PERSONALITY RIGHTS IN INDIA: PROTECTION UNDER IP
Author: Akella Poornima
Symbiosis Law School, Pune
ISSN: 2582-3655
ABSTRACT
The protection of celebrity rights under Intellectual Property has become a new ray of hope for safeguarding the unethical commercial use of posters, images, sounds (or any similar medium) of famous people for monetary benefit or good business. In this era of globalization, celebrities flaunt their popularity and face value to extract benefits out of them. This luxury is a remunerative value of their hard work and is not available for an unethical free use. There have been rampant instances in the past where their voices, faces, names, photographs have been used for advertising with no permission or acknowledgment. This paper is a modest attempt to highlight such flaws and gaps in policies, its exploitation, the rights and remedies of such celebrities, its position in today’s world, and the scope and development in the field. The paper suggests about benefits of its own against exploitation and ensuring its control in the public domain. This contribution is a comparative review of present norms and a criticism against some dogmatic and practical problems.
KEY WORDS
Celebrity rights, intellectual property rights, right to privacy, publicity right, merchandising right, moral right, personality right, right of passing off
INTRODUCTION
In the contemporary era of today’s world where opportunities and accessibilities have soared high in the sky, it is very difficult to provide a traditional definition of a celebrity. In a very general manner, it can be said to get settled with ‘anybody who is famous or deemed to be famous’. ‘Popularity’ of a particular person is a contributive analysis to term anybody as “a celebrity”. The perks of being famous are lucrative and profitable. The biggest gain is that their status is often publicized by media. But this popularity has its own limitations as well.
In such a world where IT boomed over in the past decades, people have started gaining popularity overnight. Whether it is Facebook, YouTube, physical banners, posters, or pictures on food items we purchase; there is steep exploitation of celebrity rights which we neglect through naked eyes. Such association itself upon various means enables the advertisers to extract economic value out of their intangible assets. This misappropriation of their personas and reputation is, therefore, needed to be controlled and judicially utilized with proper acknowledgment and consent. There is a process through which reputed merchandise or advertising companies use the image and reputation of such celebrities for generating their monetary benefit. A certain amount of fees is to be paid for being legally able to get a license to do so.
Who is a celebrity?
A celebrity is a person who, through a profession or a calling incites a legitimate public interest by doing something, through his affair or character etc. He has his own accomplishment, fame and is a ‘public personage’. [1] In the present scenario, anyone who has become famous is termed as a ‘celebrity’ and therefore the list of it has become vast and never-ending. He could be an actor, author, artist, dancer, musician, politician, etc. It is important to note that celebrities can exploit the face value and stardom of their being a celebrity. They have a sole right to do so. [2]
A famous case of “Martin Luther King Jr Center for Social Change v. American Heritage Products Inc[3] provides one of the initial judgment which tends to interpret the term ‘celebrity’. It states that this term should be interpreted in the broader way possible in such a sense that it tends to set within itself a set of people, who by profession, practice or behavior encompass more than the traditional categories of movie actors, rock stars and ball players.[4]
What are celebrity rights? Types of celebrity rights
“According to Locke’s theory, “everybody is entitled to the fruits of their labour, and to prevent those from reaping without sewing. This theory has much appeal to the celebrity industry as it facilitates a celebrity in protecting their persona where they have expended time, effort and investment in constructing their celebrity persona”
The attributes that these celebrities portray in films, other platforms, and their code of conduct become highly attractive and the public become such addicted to them that they try to copy it for pleasure and fondness. Hence it is important that these attributes of such celebrities are protected under “personality rights”. This protection will ensure their distinctiveness from person to person.
The rights enjoyed by celebrities are a bundle of rights including publicity rights, reproduction rights, distribution rights, rental and lending rights, making available rights, personality rights, privacy rights, and so on. But broadly, these rights can be classified under three major categories, namely, personality rights, publicity rights, and privacy rights.
Types of celebrity rights.
Image Rights
“Image Rights” practice a notion that those who have earned a distinctive personality through hard work, only have a right to use it in any manner. It has numerous rights under it like rights over the use of the celebrity’s still, moving and animated images, name, signature, recorded voice and catchphrases, and associated iconic acts, logos, trademarks, and brands. Image rights are legally defined in some countries and in others, like the UK, are recognized less formally but are sufficiently accepted to form the basis of contracts, securitization, structuring, and tax planning. Often one needs to file and protect one’s claim under more common-law methods such as trademark, copyright, or “passing off” regimes.[5]
Some celebrities in the U.S. and elsewhere have resorted to obtaining a trademark registration for their image, signature, and other representations. This federal protection gives them the right to sue infringers for misuse. It also ensures that no one can profit from the use of their likeness without a license. Doing so could easily result in a lawsuit[6].
One of the biggest arguments behind commercial companies to take such celebrities on their product advertisement is that they know that the celebrities’ face value will fetch them more attention from the public compared to any other ordinary person. On the other hand, celebrities understand the importance of their image and limit the commercial gains to involve moral aspects such as reputation and honour.[7]
Privacy Rights
‘Right to be alone’ is a private right and it is existential throughout the life of a person. [8] often it is seen and experienced that the usual public take deep interest in the celebrity’s life which disturbs such celebrities and hey find it difficult to balance between profession and personal life.
In Cohen v Herbal Concepts Inc[9], a picture of the plaintiff and her daughter was used on the label of a cosmetic product without their consent. The defendants argued that the faces of the two individuals were not identifiable in the photograph. The court however, accepted the statement of the plaintiff’s husband and awarded damages to the plaintiff in recognition of her privacy rights.
In the case of Barber v Times Inc, a photographer took pictures of Dorothy Barber during her delivery. Ms. Barber filed a suit of ‘invasion of privacy against Time Inc for unauthorized and forceful entry into her hospital room and for photographing her despite her protests. Ms. Barber was successful in her suit and the court while awarding damages of US$ 3000 opined: ‘In publishing details of private matters, the media may report accurately and yet – at least on some occasions – may be found liable for damages. Lawsuits for defamation will not stand where the media have accurately reported the truth, but the media nevertheless could lose an action for invasion of privacy based on similar factual situations. In such instances, the truth sometimes hurts.’ Therefore, in such cases, the remedy is available to celebrities either in the form of an action for ‘invasion of privacy’ or in the form of assertion of their ‘right to privacy’.[10]
Publicity Rights
Publicity right is ‘the inherent right of every human being to control the commercial use of his or her identity.’[11] It is also called merchandising right i.e., a right to exploit the economic value of the name and fame of an individual. To claim this right, it is necessary to establish that fame is a form of merchandise. Hence, if someone uses the fame of a celebrity to promote his goods it would be termed as an unfair trade practice, misappropriation of intellectual property, or an act of passing off.[12]
In Midler v Ford Motor Co & others[13], the advertising company wanted to use a song by Bette Midler in a commercial for Ford cars. The license for the song itself was available but Ms. Midler turned down the request for permission to use her version. The Agency then contacted Ula Hedwig, a singer who had been a back-up vocalist for Ms. Midler and asked her to sing the song for a new recording with the instructions ‘to sound as much as possible like the Bette Midler record’. Ms. Midler sued when the commercial was aired on television. The defendants argued that they were doing it in compliance with the Civil Code (Section 3344) because they had not used the ‘name, voice, signature, photograph or likeness’ of Ms. Midler rather they had used the voice of Ms. Hedwig. The court while stating that Section 3344 did not repeal the common law on privacy and publicity, and arguing that the public right of living people was also one of the property, held that the common law right of publicity protected against ‘an appropriation of the attributes of one’s identity’. The court also held that the defendants by using a sound-alike in these circumstances had clearly sought commercial association with ‘an attribute of Midler’s identity’. The right of publicity, therefore, grants entertainers or other public figures exclusive control over the commercial exploitation of their names, likenesses, or other aspects of their personae. However, laws pertaining to publicity or merchandising rights of celebrities are still in a fairly nascent stage, especially in India. Further, even as courts in various foreign countries have adopted different approaches to justify this right, no uniform justification has crystallized yet. Such a right is nonetheless, distinct from the right against ‘invasion of privacy’ or right against ‘adverse portrayal of one’s personality’. Prior to sound and visual recording process, a performer possessed personality right only in his or her performance, which included right of publicity, right to voice, right to likeness, and right to privacy. But the inventions of recording technology enabled fixation of performances, leading to the problem of bootlegging (unauthorized recording of live performances). Further due to progress in animation, it is now possible to create convincing humans, computer-generated look-alikes of performers or actors including deceased film stars. A real danger lies in the unauthorized imaging of celebrities and subsequent digital manipulation to create new images and film footage of the actor. The use of manipulated images of celebrities in inappropriate sites has been a constant source of confusion and cause for defamation.[14]
LIABILITIES AND REMEDIES
Celebrity rights may be protected using trademark law, copyright law, and passing off action. Any Provision in IP laws in India infringement of a performers’ non-property or recording rights will, therefore, amount to a breach of statutory duty.[15]
Trademark
Trademark registration has a two-fold significance as far as the rights of celebrities are concerned. Firstly, trademark registration of any aspect of a celebrity’s personality is indicative of the fact that the celebrity is open to the authorized assignment or licensing of his or her personality for merchandising purposes in the class of goods and services for which registration has been sought. Secondly, the celebrity obtains a means of defending those aspects of their personality against unauthorized use. Unlike action under the tort of passing off or the Trade Practices Act 1974, trademark registration is unique in providing a prospective form of protection for celebrity personality.[16] In India, celebrities and commercial partners can obtain some protection from trademark law but such protection may be limited in scope. Section 2(1) of the Indian Trade Marks Act, 2000, allows registration of any ‘sign capable of distinguishing goods and services of one person from another, any word (including personal names), design, numeral and shape of goods or their packaging’ as a trademark. Courts in India have accorded protection to film titles, characters, and names under trademark laws.[17] The first case that dealt with character merchandising in India was Star India Private Limited v Leo Burnett India (Pvt) Ltd, but jurisprudence is still emerging and character merchandising is an area yet to develop in India. [18]
Copyright
There is not much clarity as to what aspects of celebrity rights may be protected under the Copyright Act. In Sim v Heinz & Co Ltd, the court said that copyright is neither granted to voice, likeness nor other identifiers of a persona. Copyright gives exclusive, although, limited rights of protection and allows celebrities to authorize reproduction, creation of a derivative image, sale or display of, say, a commissioned photograph of themselves by others.[19] To pursue an action for copyright infringement, an individual must be able to show ownership of the copyright in the image and copying of that image. In the context of celebrity photographs, the biggest problem celebrities encounter is their lack of ownership in the photograph being exploited. In the case of books involving celebrity authors, any adaptation, if original, nevertheless can get protection under copyright law. The Indian Copyright Act, 1957 provides protection to sketches, drawings, etc., which fall within the category of artistic work. Section 14 of the Act grants exclusive right to authorize others to reproduce the work in any form, including conversion of a two-dimensional work to three-dimensional works and vice versa. The Courts have extended this protection to fictitious characters that fall under the category of artistic work. [20]In the case of Raja Pocket Books v Radha Pocket Books, a popular character of children’s comic book, Nagraj-the Snake King, was deemed to be protected under copyright law. However, no copyright is granted to the name or image of the celebrity in India.[21]
Passing off Action
The action of passing off is relevant in cases of personality merchandising where a person’s name, likeness, or performance characteristics are misused. In general, a passing-off action is a remedy against the injury to the goodwill or reputation of a person caused by misrepresentation by another person trying to pass off his goods or business as the goods of another. An action in passing off may lie for any unauthorized exploitation of a celebrity’s ‘goodwill’ or ‘fame’ by falsely indicating endorsement of products by the celebrity. Similarly, the ‘wrongful appropriation of personality’ could amount to passing off as the celebrity could be said to have a proprietary right in the exclusive marketing for gain in his personality[22]. Indian law recognizes personality rights only when the character or the person has independently acquired public recognition. In the Mirage Studios v Counter Feat case (Ninja Turtle Case)[23], Browne-Wilkinson VC, after referring to the Australian cases of Children’s Television Workshop v Woolworths (NSW) Ltd [24]and Fido Dido Inc v Venture Stores (Retailers), was of the opinion that the law as developed in Australia was sound. He said that passing off would apply in a case, where the public is misled with regard to a feature or quality of goods sold. In the Ninja Turtle case, the first plaintiff was the owner of the copyright in drawings of fictitious humanoid characters known as ‘Teenage Mutant Ninja Turtles’, and part of their business was to license the reproduction of these characters on goods sold by others. The first defendant made drawings of humanoid turtle characters similar in appearance to the first plaintiff’s characters, utilizing the concept of turtles rather than the actual drawings of turtles. In this case, the court granted an interim injunction against the defendant. [25]In Hogan v Koala Dundee, the claimant, who was the writer and star of the film ‘Crocodile Dundee’, brought an action against two tourist shops that sold clothing and other accessories that were ‘of particularly Australian nature’. The claimant’s complaint was that the defendants had used the name ‘Dundee’ and had also used an image of a Koala bear which, like the hero in the claimant’s film was dressed in a sleeveless shirt, wore a bush hat with teeth in the band, and carried a knife. In this case, the court granted relief on the basis of ‘wrongful appropriation of a reputation or more widely wrongful association of goods with an image properly belonging to an applicant’. Similarly, in Hogan v Pacific Dunlop, the claimant advertised shoes by referring to a particular scene in the film Crocodile Dundee. Here, the court said that misrepresentation must involve the use of the image in question to convey the existence of a commercial connection between the plaintiff and the goods and services of the defendant, which was not the case. [26]In Henderson v Radio Corporation Pvt Ltd, the claimants were professional ballroom dancers. The defendants produced a record ‘Strictly for dance’ in which they used a picture of the claimants in the cover illustration. The claimants argued that this amounted to passing off. The court held it as the wrongful appropriation of personality and professional reputation of the plaintiffs. Apart from these remedies today, invasion of privacy lawsuits are covered in insurance policies under the category of ‘advertising injury’[27]. The term ‘advertising injury’ covers defamation including libel, slander and product disparagement, infringements of copyrights, trademarks, slogans, and advertising ideas or a style of doing business, and may include other violations such as the unauthorized use of a celebrity’s name, likeness, voice or image. A violation of a right to privacy is also covered under such policies of insurance as either an advertising or personal injury[28].[29]
CONCLUSION
India has not developed in terms of “personality rights” yet. This is still considered as secondary rights or privileged rights. It must be understood that more than a privilege, it is a property right. The economy and monetary benefit occurring out of it are earned from years of hard work and labour. The litigation in this aspect as well needs to see a dynamic change in the coming era. Overall, to conclude, it can rather be admitted that “celebrity rights” still stand at a wide unexplored area under IP rights. Under a constitutional regime with liberal judicial interpretation, we should expect a drastic change and broader scope of this topic with proper recognition of this right as a property right.
[1] CELEBRITIES’ AGONY: LOCATING THE PUBLICITY RIGHTS IN THE EXISTING IPR FRAMEWORK, written by Prakash Sharma & Devesh Tripathi (file:///C:/Users/HP/Downloads/SSRN-id3430422.pdf)
[2] White v Samsung Elec Am Inc, 971 F.2d 1395, 1397 (9th Cir 1992), cert denied, 113 S. Ct. 2443 (1993).
[3] Martin Luther King Jr Center for Social Change v American Heritage Products Inc, 694 F.2d 674 (11th Cir 1983).
[4] Ibid 1
[5] Article by Kelvin King & Raymond Weisner (https://www.ipwatchdog.com/2018/05/04/image-rights-valuable-intellectual-property/id=96506/)
[6] Article – (https://txpatentattorney.com/blog/what-are-image-and-personality-rights/)
[7] https://www.law-right.com/should-personality-rights-be-protected-by-intelectual-property/
[8] Louis Brandeis D & Warren Samuel D, The right to privacy, Havard Law Review, 4(5)(1890), http://groups.csail.mit.edu/mac/classes/6.805/articles/privacy /Privacy_brand_warr2.html (11 January 2010).
[9] Cohen v Herbal Concepts Inc (1984) 63 NY.2d 379.
[10] Ibid1
[11] Keller Bruce P, Condemned to repeat the past: The reemergence of misappropriation and other common law theories of protection for intellectual property, Harvard Journal of Law & Technology, 11 (2) (1998) 401
[12] http://www.legalserviceindia.com/article/l139-Celebrity-Rights.html
[13] Midler v Ford Motor Co & others (1988) 849 F.2d 460 (9th Cir).
[14] https://www.lexisnexis.com/community/casebrief/p/casebrief-midler-v-ford-motor-co-365221482
[15] Ibid1
[16] Black Hilary May, The role of trademark law in the protection of celebrity personality, Media & Arts Law Review, 7 (2) (2002) 105, 106.
[17] Titus & C Advocates 2008, India guide: Character merchandising in India, http://www.asialaw.com/Article/ 1970665/Channel/16681/India-Guide-Character-merchandiingin-India.html
[18] Star India Private Limited v Leo Burnett India (Pvt) Ltd (2003) 2 B C R 655.
[19] Sim v Heinz & Co Ltd [1959] 1 WLR 313 1959.
[20] Prather M, Celebrity copyright law, http://www.ehow.com /about_6461739_celebrity-copyright-law.html
[21] Raja Pocket Books v Radha Pocket Books (1997) (40) DRJ 791.
[22] Haque Azmul, 2003, India: Face value: Personality rights and celebrity endorsements, http://www.mondaq.com/ article.asp?articleid=22487
[23] Mirage Studios v Counter Feat Clothing Co Ltd (Ninja Turtle Case) [1991] FSR 145.
[24] Children’s Television Workshop v Woolworths (NSW) Ltd [1981] RPC 187.
[25] Fido Dido Inc v Venture Stores (Retailers) Pty Ltd (1988) 16 IPR 365.
[26] Hogan v Koala Dundee (1988) 12 IPR 508. 24 Hogan v Pacific Dunlop (1989) 12 IPR 225.
[27] Henderson v Radio Corporation Pvt Ltd [1969 RPC 218].
[28] Gibson R S, California and international celebrity and employee invasion of privacy, http://www.hg.org/article.asp?id=7567 (12 October 2010).
[29] Ibid1