Oluwadamilola Banire v NTA-STAR TV Network Ltd: A Disturbing Case of "See Finish"
#Banire #NTASTARTVNETWORK #imagerights #righttoprivacy #tortofpassingoff #Andywarhol #photographs #CopyrightInfringement #Fairuse #licensing agreement #LynnGoldsmith #Nigerian1999Constitution
Dear #IPFriend,
Welcome to the weekly edition of the #IPSERIES newsletter. My name is Rita Anwiri Chindah, a legal advisor on intellectual property, information technology & arbitration, and I’m glad to be back with the fifth edition. If you are yet to read the previous edition here are the links
I provide weekly updates on trending global issues with an African bias and with forward-looking opportunities.
Are there stories you’re keen to have me dig into? Share a lead with me: ipseriesinfo@gmail.com and follow me on Twitter at @esmeralo99
Back story
When a senior colleague and mentor sent me a link to the Banire v NTA-STAR case I knew I had to do a commentary on it while doing a comparison with the United State case between Lynn Goldsmith and The Andy Warhol Foundation 2021 ruling. I found these two cases focused on an industry that thrives on ownership and acknowledgment. One interesting thing is the fact that in the Nigerian case I was hoping that it would be used to set a precedent for an area that focuses on the commercialization and exploitation of image right i.e. the use of a person’s image whether it is a public figure or not, the interplay of copyright and human right whereas the Andy Warhol case dealt on fair use, expired license agreement and the unauthorized use of an image/photo.
To make this episode more interesting we would have to take note of this notable intellectual property date; 19August a day set aside to celebrate the #WorldPhotographyDay and our case study for today are about photographs.
Meet Oluwadamilola Banire v NTA STAR TV Network Ltd
In 2014, Banire commenced an action in court against NTA-STAR TV for using her images/photographs on its billboard along the streets of Akure and Abeokuta for promotional purposes without her express consent, permission and authorization (CPA). She was asking for ₦50 million as cost for damages. Here is the twist, the picture was taken by Banire’s former employer Virtual Media Network Ltd who had licensed the picture to NTA-STAR TV through a Channel License Agreement (shocker: Banire was not aware of this arrangement or the purpose for the use of the picture).
Enters Lynn Goldsmith v the Andy Warhol Foundation
In 1981, Lynn Goldsmith a celebrity photographer while on assignment for Newsweek took pictures of Late Prince but the pictures were never published. Then in 1984, Vanity Fair licensed one of the pictures of late Prince from Goldsmith’s agency to be used for artistic use of an illustration which was commissioned to Andy Warhol as an artist reference. In 2016, Vanity Fair republished the artwork illustration in commemoration of the posthumous tribute to Late Prince but without the consent of Lynn, crediting her as the photographer or even paying for the use of the picture.
Lynn Goldsmith filed a suit at the New York’s Federal Court against The Andy Warhol Foundation for copyright infringement and in the course of the trial she found out they had created fifteen (15) silkscreen and pencil artwork called “Prince Series” and one of them appeared on a magazine cover published by Condé Nast, who had licensed it from the Warhol Foundation of which they responded stating that they had not violated Lynn’s copyright. The court ruled in favour of The Andy Warhol Foundation stating that the act was fair use.
Lynn appealed to the Second Circuit Court of Appeal and in March 2021 the court reversed the earlier decision of the New York’s Federal Court. The court ruled in favour of Lynn Goldsmith that the Andy Warhol’s use of the Prince’s picture was not fair use or transformative by relying on the fair use test as applied to works of visual arts, and further stated the silkscreen and pencil artwork called “Prince Series” was substantially similar to that of Lynn Goldsmith. Furthermore, the court held that even though the “Warhol work was created in his signature aesthetic style, it was still plainly an adaptation of the Goldsmith photograph”.
Huge win, right?
The Interplay of Copyright and Human Right
I guess you are wondering what the interplay is; give me a minute and I will tell you in 1, 2, 3.
Photographs as a type of intellectual property work are eligible for copyright protection and is considered to be an artistic work as listed in Section 1 of the Nigerian Copyright Act, also defined in the interpretation Section (51) as works that includes “photographs not comprised in a cinematographic film thereby granting the owner exclusive right in the economic and moral right when it comes to the exploitation and commercialization of the work.
Copyright is the only type of intellectual property that enjoys automatic protection from the inception/moment the work in question is created as long as it is in a fixed medium/tangible form. Does it mean that the mere fact someone was being featured in a photo, grants the person who took it control over how the picture should be used even without the featured persons' permission? The answer is YES because of Section 10 Nigerian Copyright Act which provides in Subsection 1 that the person who creates the work shall be the initial author. An author in the case of a photographic work was defined as the person who took the photograph in Section 51 Subsection (1).
However, in the case of Banire v NTA-STAR TV, it turns out she was an employee who had her picture taken by her employer and under Section 10 Nigerian Copyright Act, it provides in Subsection 1 that the person who creates the work shall be the initial author which means the picture belongs to the employer and not Banire . In an instance where someone was hired or is an employee to take the picture, the work will belong to the hirer or employer. Now I am not sure Banire was initially hired for the sole purpose of having her picture taken, but then the purpose for which the picture was to be used was not disclosed to her and this is where the human right aspect plays out. As a citizen of the Federal Republic of Nigeria she is guaranteed of her right to privacy in Section 37 of the 1999 Constitution.
I cannot begin to imagine what was going through her mind seeing her image being displayed in Akure and Abeokuta without her knowledge and consent; but I wouldn’t want to digress plus she was not aware as to the extent of the use for which the picture was taken.
The Four Factor Test for Fair Use Used in the Goldsmith v Warhol’s case
When you think of fair use; think non-commercial purpose and can be a defense for using a work license free. It is the thin line between using a copyrighted work legally and using a work without consent, permission and authorization (CPA).In determining whether the use a work in any particular case is a fair use the following factors must be considered by the court to arrive at a decision and they include:
1. The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes: clearly the republication to commemorate Late Prince death was for commercial purpose.
2. On the nature of the copyrighted work; the court agreed that “Goldsmith’s photograph was original, creative and unpublished, whereas Warhol’s picture retained certain elements of Goldsmith’s people without modifying it to be new.
3. The amount and substantiality of the portion used in relation to the copyrighted work as a whole: a closer look at the picture below will show that other than the contrast and effect the picture taken by Goldsmith and the commissioned work of the Andy Warhol Foundation are similar both in substance and the amount used in the silkscreen and pencil artwork called “Prince Series”.
4. The effect of the use upon the potential market for or value of the copyrighted work: by denying Goldsmith the ability to earn and collect license fee for her photograph while also in competition to license the said picture to others because the picture is about the Late Prince. “Goldsmith learned of Warhol’s series after Prince died in 2016 and one of them appeared on a magazine cover published by Condé Nast, which had licensed it from the Warhol Foundation” instead of Goldsmith who is the original photographer and owner of the picture.
Principle of Consent, Permission and Authorization always wins
Consent, Permission and Authorization (CPA) is something people sometimes consider to be trivial but ends up causing a lot of problem just because due diligence wasn’t taken seriously. In the Andy Warhol case, an initial Licensing Agreement was signed between Vanity Fair and Andy Warhol in 1984. Fast forward to 2016, The Andy Warhol Foundation was still relying on the contract but still went ahead to reproduce fifteen (15) more silkscreen and pencil artwork without the consent of the photographer or even acknowledging the original creator & photographer who took the first and initial picture and were relying on the fair use principle.
In the Nigeria case, the picture belonged to Banire’s employer Virtual Media Network Ltd owners of Orisun TV, Nigezie and Prime TV who took her picture and submitted it to NTA–Star Network Ltd through a Channel Licensing Agreement to which she was not a party. The law states that only parties to an agreement can be bound by it and in this case Banire cannot be bound by the terms of the contract even though she was the one featured in the photo.
I am of the view that the court should have approached this case using the case of Mrs. Amuda Adeleke v Alhaji Atiku Abubakar and Dr. Bukola Saraki as reference and precedence. In April 2020, the Federal High Court in Lagos awarded ₦5 million to Mrs. Amuda because her picture was taken and used on campaign billboards in Lagos, Abuja (similar to Banire’s case); her friends saw it and said she looked like a woman who was poverty stricken, had lost all hope and looked like she was going to commit suicide which she also stated made her feel embarrassed.
Matter arising
I will analyze the issues raised from the two cases discussed so far in this newsletter.
A. On image right: this is when the name, image, likeness, photograph, signature, nickname of an individual is misappropriated and exploited commercially with the aim to mislead the public through passing off or creating and leaving an impression in the minds of the public, users and potential consumers. You can also listen to my podcast where I talked extensively on image right. Lately there has been a growing trend of paparazzi’s suing celebrities such as Emily Ratajkowski, Jennifer Lopez, Justin Bieber, Gigi Hadid etc. for reposting and sharing pictures of them on Instagram taken by a photographer.
Three legal implications as a result of image right infringement to take note of: violation of right to privacy as enshrined in Section 37 of the 1999 Constitution of Nigeria; copyright infringement and right of publicity.
B. The tort of passing off in intellectual property: the main goal for a tort of passing off is to mislead the consumers into thinking that the individual whose image is displayed gave consent for their image to be used or that the person has an affiliation with the brand in question. Can that be said to be the case here? For instance, in the famous case between Robyn Rihanna Fenty v Arcadia Group Brands Ltd (Topshop) a high street fashion retailer in United Kingdom for damages of £3.3 million.
The image that was used on the t-shirt without her consent “was taken by an independent photographer during the video shoot for a single from her 2011 “Talk That Talk” album thereby misleading the consumers to think she had endorsed the act, licensed her image to Topshop or that she had endorsed the act of them using her image which was a misrepresentation as to the source of the goods and would impacts a consumers decision to buy the t-shirt.
In a case of tort of passing off you must show that you have met the three (3) elements need to win:
· “That you have good will and reputation
· That the conduct of the alleged infringer constituted a misrepresentation and
· That the misrepresentation caused damage to your goodwill”
Did Banire meet this entire requirement needed to succeed in a claim for the tort of passing off? Anyways, at the end of the day Rihanna won and the court ordered that Topshop should pay for her legal fees and granted an injunction restraining Topshop from using her image in the future.
C. License agreement: this agreement could be exclusive to one person who is the licensee in this case, or the licensor could go into a non-exclusive arrangement to license his work for a term of duration for a fee called royalty. Licensing is one of the ways intellectual property owners can commercialize and exploit their work which is exclusive to the owner of the work. In Warhol’s case, it was failure to obtain another license that led to Goldsmith suing them for copyright infringement, while in Banire’s case; it was Virtual Media Network Ltd who entered into a “Channel Licensing Agreement” with NTA –Star Network Ltd which she was not a party to. In the Rihanna v Topshop case cited earlier, turns out Topshop had obtained a license from the photographer but not from Rihanna whose image was to be used on a merchandise owned by Topshop. (Tricky right)
Take note, licenses are not in perpetuity but are subject to renewal for a fee.
D. Copyright infringement: this is when someone uses a copyrighted work without the consent, permission or authorization of the owner; passes off an author’s work as theirs with the aim to make profit and deprive the real author of his benefits whether economic or moral right.
E. Data Protection, right to privacy and intellectual property: in an era that thrives on data, it is imperative for data collectors to inform the individuals whose data such as name, image and other sensitive information are being collected for use of the information. On the issue on right to privacy, according to a report by the United Nations (UN) human rights are rights inherent to all human beings, regardless of race, sex, nationality, ethnicity, language, religion, or any other status. Some examples of human right includes: right to privacy, right to health, education, life, religion, freedom of expression and thoughts etc. In the case of Naomi Campbell v The Mirror Group Newspaper Ltd they had made a publication with the title “Naomi: I am a drug addict” with details of her Narcotics Anonymous (NA) meeting which the court held that right to privacy must be respected in line with Article 8 of the European Convention on Human Rights which was incorporated into the United Kingdom Human Rights Act 1998. From the data protection angle, the person whose image was taken, must give consent over the use of the image and the purpose for the use must be explained and legitimate
F. When is a transformative use an infringing derivative work versus fair use?
What are the limitations and exceptions over the use of a copyrighted work?
i. There has to be a balance over the intellectual property owner and the consumer who wish to use the work in question.
ii. Need to obtain consent, permission or authorization if profit is expected to be made.
iii. Can be used under the ambit of fair use in the United State in Section107 of the US Copyright Act which sheds light on the limitations to copyright owners, and fair dealing in Nigeria found in the second schedule of the Copyright Act such as for personal use.
Rights that exist in a photograph
· Copyright for the initial author who expresses the work in a fixed and tangible medium.
· Photographs are considered to be artistic work.
· For ease of documentation, please deposit and register a copy of your work with the Nigerian Copyright Commission (NCC).
· Watermark your works to prevent reproduction in this digital era.
· If the photograph isn’t yours, always seek consent, trace the chain of title and do your due diligence.
· As the owner of a copyrighted work, you are entitled to the exclusive right that comes with the work; derive legal backing and protection to be recognized as the owner of the picture.
Rights of a Photographer
· Rights to be recognized as the author especially where there is no contract
· The right to commercially exploit the exclusive right as an intellectual property owner to control how the images are used, reproduced, distributed.
· As a photographer if you are going to use a picture of someone for commercial purpose it’s best to inform the person and get a release consent form or at best, hire the person as your model to help with the expression of the theme of the photo or collaborate and pay for their image
Recommendation
1. There’s a continuous need to educate copyright owners on basics such as ownership, authorship, rights of a copyright owner and the interplay of intellectual property in an artistic work and other sectors.
2. The concept of consent, permission and authorization should be taken seriously.
3. Intellectual property is territorial in nature, copyright protection is automatic once it is fixed and in a tangible form.
4. In the event of dispute, parties should opt to settle by either opting for litigation or going to court to set precedence that should deter future occurrence or opt to settle out of court by exploring alternative dispute resolution mechanism such as mediation, negotiation or arbitration if it is an international commercial dispute.
If you had a good read of today’s email, please share with your friends and contact groups.
To find out more about the issues raised in this case including intellectual property infringement, fair use, license, image right, right to privacy, influencers, intellectual property protection for photographs, artistic work, contract, intellectual property and data protection, copyright, human right, term of duration, then check out the twitter version podcast version on Anchor, Spotify, Google and Apple podcast, Breaker. You can also contact me by sending an email to ipseriesinfo@gmail.com
Nice and interesting read. Weldone ma'am.
Very insightful