Brands in Africa: the dos and the don’ts

Africa is a vast continent and is often underestimated, both from a business but also from a brand protection perspective.

Africa’s land mass exceeds that of India, China, the United States and Europe combined. It is also the second most populous continent, with over 1.3 billion people – or about 16.5% of the world’s population. It has the world’s largest free trade area. Business opportunities abound!

For brand owners, it makes sense to identify the business opportunity first and secure deals before thinking of brand protection. However, in an African context, it is prudent to secure protection of trademarks sooner rather than later. There are a host of reasons why brand protection should be top of mind when it comes to Africa. There are definite dos and don’ts in navigating the 54 countries, of which 52 have working trademark systems.

Why Africa?
The continent has extensive natural resources, a young and increasingly educated workforce, more stability in terms of governance, and more prospects for economic growth than in the past. Africa is resource rich, with a third of the world’s mineral resources and 10% of the planet’s oil reserves, and contributes significantly to the gold and oil trades. Manufacturing services and tourism have been gaining traction. In Nigeria, the services sector now accounts for the bulk of its gross domestic product, with its Nollywood film industry surpassing that of Bollywood and is now second only to Hollywood. The continent has also been quick to adapt current technologies to supplement its weak infrastructure, using mobile technology to deliver novel financial platforms – such as M-Pesa – thus easing access to and stimulating trade.

A strategy for Africa
A brand is a commercial asset and allows businesses to compete more efficiently, and protects businesses against infringement and unfair competition. Trademark squatters and counterfeiters have also discovered vast opportunities and often file applications for marks that are identical to, or incorporate elements of, internationally well-known brands. There are still jurisdictions where common law rights (user rights) or well-known marks are not recognised: the so-called first-to-file jurisdictions. Given the ever-growing reach of social media, brand owners should act quickly, lest they be blocked from trading in these markets. Unfortunately, brand owners often have to defend their rights without being able to rely on prior trademark registrations for their famous marks. This is not ideal and far costlier than creating a considered portfolio of trademark rights before the squatters and counterfeiters move in.

What to do?
A strategy to protect and enforce any trademark portfolio will be informed by the commercial considerations of the business, followed by the legal merits of that strategy. An effective trademark strategy creates a clear picture of what rights need to be secured. This will put the business in a position to identify its objectives, and to measure successes and potential gaps. Protection and enforcement of trademark rights are interdependent and securing trademark registrations must form the foundation of any brand owner’s enforcement strategy in Africa.

For most brand owners, the question is always where to start. This decision cannot be made without thoroughly considering the unique (and often challenging) African legal landscape. The laws are not uniform and brand owners will need expert guidance.

It is not only costly but also impractical to attempt to obtain trademark protection from east to west and north to south without first establishing the brand owner’s business goals and identifying countries of interest, as well as strategically important jurisdictions. A trademark filing strategy will be informed by the business strategy for the next five to 10 years. The focus of the business strategy will often be only on the commercial priority of jurisdictions and this approach will not necessarily be successful in the African environment. The business focus should be influenced by the importance of securing and enforcing trademark rights in jurisdictions where trademark squatters and counterfeiters thrive. These considerations will have an impact on the overall priority of jurisdictions and even the ranking of trademarks.

A carefully tiered filing programme, which is typically rolled out over a period of five years in jurisdictions of importance (both from a business and trademark perspective) can offer effective protection. The strategy must always cover enforcement and anti-counterfeiting steps. Playing only a defensive game in Africa can cause substantial, unexpected costs and disappointment on the commercial side – a big don’t!

Definite dos
There are a few important questions to ask in respect of brand owners’ jurisdictions of interest.

  • Can a trademark be protected in these jurisdictions and, if so, for goods and services?
  • Is this a first-to-file jurisdiction or can the brand owner rely on user rights?
  • How long does it take to get a trademark registered (the time periods can vary from a few months to several years)?
  • What are the costs of obtaining and maintaining trademark registrations versus litigation costs to oppose or recover a mark, or both?
  • What are the benefits of using regional filing systems including that of the Organisation Africaine de la Propriété Intellectuelle (OAPI) or the African Regional Intellectual Property Organization (ARIPO)?
  • Has the country acceded to the Madrid Protocol and will using the Protocol compromise the rights of the brand owner (eg, where a country has not amended its domestic laws to give effect to international registrations)?
  • Is the recordal of a licensee compulsory?

The next step in devising the strategy is to focus on proactive and reactive enforcement, including anti-counterfeiting measures, policing rights and an effective watch service in Africa.

After finalising the trademark strategy, the budgeting process will be much easier as a longterm plan will be in place. The filing programme can be rolled out in accordance with the budget. Such a strategy should, in time, result in fewer but more effective enforcement measures as the brand owner would have anticipated problems in specific jurisdictions.

Let’s talk basics
There are two basic philosophical and legal approaches to trademark priority: first-to-file and first-to-use. Well-known marks should also be considered.

First-to-file jurisdictions
The first-to-file rule is followed in most African territories. These jurisdictions must be prioritised in a trademark strategy.

The OAPI regional system (a centralised system covering 17 countries), follows the first-to-file rule. Trademarks can be opposed or a claim to ownership can be filed. The latter involves proving that the brand owner can claim ownership through use in the region or the mark being well known.

In Zambia, it is not possible to rely on earlier user rights in opposing a later application, following the DH Brothers High Court case. In many countries, competitors or counterfeiters use and often register the get-ups, or similar get-ups, but without the well-known house mark of brand owners. When user rights are not recognised, this can create a problem. Well-known animated characters also often feature in unauthorised label and logo marks. Depending on the jurisdiction, user or well-known rights may not be sufficient. Copyright cannot always be relied on in trademark oppositions and copyright must be pursued up to the appeal stage in the High Court in jurisdictions such as
Morocco.

As most African countries and jurisdictions follow the first-to-file approach, it is critical to obtain registration as early as possible. Failure to do so can leave the business vulnerable to trademark squatting or counterfeits, or a current or former distributor could secure registration. Former distributors often have the chutzpah to register a well-known brand, threaten the new distributor with infringement and even use genuine packaging to sell their own products. If a brand owner wants to enter the market, or sell through another distributor, it will either first have to oppose or cancel the registration. Creative litigation solutions are possible, but absent registered rights, enforcement will inevitably be more complex and costly.

First-to-use jurisdictions
In countries where user rights are recognised (the first-to-use system), priority is given to those who are the first to use a trademark and can demonstrate evidence of that use if another party has applied to register that mark. The brand owner, however, must prove its earlier use. Detailed evidence must be compiled and a trademark application must be filed in any event. If there is no earlier use, proving that the mark is well known may be the only solution. This increases enforcement costs. The importance of securing registrations, even in firstto- use or jurisdictions where well-known marks are recognised, cannot be overstated. Enforcement will be much easier and results are certain.

Countries where a brand owner can rely on user rights include Botswana, Eswatini, the Gambia, Ghana, Kenya, Lesotho, Malawi, Namibia, Nigeria, Sierra Leone, South Africa, Tanzania, Uganda, Zimbabwe and Zanzibar.

Well-known rights
Many African countries are signatories to the Paris Convention for the Protection of Industrial Property and well-known marks are recognised, although there are nuances when it comes to the extent of the recognition and proving such rights.

Typically, the brand owner must be able to establish that its trademark is well known in the country in issue. This will often require evidence of local use, promotion or, in some instances, spill-over advertising. Reliance on well-known rights alone can negatively impact the merits of taking enforcement action, particularly where there is insufficient evidence that the mark is well known locally.

Well-known rights are recognised, subject to nuances in each country, in Algeria, Botswana, Burundi, Cape Verde, the Democratic Republic of the Congo, Ethiopia, Djibouti, Egypt, the Gambia, Ghana, Kenya, Lesotho, Liberia, Libya, Malawi, Mauritius, Morocco, Mozambique, Nigeria, Rwanda, São Tomé and Príncipe, the Seychelles, South Africa, Sudan, Tanzania, Tunisia, Uganda, Zambia, Zanzibar and Zimbabwe, as well as the OAPI member states.

Practical examples
Trademark squatting is an ongoing brand enforcement challenge. Companies or individuals seek registration of well-known trademarks often to circumvent anti-counterfeiting efforts.

In Nigeria, a major economy in Africa, local companies (with links to the manufacturers of counterfeit products abroad) apply to register well-known trademarks, but only prosecute those applications to the point of acceptance. That notice is then relied on by counterfeiters to convince customs officials that they own a trademark “registration”. The true brand owner’s application can be blocked by the earlier identical one, creating an impasse. Relief must be sought from the High Court, which involves costly, drawn-out litigation.

In countries such as Algeria, where user and well-known rights are not clearly enforceable absent registered rights, infringers open clone stores imitating obviously well-known brands, which closely resemble the original stores and outlets that have not yet been used or promoted locally by the brand owners. In Morocco, trademark squatting has become rife. Surprisingly, squatters defend oppositions even up to the appeal level.

The scourge of counterfeits – what to do?
Brand owners around the globe have embarked on business expansion plans to exploit the potential of their trademark rights, increase their market share and create an additional revenue stream in Africa. This trend has also created a fertile ground for the counterfeit goods trade, which is thriving in Africa.

There are challenges such as poor legislative framework, an unharmonised legislative landscape, unmonitored or porous borders, weak enforcement, limited resources and a lack of political will in some cases; however, these challenges are not insurmountable. It is possible to effectively address the counterfeit goods trade by partnering with a legal team familiar with the landscape and navigate around those challenges.

The most critical step in implementing an effective and sustainable anti-counterfeiting strategy is to record trademark rights with customs agencies. Formal customs recordal systems are possible in some, but not in the majority, of African countries, but informal recordals are possible in others. These recordals are a critical tool, and must be kept up to date and renewed. Kenya has recently amended its laws and is on the verge of implementing mandatory recordal with the Anti-Counterfeit Authority.

Brand owners are encouraged to conduct regular customs and police training (at local and regional levels) to create brand awareness and to demonstrate their commitment to the fight against the counterfeit goods trade.

It is equally important to conduct in-market investigations and regular surveys to understand the extent of the counterfeit goods problem and the flow of such goods, and to establish the identity of the retailers, (bulk) distributors and, importantly, manufacturers. The outcome of these investigations will ensure that an effective anti-counterfeiting strategy can be adopted, and brand owners must strategically and aggressively pursue criminal and civil remedies, especially against bulk importers, distributors, manufacturers and product completion centres. This approach will not only send a strong message to the market, but ensure that the problem is nipped in the bud.

Another important factor is the collaboration between local, regional and international enforcement agencies in several jurisdictions. This will enable law enforcement to impactfully tackle the practical challenges of transhipment and round-tripping of consignments between neighbouring countries, and assist with capacity building. The proper flow of information, an extensive network of investigators and the support of the World Customs Organization and Interpol have placed law enforcement in a position to identify new trends in the importation and movement of counterfeit goods across Africa.

Information is key to enable brand owners to formulate a cost-effective and sustainable enforcement strategy. As each country’s intellectual property framework is different, a one size fits all approach is a don’t and will not achieve meaningful results.

The dos for an anti-counterfeiting strategy include:

  • border enforcement (formal and informal recordals);
  • regular participation in law enforcement training;
  • pursuing border detention cases against importers;
  • conducting in-market surveys and intelligence-gathering exercises to understand the extent of the problem;
  • pursuing in-market intelligence-driven search and seizure operations;
  • exploring control delivery exercises, particularly for cross-border consignments of counterfeit goods;
  • pursuing both civil and criminal proceedings, when warranted;
  • supporting the police and prosecutors to achieve successful criminal convictions;
  • exploring knock and talk exercises (where removal of counterfeit goods from the market is a priority) and voluntary surrenders, where appropriate; and
  • conducting online investigations and dispatching cease and desist letters or submitting takedown notices on online platforms, or a combination thereof.

Many African countries have efficient regulatory authorities that are willing to participate in the fight against the counterfeit goods trade. They can assist with the removal of counterfeit goods in situations such as where packaging is in contravention of the labelling regulations, goods have been proven to be sub-standard or medicines are unregistered.

One unexpected side effect of the covid-19 pandemic in Africa was the migration of the sale of counterfeit goods onto online platforms, which has created significant challenges for law enforcement agencies. A hybrid of online and offline or traditional investigations has proven pivotal to infiltrate organised crime syndicates, which employ sophisticated strategies to circulate counterfeit goods online through websites, trading and social media platforms.

Conclusion
For brand owners, the African continent presents a huge, growing and dynamic market. With a focused and well-developed trademark strategy that involves securing registration for all key brands in relevant first-to-file jurisdictions, and proactively policing and enforcing rights in jurisdictions that are strategically important, successfully navigating the African continent from east to west and north to south is possible!

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Neil Young Kicks Trump to the Curb: No More ‘Devil’s Sidewalk’!

Well-known musician Neil Young is suing the presidential campaign of Donald Trump, calling on the campaign to stop all use of his music at Trump rallies. These songs include “Devil’s Sidewalk” and “Rockin in the Free World”.

Mr. Young is apparently of the view that Trump’s campaign has no “free world” spirit at all, but rather that it is a campaign “of ignorance and hate”, and not one that he wants his music to be associated with.

According to Mr. Young’s copyright infringement case filed on 4 August 2020 in the U.S. District Court in the Southern District of New York, the Trump campaign has been using his songs without his consent, and has infringed his copyright. This is in addition to the allegation that appropriate licences have not been secured from the relevant licensing bodies in the United States to broadcast the songs publicly at the rallies. Mr. Young apparently first took issue with the use of his music by the Trump campaign in 2016, but his complaints fell on deaf ears, and this is the reason why legal action has now been pursued.

While this saga may have Mr. Trump humming a different tune (specifically, Sweet Home Alabama: “I hope Neil Young will remember, a Southern man don’t need him around anyhow…”), taking a different approach to the copyright of musicians may well be appropriate. Let’s consider this issue, from a South African law perspective.

In terms of the South African Copyright Act of 1978 (“the Act”), a “musical work” means “a work consisting of music, exclusive of any words or action intended to be sung, spoken or performed with the music”. There are further copyright works at play in a song, as the lyrics of a song would constitute a “literary work”, and a particular recording of it would constitute a “sound recording”, both of which are also recognised and protected works in terms of the Act.

Would Mr. Young be entitled to claim copyright? Well, irrespective of one’s musical preferences, all would probably agree that the songs in dispute are sufficiently original to warrant copyright protection. The Act does not require a work to be entirely novel to be considered original and the courts have held that the originality requirement will be met where the artist’s individual skill and effort went into its creation. In many instances, the author of a work, its creator, is the owner of copyright. That is the case with both musical and literary works. In the case of sound recordings, the person by whom arrangements were made for the making of the sound recording, owns the copyright. One assumes that Mr. Young would be able to claim ownership in at least the musical and literary works subsisting in his songs, and perhaps also the sound recordings of them.

The owner of copyright has the exclusive right to do, or to authorise others to do, certain acts to exploit a work for personal gain or profit. In short, as a copyright owner, for the term of the copyright, no third parties can make reproductions or adaptations of Mr. Young’s works without his consent.

At face value, one would assume that Mr. Young’s copyright has indeed been infringed by the Trump campaign. However, one must consider whether the defence of “fair dealing” might apply.

When a person purchases a song, there is an implied licence in play: obviously the purchaser will listen to, and thereby reproduce, the song and sound recording. Does this mean that one has free reign to play music, even publicly after it has been purchased? Not at all. This situation is dealt with in South Africa by way of SAMRO licences. SAMRO collects licence fees, which are distributed to artists as royalties. For example, if you own a restaurant and want to play your CDs in the background as “mood music”, you must obtain a licence from SAMRO. You cannot simply publicly broadcast the music. One of the allegations made by Mr. Young is that the Trump campaign has not sought the appropriate licences from the equivalent bodies in the US.

It is doubtful that the Trump campaign will be able to allege that its use of the music constitutes fair dealing. The music is being used publicly, and in relation to a political campaign. Another sticky legal issue, Mr. Young’s personality property rights, also comes into play. His music is, of course, closely associated with him as an artist and individual. He has not agreed to its use by the Trump campaign and his own personal stance is directly in opposition to that of the campaign. He does not wish to be associated with it, nor does he want members of the public to assume that he has endorsed the campaign, and whatever political views it represents. In short, the Neil Young “brand” as it were, may suffer reputational damage if wrongly linked to a campaign which Mr. Young feels does not align at all with his image, what he represents and his views. There is, very arguably, an infringement of Mr. Young’s personality rights, which as a celebrity also have a certain economic value which he is entitled to exploit.

Turning back to copyright, Section 20 of the Copyright Act ensures protection of artists’ “moral rights”. In short, artists can object to any distortion, mutilation or other modification of their works, where such action is or would be prejudicial to their honour or reputation. Moral rights are personal rights, which stay intact even if the author of a copyright work transfers ownership in the work to another. There is, therefore, an acknowledgement in the law of the link between the artist and his/her art, and a sense that the integrity of both ought to be protected. Of course, the Act refers to changes made to the copyright work and, although Mr. Young may feel that the Trump campaign’s mere use of his music constitutes a “mutilation”, a Court may not agree.

The dispute between Young and Trump is, well, young. We wait to see how it progresses, but Trump campaign has in the past been referred to as one with “deep pockets” and backing away from a fight may not align with the “Trump brand”. Political parties should, however, take notice of this, and remember that the songs and other copyright works they use in connection with their campaigns are protected in terms of copyright law, and that motivated copyright owners may very well take legal action to restrain any unauthorised use of their works.

Listen | Who owns the copyright to the tattoo on your body

Author: Nicole Smalberger

Nicole Smalberger discusses copyright in tattoos with 702 Talk Radio’s Joanne Joseph.

Would it ever occur to you that a third party might be able to claim rights on your skin? In the case of art that has been inked into your skin, namely tattoo art, that may well be the case.

A tattoo is an artistic work. If it is original and reduced to a material form (which it very arguably is when it is inked into your skin), copyright subsists. In the case of artistic works, it is the artist or creator of the work who owns the copyright, namely the tattoo artist and not the person on whom the tattoo appears, irrespective of the fact that the latter has paid for his/her tattoo. In short, when you pay your tattoo artist, you pay for the tattoo, not the copyright subsisting in it.

This issue has come up for legal consideration in the United States, more recently in a matter involving Solid Oak Sketches and video game maker Take-Two Interactive. The latter is involved in the creation of the popular “NBA 2K” basketball video game series and Solid Oak Sketches has alleged that it owns the right to exploit the copyright in the tattoos appearing on a number of players in the games.

In a rather astute business move, Solid Oak Sketches purchased the exclusive rights to license certain basketball players’ tattoos from the original tattoo artists. Solid Oaks Sketches has therefore made the argument that, by reproducing detailed depictions of the body art appearing on some of these players in its games, Take-Two Interactive has infringed its copyright. In its defence, Take-Two has argued that it is only depicting the players as they appear in real life, that the focus of the game is not on the players’ tattoos, that the issue is de minimis and, in any event, that a finding in favour of Solid Oaks would result in public figures having to “seek its permission every time they appear in public, film, or photographs”, which would be impractical and untenable.

On face value, copyright infringement has indeed occurred. An original artistic work, which a tattoo undoubtedly can be, has been reproduced without the artist’s authority by a third party in the course of trade and for financial gain. At the heart of copyright law is the idea that creators, artists, should be compensated for their creativity, and there is no reason why the creativity of a tattoo artist should be discounted.

However, a tattoo artist’s rights, thanks to his medium, are less straight-forward than those of artists working on canvas or with clay. Although a tattoo is an artwork which has been reduced to a material form, the material form to which it has been reduced is on a human body. The sport stars appearing in the NBA 2K game series are human beings who, tattoo artists are well-aware, will be photographed, make public appearances and quite possibly wish to exploit their own likeness, being celebrities, for financial gain. Legally, there must be a fairly broad implied licence given by the tattoo artist to the person being tattooed to make use of the tattoo in his or her everyday life, but the argument will turn on how broad that licence might be.

Of course, the difficulty for Take-Two Interactive is that it is not making use of, for example, photographs of the players, which would be “real life” depictions of them, but rather artistic representations of them as the video game versions of them appear in the games. While Take-Two argues that its use constitutes “fair use”, the question is whether it is strictly necessary for it to have included the players’ body art in its depictions, or “avatars”, of them, and whether depictions of that nature would be covered by the implied licence mentioned above. Solid Oak Sketches argues that the answer is a clear no. If the appearance of the tattoos on the players in the game is merely incidental and of minimal focus and importance, this begs the question why the tattoos have been reproduced in the game at all. The depictions being used by Take-Two have been created by it and are not images of the basketball players and their actual skin, as one might find on the cover of a magazine, for example. It is questionable whether the “fair use” defence can successfully be invoked in Take-Two’s circumstances.

Indeed, the US District Court, in 2016, disagreed with Take-Two’s arguments that its use is fair, or that it is de minimis and its motion to dismiss the matter was rejected. One relevant consideration was the fact that, as a medium, unlike films, video games allow viewers to view images in different ways, and for as long as they like. The depiction is not fleeting or momentary.

Given the increasing popularity of tattoos in our popular culture, and quite notably with sport stars, it is recommended that public figures seek assignment of the copyright in their tattoos from their tattoo artists. The National Football League (NFL) in the United States has already been making similar recommendations to its players to avoid them getting into hot water over the depiction and commercial exploitation of their tattoos and our local sports stars in South Africa would be well advised to follow suit.

Acquiring the rights in their tattoos will prevent future claims from the tattoo artists for royalties or other compensation where public figures might wish to exploit their own image, which will naturally include their tattoos, for financial gain (for example, in advertisements, film or television). It will also allow public figures to restrain third parties, on the basis of copyright infringement, from making use of depictions of their tattoos to suggest a relationship between themselves and the public figure when, in fact, none exists. The value in the names and likenesses of celebrities is undeniable and the popularity of celebrity “endorsement deals” and sponsorships is a testament to that. A person who is in the public eye would not want to be limited in any way from exploiting his or her own image and celebrity status.

It is not inconceivable that a person’s tattoo might become so recognisable that third parties might wish to use it to call that person to mind and perhaps suggest an endorsement by that person. A good example of this is the dispute that arose around the film, The Hangover Part II, where one of the characters woke up, with shock, horror and hilarious results, to find Mike Tyson’s well-known face tattoo inked onto the side of his face. Mr Tyson’s tattoo artist took legal action against Warner Brothers for using the tattoo without authority and, although the case settled and the judge did not need to render a decision, the tattoo artist may well have succeeded in court. After all, the artist’s design did not appear on Mr Tyson’s face which, under the implied licence discussed above, would surely be allowable in a film featuring Mr Tyson, but was copied and reproduced on the face of another with the reference to the original tattoo being clear.

As the popularity of “getting inked” continues to mark the prevailing popular culture, legal issues around that ink, particularly intellectual property concerns, will become more prominent.

The matter between Solid Oak Sketches and Take-Two Interactive is one of the few body art disputes that has not, to date, been settled out of court and it will be interesting to see how this matter progresses.

By Nicole Smalberger | Senior Associate

COPYRIGHT IN TATTOOS | A PRICKLY LEGAL QUESTION

Would it ever occur to you that a third party might be able to claim rights in your skin? In the case of art that has been inked into your skin, namely tattoo art, that may well be the case.

A tattoo is an artistic work. If it is original and reduced to a material form (which it very arguably is when it is inked into your skin), copyright subsists. In the case of artistic works, it is the artist or creator of the work who owns the copyright, namely the tattoo artist and not the person on whom the tattoo appears, irrespective of the fact that the latter has paid for his/her tattoo. In short, when you pay your tattoo artist, you pay for the tattoo, not the copyright subsisting in it.

This issue has come up for legal consideration in the United States, more recently in a matter involving Solid Oak Sketches and video game maker Take-Two Interactive. The latter is involved in the creation of the popular “NBA 2K” basketball video game series and Solid Oak Sketches has alleged that it owns the right to exploit the copyright in the tattoos appearing on a number of players in the games.

In a rather astute business move, Solid Oak Sketches purchased the exclusive rights to license certain basketball players’ tattoos from the original tattoo artists. Solid Oaks Sketches has therefore made the argument that, by reproducing detailed depictions of the body art appearing on some of these players in its games, Take-Two Interactive has infringed its copyright. In its defence, Take-Two has argued that it is only depicting the players as they appear in real life, that the focus of the game is not on the players’ tattoos, that the issue is de minimis and, in any event, that a finding in favour of Solid Oaks would result in public figures having to “seek its permission every time they appear in public, film, or photographs”, which would be impractical and untenable.

On face value, copyright infringement has indeed occurred. An original artistic work, which a tattoo undoubtedly can be, has been reproduced without the artist’s authority by a third party in the course of trade and for financial gain. At the heart of copyright law is the idea that creators, artists, should be compensated for their creativity, and there is no reason why the creativity of a tattoo artist should be discounted.

However, a tattoo artist’s rights, thanks to his medium, are less straight-forward than those of artists working on canvas or with clay. Although a tattoo is an artwork which has been reduced to a material form, the material form to which it has been reduced is on a human body. The sport stars appearing in the NBA 2K game series are human beings who, tattoo artists are well-aware, will be photographed, make public appearances and quite possibly wish to exploit their own likeness, being celebrities, for financial gain. Legally, there must be a fairly broad implied licence given by the tattoo artist to the person being tattooed to make use of the tattoo in his or her everyday life, but the argument will turn on how broad that licence might be.

Of course, the difficulty for Take-Two Interactive is that it is not making use of, for example, photographs of the players, which would be “real life” depictions of them, but rather artistic representations of them as the video game versions of them appear in the games. While Take-Two argues that its use constitutes “fair use”, the question is whether it is strictly necessary for it to have included the players’ body art in its depictions, or “avatars”, of them, and whether depictions of that nature would be covered by the implied licence mentioned above. Solid Oak Sketches argues that the answer is a clear no. If the appearance of the tattoos on the players in the game is merely incidental and of minimal focus and importance, this begs the question why the tattoos have been reproduced in the game at all. The depictions being used by Take-Two have been created by it and are not images of the basketball players and their actual skin, as one might find on the cover of a magazine, for example. It is questionable whether the “fair use” defence can successfully be invoked in Take-Two’s circumstances.

Indeed, the US District Court, in 2016, disagreed with Take-Two’s arguments that its use is fair, or that it is de minimis and its motion to dismiss the matter was rejected. One relevant consideration was the fact that, as a medium, unlike films, video games allow viewers to view images in different ways, and for as long as they like. The depiction is not fleeting or momentary.

Given the increasing popularity of tattoos in our popular culture, and quite notably with sport stars, it is recommended that public figures seek assignment of the copyright in their tattoos from their tattoo artists. The National Football League (NFL) in the United States has already been making similar recommendations to its players to avoid them getting into hot water over the depiction and commercial exploitation of their tattoos and our local sports stars in South Africa would be well advised to follow suit.

Acquiring the rights in their tattoos will prevent future claims from the tattoo artists for royalties or other compensation where public figures might wish to exploit their own image, which will naturally include their tattoos, for financial gain (for example, in advertisements, film or television). It will also allow public figures to restrain third parties, on the basis of copyright infringement, from making use of depictions of their tattoos to suggest a relationship between themselves and the public figure when, in fact, none exists. The value in the names and likenesses of celebrities is undeniable and the popularity of celebrity “endorsement deals” and sponsorships is a testament to that. A person who is in the public eye would not want to be limited in any way from exploiting his or her own image and celebrity status.

It is not inconceivable that a person’s tattoo might become so recognisable that third parties might wish to use it to call that person to mind and perhaps suggest an endorsement by that person. A good example of this is the dispute that arose around the film, The Hangover Part II, where one of the characters woke up, with shock, horror and hilarious results, to find Mike Tyson’s well-known face tattoo inked onto the side of his face. Mr Tyson’s tattoo artist took legal action against Warner Brothers for using the tattoo without authority and, although the case settled and the judge did not need to render a decision, the tattoo artist may well have succeeded in court. After all, the artist’s design did not appear on Mr Tyson’s face which, under the implied licence discussed above, would surely be allowable in a film featuring Mr Tyson, but was copied and reproduced on the face of another with the reference to the original tattoo being clear.

As the popularity of “getting inked” continues to mark the prevailing popular culture, legal issues around that ink, particularly intellectual property concerns, will become more prominent.

The matter between Solid Oak Sketches and Take-Two Interactive is one of the few body art disputes that has not, to date, been settled out of court and it will be interesting to see how this matter progresses.

By Nicole Smalberger | Senior Associate