By Oluwatobi Awe
INTRODUCTION
Image stricto sensu is a visual representation of something, a likeness of an object produced on a photographic material. It can also be construed as a mental picture or impression of something. The scope of intellectual property law has recently embraced wider interpretations to accommodate novel issues of the society that also require protection. Other rights that an individual can possess in his/her own persona include appearance, silhouette, feature, face expressions (verbal or facial), mannerisms, and the likes.
Rihanna became the second honoree of the Celebrity Legs of Goddess award in 2007. To protect her asset the artist legs were insured for $1 Million (One Million Dollar) by Gillette. In the popular United Kingdom case of IRVINE & ORS V TALKSPORT & ROBYN[1] and RIHANA FENTY & ORS V ARCADIA GROUP BRANDS LIMITED (T/A) TOPSHOP & ANOR[2], the court held that the unauthorized use of the plaintiff’s image amounted to passing off.
Nigeria’s creative space is saturated with copyright infringement accusations, counter-accusations and the rare case, court rulings. Comedian and recent Africa Magic Viewer’s Choice Award (AMVCA) winner Sabinus have just sued Peak Milk and Gala-kernel of the legal battle being the two mega companies profiting off his trademarked image and catchphrase ‘‘something hooge’’, using it to sell their waves without permission and without compensation[3].
Times are fast changing that Sabinus clad in his usual blue and short tie, head reclined in thought, eyes glazed with abstraction and his impish grin are all eligible of protection by law.
GOVERNING LAW
The Constitution
Section 37 of the 1999 Constitution[4] provides that:
‘‘The privacy of citizens, their homes, correspondence, telephone conversations and telegraphic communications is hereby guaranteed and protected’’.
To demonstrate the breach of this provision, a Plaintiff must clearly establish how this right has been breached and how the said breach has adversely affected his person and/or reputation. It is then not surprising that the Nigerian courts being strongly connected to the English Common Law have found it increasingly difficult to find an adequate definition of the concept.
The rules for this procedure are set out in the Fundamental Rights Enforcement Procedure Rules 2009. This contain the steps and rules for commencing an action for the enforcement of Fundamental Human Rights in Nigeria. The rules were created by Section 46(3)[5] of the constitution.
Copyright Act
In Nigeria, several laws have a bearing on the protection and administration of the different rights that make up intellectual property. However, the three main statutes governing the intellectual property law in Nigeria are the Copyrights Act, the Patents and Designs Act, and the Trademarks Act.
Section 10 of the Copyright Act[6] provides:
(1) Copyright conferred by sections 2 and 3 of this Act, shall vest initially in the author.
(2) Notwithstanding subsection (6) of section 11 of this Act where a work- (a) is commissioned by a person who is not the author’s employer under a contract of service or apprenticeship; or (b) not having been so commissioned, is made in the course of the author’s employment, the copyright shall belong in the first instance to the author, unless otherwise stipulated in writing under the contract.
(3) Where a literary, artistic or musical work is made by the author in the course of his employment by the proprietor of a newspaper, magazine or similar periodical under a contract of service or apprenticeship as is so made for the purpose of publication in a newspaper, magazine or similar periodical, the said proprietor shall, in the absence of any agreement to the contrary, be the first owner of copyright in the work in so far as the copyright relates to the publication of the work in any newspaper, magazine or similar periodical; or to the reproduction of the work for the purpose of its being so published; but in all other respects, the author shall be the first owner of the copyright in the work.
(4) In the case of a cinematograph film or sound recording the author shall be obliged to conclude, prior to the making of the work, contracts in writing with all those whose works are to be used in the making of the work.
(5) Copyright conferred by section 4 of this Act shall vest initially in the Government on behalf of the Federal Republic of Nigeria, in the State authority on behalf of the State in question, or in the international body in question, as the case may be, and not in the author.
The section above essentially provides that the copyright to any photograph vests with the photographer known as the author except there is a written agreement
which states otherwise. Who the author of a photograph is can be found in Section 51 of the Copyright Act[7] which provides:
‘‘…author in the case of a photographic work means the person who took the photograph…’’
The purport of the provision is that the person who is a muse or the person who struck a pose is not in fact the author and therefore he/she does not own copyright in the photograph. Rather, it is the person who took the photograph that is the author.
Nigeria Data Protection Regulations (NDPR) 2019
A person’s picture is his/her personal data or information. Processing my data (using the photo) without consent is unlawful under the data protection law[8] and carries criminal liability. In VON HANNOVER V GERMANY[9], the plaintiff had her pictures taken in public without her consent. The European court held that the Defendant breached her right to privacy in that circumstance.
JURISDICTION
Nigeria, as we all know, was colonized by Britain. Hence, it is trite that some element of British Law will have some influence on our legal system. English law in Nigeria is derived from colonialization, while common law is a development from its post-colonial independence.
It is worthy of note that Nigeria having got independence in 1960, the received English law is only a persuasive authority due to Nigeria being a sovereign state as such, its law is supreme. The constitution which is colloquially the grundnorm provides that Nigeria shall not be governed by any other person or laws except in accordance with the provision of the constitution[10] and such other law to the extent of the inconsistency be void.
LEGAL ISSUE
The contentious issue of whether or not a person can exhibit in a public place a photographical image of another for commercial purpose and promotion of its business without prior consent or authority is addressed.
LEGAL ARGUMENT
Reference was made earlier to Section 37 of the Constitution of the Federal Republic of Nigeria which protects the private life, correspondences and telegraphic communications of its citizenry, the protection marquees under this provision. In PETER OBE V GRAPEVINE COMMUNICATIONS LTD[11] the court held that the Defendant’s act of publishing the plaintiff’s photograph without license or authorization amounts to infringement of the plaintiff’s image and passing off.
It can be inferred that the act of publicizing the image of another person for personal use and gain without the authority and consent of such person violates the right to the private life of the person whose image has been used. This was recently accorded credence in the recent case of BI-COURTNEY AVIATION SERVICES LIMITED V. KELANI[12] where the Respondent instituted an action for the unconstitutional act of using his photograph for the purpose of business advertisement without his knowledge and/or consent. The trial court granted the claim, and on appeal, the Court of Appeal had this to say in dismissing the appeal;
‘‘It is trite that the use of a person’s identity can be by way of a photograph, drawing or film and in order to find a use of the person’s image rights or identity, the person must be identifiable in the depiction’’ See ALI V PLAY GIRL INC. 447 F. SUPP. 723 (S.D.N.Y).
Hence, the onus lies on the Plaintiff to adequately distinguish and juxtapose the fact of his case and precedent forming basis of his legal argument before the court to decide. It is for him to prove that his photograph or pictorial representation is protected by law specifically within the interpretations of section 51 of the Act (Interpretation Section).
DEVIL’S ADVOCATE
For a Plaintiff to lay a successful claim for breach of his legal rights which entitles him to relief sought, he must be able to prove actual injury to his personality and/or economic loss as a result. The Plaintiff must prove how the said image has adversely affected his person and/or reputation. It is also for him to shift the burden of proof[13] on the Defendant, in the event of failure to do so, then his claim fails.
It flows naturally from the above that a more compelling argument from the Defendant is important to ground the present. It is for him to prove that the image complained of as having been used was already a picture in the public domain. Where the photograph is readily available over the internet, then it is not a picture that was extracted from the Plaintiff’s private record. Therefore, he cannot complain that the publishing of such violates his private life since he was in the first instance the same person that made the image available to the public eye.
Per the provisions of Section 10 of the Copyright Act, copyright of a work or piece of art is vested in the author in which case of a photograph is the person who took the pictures. To thus establish the breach of copyright, the plaintiff has the duty of showing that copyright of the work herein is vested in him as the author of the image as against the presumption of first vesting in the photographer. It is obvious that being the person whose photograph is taken, it will be unreasonable or counter-intuitive for him to claim copyright in such photograph.
On the assertion that an image right was breached, it will be clearly unfounded to claim such within our jurisdiction. While there is no direct relief such as image right, its notion and action are based on the common law doctrine of passing off as seen in England where the notion is borrowed into the Nigerian jurisdiction[14].
He who asserts must prove
The court in the above stated case held that for the Plaintiff to successfully ground an action of image rights based on passing off, he must show that at the time of the acts complained of he had a significant reputation or goodwill and that the actions of the Defendant gave rise to a false message which would be understood by a not insignificant section of his market that his goods have been endorsed, recommended or approved of by the Plaintiff[15].
See also BANIRE V NTA-STAR TV NETWORK LIMITED (2021) LPELR 52824 where the court held Per MOHAMMED BABA IDRIS, JCA (Pp. 32-34, para A-A) thus:
‘‘…I have looked at the judgment of the trial court together with the evidence adduced before it and I find that the Appellant’s argument is of no moment. Indeed, the tort of passing off is a claim that exists in common law which was mainly restricted to goods and services. However, in the English cases of IRVINE V. TALKSPORT LTD (2002) F.S.R 60 and ROBYN RIHANNA FENTY V ARACADIA GROUP BRANDS LTD (T/A TOPSHOP) & ANOR (2012) EWHC 2310(CH), the plaintiffs who are celebrities brought actions against the defendants under the tort of passing off for unauthorized use of their images. The cases above have created what is known as image rights which when infringed can be sued under the tort of passing off. Image rights or publicity right refer to a person’s right against misappropriation of his name, likeness, physical appearance, nicknames, pictures, personal slogans etc. Put simply, it is the right of a person to control public’s commercial exploitation of a person’s identity. In Nigeria, there are no specific laws governing image rights and the closest law that can be considered is that enshrined in Section 37 of the 1999 Constitution known as the right to privacy. Image rights are also equivalent to property rights and image rights in most cases are pursued by celebrities as they are persons that in most cases can establish the elements needed to succeed in the tort of passing off as it relates to image rights. This however, does not preclude a normal person from suing under this right. Now in order to prove the tort of passing off the individual must establish that his/her image has acquired sufficient goodwill such as quantifiable goodwill which can be leveraged on in consideration for money. Secondly, he/she must prove that the third party has misrepresented to the public by using the image and lastly, it must be proved that this misrepresentation caused or is capable of causing damages such as reduction in the vale attached to their goodwill. Essentially, the ingredients needed to prove the tort of passing off are: goodwill or reputation, misrepresentation by the defendant to the public and a damage suffered or likely to be suffered.
The unauthorized use of a person’s photo can also raise the legal issue of tortious passing off, where a person’s image has acquired sufficient goodwill which can be leveraged on in money for consideration. The unauthorized use of it may misrepresent to the public and by using this image, the misrepresentation is capable of causing lot of damage to the said Plaintiff.
The position of the English courts is that individuals do not as a matter of course possess image right and the English court restated in a recent case of HEARST ET AL V AVELA ET AL [2014] EWHC 439 (CH) that:
‘‘there is no such thing as a freestanding general right by a famous person to control the production of their image’’.
Hence, a person who claims his image rights have been violated, has a difficult task in proving this allegation. Such party has the difficult task of showing that; his image enjoys sufficient goodwill and influence, there is misrepresentation by the defendant and that the use of his image has a negative impact on him. Image rights is largely about inference that may be made of a person’s image and which would be damaging to his personality.
Lastly, a Plaintiff in an image rights case, must show that a pecuniary or some commercial gain is to be made by such use by the other party, as image right is based on character merchandizing where characters in public light are used.
CONCLUSION
There is no comprehensive law on image rights in Nigeria. It is trite that case laws from foreign jurisdictions are only persuasive authorities in our justice system, although developed.
It is therefore a wakeup call to law makers to enact more and amend existing laws to accommodate the emerging concepts that were not fathomed at the inception of our laws. This will engender development in our entertainment laws and privacy laws to forestall goodwill thefts from annexing the proceeds of another’s ingenuity.
Oluwatobi Awe writes from Lagos. He can be reached at tobiawe13@gmail.com
[1] [2003] 2 All ER 881
[2] [2013] EWHC 2310 (Ch)
[3] June 3, 2022 (Michael Aromolaran) https://culturecustodian .com/five-copyright-infringement-duels-in-the-nigerian-creative-space accessed 26, November, 2022
[4] Constitution of the Federal Republic of Nigeria 1999 (as amended)
[5] Ibid
[6] Cap 28 Laws of the Federation of Nigeria, 2004
[7] Cap 28 Laws of the Federation of Nigeria, 2004
[8] Article 2.10 of the Nigeria Data Protection Regulations (NDPR) 2019.
[9] [2004] EMLR 379
[10] See S. 1(1), (2) and (3) of Constitution of the Federal Republic of Nigeria 1999 (as amended)
[11] 40 NIPJD [FHC 1997] 1244/1997
[12] 2021 (LPELR)-56356 (CA)
[13] Section 132 & 133 of the Evidence Act, 2011
[14] EDMUND IRVINE & TIDSWELL LTD V TALKSPORT LTD [2002] EWHO (367)
[15] Supra