Authorship of photographs and ownership of image rights in Nigeria: Banire v NTA-Star TV Network Ltd

The attention of this SpecialKat was recently drawn to the decision of the Nigerian Court of Appeal in Banire v NTA-Star TV Network Ltd regarding the question of authorship and ownership of copyright in photographs used for advertising purposes and the issue of image rights in Nigeria.

The decision also provides guidance on factors that must be established to succeed in a claim for passing off relating to image rights in Nigeria.

Background

The Appellant was the plaintiff at the (Federal) High Court where she had sought a declaration that the Respondent/Defendant’s use of her photographs on its billboards without her express authorization amounts to an infringement of her “image/intellectual property rights”. The Appellant also sought the sum of 50 Million Naira (approximately $121,000)  as “compensation for the infringement of her image rights”.

The Federal High Court dismissed the suit holding that the Respondent/Defendant’s use of the Appellant/Plaintiff’s image was not a violation of her right under the Copyright Act or the tort of passing off. Noting the Respondent/Defendant’s evidence that the photographs in question were supplied to it by Virtual Media Network Limited (VMNL) in pursuance of a Channel License Agreement, the Federal High court further held that the Appellant/Plaintiff should have joined VMNL as a party to the suit. The Federal High Court also held that the Appellant/Plaintiff did not establish any of the elements necessary to succeed in a claim for passing off in respect of image rights.

An appeal to the Court of Appeal then followed.

The Court of Appeal’s considerations
The Court of Appeal adopted the 2 issues for determination submitted by the Appellant, which related to: appropriate defendant in photography-related copyright infringement cases and image rights cases (i.e. is it the actual user of the photograph under a licence arrangement or the licensor or both); the author of a photograph as an artistic work; whether passing off applies to images/photographs; and what to establish to succeed in a claim for passing off relating to image rights.

Appropriate defendant in photography-related copyright infringement cases

The Appellant requested the Court of Appeal to determine the question of whether the High Court was right in “holding that the Appellant had sued a wrong party and that the Respondent was exonerated from liability for wrongful use of the Appellant’s images because of the Channel License Agreement between the Respondent and VMNL".

First, the Court of Appeal considered that the Channel License Agreement at issue was a defence raised by the Respondent/Defendant at the lower court and, which that court was bound to consider. The Appellant/Plaintiff was seeking a declaratory relief that the Respondent/Defendant’s use of her photographs on its billboards without her express authorization amounts to an infringement of her “image/intellectual property rights". In the Court of Appeal's view, the Appellant therefore needed to succeed on the strength of her case and not on the weakness of the defence. Not joining VMNL as a defendant was fatal to the Appellant’s case as it was admitted that VMNL took the photograph in question.

Consequently, the appropriate defendant in this case was either the person directly involved with/in the taking of the photograph (i.e. VMNL) or both that person and their licensee (i.e. VMNL and the Respondent in the appeal).

The author of a photograph as an artistic work

Then the Court of Appeal considered whether copyright was applicable to the Appellant’s claim regarding the photograph and if yes, whether the High Court was right to hold that VMNL owned copyright in the photograph instead of the Appellant.

In considering this issue, the Court of Appeal relied on the provisions of Section 10(1)(2) and (3) of the Nigerian Copyright Act, 2004. The Court of Appeal considered that VMNL took the photographs in question and that by virtue of Section 10 of the Copyright Act read in conjunction with section 51 of the Copyright Act, copyright vests in VMNL. Section 10(1), (2) and (3) of the Copyright Act provides that:

“(1) Copyright conferred by Sections 2 and 3 of this Act, shall vest initially in the author.
(2) Notwithstanding subsection (6) of Section 11 of this Act where a work-
(a) is commissioned by a person who is not the author’s employer under a contract of service or apprenticeship; or
(b) not having been so commissioned, is made in the course of the author’s employment, the copyright shall belong in the first instance to the author, unless otherwise stipulated in writing under the contract.

(3) Where a literary, artistic or musical work is made by the author in the course of his employment by the proprietor of a newspaper, magazine or similar periodical under a contract of service or apprenticeship as is so made for the purpose of publication in a newspaper, magazine or similar periodical, the said proprietor shall, in the absence of any agreement to the contrary, be the first owner of copyright in the work in so far as the copyright relates to the publication of the work in any newspaper, magazine or similar periodical; or to the reproduction of the work for the purpose of its being so published; but in all other respects, the author shall be the first owner of the copyright in the work.”

Section 51 of the Copyright Act provides that: “author in the case of a photographic work, means the person who took the photograph.”

Can passing off apply to images/photographs?

The Court of Appeal considered that even though passing off applies mainly to goods and services, it could still apply to unauthorized use of images. Noting that there are no specific laws governing image rights in Nigeria, the Court of Appeal referred to the English cases of Irvine Vs. Talksport Ltd and Robyn Rihanna Fenty vs Aracadia Group Brands Ltd (T/A Topshop) & Anor, where the plaintiffs were celebrities suing for passing off for unauthorized use of their images.

The Court of Appeal held that both celebrities and “normal persons” may sue for the tort of passing off as it relates to image rights in Nigeria. However, to succeed in such action, the plaintiff must establish that:

(a) his/her image has acquired sufficient goodwill such as quantifiable goodwill which can be leveraged on in consideration for money;
(b) the third party has misrepresented to the public by using the image and;
(c) this misrepresentation caused or is capable of causing damages such as reduction in the value attached to their goodwill.

The Court of Appeal found that the Appellant/Plaintiff did not satisfy these elements during trial at the lower court.

In light of all the above, the Court of Appeal dismissed the appeal.

Comment
Regarding the matter of copyright infringement, this appeal was essentially decided on the basis that VMNL took the photograph and was therefore, the author of the photograph. However, seeing as VMNL is a company, can it truly/practically take a photograph to qualify as its author? If there is no arrangement between the actual photographer and VMNL conferring ownership of the photograph in VMNL, then VMNL is at best the commissioner of the photograph but neither its author nor its owner.

On the matter of passing of as it relates to images and image rights, it is significant that the Court of Appeal has provided judicial precedent on factors that a prospective plaintiff must establish in order to succeed with such a claim in Nigeria.

The facts as narrated in the judgment do not indicate whether the Appellant/Plaintiff had an agreement (oral or written) with anyone regarding how her image may be used and/or if they may be used for advertising purposes. If that were to be the case and her image/photographs were used contrary to such agreement, then a case in breach of contract may have been successfully made out against VMNL or whoever is the owner of copyright in the photograph or any person using the photograph under a licensing agreement. 

 

*Image of camera: Unsplash