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PRODUCT ENDORSEMENT

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In issue 78 we looked at how Rihanna successfully sued Topshop for passing off in the UK, after the clothing chain made unauthorised use of her photo in an ad – the court accepted that people seeing the ad would mistakenly believe that Rihanna had endorsed Topshop. In issue 79 we discussed footballer Gareth Bale, and we looked at how a footballer’s package is sometimes structured in such a way as to compensate the player separately for kicking a ball and for allowing the club to make money from their name, with the player’s image rights often being housed in the name of a separate company, one that might well be registered in a tax-friendly jurisdiction.

So it’s interesting that we now have a pending SA High Court case that covers these two issues. Three Bafana Bafana players – Steven Pienaar, Kathlego Mphela and Sipiwe Tshabalala – are suing SAB for R6.5 million. They claim that the beer giant used their photos without consent in a Castle ad that appeared on billboards around the time of the 2010 World Cup. The ad showed the players and used the slogans ‘The beer behind our boys’ and ‘It all comes together with a Castle’.

What adds spice to this is the fact that the ad also featured famous rugby players like John Smit and Victor Matfield, and the cricketer Graeme Smith. Yet they were paid. But it’s not what you might be thinking – SAB claims that it received permission to use the footballers’ images from SAFA, and SAFA claims that the footballers were precluded by contract for endorsing any product without the organisation’s consent.

If this goes all the way it will make for an interesting case. I have no doubt that a court will find that South Africans know enough about product endorsement to know that when a famous face appears alongside a product, money has passed hands. So passing off shouldn’t be difficult. In South Africa we also have a right to identity, something which ex-Miss SA, Basetsana Kumalo, successfully raised against Cycle Lab, when that company used her image in an ad without consent. It obviously remains to be seen exactly what’s in the contract that SAFA has with the players, and whether there are any grounds for attacking that contract. The contract that exists between SAB and SAFA will also be relevant.

In the meantime, SA celebrities should seriously consider registering their names and images as trademarks. Because it’s much easier to enforce rights like this when you have a trademark resgration. Or to borrow from SAB’s slogan – ‘It all comes together with a registration’

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