This article is written by Arkadyuti Sarkar who is pursuing a Diploma in Intellectual Property, Media and Entertainment Laws from LawSikho.

Introduction

According to Jim Morrison, the 20th-century rock icon, the most important kind of freedom is in being what one really is. Although the context was different, Morrison’s quote reiterated the significance of the rights held by an individual to protect their individuality and also the associated traits and characteristics. From here the notion of ‘personality rights’, as defined in the legal parlance, originates.

For example, what would happen if a company puts up a product along with the pictures of Shahrukh Khan and starts earning profits from it, while Mr. Khan has no wind of such a product and its selling? Or suppose someone starts selling the autograph of Sachin Tendulkar in exchange for monetary consideration without obtaining consent from Sachin. What if a book is published on Daniel Radcliff without obtaining his consent and the book sells like a hotcake in the market while being the subject of the book he does not receive any royalty or profit?

All these questions can be understood and answered after gaining knowledge about the personality and publicity rights that are associated with a celebrity or a renowned person. We will then also be able to appreciate if such rights come within the purview of the intellectual property laws.

Publicity Rights

As defined by the International Trademark Association, the right of publicity is an intellectual property right safeguarding against the misappropriation of the name, likeness, or other indicia of personal identities- like nickname, pseudonym, voice, signature, likeness, or photograph of a person, for the purpose of commercial benefit, by any other person.

According to John Locke, the commercial value of an individual’s identity should be allocated to such a celebrity individual as such value in the first place is the result of the celebrity’s labors. The theory of unjust enrichment consideration treats identity misappropriation as equivalent to theft of goodwill. The publicity right is purported towards providing an economic incentive for an individual’s enterprise, creativity, and achievement.

Over the last few years, publicity rights have been considerably recognized in the sphere of intellectual property laws. Sometimes these rights are also regarded as the celebrity rights for their association with the personality of an individual. They are definable as an individual’s right to control the commercial exploitation of his/her identity. A celebrity’s public image has huge intrinsic value and also has the involvement of tremendous monetary amount. Therefore, it becomes highly imperative for a celebrity to safeguard his/her right in order to refrain others from exploiting it or acquiring unauthorized gains from it.

In R. Rajgopal v. the State of Tamil Nadu (Auto Shankar Case), the petitioners attempted to prevent the respondents from interfering with the publication of an autobiography of a prisoner named Auto Shanker, in Nakkheeran. The convict was tried for 6 murders and was awarded a death sentence. While in jail, Shanker wrote his autobiography and expressed his wish that the autobiography is published in the petitioners’ magazine. Before the publication of the autobiography, Nakkheeran announced the publication. Prison officials, i.e. the respondents then coerced Shanker in writing to the petitioners requesting them to refrain from the publication. The petitioners then filed the suit for preventing the respondents from violating the magazine’s and the prisoner’s Freedom of Expression.

The Supreme Court of India ruled that a magazine had a right to publish an autobiography written by a prisoner, even without his consent or authorization. The Court explained that it was important to strike a balance between the freedom of the press and the right to privacy, and found that the state and its officials, i.e. the respondents do not have the right to impose prior restraints on the publication of materials that may defame the State.

In Shivaji Rao Gaikwad vs. Varsha Productions, the plaintiff brought this suit against defendant for using the Plaintiff’s name/image/caricature/dialog delivery style in the upcoming project/film having the title ‘Main Hoon Rajinikanth’ in any manner whatsoever amounting to infiltration of the Plaintiff’s personality rights.

The High Court of Madras observed that the personality right vests solely on those persons, who have achieved the celebrity status. The infringement of the publicity right does not need any proof of falsity, confusion, or deception, especially when the celebrity is identifiable. The Court further ruled that if any person uses the name of a celebrity without the obtainment of his/her permission, the celebrity is entitled to file an injunction, if the said celebrity is easily identifiable by the use of his name by the others. Also, on making a momentary assumption that the impugned movie is not a biopic of the Plaintiff, since the name mentioned in the title of the impugned movie is identifiable solely with the Plaintiff, who happens to be a celebrity and not with any other person, the Defendant is not entitled to use the said name without the permission of the Plaintiff. Thereby, a restraining order was granted against the Defendant from using the title “Main Hoon Rajnikanth”.

The connection between the Publicity Rights and the Right to Privacy

Right to privacy is those rights that allow an individual in maintaining the privacy of their life. It permits them in protecting the exploitation of their personality by some other person without their consent. The Supreme Court of India has recognized this right to privacy as a fundamental right under Article 21 of the Indian Constitution. In K.S Puttaswamy v. Union of India, the Supreme Court observed privacy to be an intrinsic recognition of heterogeneity, of an individual’s right to differ and also to resist the tide of conformity and create a solitary zone. Privacy safeguards the person from the searchlight of publicity in the private and personal matters of their life. It covers the right to publicity as an integral part of a celebrity’s right to life.

The right of publicity originally developed from the right to privacy. The privacy right doctrine in the USA has its traditional connection with the names of Samuel Warren and Louis Brandeis. They jointly published the article titled ‘The Right to Privacy’ in Harvard Law Review in 1890. Since the publication, the right to privacy has changed into the right to be left alone. William Prosser, a famous US scientist, further enunciated the following categories, included within the personal right to privacy: safeguard against intrusion into one’s private affairs; avoiding the disclosure of one`s embarrassing private facts; protecting against publicity placing a person in a false light in the public eye; and appropriate remedies, usually for commercial advantage, of one`s name and likeness.

Legal provisions pertaining to publicity rights

The publicity rights in India have been recognized time and again by the judiciary, however, there is no expressed mention under any present statute. However, the violation of the publicity right can be deemed as unfair trade practice, misappropriation of intellectual property, and also as an act of passing off.

Nevertheless, publicity right in India can be derived from various statutes.

The Trade Marks Act, 1999

As per Section 14 of the Act, if a trademark registration application is filed suggesting a relation with any living person or with any person who deceased 20 years prior to the date of filing such application, then the Trademark Registrar may need the applicant to provide the consent of such living person, or the consent of the legal heirs of the deceased, and in absence of such consent, the Registrar may deny the registration. Thus, under the Trade Marks Act, 1999 an individual cannot register a trademark associated with a celebrity either alive or dead unless the consent from such celebrity or his/her legal heir is provided to the applicant, as the case may be. Moreover, using a celebrity’s name as part of a domain name can also be restricted under the Act.

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In Gautam Gambhir vs D.A.P & Co. & Anr, the popular Indian cricketer had argued that his name being protectable under the trademark law given to his well-known public status, was being used as a tag line for the restaurant chain owned by the respondents. Therefore the cricketer alleged that the name was confusing the public as to the his association with the said chain of restaurants amounting to deception, and that his personality rights are being illegally violated.

The Delhi High Court while dismissing the injunction suit filed by the cricketer, ruled that there was nothing on record to verify the allegation of the plaintiff as there was no representation of the Cricketer to the public, be it his picture, photo or even poster, both in the defendant’s restaurant as well in its social media pages, so as to support the plaintiff’s claim. In fact the Defendant has posted his own pictures for the purpose of associating his “own” identity to the restaurant. Hence, the Court held that neither did the cricketer’s name was commercialized, nor was there any loss of goodwill in his field, and thus went on to dismiss the suits and the applications.

The Copyright Act, 1957

According to Section 38 and Section 57 of the Copyright Act 1957, pertaining to the rights of a performer and the moral rights of an author respectively, are enforceable for protection from the unauthorized use of such performer’s or author’s marketing rights and their reputation. Moreover, the photograph, image, painting, or other such derivatives of an indivdual may be protected under the Act.

Although copyright ownership over a photograph may be an issue as the photographer will have the copyright over the photograph he/she has clicked, other attributes, like an individual’s signature, may be protected under this Act.

In ICC Development (International) Ltd. vs. Arvee Enterprises and Ors, the plaintiff argued that the commercial “identity” or “persona” of ICC Events vests totally and exclusively on the plaintiff and that they are the owners of the publicity rights in all commercially valuable ICC Cricket events. The defendants were wrongfully exploiting the “persona” and “identity” created by the plaintiff, purported towards making unlawful gains, while stressing that the right of publicity is not only protector of publicity values of human beings but also includes the publicity values in non-living objects that are made popular through efforts.

The Delhi High Court while denying the argument of the plaintiff, observed that although all forms of appropriation of the property of legal entities are sufficiently protected by the laws, including Copyright Law, and imposing personality rights on a corporate would defeat the rudimentary concept of “persona”.

The Emblems and Names (Prevention of Improper Use) Act 1950

This Act up to an extent rendered protection from the unauthorized use of the names of certain dignitaries of national significance and institutions specified under the Act, for commercial purposes, in absence of the governmental permission.

The Competition Act 2002

As per the provisions under this Act, any unauthorized use of an individual’s name or likeness suggesting to the consumer that such individual is associated with any product endorsement that is untrue or misleading and that can be restricted.

Ownership of Publicity Rights

A publicity right is an abstract property with intrinsic monetary value owned by a celebrity or an individual having notoriety and reputation. Therefore, an individual may allow another in using his/her name or other personality indicia for commercial gains through a license or a permitted user agreement. The individual may be entitled to restrict the manner and use of his/her name or other personality indiciators by making specific provisions with regard to the agreement making such transfer.

As there exists no statutory provision or precedent in India, mentioning the duration of the right of publicity of a celebrity. The right of publicity is considered to last at least for a lifetime of such a celebrity, and sometimes even after his/her death, relying on the commercial value associated even after the death. For the lack of clarity, the term of the right may be discretionary upon the court.

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Post-mortem Personality Rights

With respect to post mortem publicity rights, there is an absence of a concrete provision that expressly specifies whether the publicity rights of a celebrity will exist after their demise. It was observed in Germany in 1999, the daughter of Marlene Dietrich sued for damages because of the illegal use of her mother`s image in an advertisement of a musical about Marlene Dietrich`s life. The court adjudged in favor of the plaintiff in this case, permitting post-mortem protection of the publicity right. However, the term of such protection is limited to a decade.

Resembling, in France, there exists uncertainty regarding the existence of the post mortem publicity rights. The first precedent to recognize the post-mortem availability of the image right was made in the Raimu case, where the widow of the famous French actor attempted to prevent an advertising company from using the image of her deceased husband. The court ruled in favor of the plaintiff, asserting that the patrimonial aspects of the right of the image are descendible.

Post mortem rights to one`s image are also permitted in Spain. In pursuance to the Organic Law, a right is enforceable by the living family members at the time of the death of the individual. In the absence of any legal heirs, the Ministry of Justice has the power to enforce a person`s image right for 80 years after their death.

In India, however, a very recent case with regard to the right of privacy and publicity came up when Deepa Jayakumar, former Tamil Nadu Chief Minister Jayalalithaa’s niece, filed a suit against the director and the producer of the film titled “Thalaivi” and against the producer of the web-series named “Queen”. She filed a suit praying for a stay order on the release of these projects alleged to be based on her aunt’s life. This was as a measure for preventing the revealing of personal information of Jayalalitha in the public domain. It was argued by the plaintiff that the directors of the movie and web series did not obtain the consent of the family before releasing the two and this violates their right to privacy.

In a similar case, Makkal Tholai Thodarpu Kuzhumam Ltd. vs. Mrs. V. Muthulakshmi, also known as ‘The Veerappan case’. Only the reading of the order of the Madras High Court is determinant that the immediate family members of a deceased person would inherit such deceased person’s right. The order failed to provide any conclusion on the post-mortem personality rights of Jayalalithaa. There is absence of any statute pertaining to the post-mortem rights of an individual in India which makes it unclear as to whether there would be an inheritance of these rights after the individual’s death.

Infringement of Publicity Rights

In absence of any specific statute, infringement of the right to publicity is undefined under Indian law. However, any unauthorized use of a celebrity’s persona, image, or information amounts to the infringement of his/her right of publicity and can therefore challengeable as a violation of his/her publicity rights. As per the provisions of the trademark and the copyright law, an infringement suit is fileable either by the licensor or the licensee or together by them, relying on the terms and conditions of such agreement. The defenses under trademark law and copyright law may be applicable on the right of publicity. For example, the media may publish any information pertaining to any individual if such information is a matter of public interest and concern.

Remedies Against Infringement

The following remedies are available in the event of an infringement of the right to publicity.

1. The owner may institute a civil suit for unwarranted interference to the right as this is a civil wrong. The right to privacy is also enforceable through filing of a writ petition or through a action against tort.
2. The owner may file a defamation suit against any individual making or publishing any imputation that concerns the owner of such right, knowing or having reason to believe that such imputation will damage or harm the reputation of the owner.
3. The owner may bring a civil or criminal suit, as defamation is both considered as a civil wrong as well a criminal offense in India.
4. A passing-off action is also fileable against a third party attempting to create an false association between its product and a celebrity through unauthorized representations that such celebrity is engaged in the endorsement of the product.

An injunction is granted by the court on satisfaction of the following 3 conditions:

1. a) that there exists a prima facie case in the plaintiff’s favor;
2. b) that the balance of convenience is in the plaintiff’s favor; and
3. c) that irreparable loss or harm will result to the plaintiff on refusal of the claimed injunction. 

Apart from the injunction, damages are awarded by the Indian courts in the form of actual damages, damages caused to goodwill and reputation, and sometimes in the form of punitive damages.

Conclusion

From the comprehensive analysis of the above paragraphs, it can be concluded that even in the absence of any expressed provision under the Indian statutes the judiciary has regarded the publicity rights to be intrinsic within the domain of intellectual property rights. Therefore, in event of their violation, a civil action can be brought for protection of the publicity rights.

However, in regards to the post-mortem existence of the rights to publicity, the Indian judiciaries are yet to recognize and enforce them. Moreover, given to the state of statutory condition of the publicity rights, a legislation is highly necessary because mere precedents for their enforcement looms in uncertainty.

References

1. https://www.obhanandassociates.com/blog/personality-rights-in-india/
2. https://www.bananaip.com/ip-news-center/india-and-right-of-publicity/
3. https://www.mondaq.com/india/trademark/905188/publicity-rights-and-its-scope-in-intellectual-property-laws#:~:text=Publicity%20rights%2C%20also%20referred%20to,commercial%20purposes%20without%20obtaining%20consent.&text=There%20have%20been%20efforts%20to%20recognize%20publicity%20rights%20as%20an%20independent%20right.
4. http://www.anaassociates.com/wp-content/uploads/2016/10/Right-of-Publicity-under-Indian-Law.pdf

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