1 August 2011CopyrightAmritesh Mishra

Living off fame: protecting a celebrity's name in India

The right to publicity is the right of an individual to control the commercial use of his or her personal characteristics. Celebrities command great commercial value, hence, complainants in publicity rights cases are usually celebrities whose reputation and goodwill are exploited by others in order to sell their products or services.

A celebrity’s drawing power is of great commercial value and can add a significant amount of income to the fees and royalties that he or she receives in relation to his or her artistic or sports career. Understanding the different types of protection available and using them in a timely manner is important.

Publicity rights enable a celebrity to commercially exploit the goodwill associated with their persona as well as to protect against unauthorised exploitation of their goodwill and reputation by others. In India, the law relating to rights of publicity is in its nascent stage, with no precedents and codified law.

The Indian judiciary is yet to recognise the right of publicity and right to a name or image as distinct legal rights. The obiter dictum of the Delhi High Court in the case of ICC Development (International) Ltd. v Arvee Enterprises is the only authority on the nature of publicity rights.

In this case, the defendant ran a promotional sales campaign offering Cricket World Cup tickets as prizes and used slogans that indicated that the contest was associated with the World Cup. The Delhi High Court held that in respect of events, publicity rights do not extend to an entity.

This was the first time the court had recognised the existence of the right to publicity in principle. Celebrities are asked to lend their name, image or likeness to promote a wide range of products and services. With the recent advent of awareness of the different forms of intellectual property rights (IPRs), the responsiveness towards protection accorded by IPRs has increased.

Several Indian celebrities now value the benefits of trademarking their names. The legendary Amitabh Bachchan is reported to have sought registration of a sound trademark. Amitabh Bachchan’s baritone voice draws imitators attempting to exploit his voice for their own benefits. In a recent incident, his voice was duplicated to promote gutkha (flavoured tobacco) without his consent.

The Indian actress Kajol, who allegedly made derogatory remarks against the Shiv Sena on Twitter, has also embarked on the trademark route. In a bid to check such misuse, Kajol has made various applications to trademark her name.

Celebrity chef Sanjeev Kapoor realised the value of trademarks when he came across a boy selling Khazana of Chinese Recipes at a traffic signal. He is the author of the book Khazana of Indian Recipes.

Such trademarks would be valid provided that these celebrities have the intention to use them, either themselves or through permitted licensed users, as the law is strict in permitting the use of trademarks in order to prevent ‘trafficking of trademarks’.

An individual must use both statutory and common law causes of action to enforce their publicity rights to protect and prevent the unauthorised exploitation of such rights. If there is proper protection in place, the celebrity or their licensees will be able to react quickly to obtain injunctive relief in order to prevent future misuse.

Protection of publicity rights via the IPR route

Trademark law can play an important role in protecting a celebrity’s name and the commercial value associated with it. Two forms of protection are available: that associated with trademark registration and that associated with the use of the trademark, also known as common law trademark rights.

"If an artist uses their name in only their main area of activity, they may not be protected with respect to all possible products and services."

Celebrities and commercial partners can obtain some form of protection from trademark law by applying for the registration of their names, likeness or nicknames as trademarks. By applying the rationale under Section 2(1)(zb) of the Indian Trademarks Act, 1999, celebrity names have over the years acquired secondary meaning and also carry goodwill, and are capable of distinguishing the goods and services of one person from those of others.

Obtaining statutory protection is of strategic importance to celebrities who desire to use their name, image or likeness to identify their own or an authorised line of merchandise or services. There is a menacing rise of celebrity domainsquatting cases in India.

Use of a celebrity’s name as part of a domain name may also be prevented under the trademark law by bringing an action before a court or by filing a complaint under the Uniform Resolution Dispute Policy procedure. Indian courts have recognised the name of a celebrity as a trademark and restrained the misappropriation of celebrity names by third parties.

In DM Entertainment v Jhaveri, Daler Mehndi, a famous artist, brought an action against the registration of the domain name dalermehndi. net. The Delhi High Court restrained the defendant from using the trademark Daler Mehndi.

In Tata Sons Ltd. v Ramadasoft, an Indian individual, Ratan Tata, filed a complaint before the World Intellectual Property Organization (WIPO), seeking the transfer of domain names consisting of the name Tata.

In the absence of statutory protection, a celebrity can seek protection from an action of passing off. An individual could resort to an action of passing off and in a case of passing off, proof of reputation, misrepresentation and irreparable damage of the individual is required.

This form of protection is more precarious as it is directly dependent on the extent of use of the celebrity’s name with products and services. If an artist uses their name only in their main area of activity, they may not be protected with respect to all possible products and services.

For example, a singer could claim rights in relation to goods or services related to music, such as musical instruments or musical films, but could have difficulty claiming passing off for dissimilar goods or services such as household products or educational services.

The use of a name as a trademark may also raise various contentious issues, such as genuine use of a name that is similar to the celebrity’s name, cancellation on grounds of non-use and endorsement by multiple celebrities when it would be difficult to define the reputation of a particular individual attached to a product. Copyright protection is very limited in this area.

There is no copyright in a name or image of an individual. The Indian Copyright Act, 1975, provides a fair degree of protection. Copyright law will protect only specific images in the form of a photograph, painting or such other artistic works. And in an action for passing off, the three elements of reputation, misrepresentation/ imitation and irreparable damage to an individual need to be proven.

Protection under the constitutional right to privacy

Right to privacy protects an individual from adverse portrayal of their personality or character, such as publication of defamatory statements wrongly attributed to an individual, and publication of personal or private information about an individual.

An individual whose privacy has been breached may seek compensation through an action for violation of the tort of privacy and/or coupled with an action for breach of confidence and defamation.

Protection under the law of unfair competition

The Competition Act, 2002, prohibits anticompetitive acts, for example an act suggesting a false or misleading endorsement. If a celebrity’s name, image or voice is used in an advertisement for a product or services, the obvious impression created is that the celebrity endorses such product or service and so this would fall under the provisions of the act.

A celebrity balancing act

A celebrity generates tremendous lucrative brand equity, instantly commercial in the form of endorsement contracts—often the earnings of a celebrity from their professional career are a small fraction of their earnings from such endorsements.

Given the uncertainties and the lack of codified law, a celebrity should ensure that any sponsorship, endorsement or marketing situation in which a third party acquires commercial benefits is made through a written consent.

The consent agreement must specify the kinds of permitted uses, the timeframe, the kind of media in which image, name, voice, etc. may be used, and the kind of images that may be used or published. There are increasingly common partnerships between Indian companies and celebrities, and a parallel increase in the awareness of unauthorised exploitation of publicity and image rights.

It is essential to assess any portfolio of celebrities whom one represents or for whom one would like to acquire an assignment of rights or a licence in order to ensure that their names are well protected and that, if necessary, these rights can be successfully enforced by a court of law.

Until India recognises publicity rights, an individual must rely on the framework of intellectual property laws and other statutes to prevent the exploitation of such rights.

Amritesh Mishra is a senior associate at Lall Lahiri & Salhotra. He can be contacted at: gpo@lls.in

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