Vanessa Ferguson, Attorney and Director at IP law firm, DM Kisch Inc

Published in April issue of AdVantage Magazine

You use a private penthouse apartment for the shooting of an advert. Commission has been paid for the use of the apartment and you have the owner’s consent to use personal belongings and the décor during the shoot. A sculpture, created by one of South Africa’s up and coming artists is used as a centerpiece for the creation of an advert. The end result, a powerfully creative advert, which captures the essential features of the brand’s personality and is sure to capture the target market’s attention.

The advert does indeed attract attention, but the wrong kind. Yup, the dreaded legal claim; the sculpture - an artistic work protected by the Copyright Act.  The sculptor claiming copyright ownership, which includes the right to prevent certain “restricted acts” specifically catered for under the Copyright Act (our rather antiquated and much criticised Act governing copyright issues, but the law nevertheless), which essentially is the right to prevent copying of the work in any manner or form.

Although the sculpture was sold by the sculptor, the underlying copyright in the work remains with the creator and can only be transferred in writing. The sculptor’s claim is valid and he can claim a royalty for the use of the work, which obviously eats into your profits (along with legal costs), if not included in your initial quote to client.

So does that mean you have to trace every artist, sculpture, graphic designer for every artistic work featured in an advertisement?  The answer is a typically legal double-barreled “yes and no”.  Whether consent is required, depends on how it is used.  If it constitutes an unlawful copy, which includes the drawing of the sculpture, taking a photo of a sculpture or even using it as a model for the creation of a new sculpture, then the consent of the copyright owner is required.

In law for every general rule, there are a plethora of exceptions, and copyright law is no different.  The Copyright Act caters for specific instances where the use will not infringe the copyright and includes “fair dealings”, for example, personal private use, for criticism and review, for reporting of current events, or for use as background or incidental material and illustrations for teaching.

>As applied to the example above, the cause of the complaint arose as a result of the fact that the sculpture was used prominently and was the focus of the advert. It was used for commercial gain. If it was merely shown in the background as part of the décor of the apartment, then this would have been acceptable use.

So how do you bridge the divide between creative license and conforming with legal requirements?

Remember, intellectual property law was created to protect the creations of the mind, both artistic and commercial. It is there to protect you and the creative industry as a whole.