The Mail & Guardian has again trodden on trademark toes, not even a month after becoming embroiled in an ongoing battle over the use of “for dummies” in one of its sport headlines, with Wileys Publishing in the United States claiming the phrase as a registered trademark for its series of self-help books.
The M&G in February adapted the late Cuban photographer Alberto Korda’s famous shot of the beret-wearing Cuban revolutionary Ernesto “Che” Guevara for its cover page, superimposing Minister of Finance Trevor Manuel’s face on the picture.
This week the newspaper received a legal notice from Paris attorney Randy Yaloz, counsel for Legende LLC — the licensee of Korda’s commercial rights.
“It appears … that the photograph of Che taken by Korda was unlawfully used, altered and reproduced in the magazine,” it reads, adding that the M&G is in breach of “the French Intellectual Property Code, English copyright law, US copyright law, South African copyright law and the provisions of the Bern [sic] Convention [the Berne Convention for the Protection of Literary and Artistic Works, signed by 96 countries]”.
The letter also points out that an English court in September 2000 found that the copyright of the photograph belongs to Korda.
Yaloz has requested the M&G to submit all documents relating to the use of the photograph “to confirm the extent of the damages sustained as a result of this infringement”.
Julia Stephens of law DM Kisch in Johannesburg said: “In terms of the South African Copyright Act, a photograph is classified as an artistic work. Provided that it can be shown that copyright does in fact subsist in such a work, then parties other than the copyright holder are prohibited from perfoming certain acts in relation to the copyrighted work.
“Under South African law, one is not permitted to reproduce a photograph, in which copyright subsists, in any way; nor may one make an adaptation of the photograph. An adaptation of an artistic work (and therefore a photograph) includes a transformation of the work in such a way that the original or substantial features of such a photograph remain recognisable.”
Stephens added: “The M&G‘s use of the late Alberto Korda’s photograph, superimposed with an image of Trevor Manuel, amounts to an adaptation of the original photograph and therefore, it would seem, falls foul of the Copyright Act.”
She also pointed out that “the Act provides for a copyright owner to claim compensation by way of a reasonable royalty, which would have been payable by a licensee in respect of the particular work”.
“Because this beautiful and haunting image of Che is so ubiquitous, we did not realise it was copyrighted. The matter is with our lawyers, though the M&G does support the right of photographers to be paid fairly for their work. Korda was a particularly special shutterbug who donated proceeds from the image to Cuban charities,” said M&G editor Ferial Haffajee.
Korda, born Alberto Diaz Gutierrez in Havana, became one of Cuba’s foremost photographers, spending 10 years as Fidel Castro’s official photographer. He took the photograph of Guevara at a Havana protest rally in 1960 and unwittingly gave a copy to an Italian publisher.
After Guevara’s death, Korda’s image was used as a mural and quickly spread to T-shirts, posters and even album covers, with no credit to Korda — and no recourse for the photographer until Cuba rejoined the international Berne copyright convention in 1997.
He reached an out-of-court settlement with Smirnoff in Britain for using the image in an altered format in an advertisement, but donated the undisclosed sum to buy medicine for Cuban children, according to a report in The Guardian in 2001.
Korda died of a heart attack in 2001 in Paris at the age of 72.