As former president and father of the nation Nelson Mandela recuperates at home after spending almost three months in hospital due to a critical lung infection, South Africans and many others around the globe keep him in their prayers.
In the meantime, businesses including book shops and curio stores are experiencing increased sales of merchandise bearing the anti-apartheid hero’s name, image or quotations from his well-known books.
Other opportunistic elements are also looking to cash in on the struggle icon’s ailing health. Indeed, you are unlikely to pass an intersection without being offered to purchase a T-shirt, clock or picture frame bearing Nelson Mandela’s image.
What many may fail to realise is that intellectual property rights reside in Nelson Mandela’s image, name and quotations.
The South African trademarks register reveals that the Nelson Mandela Foundation (“NMF”) is the proprietor of a number of trademark registrations, including “Nelson Mandela”, “46664”, “Nelson Mandela International Day” and images of Nelson Mandela. These registrations cover, among other things, jewellery, clothing, and books.
Other proprietors of the brand include the Nelson Mandela Children’s Hospital Trust, Nelson Mandela Metropolitan University and the Nelson Mandela Children’s Fund. The NMF strongly discourages the use of Nelson Mandela’s name and his legacy for commercial exploitation, and has requested his official charities to also abstain from doing so.
There is no denying that the Nelson Mandela brand is one of the most desirable and Madiba’s recent health problems have generated a substantial increase in interest and sales of Mandela merchandise.
While many businesses are offering the merchandise for sale under licence or with the consent of the bona fide proprietors, many traders seek to commercialise the legacy built by Mandela for personal gain by, for example, printing shirts, mugs, key rings and posters bearing his image or one of his famous quotes.
Traders should be warned that use of any one of the registered Mandela-related trademarks, without the consent of the NMF, or the relevant proprietors mentioned above, may amount to trademark infringement in terms of section 34 of the Trade Marks Act.
In addition to trademark infringement, the proprietor of the brand may take action against the unauthorised use of any of the Mandela-related trademarks or images on the basis of the common law delict of passing off. In order to succeed on this basis it will be necessary to prove:
- an existing goodwill or reputation in the name, mark or get-up in question, so much so that the name mark or get-up is associated in the minds of the public with the plaintiff;
- the defendant has made a representation, whether direct or indirect, which is likely to confuse or deceive the public; and
- the deception has caused or is likely to cause damage to the plaintiff’s goodwill.
It is worth noting that the famous singer Rihanna was recently successful in her case of passing-off against the well-known clothing retail giant Topshop which had, without her authorisation, printed and sold T-shirts bearing her image.
If an image of Nelson Mandela was portrayed on a T-shirt and sold in South Africa, without the consent of the NMF or any other relevant authority, there is a possibility that our courts may reach the same decision.
In terms of the Copyright Act, the unauthorised reproduction of a “work” would amount to copyright infringement. An image or photograph of Nelson Mandela, quotations or extracts from his books or speeches are classified as “works” in terms of the Copyright Act and would, therefore, qualify for protection in terms of the Copyright Act. The Supreme Court of Appeal has held that there are two elements involved in proving unauthorised reproduction:
- a sufficient degree of objective similarity between the original work and the alleged infringement; and
- a sufficient causal connection between the plaintiff’s work and the defendant’s work; in other words the plaintiff’s work must be the work from which the allegedly infringing work was derived.
Prior to embarking on new business ventures involving the Nelson Mandela name, image or any other works it would be prudent for traders to recognise that various forms of intellectual property reside within the Nelson Mandela brand. While the struggle hero has sacrificed his life for the freedom of South Africans, his name, image and legacy are not free for all to use or exploit.
* Sajidha Gamieldien is a partner at law firm Adams & Adams specialising in trademark prosecution.