by, Ankita Aseri
The term ‘personality right’ 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.
Personality rights or right of publicity must be safeguarded because it represents something that a person has an inherent right over. The unauthorised use of one’s personality is as grave as identity theft or theft of an object very dear to a person. The most fundamental protection of this right can be found in the constitution in the form of right to privacy.
A person’s personality is a result of his skill and labour. The image and personality he creates reflects his effort, which is required to be protected. This is where Intellectual property rights come in. The underlying theory states that “the one who creates something of value is entitled to enjoy the fruits of his labour.”[i] The United States Supreme Court used similar vocabulary to describe these rights. Justice Reed ended his opinion in Mazer v. Stein with the solemn statement: “Sacrificial days devoted to . . . creative activities deserve rewards commensurate with the services rendered.”[ii] Every person is entitled to have and enjoy the fruits of his or her labour. For example, Celebrities work hard to build an image in the society through their work. Their conscious efforts and sustained hard work brings them to a position of a celebrity. They create a personality for themselves. A single misuse of their name, image or their style might affect the personality they create; therefore, it becomes necessary that they should have a right to protect their personality and to have control over its exploitation.
The celebrities register their personality and gain exclusive rights to commercially benefit their image. Any act creating a likelihood of association with the registered image or their distinct characteristic would amount to infringement of right to personality.
Personality right is the right to dictate how the rights related with an individual’s name and image is utilised by others in the society. These rights are granted to those whose names have a brand value. Generally, trademark is defined as a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises.[iii]Personality rights have mainly two aspects- to stop the commercial exploitation of one’s image and the other being the right to privacy. The trademark aspects of personality rights mainly prioritises the protection of the first right, where usually the names of famous personalities are used for commercial exploitation without their consent.
In India, there is no codified law to protect an individual’s right of publicity. This right, therefore, currently stems from the common law tort of passing off which requires three main elements- This remedy is further strengthened by the fact that Trademark Act states that a name can be regarded as a valid subject of trademark.[iv] But such cases are primarily governed by the remedies granted under common law rather than any statutory provision. Indian courts have identified the bare necessities that are required to establish such infringement.
INSTANCES OF TRADEMARK VIOLATION
In 2014, Rajnikant successfully sued against Varsha productions for their movie “Main hoonRajnikant”. Rajnikant alleged that the defendants used his name in the title without obtaining his consent. The Madras HC granted a stay on the release of the movie because it violated Rajnikant’s personality rights.[v] Similarly, Sridevi has issued a legal notice to Ram Gopal Verma for unauthorized use of her name in his movie title also called “Sridevi”.[vi] It has been alleged that Verma is trying to reap commercial benefits by banking on the huge popularity of Sridevi.
The Kerala Wildlife department had to change the name of their new crocodile research park called ‘Steve Irwin Crocodile Research and Rehabilitation Centre’ after they were served a legal notice from Steve Irwin’s widow.[vii] The department claimed they had done so out of respect for Irwin’s work as a conservationist. But they did not acquire the consent of Irwin’s family before doing so and that violated his Intellectual Property rights.
The protection of personality rights also extends to cases where the infringement is in the form of illegally named domain names. Julia Roberts took Russell Boyd before the WIPO Arbitration panel for cybersquatting and registering the domain name ‘JuliaRoberts.com’ in bad faith. The WIPO panel accepted that, even in absence of a registered trademark over her name ‘Julia Roberts’ was distinctive and carried a secondary meaning over which only the actress could claim a monopoly. Consequently, the domain name registered by Boyd was in bad faith and an attempt to wrongfully benefit from the celebrity’s fame and status.[viii] The Delhi HC in its judgement also ordered the transfer of domain names “cyrusmistry.co.uk” and “cyrusmistry.co.in” favour of Mistry.[ix] The court said the sites were created to “blatantly and illegally” capitalise on the well-known name of the business tycoon.[x]
In Estate of Elvis Presley v. Russen, the court was again tasked with determining the longevity of personality rights.[xi] The defendant was involved in a business of producing a TV show that was patterned after a Presley performance. The infringement at issue was the promotion and presentation of “The Big El Show”, which was billed as a “Tribute to Elvis Presley”. The estate claimed that Russen’s use of Presley’s name and likeness reduced the estate’s ability to license the Presley image and caused confusion in the eyes of the consuming public as to the source of the entertainment services. The court granted relief to the plaintiff on basis of the violation of service mark agreement and not infringement of personality rights because the court deemed that the estate could not establish the requisite irreparable injury.[xii]
The case of A.V.E.L.A. Inc. v. Estate of Marilyn Monroe, LLC also presents a similar case on the unauthorised use of celebrities’ images.[xiii] A.V.E.L.A., Inc. pre-emptively filed a suit in the Southern District of New York seeking a declaratory judgment that its manufacture and sale of merchandise featuring Monroe would not violate any rights held by the estate. The estate counterclaimed, bringing a number federal and state law claims, including false endorsement under the Lanham Act. The court held that the estate’s false endorsement claim was separate and distinct from an assertion of publicity rights under state law. Publicity rights generally grant broad rights to an individual (or that person’s estate) to control the commercial use of his or her name, image, and likeness. By contrast, the court explained, the Lanham Act’s prohibition on false endorsement prevents the use of another’s trademark in connection with a product or service where that use will mislead consumers into thinking that the individual has sponsored or otherwise approved the product or service. The court further explained that celebrities hold a “trademark-like interest in their name, likeness, and persona” that may be vindicated through a false endorsement claim under the Lanham Act.
Recent controversies involving personality rights include the instance of using of lookalike of a celebrity in an AD campaign. F1 driver Max Verstappen won a court case he filed against Picnic because the online grocery store used a lookalike of him in one of its ad campaigns. The court ruled that Picnic violated Verstappen’s personality rights by using the lookalike.[xv] Another controversy involved two billboards for an English-language school which were quickly removed from the Croatian capital after first lady Melania Trump threatened to sue because the use of her likeness suggested she had endorsed the school’s message, “Just imagine how far you can go with a little bit of English.”[xvi] It was said to have grossly violated the law and unlawfully intruded on [Trump’s] personality rights.
It may be said that although the Indian legislations have room for the protection of publicity, celebrity and image rights, the laws need to be more direct and codified in this field. The need becomes more acute in the context of ever-increasing social and digital media which gives an infringer ever more opportunities to misuse one’s celebrity status and right to personality. Many States in USA have recognised this right to publicity as a distinct right under the head “Celebrity Rights”. Its high time India should adapt a distinct legal status for personality rights and to take stringent efforts to protect the image and status of well-known personalities of the country like various other countries of the world. A clear legislation is the need of the hour.
[i] William Fisher, Theories of Intellectual Property, <https://cyber.harvard.edu/property00/iptheory.html>.
[ii]Mazer v. Stein, 347 U.S. 201 (1954).
[iii] Trademarks, <http://www.wipo.int/trademarks/en/>
[iv]§2(1)(m), Trademark Act, 1999.
[v]ShivajiRaoGaikwad (aka Rajinikanth) v.Varsha Productions, 2014 SCCOnline Mad 4586.
[vi]Hemanth Kumar, Sridevi demands an apology from RGV, Times of India, Updated: 15 Jan 2017, 6:59 PM, <http://timesofindia.indiatimes.com/entertainment/telugu/movies/news/sridevi-demands-an-apology-from-rgv/articleshow/44784375.cms>.Jan 15, 2017, 06.59 PM Jan 15, 2017, 06.59 PM Sridevi demands an apology from RGV
[vii] Crocodile park sheds Steve Irwin’s name, The Hindu, Updated: 17 March 2010, 1:04 PM, <http://www.thehindu.com/todays-paper/tp-national/tp-kerala/Crocodile-park-sheds-Steve-Irwinrsquos-name/article16571613.ece>.
[viii]Julia Fiona Roberts v. Russell Boyd, Case No. D2000-0210, Administrative Panel Decision, WIPO Arbitration and Mediation Centre.
[ix]Tata Sons Ltd. v. Aniket Singh, 2016(65) PTC337(Del).
[x] Delhi HC restrains man from using sites in name of Tata group chief Cyrus PallonjiMistry,Economic Times, 8 Dec 2015, 7:11 PM, <http://economictimes.indiatimes.com/news/politics-and-nation/delhi-hc-restrains-man-from-using-sites-in-name-of-tata-group-chief-cyrus-pallonji-mistry/articleshow/50093978.cms>.
[xi]Estate of Elvis Presley v. Russen, 513 F.Supp. 1339 (D.N.J. 1981).
[xii] See supra note 11
[xiii]A.V.E.L.A., Inc. v. Estate of Marilyn Monroe, No. 1:2012cv04828 – Document 215 (S.D.N.Y. 2015).
[xiv] District court gives go-ahead to Marilyn Monroe’s estate on false endorsement claim, Lexology, 3 November 2015, <https://www.lexology.com/library/detail.aspx?g=17d8ed4a-2dfa-45e1-bb69-0e231b56aac3>.
[xv] JanenePieters, F1 Driver’s personality rights violated in grocery chain’s lookalike AD campaign: Court, NL Times, 6 Sept. 2017, 5:00 PM, <https://nltimes.nl/2017/09/06/f1-drivers-personality-rights-violated-grocery-chains-lookalike-ad-campaign-court>,
[xvi] Melina Delkic, Melania Trump demands Croatia take down billboards, Newsweek, 19 Oct. 2017, 4:44 PM, <http://www.newsweek.com/melania-trump-demands-croatia-billboards-667790>.
Image source: Photo available at https://www.pexels.com/photo/photo-of-people-taking-photos-2479958/.