Suggestions for the Protection of Star Athletes and Other Famous Persons against Unauthorised Celebrity Merchandising in South African Law

• Jurisdiction: South Africa
• Date: 16 August 2019
• Author: Andre M Louw
• Pages: 272-301
• Published date: 16 August 2019

Suggestions for the Protection of Star Athletes

and Other Famous Persons against Unauthorised

Celebrity Merchandising in South African Law

ANDRE M LOUW*

University of KwaZulu-Natal, Durban

1 Introduction

While the South African public seems to be ‘sports-mad’ and the FIFA

World Cup 2010 continues to dominate headlines and grab popular attention,

it may be time to revisit an issue in our law that has largely been neglected

thus far. South African law has not had much occasion to grapple with the

issue of unauthorized celebrity merchandising, a practice that has increasingly

occupied the minds of judges and writers in other jurisdictions in recent years.

In fact, the term ‘celebrity merchandising’ seems not to be recognized under

South African law as having any special meaning or validity.

1

I will argue that

this is an oversight and a mistake, and that our law needs to come to grips

with a commercial reality that will, sooner or later, enter the mainstream of

South Africa’s burgeoning entertainment and professional sports industries.

With the 2010 event approaching, it has been predicted that trade-mark

attorneys will probably be inundated with applications from teams, their

management and sponsors to obtain trade-mark registrations in order to thwart

possible infringement surrounding the event by opportunists in the sports

merchandising market. I believe that players should similarly have access to a

real and effective remedy in cases of unlicensed celebrity merchandising. The

time is ripe for legal reform in this regard, and I will argue here for the

recognition of a basis of protection that should be available to those

individuals, including the famous sports star, who are confronted with the

* BA LLB LLM (Stellenbosch). Lecturer, Faculty of Law, University of KwaZulu-Natal, Howard

College, Durban. I should like to thank Andre Oosthuizen SC, member of the Cape Bar and of the

Sports Law Association of South Africa, andTanya Woker, professor of intellectual property law in the

University of KwaZulu-Natal, for their helpful comments on an earlier draft of this paper.

1

Compare the judgment of the Supreme Court of Appeal in South African Football Association v

Stanton Woodrush(Pty) Ltd t/a Stan Smidt & Sons & Another 2003 (3) SA 313 (SCA) at 321E-G, where

Harms JA noted that the related or over-arching term for such practices, ‘character merchandising’, does

not add anything to South African law as the protections provided by the law are based in existing

protection under copyright, trade marks and unlawful competition:

‘Character merchandising has become somewhat of a catchphrase, but as so often is the case,

catchphrases tend to obscure rather than enlighten. The concept arose in the licensing of famous

comic book characters, such as Mickey Mouse. But licensing the use of such characters was

nothing more than a copyright licence. Next to develop was personality merchandising, the

licensing of the names of famous persons such as sportsmen, which in our law amounts to the

commercialisation of personality rights. Last, there is the merchandising of well-known trade

marks or of other reputations protectable by a passing-off action. This means that ‘‘character’’

merchandising rights are not new rights. One is simply dealing with the application of existing

principles to new commercial realities.’

In light of what follows, it is my submission that this approach is wrong and unduly dismissive of the

practical commercial realities and the needs of the victims of the conduct under discussion.

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(2007) 19 SA Merc LJ 272

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practice of unauthorized exploitation of their fame and of aspects of their

persona for financia gain.

My discussion will focus on the professional sports industry, and more

specificall on the issue of athletes’ image rights, which have been considered

by commentators elsewhere.

2

However, the sentiments and arguments

expressed hold true also for famous personalities engaged in other activities,

for instance the rock or kwaito star and the fil or television actor.

As one is dealing here with an issue that is closely related to the law of

intellectual property, I will look briefl firs at the role of intellectual property

in this context, namely the continuing boom market of commercialization and

commodificatio of the professional sports industry, with a special focus on

sports broadcasting as the biggest driving force in this regard. The discussion

will then focus more specificall on athletes’ image rights, following which I

will make a suggestion for recognition of a proprietary right to aspects of the

celebrity’s persona. I will argue that such an approach would avoid the current

situation whereby these cases are forced into the straitjacket of other, existing,

bases for protection, which I will contend, fall short of providing the real

protection required.

2 The Role of Intellectual Property Rights in the Modern Global

Sports Market

The protection of intellectual property has been inextricably interwoven

with the development of professional sport as a global entertainment industry.

Probably the single biggest driving force behind the growth of a global sports

industry was the development of television as a vehicle to bring matches and

events to the masses. The sports broadcasting and advertising industries have

poured vast amounts of money into sport in different parts of the world, and

this phenomenon characterized the development of the industry everywhere

from the middle of the twentieth century. From humble beginnings (such as

the annual fee of USD2500 the Mutual Broadcasting System paid to the

National Football League in America in 1939 for the right to show its

championship and broadcast commercials),

3

this industry simply exploded to

the point of the astronomical amounts that make up today’s sports

broadcasting market.

4

A couple of examples from football and cricket: In

English football, the entry of BSkyB in 1992 into the market of broadcasting

2

For an exposition of the treatment of athletes’ image rights in certain European jurisdictions and in

the USA, see generally I Blackshaw & R Siekmann (eds) Sports Image Rights in Europe (2005).

3

Compare this figur to the NFL’s eight-year national television contract signed in 1998 worth

$17.6b: see John Wolohan ‘United States ofAmerica’ in: Blackshaw & Siekmann op cit note 2 at 347.

4

The American Super Bowl XXXVI (2002) was watched by an estimated total of 131,7m viewers,

nearly half of the American population. The ten most watched shows in television history are Super

Bowls (see ). David G McComb Sports in World History (2004) at 109

notes that the current cost for an advertisement aired during the American football Super Bowl is

$75 000 per second! The advertising expenditure of one US company (Budweiser, the top US advertiser

during the 2002 Super Bowl), was $22m for 300 seconds of advertising exposure, according to Nielsen

Monitor-Plus, as quoted on .

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