- A legal opinion which names Converse, ad agency Joe Public, and Spitfire as respondents, has found them in breach of contract.
- The matter refers to the usage of a Soweto-based punk rock outfit's image and music for a billboard and ad campaign.
- In response, Joe Public has requested that Arts24 not publish this article, lest it leave Media24 open to legal action, presumably from Joe Public.
Shameless, a three piece punk band from Soweto, have found themselves vindicated by a legal opinion that alleges that Converse, Joe Public, Spitfire Films and two other respondents acted in breach of contract.
Authored by Graeme Gilfillan, a multijurisdictional copyright and forensics expert with Nisa Global Entertainment, the legal opinion found the respondents (Joe Public Holdings/Joe Public United; Spitfire Films; Skye Distribution; LA Group; and Converse) used Shameless’ copyright, performer and image rights outside of the scope of their agreement with the band for their "All Stories Are True"/"Converse Crews" campaign.
The opinion goes on to allege that the amount paid to Shameless - R9 000 before the deduction of PAYE - was "unreasonable and even if such only covered the time of each for wardrobe and shooting, did not cater for six months of rights usage. The final offer of R15 000 (before deduction of PAYE) each was equally unreasonable even if such only covered the time of each for the wardrobe and shooting, certainly insufficient for 6 months of rights usage".
Shameless, who won the 2019 Afropunk Battle of the Bands, describe their music as tribal post-punk. Comprising Musa Zwane on lead guitar, Thabang Khonje on bass guitar and Thabo "Rock" Masina on drums, the group got together in 2017. Their music sits in a hybrid inter-genre space. It fuses metal, rock, maskandi, punk, kwaito and the blues.
In 2018, the band recorded the original composition Impicabadla, recording a music video for the song during the first half of 2019. The lo fi black and white film runs just over five minutes and depicts the band jamming out in the backyard of a Soweto house, with a small audience, including two dogs and a crying toddler, in attendance. A topless Rock, and barefooted Musa and Thabang rock out, while a pair of white socks and a mop dry on a laundry line stretched out behind them.
In 2019, a Tarryn Rautenbach from Spitfire Films reached out to the group via Facebook. They discussed a planned shoot via WhatsApp. On 3 September, Rautenbach sent a Facebook message to Shameless’ Musa Zwane: "Hi Guys, Tarryn here from Spitfire Films for the Converse shoot. We need to look at changing the date for the shoot. I tried to call Rock but couldn’t get through. Please can you give me a call when you can so we can finalise details. My number is xxxxxxxxxxx. Thanks Tarryn."
On 16 September 2019, the band travelled to the Spitfire offices in Parktown North for a wardrobe check. It was here that the band and their then-manager Hugh, tried to negotiate for a better offer than the one they had received. The offer was increased from R6 000 per band member, to R9 000. "Liesl (Karpinski, owner of Spitfire Films) just came and gave us the papers and said it's our final offer. She spoke to Hugh and said she didn't like his attitude. That's when we signed the contract," says Musa Zwane.
In an email sent on 22 November 2019, Karpinski expressed a contrarian take on the contract, which was in fact, an artist release form. "They signed an artist release as opposed to a NAMA contract because they were dead tired extras and not the leads.”
The Artist Release Form, signed by each of the band members on 16 September 2019, is on a Spirit.tv letterhead with an "ACA" logo in the centre footer.
Months later in November of the same year, Shameless was surprised to discover themselves featured on billboards, which fall under Out of Home (OOH) rights. A filmed performance of their song Impicabadala was used in a commercial that aired on DSTV, without their consent.
Bulie Nazo of Stamp Communications is assisting the band in this matter. She explains that when she agreed to take on this matter, she first approached Lee Anne McKenzie from LA Group. Skye Distribution, which distributes Converse, Dickies, Brentwood and other brands in South Africa is, according to their LinkedIn page, "...a South African business owned by the Peer family through the LA Group of companies. Skye is a fashion brand distribution business that distributes both international and well-established in-house brands through South and Sub Saharan Africa for more than 50 years".
On 13 November 2019, she sent the following email to Mckenzie: "My name is Bulie from Stamp Communications, and I’ve been appointed as the Shameless Band manager. The band appreciates the opportunity to have worked with Converse as a brand that has been doing amazing work in South Africa. However, we have noticed that there are also TVCs and Billboards with the band and their music? I’ve attached the release which was signed on the day of the shoot and it only mentions digital and print. I’m sure you and your team also appreciate that TVCs and Billboards are something else completely? Please can we find recourse for the band as this was not in the release and was not discussed. Looking forward to hearing back from you."
For days, Nazo received no response to the email, only to called on the phone by Karpinski on 19 November 2019. The phone call was proceeded by an email the following day, which read:
"We also need to pay an extra 100 % for the music. Please see attached and confirm all is in order. Please note that we have also discussed that we want to create a music video for them for free from the footage we shot to help them as a band. I look forward to hearing from you.” Also copied in the email were Koketso Kganyago, Andrew Wright and Di Cole, all from Joe Public.
The leaked legal opinion alleges that it has Karpsinski on record further detailing what she believes to have happened. In documented communications, which Arts24 has seen, Karpinski admits to using the Shameless music video, photoshoot images and music outside of the scope of what was agreed upon, but blames it on an inability to contact the band.
According to the opinion:
"In the subsequent email communication record, Ms Karpinski provides her view as to inter alia what transpired:
- "I think I have been very clear that to them - in person - I called it billboards. In the contract I wrote print instead of OOH. We paid usage for Social Media and Print. We did not use them in print. The film was not about shameless the band. They are featured extras. The film was about SRR";
- "Shameless would need to of course sign an updated release to cover their usage (as per NAMA) for the use of their image on TV and their track on TV. We did not use them in print so the usage that applied to that can be now applied to OOH. Perhaps you want to send me a release for them for their music and image on TV? They signed an artist release as opposed to a NAMA contract because they were dead tired extras and not the leads. Please find attached the screen shots from the Directors treatment that explains the films intention. The film was about SRR and we decided on the band in the film being Shameless as that is who SRR put forward";
- "I made a human error by not changing the template from PRINT to OOH. The campaign has not been used for print publication or press. But they have been paid 100% usage for that. OOH is 50% usage";
- "Your (now) clients were very excited about this opportunity as they are relatively unknown and this would give them great exposure and increase their following";
- "I have also copied Stefan Vos here who is the marketing regulator and is aware of the situation. I look forward to your response and I hope we can put this to bed";
- "The truth of the matter is that Shameless was, for lack of a better phrase, plucked out of obscurity, and selected for their participation in the Converse campaign by the Soweto Rock Revolution (SRR). At the time, they were selected for participation, their Impicabadala song was not professionally recorded or commercially released and, as such, had no quantifiable market value";
- "Not only did Spitfire TV record their live performance of the song professionally, without charge to them, but their music and performance was included in an ad that featured one of the world’s most recognizable and reputable brands in Converse, simply due to their connection to SRR at the time.";
- "We entered into two agreements with Shameless. The first was a written agreement (the ‘Artist release form’) that the members signed on 16 September 2019. The other was a verbal agreement when Shameless and SRR were at our (Spitfire) offices for the wardrobe call on 16 September, in terms of which both SRR and Shameless acknowledged that their image rights may be used on billboard advertising and, hopefully, on television as well. SRR is willing to testify to this and that this understanding was made absolutely clear for both them and for Shameless";
- "After the flighting of the ad on social media and YouTube, the commercial value that Shameless received from this positive market exposure and being aligned with the Converse brand and with SRR, would undoubtedly have been hugely significant and, although difficult to quantify, probably fair to say that it produced immense value in a very short period of time, which simply cannot usually be achieved without the intervention of a globally famous brand, an ad agency and a production company";
- "Plainly put, Shameless was not being exploited. They were uplifted and supported by us";
- "We agree that the timing by which the flighting of the ad on television was arranged, via the digital terrestrial platform of DSTV in South Africa, of two days to make arrangements, provide DSTV with the content to be flighted and to contact SRR and Shameless to inform of the developments and to invite them to our offices to sign the updated agreements that we discussed previously, was not ideal. We did our best in the circumstances, and reached out to Shameless, but were unable to contact the members at that time";
- "In the light of the above, we do not believe that we breached the terms of our written and verbal agreements with Shameless and that we, at all times, acted in good faith to further their best interests. Also, that this project, added tremendous value to the recognizability of their group, their brand and their music and we are sure that they are very proud to have had this opportunity to work with SRR, Spitfire TV, Joe Public and Converse";
- "We are positive that we can reach an amicable solution swiftly that would allow us to move forward with more projects, if Shameless were interested and open for them to be considered for participation in such projects";
- "We have placed the total of R45 000, as per our final offer, into an interest bearing bank account and we are ready to pay over monies as soon as the band members confirm their unconditional acceptance of the final offer (by email is fine) and provide their nominated bank accounts to receive the payments".
The opinion also notes these responses from the band’s manager, Nazo, which Arts24 has been able to confirm:
- "As per my initial email to Lee-Anne and the telephone conversation with you, my clients know nothing about their images being used on out of home billboards. I have reconfirmed this again with them today. The release form they signed is also testament to that effect. Print and OOH are 2 different things, so I don’t understand why you keep insisting that you explained print as OOH and then contradict yourself by saying it was a mistake in the contract?";
- "Also just to be clear: SRR (event organisers) and Shameless are 2 completely different entities, with different members. The 3 releases you sent me are the correct ones for Shameless Band, so I don’t understand why you’re referring to discussions with SRR";
- "My clients, Shameless Band, have also told me that they never received any call from you regarding the TVC, which begs the question of when you would have notified them that their music, brand and likeness were being used on these noncontracted platforms without their permission, and having not fleshed out the implications of a campaign this size (for both parties Shameless and Converse) with expressed and agreed upon deliverables and limit";
- "The agreed rates on the signed release are what they are for the platforms outlined on that said document and do not apply to the platforms now in question. Whether you did the print placement or not isn’t an issue from our side, as that is what my clients signed and gave you permission for: print and digital”. Please can you and your team tabulate the usage limits for the TVC and Billboards, and propose fair value recourse for Shameless Band, for use of their name, image, likeness as well as music on the platforms in question";
- "Moving forward, all we need is an extensive documented agreement/contract that covers both parties on the above mentioned as well around expectations on deliverables, including permissions on copyrights etc. I’m sure you aware that a campaign of this magnitude executed on the all the platforms it has been cannot be covered by a simple release form, this execution implies a coming together of artist and brand in endorsement of each other and the fact that this materialization wasn’t even discussed anywhere to ensure authenticity is alarming. Trust the above makes sense".
- "I’m requesting that you sit with your team and give Shameless Band proper fair market recourse from the resultant breach. Failing which, we are more than prepared to seek legal counsel on this matter. Right now it seems that you are not taking this matter seriously and view our clients rights trivially, which once again is alarming as you represent a brand that views artists and their art as part of their brand’s personality traits";
- "Let me categorically state that I did not appreciate you screaming at me on the phone yesterday. I found your manner very rude and unprofessional. As I stated to you then, and again now, I would prefer everything to be on mail because this matter is very serious and I will not be bullied by you to accept facts that are non-existent”. Secondly, I have sought a second opinion from Chris Ghelakis who has been in the music business for over 40 years. Please find attached what his findings are";
- "It’s with great disappointment now that I get a call from my clients informing me that Spitfire called them direct to get an invoice for the amount which we grossly rejected”. I’m not sure about you, but this is not how we work, and I hope this wasn’t under your instruction".
The opinion separates the copyright claim into five distinct rights, namely - musical works, literary works, artistic works which fall under the title authorial works and entrepreneurial works, being sound recordings and films. It concludes that the musical work, literary work and sound recording of Impicabadala are owned by Shameless. While the artistic and cinematographic film are owned by Converse, the performances and images of the band in the film are owned by the band.
"The conclusion above, whilst an accurate depiction of the subject matter ownership landscape, presents various rights challenges to Converse and the capacity of the film to be exploited without right liabilities. It’s a prerogative of ownership of the subject matters when making a film for commercial purposes, to avoid, whether directly, or by assignment, or by commission, or by exclusive license, or by exclusive sub-license or by some form of clearance or release form. The communication record evidences an artist release form was signed by each of Musa Zwane, Thabo Masina and Thabang Khonje in favour of Spitfire TV."
The signed artist release form is the only written documentation between the parties concerning rights in the subject matters, and the only agreement that has reference to any use by Converse of the subject matters.
The opinion also alleges that Spitfire TV, signatories in the artist waiver is not a natural or juristic person and can not, as a result, enter into such a contract.
"In the artist release form, Spitfire TV is not qualified as a division of, trading as or any other qualification that would indicate the presence of neither a natural person nor a juristic person such as Spitfire Films CC. This has inter alia the implication of Spitfire TV being bereft of any capacity to hold rights of any kind and pursuant thereof exposes Joe Public and ultimately Converse to a reality that no rights have, in respect of Campaign and in law, been granted."
The artist release form names the client as Converse, the product as "shoes" and the title of the commercial "All The Stories Are True". However, Spitfire maintains that Shameless were shot for a campaign called "Converse Crews". The release form is also specifically refers to "online video and print usage for six months” and “Image and music track to be used for online content".
Additonally, Karpinski appears to be unclear about the nature of Spitfire’s engagement with Shameless, mentioning by email on 20 November: "I did contact the SRR guys to let them all know that I have raised a CE with client for the to be paid extra 100% usage for TV, "only to go on and say, eight days later that the agreement actually happened at the shoot, verbally, and not at a later stage as she previously stated.
"The other was a verbal agreement when Shameless and SRR were at our (Spitfire) offices for the wardrobe call on 16 September, in terms of which both SRR and Shameless acknowledged that their image rights may be used on billboard advertising and, hopefully, on television as well."
According to the legal opinion, Shameless are entitled to a "reasonable royalty" and punitive damages. The author finds: "If the approach to a remedy falls to the approach as per clause 9.2.2 above, the case and the outcome will be extremely damaging to Converse and Joe Public United and prohibitively costly to their brands and reputations.
"A matter such as this speaks directly to the 'Black Lives Matter' campaign, not because black people are being killed in this matter, but because the opportunities for black lives to matter have been extinguished. It is said that being forced to live with extinguished opportunity is akin to being forced to live with commercial slavery. In this case the members of Shameless would have little if any challenge finding the necessary attorney, expert and senior counsel support."
Katlego Baaitse, a director with Spitfire who shot Shameless for the campaign, has refused to comment on the legal matter. Baaitse said he found Shameless to be incredibly talented, mentioning that he would love to work with them again.
Arts24 reached out Joe Public for comment, which responded through their lawyers, Adams and Adams. In addition to this, an email was sent by Justin Blackbeard - listed on LinkedIn as the Group Financial Director of Joe Public – to the SpaceStation, the digital media sales arm of Media24 in what appears to be an attempt at intimidation.
The email from Blackbeard reads:
"Please see below email from Lindokuhle regarding a dispute with an artist that was used for a TV production with Converse. Joe Public is the appointed lead creative agency for Converse. This email that is written below is completely inaccurate and this article has been created to incite excitement and create a situation of a brand being under attack. Due to this being a current legal matter and the allegations again below being factually incorrect, and due to this being an unresolved legal matter I cannot disclose the details hereto, but going to print with such an article will open Media 24 to potential liability.
"I please ask of you to refrain from publishing this article.
"Stephen Hollis, who is our Attorney from Adams and Adams, is writing a formal response to Lindokuhle and again implying that publishing this article will open a potential case of liability to Media 24 as the facts that have been shared are inaccurate and have been created on a false foundation."
Blackbeard had not seen the article at the time of sending his statement, and was contacted in order to offer Joe Public, Converse and Spitfire right of response. Reporting on the findings of a legal opinion does not, in fact, open Media24 up to potential liability, as stated by Blackbeard in his email.
Thando Manentsa, a partner of Adams and Adams, responded to say that their clients (Joe Public) are of the opinion that it would be it would be" inappropriate and unlawful for you to publish a newspaper article that relies on the opinion of Mr Gilfillan". It further goes on to state that Joe Public are "presently engaged in confidential negotiations with the Shameless band and their representatives, and we are in the process of putting in place a mechanism which we believe will result in a fair and equitable resolution to this matter. It is therefore surprising to us that they have forwarded information to you, without our knowledge, and clearly with the view of gaining interest from the media, and to apply undue pressure on my clients during the ongoing discussions".
"The information you received is not a judgement, but rather an opinion from a person who is not a registered legal practitioner, who does not have demonstrable commercial experience in the advertising industry and is therefore not in a position to express an expert opinion on advertising matters or the determination of a market related fee in the advertising industry.
"In the opinion, Mr Gilfillan estimates that an unknown band, that has never recorded and released an album, that was completely anonymous on social and formal media and that has never before appeared on television, should be paid R1 million on top of what the band was already paid by the production company in terms of valid contracts. The conclusion reached by Mr Gilfillan is simply devoid of any legal basis.
"Even the citation of the parties involved is false. Converse did not engage the Shameless band, conclude any contract with them, or hold any discussions with the band. The Shameless band concluded valid contracts with my clients and were remunerated in full for their services. My clients have also taken the additional step of approaching independent advertising industry associations to assist in assessing this matter and to ensure that my clients have conducted themselves in a fair and equitable manner. My clients will continue to engage Shameless band and are confident that this matter will be resolved on an amicable basis."
While the statement from Manentsa claims that Shameless was paid in full, by Karpinski's own admission (in writing), Shameless were not notified, let alone compensated for their appearance on a DSTV commercial and billboard campaign.
This is an ongoing investigation.