revenues or future profits is sufficient to establish damage sustained. The claimant must demonstrate that the defendant’s misappropriation of his or her image or personality has undermined the claimant’s ability to license his image or personality aspects to other parties and has therefore lost potential revenue.153 Without establishing this form of damage (loss of potential future licensing revenues), it would be difficult for a celebrity to prove damages if they had not already entered into a licensing arrangement for their image.154 A case that illustrates this is Mirage Studios v Counter-Feat Clothing.155 The claimants were creators of popular cartoon characters known as ‘Teenage Mutant Ninja Turtles’. The defendant licensed other parties to reproduce images of the cartoon characters on clothing without authorization from the claimants. Browne-Wilkinson V-C held that the claimant suffered damage as they lost the royalties that would otherwise have been paid to them for use of the images. The loss of licensing revenue depends on the extent to which the claimant is legally able to control the use of their image, such as through licensing. Importantly, courts will only recognize damage through loss of royalties where licensing is likely to take place. Damage may also occur where the misrepresentation has a negative impact on the claimant’s reputation although the claimant may also be required to prove damage to goodwill in addition to proving damage to reputation.156 Reputational damage may arise when the unauthorized commercial use of the claimant’s image leads the public to infer that the claimant authorized the use of their image and has therefore endorsed the defendant’s goods and services. The use of a sport celebrity’s photograph to market cigarettes for example may damage his or her reputation.

A recent case which emphasizes the importance of all three elements to sustain a passing off action is the UK Court of Appeal’s decision in Robyn Rihanna Fenty v Arcadia Group Brands Ltd (t/a Topshop).157 In 2012 the defendant Arcadia Group Brands Ltd trading as ‘Topshop’ began selling t-shirts bearing the photograph of the singer Rihanna in Topshop stores. The photograph was taken by a third party during the video shoot for one of Rihanna’s album singles. The third party being the owner of the copyright in the photograph licensed the use of the photograph to Topshop. Rihanna sued Topshop for passing off claiming she did not license the use of the photograph to Topshop and therefore selling the t-shirts with her image amounted to passing off, and was likely to mislead the public into believing the t-shirts had been endorsed by her or that she had licensed the use of her image in the t-shirts. Topshop, using arguments similar to those propounded by Laddie, J in the Elvis case, argued that customers purchased the t-shirts simply because they liked the t-shirts and that there was nothing on the t-shirt which represented it as having been licensed or authorized by Rihanna herself. The issues for consideration were: whether the claimant had goodwill and reputation amongst relevant members of the public; whether the defendant’s action of selling t-shirts bearing the claimant’s image amounted to misrepresentation; and whether such misrepresentation was likely to damage the claimant’s goodwill. The High Court found for the claimant on all three issues and departed from the earlier decisions in cases cited above such as Lyngstrad v Annabas Products158 and Elvis Presley Trade Marks.159 The court held that although most purchasers would buy the t-shirt without considering whether it was or was not authorized, a substantial number of those considering purchasing the t-shirt would be induced to think that the claimant authorized the use of her image on the t-shirts. The fact that there was no indication of the claimant’s authorization on the swing tag or neck label pointed firmly against authorization but was not strong enough to negate the impression that the garment was authorized by the claimant. Some consumers would buy the t-shirt because they thought Rihanna approved it, others because of the value of the perceived authorization. In both cases, they would have been deceived.

The claimant’s goodwill had been damaged because a substantial number of purchasers were likely to be deceived into buying the t-shirt under the false belief of authorization by the claimant. The value of the damage would amount to lost royalties or licensing fees which the claimant would have obtained if the t-shirts had indeed been authorized by the claimant as well as damages to the claimant’s reputation. Birss, J clarified that this case was not about image rights or the right to privacy – which do not exist in the UK – but rather passing off.160 Topshop appealed to the Court of Appeal on four points. Firstly, that the judge erred in law by failing to recognise that there were differences in law between endorsement and merchandising, and that people bought the t-shirts not believing they were endorsed by Rihanna but as merchandise bearing her image and therefore there was no misrepresentation. Secondly, the judge failed to acknowledge that where an image of a famous person is used on goods, that image should be treated as origin-neutral in assessing passing off claims. Thirdly, the judge erred by failing to assess the claim based on persons for whom the presence of the image of Rihanna on the t-shirt was origin neutral, rather than on the basis of the perceptions of persons who regarded the image on the t-shirts as an indication of N. Finally, Topshop argued that Rihanna had failed to establish that the image used on the t-shirts was in any way distinctive. The Court of Appeal ruled against all four arguments and upheld the High Court’s decision. The decision in the Rihanna Fenty case is different than other cases we have considered above largely because Rihanna was able to demonstrate that she had goodwill in her image as a fashion leader engaged in fashion, music and entertainment business. The case demonstrates the importance of goodwill, misrepresentation and damage in the tort of passing off and also sheds light on the limitations of copyright. as well as the general right to privacy as a means to protect against unauthorized commercial use of a well-known personality’s image or likeness.

d) Breach of confidence

Several decisions have confirmed that in situations where a celebrity’s image is used in a manner which breaches confidence, a claim for breach of confidence may arise. This was confirmed in Douglas v Hello161 where the Hollywood actor Michael Douglas and his wife Catherine Zeta-Jones entered into a contract with ‘Ok!’ Magazine worth over £1 million, where the magazine was given exclusive rights to cover the couple’s wedding in New York. The couple had the right to select the final photographs to be used and published by Ok! Magazine. Ok! Magazine went to great lengths to ensure strict confidence and exclusivity at the wedding ceremony by taking stringent measures, including requiring all guests to surrender any device capable of taking photographs, and prohibiting photography at the wedding and at the reception. Employees were also required to sign confidentiality agreements prohibiting them from taking photographs at the wedding ceremony and reception. A freelance photographer, however, managed to gain entry into the private wedding and took photographs which he sold to the defendant, ‘Hello!’ Magazine. The claimants, including ‘Ok! Magazine’, sought an injunction against Hello! Magazine restraining them from publishing the photos and sought damages on account of breach of confidence, invasion of privacy and breach of the Data Protection Act, 1998. The High Court in 2001 upheld the claims for breach of confidentiality and the Data Protection Act and granted an injunction, but the invasion of privacy claim failed. The High Court restated the law with regard to breach of confidence highlighting that three requirements must be established in a breach of confidence claim, namely that there must be an obligation of confidence, that the obligation must arise in private occasions, and the requirement to keep the confidence must be essential and exercised during the occasion, as it was in this case through the claimant’s requirement that no photographs were to be taken at the wedding or at the reception. On appeal in 2003, the Court of Appeal reversed the High Court’s decision on the ground that the obligation of confidence only attached to the photographs taken by Ok! Magazine which were authorized by Douglas and Zeta-Jones and not to any other photographs. The claimants appealed to the House of Lords. Two issues were the subject of appeal: whether Hello! Magazine was liable to OK! Magazine for breach of confidence; and whether Hello! Magazine was liable to OK! Magazine for interfering with their business interests by unlawful means. The House of Lords reversed the Court of Appeal judgment in a 3-2 majority, holding that OK! Magazine had paid £1 million for the benefit of the obligation of confidence imposed upon all those present at the wedding in respect of any photographs of the wedding. The claimants were entitled to enforce that obligation but could not claim invasion of privacy.

Similarly, in Campbell v MGN Ltd,162 supermodel Naomi Campbell was photographed leaving a Narcotics Anonymous meeting. The ‘Mirror’ newspaper published those photographs showing pixelated faces of other attendees of the meeting to protect their identities. The headline alongside the photograph reads ‘Naomi: I’m a drug addict’ and the article contained in very general terms information relating to Ms Campbell’s treatment for drug addiction, including the number of Narcotics Anonymous meetings she had attended. Interestingly, the claimant herself admitted that there was a public interest justification for the publication due to the fact that she was a drug addict and was having therapy. She, however, asserted that the publication of additional details regarding the number of meetings she had attended and treatment she underwent was in breach of confidence for which she claimed damages and compensation under Sec. 13 of the Data Protection Act 1998. At the High Court, Morland J. upheld both claims for breach of confidence and compensation and awarded her £3,500 damages. The Court of Appeal reversed this decision and Ms Campbell appealed to the House of Lords. The issue for determination at the House of Lords was whether publication of the additional information contained in the photographs and the nature and details of the claimant’s treatment amounted to breach of confidence. The House of Lords by a 3-2 majority reversed the Court of Appeal decision and upheld the High Court decision and damages, finding that the additional published information was confidential as its publication would have caused substantial offence to a person of ordinary sensibilities in the claimant’s position and constituted an infringement of the claimant’s rights under Art. 8 of the European Convention on Human Rights. Dissenting, Lords Nicholls and Hoffman opined that the Court of Appeal was correct in holding that the additional published information was within the degree of latitude afforded to journalists.

e) Distinguishing between breach of confidence and right to privacy

Decisions such as Douglas v Hello163 and Campbell v MGN164 provide an alternative route to passing off actions. However, breach of confidence claims must not be confused with right to privacy claims. Breach of confidence claims allow individuals – particularly celebrities and public personalities – the opportunity to obtain redress in situations where the use of their images would not fall within the scope of the tort of passing off, or where unauthorized use of the images would not amount to an invasion of privacy. The caveat is that in order to establish a claim for breach of confidence, there must be an obligation to keep the confidence, and it must be demonstrated that the claimant took measures to ensure such confidence would be maintained and therefore legitimately expected such information would be held in confidence. In contrast, claims founded on violation of the right to privacy require the claimant to demonstrate that there was legitimate expectation of privacy. Passing off claims are tort-based actions requiring a claimant to establish damage to goodwill arising from misrepresentation by the defendant.

f) Other remedies

Cases such as Douglas v Hello, Campbell v MGN, and others,165 have led to calls for the recognition of a personality or publicity right in English law. English courts, however, have avoided recognizing such a right, preferring instead to leave it to the legislature to do so, or self-regulation through licensing contracts and other market driven regulatory mechanisms. Cornish and Llewelyn (2003) demonstrate that other regulatory remedies could be used to prevent misappropriation of personal images.166 Personalities whose images are used without their authorization by third parties for advertising and marketing could lodge a complaint to the Advertising Standards Authority (‘ASA’) under either rule 3 (misleading advertising) or rule 6 (privacy) of the UK Code of Non-broadcast Advertising and Direct & Promotional Marketing (CAP Code) or under the corresponding rules 3 and 6 of the UK Code of Broadcast Advertising (BCAP Code).167 Moreover, ASA may take into account consumer protection under the Unfair Trading Regulations 2008 when making determinations on complaints involving allegedly misleading advertisements. These complaints, however, take time to investigate and determine, but complainants are not entitled to receive monetary compensation. The outcome of the investigations is just the removal from circulation and publication of the offending advertisement.

5. Personality/image rights in the Bailiwick of Guernsey

The Bailiwick of Guernsey (‘Guernsey’) is a very special case in that it has specific substantive and procedural law recognizing and providing for registration of personality or image rights. Guernsey is a group of islands in the English Channel which is a British Crown dependency, and is independent of the United Kingdom. Though not an independent jurisdiction in itself as in the nature of a State recognized by the United Nations, it is a separate jurisdiction whose loyalty lies to the British Crown and not to the UK Parliament. Unlike the UK, Guernsey has a sui generis right of publicity codified in the Image Rights (Bailiwick of Guernsey) Ordinance, 2012.168 This legislation contains substantive provisions recognizing personality and image rights and establishing a framework for registration of personality rights.169 The statute identifies various categories of ownership of image rights and how they can be transferred and licensed.170 It enumerates the elements for infringement of image rights171 and limitations of image rights.172 Thirdly, the Ordinance establishes the substantive and procedural basis for infringement proceedings identifying the orders and damages that may be sought by prospective claimants.173 Fourthly, the Ordinance recognizes moral rights as part of image rights.174

The Ordinance creates property rights for a ‘registered personality’ which are created through registration of a personality in the Register.175 Registration of personality rights enables the proprietor acquire image rights as well as moral rights for individual personalities which, in the event of infringement resulting from the unauthorized use of the registered personality’s image, invokes the remedies provided by the Ordinance.176 Registration can be denied if the personality or image right is: contrary to public policy or accepted principles of morality; deceptive; in bad faith; prohibited under any written law, rule or enactment; or if the requirements of the Ordinance are not met.177 The registered personality’s image rights can also be licensed.178 A personality may be registered for a period of ten years from the date of registration and may be renewed for further periods of ten years.179 An image may be registered for a period of three years from the date of registration and may be renewed for further periods of three years. Moral rights, however, apply only to natural persons180 and although they are not assignable (transferable)181 they are nonetheless transmissible on death.182 A registered personality is personal or movable property183 which is transmissible by assignment, testamentary disposition or operation of law in the same way as other personal or movable property.184 The Image Rights Ordinance, 2012 sets out numerous categories of non-registrable personality rights, including personalities which are identical to other existing personalities,185 contrary to public interest,186 deceptive,187 made in bad faith,188 or based on an existing personality.189

Infringement of a registered personality’s image rights occurs when an image is used for commercial purposes or for financial or economic benefit without the consent of the proprietor of the image rights.190 Importantly, an image must have actual or potential value at the time of infringement in order for it to be enforceable under the Ordinance.191 An image acquires actual or potential value if it has the potential to be exploited for valuable consideration.192 Registered personality rights are, however, not absolute. Certain uses are exempt from falling within the scope of infringement. These limitations and excepted uses include:

  • Use for comparative advertising which is in accordance with honest practices in trade, commercial or non-profit matters;

  • Use of a picture of a personnage solely as a member of the public where they are not identified or singled out;

  • Good faith, descriptive or fair use for purposes of identifying or describing something other than the personnage attributed to the image;

  • Fair dealing use for research, news reporting, educational purpose, commentary, satire or any other purpose which is not detrimental to the legitimate interests of the image rights proprietor;

  • Incidental use;

  • Acts of public administration and law enforcement done under statutory authority;

  • Making of temporary copies; and

  • Goods or services put on the market with the right owner’s consent.193

Infringement of a registered personality’s image rights is actionable by the proprietor of the image rights.194 The following remedies can be granted in successful infringement actions:

  • Order to cease production, communication, transmission, use or circulation of the infringing goods, material, publications or articles;195

  • Order for delivery of infringing goods, material, publications etc;196

  • Order for disposal of infringing goods, material, etc. by destruction or otherwise.197

Guernsey’s Image Rights Ordinance is the only legislation of its kind with such a comprehensive substantive and procedural framework for the registration and protection of personality rights. There is no requirement that an applicant/proprietor must be resident or established in Guernsey to register a personality. Anyone anywhere in the world can register a personality provided the applicant is legally entitled to exploit rights in the personality by virtue of being the actual personnage or a person in whom the personnage rights have been vested. Guernsey’s experience with its unique Image Rights law is one which could serve as a model for other jurisdictions seeking to have a point of reference with a view to developing their own sui generis image rights or right of publicity legislative framework. However, not much information is available on Guernsey’s experience with its image rights law even though it is now five years since it came into effect.

6. United States

Several US states have developed legislative frameworks recognizing the right of publicity as a step further to the tort of unfair competition198 and privacy laws.199 The right of publicity has been recognized in several states for well over 50 years against the backdrop of judicial caution that defining and delimiting a novel exclusive right in intangible subject matter is a legislative not a judicial role.200 From as early as 1905 the right of publicity was recognized by state courts as a common law right as demonstrated in Pavesich v New England Life Ins. Co201 where the Georgia Supreme Court unanimously held that the unauthorized use of the plaintiff’s image by the defendant in advertisements for the defendant’s life insurance business violated the plaintiff’s right of publicity.202

A significant number of states in the US generally recognize a right of publicity as a distinct body of law, with its own underlying principles and history independent from both trademark and copyright law. Publicity rights are based on State law and not Federal law. This means there are varying degrees of recognition and enforcement of the right across different States and therefore a distinct lack of uniformity, particularly with respect to the scope of protection, damages available and transmissibility (inheritability). At the last count, 38 states had recognized the right of publicity in common law with 22 of those states having specific statutory enactments on the right of publicity.203 Most states have either a common law or statutory right of publicity, and many of those that do not expressly recognize a right of publicity either in common law or State law implicitly recognize the right of publicity given that no state has so far explicitly rejected the right of publicity.204 The right of publicity has its roots in the right to privacy and economic exploitation.205  The phrase ‘right of publicity’ was coined by Judge Jerome Frank in Haelan Laboratories, Inc. v Topps Chewing Gum, Inc.206 In Haelan the appellant had entered into agreements with various professional baseball players for exclusive rights to use the players’ images for marketing the appellant's chewing gum. The respondent also manufactured and marketed its brand of chewing gum, but did not obtain consent from the players concerned to use their images in connection to advertising their brand. The court held that, in addition to the statutory right to privacy obtaining in New York Civil Rights Law, a right to publicity could also be derived from the common law of New York. The decision in Haelan is credited with having paved the way for the recognition of the right to publicity in more than 30 states. It also marked what one commentator noted as ‘the start of a judicial and legislative movement delineating an economic right in one’s persona distinct from the right of privacy or any of the other cognates and analogues in tort law.’207

The right of publicity allows individuals to control the commercial use of their name, image, likeness, or other aspects of identity. It is also viewed as the right to ‘manage fame,’ while the right of privacy is seen as ‘the right to be let alone.’208 Although it has its roots in the right of privacy, the right is recognized as a property right, which includes unauthorized public disclosure of private facts, false depiction, and misappropriation of name and likeness. In Porten v University of San Francisco209 the court held that the right to identity could also be protected by means of the tort of invasion of privacy which could arise in one of four instances, namely: through violation of the plaintiff's physical and intimate seclusion; publication which is contrary to generally accepted norms of decency; publication which places the plaintiff in a false light; and by using the image of the plaintiff for commercial gain without consent. The distinction between the right of privacy and right of publicity is aptly described as follows:

‘[T]he right of publicity grants individuals a right that is perhaps subtly different from privacy; it allows individuals to stay out of the public eye by prohibiting truthful, non-deceptive speech about an individual just outside of the right of privacy. The right of publicity protects also against unwanted fame.’210

Being regulated by State law rather than Federal law, there are variances in protection of the right across different states in the US However, the common elements of the right of publicity in most state laws are name, image and likeness but can include other aspects such as voice or other identifying objects.211 Interestingly, the right of publicity extends to every individual, not just those who are famous although a review of publicity rights cases reveals that disputes involving the right of publicity are usually originated by celebrities as they possess the names and images sought after by advertisers and therefore commercially exploitable.

a) Distinction between intellectual property rights and right of publicity

There is a clear distinction between the right of publicity and intellectual property rights specifically copyright and trademark. Copyright is the bundle of rights acquired by an author for ‘original works of authorship fixed in any tangible medium of expression.’212 The exclusive rights held by a copyright owner apply to the work itself. The right of publicity and copyright exist simultaneously and independently over the same subject matter, and so the use of a person’s picture in an advertisement may require authorization from the photographer for copyright use, and from the subject of the photograph for purposes of the right of publicity use.213 Copyright and the right of publicity are entirely separate and distinct. Greenberg and Lovitz (2012) 214 state the difference as follows:

‘The incentives for creativity embodied in copyright law and the incentives for fame embodied in the right of publicity conflict when creative individuals use the personal attributes of others in their works. Under copyright law, a work is controlled by its creator. Thus, a book about a person belongs to its author, a sculpture of a person belongs to its sculptor, and a photograph of a person belongs to its photographer. Under the right of publicity, however, control is often placed in the hands of the subject depicted in the creative work.’215

There are notable similarities between the right of publicity and trademark. The right of publicity is treated as a property right in most states, as are trademarks. Both aim to prevent misappropriation, and both also function to some extent as indications of quality to consumers. This is especially so where celebrities, or their estates, regularly exercise discretion in the licensing of the celebrity’s publicity rights. Given the similarities between the right of publicity and trademark, sometimes overlaps may arise. However, publicity rights and intellectual property rights are generally distinct and exclusive rights. This distinction has emerged in several cases which confirm that federal copyright and trademark laws do not pre-empt state laws on the right of publicity, although this point is not settled in law.216 A notable case which brings out the difference between copyright and the right of publicity – and which demonstrates that claims fashioned under copyright can be instituted independently and of simultaneously with claims brought under the right of publicity – is the 7th Circuit Court of Appeals decision in Toney v L’Oreal USA Inc,217 where the 7th Circuit held as follows:

‘A person’s likeness her persona is not authored and it is not fixed. The fact that an image of the person might be fixed in a copyrightable photograph does not change this. From this we must also find that the rights protected by the IRPA [Illinois Right of Publicity Act] are not “equivalent” to any of the exclusive rights within the general scope of copyright that are set forth in §106. …  The fact that the photograph itself could be copyrighted, and that defendants owned the copyright to the photograph that was used, is irrelevant to the IRPA claim. The basis of a right of publicity claim concerns the message-whether the plaintiff endorses, or appears to endorse the product in question. One can imagine many scenarios where the use of a photograph without consent, in apparent endorsement of any number of products, could cause great harm to the person photographed. The fact that Toney consented to the use of her photograph originally does not change this analysis. The defendants did not have her consent to continue to use the photograph, and therefore, they stripped Toney of her right to control the commercial value of her identity.’218

The decision in L’Oreal is remarkably consistent with the Kenyan decision in Rukia Idris v Mada Hotels Limited,219 where although the issue of parallel existence between copyright and the right of publicity was not explicitly discussed in the Rukia case, it is nonetheless alluded to in various parts of the judgment and the findings were similar in both cases. In Motown Record Corp. v Hormel & Co.220 the defendant made an advertisement containing the image of three artistes known as ‘The Supremes’. The advertisement featured a song with a tune copied from the plaintiff’s song recorded by ‘The Supremes’. The plaintiff claimed that the use of the image of ‘The Supremes’ in the commercial without Motown's permission, coupled with the unlicensed use of the musical composition, was likely to cause confusion and create a false impression by the public that Motown authorized the use of the image. The plaintiff’s cause of action was on unauthorized use of a copyright protected work as well as in § 3344 of the California Civil Code.

The court recognized that § 3344 may not be pre-empted by Federal copyright law. However, the court found it would have been premature to enter a judgment for the plaintiff on the basis of § 43(a) of the US Trademark Act (hereinafter ‘Lanham Act’)221 with respect to the claim that the defendant’s use of the image of ‘The Supremes’ in the commercial was an attempt to mislead the public and the trade into believing the defendants had obtained a license from Motown to promote their beef stew. The court found in this respect that the plaintiff did not assert passing off and therefore this part of the claim could not succeed. In ETW Corp. v Jireh Publishing222 Tiger Wood’s licensing agent sued the defendant alleging trademark violation in the defendant’s painting portraying Tiger Woods. The court held as a general rule, that trademark could not apply to a person's image or likeness and further that the US Lanham Act applied to artistic works only where the public interest in avoiding confusion outweighed the public interest in free expression. In James ‘Jim’ Brown v Electronic Arts, Inc.223 the plaintiff, Jim Brown – a famous professional American football player in the late 1950s and early 1960s – sued Electronic Arts (‘EA’), a video game producer and publisher for using his image in a video game without his authorization. EA had concluded licensing agreements with the National Football League (NFL) to use the names and likenesses of current NFL players. However, former NFL players, including Brown, were not covered in those agreements. In the suit Jim Brown claimed that EA violated § 43(a) of the Lanham Act by using his likeness in several versions of its video game ‘Madden NFL’ without compensating him. The District Court dismissed his claim and Mr. Brown appealed to the 9th Circuit Court of Appeal. The Court of Appeal upheld the District Court’s decision finding that the Lanham Act (US Trademark Law) did not apply to expressive works unless the use of the likeness had no artistic relevance to the underlying work whatsoever, or if it had artistic relevance, the use explicitly misled consumers as to the source of the work. These cases demonstrate as a general principle that the right of publicity is a distinct body of law separate from both trademark and copyright law and with its own underlying principles.

A number of cases bring out the interesting relationship between public interest and the first amendment right of self-expression on the one hand and publicity rights on the other. The Supreme Court’s 1977 decision in Zacchini v Scripps-Howard Broadcasting Co.224 is regarded as the first and only US Supreme Court ruling so far on the right of publicity. In that case, a freelance reporter took a video recording of the entire performance of Hugo Zacchini’s human cannonball act despite the fact that Zacchini had expressly forbidden this. The respondent thereafter broadcast the entire film, prompting the suit. The court of first instance and the Ohio Supreme Court both held against Zacchini, holding that although Zacchini had a cause of action for the infringement of his state-law right to publicity, Scripps-Howard was constitutionally privileged to include in its newscasts matters of public interest which would otherwise be protected by the right of publicity, absent an intent to injure or to appropriate for some non-privileged purpose.225 The US Supreme Court in a 5-4 opinion delivered by Justice Byron White overturned the Ohio Supreme Court’s finding and held that broadcasting the entire performance without authorization from Zacchini was not justified under public interest. This decision was short-lived as in 2006 the New York County Supreme Court in Nussenzweig v DiCorcia226 held that personality rights did not override legitimate First Amendment rights of artistic free expression. This decision was subsequently upheld by the Appellate Division of the New York Supreme Court.227 It could be argued that the Nussenzweig and Zacchini decisions are distinguishable in that public broadcasting of an entire performance without prior authorization does not fall in the category of artistic free speech so as to merit protection under public interest. Either way, there is no clear boundary between the First Amendment right of free speech and the right of publicity. However, as we shall find out in the next section, courts have attempted to develop a succinct test.

The importance of domicile and the issue of whether publicity rights can be acquired posthumously came up in a 2012 decision by the US Court of Appeals for the Ninth Circuit in Milton H. Greene Archives, Inc. v Marilyn Monroe LLC. & others.228 The issue in this case was whether the estate of Marylyn Monroe inherited a right of publicity in Monroe’s name and likeness under California law. The right was recognized in the states of California and Indiana decades after the actress’ death. Her last will and testament was subject of probate proceedings in the State of New York which did not recognize a posthumous right of publicity. The issue of the appellant’s rights turned on whether she was domiciled in New York or California at the time of her death. The Court of Appeals affirmed the District Court’s finding, holding that Monroe’s executors consistently represented during the probate proceedings that she was domiciled in New York at her death to avoid payment of California estate taxes, and therefore the appellants were estopped from asserting California’s posthumous right of publicity. Had the Court of Appeals held that she was domiciled in California at the time of her death, and that therefore California law was applicable, it is quite unlikely that Marilyn Monroe’s estate would have succeeded anyway, as California’s publicity rights law came into force after her death and could not be applied retroactively.

In Phillips v Scalf229 the great nephew of John Dillinger sued a restaurant for the unauthorized use of Dillinger’s name for commercial purposes. The Indiana Court of Appeals affirmed the trial court ruling and declined the defendant’s motion for transfer of venue. The court ruled that, for purposes of venue of the suit, the term chattels was not limited to tangible assets but also intangible assets, such as the right to publicity. Subsequently, in 2011, a US District Court held in Dillinger LLC v Electronic Arts Inc230 that Indiana’s publicity rights statute did not apply to people who died before the law was enacted in 1994. All these cases also demonstrate the fine line and dynamic relationship that exists between public interest, freedom of expression, privacy, and publicity rights in the US. As noted above, different states have different positions as to different elements of publicity rights.231

b) Right of publicity and free speech

US courts have interpreted the right of publicity as being subject to the First Amendment right of free speech. The balancing test between the right of publicity and the First Amendment right of free speech was developed in Comedy III Productions v Gary Saderup, Inc.232 famously referred to as the ‘Three Stooges case.’ Comedy III Productions – as owner of the publicity rights in ‘the Three Stooges’ – sued Gary Saderup, a well-known lithographer artist claiming damages and injunctive relief. The defendant sold lithographs and t-shirts containing reproductions of his charcoal drawings which depicted the deceased members of the ‘Three Stooges’. The plaintiff had not authorized the use of the ‘Three Stooges’ image on the t-shirts, and neither was permission sought to use the images. The suit was filed in California where there is a statutory right of publicity. Integral to the case was the conflict between the right of publicity under California law as asserted by the plaintiff, and the First Amendment right of free speech, which was asserted by the defendant. The Californian Supreme Court developed a balancing test ‘based on whether the work in question adds significant creative elements so as to be transformed into something more than a mere celebrity likeness or imitation.’233 The Court defined the test as follows:

‘When a work contains significant transformative elements, it is not only especially worthy of First Amendment protection, but it is also less likely to interfere with the economic interest protected by the right of publicity.’234

The test for determining whether a work is transformative involves asking ‘whether a product containing a celebrity’s likeness is so transformed that it has become primarily the defendant’s own expression rather than the celebrity’s likeness.’235 The Court found that in order for the work to be deemed sufficiently transformative so as to be exempted under the First Amendment right of free speech, it is necessary to ask:

‘Does the marketability and economic value of the challenged work derive primarily from the fame of the celebrity depicted? If this question is answered in the negative, then there would generally be no actionable right of publicity. When the value of the work comes principally from some source other than the fame of the celebrity – from the creativity, skill, and reputation of the artist – it may be presumed that sufficient transformative elements are present to warrant First Amendment protection.’236

The Court stated that the right of publicity could not be used to ‘control the celebrity’s image by censoring disagreeable portrayals’237 or to control transformative expression, which was protected by the First Amendment. Mere reproduction of a celebrity’s image therefore would not be protected by free speech as it would not meet the transformative test. In Dustin Hoffman v Capital Cities/Abc, Inc. & L.A. Magazine, Inc.238 the US Court of Appeals for the 9th Circuit held that the use by a magazine of a digitally altered photograph of a celebrity in an editorial context was protected under the First Amendment right of free speech. In this case, L.A. Magazine published an issue titled ‘fabulous Hollywood’ containing digitally altered images of celebrities which were made to appear as if the celebrities were wearing spring 1997 fashion-wear. Dustin Hoffman sued the L.A. Magazine and its parent company under California’s publicity rights laws, arguing that his name and likeness were used to sell fashion wear (that is to say, gowns and shoes which appeared in the altered picture). The District Court for the Central District of California agreed that the use of Hoffman’s image was ‘exploitative commercial use’ which was not entitled to First Amendment protection. However, on appeal the 9th Circuit overturned the District Court’s decision, finding that the use of the altered photo was not commercial speech because L.A. Magazine ‘did not use Hoffman’s image in an advertisement printed merely for the purpose of selling a particular product … L.A. [Magazine] did not receive any consideration from the designers for featuring their clothing in the fashion article … nor did the article simply advance a commercial message.’ Since the use of the altered image was non-commercial, the defendants were protected under the First Amendment and Hoffman was only entitled to damages if there was actual malice in the form of ‘reckless disregard for the truth’ or ‘a high degree of awareness of probable falsity.’ No proof of malice was presented at the trial. Moreover, the defendant expressly referred in the magazine article to the fact that the photos were digitally altered and that none of the celebrities actually wore any of the featured clothing line at the time the photos were taken.

Due to the different statutory and common law approaches with respect to the right of publicity in the US debate as to the merits or demerits of having a federal right of publicity, statute has been growing.239 Partly as a result of the similarities between trademark law and publicity rights, suggestions to nest the right of publicity within trademark have been viewed as likely to be problematic, if not untenable.240 This is because both rights systems, though similar, are ‘motivated by different primary concerns’241 and ‘the important reality that the right of publicity is only analogous, not identical, to the law of trademarks.’242 Presently, the need to create a federal right of publicity is unsettled. State law regimes on publicity rights have been viewed for the time being as being satisfactory given that some considerable degree of consistency in publicity rights legislation exists from state to state.243

Several defences have been commonly employed in right of publicity claims.244

  • Public interest: where the use of the plaintiff’s image or likeness is a fair comment on real life events or contributes significantly to a matter of public interest.

  • Transformative use: if the use of an image is ‘so transformed that it has become primarily the defendant’s own expression rather than the celebrity’s likeness,’245 such use does not violate the right of publicity.246 As witnessed in the decisions in Comedy II Productions v Gary Saderup (‘the Three Stooges Case’) and in Dustin Hoffman v Capital Cities, transformative use of an image may give rise to First Amendment protection.

  • Parody: caricatures and other parody uses of a person’s image or likeness do not violate publicity rights and could be protected under the First Amendment right of free speech.247

  • Fleeting reference or incidental use: incidental uses or mere references may not give rise to right of publicity claims.248

  • Consent: the plaintiff’s consent to use the image or photographs will estop him from claiming breach of his right of publicity arising from such authorized use.249

  • Copyright pre-emption: where the subject of the alleged misappropriation is expressed in a tangible medium which was produced under license from the plaintiff, no claim for the right of publicity arises.250 However, as we saw above in decisions such as the L’Oreal case, federal copyright law does not override or pre-empt state publicity rights laws particularly in circumstances where there was no consent or where there is unauthorized commercial use. The law as to whether federal copyright law pre-empts state publicity rights is not settled.251

  • Statute of limitations: if the claim is filed out of time, the claim will be technically barred under the doctrine of laches.252

III. Personality rights in Kenya

Although no right of publicity exists in Kenya, the last decade has witnessed a significant rise in litigation touching on image or personality rights within the ambit of privacy rights. The right to privacy protects against intrusion upon an individual’s private self-esteem and dignity, while the right of publicity protects against commercial loss caused by appropriation of an individual’s personality for commercial exploitation.253 A survey of most of the cases involving publicity rights reveals that the subject matter revolves around unauthorized use of the claimants’ images in third- party advertisements. On 10 March 2016, the High Court held in T O S v Maseno University & 3 others254 that the ‘use of the images of an individual without his consent violates that person’s right to privacy … because a person's life is a restricted realm in which only that individual has the power of determining whether another may enter, and if so, when and for how long and under what conditions.’ In this case the courts recognized that any unauthorized use, including unauthorized commercial use, of an individual’s image could constitute violation of the right to privacy. In T O S the court did not distinguish between commercial and non-commercial use of an image mainly because when a court is asked to decide upon a claim based on infringement of the right of privacy, commercial concerns are not often at issue or relevant. This distinction is important because while courts may not be lenient on unauthorized commercial use of an image, a freedom of expression defense under Art. 33 Constitution of Kenya (2010) is conceivable with respect to non-commercial use. Furthermore, as we shall see further on, the courts have also conceived the test of legitimate and reasonable expectation of privacy in determining whether and to which extent the claimant’s privacy rights have been violated.255

Courts in Kenya characterize the right of publicity as a personal right of privacy rather than a property right. Arguably, the fairly liberal manner in which recent judicial decisions have interpreted and applied privacy rights in publicity rights claims achieves an effect comparable to (although not quite as expansive as) that existing in jurisdictions with specific legal framework recognizing publicity rights. However, notwithstanding the liberal judicial approach in interpretation and application of privacy rights, the full spectrum of the scope and utility of the right of publicity is only marginally covered under the right to privacy. This raises the issue of whether a sui generis publicity right should be recognized in Kenya.

There are different normative and jurisprudential approaches to personality rights across different jurisdictions. This leads us to question of whether the right to privacy is a suitable way to provide protection and reliefs for all manner of commercial interests that could conceivably arise in connection to protection of publicity rights. Claims based on the right to privacy are primarily ‘consent’ based in the sense that they provide legal remedies in instances of unauthorized use of a person’s image or likeness particularly for commercial purposes (with ‘unauthorized’ being the key word). The right to privacy as a means for enforcing publicity rights claims may have limited application in situations where prior consent had been granted but where such consent was not limited to either a specific use or to a particular period of use. Contract law provides limited protection for publicity rights, which is limited in scope to the parties of a contract within a limited duration and to specific uses identified in the contract. Therefore, specific provisions on the right of publicity would address this gap and provide a more nuanced framework for the protection of legitimate publicity rights interests – commercial or otherwise – which are not adequately catered for within the right to privacy.

Proponents of publicity rights principally espouse two main points of view, namely the economic incentive justification and the moral rights justification. The economic argument postulates that personality rights or image rights are predominantly driven, and arguably necessitated by, commercial interests and realities. 256 Although the right of publicity is not limited to celebrities,257 they – and other public personalities – have a particular interest in protecting the market value of their images.258 This value in the use of a public personality’s name, photograph and likeness has been styled by one scholar as ‘publicity value.’259 Celebrities invest considerable energy in nurturing their public image and the right of publicity enables them to protect against the unauthorized commercial use of their image or other indicia of their identities.260 By protecting the publicity value in one’s image as well as other indicia of identity, it is said that celebrities would have additional incentives to excel in their chosen fields, and in turn contribute to wider economic growth.261 It is this publicity value which some scholars have argued cannot be protected either under a privacy rights theory or other traditional rights-based theories such as unfair competition, copyright or trademark.262 The moral argument on the other hand justifies publicity rights on the strength of the labour theory.263 The argument posits that celebrities’ fame is directly attributable to their labour. The argument draws from Locke’s labour theory that if a person works hard to build their image they should have the right to choose how that image gets used as well as control who gets to profit from it.264 This argument has been strongly criticized by some scholars as being based on a fundamental misconception of the process by which fame is generated. They argue that ‘celebrities generally do not create commercially marketable public images in anything like the way carpenters make chairs.’265 Some scholars have also argued that the labour theory is inadequate and limited in that while it permits the celebrity to maintain the privacy of his non-professional life, ‘it does not protect him from the appropriation by others of the valuable use of his name and portrait.’266

Opponents of publicity rights argue that such rights amount to commercializing personality or facilitate ‘private censorship of popular culture,’267 and that property rights should not be bestowed or conferred upon abstract concepts such as one’s identity or indicia of identity and personality. The economic argument for publicity rights has also been criticized for ignoring ‘the distributional consequences of recognizing a right of publicity [by] shifting wealth away from the great mass of consumers to a very small group of persons who are already very handsomely compensated.’268 Madow suggests that ‘what we need to ask is not simply whether publicity rights ‘create added incentives’ for effort, achievement, and excellence in such fields as music, acting, and sports. We also need to inquire on whom these added incentives operate, and with what results, both for their individual lives and for the welfare of the groups and communities of which they are members.’269

Two competing schools of thought seem to have emerged. The first supports the notion that individuals have (or ought to have) a right to control how, where and when their images are used by third parties. This thinking supports a proposition or justification for the recognition of a new class of rights, herein referred to as ‘image or personality rights’, through a form of sui generis class of rights existing independently of the traditional rights-based theories such as copyright, trademark or unfair competition. Support for this school of thought is based on the notion that the right to privacy, trademark, copyright and unfair competition are respectively inadequate and therefore inappropriate to cover the full spectrum of issues arising under rights of publicity. Secondly, recognizing some kind of publicity right protection within existing trademark or copyright law would be seen to extend the domain of traditional intellectual property beyond their respective scope of application, itself an untenable proposition. The second school of thought propounds the argument that there is no such thing as ‘image or personality’ rights per se. It suggests that that as the primary contention behind the arguments for the creation of image rights is protection against unauthorized commercial exploitation, other legal means are available and perhaps more suitable, such as contract or suitable amendments to existing copyright or trademark laws to cover publicity rights. As we shall see, there are weaknesses inherent in each school of thought.

As noted at the beginning, in Kenya, claims involving unauthorized use of an individual’s photograph, image or likeness are based on the right to privacy. According to media reports of 15 June 2017270 Purity Njogu, a model, moved to court and sued the advertising agency ScanGroup Limited for continued use of her image and photographs in Kenya Airways advertisements despite the termination of her contract six years from the date it was executed. Ms. Njogu reportedly claimed that her images and pictures were repeatedly used against her will for economic gain and in violation of her right to privacy. According to the reports, an advertisement agreement was concluded between ScanGroup Limited and Purity in 2007 in which Ms Njogu was to serve as Kenya Airways model in a promotion campaign both locally and internationally. The respondents asserted that the agreement allowed indefinite use of her images which was contrary to her assertion that the agreement was for a limited time period. In another media report, a 2016 newspaper article271 featured a case filed by athlete Joseph Kibunja against two companies, Rohto Mentholatum Kenya Ltd and Harleys Limited. It was reported that Joseph claimed that the two companies had been using his photographs since 2012 for commercial marketing and promotional uses without his consent.

Other unreported similar cases include Dennis Oliech v EABL involving the use of three popular Kenyan footballers’ photographs by East African Breweries Ltd in advertisements and marketing campaigns.272Suzie Wokabi v Microsoft, Kitosiosio Ole Kutuk v Safaricom and Tealaso Lepalat v the German Embassy in Kenya are other unreported cases involving unauthorized use of images by various respondents.273

The emergence and impact of television, globalization of sports, the vast spread and use of the internet as a platform and medium for commerce in the Internet of Things and the growing influence of the entertainment industry – particularly the music and film industries – has culminated in the tremendous growth in celebrity value.274 Kenyan media is replete with celebrity images used for both commercial and public interest purposes. Celebrity endorsements are commercially sensible marketing strategies which can generate sales and create substantial goodwill in the branding strategy of the company whose products are endorsed.275 Although Kenyan law does not have a legal framework expressly recognizing the right of publicity, there are alternative legal tools and remedies at the disposal of would-be litigants which provide similar (if not quite the same) reliefs as those obtainable in jurisdictions where sui generis or common law legal protection for image or publicity rights exists. We will shortly examine these alternative remedies. Fortunately, we are not bereft of judicial guidance and courts in Kenya have in a few instances intervened and shed light on otherwise conspicuous gaps in the law. It should be said, however, that the courts have restrained themselves from going so far as to recognize a sui generis right of publicity altogether.

Our first judicial reference point turns on a ruling delivered by Justice Isaac Lenaola in December 2013 in Jemimah Wambui Ikere v Standard Group Limited & Nation Media Group.276 In this case, on different occasions in 2007 and 2012, the respondents Nation Media Group Limited and Standard Group Limited published in their respective newspapers several news articles reporting on the killing of one of Kenya’s then most wanted and notorious criminals, Bernard Matheri. The newspaper articles contained photographs of the slain gangster’s wife (the petitioner) and children. The petitioner took issue with the publication alleging that the said publications were ‘highly offensive and severely embarrassing to the minors as it prejudiced their innocence and psychological integrity’ and that by publishing those stories and pictures, the respondents’ actions were ‘calculated, intentional, reckless and negligent since they failed to give due consideration to the general interests of the children and safeguard their constitutional rights to privacy and dignity, thus prejudicing their reputation, development and growth.’277 The respondents raised a preliminary objection on the basis that the rights and fundamental freedoms set out in the Bill of Rights in the Constitution of Kenya, 2010 could only be vertically enforced by individuals by way of Constitutional Petition against the State and State organs, and not horizontally by an individual against another private person. In a landmark ruling divergent from the established precedent, Justice Lenaola ruled against the objection and held that the Bill of Rights was capable of enforcement by and against non-state actors, a phenomenon referred to as horizontal application. This is a departure from the traditional vertical application of the Bill of Rights. Justice Lenaola, however, cautioned that not every pain could be addressed through the Bill of Rights and alleged violations thereof, and the Constitution could not be used as a general substitute where other remedies were available in law.278 Identifying these other remedies in law is one of two objectives of this paper, the other being to establish the prevailing practice for the protection of publicity rights obtaining in other legal jurisdictions and deducing lessons from them. Our inquiry commences by investigating whether any alternative legal remedies for the protection of publicity rights exist in Kenya, and identifying and examining the nature and scope of those remedies.

1. Constitutional right to privacy as a personality right

The Constitution of Kenya 2010 is without doubt one of the most significant milestones in Kenya’s legal, political and historical development and struggle for reforms. It has been heralded as one of the most progressive constitutions in Africa279 and as one which, if properly and wisely implemented, promises to deliver genuine advancements towards realization of the collective aspirations of the Kenyan people. Article 31 of the Kenyan Constitution 2010 enshrines the right to privacy in the following terms:

‘Every person has the right to privacy, which includes the right not to have –

  • Their person, house or property searched.

  • Their possessions seized.

  • Information relating to their family or private affairs unnecessarily required or revealed; or

  • The privacy of their communications infringed.’280

A number of judicial pronouncements in Kenya have applied the constitutional right to privacy in a manner that allows persons to exercise legal control over the use of their images by third parties commercially or otherwise. The courts have nevertheless refrained from recognizing a new right of publicity. It should be noted that the constitutional right to privacy as pronounced by courts in Kenya applies to all individuals and is not a preserve of celebrities and public personalities. In addition, the right to privacy as applied by the courts covers both the use of unauthorized images and the use of authorized images in an unauthorized manner. This distinction is important because in jurisdictions where sui generis protection of publicity rights exists, the scope of those rights – and therefore the protection offered – differs depending on whether the images were authorized or unauthorized, or whether the use thereof was for commercial purposes or not. The UK, as we shall explore further on, is one such jurisdiction where the tort of passing off will only apply to the unauthorized commercial use of a person’s image, likeness or voice. The use of authorized images in an unauthorized manner would conceivably be resolved within contract, but I digress.

Article 31 has been invoked on several occasions in claims alleging violation of the right to privacy as a result of the unauthorized publishing of a person’s image. In JWI v Standard Group Limited & another,281 the court noted that Art. 31 of the Constitution of Kenya 2010 was broader in terms of the scope of its protection of the right to privacy when compared with Sec. 70(c) of the repealed Constitution.282 Importantly, the court noted that the right to privacy had ‘long been recognized by the common law as an independent personality right.’283

The common law right to privacy covers unlawful intrusion on personal privacy and unlawful disclosure of private facts about a person.284 It includes entry into a private residence, reading private documents, listening in to private conversations, shadowing of a person, disclosure of private facts acquired by a wrongful act of intrusion and disclosure of private facts in breach of a relationship of confidentiality.285 Similarly, the publishing of a person’s photograph as part of an advertisement without their consent was held in O’Keefe v Argus Printing and Publishing Co. Ltd to be an invasion of the common law right to privacy.286 The court in JWI v Standard Group287 relied on the definition of the right to privacy as provided in Art. 8(2) of the European Convention on Human Rights which provides: ‘The right to privacy consists essentially in the right to live one’s own life with a minimum interference. It concerns private family and home life, physical and moral integrity, honour and reputation, avoidance of being placed in a false light, non-revelation of irrelevant and embarrassing facts, unauthorized publication of private photographs, protection from disclosure of information given or received by the individual confidentially.’288 The court recognized that a legitimate expectation of privacy arose and that this expectation had two components: the protection of the individual and a reasonable expectation of privacy. The court further established that ‘publication of the images of an individual without his consent violates that person’s right to privacy [which] generally restricts the collection, use of and disclosure of private information irrespective of whether the information may be embarrassing or false so long as it may damage the dignity of an individual.’289 In answering the question as to whether the publication of the minors’ photographs as the children of a slain criminal constituted a violation of the right to privacy, the court held that a reasonable expectation of privacy must be established and that several factors identified in the South African decision of Mistry v Interim National Medical and Dental Council of South Africa290 must be fulfilled. These factors are as follows:

‘[O]ne ought to consider; whether the information was obtained in an intrusive manner; whether it was about intimate aspects of the applicants’ personal life; whether it involved data provided by the applicant for one purpose which was then used for another; whether it was disseminated to the press or the general public or persons from whom the applicant could reasonably expect such private information would be withheld.’291

The court further held that voluntary consent by a claimant will operate as a defense to a claim for breach of privacy.292 In the JWI case, the court found that publication of the photographs was made with the consent of the petitioner as the petitioner had voluntarily and unconditionally granted interviews to the respondents. The voluntary interviews given by the petitioner amounted to tacit consent to publish the photos as there was no evidence of coercion or evidence suggesting that the petitioner was not in a proper state of mind to give such consent.293 The court also noted that an intrusion into the right to privacy will be justified if it was in the public interest to do so.294 The court found that the right to privacy had not been violated given that the petitioner voluntarily and unconditionally gave interviews to the respondents.295 Interestingly, the court inferred consent to publish the photographs based on voluntary interviews by the petitioner. While consent can be express or implied, it could be argued that the petitioner would not have reasonably been expected to be aware that her consent to the publication of the minors’ photographs was required in the course of providing the interviews. It could be argued that a duty of care arose giving rise to a legitimate expectation on the petitioner’s part that the photographs would not be published without her express consent. Arguably, the court’s finding of lack of coercion or implicit consent based on no-objection to the interviews could be challenged on the ground that it would be expected of media houses to obtain such consent prior to or at the time of taking the interview. However, in the absence of data protection law to operationalize the Constitution, this argument would not hold.

The court proceeded to distinguish between actions for violation of the right to privacy and defamation in that each action protected different types of interests:

‘A defamation action leads to compensation in damages for loss of reputation or a good name caused by publication of false information. To be defamatory, a publication must therefore be false and must bring the defamed person into disrepute, contempt or ridicule or must impeach the Plaintiff’s honesty, integrity, virtue or reputation ‒ See Phoenix Newspapers Inc. v Choisser 82 ARZ. 271, 312 (1957). Privacy on the other hand does not protect reputation but protects mental and emotional interests. Indeed the gravamen of a privacy action is, “the injury to the feelings of the Plaintiff, the mental anguish and distress caused by the publication”. Another distinction between invasion of the right to privacy and defamation is the role played by the truth. To be defamatory, a publication must be false and truth is the defense. An invasion of the right to privacy may be brought even when the publication is not untrue and the actual facts stated are actually true.’296

The JWI v Standard Group297 case provides the elements which must be established for a claim of violation of the right to privacy to succeed. The case establishes that the right to privacy is recognized in common law as a personality right and that unauthorized publication of private photographs – whether taken with or without consent – constitutes violation of the right to privacy. This case also sets forth the important requirement of legitimate expectation with respect to the right to privacy. For a claim of violation of the right to privacy to succeed, the petitioner or applicant must demonstrate that there was legitimate expectation to privacy. Petitioners must also demonstrate that the publication of the information or photographs was intrusive, or was used for a purpose other than that which the applicant intended or consented to. The case identified two defenses to claims for violation of the right to privacy. The first is where the publication is in the public interest and the second being voluntary consent by the applicant. The court also affirmed that actions based on violation of the right to privacy and indeed actions for enforcement of the Bill of Rights are not bottlenecked by the doctrine of laches i.e. the limitations of actions due to effluxion or lapse of the prescribed statutory time limits for instituting actions. This is because there are no limitations for instituting actions for enforcement of the Bill of Rights.298

In the recent case of NWR & anon v Green Sports Africa Ltd & 4 others299 images of two minors were used on a Billboard without consent from the minors’ parents or guardians. The High Court pronounced itself on the nature of personality rights and recognized that personality rights consist of two rights, the right to privacy and publicity rights, as follows:

‘Personality rights encompass the exclusive right of an individual to market, control and profit from the commercial use of his/her name, image, likeness and persona. The distinctive characteristics of one’s image, likeness or persona include but are not limited to name, face, body or recognizable body part, voice or voice impersonation, photograph, look-alike, signature phrase, paraphernalia or action, costume or personals signature. … Personality rights, generally speaking, consist of two types of rights, the right to privacy and the right of publicity. The right of privacy is the right to keep one’s image and likeness from exploitation without permission or compensation and generally applies to members of the general public. The right of publicity is the exclusive right of an individual to market his or her image, likeness or persona for financial gain.’300

Interestingly, in NWR the court seems to recognize a common law publicity right separate to and distinct from the right to privacy. The court identified three elements to establish a claim for unlawful use of name or likeness:

  • Use of a Protected Attribute: The plaintiff must show that the defendant used an aspect of his or her identity that is protected by the law. This ordinarily means a plaintiff's name or likeness, but the law protects certain other personal attributes as well.

  • For an Exploitative Purpose: The plaintiff must show that the defendant used his name, likeness, or other personal attributes for commercial or other exploitative purposes. Use of someone's name or likeness for news reporting and other expressive purposes is not exploitative, so long as there is a reasonable relationship between the use of the plaintiff's identity and a matter of legitimate public interest.

  • No Consent: The plaintiff must establish that he or she did not give permission for the offending use.301

T O S v Maseno University & 3 others302 is another decision that demonstrates how courts in Kenya have applied the right to privacy to protect an individual’s publicity values. The petitioner claimed that the respondents had breached his constitutional right to privacy by publishing private and confidential medical records containing photographs of his wife and children. The court found that the petitioner’s rights to privacy had been infringed upon. The court stated that ‘publication or use of the images of an individual without his consent violates that person’s right to privacy … because a person’s life is a restricted realm in which only that individual has the power of determining whether another may enter, and if so, when and for how long and under what conditions.’303 The court, however, noted that the right to privacy was limited by the legitimate interests of others and the public interest includes exposing ‘an individual’s criminality or misconduct in order to protect the public.’304 However, the court found that the petitioner failed to establish the respondents’ involvement in leaking the information and therefore liability for the infringement could not be determined.

In Alfred Ombudo v Jane Odewale & another,305 the applicant sought an injunction to restrain the respondents from airing, broadcasting or publishing wedding videos and photos of the applicant without his consent on the basis that his constitutional rights risked being violated. The applicant consistently maintained he never granted permission for, or consented to, the use of his wedding videos and images for publication, broadcasting or airing for commercial or any other purposes. The respondents on the other hand alleged that the applicant was at all times aware that the shooting of pictures and video footage at his wedding was intended for publishing, airing or broadcast and therefore the applicant was estopped from claiming an intrusion to his privacy and further that the claim was in bad faith. The court found that the applicant did not consent to the use by the respondents of the applicant’s wedding images, voice or videos. The lack of consent was evidenced by the applicant’s continued protests from day one, which were ignored by the respondents and therefore the continued use by the respondents of the said images and video footage in the absence of such consent was offensive and a direct invasion of the applicant’s right to privacy. As the court succinctly put it, ‘the fact that one allows photographs or videos to be taken of his wedding ceremony does not mean that they have allowed, without express permission or authorization, the said videos or photographs to be published or broadcast to the whole world and for commercial purposes.’306 On this basis, an interlocutory prohibitory injunction was granted restraining and prohibiting the respondents, their agents or servants from broadcasting, airing or publishing the applicant’s wedding images.

Another landmark case is the 2013 decision in Rukia Idris Barri v Mada Hotels Ltd.307 The subject of the dispute in this case was the use in 2011 by the defendant of the claimant’s photograph which was taken in 1997 for use in the defendant’s marketing and promotion brochure specifically for the year 1997/1998. The plaintiff was then a casual employee/trainee of the defendant. During trial, it was established that the plaintiff and a director of the defendant reached a verbal agreement in which the plaintiff agreed to have her picture taken for use in a hotel brochure specifically for the year 1997/1998. Subsequently in 2011, the defendant used the same picture in an advertisement published in the Kenya Airways in-flight magazine ‘Msafiri.’ The plaintiff’s contention was that she agreed to a single use only and she did not consent to this subsequent use of her image in the Msafiri magazine advertisement. She asserted that the use of the photograph by the defendant violated her right to privacy and sought an injunction and general damages against the defendant. The issues for determination were firstly the terms regarding the taking and use of her photograph; secondly, whether the claimant’s consent to use of her photograph 14 years later was required; and thirdly, whether the claimant suffered any injury as a result of the subsequent allegedly unauthorized use of her photograph, and if so whether the plaintiff was entitled to the reliefs sought. On the first and second issues, the court found that there was a verbal agreement between the claimant and the defendant which was for a single use only.308 The court also found for the claimant on the question of injury holding that the use of the claimant’s image without consent was an invasion of her right to privacy and human dignity.309

The cases discussed above demonstrates three important facts in respect to the treatment and application of personality rights in Kenya: that personality rights are veiled in the constitutional right to privacy; that personality rights which are enshrined in the right to privacy are enforceable as a constitutional right; and any person whose image or likeness is used without their consent for any unauthorized purpose can institute a privacy rights claim. This is particularly so in circumstances where the unauthorized use of an individual’s image or likeness is construed as an intrusion upon a person’s legitimate expectation and right to privacy. These facts mark a significant application of the right to privacy in personality rights claims in Kenya.

2. Limitations of privacy rights theory in protecting publicity rights

The right to privacy has been described as the ‘right to be let alone’, while the right to publicity is ‘a right to manage fame’.310 Scholars have highlighted a few limitations of privacy rights as a means to protect publicity rights. The first of these limitations is the doctrine of waiver, where it has been argued that celebrities and public personalities are deemed to have waived their right to privacy to a certain degree by virtue of their status as public personalities.311 Although the expectation of privacy does not disappear simply because of the person being a public personality, their public status may limit his reasonable expectation of privacy.312 This means that while the right to privacy would protect the non-professional life of public personalities, such protection would not extend in connection to the public lives of celebrities and public personalities.313 Admittedly, the degree to which the doctrine of waiver of privacy applies is moot but it does not provide a convincing reason to support the recognition of an independent right of publicity. Besides, the right to privacy, like other constitutional rights, is an inalienable personal right which cannot be waived when someone achieves the ephemeral status of celebrity-hood. Scholars have put forward another limitation of privacy rights, namely the requirement for offensive use. Liability in damages in claims for breach of the right to privacy attaches only in instances where the use of the image is offensive and intrudes upon the limits of decency to what some scholars refer to as ‘persons of ordinary sensibilities.’314 This fact has been confirmed in the Rukia Idris Barri v Mada Hotels Ltd case above in the following terms: ‘it matters not that the photograph in question … was not of itself offensive. It would not matter in fact (except in so far as damages are concerned)’315

The third limitation of the right to privacy relates to the non-assignability of privacy rights. The right of privacy is a personal right and therefore not transferrable to third parties. Publicity values of well-known persons are greatly restricted if this value cannot be transferred (assigned) to others.316 This means that publicity values cannot be licensed to third parties, thereby reducing their value.

3. Other legal remedies in enforcing personality rights claims in Kenya

Existing case law has made evident the fact that defamation actions and actions for enforcement of the right to privacy are mutually exclusive. In Uhuru Muigai Kenyatta v Nairobi Star Publications Ltd317 and Teitiwannang and Ariong & Others318 it was held that a private individual cannot maintain an action for declaration against another private individual for alleged breach of the fundamental rights provisions of the Constitution where the issue in contest was one relating to defamation. Essentially this is because defamation actions are tort-based actions while actions based on breach of privacy are infringement of human rights enshrined in the Constitution. In defamation claims, the case hinges on a publication which the claimant must prove to be false at the time of publication and which ‘injures’ the character, reputation or image of the claimant. Given that reference is to defamatory publications, the claim would be one of libel which is a written defamatory statement. Immediately, one can spot the difference between breach of privacy claims and defamation (libel) actions. The former (enforcement of privacy actions) is broader in scope in that it covers publications – whether authorized or not – which are likely to be construed as intrusive and in violation of the claimant’s right to privacy, while defamation actions are limited to false statements and publications that are injurious to the claimant’s reputation. Nevertheless, it is an additional means of redress in instances where a person’s images or likeness are used in a defamatory manner such as through publication which injures the person’s character and reputation.

A second possible cause of action to enforce personality rights is found in unfair trade practices rules in the context of false representation and misleading advertising. Section 12, Consumer Protection Act (No. 46 of 2012) prohibits ‘unfair practices’ and proceeds to provide for radical sanctions against a supplier who engages in ‘unfair practices.’ Section 12(1) provides in general terms that: ‘It is an unfair practice for a person to make a false, misleading or deceptive representation.’319 Section 12(2) identifies 18 specific types of unfair practices two of which are of relevance in connection to protection of publicity rights:

  • ‘a representation that the goods or services have sponsorship, approval, performance characteristics, accessories, uses, ingredients, benefits or qualities they do not have;

  • a representation that the person who is to supply the goods or services has sponsorship, approval, status, affiliation or connection the person does not have.’320

Any person whose image or likeness is used in advertisements and marketing promotions to represent that the person has sponsored, approved the goods or services or to falsely represent an affiliation or connection with the goods or services producer constitutes an unfair practice under the Consumer Protection Act (No. 46 of 2012). Interestingly, the Consumer Protection Guidelines (June 2014) currently published by the Competition Authority in Kenya321 are, at the time of writing this paper, based on the repealed Competition Act (No. 12 of 2010). Importantly, Sec. 3.0 of the said guidelines – which encompasses provisions on false and misleading representations – does not specifically mention unauthorized commercial use of a person’s image or likeness as an act which constitutes false and misleading representation within the meaning of the Consumer Protection Act (No. 46 of 2012).

Two key regulations are worth mentioning as they contain direct provisions protecting the privacy of persons against unauthorized use of their images or likeness in the context of public information and communications. Regulation 3(1)(d) and (f) of the Kenya Information and Communications (Consumer Protection) Regulations 2010322 (hereinafter ‘CCPR’) provides that customers have a right to personal privacy and protection against unauthorized use of personal information. They also have a right to protection from unfair trade practices, including false and misleading advertising and anti-competitive behaviour by licensees. This option is useful for persons – particularly public personalities and celebrities – whose image and likeness may be used commercially by third parties to advertise or promote third-party goods and services in a manner likely to mislead consumers or the general public that such person has endorsed those goods or services. The provisions of the Consumer Protection Regulations cited above are complemented by Regulation 29 of the Kenya Information and Communications (Broadcasting) Regulations 2009323 (hereinafter ‘CBR’) which prohibits broadcasting of ‘any information acquired from a person without that person's consent, unless the information so acquired is essential to establish the credibility and authority of a source, or where the information is clearly in the public interest.’324 Similarly, Regulation 33(2)(a) of the CBR requires that advertisements must not ‘contain any … material which may, directly or by implication, mislead members of the public in relation to the product or service advertised.’325 Both CCPR and CBR complement the Consumer Protection Act, No. 46 of 2012 by protecting the privacy of individuals in the context of misleading advertising and broadcasts within the information and communications sector. Consumers have the right to lodge complaints to the Communications Authority of Kenya if they believe the above cited provisions have been breached. Consumers are, however, encouraged to first exhaust any internal complaints resolution mechanisms provided by licensed service providers. If and when such complaints are not resolved, written complaints can then be directed to the Communications Authority of Kenya. Recourse to litigation is possible if, after exhausting these mechanisms, the claimant is still unsatisfied.

As at the time of writing this paper, no information was available from either the Competition Authority of Kenya or the Communications Authority of Kenya on whether any complaints had been filed in connection to the provisions of Sec. 12, Consumer Protection Act, No. 46 of 2012 or under Regulation 29 CBR and Regulation 3(1)(d) and (f) CCPR. There is therefore no evidence to determine whether or the extent to which these provisions have been effective in protecting against unauthorized use of a person’s image or likeness in trade practices. The reasons why no complaints have been instituted under the aforesaid regulations include non-awareness of these provisions or the associated complaints mechanisms available. Nonetheless, it is an available means of redress, albeit one which at the moment remains largely unutilized.

IV. Publicity rights and the property rights theorem

The issue to be interrogated at this point is whether and to what extent if at all one’s personality aspects can be regarded a proper subject of the classical domain of property rights. Eminent jurist Friedrich Hegel provided a possible answer noting in as early as 1952 as follows:

‘Since property is the embodiment of personality, my inward idea and will that something is to be mine is not enough to make it my property; to secure this end possession is requisite326 [and that] goods, or rather substantive characteristics, which constitute my own personality and the universal essence of my self-consciousness are inalienable and my right to them is imprescriptible. Such characteristics are my personality as such.’327

While Hegel’s concept of property as an embodiment of personality speaks more to tangible rather than intangible goods, he nevertheless posits that personality characteristics can amount to property as well. But can personality be conceived as an external phenomenon capable of existing independently from a person? Is personality or an aspect of a person’s character capable of possession in the way chattels or choses in action are capable of having legal rights of ownership? Personality has been defined as ‘the combination of characteristics or qualities that form an individual's distinctive character and/or a celebrity or famous person.’328 It is also ‘a set of individual differences that are affected by the development of an individual: values, attitudes, personal memories, social relationships, habits, and skills.’329 Given these definitions of personality, it is quite unclear how a set of characteristics and attributes that form a person’s distinctive character are generally capable of being ascribed proprietary rights, because attributes of character are in their nature subjective concepts incapable of independent existence or of external possession such as to be objects of proprietary transaction. However, the case is different in view of the personality status of a celebrity or public (famous) figure. Here, we have personality aspects that are capable of being reduced into external outputs which embody aspects of the celebrity’s personality such as his image or likeness, and which can in turn be possessed and transferred and therefore giving rise to proprietary rights. Of importance here is that proprietary rights are seen to derive from the status of being a celebrity or famous figure, ergo personality rights as property rights derive from that status. Value can be derived from the use of a person’s image, particularly so where the images used are those of a celebrity or a well-known public figure. The status of celebrity or fame is the intrinsic value factor which, if absent, would equally negate any proprietary claims. But ‘celebrity-hood’ and fame are equally relative to the person’s location and other contributory factors, including perhaps what the person does that has made her a celebrity. It is doubtful if lawmakers have enough gumption to define the standards that would give rise to the status of celebrity, and given the difficulty of this, should the right of publicity then be limited to famous public figures and celebrities, or should the right of publicity be much broader in scope? And if we say the right of publicity is not to be limited to a certain ‘class’ of people, then what would be the practical difference between this and the right to privacy?

Property is a bundle of rights330 through which an individual acquires the right or interest to possess, use and dispose a thing. Property rights have also been defined as ‘the ability to freely exercise a choice over a good or service.’331 Property rights are ultimately use rights. They are enhanced by law and therefore the greater the extent to which individuals exercise these uses, the greater the property rights.332 Possession in the legal sense of the term presupposes direct physical control of a thing. This could either be actual or constructive control. In economics, ‘a property right is a socially enforced right to select uses of an economic good’,333 which comprises four components:

  1. the right to enforce (possess and control) property rights,

  2. the right to use property rights,

  3. the right to earn income from the good or service which is the embodiment of property rights, and

  4. the right to voluntarily transfer (dispose) property rights to others.334

The notion of ownership – that is to say the right to possess, control, use and dispose of a thing – is essential to both economic and legal construction of the property rights.335 Economists argue that for property rights to be effectively utilized, they must be fixed by the creation of legally enforceable instruments and represent relationships between parties. Law and its instruments enable property rights and property relations to be defined, monitored, exploited and enforced. The costs of establishing, defining, monitoring, and enforcing property rights are termed transaction costs. For our purposes this term is taken to mean ‘the costs for establishing and maintaining property rights.’336 The extent to which all the elements that comprise property as enumerated above are honoured, enforced and easily transacted determines how effective and efficient an economy is in allocating goods and services and thereby distributing wealth, as well as creating value in terms of wealth generation. Legal infrastructure and machinery are important aids in achieving this. Generally, reference to property rights is taken to mean rights to or in a thing, while personal property is taken to mean intangible property. Legal and economic pundits disagree on these colloquial definitions given the different variants and types of real and tangible property existing today. Indeed, the existence of personal property as a category of property rights serves as a reminder that property, whether viewed from an economic or legal sense, is about legal rights rather than the things which embody or are the subject of those rights. The issue of ascribing property rights to personality and other intangibles has been rife in other areas as well, notably with respect to intellectual property law where issues such as patentability of business methods or patents for seeds continue to elicit widespread division, acrimony and strikingly contrasting viewpoints.

To jurist and legal scholar John Locke, labour was an essential factor in a legal and moral basis for the acquisition of private property rights. In his work the Second Treatise he argued as follows:

‘[E]very Man has a Property in his own Person. This no Body has any Right to but himself. The Labour of his Body, and the Work of his Hands, we may say are properly his. Whatsoever then he removes out of the State that Nature hath provided, and left it in, he hath mixed his Labour with, and joined to it something that is his own, and thereby makes it his Property. It being by him removed from the common state nature placed it, it hath by his labour something annexed to it, that excludes the common right of other Men. For this Labour being the unquestionable Property of the Labourer, no Man but he can have a right to what that is once joined to.’337

This private property is not an institution created by Government but rather, as one commentator aptly puts it, ‘a natural right required for human survival and happiness, so private property would exist even in a state of nature without government.’338 Given what we have established thus far, we are yet to answer the question whether a person owns his identity, image or likeness? Given what we know about the rights associated with property – that is the right to use, enforce, earn and dispose (transfer) – there is some legitimate basis to ascribe property rights in respect to certain aspects of one’s personality. The existence of laws, rules and regulatory frameworks on organ donation lends credence to the notion that individuals could, can and do in fact exercise some sort of proprietary rights over their body. Aspects of one’s personality rights are not any different, particularly those which are capable of commercial exploitation or expropriation.

It has been suggested that to a certain degree copyright could prevent misappropriation of personality elements.339 One commentator argues in favor of recognition of image or publicity rights in Kenya by amending the Copyright Act in a manner similar to Art. 31 of Argentina’s Law of Copyright340 which provides as follows:

‘The photographic portrait of a person may not be commercialized without the express consent of the person portrayed and, where that person is deceased, of his spouse and sons or direct descendants thereof or, failing that, the father or mother. In the absence of the spouse, sons, father or mother, or the direct descendants of the sons, publication shall be free. The person who has given his consent may withdraw it but must provide compensation for any damages caused. Publication of a portrait shall be free where it is for scientific, didactic and general cultural purposes, or relates to facts or events of public interest or which have been developed in public.’341

Mumbua (2017) argues that a tort-based approach similar to that found in the UK tort of passing off should be adopted.342 Mikinyango (2017) concludes with respect to image rights in sports that ‘there is therefore need to create a standalone right to image that balances the Kenyan sports culture in pursuit of public interests on one hand and the interests of Kenya sportspersons in the commercial value of their image on the other.’343 Contributors who postulate that personality rights can be protected under copyright tend to assume (erroneously in my view) that an individual should have a moral rights claim in copyright with respect to images or other elements of their identity such as extracts of sound or video when they are taken and used without license in advertising or other unauthorized commercial uses. Copyright grants certain rights to authors of literal and artistic works which are fixed in a material form.344 Moral rights, also known as neighbouring rights, do not exist independently of copyright. It cannot be said that a person is an author of the indicia of their identity, image or likeness and therefore cannot exercise copyright. Furthermore, copyright law is of little assistance in preventing unauthorized use of one’s image because the owner of copyright in an image will generally be the person that created it (for example the photographer) rather than the subject of the photograph itself. However, the majority of the cases involving publicity rights claims arise from unauthorized publishing of photographs of an individual for commercial purposes, such as in advertising. Would copyright apply to these cases? Copyright would only apply to the owner of the photographs in question but not the subject of the photograph. This distinction is important as it explains why, in Kenya, image rights cases have been instituted within the context of breach of the right to privacy in the absence of an exclusive publicity rights framework.

If Locke’s theory justifies the right to private property on the basis of productive and value-creating labour, it is debatable whether Locke’s theory equally justifies property rights over aspects of an individual’s identity, image or likeness. While intellectual property rights are the result of tangible value-creating labour in that productive labour is expended to develop patentable inventions, innovations, trademarks, copyright works and other types of intellectual property rights such as plant breeder’s rights, trade secrets, database rights and so on. The extent to which the property rights theory applies to intangible personality aspects such as fame or publicity is moot.

Using the analogy of intellectual property rights, value creation can be achieved through extensive research and development efforts which lead to the discovery of a new drug. The new drug is the product of that creative endeavour/value creation, and so merits the award of the proprietary right known as a patent. Similarly, a plant breeder may conduct research and breeding for many years on different varieties resulting in a new variety with unique desired traits. This new variety could be awarded the proprietary right of a plant breeder’s right. However, with respect to personality, what is the value creation? Is it the efforts expended say for instance in the case of a celebrity to work at his or her career which eventually leads them to become famous? And if so, what are the end products of their labour? Would it be the fame or celebrity status in itself? And would the status of being a celebrity and fame be the subject of property right(s) allowing the individual control its acquisition, use and disposal? A pedantic application of Locke’s theory of private property rights would lead to the conclusion that since some form of labour was expended by the individual to cultivate his image, it would seem to merit some kind of property right. However, this would be the case only to the extent that aspects of one’s personality can be attributed as a direct product of one’s labour. Publicity rights have been justified by some commentators on the basis of the incentive theory in that celebrity-hood in itself is an end-product resulting from a celebrity’s hard work.345 Thus if a right of publicity is not recognized, there will be no incentive for individuals to work hard towards creating valuable personalities. The underlying assumption is that celebrities work directly on their personalities to acquire fame. In reality, however, fame and celebrity status are acquired arbitrarily in the process of other pursuits in life. Celebrities acquire that status by invariably far more complex processes and forces above and beyond just hard work, and indeed it is doubtful whether anybody really works hard with a view solely to create a commercially marketable public image.346 This fact was acknowledged by Madow (1993) stating as follows. 347

‘Fame is a relational phenomenon, something that is conferred by others. A person can, within the limits of his natural talents, make himself strong or swift or learned. But he cannot, in this same sense, make himself famous, any more than he can make himself loved. Furthermore, fame is often conferred or withheld, just as love is, for reasons and on grounds other than “merit.” There is ample room for disagreement about just how wide the gap between fame and merit actually is, about just how contingent and morally arbitrary the mechanisms of renown really are. … That Einstein became a celebrity, a cultural icon, while Bohr and Heisenberg did not, had less to do with the quality of his (and their) achievements than with our needs and preoccupations. And if Einstein’s persona still has significant “publicity value” today, if advertisers and T-shirt makers are still eager to use his face, that is in good part because fame, however initially acquired, tends to ‘feed on itself.’348

A model right of publicity is championed by Nimmer (1954) as follows:349

‘The nature of the inadequacy of the traditional legal theories dictates in large measure the substance of the right of publicity. The right of publicity must be recognized as a property (not a personal) right, and as such capable of assignment and subsequent enforcement by the assignee. Furthermore, appropriation of publicity values should be actionable regardless of whether the defendant has used the publicity in a manner offensive to the sensibilities of the plaintiff. Usually the use will be non-offensive, since such a use is more valuable to the defendant as well as to the plaintiff. Likewise, the measure of damages should be computed in terms of the value of the publicity appropriated by defendant rather than, as in privacy, in terms of the injury sustained by the plaintiff. There must be no waiver of the right by reason of the plaintiff being a well-known personality. Indeed, the right usually becomes important only when the plaintiff (or potential plaintiff) has achieved in some degree a celebrated status. Moreover, since animals, inanimate objects, and business and other institutions all may be endowed with publicity values, the human owners of these non-human entities should have a right of publicity (although no right of privacy) in such property, and this right should exist (unlike unfair competition) regardless of whether the defendant is in competition with the plaintiff, and regardless of whether he is passing off his own products as those of the plaintiff.’350 (Emphasis added)

Whatever the positions or arguments as to the legal, economic or moral merits for or against propertizing aspects of one’s personality or identity, the economic reality is that value can be generated through an individual’s identity, including his or her image or likeness, and this value is not limited to public personalities and celebrities. 351 As held in McFarland v Miller352 ‘[an] individual’s name, likeness, and endorsement carry value and unauthorized use harms the person both by diluting the value of the name and depriving that individual of compensation.’ Of course, merely asserting that commercial value can be derived from a person’s identity and aspects of their personality is not in itself a justification for creating property rights. This possibly explains why many jurisdictions around the world do not, as yet, have a sui generis publicity or personality rights framework but instead have a hybrid approach comprised of the right of publicity, the right to privacy, tort, passing off or misleading trade practices law.

Admittedly, distinctions between the right of publicity and right of privacy may seem to be merely academic, with little or no real-world practical significance. There is nevertheless a difference. Publicity rights provide an independent cause of action for unauthorized commercial use of a person’s image and likeness in situations where his privacy may not be infringed. The right allows an individual to prevent unauthorized use of his image or likeness for commercial purposes. While there is no evidence justifying a sui generis right of publicity law in Kenya, there is nevertheless a strong case for reform. Existing laws could be changed in order to recognize publicity rights with a view to enhance legal remedies available to claimants in situations involving unauthorized commercial use of a person’s image or likeness which are not covered under the broad right of privacy. Cases such as Rukia Idris v Mada Hotels353 established that there is propriety for a legal remedy which lies in legal reform of existing laws. Courts in Kenya have, for lack of a more suitable alternative, been forced to use the legal fiction of the right of privacy to protect against unauthorized appropriation of a person’s image or likeness by third parties. But this approach is wanting, due to the limitations of the right of privacy we have discussed above. This is why the grant of a right which provides remedies in publicity rights claims may be useful as an independent right in addition to the right of privacy.

V. Lessons and way forward

Each jurisdiction covered in this paper has adopted an approach that is most suitable in view of its own distinctive, unique and inimitable legal, social and economic environment and circumstances. The practice in Australia is informed by the fact that there is no constitutionally enshrined right to privacy, as there is in Kenya. Indeed one scholar notes that Australia ‘is the only western democracy not to have a Bill of Rights that provides constitutional protections for human rights, including the right to privacy.’354 By not having a constitutionally guaranteed Bill of Rights, ‘human rights in Australia are protected by a patchwork of Commonwealth, State and Territory legislation.’355 This perhaps explains why Australia’s framework for the protection of personality rights exists in a medley of intellectual property laws including the Trade Marks Act (1995), the Copyright Act (1968), the Trade Practices Act (1974) and the common law actions of passing off, defamation and unjust enrichment.356 The Australian hodgepodge approach of using several other legal avenues to cover image rights is not suitable for Kenya, given the limitations of trademarks, copyright and other trade practices legislation we have discussed above.

The law and practice currently existing in Australia with respect to publicity rights is still undergoing development. Moreover, unlike in Kenya – where a constitutionally anchored right to privacy exists – Australia does not have any specific right to privacy entrenched in its constitution or in law. This is important because in Kenya, courts have extended the right to privacy to include protection against unauthorized use of a person’s images in certain circumstances. The Australian approach is largely based on the common law tort of passing off, and even here we have seen that jurisprudence is not settled as to the significance of proving the element of misrepresentation in passing off claims. The nature of personality rights is also not settled. One view is that these rights protect consumers and therefore misrepresentation of approval, consent, association or connection must be identified. However given the difficulty in establishing misrepresentation, one scholar notes that ‘Australian courts have been forced to use the legal fiction of misrepresentation to protect personal identity from appropriation by others.’357 This has led to the second view of personality rights which holds that such rights actually protect the celebrity’s proprietary right to exploit the goodwill in the image and reputation. The take-away points that could be beneficial from the Australian approach are:

  • Personality rights, including the right to publicity, should recognize that value can derive from a public personality’s image. However, in my view this value is not limited to celebrities and public personalities, but also applies to anybody whose image is used commercially.

  • A suitable personality rights regime should have to protect consumers from misrepresentation that is misleading and deceptive conduct arising from the use of a person’s image or likeness. That said, personality rights should also protect the proprietary interests of persons whose images are used commercially.

Recognizing a right of publicity requires balancing public’s interest versus private interests. It is understandable that privatizing public aspects of a public personality’s identity and aspects connected to fame could be seen as running counter to cultural commons. To a limited extent celebrities and public personalities do cede their expectation to privacy by dint of their public image or status. However, this does not mean they cede their legitimate expectation to privacy, especially in connection to their private lives. This is a delicate balance and one which is not merely academic or abstract.

The practice in the United Kingdom reveals the inadequacy of the tort of passing off and breach of confidence and insufficiency of copyright. Indeed, one commentator noted that:

‘The UK response to publicity practice has so far been ad hoc and somewhat opportunistic. With no formal legal provision in place, claimants have sought to shoehorn their commercial grievances into the nearest appropriate legal doctrine, with the result that two different torts – intended to serve different purposes – have been pressed into service: passing off and breach of confidence.’358

Moreover, there is no actionable common law right of privacy. The tort of passing off offers no protection to a personality against unauthorized merchandisers or others who, whilst commercially using the personality’s persona, do not confuse the public regarding the origin of the goods or services involved.359 The difficulty of establishing misrepresentation is another obstacle to establishing a claim based on passing off. Similarly, copyright, defamation and breach of confidence actions are of limited use at best, and alternative remedies such as the Advertising Codes do not provide legal remedy.360 These limitations have led to calls to recognize ‘a new and distinct publicity right in the United Kingdom. A right available to all individuals to prevent their persona from being commercially exploited by unauthorized third parties, without the need to prove confusion or damage [which] would afford an appropriate level of protection to a legitimate commercial interest of individuals in a straightforward and easily utilized manner. It would allow the courts to escape from their present dilemma of either clumsily (and somewhat unsuccessfully) adapting existing legal doctrine to protect these relatively new rights or affording them no protection at all’.361 In view of the foregoing limitations, the UK model is not suitable for Kenya.

Guernsey’s sui generis Image Rights Ordinance presents an alternative for comprehensive image rights legislation, particularly for jurisdictions which de jure recognize a common law right of publicity. Although it has been five years since Guernsey’s Image Rights Ordinance came into effect, there is little information available to enable an analysis of its impact and Guernsey’s experience in the period this law has been in force. The practice in South Africa is at par with jurisprudential developments in Kenya to the extent that the right to privacy has been applied by courts in both countries to cover unauthorized use (including commercial use) of a person’s images. In the United States we observed that 40 states recognize the right of publicity but the elements vary from state to state.362 They most commonly involve the use of someone's, which enables the defendant to receive a commercial advantage through advertising or trade. That use is made without consent from the person whose image or likeness is used, and the use injures the plaintiff.363 Given different shades in State publicity rights law, there have been calls to harmonize these laws through enactment of a Federal right of publicity statute.

Germany’s model offers a promising approach. German courts treat the ‘general right of personality’ as a non-commercial right. The courts therefore do not draw the distinction between the right of privacy – which is not commercially exploitable – and the right of publicity – which is a commercially exploitable property right. The ‘general right of personality’ is not aimed to protect property and commercial values (the US approach), but rather to guarantee human dignity and the right to freely develop one’s personality. The non-transferability and non-descendability of the general right of personality limits the possibilities for commercial exploitation and this makes the right less valuable commercially when contrasted with a publicity right. This is so because the general right of personality is inherently a personal right and not a commercial right. The German approach offers enough protection to celebrities and public personalities and has achieved a modicum of balance between the public interest and personal or privacy rights in the image of celebrities.

VI. Conclusion

The existing body of law and substance of emerging jurisprudence in Kenya on the subject of publicity rights reveals a glaring inadequacy to cover the broad spectrum of publicity rights. I have demonstrated that publicity rights are different from privacy rights and therefore cannot be anchored to privacy rights. While no particular country’s model on publicity rights is advocated, the author recommends a sui generis publicity right model as suggested by Nimmer (1954) which combines the existing practice in Kenya and select practices in the United Kingdom, the USA and Germany. The German approach in particular achieves a significant balance between public and private interests in an individual’s image without recognizing a property right in the form of a distinct publicity right altogether. While amending the Copyright Act to include a publicity right provision similar to that found in Art. 31 of Argentina’s Law of Copyright is an alternative, copyright law is not a suitable place to anchor the right of publicity, nor is amending trademark law or other related laws such as broadcasting or unfair competition laws. Adopting an approach similar to that in Germany would provide adequate legal reliefs in situations such as those witnessed in Rukia Idris Barri v Mada Hotels, by providing individuals protection for the publicity values in their identity while at the same time ensuring that public interest to those values is preserved.

Footnotes

1

Proactive Sports Management Ltd v Wayne Rooney & 3 others [2010] EWHC 1807 (QB)

2

Anita Elberse and Jeroen Verleun, ‘The Economic Value of Celebrity Endorsements’ 52(2) Journal of Advertising Research 149, 163 (2012)

3

Melville B Nimmer, ‘The Right of Publicity’ 19 Law and Contemporary Problems 215 (1954)

4

ibid 204

5

Kevin L Vick and Jean-Paul Jassy, ‘Why a federal right of publicity statute is necessary’ 28(2) Communications Lawyer 14 (2011)

6

ibid

7

Ann Slater, ‘Personality Rights in Australia’ 20(1) Communications Law Bulletin 12 (2001); see also Jonathon Schlegelmilch, ‘Publicity rights in the U.K. and the USA: it’s time for the United Kingdom to follow America’s lead’ 1 Gonzaga L. Rev. Online 101, 117 (2016)

8

Rachel Sikwane and Zaid Gardner, ‘A Brief Introduction to Image Rights in South Africa’ <http://www.flpavocats.com/wp-content/uploads/2012/05/Image-rights-in-South-Africa.pdf> accessed 20 January 2020

9

ibid

10

The Image Rights (Bailiwick of Guernsey) Ordinance, 2012

11

Marc Greenberg and Michael Lovitz, ‘Right of Publicity and the Intersection of Copyright and Trademark Law’ (Digital Commons, 29 March 2012) <http://digitalcommons.law.ggu.edu/pubs/484> accessed 20 January 2020

12

ibid 3

13

Daniel Gervais and Martin L Holmes, ‘Fame, Property, and Identity: The Scope and Purpose of the Right of Publicity’ 25(1) Fordham Intellectual Property Media & Entertainment Law Journal 200 (2014)

14

ibid 185, 200

15

ibid 185

16

ibid 182

17

Greenberg (n 11). See also Gervais (n 13) 186 stating that ‘the principal historical antecedent of the right of publicity is the right of privacy.’

18

Nimmer (n 3) 204. See also Stacy Allen and others, ‘Non-human persons and the right of publicity’ 64 <http://images.jw.com/com/publications/1185.pdf> accessed 15 September 2019, noting that ‘[T]he right of publicity is distinguishable from all other personal and property rights. The principal historical antecedent of the right of publicity is the right of privacy.’

19

Petition No 466 of 2012 [2015] eKLR, paras 68-75 (Lenaola, J). Upheld by the Court of Appeal (Nambuye & Kiage, JJA) in Civil Appeal No 310 of 2015 [2019] eKLR

20

Allen (n 18) 63

21

Corinna Coors, ‘Image rights of celebrities vs. public interest – striking the right balance under German law’ 9(10) Journal of Intellectual Property Law & Practice, 835-840 (2014). See also Eleni Synodinou, ‘Image Right and Copyright Law in Europe: Divergences and Convergences’ Laws 181,185. <https://www.researchgate.net/publication/276039212_Image_Right_and_Copyright_Law_in_Europe_Divergences_and_Convergences> accessed 20 January 2020

22

ss 22 and 23 of the Act of Artistic Creations (KUG ‒ Kunsturhebergesetz)

23

Susanne Bergmann, ‘Publicity rights in the United States and Germany: a comparative analysis’ 19 Loy. L.A. Ent. L. Rev. 479, 503 (1999) <http://digitalcommons.lmu.edu/elr/vol19/iss3/1> accessed 20 January 2020

24

s 12 of the German Civil Code (BGB ‒ Bürgerliches Gesetzbuch)

25

Bergmann (n 23) 480

26

ibid 503

27

Coors (n 21) 835 and Bergmann (n 23) 502

28

Bergmann (n 23) 502

29

NJW 1981, 2402 = 14 IIC 288, 289 (1983) (English translation) ‒ Carrera

30

Bergmann (n 23) 503-504

31

ibid 504

32

Coors (n 21) 836

33

Bergmann (n 23) 504

34

BGH, NJW 1979, 2205 ‒ Fußballtor

35

BGH, NJW 1974, 1947 ‒ Nacktaufnahme

36

Bergmann (n 23) 505

37

OLG Düsseldorf, NJW 1987, 1413 ‒ Heino

38

Heino at 1414

39

BGH, NJW 1979, 2203 (2204) ‒ Beckenbauer

40

BGH, NJW] 1956, 1554 ‒ Paul Dahlke

41

ibid 1554-55

42

Bergmann (n 23) 507

43

ibid

44

ibid 508

45

ibid

46

BGH, NJW 1968, 1091 ‒ Ligaspieler

47

BGH, NJW 1979, 2203 ‒ Beckenbauer

48

OLG Hamburg, 13 January 2004 (unreported)

49

BGHZ 169,340. See also Coors (n 21) 838

50

Coors (n 21) 839

51

OLG Düsseldorf of 23 July 2013, I -20 U 190/12

52

OLG Frankfurt ZUM 1988, 248 ‒ Boris Becker

53

Bergmann (n 23) 509

54

BGH, NJW 1996, 593 ‒Abschiedsmedaille

55

BGH,WRP 1995,613

56

BGH,NJW 1983, 1184 (1185) ‒ Uwe

57

Bergmann (n 23) 511

58

OLG München, GRUR 1960, 394 ‒ Romy

59

Bergmann (n 23) 511

60

BGH, BGHZ 30, 7 ‒ Catarina Valente

61

OLG Hamburg, GRUR 1989, 666 = 21 IIC 881 (1990) (English translation)

62

Bergmann (n 23) 513

63

ibid

64

BGH, NJW-RR 1987,231 ‒ Nena

65

Bergmann (n 23) 514

66

ibid

67

ibid 520

68

Synodinou (n 21) 194 and Bergmann (n 23) 514

69

OLG Hamburg, GRUR 1989, 666 = 21 IIC 881 (1990) (English translation)

70

Bergmann (n 23) 515

71

BGH, GRUR, 1995, 668

72

Bergmann (n 23) 516

73

ibid

74

ibid 517

75

ibid

76

ibid 520

77

ibid 521

78

ibid

79

Rosina Zapparoni, ‘Propertising Identity: Understanding The United States Right of Publicity and its Implications ‒ Some Lessons for Australia’ 28 Melbourne Uni. L. Rev. 692 (2004). See also John McMullan, ‘Personality Rights in Australia’ 8 Australian Intellectual Property Journal 86, 91 (1997) and Holding Redlich ‘Is the Personal Image of a Celebrity Protected in Australia?’ (29 June 2016) <https://www.holdingredlich.com/intellectual-property/is-the-personal-image-of-a-celebrity-protected-in-australia> accessed 8 February 2018

80

Schedule 2, Competition and Consumer Act 2010 (Cth)

81

Slater (n 7) 12-13

82

Lynne Weathered, ‘Trade Marking Celebrity Image: The Impact of Distinctiveness and Use as a Trade Mark’ 12(2) Bond Law Review 164, 166 (2001) <https://research-repository.griffith.edu.au/handle/10072/3615> accessed 20 January 2020

83

Scott Ralston, ‘Australian Celebrity Endorsements: the Need for an Australian Right of Publicity’ 20(4) Communications Law Bulletin 9 (2001)

84

ibid

85

ibid

86

Weathered (n 82) 183

87

Ralston (n 83)

88

Trade Practices Act 1974, s 52(1), 53(c)(d)

89

Ralston (n 83)

90

ibid

91

36 IPR 46

92

Henderson v Radio Corpn (1960) [1969] RPC 218

93

36 IPR 46

94

William van Caenegem, ‘Different Approaches to the Protection of Celebrities against Unauthorized Use of their Image in Advertising in Australia, the United States and the Federal Republic of Germany’ 12(12) European Intellectual Property Review 452 (1990)

95

Ralston (n 83)

96

ibid 10

97

ibid 11

98

(1960) 60 SR (NSW) 576

99

(1987) 79 ALR 299; 10 IPR 289

100

ibid 296

101

14 IPR 264

102

(1986) ATPR 40-697

103

(1988) 12 IPR 508

104

(1988) 12 IPR 508.at 520

105

(1989) 12 IPR 225

106

ibid

107

HCA 63, (2001) 185 ALR 1

108

Ralston (n 83) 11

109

433 U.S. 562 (1977)

110

Ralston (n 83) 11

111

Ralston (n 83) 11

112

ibid

113

ibid

114

Sikwane and Gardner (n 8)

115

Michael C Buthelezi, ‘Let False Light (Publicity) Shine Forth in South African Law’ [2013] De Jure 783 stating as follows: ‘A common law right to privacy under the actio iniuriarum has been recognised in South Africa as an independent right for many years. It was first recognised in the case of O’Keeffe v Argus Printing and Publishing Co Ltd, 1 and it is now accorded protection in section 14 of the Constitution.’

116

(31871/2008) [2011] ZAGPJHC

117

(31871/2008) [ 2011] ZAGPJHC 56 para 22

118

Buthelezi (n 115) 785

119

3 SA 461 (W)

120

Kidson v South African Associated Newspapers Ltd 1957 3 SA 461 (W), 468H-469A

121

2007 (4) SA 89 (SCA)

122

Western Cape High Court Case No 11961/2006

123

Western Cape High Court Case No 11961/2006

124

Western Cape High Court Case No 11961/2006

125

Steve Cornelius, ‘Commercial Appropriation of a Person’s Image: Wells v Atoll Media (Pty) Ltd.’ (unreported 11961/2006) [2009] Zawchc 173 (9 November 2009), 14(2) Potchefstroom Electronic Law Journal (2011) < https://papers.ssrn.com/sol3/papers.cfm?abstract_id=1869743> accessed 20 January 2020

126

Sikwane and Gardner (n 8) 4

127

Huw Beverley-Smith, The Commercial Appropriation of Personality (Cambridge University Press 2002). See also William Cornish and David Llewelyn, Intellectual Property: Patents, Copyright, Trademarks and Allied Rights (5th edn, Sweet & Maxwell 2003) para 16-34 where the authors opine that ascribing property rights to aspects of personality is ‘rightly regarded as a step too far.’

128

Lionel Bently and Brad Sherman, Intellectual Property Law (2nd edn, Oxford University Press 2004) 714. See also Cornish (n 127) paras 16-33 to 16-35

129

Hayley Stallard, ‘The Right of Publicity in the United Kingdom’ 18 Loy. L.A. Ent. L. Rev. 565, 570 (1998)

130

Schlegelmilch (n 7) 110

131

ibid

132

[2010] EWHC 1807 (QB)

133

Stallard (n 129) 578

134

ibid

135

ibid

136

Bently (n 128) 707

137

ibid 709

138

[1993] EMLR 27

139

Henderson v Radio Corporation Pty. (1960) [1969] RPC 429

140

Sim v. H.J. Heinz Co. [1959] 1 WLR 313; RPC 75

141

[1901] AC 217, 224

142

[1901] AC 217, 224

143

[2000] FSR 176, 183

144

Bently (n 128) 714

145

ibid 733

146

[1977] FSR 62

147

[1977] FSR 62 at 732-736 (paras 3.3.1-3.3.2)

148

[1997] RPC 543

149

[1997] RPC at 558

150

[2002] FSR 943

151

Bently (n 128) 752-754

152

ibid

153

ibid

154

ibid

155

[1991] FSR 145

156

Harrods v Harrodian School [1996] RPC 697, 718

157

[2015] EWCA Civ 3

158

[1977] FSR 62

159

[1997] RPC 543

160

[1997] RPC 543-544

161

[2005] EWCA Civ 595; [2006] QB 125; [2005] 3 WLR 881; [2005] EMLR 609

162

[2004] UKHL 22; [2004] 2 AC 457; [2004] 2 WLR 1232; [2004] EMLR 247

163

[2006] QB 125

164

[2004] UKHL 22

165

See for instance, Kaye v Robertson & Sport Newspapers Ltd [1991] FSR 62, where the Court of Appeal held there was no actionable common law right of privacy in English law. In this case, two journalists gained access to a private hospital room where the plaintiff, a well-known actor, was recuperating from an injury, took photographs and interviewed the patient. Their threat to publish the interview and photographs precipitated this successful action for injunction. See also McKennitt v Ash [2006] EWCA Civ 1714; [2008] QB 73; [2007] 3 WLR 194 where the Court of Appeal upheld the High Court’s decision granting an injunction restraining the defendant from publishing private information which the plaintiff disclosed to the defendant in confidence. In McClaren v News Group Newspapers Ltd. [2012] EWHC 2466 (QB) the High Court declined to issue an injunction against a newspaper which sought to publish a story and photographs containing details on the claimant’s affair. It can be observed from McLaren v News Group Newspapers that the right to privacy is much broader in scope and arguably encompasses claims under the tort of passing off for alleged misappropriation of one’s image or personality rights. But given the UK Court of Appeal’s holding in Kaye v Robertson that the right of privacy is not an actionable common law right, this reveals the shortcomings of the right of privacy as a means of addressing personality or image rights claims in the UK

166

Cornish (n 127) 619

167

Both regulation codes are available at <https://www.cap.org.uk/Advertising-Codes.aspx> accessed 20 January 2020

169

ss 1-26, 78-107, Image Rights (Bailiwick of Guernsey) Ordinance, 2012

170

ss 5-64, Image Rights (Bailiwick of Guernsey) Ordinance, 2012

171

ss 27-30, Image Rights (Bailiwick of Guernsey) Ordinance, 2012

172

ss 31-40, Image Rights (Bailiwick of Guernsey) Ordinance, 2012

173

ss 41-50, Image Rights (Bailiwick of Guernsey) Ordinance, 2012

174

ss 65-77, Image Rights (Bailiwick of Guernsey) Ordinance, 2012

175

s 2(1), Image Rights (Bailiwick of Guernsey) Ordinance, 2012

176

s 2(2) and 5(3) of the Ordinance

177

s 6

178

s 6-64

179

s 18

180

s 2(4), 65 and 75

181

s 74

182

s 76

183

s 51(2)

184

s 52

185

s 8(1)

186

s 6(b)

187

s 6(c)

188

s 6(f)

189

s 8(5)

190

s 27

191

s 29(1)

192

s 29(2)

193

s 31, Image Rights (Bailiwick of Guernsey) Ordinance, 2012

194

s 41(1), Image Rights (Bailiwick of Guernsey) Ordinance, 2012

195

s 42,Image Rights (Bailiwick of Guernsey) Ordinance, 2012

196

s 43, Image Rights (Bailiwick of Guernsey) Ordinance, 2012

197

s 45, Image Rights (Bailiwick of Guernsey) Ordinance, 2012

198

Moorgate Tobacco Co Ltd v Phillip Morris Ltd 1984, 56 ALR 193

199

Second Restatement of the Law, Torts s 652A ‘One who invades the right of privacy of another is subject to liability for the resulting to the interests of the other.’

200

See International News Service v Associated Press, 248 U.S. 215 (1918) where Brandeis, J held that ‘Courts are ill equipped to make the investigations which should precede a determination of the limitations which should be set upon any property right … Courts would be powerless to prescribe the detailed regulations essential to full enjoyment of the rights conferred or to introduce the machinery required for enforcement of such regulations. Considerations such as these should lead us to decline to establish a new rule of law in the effort to redress a newly disclosed wrong although the propriety for some remedy appears to be clear.’

201

50 S.E. 68 (Ga. 1905)

202

See Matthew Savare, ‘The Price of Celebrity: Valuing the Right of Publicity in Calculating Compensatory Damages’ 11(1) UCLA Ent. L. Rev. 129, 134 (2004) <https://escholarship.org/uc/item/6228x10b> accessed 3 February 2020

203

An interactive map listing all states which recognize the right of publicity as well as links to the respective state laws and provisions on the right is accessible at ≺http://rightofpublicity.com/statutes>

204

‘A Brief History of the Right of Publicity’ <http://rightofpublicity.com/brief-history-of-rop> accessed 3 February 2020

205

ibid

206

202 F.2d 866 (2d Cir. 1953)

207

Sheldon W Halpern, ‘Book Review: The Commercial Appropriation of Personality by Huw Beverley-Smith’ 13 Duke Jnl. of Comp. & Int. L. 381, 382 (2003)

208

Gervais and Holmes (n 13) 195

209

(1976) 64 Cal. App. 3d 825

210

Gervais and Holmes (n 13) 195

211

Bergmann (n 23) 482-487

212

17 U.S.C. §102 (a)

213

‘A brief history of the right of publicity’ <http://rightofpublicity.com/brief-history-of-rop> accessed 8 December 2017

214

Greenberg and Lovitz (n 11)

215

ibid 15-16

216

James Chadwick J and Roxana Vatanparast, ‘The Copyright Act’s Preemption of Right of Publicity Claims’ 25(4) Communications Lawyer 3 (2008) concluding that ‘right of publicity claims are neither uniformly pre-empted nor uniformly exempt from pre-emption. … at present, it is difficult to predict whether a right of publicity claim will be pre-empted by the Copyright Act.’

217

USCA, 7th Cir. No 03-2184

218

USCA, 7th Cir. No 03-2184

219

[2013] eKLR a judgment of the High Court of Kenya in Civil Case No 65 of 2012

220

657 F. Supp. 1236 C.D. Gal. (1987)

221

15 U.S.C. § 1051 ff

222

332 F.3d 915 (2003)

223

USCA, 9th Cir. No 09-56675 (31 July 2013)

224

433 U.S. 562 (1977)

225

433 U.S. 562 (1977)

226

2006 NY Slip Op 50171(U)

227

2007 NY Int. 144

229

778 N.E. 2d 480, 483 84 (Ind. Ct. App. 2002)

230

795 F. Supp. 2d 829 (2011)

231

Due to time and space constraints, the author was not able to delve in detail into as many publicity rights cases as are available or review the intricacies of elements constituting the right of publicity across different states. It is hoped that interested readers will be at liberty to explore the same independently. Further reference can be made to the recent decision in Bollea v Gawker (2016) where Terry Bollea famously known as ‘Hulk Hogan’ recently won a breach of privacy and right of publicity claim against Gawker Media, which had published a sex tape of the celebrated entertainer, and awarded $140 million dollars

232

25 Cal. 4th 387

233

25 Cal. 4th 387 at 391

234

25 Cal. 4th 387at 405

235

25 Cal. 4th 387 at 406

236

25 Cal. 4th 387 at 407

237

25 Cal. 4th 387 paragraph 39

238

2001 US App. LEXIS 15085; 59 USP.Q.2D (BNA) 1363 (9th Cir. 2001).

239

Kevin L Vick and Jean-Paul Jassy, ‘Why a Federal Right of Publicity Statute is Necessary’ 28(2) Communications Lawyer 14 (2011), where it is argued that ‘[t]he state-by-state approach to right of publicity law risks causing a ‘race to the bottom’ where a handful of states provide ever-expanding rights of publicity that invite forum shopping and give short shrift to First Amendment rights and public domain interests.’

240

Marci Hamilton and others, ‘Rights of Publicity: An In-Depth Analysis of the New Legislative Proposals to Congress’ 16 Cardozo Arts & Ent. L. Rev. 209 (1998)

241

Gervais and Holmes (n 13) 199-203

242

ibid

243

Greenberg and Lovitz (n 11)

244

Bergmann (n 23) 488-493

245

Comedy III Productions v Gary Saderup, 25 Cal. 4th 387, 399 (2001)

246

See also Sarver v The Hurt Locker, LLC, No. 2:10-cv-09034, 2011 WL 11574477, at *6-7 (C.D. Cal. Oct. 13, 2011) where the plaintiff’s right of publicity claim was rejected on the grounds that the defendant’s use of the images was transformative

247

Winter v DC Comics 30 Cal. 4th 881, 889-90 (2003)

248

Arenas v Shed Media USA, Inc., 2011 U.S. Dist. LEXIS 101915 (C.D. Cal. Aug. 22, 2011). See also Aligo v Time-Life Books, 1994 WL 715605, *3, 4 (N.D. Cal. 1994) where it was held that a four second use of the plaintiff’s image in a 29-minute infomercial was inconsequential to give rise to a publicity right claim

249

Jones v Corbis Corp. 815 F. Supp. 2d 1108, 1114 (C.D. Cal. 2011)

250

Laws v Sony Music Entm’t, Inc. 448 F.3d 1134 (9th Cir. 2006)

251

See for instance Jules Jordan Video, Inc. v 144942 Canada, Inc. 617 F. 3d 1146 (2010), the 9th Circuit Court of Appeals found that a claim founded on copyright pre-empted the plaintiff’s publicity right claim

252

Christoff v Nestle USA, Inc. 47 Cal. 4th 468, n.7 (2009)

253

Timothy McCarthy, Mccarthy on Trademarks and Unfair Competition § 28:6 (4th edn 2008); see Zacchini v Scripps-Howard Broadcasting Co. 433 U.S. 562, 571 (1977)

254

[2016] eKLR

255

Jemimah Ikere v Standard Group Limited [2013] eKLR

256

Schlegelmilch (n 7) 103

257

Greenberg (n 11) 3 noting that ‘[t]he majority view is that the Right of Publicity extends to every individual, not just those who are famous.’

258

ibid arguing that ‘as a practical matter, Right of Publicity disputes usually involve celebrities, since it is they who possess the names and images that help enhance advertisements and sell or “hype” products. Professionals whose names are used in their businesses, such as law firm partners, are also people for whom Right of Publicity claims can be asserted.’

259

Nimmer (n 3) 204

260

Greenberg (n 11) 4

261

Schlegelmilch (n 7) 103

262

Nimmer (n 3) 204

263

Greenberg (n 11) arguing that ‘Celebrities typically invest considerable energy in nurturing their public image, and few can argue that it would be anything but unfair for a business to siphon the celebrity’s success into their advertising or products to increase sales, without compensating the celebrity for the heightened profits, profile or recognition of the product or company.’

264

Schlegelmilch (n 7) 103-104. See also Michael Madow, ‘Private ownership of public image: popular culture and publicity rights’ 81(1) Cal. L. Rev. 179-196 (1993)

265

Michael Madow, ‘Private ownership of public image: popular culture and publicity rights’ 81(1) Cal. L. Rev. 184-196 (1993) noting that ‘courts make general and often platitudinous assertions, unsupported by any empirical evidence, about how celebrities achieve fame and distinctive public images, and then the commentators cite judicial opinions as support for the same propositions. … fame is a “relational” phenomenon, something that is conferred by others. A person can, within the limits of his natural talents, make himself strong or swift or learned. But he cannot in this same sense, make himself famous, any more than he can make himself loved.’

266

Nimmer (n 3) 205

267

Madow (n 265) 138

268

ibid 218

269

ibid 218

270

Maureen Kakah, ‘Model Sues Kenya Airways in Image Rights Dispute’ (Business Daily, 15 June 2017)

271

Maureen Kakah, ‘Blind Athlete’s Partner Sues Firms over Use of his Photos’ (Daily Nation, 6 December 2016) 9

272

Victor Nzomo, ‘Intellectual Property and Sports in Kenya: copyright protection of image rights?’ (IP Kenya, 13 June 2012) <https://ipkenya.wordpress.com/2012/06/13/intellectual-property-and-sports-in-kenya-copyright-protection-of-image-rights/> accessed 3 February 2020

273

Victor Nzomo, ‘Protection of Image Rights in Kenya: New Court Cases Against Microsoft, Safaricom and German Embassy’ (IP Kenya, 10 December 2014) <https://ipkenya.wordpress.com/tag/rights/page/11/> accessed 3 February 2020

274

Madow (n 265) 129

275

Elberse (n 2) 163 concluding that ‘a firm’s decision to enlist an athlete endorser generally has a positive pay-off in brand-level sales.’

276

[2013] eKLR, ruling delivered on 18 December 2013 in Petition No 466 of 2012 (consolidated with Petition No 416 of 2012

277

ibid

278

[2013] eKLR para 18. This position is consistent with an earlier decision by Gacheche, J in Mwangi Stephen Mureithi v Daniel Toroitich arap Moi [2011] eKLR where the Court held that horizontal application of the Bill of Rights could only apply as an exception to the rule and each case should be treated on its merits

279

Cornelia Glinz, ‘Kenya’s New Constitution’ <http://www.kas.de/wf/doc/kas_22103-1522-2-30.pdf?110412154839> accessed 3 February 2020

280

art 31, Constitution of Kenya (2010)

281

[2015] eKLR

282

ibid para 63

283

ibid para. 65

284

As held by Ackermann, J in Berstein v Bester NO (1996), 2 SA 751

285

Berstein v Bester (1996), 2 SA 751

286

(1954) 3 SA 244 (C), 247F-249D

287

JWI (n 276)

288

ibid para 67

289

ibid para 71

290

(1998) (4) SA 1127 (CC)

291

JWI (n 276) para 72

292

ibid paras 74-76

293

ibid para 80

294

ibid paras 81-82

295

ibid para 87

296

(2015) eKLR paras 89-90. The distinction between defamation and privacy actions is further confirmed by the common law cases of Richard G Godbehere v Phoenix Newspapers INC. (162) Ariz. 335, 558 USLW 2296, 17 Media L. Rep. (1952) and Max Mosley v News Group Newspapers Ltd (2008) EWHC 177 (QB)

297

[2015] eKLR

298

ibid paras 52-54

299

[2017] eKLR, judgment delivered on 12 May 2017 by Justice Mativo in Const. Petition No 343 of 2016

300

ibid

301

ibid

302

[2016] eKLR, judgment delivered on 10 March 2016 by Justice Chemitei in Petition No 7 of 2015

303

ibid para 15

304

ibid para 16

305

[2014] eKLR, ruling by Justice Aburili delivered on 11 November 2014 in Civil Appeal No 85 of 2014

306

ibid

307

[2013] eKLR, judgment delivered on 22 August 2013 by Justice Waweru in Civil Case No 65 of 2012

308

ibid para 20

309

ibid para 26

310

Gervais (n 13) 195

311

Nimmer (n 3) 205

312

Gervais (n 13) 184

313

Nimmer (n 3) 205

314

ibid 207-209

315

[2013] eKLR para 26

316

Nimmer (n 3) 209

317

[2013] eKLR

318

(1987) L.R.C.

319

s 12(1), Consumer Protection Act (No 46 of 2012)

320

s 12(2)(a)(b), Consumer Protection Act (No 46 of 2012)

321

Consumer Protection Authority of Kenya, Consumer Protection Guidelines (June 2014) <https://www.cak.go.ke/images/docs/Guidelines.pdf> accessed 7 December 2018

322

Published by the Communications Authority of Kenya <http://www.ca.go.ke/images//downloads/sector_regulations/(Consumer%20Protection)%20Regulations,%202010.pdf.> accessed 7 December 2018

323

Communications Authority of Kenya, Kenya Information and Communications (Broadcasting) Regulations (2009) <http://www.ca.go.ke/images//downloads/sector_regulations/(Broadcasting)%20Regulations,%202009.pdf> accessed 7 December 2017

324

Regulation 29, Kenya Information and Communications (Broadcasting) Regulations, 2009

325

Regulation 33(2)(a), Kenya Information and Communications (Broadcasting) Regulations, 2009

326

Georg W Hegel, Philosophy of Right (1st edn, Clarendon Press 1952) 51

327

ibid 77

330

Daniel Klein and John Robinson, ‘Property: A Bundle of Rights? Prologue to the Symposium 8(3) Economic Journal Watch 193-204 (2011)

331

Douglas W Allen, ‘Transaction costs’ 1 Encyclopaedia of Law and Economics 893, 898 (2000)

332

ibid

333

Armen A Alchian, ‘Property Rights’ in Steven Durlauf and Lawrence E Blume (eds), The New Palgrave Dictionary of Economics (Macmillan 2008)

334

Dean Lueck, ‘Economics and Property Law’ in Durlauf and Blume (n 333)

335

ibid

336

Allen (n 331) 898

337

John Locke, Second Treatise, Chapter V, ‘Of Property’ §§ 25-51, 123-26 (1689)

338

George Smith, ‘John Locke: Hermeneutics and Labor’ <https://www.libertarianism.org/columns/john-locke-hermeneutics-labor> accessed 13 April 2020

339

Cornish and Llewelyn (n 127) 618

340

Nzomo (n 272)

341

Law No 11.723 of 28 September 1933, on Legal Intellectual Property Regime (Copyright Law, as amended up to Law No 26.570 of 25 November 2009) <http://www.wipo.int/wipolex/en/text.jsp?file_id=225488> accessed 7 December 2018

342

Fidelma Mumbua, ‘Should the Intellectual Property Laws be Amended to Provide for a Distinct Legal Framework on Image Rights in Kenya?’ (LLB Thesis, Strathmore University 2017) 48 <https://su-plus.strathmore.edu/handle/11071/5225> accessed 3 February 2020

343

Asha Mikinyango, ‘Sports Image Rights in Kenya’ (University of Nairobi) 110 <http://erepository.uonbi.ac.ke/handle/11295/103286> accessed 7 December 2018. Similarly, Mutugi Mutegi, ‘Opportunity for Image Rights in Kenya’s Sports Scene’ (Business Daily, 7 August 2016)

344

art 2, Berne Convention 1979

345

Gervais (n 13) 181-187 stating that ‘[t]he publicity rights reifies fame; it allows famous persons to commoditize the value of their public persona.’

346

Madow (n 265) 182, 188

347

ibid 184

348

ibid 188

349

Nimmer (n 3) 216

350

Nimmer (n 3) 216

351

Madow (n 265) 125 arguing that centralized, private ownership and control of celebrity images poses a threat to cultural pluralism and self-determination. See also David Lange, ‘Recognizing the Public Domain’ 44(4) Law and Contemporary Problems 147, 163 (1981), indicating that ‘fame is neither inconsistent with merit nor evidence of merit.’

352

14 F.3d 912, 919 (3d Cir. 1994)

353

[2013] eKLR

354

David Watts, ‘Personality and Privacy in Australia’ UN Special Rapporteur’s Conference on Privacy, Personality and Flows of Information, New York, 19 and 20 July 2016, 1

355

ibid

356

Slater (n 7) 12

357

Ralston (n 83) 11

358

Gillian Black, ‘Recent developments in publicity rights in the UK: where now for celebrities?’ in Hugh H Hansen (ed), Intellectual Property Law and Policy (Hart Publishing 2010) 7

359

Stallard (n 129) 587

360

ibid

361

ibid

362

Kelli L Sager and Davis W Tremaine, ‘Summary of Right of Publicity Issues’ (unpublished) <https://law.ku.edu/sites/law.ku.edu/files/docs/media_law/Summary_of_Right_of_Publicity_Issues.pdf> accessed 3 February 2020

363

ibid

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