Henry Wanyoike Foundationkikuyu facebook 29 October 2014

According to media reports, the latest image rights suit involves Joseph Kibunja, an athlete and guide for well-known Kenyan Paralympian Henry Wanyoike. The suit filed by Kibunja in December 2016 seeks to bar two companies, Rohto Mentholatum Limited and Harleys Limited (the defendants in the case) from using his image to promote their product “Deep Heat” without his consent. Kibunja wants the court to declare illegal the usage of his image by the defendants in the promotion of their product without his consent. In addition, he has asked the court to award him compensatory damages for the unauthorised commercial appropriation of his image by the defendants.

According to Kibunja, he realised in 2013 that this image was being used to advertise and market a product by the name Deep Heat produced by Rohto and distributed by Harleys without his consent. Thereafter he discovered his image had also been used on several occasions to advertise and market the said product by the name Deep Heat in various media outlets among them being “The Asian Weekly” promotional calendar, circulated globally, promotional fliers and in corporate sponsorship materials such as banners, fliers and tee shirts. Kibunja claims that he was not been remunerated in any form by Rohto and Harleys for using his image. Kibunja claims he is a well reputed athlete who has featured and won several national and international athletic events including the 2003 Singapore Marathon where he was the first runners up, 2004 Hong Kong Half Marathon, 2005 Great City Run (United Kingdom), 2005 Nairobi Marathon (21Km) 2005 Bangkok Marathon and many others. It is alleged by Kibunja that he raised the issue of image rights with the defendants but he was promised they would look into it by awarding a suitable compensation. However, his attempts to follow up with the defendants over the issue of remuneration were ignored.

According to media reports, the defence likely to be raised by Rohto and Harleys is that there was no need to seek Kibunja’s consent due to his involvement with the Henry Wanyoike Foundation. As evidenced by the photo above, Wanyoike has had dealings with the defendants through his foundation which had reportedly signed a contract with Rohto, giving them rights to use both the images of the Foundation’s representatives. However Kibunja avers he resigned from the Foundation in January 13, 2015. Further, Kibunja claims that even as a member of a foundation, he was and remains a professional athlete and he still has an interest in his image. He claims anyone who wishes to use his image for commercial gain ought to seek and obtain his consent and remunerate him for the same. In this regard, Kibunja’s court papers reportedly state in part as follows:

“It is my humble deposition that my involvement with the Henry Wanyoike Foundation did not in any way waive my right and proprietary interest in the image I have worked so hard to develop over the years. I am entitled to benefit whenever anyone uses my image for their own commercial gain”

Observers will be keen to see how the court goes about determining the various issues raised in this case. In particular, it is worth recall that there is already persuasive jurisprudence on image rights from the Commonwealth. In Uganda, the case of Asege Winnie v. Opportunity Bank (U) Ltd & Anor [2016] UGCOMMC 39 recognised that under common law jurisprudence a personality right is the right of an individual to control the commercial use of his or her name, image, likeness, or other unequivocal aspects of one’s identity. This right to personality is classified into two categories; 1) The right of publicity or to keep one’s image and likeness from being commercially exploited without permission or contractual compensation and the right to privacy, and; 2) The right to be left alone and not have one’s personality represented publicly without permission.

According to the Ugandan court, under common law jurisprudence publicity rights fall in the realm of the tort of “passing off” which idea was developed on the notion of natural rights that every individual should have a right to control how, if at all, his or her “persona” is commercialised by third parties who intend to help propel their sales or visibility of own product or service. Arising from this common law jurisprudence, the learned judge in the Asege case held that for one to succeed in an action for infringement of image rights such a person has to prove the following three basic elements: 1) The plaintiff must be identifiable; 2) The defendant’s action was intentional; and 3) The defendant must have acted for the purpose of commercial gain.

Outside Africa, the courts in Canada have also greatly developed jurisprudence in this area. Two cases come to mind, namely Krouse v Chrysler Canada Ltd (1973) 13 CPR (2d) 28 and Athans v Canadian Adventure Camps (1977) CAN H1 1255 where it was noted that where a person has marketable value in their likeness and it has been used in such a manner that suggests an endorsement of a product then there is ground for an action in appropriation of such a person’s personality and that personality rights included both image and name.