This article is written by Ananya Agarwal, pursuing a Diploma in Intellectual Property, Media, and Entertainment Laws from Lawsikho.com.
There is no doubt that famous personalities live very differently. They thrive on retention value which means that they can be recognized easily from their voice, signature, pictures, or even likeness. Although this comes with certain perks, it makes them vulnerable to imitation. Here, the right to publicity comes into play. This right is recognized as part of the intellectual property right of a famous personality. It essentially aids a personality in legally protecting their personality from being imitated or used without authorization. It refers to the right to control the use of one’s name, picture, or likeness and to prevent another from using it for commercial benefit without consent. Coupled with the right to privacy, as is constitutionally guaranteed, the two rights form personality rights. This article seeks to examine personality rights in the context of sportspeople by analyzing the landmark case ICC Development (International Ltd.) v. Arvee Enterprises & Anr., 2003 (26) PTC 245.
Facts of the case
The facts of the case are such:
- The plaintiffs were organizers of the ICC World Cup event to be held in South Africa in 2003. For this purpose, the plaintiff created a distinct logo and a mascot ‘Dazzler’.
- The plaintiff had also filed applications for registering trademarks ‘ICC Cricket World Cup South Africa 2003’ and the logo and mascot for ‘Dazzler’.
- Subsequently, the defendants started a sales promotion strategy where they used slogans such as ‘Philips: Diwali Manao World Cup Jao’, inserting a picture of a ticket with a made-up seat and gate number saying ‘Cricket World Cup 2003’.
- Due to this the plaintiff filed a suit for injunction to own and control all commercial rights including media, sponsorship, and other intellectual property rights pertaining to ICC events and pleaded that ICC events have a personality of their own.
Issues involved in the case
The issue that arose with respect to personality rights was three-fold:
- Whether the defendants were misrepresenting their association with the plaintiffs and the World Cup.
- Whether the defendants sought to unlawfully derive commercial benefit from this misrepresentation.
- Whether the defendants deprived the sponsors of the world cup of enjoying the exclusivity of the rights granted to them.
Arguments advanced by both parties
The plaintiffs essentially made a four-fold claim with respect to the defendants’ alleged infringing actions:
- The defendants were wilfully misrepresenting their association with the plaintiffs during the world cup by their marketing. In doing so, they were aiming to derive undeserved commercial benefit from such association. This was an infringement of the personality rights of the plaintiffs
- The defendants were engaged in the same line of business as the plaintiffs and thus their actions must be construed as malafide and dishonest with their intention being to bring disrepute to the World Cup and its sponsors.
- The ticket conditions expressly forbid distribution of tickets by the defendants unless authorization for the same is given by the plaintiff. Their actions can be seen as a case of ambush marketing.
- The defendants deprived the sponsors of the world cup of enjoying the exclusivity of the rights granted to them.
In lieu of the claims made by the plaintiffs, the defendants justified their actions in the following manner:
- The defendants stated that the words ‘World Cup’ were used merely in a generic manner as is evidenced by the fact that they did not associate it with the prominent logo associated with the plaintiffs nor did they use the entire phrase ‘ICC Cricket World Cup South Africa 2003’.
- The slogan in the advertising only implies that the winner may receive a ticket or a tour package from a travel company to see the World Cup event. Their advertisement in no way creates a likelihood of confusion in the minds of a reasonable person that they are the sponsors of the event.
- The defendants had no intention of creating any association, relationship or affiliation with the plaintiff.
- The “World Cup” is a generic word and has been used to refer to several other international sporting events. It is also not protected by any international treaty or domestic law unlike the word “Olympic” and its logo, which is protected under the Emblems and Names (Prevention of Improper Use) Act 1950.
- With respect to the ticket conditions, the defendants claimed that they booked through the sole authorized agent of the plaintiff and no ticket conditions were brought to their notice then.
Analysis of the case
Before analyzing the judgment given by the court in this landmark case, a basic analysis of the relevant concepts must be undertaken.
Concept of celebrity and personality rights
Personality right recognizes the commercial value of a celebrity persona and protects the proprietary interest of the celebrity in the profitability of their public image. In India, this right is not statutorily guaranteed but courts have taken cognizance of this right and set up a jurisprudential framework for grievance redressal. Personality rights are extended primarily to celebrities. ‘Celebrity’ originates from the Latin word ‘celebritatem’, the condition of being famous. Essentially, personality right covers within its ambit physical features of the celebrity, for example, the face, unique hairstyles, etc. It also includes the name of an actor, the voice of an actor, photographs, casual video footage, or even the signature of the celebrity. Unique movements specific to celebrities, for example, flipping off the spectacles like Rajnikanth may also be considered as a personality trait. Summarily speaking, it includes all those traits and characteristics of a person that is central or ancillary to him/her being a celebrity.
Therefore, the biggest requirement for the extension of personality or celebrity rights is public perception, that is, whether a person has captured public attention or not. The individual will have to establish a certain level of fame and public recognition to claim personality rights. This implies that personality rights are extended to sportspeople as well.
In the arena of sports
In Europe, organizations have used player’s image and personality rights to generate huge revenues. In September 2013, Real Madrid bought Welsh footballer Gareth Bale for a world record transfer fee of £85.3 million (US$105.3 million). Bale in return assigned 50% of his image rights to Real Madrid, which eventually helped the club to recover the massive investment by using his image rights for the sale of merchandise and other product endorsements. This further helps in deciding wages for players too, with players such as David Beckham incorporating companies for their name and image which aids in tax planning. Players such as Sachin Tendulkar have taken the protection of their image one step further by trademarking their name or domain names for their websites.
An avid football fan must know of Jose Mourinho, manager of England’s Manchester United. In a recent example of a dispute over personality rights, an issue arose as to the appointment of Jose Mourinho between Manchester United and Chelsea. Chelsea wanted the use of his personality rights halted by United as they held a number of EU trademarks for his name, signature, and various other goods, and also owned his image rights. Finally, the issue was solved when United relented and paid Chelsea an undisclosed amount (estimated to be over a million pounds) for the acquisition of Mourinho’s personality rights.
Concept of passing off
Passing off is essentially when a person sells a product by misrepresenting it to be someone else’s. It results in a company piggybacking on the goodwill of another company. The underlying principle is encapsulated in Perry v. Truefitt is that no man should sell a good under the pretence it is of another man. Further, in S. Syed Mohideen v. P. Sulochana Bai, the court held that passing off is a wide remedy maintainable for diverse reasons other than that of registered rights. In a suit for passing off the petitioner must remember that proving goodwill means establishing that the general public associates the mark with the product. In the case of Micolube India Ltd. v. Maggon Auto Centre, the court held that in a suit for passing off, it must be proven by the petitioner that the consumer was deceived and misled into buying the contended product and that this product is associated with the products of the first user of the mark. Notably, a trademark can be registered only if the mark has acquired a secondary meaning i.e., it has some sort of distinctiveness in its connection to the product being sold. In the case of Toyota Jidosha Kabushiki Kaisha v. M/S Prius Auto Industries Limited, it was held that a suit for passing off depends on proving the prior user having goodwill.
So how does infringement of personality rights give rise to a suit for passing off? This is so because violating someone’s publicity rights is often done in the form of misrepresentation which leads to the damaging of the personality’s goodwill which in turn causes him/her economic and reputational loss.
Analysis of judgement
ICC Development v. Arvee Enterprises was the first judgment in the Indian legal regime dealing with the question of publicity and personality rights. From an understanding of personality rights and their interplay with sports, as explained above, it is important to look at the principles laid down in this judgment with respect to the same. The plaintiff claimed that the defendants had passed off their association with the World Cup and thus infringed their personality or publicity rights. However, the court disagreed on this count. They held that personality rights are those arising from the right to privacy. While deciding the matter, the court came to the conclusion that “publicity right has evolved from the right to privacy and can be in here only in an individual or in any indicia of an individual’s personality like his name, personality trait, signature, voice, etc…. Any effort to take away the publicity right from the individuals to the organizer of the event would be violative of articles 19 and 21 of the Constitution of India. The publicity right vests in an individual and he alone is entitled to profit from it.” The case, contrary to the practice in the USA, blurred the distinction between the right to privacy and publicity rights. Therefore, the courts held that the Right of Publicity does not extend to non-living entities. An individual may acquire the Right of Publicity by virtue of association with an event; however, that right does not apply to the event in question, nor the organizer behind the event.
Further, with regard to passing off, the defendant does not use any goods or services of the plaintiff but merely creates a slogan using the word ‘World Cup’. The court even expanded on the fact the term ‘World Cup’ was generic and non-exclusive owing to the fact that it is the dictionary term for an event or tournament in which several countries participate. The intent of this is to solely convey the message to people that those who purchase their products stand a chance to win the ticket for the world cup. No reasonable man was convinced of or under the misimpression that the defendants were sponsors of the event. Due to this, no form of reputational or economic loss is incurred by the plaintiffs. Since, here, no element of unfair competition or wrongful appropriation exists, the defendants cannot be held liable for passing off, as the basic principle of passing off is not met.
This landmark judgment was one of its kind owing to the fact that it was the first Indian case to recognize personality rights. A step in the right direction, it was, however incomplete. Due to a growing trend of aggressive and moment marketing, the need for the protection of personality rights becomes more highlighted. In India, the concept of personality rights with respect to sportspersons is still in the nascent stage. For instance, the Indian government had permitted the use of a picture of John Terry, a famous footballer who was the captain of England’s national team, on cigarette packets. With Sachin Tendulkar assigning his image rights for his biography, Playing It My Way, more and more celebrities and sportspersons are following the trend. There is a need for greater exposure, which will lead to more commercial opportunities, which in turn leads to a host of legal issues. Although protection is offered under Article 21 as an offshoot of the right to privacy, the author believes that due to the growing complexity of this issue, a codified law would be better suited.
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