Office Location

Delhi:

E-5, 2nd Floor, Defence Colony
New Delhi - 110024
Tel : 011-24336744

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Mumbai:

Office No. 1410, 14th Floor, Maker Chamber V, Nariman Point, Mumbai
Tel : +91 22-22873499

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Gurgaon:

Level 18, One Horizon Center, Golf Course Road, DLF Phase 5, Sector 43, Gurgaon 122002, India
Tel : +91 124 668 8146 / +91 124 668 8147

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Mumbai (Entertainment and Media Practice)

Office No. 213, 2nd Floor, A-wing, Crystal Plaza, Andheri Link Road, Andheri (W), Mumbai.
Tel : 022-62360762

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Mumbai (Corporate and Transactional Practice)

909/A, Capital Building, Bandra Kurla Complex, East Mumbai- 400098

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Bangalore:

21/2, 1st Main Road,
Opp Indian overseas Bank,
Gandhinagar,
Bengaluru - 560009

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Kanpur:

77A, Cantt., Kanpur - 208004

Character Merchandising / Personality Rights / Celebrity Rights

Over the last few years, ‘Character Merchandising’ has grown tremendously in the field of advertising and marketing, especially for promoting sales.  Be it the character of “Gabbar” from the movie Sholay or any other character for that matter.   Here the legal question that arises is whether the advertisers can be given a free hand to usurp the popularity of a character or that of a celebrity and if not, whether this ‘Right of Publicity’ has any legal recognition. 

While English Courts are of the view that popularity of a character per se would give an inherent right to prevent un-authorized use of its hard-earned reputation, the Indian law on this aspect is at quite a nascent stage.

In UK, ‘Character Merchandising’ is defined as an adaptation or a secondary exploitation of the essential personality features of a particular ‘character’, either in terms of goods or services, and thereby creating a desire to acquire those goods and services.   The term “character” here includes the real persons or the fictional characters from literary or cinematographic works, cartoons, etc.

In the field of movies, the actor may have a reputation of his own, and at the same time, he may very strongly represent a character as is portrayed by him in the film; in such an event, both the Commercial Value of the real person as a celebrity AND that of the character so portrayed can be exploited.   Thus, in such cases, there exists both Personality Merchandising and Image Merchandising.

We are aware that in case of Personality Merchandising, the features like the name, image and voice of the celebrity are used for marketing the products / services, as for example, in case of celebrity like Amitabh Bachchan.  Image Merchandising on the contrary involves use of the fictional characters, like that of James Bond and Spider-man for selling the merchandises.

The scope of Character Merchandising is so broad that it cannot be protected within the existing framework of IP laws.  While the trademark law may protect the name or the particular image, but it may not protect the reputation of a person or of a fictional character from unauthorized commercial exploitation; the Copyright law on the other hand may protect the artistic creation but not the image of the character.

US Approach:
In USA, it is the Privacy Laws that take precedence in protecting a Celebrity against any such Character Merchandising, for the Courts here have taken a view that a Celebrity would have monopoly over the commercial value of his image and for that matter, any individual may have a monopoly over his character; and any misuse / unauthorized use of any such image / character for the purposes of marketing of products/services would create mental distress / anguish on the individual concerned. On this premise, the US Courts award heavy damages on any attempt of un-authorized use of character.  This certainly is not the best approach to protect Celebrities.

Canadian Approach:
In Canada, the Courts are of the view that an individual has an exclusive right for marketing - for gain - his personality / image / name.  These Courts recognize the Tort of Misappropriation of Personality which was developed in Ontario in the case of Krouse Vs Chrysler Canada Ltd.  It was held in this case that there was tortious liability as the appropriation of personality amounted to “an invasion of his right to exploit his personality by the use of his image, voice or otherwise to damage the plaintiff”. The Court thus awarded heavy damages against the defendants. 

English Approach:
Traditionally, the use of another’s name in UK is a grievance for which English Law affords no redress, for English law has never moved towards creating rights over name and/or protection of personality features.  Due to this, the Celebrities in UK seek protection against un-authorized commercial exploitation under Tort of Libel, Breach of Contract, Tort of malicious falsehood and Breach of Confidence.  As such, an un-authorized commercial exploitation on one’s reputation would redressed as a Tort of passing off.  The watershed case in this regard was the Eddie Irvine’s case where the UK Courts held that a Celebrity Claimant in a false endorsement case could seek protection under the Tort of Passing Off if he could establish that –

  • He had sufficient goodwill and/or reputation; and
  • The action of the Defendant has given rise to a false message (amongst significant sections of the market) that the relevant goods / services are endorsed, recommended or approved by the Celebrity Claimant;

It may be noted that both the Endorsement Business and the Character Merchandising are rampant in UK; and both are facing the threat of false representation and unauthorized exploitation.  The new law developed in the Eddie Irvine’s case was however applied only to the Endorsement Cases and NOT to the Cases involving Character Merchandising.  Thus, the UK law too has a lot to grow before Celebrities in UK are ensured of a full, complete and easily accessible protection. 

Indian Law:
The concept of Character Merchandising is known to India since ages, as we have traditionally been selling / marketing goods & services in the names of our Gods and Goddesses – thus exploiting the commercial value of religion.  As such, the need to seek protection against unauthorized Commercial Exploitation of “characters” or “images of celebrities” in India never arose until recently.  This concept of “Protection of Personality Rights” has now been in great demand.

Personality Rights in India are the “identity” related rights of the well-known personalities under the new IP law of 1999. The “identity” of an individual refers to all distinct, recognizable elements which make up his particular persona, including the individual’s physical appearance, image or likeness, name, voice, signature, style, photograph, gestures, recognizable attire, look and facial features. A public persona generates an enormously lucrative brand equity, instantly encashable in the form of endorsement contracts. So stupendously lucrative are these commercial endorsements that often the earnings of a Celebrity personality from these commercial endorsements far exceeds his gains from the professional pursuits, whether in sports or acting.  

The Indian Trademarks law of 1999 affords adequate protection to the names of a character / a famous personality – as these can be registered as a Word Mark.  Thus, the commercial value of a name can be protected in India under the new Trademarks Law of 1999, especially if any such “name” is a Well-Known mark.

[The term “Trade Mark” is defined under section 2(zb) as a mark capable of ………, while the term “Mark” is defined under section 2 (m) as a device, brand, ……., name, signature, ………. ] 
Based on this 1999 law, any unauthorized use of a registered name, by another person for promoting his goods / services shall amount to an infringement, provided the said Registered Name has a reputation / goodwill in India.   

However, this new Trademark law does not afford any protection in respect of ‘Personality Rights’ per se or the ‘Image Rights’ of a Character. Even the Copyright Act affords no protection in this regard.  Lately, this aspect of law in India has developed through Court Orders, few of which are as under.

The ICC Development vs Arvee Enterprises Case has been the landmark case where Courts have recognized the rights in respect of ‘Publicity’ per se.  In this case, the Delhi HC had held –
“The right of Publicity has evolved from the right of privacy and can inhere only in an individual or an indicia of an individual’s personality like his name, personality trait, signatures, voice, etc. An individual may acquire the right of ‘Publicity’ by virtue of his association with an event, sport, movie, etc.  The Right of Publicity vests in an individual and he alone is entitled to profit from it.”
“Any effort to take away the Right of Publicity from the individuals to the organisers (Non-Human entity) of the Event would be violative of Article 19 and 21 of the Constitution of India.  The Right of Publicity vests in an individual and he alone is entitled to profit from it.  For example, if any entity was to use the name of KAPIL DEV or SACHIN TENDULKAR’s name / persona / indicia in connection with the World Cup, without their authorization, they would have a valud and enforceable cause of action.” 

In the Star India Pvt. Ltd. Case, the Courts have held –
“The Character which has acquired a form of Independent life, and public recognition for itself, independent of its original arena, has a commercial value of its own, and in all such cases, either the creator or the character may claim a right to prevent others from commercially exploiting such reputation.”

The above is a great stride in recognizing Personality Rights. Personality rights are unique rights and they have gained importance in today's world because of the increased number of Celebrity endorsements. A single image of a Celebrity greatly affects the reputation of a product he or she is endorsing and vice-versa. The Indian law may not specifically recognize Personality Rights, for they are generally invoked through ‘Right to Privacy’ guaranteed by the Article 21 of the Indian Constitution or through ‘Right to Publicity’ inferred from Article 19 of the Indian Constitution. Thus, ‘Personality Rights’ as on date, are protected either as right to privacy or as the property of a persona.
The term 'Personality Right' is also referred to as the 'Right to Publicity' and it relates to Celebrities or famous people. In other words, "it is the right to control and profit from the commercial use of one's name, image, likeness, etc., and it prevents unauthorized appropriation of the same for commercial purposes".

Other cases on Personality Rights in India:
In the Sonu Nigam Defamation Case (against Mika Singh), the Hon’ble Bombay HC was of the view that –
“No third person should be commercially profited by using images of the Celebrities without their consent, exploiting the Personality Right of the Celebrities and it further observed that heavy fine so imposed (on Mika Singh) would act as a deterrent to people who intend to engage in such acts.”

In Titan Industries Ltd. Case, the Court held -
"When the identity of a famous personality is used in advertising without his permission, the complaint is not that no one should not commercialize his identity, but that the right to control when, where and how his identity is used should vest with that famous personality. The right to control commercial use of human identity is the Right to Publicity."

In the case involving Super Star Rajnikanth in respect of the "Main hoon Rajnikanth Case, the Chennai HC held –
“………The superstar in his application has stated that, "A large section of the public across India is, therefore, likely to be misled into viewing such project/film on the mere belief that the said project/film has been approved by their matinee idol. It is to prevent such widespread hysteria and undue confusion amongst the public, besides maintaining his personal integrity; he has chosen to abstain from approving or supporting any project based on his personal self/personality. Besides, such film based upon Rajinikanth's name, image or likeness would be a gross violation of his privacy, and would subject him to needless embarrassment as he does not have any control over the content of any unauthorized or unapproved project/film."

The Hon’ble High Court of Chennai was pleased to grant an interim injunction against the release of the said film.
In the Case of DM Entertainment vs Jhaveri, where Daler Mehndi, a famous Indian composer and performer, brought an action against the Defendant following the registration by him of the Domain Name ‘dalermehndi.net’, the Delhi High Court was pleased to restrain the Defendant from using the trademark DALER MEHNDI, thus recognizing the fact that an entertainer’s name had trademark significance.

CONCLUSION
India has finally started to acknowledge the concept of Personality Rights and/or the Celebrity Rights. The increasing number of celebrity endorsements and other activities that result in commercial gain demand for stringent enforcement of these Personality / Celebrity Rights. As explained above, US laws have recognized the “Right to Publicity” as a distinct right under the head "Celebrity Rights". Its high time India too adapts a distinct legal status for these vital and ever growing arena of “Personality / Celebrity Rights” so that strict action can forthwith be taken where the image and/or the status of these well-known personalities is jeopardized.