D.M. Entertainment v Baby Gift House-A Review
An individual’s property is the extension of his personality. This was pointed out by Hegel and is commonly known as the Hegelian justification of intellectual property rights.[i] Celebrity status is not easy to achieve. It is conferred to a few by the rest. This status is achieved in different forms. Some achieve it by votes and some by skill and talent. This aura of a personality is built through years of dedication (in most cases, but some are born with it!!) and sweat. And thus, the personality once gained, it is envied by others.
It is at this juncture that there is a possibility of ‘trespass’ into the personality for sheer gain, either monetary or otherwise. To claim this right, it is necessary to establish that fame is a form of merchandise i.e an act intended to promote his goods it would be termed as an unfair trade practise, misappropriation of IP of the celebrity, an act of passing off.[ii] The justification of publicity right being an intellectual property right that flows from the Lockean Labour theory which states that only the creator can has the right to exploit his creation in a manner that he wants. A celebrity having put enough efforts in attaining the most coveted fame and prosperity is his property.
The recognition of publicity rights of celebrities is adequate worldwide. In the United States, the right to exploit the economic value of the name and fame of an individual is termed as publicity right.[iii] In Australia , the ball was set rolling with a few ballroom dancers successfully suing for a passing off action as their photographs were published on a magazine cover.[iv] The Australian jurisprudence has evolved ever since.[v] In England and Wales, the position in Australia is followed.
The Indian judiciary is guilty of lagging behind with regard to this issue. One of the pioneer judgements to have discussed publicity rights in India was ICC Development (International) Limited v Arvee Enterprises[vi]. The publicity right concept was derived from human dignity as enshrined under Articles 19 and 21 of the Indian Constitution.
In this present case, DM entertainment v Baby Gift House and others, is a landmark case in the Indian context of celebrity merchandising. Daler Mehndi, the most famous pop star hailing from Punjab has created a niche audience and is immensely popular amongst Punjabi-pop music lovers. The appellant company was incorporated in 1996 to manage the artist’s escalating career. The crux of the case is that the defendants had prolific businesses in selling miniature toys of Daler Mehndi and majorly cashed on to his popularity. Majorly aggrieved, the plaintiff company filed for permanent injunction from infringing the artist’s right of publicity and false endorsement leading to passing off.
The plaintiff company had been assigned all the right, titles and interests in the personality of the artist along with the Trademark, Daler Mehndi. It was contended by the plaintiff that the unauthorised or unlicensed use of or any part of the reputation of the artist, with respect to goods or services of any manner will lead to make an impression on the public that the goods or services are associated with the singer. And hence it was submitted that such a use would lead to passing off. It was further averred by the plaintiff that such use was done for commercial exploitation without adequate permission from the person or any other authorised by him, shall constitute infringement of the person’s right to publicity.
Section 29 of the Trademark Act-1999 (hereinafter the Act) lays down the aspects of infringement of trademark. it elucidates that a when a person is using , in course of trade any mark, which is identical or deceptively similar to a registered mark and which he is not entitled or licensed to use shall be deemed to infringe onto the rights of the person who has the lawful right over the mark.
The Act does not give a specific description of passing off as a result it has been derived through judicial precedents drawn from common law. Put simply , passing off would occur when the mark is not only being used deceptively similar to the mark of another but it is being used to create confusion in the minds of the consumer that results in the damage or loss of business for the person or company who/which is the lawful owner of the trademark.
Character merchandising is an area of law which is unexplored in India. The first case that dealt with this was Star India Private Limited v Leo Burnett India (Pvt.) Ltd.[vii] But jurisprudence is still young and needs moulding. Prior to the Star India judgement the Indian courts have had opportunities to address this issue. The most recent example would be Katrina Kaif’s filed a suit against a public hygiene company alleging transgression of publicity rights, but the Bombay High did grant an order restraining the company from using certain advertisement. Also, Saurav Ganguly, the flamboyant former Indian Cricket captain, wanted relief against Tata tea for using his fame to sell tea. The courts in these cases the court did not address the issue of publicity rights.
Incidentally, the same court that gave a judgement of the D.M. Entertainment case rejected temporary injunction relief in the case of Chorian Rights Limited v MS Ishaan Apparel & others[viii] due to insufficient evidence. The Indian Courts has acknowledged character merchandising by citing the Star Burnett Case. This shows that the Indian judiciary is keen to address this issue, which it did not prior to the D.M Entertainment case. But in this case it has done so and quite emphatically at that. The court meted out a compensatory amount to the tune of `. 1, 00,000. The intent of the judiciary is clear and now it is time for the legislature to flex its muscles to come to the rescue of our onscreen heroes.
ENDNOTES [i] Kanu Priya, INTELLECTUAL PROPERTY AND HEGELIAN JUSTIFICATION, NUJS Law Review 2008 vol.1 No. 2
[ii] Anurag Pareek, Arka Majumdar, Protection Of Celebrity Rights-The Problems And The Solutions, JIPR Vol.11, 2006,November, pp415-423
[iii] See Michael Doughlas and Catherine Zeta Jones v Hello Limited, Hola S A and others, 2003 EWHC 786 CH
[iv] Henderson v Radio Corp Pty. Ltd , [1969] RPC 218
[v] See Paul Hogan v Koala Dundee Pty Ltd (1988) ALR 187, Also See Paul Hogan v Pacific Dunlop (1988) AIPC 90-578
[vi] 2003 (26) PTC 245 ¶ 14
[vii] (2003) 2 B.C.R. 655
[viii] CS(OS) 1154/2009 available online at
(http://lobis.nic.in/dhc/SRB/judgement/17-04-2010/SRB15042010S11542009.pdf)
The Spicy IP team thanks Subhajit for sharing his views with the readers and look forward to similar valuable inputs from him in future. A copy of the actual case is available here.
Thank you for the post.
Publicity rights aims to protect the goodwill of the public figure of the celebrity and encourages commercial exploitation of such goodwill.
The publicity rights can be brought under the ambit of trademark law but it can be only brought under the purview trademark with goodwill.
Taking, Lockean Labour Theory into consideration, the property which the celebrity creates or acquires is entitled to be exploited by him or her. However, at this juncture the question is to be posed what is the property and what is the nature of the property? In my humble opinion it is the goodwill of the public figure which liable to be exploited.
The trademark law in India allows assignment trademark with or without the goodwill and hence it allows for a passing off action where there is no goodwill pertinent to the trademark of the business. This differs from the view taken by English Courts (Budweiser Case) wherefore it has been laid down that for a passing off action there has to some kind of protectable goodwill.
The question which arises here is the distinction between trademark with goodwill and without goodwill. A passing off of publicity of an individual minus the goodwill would be more of an issue of defamation under tort law where as passing off of publicity of an individual as trademark with goodwill would be a case of trademark infringement as it adds brand value to a particular product (e.g. brand ambassador).
where is the full text of the case available? or any citation?
@sh: A scanned copy of the case has been uploaded in the Spicy IP website and a link has been provided in the post.
While the guest post is excellent, the title posted by SpicyIP is misleading and wrong because the case did not involve Daler’s trademark. It involved publicity rights which are distinct from trademarks rights.