#ShortArticle: Publicity Rights under Intellectual Property

 Introduction:

Within the larger sphere of intellectual property rights exists the right to benefit from name and fame of an individual by the individual. Such a ‘merchandising right’ arises with the commodification and materialisation of fame and celebrity. J. Thomas McCarthy outlined the concept of ‘publicity rights’ by highlighting the abstract nature of the same as – “(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.” [1] This right can be used to protect celebrities, entertainers, politicians and so on, against the commercial use of their identity, which consists of name, likeness, and persona. [2]

As part of a property-based doctrine, the essence of which lies in the labour theory of property by Locke, publicity rights are a form of intellectual property wherein labour begets ownership. Celebrity personae or aspects of their personae are a product of the celebrity’s personal labour and are hence, often favoured for protection under intellectual property rights regimes under the Locke theory. [3] In the Canadian case of Krouse v. Chrysler Canada Ltd. [4], the right to personality was recognised as part of a common law approach contemplating tort law principles of ‘misappropriation of personality’ of the plaintiff whose images were used to market automobiles of the defendant’s brand. The Court of Appeal also recognised the personality rights as part of property rights, an approach vastly different from that taken by the Indian courts.

In the case of Midler v. Ford Motor Co., [5] the defendant wished to use a song originally sung by Ms. Midler, a beloved and celebrated singer and actress, to market their product. Upon a refusal to grant permission from Ms. Midler, the defendant engaged a back-up vocalist for the job, encouraging the vocalist to emulate or rather, closely follow Ms. Midler’s singing techniques and voice. While the defendants contended that as per the Section 3344 of the Civil Code, “the name, voice, signature, photograph and likeness” of Ms. Midler had not been used, the court rejected this contention on the grounds that the common law principles governing publicity offered protection to aspects of one’s identity. Sound-alikes and look-alikes hence were held to impact these common law rights of famed individuals. A peculiar yet entertaining case at the time, Ms. Midler had voiced a call for the exclusive right of publicity for entertainers over their names, persona, and image.

Inadequacies in the current system

Although publicity rights have been established by several jurisdictions as part of intellectual property rights, in the form of statutory protection or judicial pronouncement, the Indian scenario suffers in this aspect. Indian celebrities and public figures have long sought protection under trademark law for the usage of their name. However, trademark laws have very limited application to celebrity and public personae with respect to both licensing and assignment aspects, which severely impact the extent to which one may exploit one’s own name. The objective of publicity rights i.e., an additional outlet or right of merchandising, is thus not realised effectively under Indian trademark laws.

The copyrighting system poses bigger barriers to the protection of publicity rights. Most aspect of “persona” do not fall within the ambit of “literary, dramatic or musical work” as stipulated by The Copyright Act, 1957. For instance, certain celebrity voices have gained value in terms of recall and recognition by the public, yet find no protection under copyright, often leading to misuse of voices by brands and advertisers who resort to engaging celebrity imposters for the same, as Amitabh Bachchan experienced in 2010.[6]

However, recent jurisprudence has ruled in favour of Mr. Bachchan by upholding his publicity rights, without consideration of copyright protection. In Amitabh Bachchan vs. Rajat Nagi,[7] the plaintiff was aggrieved by continuous misappropriation of his name, voice, and images by third parties. The plaintiff’s infamous role as the host of ‘Kaun Banega Crorepati’ was being exploited to run WhatsApp lottery scams, to generate domain names, websites, and mobile applications as well as to publish general knowledge books, all of which bore his name or image. The Delhi High Court, while considering the above, issued an ex-parte ad-interim injunction against the defendants (several of which were ‘John Doe’) restraining them from further misuse of titles such as Amitabh Bachchan, Bachchan, Big B and AB. In addition, his voice, image, and other characteristics attributable to his identity were protected from misappropriation. Directions were furnished to the Ministry of Electronics and Information Technology (MeitY), the Department of Telecommunications (DoT) and telecom service providers to block access to the defendant’s phone numbers which were being used to facilitate infringement of the plaintiff’s publicity rights. The Delhi High Court order is crucial to publicity rights jurisprudence as it recognises the well-known status of the plaintiff, makes a prima facie case against the defendants, and protects rights in rem so as to prevent any misuse by recognised or unrecognised (John Doe) parties, all without delving into statutory requirements.[8]

The curious cases of actors, stage artists and authors have some but not extensive protection under the Copyright Act. Under Section 38,[9] after one engages or appears in performances, performer rights vest with them and the same can be enforced against infringement including but not limited to the unconsented use of sound recordings and visual recordings. While this may cover any content made during the performance, the right does not extend the general public image or persona of the actor. Similarly, in case of an author, one is granted special author’s rights under Section 57[10] as per which their honour or reputation can be protected by restraining or claiming damages against act is prejudicial to the same. However, the same conundrum persists as these rights are only extended to the honour or reputation associated with the works created by the author and not the persona itself.

In some peculiar cases, disputes can arise between copyright owners and celebrities. While these have not occurred in the Indian jurisdiction yet, US courts have been subjected to such disputes. Two suits, namely, Reed v. Nike[11] and Escobedo v. THQ,[12] deal with tattoo artists suing celebrities for display of their artistic works in advertisements and the same could potentially pose the weighing in of such rights against each other. If such dispute were to take place in India, it would be imperative for an argument to be made that the tattoo is essential to the persona of the celebrity and would thereby be protected under exclusive publicity rights granted to them. Section 14(c) of the Copyright Act grants six economic rights to a copyright holder over their artistic work inter alia the right to communicate such work to the public, to reproduce the work, to make adaptations and to issue copies. Now if one were to consider the tattoo as a subject matter under the umbrella of exclusive publicity rights conferred upon a celebrity, then invocation of any of the above-mentioned right would constitute infringement of the publicity rights[13] and thereby begs the question of balancing copyrights and publicity rights.

A Constitutional Approach

The landmark case of ICC Development (International) Ltd. v. Arvee Enterprises [14], saw the Delhi High Court address the issue of publicity rights for the first time in India, by proclaiming that the right of publicity – “has evolved from the right of privacy and can inhere only in an individual or in any indicia of an individual’s personality like his name, personality trait, signature, voice etc.” Publicity rights thus became part of privacy rights, protected by Articles 19 and 21 of the Indian Constitution [15], in the event of violation of the right in question. The constitutional ideals of dignity and liberty under Articles 12 and 21 respectively, thus formed the basis of publicity rights for celebrities in India., as to enforcement, Realistically, however, the enforcement has taken shape in the form of a conflict between publicity rights as part of privacy and as part of property [16]. The merchandising and exploitative capacity of personae or public images lies in their commodification, as per property law principles and doctrines, yet the control over persona and public images is protected by the constitutionally enshrined right to privacy.

Hence, the extent to which the Indian IPR regime may protect publicity rights is hindered, while simultaneously, personalities find no real protection of their economic rights under a privacy-based regime. The answer may lie not as one over the other, but of a dual approach. Principles of property law dictate that property is creation, and rights and liabilities over property are created. Simply put, IPR itself is evidence to the notion that, that which is deemed property, becomes property. Hence, it lies with the legislature to bestow statutory recognition to publicity rights for commercial and economic realisation, in a manner that also accommodates public interest and constitutional values. “Fair use” exceptions, freedom of speech and expression exceptions and other bona fide cases [17] of usage of names can thus still be allowed, encouraged, and protected, similar to the stipulations of the Copyright Act, 1957.

In conclusion, in the face of the Puttuswamy judgment on privacy [18], the reading of publicity rights under privacy rights gains heightened significance. Since the right to privacy is inalienable and non-transferable, the right of publicity is inalienable and non-transferable. An individual’s right over public image is thus, an inalienable part of their right to privacy itself, in stark contrast to that under the property rights doctrine. Thus, while the foundation for publicity rights has now become rooted in privacy and other constitutional ideas, the enforcement requires effort that evades property law principles but also ensures effective and legal usage of personae.

 

[1] J. Thomas McCarthy, The Human Persona as Commercial Property: The Right of Publicity, 19 Columbia-VLA J. of L. & Arts, 19 (1995) 131.

[2] Keller Bruce P., Condemned to repeat the past: The re-emergence of misappropriation and other common law theories of protection for intellectual property, 11(2) Harvard J. of L. & Tech., 401 (1998).

[3] Richard Heynes, Media Rights and Intellectual Property 101 (2005).

[4] Krouse v. Chrysler Canada Ltd. (1971) 5 CPR (2d) 30.

[5] Midler v. Ford Motor Co. (1988) 849 F.2d 460 (9th Cir).

[6] Andrew Buncombe, Bollywood star blasts voice-over ‘fake’ for advert, Independent (Nov. 10, 2010), https://www.independent.co.uk/news/world/asia/bollywood-star-blasts-voice-over-fake-for-advert-2129787.html.

[7] Amitabh Bachchan v. Rajat Nagi & Ors, 2022 SCC OnLine Del 4110.

[8] Dheeraj Nair et al., Delhi High Court recognises an individual’s “Personality Rights” and grants interim protection for the misuse thereof, Lexology (Dec. 05, 2022), https://www.lexology.com/library/detail.aspx?g=00a2efa4-bebc-45fc-b134-68037969bac9.

[9] § 38, The Copyright Act, No. 14 of 1957, India Code, vol. 13.

[10] § 57, The Copyright Act, No. 14 of 1957, India Code, vol. 13.

[11] Reed v. Nike, Inc., 17 Civ. 7575 (LGS).

[12] Christopher Escobedo v. THQ Inc., 2:12-cv- 02470-JAT, U.S. District Court, District of Arizona (Phoenix).

[13] Adyasha Samal, Tattoos: The Tussle between Copyright and Publicity Rights, SpicyIP (Jul. 28, 2020), https://spicyip.com/2020/07/tattoos-tussle-between-copyright-and-publicity-rights.html.

[14] ICC Development (International) Ltd v. Arvee Enterprises (1077) 433 US 562.

[15] India Const. art. 19.India Const. art. 21.

[16] Anurag Pareek and Arka Majumdar, Protection of Celebrity Rights – The Problems and the Solutions, 11 J. of Intellectual Property Rights, 415-423 (2006).

[17] § 52, The Copyright Act, No. 14 of 1957, India Code, vol. 13.

[18] Justice K. S. Puttuswamy v. Union of India (2017) 10 SCC 1.

 

Submitted by: 

Chanda Shashikant, Intern @ CIPRA, NLSIU.

4th year, Symbiosis Law School, Hyderabad

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