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“While one person may build a home, another knit a sweater so also may a third create a valuable personality, all three must be recognised by the law as ‘property’ protected against trespass and theft.”
A person laboriously constructs a celebrity persona through a combination of intellectual, emotional and physical efforts. The good-will and reputation earned by them needs legal protection. Unless there are important countervailing public policy considerations, the law should interfere to protect all kinds of encroachments misappropriating this personality rights. Publicity rights assumes an increasing role of importance and finds itself at the centre of several contracts and negotiations in the entertainment industry.
In Edison v. Edison Polyform Mfg. Co, the New Jersey Court of Chancery, stated:
“if man’s name be his own property… it is difficult to understand why peculiar cast of one’s features is not only one’s property, and why its pecuniary value, if it has one, does not belong to his owner, rather than to the person seeking to make unauthorised use of it.”
[Image Source : Shutterstock]
The jurisprudence of publicity or personality rights is at nascent stages in India. The courts, particularly the Delhi High Court and the Bombay High Court have been reasonably active in recognizing and enforcing this right. This significant legal concept of personality rights has again been brought to the limelight through an interim order of the Delhi High Court in Amitabh Bachchan v. Rajat Nagi and Ors.
BRIEF FACTS OF THE CASE
The case pertains to a suit filed by the veteran Bollywood actor, Amitabh Bachchan seeking protection of his publicity rights against the fake Kaun Banega Crorepati (KBC) lottery scam and myriad of other frauds where his name ‘Amitabh Bachchan/Bachchan/BigB/AB’, image, voice and personality attributes were being used to deceive the public.
Plaintiff was aggrieved by defendant’s unauthorized use of his celebrity status to promote their own goods and services, without his permission or authorization and alleged violation of his ‘publicity rights as a celebrity’ as had been recognized in Titan Industries Ltd. v. Ramkumar Jewellers. The Delhi High Court Single Judge Bench of Navin Chawla, J. granted ad-interim ex-parte injunction in favour of the Actor restraining the defendants in rem from infringing the actor’s personality rights.
The bench led by Justice Navin Chawla opined that plaintiff had made out a prime facie case in its favour for the grant of an ad-interim ex-parte injunction, noting that defendants were misusing plaintiff’s celebrity status for promoting their own activities, without plaintiff’s permission or authorization causing irreparable harm and injury to defendant’s reputation.
The court found balance of convenience in favour of the plaintiff and against the defendants. The court directed the telecom department and Ministry of Electronics & IT to pull down all links/websites that infringe upon Bachchan’s attributes. The court has also injuncted the registrants of the domain names ‘www.amitabhbachchan.com’ and ‘www.amitabhbachchan.in’ from creating third-party rights on them and directed telecom service providers to block access to all phone numbers used by the defendants to circulate the infringing messages.
The Court granted an ad-interim ex-parte injunction in favour of Amitabh Bachchan, restraining defendants from infringing Amitabh Bachchan’s publicity or personality rights for any commercial or personal gain.
The order is a noteworthy judgment and the Court’s obiter dictum will help in contouring the legal protection accorded to personality rights in India.
Personality Rights in India have their origins in other common law jurisdictions. It is the right of any celebrity or an individual to navigate the commercial use of his or her own persona or identity. The court in the case of Phoolan Devi, has held that a celebrity could protect his/her life and image as a “constitutional right”. 
Personality rights have found their way in foreign jurisprudences to a notable extent. Relief was granted to a famous comedian film maker when a look alike was used to advertise a chain of video rental stores. In the court’s view there was a real likelihood of consumer confusion. The court stated:
“A celebrity has a similar commercial investment in the “drawing power” of his or her name and face in endorsing products and in marketing a career. The celebrity’s investment depends upon the goodwill of the public, and infringement of the celebrity’s rights also implicates the public’s interest in being free from deception when it relies on a public figure’s endorsement in an advertisement.”
RIGHT TO PUBLICITY
The term, “right of publicity” is said to have been coined by Judge Jerome Frank in the 1953 case, Haelan Laboratories Inc. v. Topps Chewing Gum Inc., devising the traditional right of the publicity doctrine, while recognizing the property right in a baseball player’s photograph that was used on trading cards.
Publicity rights, simply put, are those which protect the interests of celebrities in their images and identities. The publicity right is a property based doctrine and its justification as a form of intellectual property lies in the Lockean labour theory.
Delhi High Court, in Titan Industries Ltd. v. Ramkumar Jewellers, has laid down the following guidelines for establishing the burden of proof by the plaintiff in cases of infringement of the right of publicity:
- The plaintiff has a valid and enforceable right in the identity or persona of himself.
- The person may be easily recognized in public. For this purpose, plaintiffs identifying features may itself be sufficient to create a strong inference of identifiability.
- Direct or circumstantial evidence of the defendant’s intent to trade upon the identity of the plaintiff, from which identifiability can be presumed.
In Waits v. Frito-Lay Inc. in an advertisement, the imitation of voice of Tom Waits, a well-known American singer was used in an advertisement without the singer’s permission. It was held that the right of publicity can be infringed by the imitation of a distinctive performing persona associated with the plaintiff. The American jury awarded damages of $2.6 million to the plaintiff in this case.
RIGHT TO PRIVACY
The ‘right to privacy’ was conceptualised for the first time by Warren and Brandeis who traced the right to privacy to an analogous term : individual’s inviolate personality. In Indian jurisprudence, the right to publicity stems from right of privacy, as evidenced from R. Rajagopal v. State of T.N.
TRADEMARK AND PASSING OFF
The ability to license the commercial value of one’s persona is an intellectual property right. This is because a celebrity’s persona acquires trade mark significance. Subject to the requirements of registration, certain attributes of a person may be subject to trade mark registration. For example, the name, the signature, the appearance, etc. can be registered as trademarks. Stage names of groups such a Beatles, Rolling Stone, etc. can also be registered along with their logos.
In a number of occasions, Indian Courts have accorded the right of publicity of famous persons in the same light as protection afforded to well-known trademarks. For instance, in DM Entertainment v. Jhaveri, a famous Indian singer, composer and performer, Daler Mehndi, sued a party that had registered the domain name ‘dalermehndi.net’. The Delhi High Court prohibited the defendant from using the mark and domain name, thus recognizing the fact that an entertainer’s name may have trademark significance.
In Tom Waits v. Frito-lay Inc., (In this case, singer Tom Wait’s voice was imitated in a commercial of tortilla chips without his consent, he succeeded in an action of misappropriation of his personality), voice was considered as integral to the personality of the celebrity and thus was protected by the courts against misappropriation.
In Irvine v. Talksport Ltd., Formula I driver’s picture was used by the defendant on one of its brochure covers, removing the mobile phone that the plaintiff was holding and replacing it with a radio with the words ‘Talk Radio’. The plaintiff brought an action for passing off, the Court held that the plaintiff did have a substantial reputation or goodwill and the defendants had created a false message and so were liable. It was held that if the actions of the defendant produced a false message which would be understood by the market audience to mean that these goods have been endorsed or recommended by the plaintiff, then the plaintiff can succeed in passing off, there was no requirement for the plaintiff and defendant to be engaged in a common field of activity,
In WIPO case, Julia Fiona Roberts v. Russell Boyd, the respondent had a website with the domain name ‘www.juliaroberts.com’, on which he used to run an online auction. The second level domain name in <juliaroberts.com> was identical to the complainant’s name. The complainant alleged that the respondent’s use of the domain name infringes upon the name and trade mark of complainant and clearly causes a likelihood of confusion. The Dispute Resolution Panel of WIPO decided that registration of her name as a registered trade mark or service mark was not necessary and that the name ‘Julia Roberts’ has sufficient secondary association with the complainant that common law trade mark rights do exist.
The interim order in Amitabh Bachchan v. Rajat Nagi and Ors. paves the way in contouring evolution of according legal protection to personality rights in the country, with respect to an individual’s right to personality and publicity, rights under copyright and common law rights.
The discussion put forward contemplates the scope of trademark law to accord protection to celebrities as the current Indian intellectual property regime seems insufficiently equipped to deal with this issue and its consequences.
A cloud of scepticism and chaos still envelops the concept of publicity rights. The right of publicity is often found to be at conflict with the right to freedom of speech and expression. The notions of “famous” or “well-known” around which the idea of the right is mostly built, leaves another question as to how the criteria for determining these aspects shall be set. There has arisen a strong need to develop more lucid statutory language for enforcing the publicity rights in the country, keeping in view the myriad instances of celebrity’s persona being misused.
- Thomas Mc Carthy, The Rights of Publicity and Privacy cited in Madow, Private Ownership, supra note 3, at 183.
- T Vidya Kumari, Celebrity Rights as a Form of Merchandise — Protection Under the Intellectual Property Regime, 9 J. Intellec Prop Rights 120 (2004)
- Barnett, “The Right to One’s Own Image, Publicity and Privacy Rights in the United States and Spain”, 47 AM. J. COMP. L. 556 (1999).
- Edison v. Edison Polyform Mfg. Co., [67 A. 392 (NJ Ch. 1907)
- Amitabh Bachchan vs. Rajat Nagi and Ors. S (25.11.2022 – DEOR) : MANU/DEOR/195516/2022
- Titan Industries Ltd. v. Ramkumar Jewellers, 2012 SCC OnLine Del 2382
- Phoolan Devi v. Amarnath Kapoor, 1994 SCC OnLine Del 722 : (1995) 57 DLT 154
- Allen v. National Video Inc., 610 F. Supp. 612, 630 (S.D.N.Y. 1985).
- Haelan Laboratories v. Topps Chewing Gum [ 202 F2d 866 ]
- W. Fischer III, “The Growth of Intellectual Property : A History of the Ownership of Ideas in the United States, in” Intellectual Property Rights : Critical Concepts in Law.
- Publicity Rights of Celebrities : An Analysis Under the Intellectual Property Regime, (2011) 6 NSLR 85 at page 89
- Titan Industries Ltd. v. Ramkumar Jewellers, 2012 SCC OnLine Del 2382
- Waits v. Frito-Lay Inc 978 F.2d 1093, 9th Cir. (1992).
- Warren, L. Brandeis, “The Right to Privacy”, Harvard Law Review, Vol. IV, No. 5, December 1890, p 196
- Rajagopal v. State of T.N., (1994) 6 SCC 632 : AIR 1995 SC 264
- Acme Circus Operating Co. v. Kuperstock, 711 F.2d 1538 (11th Cir. 1983).
- DM Entm’t v. Jhaveri (1147/2001).
- Irvine v. Talksport Ltd.  2 All ER 881.
- Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210
 J. Thomas Mc Carthy, The Rights of Publicity and Privacy cited in Madow, Private Ownership, supra note 3, at 183.
 T Vidya Kumari, Celebrity Rights as a Form of Merchandise — Protection Under the Intellectual Property Regime, 9 J. Intellec Prop Rights 120 (2004)
 S. Barnett, “The Right to One’s Own Image, Publicity and Privacy Rights in the United States and Spain”, 47 AM. J. COMP. L. 556 (1999).
 Edison v. Edison Polyform Mfg. Co., [67 A. 392 (NJ Ch. 1907)
 Amitabh Bachchan vs. Rajat Nagi and Ors. S (25.11.2022 – DEOR) : MANU/DEOR/195516/2022
 Titan Industries Ltd. v. Ramkumar Jewellers, 2012 SCC OnLine Del 2382
 Phoolan Devi v. Amarnath Kapoor, 1994 SCC OnLine Del 722 : (1995) 57 DLT 154
Allen v. National Video Inc., 610 F. Supp. 612, 630 (S.D.N.Y. 1985).
 Haelan Laboratories v. Topps Chewing Gum [ 202 F2d 866 ]
 W.W. Fischer III, “The Growth of Intellectual Property : A History of the Ownership of Ideas in the United States, in” Intellectual Property Rights : Critical Concepts in Law.
 Publicity Rights of Celebrities : An Analysis Under the Intellectual Property Regime, (2011) 6 NSLR 85 at page 89
 Titan Industries Ltd. v. Ramkumar Jewellers, 2012 SCC OnLine Del 2382
 Waits v. Frito-Lay Inc 978 F.2d 1093, 9th Cir. (1992).
 S. Warren, L. Brandeis, “The Right to Privacy”, Harvard Law Review, Vol. IV, No. 5, December 1890, p 196
 Rajagopal v. State of T.N., (1994) 6 SCC 632 : AIR 1995 SC 264
 Acme Circus Operating Co. v. Kuperstock, 711 F.2d 1538 (11th Cir. 1983).
 DM Entm’t v. Jhaveri (1147/2001).
 Irvine v. Talksport Ltd.  2 All ER 881.
 Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210