IP Laws and Celebrity Rights in India

“The Celebrity is a person who is known for his well- knownness”- Daniel Boorstein

A Celebrity may be an individual who can influence people in the society and who can create impacts through his popularity in any field, be it sports, entertainment or business. However, this definition may look skewed in today’s internet era as there are social media influencers, YouTubers and bloggers who are equally popular among the millennial. Thus, in a country like India, it can be associated with the recognition an individual gets by a large group of public.[1]From a commercial perspective, when a person's reputation is used in promotion of a product, then under the 'direct commercial exploitation of identity' test, such a person will be considered as a celebrity in publicity sense.[2]

Celebrity Rights are a set of unique rights vested on certain individuals or “celebrities” who are popular and may have high chances of being commercially exploited for their fame in the society. It is essential to protect their rights while reaping economic benefits out the fame they have gained over a period of time. The celebrity right majorly includes their personality rights which may also be further classified as moral rights, privacy rights and the publishing or merchandising rights. In India, these rights are majorly governed by private contracts and there is no legal instrument to protect the celebrity rights which are thus easily susceptible to unlicensed trespass. Such trespass is done in two ways, namely when the private right of a celebrity is compromised for the sake of money and secondly, when the publicity rights of a celebrity is used in an unauthorized manner. A few other related rights that affect a celebrity are:

• Personality Rights of a celebrity.

Celebrity rights, in association with the personality they possess, can influence the masses in a great way. Importance has to be given in such a situation on the efforts that they have put in throughout years for building the same. In both the situations, commercial values associated with the person can reach great extend and hence the rights in discussion can be considered as his/her intellectual property right. Importance has to be given to such rights since there are situations in which identity of a product is being tagged with identity of person, signature styles of person becoming commercial attraction etc. shows its similarity with trademark and copyright. [3]

For instance, the personality of a sportsperson is mostly related to fitness, workouts and exercise so the chances of endorsing such products are higher for a sports celebrity whereas clothing and make-up may be attributed to a cinema celebrity who would be exploited for endorsements in those industries.

• Privacy Rights of a celebrity

The doctrine of privacy put forth by Warren and Brandeis has played a pivotal role in shaping celebrity rights. They opined that the basic concept of personal freedom extended to every person’s right ‘to be let alone’.[4] People generally tend to personalize celebrities and become curious about every personal aspect of their lives. Celebrities in turn try to control their personal information since the disclosure of the same might put them in a situation of embarrassment or humiliation resulting in a feeling of insecurity. In a famous case,[5] 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. Further, the rise in the paparazzi culture has also posed various issues with regard to the celebrities privacy rights.

• Publicity Rights of a celebrity

Prof J Thomas McCarthy stated, ‘The right of publicity is not a kind of trademark. It is not just a species of copyright. And it is not just another kind of privacy right. It is none of these things, although it bears some family resemblance to all three.’[6]

Publicity right is ‘the inherent right of every human being to control the commercial use of his or her identity.’[7]This right also often referred to as merchandising right, is 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.

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 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.

• Protection of Celebrity Rights under the existing IP Laws in India

Celebrity rights may be protected using trademark law, copyright law and passing off action. Any infringement of a performers’ non-property or recording rights will therefore amount to breach of statutory duty.

Trademark registration has a two-fold significance as far as 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.[8]

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 trademark. Courts in India have accorded protection to film titles, characters and names under trademark laws.[9]The first case that dealt with character merchandising in India was Star India Private Limited v Leo Burnett India (Pvt) Ltd[10], but jurisprudence is still emerging and character merchandising is an area yet to develop in India.

There is not much clarity as to what aspects of celebrity rights may be protected under Copyright Act. In Sim v Heinz & Co Ltd,[11] 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.[12]

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 which fall under the category of artistic work. However, no copyright is granted to the name or image of the celebrity in India.

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.[13] Indian law recognizes personality rights only when the character or the person has independently acquired public recognition.

Apart from these remedies today, invasion of privacy lawsuits are covered in insurance policies under the category of ‘advertising injury’. 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.[14]

• Conclusion

In India, the exclusive right to authorize public performances and broadcast them does not exist. There is provision, merely, for secondary rights to prevent public performance or broadcasting or recordings made without the performers’ consent and to receive equitable remuneration. Thus, though economic rights are available, moral rights do not exist. No protection is given against ‘substantial similarity’ which is a necessary element in protection of celebrity rights. It is only through litigation, this growing problem can be disciplined. Award of huge damages and multi-million dollar settlements, may stop infringement or violation by those who have in the past failed to respect the privacy of celebrities and employers. Whereas, the judiciary has repeatedly recognized existence of various aspects of the celebrity rights, it rests with the legislature to statutorily recognize commercial aspects of celebrity rights to fill up the lacunae in law and keep pace with rapid commercialization of celebrity status.

[1] Tabrez Ahmad† and Satya Ranjan Swain, Celebrity Rights: Protection under IP Laws [Tabrez] [2] Martin Luther King Jr Centre for Social Change v American Heritage Products 694 F2d 674 [3] Tabrez, Supra Note 1

[4] 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 [5] Cohen v Herbal Concepts Inc (1984) 63 NY.2d 379. [6] Mccarthy J Thomas, The Spring 1995 Horace S Manges Lecture: The Human Persona as Commercial Property: The Right of Publicity, Columbia-VLA Journal of Law and the Arts, 19 (1995) 131. [7] 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. [8] Black Hilary May, The role of trademark law in the protection of celebrity personality, Media & Arts Law Review, 7 (2) (2002) 105, 106.

[9] Titus & C Advocates 2008, India guide: Character merchandising in India, http://www.asialaw.com/Article/ 1970665/Channel/16681/India-Guide-Character-merchandiingin-India.html

[10] Star India Private Limited v Leo Burnett India (Pvt) Ltd (2003) 2 B C R 655. [11] Sim v Heinz & Co Ltd [1959] 1 WLR 313 1959 [12] Prather M, Celebrity copyright law, http://www.ehow.com /about_6461739_celebrity-copyright-law.html [13] Haque Azmul, 2003, India: Face value: Personality rights and celebrity endorsements, http://www.mondaq.com/ article.asp?articleid=22487 [14] Gibson R S, California and international celebrity and employee invasion of privacy, http://www.hg.org/article.asp?id=7567