In this blog post, Hari Manasa Mudunuri, a student of University College Of Law, Osmania University, who is currently pursuing a Diploma in Entrepreneurship Administration and Business Laws from NUJS, Kolkata, discusses if any product be named after a celebrity, without obtaining any prior permission.
In the modern world, media personalities, politicians, socialites, etc. tend to have a huge reach in the society and are followed by many. They command a huge market, and this puts them in a position to create interest and attract consumers due to their brand value and reach. This is tapped in by the celebrities and other products which employ such celebrities to endorse their products or services.
Owing to the market commanded by the celebrities, they tend to demand huge remunerations for endorsements they feature in or where they permit the use of their name and persona. The consideration is either paid in lump sum or get a portion of the sales achieved by the product etc. This allows in commercially exploiting the celebrity image and creates a market through their publicity.
Sometimes certain products/services are shown to be endorsed by a celebrity or the use of the celebrity’s name or image but in reality, the said product would not have a right to use the same. This leads to unauthorized infringement of the celebrity’s brand value which was built over time, invasion of his/her privacy and also the infringement of their celebrity rights/ personality rights, which are recognized in modern times and laws seek to protect the same. Modern day law is evolving with the change and need and today, right to publicity and celebrity rights cover a wide range like – name, likeness, voice, mannerisms and other prominent feature, which the general public or target audience can relate to a particular personality. This protection is the need of the hour as the advertisement and publicity spheres involve high stakes and the market is a multi-crore business.
The law allows for the trademark protection under the classes in which they seek protection. The courts also protect well know marks irrespective of the class they are registered under as they are capable of being associated with a particular product or service. The registration of a celebrity’s name is prevalent in the western world where personalities in academic, media, sports, etc., like- Paris Hilton, David Beckham, Victoria Beckham, Stephen Hawking, Sarah Palin, 50 Cent, Andy Murray, The Kardashians, Beyonce [her daughter’s name Blue Ivory Carter is registered for baby products], have registered their names as a trademark for a wide range of goods and services. This trend is also picking up in India. Sachin Tendulkar has registered his name and uses it for the goods that are sold by his company. Movie star Shah Rukh Khan sought to register the popularly known abbreviation of this name-SRK. Other personalities like musician A. R. Rahman, actress Kajol, Yoga guru Baba Ramdev, noted cardiologist Naresh Trehan and well-known chef Sanjeev Kapoor, etc. have chosen to register their names in various business categories.
The registration of the names helps in preventing the unauthorized use of the same and has proven in the Western world to be a safer and easier mode of control. There are various instances where celebrities send notices to stop the unauthorized use of their names and later seek the intervention of courts to prevent the same. Sandra Bullock sued a watch company when the said company promoted one of their products as “The Sandra Bullock watch” as she was seen wearing the same in a scene in her movie. Julia Roberts and George Clooney respectively sued two audio-visual companies accused of the use of their pictures and trademarked names to high-end movie projectors and entertainment systems. Bette Midler sued Ford Motor Co. who hired a soundalike of singing on a commercial, after Midler declined to do the ad, Midler sued, and the court held that there was a misappropriation of Midler’s right of publicity.
When the market for popular personalities is high, they will try their best to exploit their value to the fullest. It is not only the monetary value associated with the brand value of a personality, but it also creates a visibility for the product and creates an interest in the advertisement, when it features a popular personality. Consumers have a perception that when a celebrity is endorsing a product, then they would have double-checked credibility and values of the brands and stand by the quality they endorse and it could be trustworthy. They understand that the celebrity has conducted due diligence on his part and at the same time advocates what he advertises and stands by his word as a responsible citizen. There were instances when celebrities get into trouble for endorsing certain products, which were later, proved harmful or below the quality as previously advertised. A few celebrities like Amitabh Bachchan, Preity Zinta, Madhuri Dixit, experienced this in recent times by endorsing a food product called “Maggi.”
The rights of a person over the use of their name, image, likeness or other features for commercial purposes are the individual’s right in publicity. The protection of these rights differs from country to country. Right to privacy protects against unwarranted publicity and exploitation of one’s personality. The right to the press doesn’t entitle the invasion into the personal space and publicize the same for monetary gains. It’s not a case of defamation, and the publicity may be true, but the personality has a right to privacy that protects him against humiliation, passing off of person’s name or likeliness.
One of the methods of protection is through torts where the invasion of a person’s privacy for commercial benefit by the use of name or likeliness. Tortuous liability protects the value of the individual’ skill and personality. The common law goes a step forward and prevents the misuse of a person’s identity without consent which causes an injury. The drawback is that the invasion of privacy is maintainable when there is a literal use of the name and other features attributable to a person. For the economic exploitation the value of the name of a celebrity to promote one’s goods without prior consent will amount to unfair trade practice, misappropriation of Intellectual Property[IP] of the person and an act of Passing off.
The general defense available to a celebrity is that others did not take their consent prior to the use. The Supreme Court of India held that though Constitution doesn’t expressly provide for the right to privacy, Article 21 of the Constitution protect the same. This permits the celebrities to avail the right to privacy when others infringe it. The right to privacy is the first step where the person gives his consent to use or not use his name. Then the right to publicity entitles him the right to commercially exploit his name, likeliness, etc. to the exclusion of others and to permit others to use only with a prior written consent.
Decided case laws
Sourav Ganguly v. Tata Tea Ltd.
Cricketer Sourav Ganguly sued Tata Tea Ltd. for promoting their Tea packets by offering a chance to the consumers to congratulate Ganguly through a postcard which was available along with the packet, after his recent stellar performance. The court ruled in favor of Ganguly and held that the fame and popularity earned by him are his IP and can’t be commercially exploited in any manner by others without his consent.
Titan Industries Ltd. V. M/S Ramkumar Jewellers, CS(OS) 2662/2011 (Delhi High Court)
The court held “when the identity of a famous personality is used in advertising without their permission, the complaint is not that no one should not commercialize their identity but that the right to control when, where and how their identity is used should vest with the famous personality. The right to control the commercial use of human identity is the right to publicity.” In this case film, actors Amitabh Bachchan and Jaya Bachchan endorsed diamond jewelry range of brand name Tanishq. The advertisement was made by incurring huge sums of money and were to be used in advertisements in all media, including print and video. The defendant erected a hoarding that was identical to the plaintiff’s, featuring the same photograph of the celebrity couple that was displayed on the plaintiff’s billboard. The defendant had neither sought permission from the couple to use their photograph nor been authorized to do so by the plaintiff; the court held the defendant liable not only for infringing the plaintiff’s copyright in the advertisement but also for misappropriating the couple’s personality rights.
ICC Development (International) Ltd. v. Arvee Enterprises, 2003 VII AD (Delhi) 405
For the first time, in this case, the right of publicity was recognized as an independent right in India. The court further held that the right doesn’t extend to events, companies and corporations but is restricted to persons. The case addressed for the first time the misuse of advertising Cricket World Cup name by those who weren’t the official sponsors. “An individual may acquire the right of publicity by his association with an event, sport, movie, etc. However, that right is not inherent if made the individual famous, nor in the corporation that has brought about the organization of the event. Any effort to take away the right of publicity from the individuals to the organizer/ non-human entity of the event would be violative of Articles 19 and 21 of the Constitution of India – No persona can be monopolized. The right of publicity vests in an individual and him alone is entitled to profit from it.”
Sonu Nigam v. Amrik Singh (alias Mika Singh) & Anr, 372/2013(Bombay High Court)
In this case, the parties gave their consent to the organizers of the Mirchi Awards 2013, to show their photographs on the official posters of the event, in which they were performing. Mika Singh, to promote himself, displayed hoardings and posters, which were different from official hoardings and posters of the event, carrying huge pictures of himself along with smaller pictures of the other artists, including Sonu Nigam, without their consent and permission. It was contended that the said hoardings and posters gave an unjustified and incorrect impression to the public about the prominence given to Mika Singh as compared to the other artists. The Bombay High Court restrained the defendants from displaying the pictures of the Plaintiff without consent and ordered the defendant to pay damages.
Shivaji Rao Gaikwad (aka Rajinikanth) v. Varsha Productions, CS(OS) 598/2014(Madras High Court)
Popular actor Rajinikanth, sued Varsha Productions, to stay the release and screening of Hindi film Main Hoon Rajinikanth on the ground that the Production House used his name without receiving the prior consent of the actor, on the ground that any use/misuse of his name/caricature/image/style of delivering dialogue without his consent or permission would amount to infringement of his personality rights, as well as pass off. The court held that a prima facie case had been made and the case was decided in favour of the actor.
Amar Nath Sehgal v. Union of India
In this case, the Court laid down the essential remedies that an aggrieved party can seek for the misuse of the image, they are:
- The party could bring in a suit for violation of tort of privacy and seek compensation/ injunction
- The party can approach the court and contend that it’s an act of passing off or infringement
- The party can sue for breach of confidence with a request for injunction and damage
R. Raja Gopal v. State of Tamil Nadu, (JT 1994 (6) SC 514)
The Supreme Court recognized right of publicity in the form of right of privacy as follows: “the first aspect of this right must be said to have been violated where, for example, a person’s name or likeness is used, without his consent, for advertising – or non-advertising – purposes or for any other matter”.
The laws in force don’t permit the use of a celebrity’s name for a product or service without receiving the celebrity’s prior consent. Various courts have reaffirmed the same. Protection is sought through privacy laws, tortuous liability and intellectual property law. The name, image, and personality of a celebrity has a brand value which is associated with him due to his work. The commercial exploitation which derives an economic benefit are his right and no unauthorized person can misappropriate and unjustly benefit from the same.