In late March 2021, local model Duan Mei Yue and artist Allison Low found themselves in a legal tussle that made it all the way into mainstream media.[1]
Low had referenced a photo of Duan’s for her artwork that bore a high resemblance to the latter’s likeness, allegedly without Duan’s permission. The artwork was then featured in local fashion brand Love Bonito’s month-long art installation. In addition to that, the same artwork titled “The Weight of Longing” was sold on Low’s website for Eur 1875, and was also used as book cover art for “The Ministry of Moral Panic.”[2] However, Low claims that “[t]he artworks [she] made were about the strength and grace in women, and it was never [her] intention for art to ever bring harm to anyone.”
This commentary serves to surface the two distinct legal issues here – Copyright Infringement and the Tort of Passing Off. This is an interesting case because it brings to light several interesting issues and possibly even a gap in the law pertaining to image rights.
Copyright Infringement
If one were to pursue a copyright claim, the essential question to ask is: “who is the copyright owner of Duan’s photograph?”. A photograph is by default, the artistic work of the photographer. Thus, unless the photographer is an employee of the model, which is unlikely in this case, then the first owner of the copyright in the photograph would likely be the photographer. That said, there are exceptions to this general rule.
First, the ownership of the copyright may be transferred from the photographer to the model, though a written agreement is usually necessary – this is commonly known as “assignment of copyright”. Second, if the photograph was commissioned by a third party, the copyright owner of the photograph may be the third party instead of the photographer.
Unfortunately, there is insufficient information in the public domain to determine who the owner of the copyright in the photograph is in this case. According to Section 26(1)(a) of the Copyright Act (2006 Rev. Ed.) (the “Copyright Act”), the owner of the copyright in the photograph has the exclusive right to:
- Reproduce the work in a material form;
- Publish the work if the work is unpublished
- Perform the work in public
- Communicate the work to the public
- Make an adaption of the work
- To do any of the acts specified above in relation to the first-mentioned work.
Regardless of his/her identity, it is the copyright owner of Duan’s photo (and not Duan, unless she is the owner) who has the legal right to enforce the copyright.
Is the artwork similar to Duan’s original photograph?
After proving ownership of copyright in the photograph, the next step is to prove whether or not the allegedly infringing work (i.e. the artwork produced by Low) is a substantial reproduction of the original photograph taken of Duan.
The Internet uproar of March 2021 could be used as evidence to support the argument that the reproduction is substantial. Further, that Low had previously tagged Duan’s Instagram handle on her drawings suggests that Low had indeed referenced the photograph, thereby proving that Low had in fact had access to the photograph when allegedly making the substantial reproduction.
In summary, the copyright in the photograph may have been infringed through the substantial reproduction of the artwork. Having outlined the legal course of action for copyright infringement, it is worth noting that the copyright owner (whoever that might be) may not always have the same commercial interests as the model, Duan, and therefore may not have an interest in pursuing a legal claim.
Unnecessary false claims to ownership and infringement may give rise to defamation or a right to claim groundless threats of copyright infringement.
Fair Dealing Defence to Copyright Infringement
Even if a prima facie case of copyright infringement may be made out, a defence against copyright infringement exists under fair dealing exception (sometimes referred to as “fair use” in the United States). Certain dealings do not constitute a copyright infringement if the reproduction work is considered ‘fair’. The million-dollar question is, what is fair, and what isn’t.
Section 35(2) of the Copyright Act provides a non-exhaustive list of factors to be considered in determining whether a dealing is “fair”. Based on the Copyright Act as it currently stands, and we note that the Copyright Act may be amended soon, the factors are as follows:
- The purpose and character of the dealing, and whether or not it is of a commercial nature, or for non-profit educational purposes;
- The nature of the work of adaptation;
- The amount and substantiality of the part that was copied;
- The effect of the dealing upon the potential market for, or value of, the work of adaptation;
- The possibility of obtaining the work of adaptation within a reasonable time at an ordinary commercial price
The apex court case of Global Yellow Pages v Promedia Directories Pte Ltd [2017] SGCA 28 (“Global Yellow Pages”) has provided significant guidance on the interpretation of these factors. The co-author of this article, Mark Teng, represented the successful defendant/respondent, Promedia Directories involved in the Global Yellow Pages case.
Whether or not the dealing was fair is a matter that only the courts can decide. One factor that may weigh heavily in favour of the copyright owner would be that the dealing was arguably commercial in nature. We should keep in mind, however, that this is not a determinative factor, as was seen in Global Yellow Pages, albeit in dicta. In Global Yellow Pages, Section 35(2)(a), the purpose and character of the use, featured more strongly than the other factors, but this should not by implication be taken to relate to the matter at hand. Each case is decided by the courts on its own facts and merits.
Image Rights & an Extended Tort of Passing Off?[5]
The right of publicity or image rights, is touted as an “inherent right of every human being to control the commercial use of his or her identity”.[6] This right of publicity is featured prominently in the United States.
Unfortunately for celebrities, models and other public personalities in Singapore, the right of publicity has not been recognised in Singapore just yet. The existing cases in the United States are therefore unlikely to be influential in Singapore on this issue.
It may sound counter-intuitive to hear that specific image rights do not exist in Singapore because it is commonplace for models (or talents) to be required to sign a contract called the Model Release Form whenever they attend a photoshoot. Upon signing the form, the talent purports to release her image rights to the photographer or owner of the copyright in the image for publishing, distributing or usage in any form. This is usually done in the abundance of caution, even though there are no image rights in Singapore, per se.
The classic common law tort of passing off was originally intended to protect rival traders in the same field of business from “passing off” their products as that of their competitors. The rationale behind the tort was to prevent commercial dishonesty. Subsequently, the tort was extended to protect goodwill even though a defendant may not be in the same field of activity as the claimant.
In 2015, the English Court of Appeal unequivocally recognised that passing off could be used by celebrities wishing to seek a remedy for commercial appropriation of their fame in Fenty & Ors v Arcadia Group Brands Ltd (trading as Topshop) [2015] EWCA Civ 3 (the “Fenty Case”). While there has not been any such reported case in Singapore that we are aware of, common law passing off cases (e.g. from the United Kingdom or Australia) are, while not strictly binding, persuasive in local jurisprudence.
In order to qualify for a passing off action, even in its extended form, the classic trinity needs to be proven. These are:
- the existence of goodwill;
- misrepresentation; and
- damage.
A passing off action does not recognise a proprietary interest, per se, in a name, likeness or any other indicia of identity, like Duan’s image. It does, however, protect “the attractive force which brings in custom”.[7] Therefore, to succeed in a passing off claim, Duan would have to prove that she has business goodwill through, inter alia, the use of her image.
It is generally accepted that consumers are often influenced in their choice of products because of a perceived association between those products and a celebrity personality. As an Australian judge once remarked, the use of celebrities in advertising seeks to “foster favorable inclination towards [the product], a good feeling about it, an emotional attachment to it” such that the product is “better in [the] eyes” of consumers than a comparable product without such an association, Crocodile Dundee (1989) 25 FCR 553, 583-4. For example, Aviation Gin’s popularity is, at least in part, due to the endorsement by actor Ryan Reynolds.
In most passing off actions initiated by celebrities, the claimant will allege that the use of any distinguishing mark of their identity misled a significant proportion of consumers by implying that the said celebrity approved of the advertiser, consented to the use of her identity, or that there is some connection or association between the celebrity and the advertiser/trader.
Over the last decade or so, the most talked-about cases were that of the Formula One racer Eddie Irvine’s claim against Talksport for using a digitally altered photograph of him holding a portable radio bearing the name of the radio station in a promotional procure, Irvine [2002] 1 WLR 2355, or the other case where Rihanna sued Topshop for using her photograph on a range of clothing, the Fenty Case.
Even though it is, in our humble view, unlikely that the Singaporean Courts will recognise identity as a separate intangible asset, we remain hopeful that it is possible to enforce one’s interest against unauthorised commercial exploitation of one’s identity where the associative value of the identity has been misappropriated.
With that said, we hope to shed some light on the potential applicability of the tort to the present case.
Regardless of whether Duan signed a model release form, the crux of the matter is whether she can be considered to be sufficiently famous for her image to have misrepresented a connection to her business. If she did sign the model release form though, the matter would be even more complex.
As for the third and final element of damage, Duan could claim that she was falsely represented in Low’s artwork and that she suffered damage in the form of “loss of sales… or debasement of reputation or injurious association.”[8]
In summary, it is possible that the tort of passing off may protect Duan against the “commercial exploitation of [her] identity in advertising and selling”, but it remains to be seen whether the tort of passing off can be extended to cover such situations adequately in Singapore.
The soon-to-be consolidation of IP proceedings at the Singapore High Court, irrespective of the sum in dispute, would provide a better forum for case law to be created. We look forward to the day when the courts or legislature specifically clarifies this position.
This article was co-written by That.Legal and Asia Law Network. Thank you to Mark Teng, Executive Director from That.Legal for your help on the article.
This article does not constitute legal advice or a legal opinion on any matter discussed and, accordingly, it should not be relied upon. It should not be regarded as a comprehensive statement of the law and practice in this area. If you require any advice or information, please speak to a practicing lawyer in your jurisdiction. No individual who is a member, partner, shareholder or consultant of, in or to any constituent part of Interstellar Group Pte. Ltd. accepts or assumes responsibility, or has any liability, to any person in respect of this article.
[1] https://www.straitstimes.com/life/style/local-model-and-artist-in-grey-copyright-tussle-over-models-face
[2] Love Bonito and author Amanda Lee Koe had both declared on social media to not have known about the lack of permission given by Duan.
[3] https://www.instagram.com/p/BfV-gHZhKCp/
[4] https://www.instagram.com/p/CJaXDFVHPtP/ or https://www.instagram.com/p/CKTbuD5Hdye/
[5] https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3024434
[6] J Thomas McCarthy, The Rights of Publicity and Privacy (2nd ed, 2000) (April 2016 update) § 3:1.
[7] https://singaporelegaladvice.com/law-articles/tort-passing-someone-imitated-branding-business/
[8] Professor David Tan, Image Rights and Data Protection [2017]