This article is written by Vikalp Wange, from Maharashtra National Law University, Nagpur.
Table of Contents
Introduction
Sports has been a field which has had a very interesting journey, sports have been present since the barbaric ages and have been advancing since then. In the past ten-fifteen years, the way sports were seen has changed. In early stages sports were only seen by people who had passion for them and in-general people took it as a hobby, but with commercialization and the marketing industry peeping in, the whole scenario has changed. Leagues like Premier League, La Liga, Super Bowl, NBA (National Basketball Association), etc. have changed the whole game.
These leagues give sports personalities a very different status in the society. Jordan being registered as a brand in collaboration with Nike and David Beckham starting a company to manage his personality/publicity rights, players like David Beckham and Michael Jordan changed the whole game and brought a lot of different aspects to the field of sports. In recent times Cristiano Ronaldo, Lionel Messi, LeBron James, Roger Feddrer, etc. have changed the prospects in the field of sports. To protect these celebrities’ rights, the concept of Publicity Rights or Image Rights came in. They had added so much value to their name that people using their name and images in commercials, magazines, books, etc. could earn them a huge amount of profit and here is where Intellectual Property Rights come in. Using someone’s image or name without his permission can have major consequences. Owning a trademark or copyright of a name, sound, signature, image can protect a person’s rights when used without permission or in a wrong way.
In the past ten- twelve years, even India has become a rising country in the field of commercialization of sports. With the advent of Indian Premier League (IPL) in 2008, a lot of things changed. Even before 2008, their leagues were going on but were so much commercialized. IPL changed the whole concept and increased the commercial value of sports in India, in later stages various sports like kabaddi, badminton, football, etc started their leagues since then a lot of things have changed in India.
The rights to Publicity of celebrities are now being infringed on a routine basis, they are abused in many ways through misappropriation by others. The right to publicity and right to commercial use of their identity are constantly being infringed. Now-a-day’s even their privacy is encroached. Though it is understandable, being in the public domain brings in such problems where privacy is breached. Right to publicity originates from the right to privacy and other laws under Intellectual Property Rights.
Personality rights have never been taken as specific rights; it has been taken as implied part of Article 19 and 21 of the Indian constitution. Publicity Rights have never been part of the Intellectual Property Rights’, though a persons’ image and name can be saved through copyright and trademark and this is practiced in India majorly.
Sports and Intellectual Property Rights
Sports is a very interesting field which is going through a break through period, with lot of commercial aspect coming to every sport be it cricket, football, badminton or kabbadi, etc., about ten years ago only cricket, football and basketball had the privilege of becoming commercial but in current times all sports have got some or the other commercial prospects. With all the corporate intervention in the field of sports, there is a need of protecting the rights of a sports person, as the commercial viability should profit not only the corporate but also the player, as he/she has worked hard to reach there.
Intellectual property rights (IPR) could be a way to protect the rights of the professional players. IPR works on certain theories which have shaped it. These theories are Labour Theory, Personhood Theory and finally Economic Justification Theory.
The labour theory suggests that a person should reap the fruits of his own hard work, which is justified as the players work really hard to reach their position and earn their reputation. Unlike other celebrities, a sports celebrity is known for his good and not because of his lineage or controversies he was part of. A player should profit from his image so that he could continue his livelihood. There have been various examples in the field of sports, worked really hard but could not profit through it.
The personhood theory suggests that a person has a deep interest in his personality and property. Property can be internal as well as external that means a person’s personality is the main thing he carries with himself and if it is destroyed he would have no property left, just like slavery did. So every man has a right to his own personality even sports people do, their personality is what defines them as they have put in hard work to bring it up.
The economic justification theory claims that if a person is given a right of his/her personality they do work on it, this encourages them to spend time, money and effort on it. This is pretty true with sports personalities. Due to the personality they hold they have to continue to do the hard work to raise their bar and be more effective in the field.
This all proves that a sports personality has a deep relation with intellectual property rights. Furthermore, even the sports also have a deep relation with IPR, for example, every sports team registers its name as a trademark to protect it and to also stop its misuse. This makes the whole sports field well connected to IPR.
Let’s consider the example of Gareth Bale, one of the star footballers. He was transferred to the club Real Madrid; this was one of the biggest transfers with a record transfer fee of 85.3 million pounds. To compensate for such a big amount Bale had to give 50% of his image rights to the club so that they could earn revenue through it, which eventually helped in recovering the record transfer fees. This is a very common practice in Europe which has helped clubs and players to earn a good amount of revenue through their personality rights. Not just in football other sports have also started practicing this way.
This structure is still missing in India. Though some players such as Kapil Dev and Sachin Tendulkar have copyrighted their name and image but not much has been done. With more and more biographies coming in and commercial events developing, some steps should be taken in India as well.
Who is a Celebrity/Personality?
Personality rights are also known as celebrity rights. Here we need to understand who a celebrity actually is. Besides, it is also important to remember that celebrities have the sole right to exploit the value of being a celebrity.
Anyone can be said to be a celebrity – actor, author, artist, youtuber/vlogger/content creators, politician, athlete, musician, singer, sportsman, television personnel, a business executive and anyone who can capture public attention. Public perception is the most important criteria for determining whether a person is a celebrity or not. The word celebrity comes from a Latin word ‘celebritatem’ which means ‘the condition of being famous’.
The Indian Copyrights Act, nowhere defines ‘celebrity’ in it, but inference can be made from the word performer in Section 2(qq), though a performer is not always a celebrity and a celebrity may not be a performer all the time. A performer is any person who gives a performance a singer, a dancer, a footballer, an actor etc., Section 38 of the Act gives a special right i.e. performers’ right to any performer who appears or engages in any performance in relation to such performance and the right shall subsist until fifty years from the beginning of the calendar year next following the year which the performance is made. Clause 3 of the same section says that during the performance if anyone makes a copy, recording of the same is said to have infringed a performers’ right and it would be dealt under Section 39 of the Act. Well the problem comes in here the performance is protected but not the performer and his image in general and that is what is needed in the new era.
Jurisprudence behind Publicity Rights
During the nineties TV, newspapers, billboards, etc. were only the ways in which a product could be advertised and promoted. Since the early twenties, the introduction of the internet changed the whole system of advertisements and promotions.
This created a lot of issues in protection of rights of people; they could be a celebrity or even a normal person. Social media could make anybody a celebrity. So the personality rights had to be re introduced in some form. Now there is a need for refreshed personality laws in India and as well in the world.
For the first time personality rights were discussed in the USA by Louis Brandeis (Later known as Justice Brandeis of the Supreme Court of USA) and his law partner Samuel Warren in their article in 1890. This article introduced ‘Right to privacy’, also mentioning publicity in it. Yet the fundamental difference between these two laws was not defined.
In the year 1954 Melville B. Nimmer authored the second article which introduced the concept of ‘Right of Publicity’ which is also known as ‘personality rights’ around the world, this article gave a clearer picture of what this whole concept was.
Right to Publicity can also be linked to another legal scholar Dean William Prosser. Prosser divided the “amorphous collection of civil wrongs falling within the category called ‘invasion of privacy’” into four categories:
- Intrusion upon the plaintiff’s physical solitude;
- Public disclosure of embarrassing private facts;
- Placing the plaintiff in a false light in the public eye; and the plaintiff in a false light in the public eye; and
- Appropriation for commercial benefit of the plaintiff’s name or likeness.
These four categories made up Prosser’s “Four Torts of Privacy,” which is followed around the world. The fourth concept of this theory quite resembles the right to publicity in the current times, this helped right to publicity be established in the United States of America.
This could be seen as the jurisprudence behind the right to publicity around the world. The right to publicity has been known by various names around the world. The United Kingdom prefers to call it as Personality Rights and in the rest of Europe it is known as Image rights.
Right to Privacy and Right to Publicity
The Indian courts have accepted that there is such a thing as ‘Right to Privacy’ after the case of KS Puttaswamy and Anr. Vs Union of India and Other and it is part of the articles 19 and article 21. The right to publicity derives itself from right to privacy but has taken a different stance for itself and has moreover has become a property right.
The first difference can be the value goal they are trying to reach. Right to privacy tries to protect private information of an individual and the main goal of the right to publicity could be to avoid illegal commercial use of an individual’s image, likeliness, name, etc. without consent and benefit from it. Second would be, the way infringements work. In right to privacy, when personal information is used without consent it is seen as an infringement and when without consent commercial use is done it is seen as a tort. The third and last would be the consequence and relief would be different. Once right to privacy is breached or infringed it cannot be brought back to its former status so the way of relive could be cessation of the infringement, apology and compensation for moral damage. Whereas when right to publicity is breached you can ask for ban and compensation at the same time.
Some legal scholars like Samuel D. Warren and Louis Brandeis like to call Right to publicity as Privacy’s stepchild and Property’s adopted son. Due to this fact many courts have been confused over its application and have confused a lot of judges and attorneys around the world. The United States has been the major leader in creation of this right, though it is still not recognised directly as a right but judicial interpretation helps in the process of defining it.
Right of Publicity was coined by Judge Jerome Frank in 1953 in the case of Haelan Laboratories, Inc. v. Topps Chewing Gum, Inc. which for the first time mentioned that individuals possess a property right in their own image. Since 1953 there have been a lot of cases related to it. Various states of the United States have different views on it but still it is recognised around the states.
Finally in the case of Hirsch v. S.C. Johnson & Son, Inc., the Supreme Court of Wisconsin distinguished the right to publicity from right to privacy. The court indicated that the right of publicity “protects a property right, not only the right of a person to be let alone or to live his life in seclusion without mention in the media.” This is from where the right derived its place in the law.
Reasons to Permit Right of Publicity
To understand why there is a need for such a right, first we need to understand the elements of the right itself. So basically there are two elements of any claim which comes under the right, which are given below.
The elements of a Right of publicity claim include:
- Validity, The plaintiff owns an enforceable right in the identity or persona of a human being.
- Infringement,
- Defendant, without permission, has used some aspect of identify or persona [of the plaintiff] in such a way that plaintiff is identifiable from defendant’s use.
- Defendant’s use [of plaintiff’s identity or persona] is likely to cause damage to the commercial value of that [identify or] persona.
A sports personality, would definitely give arguments in favour of such a right. A celebrity or a sports personality would argue that they should be allowed the right to profit from their image as it is an outcome of a lot of achievements and efforts during initial years. An athlete would prefer to promote his talent through some specific endorsements and which match with his own values. Thus, giving such rights would protect the value of the sports personalities without tarnishing it and would not like to overuse it to lose marketability and depreciation in value.
Furthermore, a sports personality would not want to be associated with promoting a specific brand or product. Retaining such rights would help the sports personality control one’s commercial enterprise and would prevent consumers mistaking connection between the brand or product with the sports personality. This situation was in seen in India, in the unreported case of Sourav Ganguly v. Tata Tea Ltd., when Sourav Ganguly returned to India after the tour of England he found that his employer Tata Tea Ltd. were promoting their tea by offering it consumers an opportunity to congratulate him through a postcard which was included with their tea. Sourav Ganguly though being their employee of the company had not given consent or authorized the company to use his name. The court while granting relief to the sports personality held that fame and popularity constitutes intellectual property right (IPR).
The right of publicity has been used in the United States of America for a very long period of time so there have been many cases around it, some accepting it and some rejecting it. The very famous case related to sports could be seen in Tiger Woods in the year 1998. The case was fought between Tiger Woods’ exclusive licensing agent, ETW Corporation and Jireh Publishing. This case was about a painting titled “The Masters of Augusta”, created by Rick Rush and was published by Jireh Publishing. The painting was made to commemorate Tiger Woods’ victory at the 1997 Masters Tournament in Augusta, Georgia.
ETW Corporation sued Jireh Publication alleging trademark infringement, dilution of the mark and unfair competition and false advertising under Lanham Act popularly known as the Trademark Act. ETW alleged that it created unfair competition and deceptive trade practices under the Ohio Revised Code and unfair competition, trademark infringement and violation of Tiger Woods’ right of publicity under Ohio common law. It was held that there was no violation of right to publicity as Rick Rush’s art was protected under the First Amendment and that there was no violation of the Lanham Act.
The problem lies therein- there being no law created confusion, though it can been seen that artistic work is safe under the first amendment but this created confusion for the consumers and ETW Corp. would have made some authorised products available for the consumers and then there was Rick Rush’s painting could have harmed right of publicity of Woods as his image was being used for commercial purposes and he could not benefit from it. The extent of such harm cannot be easily determined.
Right to Publicity and its Relation with Sports
Generally, the scenario is that right to publicity is managed by a team that works for the sports personality. Like in case of Tiger Woods’, his licensing agent, ETW Corporation and his management, International Management Group (IMG), handle his career and claims related to right to publicity, etc. Similarly the famous football star David Beckham in 2019, hired a team specifically to manage his brand value and to control claims over it. This has been done by a lot of individuals in the sports fraternity nowadays as this protects their image and other kinds of rights.
The case becomes very different when it comes to athletes in team sports, who are still active. Leagues and team franchises retain the use of players ‘ names and likenesses to promote the sport, the league and the brands represented. Team athletes have many different marketing roles. The athlete plays the sport so he has a contract with a sports brand for merchandise like cleats, sneakers, etc., depending on the sport they play, further they are ambassadors of a city in which the team is located. Further the league also has some control over their publicity right and manage it with their franchise management, which helps them in promotion of the league and the franchise itself. The profits are shared between the two and the athlete gets his share from the franchise in the form of salary and match fees.
Like for example NBA, has a very different approach to manage its product and profits from the talent of its stars. The contract which is done between the player and the team generally includes a group licensing agreement. The agreement helps the league to use player likenesses to promote the league, its teams and the players themselves. The proceeds earned are shared equally by NBA teams.
A similar contract is done by the Indian Cricket League (IPL) franchises and the player’s part of the franchise. But the only difference is that there is an additional contract with the BCCI, the board which manages the Indian cricket in India. Even the IPL teams and the league benefit from the players and there is an equal share of profit between them.
These are the contracts which deal with the publicity right in USA it is explicit that the publicity right is given to the franchise and the league and on the other hand in India there is no specific mention of the publicity right, but the way the contracts are done in IPL as well show that there is a similarity in the contracts.
Rights of Publicity in India- Trends and Development
India has been lagging far behind its western counterparts, in recognising the right of publicity. The jurisprudence of publicity right is not developed due to lack of any ruling by the Supreme Court on the subject. Legislations on the same are not available due to the lack of jurisprudence. Even the celebrities’ have been very un-attentive in protecting their right of publicity. However, there have been few instances and cases that have come about throwing light on the publicity rights.
The Emblems and Names (Prevention of Improper Use) Act, 1950, is legislation passed by the parliament, to protect few dignitaries’ names and symbols from unauthorized usage by prohibiting the names given in its schedule. Such a mark is prohibited to be registered as a trademark as an absolute ground for refusal of registration. However, the above mentioned law only protects celebrities and symbols of national importance. The right of publicity, thus, can only be inferred from some of the IPR’s in India, owing to lack of specific reference in any of the laws. Thus, India does not have adequate protection for the right of publicity.
ICC Development (International) Ltd. v. Arvee Enterprises, is the only case in India which specifically acknowledged the right of publicity. The Delhi High Court observed that the right of publicity is developed out of the right of privacy. The Court held that such a right exists solely in an individual or it exists in any indicia of the individual personality like his name, personality trait, signature voice etc. which a person may obtain due to his association with an event, sport, movie, etc. However, the decision also stated that no such right can vest in any event or which made a person famous. The court held:
The right of publicity has evolved from the right of privacy and can inhere only in an individual or in any indicia of an individual’s personality like his name, personality trait, signature, voice, etc. An individual may acquire the right of publicity by virtue of his association with an event, sport, movie, etc. However, that right does not belong here in the event in question, that 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 he alone is entitled to profit from it.
The High Court of Delhi has been a pioneer in recognising the right of publicity, after the case of ICC Development (International) Ltd. v. Arvee Enterprises, the High Court in the case of D.M Entertainment v. Baby Gift House and Ors also recognized the right of publicity.
Daler Mehndi incorporated D.M Entertainment, to manage his publicity rights, including commercial endorsements and other related rights. Baby Gift House is a Delhi based company which owns toys and gift shops in Delhi. The company started to sell dolls that were allegedly imitations of, and identical to, the likeness of Daler Mehndi. In addition to having Daler Mehndi’s features, the dolls could make moves and sing lines of his composition.
Aggrieved by Baby Gift House’s activities, D.M Entertainment filed a case in Delhi High Court, alleging that the importation and sale of the dolls were an infringement of Daler Mahendi’s right to control the commercial exploitation of his image. The High Court observed that Daler Mahendi’s identity was used for commercial gains. The high court determined that defendants sold the dolls and thus exploited Mehndi’s publicity value of the artists’ image in the product. Therefore, because Daler Mehndi’s celebrity persona was copied by a commercial product without authorization, the high court held that Daler Mehendi’s right of publicity had been infringed.
The Court further noted that the right of publicity can, in a jurisprudential sense, be located within the individual’s right and autonomy to permit or prohibit the commercial exploitation of his likeness or some attributes of the personality. However, the court noted that in a free and democratic society where every individual’s right to free speech is assured, over-emphasizing a famous person’s publicity rights tends to chill the exercise of such an invaluable democratic right. Thus parodies, caricature and the like, that tend to mimic aspects of individuals’ personality trait, might not constitute infringement of an individual’s right of publicity.
In Sonu Nigam v. Amrik Singh, a suit related to defamation and infringement of personality right was filed by Sonu Nigam against Mika Singh, the Bombay High Court imposed a heavy fine upon the defendant clearly stated that “no third person should make any commercial profits by using celebrity images unless they have consented to it.” The court further observed that imposing heavy fines would act as a deterrent against those who intend to exploit the personality rights of celebrities.
Recently, the Delhi High Court in an order passed in Rajat Sharma v. Ashok Venkatramani, upheld the publicity rights and also recognized rights over the show “Aap Ki Adalat”. Holding advertisement as prima facie illegal, the court ordered against Zee Media to stop issuing advertisement in print media, which contain the name of Rajat Sharma. The court recognized Rajat Sharma’s right in his public persona and identity as a television host, the court viewed that the use of the statement in the advertisement amounts to false advertising and it tarnished the image of Rajat Sharma.
There have been some other cases as well but they do not exactly use the jurisprudence of right of publicity in the judgment. The main problem lies here; there is no nationwide recognition of the right. Also, High Court’s judgments just have a persuasive value, rather than binding on other High courts. In the absence of binding precedent by the Supreme Court or statutory provisions conferring the right of publicity, any claim of the right’s violation remains undefined and ambiguous in most states.
Conclusion
We can conclude from the above discussion that, that does need a legislation regarding Right of Publicity. Intellectual Property Right is not sufficient enough to protect a celebrities’ personality, the above mentioned cases provide for the same. The right of publicity is a sui generis, which cannot be positioned under any IPR law in a wholesome way.
There are many countries which have recognized such rights, the United States is the pallbearer, though it has no proper legislation but through court’s jurisprudence the right has evolved which has been discussed in the paper. Even in the UK, the right has been recognized through right to privacy and tax laws. The rest of Europe, like France and Germany have already legislated special statutes for the right of Publicity.
Currently the right of publicity is safeguarded under the Constitution of India, as the right originates from the right of privacy which was declared as a fundamental right in the case of KS Puttaswamy and Anr. v. Union of India and Other. But the whole problem lays here, in the United States the right of publicity seen as property law and if the same practice is used in India, it would be contradicting the constitution. Thus there is a need of separate legislation for the same.
Sports’ is a very lucrative market in the current times it is around three percent of the world trade. A professional athlete’s right of publicity should be secured as it has come from the hard work they have done over the year and they have every right to exploit it and to also control who could exploit it. The Indian sports market is expanding at a very fast rate, so is making the professional players more vulnerable to exploitation. India is in a need of legislation to protect its celebrities or even that it could be recognised as a part of the right of privacy, so that till the point a legislation is made, there is still some protection for the celebrities in India.
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