‘Mali Safi Iende Chain Chain’ — The Tort of Passing Off and Image Rights

The Campaign

Recently in Kenya, a telecommunication giant started a campaign dubbed ‘SMS ziende chain chain’, of which a local celebrity felt aggrieved, and that they had infringed on his proprietary rights. The said celebrity has a song by the title “Chain Chain’ in which he popularized the phrase “Mali safi iende chain chain”. Could this then qualify as a case of passing off, or is it simply a case of outright copyright infringement?

Passing off is a common law tort that protects the goodwill of a trader from misrepresentation, and it is the main way by which the courts protect unregistered trademarks. Personalities in jurisdictions with no express provisions for Image rights in their legal frameworks tend to approach the court via an action of passing off. Recent cases such as Irvine v Talksport(2002) and Fenty v Arcadia Group Brands Ltd (2015) have showcased how passing off may be used to protect personality image rights.

Locally, businesses rather than personalities, have been more involved in seeking reprieve through the tort of passing off. This has been highlighted in cases such as the case of Strategic industries Ltd v Solpia Kenya Ltd (2019) and the case of Newton Oirere Nyambariga v KCB Bank Kenya Ltd & Another (2017). However, personalities, more so sports personalities, are becoming increasingly aware of their image rights. In 2019, Victor Wanyama, the captain of the Kenyan National football team, instituted proceedings against Menengai Oil Refineries for commercial appropriation of his image.

To prove the tort of passing off, a claimant has to prove three things (the classical trinity) as was espoused in the case of Reckitt & Colman Product Ltd v Borden Inc & Others (1990):

i. Goodwill

ii. Misrepresentation

iii. Damage/ likelihood of damage

Goodwill is thus inextricably linked to the tort of passing off.

In defining goodwill, it has been stated that goodwill is a thing that is very easy to describe but very difficult to define. It is an intangible asset that has been described as “the benefit and advantage of the good name, reputation, and connections of a business…the attractive force which brings in custom.” Goodwill is thus not just a good name, but the benefit and advantage of the good name.

There are two ways to understanding the goodwill necessary in an action for passing off, the hard-line approach and the soft-line/contemporary approach. The hard-line approach was espoused in the case of Starbucks (HK) Ltd v British Sky Broadcasting Group Plc (Sky)(2015) in which it was held that in order to succeed in a claim of passing off, the claimant must show that they have a goodwill in the form of business and customers in the particular jurisdiction. This is to say that goodwill can only be proved by showing that a personality has some form of business and/or customers in the jurisdiction in question. A significant reputation among a sufficient section of the prospective purchasing public was held to be insufficient.

One implication of the Starbucks decision for personalities with a global reputation is that they will have to take active steps intended to exploit their names/images in a particular country/jurisdiction so as to establish the requisite goodwill necessary in passing off. This may be done through endorsements or through taking steps to obtain actual trademark protection for their names or images.

It is worth noting that there is no requirement to establish goodwill in an action based on the right of publicity under US law. All that is required is the appropriation of the commercial value of a person’s name or likeness without consent. This may be evidenced by the loss of business opportunities with potential partners and sponsors, the loss of business revenue and/or the loss of value on the intellectual property.

The Starbucks decision, and by extension the hard-line approach, has however been criticized for being out of touch with the commercial reality of modern times. It is contrasted with a more soft-line approach in which for goodwill to exist:

i. the Plaintiff has to have a significant reputation for their name, mark or get-up, which is recognized as distinguishing their goods and services.

ii. the reputation has to be known to a sufficient number of prospective purchasers in the jurisdiction

iii. the Defendant’s use of the Plaintiff’s name, mark or get-up is likely to lead to confusion in relation to prospective purchaser’s connecting the source of the Defendant’s products to the Plaintiff’s.

Finally, it is important to note that IP rights are subject to the principle of territoriality. Although it my seem alluring to say that simply reputation should be enough to succeed in an action for passing off, it is important to take the said principle of territoriality into consideration. As held by the courts in the Starbucks case,

“If it was enough for a claimant merely to establish reputation within the jurisdiction to maintain a passing off action, it appears to me that it would tip the balance too much in favour of protection. It would mean that, without having any business or any consumers for its product or service in the jurisdiction, a claimant could prevent another person using a mark, such as an ordinary English word, “now”, for a potentially indefinite period in relation to a similar product or service.”

And thus, considering all the above, would the ‘Chain Chain’ creator succeed in an action for passing off?

Loya. Certified Secretary (K). I’m not sure what else is supposed to go here but I enjoy writing.