Nollywood – Africa’s biggest motion picture industry – might be ready for its “first big” right of publicity lawsuit. Nigeria’s foremost comedian, Ayo Makun, popularly known as “AY” (he goes by “aycomedian” on his Instagram page) posted on Instagram a disclaimer about a print ad for a movie entitled “The Number One Fan” which the film distributor is now marketing as “Inspector AY” with AY’s image boldly in the center of the print ad, with still photos from the scene of the movie. AY claims in his disclaimer that this came to him as a surprise as he played a supporting role in the movie and never agreed to the use of his brand in marketing the movie. He plans to use “all legal instruments available within the country’s – Nigeria’s – copyright laws (sic) to correct this illegality…”
Obviously, this is not a copyright issue. Copyright law protects the expression of an idea that is original and fixed in a tangible form. AY may likely claim copyright in his performance; however, copyright in the entire movie including AY’s performance is held by the producer of the movie since AY was employed by the producer to provide his on-screen acting services. See Section 9 (2) of Nigeria Copyright Act. If the exact photograph is owned by AY or his photographer and the distributor used it without authorization, then there is a case for copyright infringement with respect to the use of that particular photograph. In the US movie industry, producers will often require an agreement with actors and other talent making their services “work for hire” and assigning any copyright therein to the producer.
There are at least two grounds upon which AY may be able to maintain an action against the distributor; unfortunately these grounds are not well-developed in Nigeria. The big issue here is “right of publicity”. Right of publicity is derived from the common law tort of invasion of privacy codified in some states in the United States that protects a person (usually celebrities or public figures) against the unauthorized exploitation of his/her image, name, or likeness. Variants of this concept can be found in Section 3344 of the California Civil Code and Sections 50 and 51 of Civil Rights Law of New York (where the concept is referred to as “right of privacy”). Right of privacy/publicity has four distinctive causes of action which include: (i) misappropriation of a person’s identity – i.e. name, likeness, or image; (ii) intrusion upon a person’s seclusion; (iii) public disclosure of private facts; and (iv) attributing a belief which is untrue to someone – i.e. false light. The other issue, which is similar to the misappropriation of a person’s identity, will be false advertising based on misattribution of credit. This is a statutory concept that can be found in various state laws in the United States and in the Trademark Act. See for example Sections 17200 and 17500 of the California Business and Professions Code and Section 42(a)(1)(A) of the US Trademark Act.
The US Trademark Act provides that “any person who… uses… any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities of another person… shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.”
Although the likelihood that the laws in the US and their judicial interpretations will apply – in view of the fact that there are no strikingly similar laws in Nigeria – appears slim, however having an understanding of the developments in the US may help as Nigeria’s entertainment industry develops.
The Nigerian Trademark Act expressly frowns at infringement or unauthorized use of another person’s brand and requires that, in maintaining an action for infringement, such brand must be a registered trademark. Nonetheless by virtue of Section 3 of the Act, such owner of an unregistered brand can sue the infringer for passing off – another concept in tort law which is well developed in Nigeria – his goods (and by extension services) as the goods or services of the original brand owner. See Omnia Nigeria Limited v. Dyktrade Limited S.C. 176/2003; judgment delivered on July 13, 2007. While there are laws governing advertising practices in Nigeria including the requirement for submission of advertisements for vetting by the Advertising Standards Panel, there are no guidelines in these laws or codes on ensuring that there is no passing off, false advertising or misappropriation of a person’s identity.
The concept of attributing credit to performers in a movie is a known practice all over the world but more particularly made famous by Hollywood. In fact, a lot of attorney billable hours go into negotiating the credit provision in a talent agreement, covering whether it will be above the main title, on a single card, and the size and position of such credit. Where an actor is “miscredited” or not credited, a lot of billable hours go into fighting this in a court of law. The rationale for this is the understanding of the inherent commercial value in the name, image, and likeness of these public figures and the need to guard against unjust enrichment by an unauthorized person. In order to avoid any confusion like in AY’s case, producers are advised to have a written agreement with talent on attributing credit and using the talent’s “image, name, likeness and approved bio”.
How do the above apply to AY’s case? In the event that there is an agreement between AY and the producer regarding the use of his image, name and likeness, such agreement will govern and the court will likely rely on the agreement in deciding the case. Assuming there was no agreement, the court will likely refer to the custom and practice within the entertainment industry, particularly in Nigeria and by extension, Hollywood. The distributor is likely to argue that since AY performed in the movie, and the distributor acted in good faith when it attributed credit to AY and displayed his picture on the print ad. On the other hand, AY may be able to argue that the attribution of credit and use of image were done in bad faith on the ground that (i) he performed in a supporting role and he never consented to the use of his name or brand to market the movie; and (ii) the use of his name as the title of the movie in conjunction with his image (which constitute his brand as an entertainment professional) misrepresented to the consumers that he participated in a principal role or that the film was produced by or co-produced with him, thus creating confusion as to the origin of the movie. A glance at his Instagram page is enough evidence. AY will likely not succeed on a trademark infringement claim unless he can show that “AY” is a registered trademark; however, he will likely succeed on the claim of passing off upon a holistic view of the use of his image boldly in the center of the print ad in conjunction with his name in the title, now being marketed for the movie.
I will close with a disclaimer that while the above represents my hypothetical view in case AY decides to pursue a legal action, the court will determine the best argument. Parties may also choose to settle out of court. Whichever way it goes, this action if pursued is likely to expand Nigeria’s jurisprudence in relation to the entertainment industry as its practices continue to evolve.
Segun Aluko, Esq.