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Publicity Rights and Its Scope in Intellectual Property Laws

10

MAR

2020

Since the past few years, publicity rights have attracted considerable amount of recognition in the field of intellectual property laws. These rights sometimes also referred to as celebrity rights are rights associated with the personality of an individual. They can be defined as an individual’s right to control the commercial use of his or her identity. The public image of a celebrity is of immense value and involves tremendous amount of money. Thus, it becomes important for such a person to protect his right so that nobody else exploits it or acquires unauthorized gains from it. In this article, a modest endeavor is made to understand the scope of protecting these rights under intellectual property laws in India along with the laws prevalent in the United States of America and United Kingdom.

The Madras High Court recently came to the South Indian superstar Rajnikant’s rescue when it passed an injunction order against the release of a film titled “Main Hoon Rajnikant” stating that it violated the superstar’s reputation and goodwill through wrongful use of his name in the title and in the movie[1]. Thus, by passing such an order, the Court upheld publicity rights in the country. Publicity rights, also referred to as celebrity rights, is the right of an individual to prevent others from using his name, likeness, photograph or image for commercial purposes without obtaining consent.

In India, the protection offered under personality rights is not particularly clear, as there is not any independent statute or body governing it. There have been efforts to recognize publicity rights as an independent right. Few high courts have recognized these rights which are vested in the public figures by virtue of them having acquired a status and a personality which grants commercial value to their individual persona. The Delhi High Court in ICC Development (International) Ltd v Arvee Enterprises[2] held that the right of publicity has evolved from the right of privacy and can only exist in an individual or in an individual's personality like his name, personality trait, signature, voice, etc. These rights can arise out of an individual’s association with an event, sport, movie, etc. However, that right does not exist in the event in question, that made the individual famous, nor in the corporation that has brought about the organization of the event. Hence, any attempt to take the right of publicity away from the individuals, to the organiser {non-human entity} of the event would be violative of Articles 19 and 21 of the Constitution of India. The right of Publicity vests in an individual and only that person is entitled to profit from it.

Thus, these rights as a product of right to privacy arising out of a case-by-case development enshrined in Article 19 and 21 of the Indian Constitution. This approach does not treat publicity rights as a commercial property.

However, in recent years, these rights have become significant in the intellectual property world because these rights are not only laid down to protect an individual of any harm but also to secure them of some financial benefits that they might gain from the use of such property.

The common law right to publicity acknowledges the commercial value of a famous person, or a performer and protects his proprietary interests so that he can gain profits from his public reputation or persona[3]. The liability for infringement of right to privacy has two basic elements consisting of validity which means that the plaintiff owns an enforceable right in the identity or persona of a human being; and identifiability which means that the celebrity must be identifiable from defendant’s unauthorized use. Infringement of right of publicity does not require any proof of falsity, confusion, or deception, especially when the celebrity is identifiable. This right extends beyond the traditional limits of false advertising laws[4]. Further, to solve the question of identifiability, a simple comparison between the celebrity’s identifying features and the defendant’s use is sufficient.[5].

Provisions in IP Laws

Even though the Trade Marks Act does not make any specific provision for publicity rights, its definition of ‘marks’ includes names within its ambit[6]. Hence, a number of celebrities have resorted to use the pre-emptive step of trade marking their names to stall any misuse. Few celebrities have gone further and secured trademark protection for their signatures. When a celebrity registers a trademark, it signifies two things: first, that they are open to any authorized assignment or licensing of their personality for promoting or merchandising purposes in the class of goods and services for which registration has been sought and second, that they obtain a means to defend those aspects of their personality against unauthorized use.

The Trade Marks Act, 1999 clearly elucidates the importance of consent when it comes to registration of trademarks. Where an application for registration of trademark falsely suggests a connection with any person who is living, or whose death took place 20 years before the date of application, the Registrar can ask them to furnish the consent of the living person and in case of the deceased person, the consent of their legal representative. This simply means that an unauthorized use of any trademark is not allowed.

The Copyrights Act, 1957 defines that a “performer” includes an actor, singer, musician, dancer, acrobat, juggler, conjurer, snake charmer, a person delivering a lecture or any other person who makes a performance[7]. Hence, Sections 38 and 57 of the Copyrights Act, 1957 that deal with performer’s rights and author’s special rights can cover publicity rights under its umbrella. When a famous person’s identity is used for advertising without their permission, the problem is not that one should not get commercial gains for that use but that it should be the famous person who should get the power and right to control when, where and how their identity is used[8].

Position of Publicity Rights in the USA and UK

United States of America

Celebrities can resort to two options when it comes to publicity rights in the USA; first, the Lanham Act of 1946, which is a federal statute governing the trademark laws in the USA and second, the state-by-state laws of publicity rights. The Lanham Act protects the consumers from misrepresentations or deceptions and protects trademark owners from the misperception that they are associated with or are endorsing a product. The Lanham Act provides for a civil action against a person who uses any word, term, name, symbol or device or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which can cause confusion or mistake or deceive as to the affiliation, connection, or association of him with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person[9]. This means civil actions will be taken up against any person who intendeds to mislead people by portraying his association or affiliation with any another person. People affected by such misuse can file either a claim of false endorsement or a claim of infringement of an unregistered mark. Although the Lanham Act’s primary purpose is to protect consumers, the Act’s broad interpretation helps celebrities protect their publicity rights through it. Thus, in a certain false endorsement case, a plaintiff was successfully able to argue that defendants had used an imitation of his voice in a Tom Waits parody song[10]. Even though some celebrities have successfully been able to claim publicity rights protection under the Lanham Act, the Act does not offer to be successful in all cases. This is because the measurement for violations and infringement is based on consumer reaction and confusion, and possibility of the difficulty in establishing celebrity followers as consumers.

Under the common law practice, publicity rights was a sub-category of privacy rights. Haelan Laboratories, Inc. v. Topps Chewing Gum, Inc[11] was the first case to separate publicity rights from privacy rights where the courts stated that players had a right in “the publicity value of [their] photographs” or, in other words, they have a right “to grant the exclusive privilege of publishing [their] pictures.” A State Right of Publicity claims is generally easier to prove because it claims to “protect an individual’s right to remuneration and prevent misappropriation and unjust enrichment from the theft of good will,” while the Lanham Act claims are measured by and created for the primary purpose of preventing consumer confusion. The State Right of Publicity claims vary in scope from state to state, but the elements more or less stay the same. The standard common law right of publicity claim requires that a plaintiff prove (1) the defendant’s use of the plaintiff’s identity; (2) the appropriation of the plaintiff’s name or likeness to the defendant’s advantage, commercially or otherwise; (3) the lack of consent; and (4) a resulting injury[12].

Hence, Even though the United States’ approach to the Right of Publicity is not the most perfect one, celebrities are usually able to control the commercial use of their identities through the liberal interpretation of the Lanham Act by the courts’ and states’ willingness to address the right directly.

United Kingdom

Just like India, UK also does not recognize any specific publicity rights because of which celebrities are forced to choose from different legal routes to protect them. The Trade Marks Act of 1994 does not have any specific provision to protect these rights. Since only registered trademarks are protected under the Act, the celebrities become helpless if their names are not registered as trademarks. Even if the celebrities attempt to register their names as trademarks, they are met with disappointment because “the more famous the celebrities are the less distinctiveness their names possess”[13]. The court in Re: Elvis Presley Trademarks, Inc refused to register the name “Elvis Presley” because it was so commonly known that it possessed no distinctive quality to identify goods[14]. The Copyrights, Designs and Patent Act of 1988 (CDPA) may allow individual to protect their likeness when it is fixed in a photograph or film. However, this protection can only be claimed if that individual “commissioned” his/her work[15]. Furthermore, even if the celebrity owns the copyright in a photograph or film, the law only prevents an infringer from copying all of, or a “substantial part” of the original work. This makes it difficult for the individual to claim his rights because it becomes challenging to prove that an infringer has copied a substantial part of the original work.

Conclusion

Publicity rights are distinct rights and will only gain more attention in the coming years because a great number of celebrities have now become aware of the concept. The Indian judiciary has recognized these rights as being a part of the right to privacy but it is time that the legislature recognizes the commercial and property rights aspect of it and formulates a statutory law to fill the gap. The module in the USA is comparatively an accommodative one and India can follow its lead and embrace these rights so as to provide appropriate legal protection.


[1] Mr.Shivaji Rao Gaikwad v. M/S.Varsha Productions 2015 (62) PTC 351 (Madras)

[2] 2003 (26) PTC 245

[3] Ali v. Playgirl 447 F Supp 723

[4] Titan Industries Limited vs M/s Ramkumar Jewellers, CS(OS) No. 2662 of 2011

[5] Ibid

[6] Section 2 (1)(m), the Trade Marks Act, 1999

[7] Section 2(qq), the Copyrights Act, 1957

[8]Titan Industries Limited vs M/s Ramkumar Jewellers, CS(OS) No. 2662 of 2011

[9] Section 43 (a)(1) of the Lanham Act

[10] Waits v. Frito-Lay, Inc, 978 F.2d 1093

[11] 202 F.2d 866 (2d Cir. 1953)

[12] Abdul-Jabbar v. GMC, 85 F.3d 407, 413-14 (9th Cir. 1996) (quoting Eastwood v. Superior Court for Los Angeles County, 198 Cal. Rptr. 342, 347 (Cal. App. 1983)). The court, in Abdul-Jabbar, added that the appropriation was not limited to the name or likeness, but extended to the plaintiff’s identity. Abdul-Jabbar at 414.

[13] Hayley Stallard, The Right of Publicity in the United Kingdom, 18 Loy. L.A. Ent. L.J. 565, 569 (1998)

[14] Re: Elvis Presley Trademarks, Inc., [1997] R.P.D.T.M.C. 543 (Ch.) (Eng.) (Laddie, J reasoned that: The distinctiveness addressed by the Act is not a quality of the mark which exists in a vacuum. It is a particular type of distinctiveness, namely the ability to distinguish the proprietor’s goods from the same or similar goods marketed by someone else. The more a proposed mark alludes to the character, quality or non-origin attributes of the goods on which it is used or proposed to be used, the lower its inherent distinctiveness

[15] Copyrights, Designs & Patents Act, 2003, c. 48 § 85 (Eng.). “A person who for private and domestic purposes commissions the taking of a photograph or the making of a film has, where copyright subsists in the resulting work, the right not to have copies of the work issued to the public, the work exhibited or shown in public, or the work communicated to the public.”

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