(This post summarizes a recent matter that had the Delhi HC delving into the subject of publicity rights, and goes on to examine the current degree of legal recognition accorded to publicity rights in India)
The present matter had Cyrus Pallonji Mistry, the Chairman of the Tata Group suing the defendant for refusing to part with two domain names that the latter owned in the former’s name – www.cyrusmistry.co.uk and www.cyrusmistry.co . It appears that the domain names were created barely a month after the public announcement of Mistry’s appointment as the Chairman of the Tata Group was made – soon after which the defendant attempted to the sell the domain names to the plaintiff. In the following months, the plaintiff’s representatives actively pursued the Defendant to amicably resolve the issue. Upon failing to do the same, the plaintiff filed the present suit.
Holding the defendant liable for passing off, the Court took cognizance of Mr. Mistry’s “well known personal name” and the personality rights that flow from it. Noting that the defendant’s actions also amounted to a violation of the plaintiff’s privacy and publicity rights under Article 21 of the Constitution, it passed a decree of permanent injunction awarding punitive damages to the tune of 5 lacs in favour of the plaintiffs and ordered the transfer of the domain names to the plaintiff.
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While I question, once again, the line reasoning that prompted the Court to settle on 5 lacs as the appropriate amount of damages that fulfils the role of being punitive (this issue has been discussed further here) – on a positive note, this matter brought forth a discussion on a subject that has not been adequately debated before the courts in India.
RIGHT OF PUBLICITY IN INDIA
India, like the UK, does not have an independent legislative provision protecting an individual’s right of publicity. This right has largely been enforced in India under the common law tort of passing off, to establish which it is necessary to show that i) the disputed mark possessed goodwill and reputation, ii) there was misrepresentation of the mark creating likelihood of confusion and iii) there was actual damage or likelihood of damage. To show ‘reputation’, the enforcement of this right would, in most cases, inadvertently be dependent on commercial exploitation of the plaintiff’s mark – effectively justifying why a commoner’s name may not be protectable under the tort of passing off.
Although Section 2(1)(m) of the Trade Marks Act that defines ‘marks’ also includes names within its ambit – the Act does not make any specific provision for Publicity or Personality Rights. While Indian courts have so far had little opportunity to debate over the question of publicity or personality rights, it is expected that discussions based on different elements of the Right to Publicity will pave the way for its legal recognition. (SpicyIP has previously covered Indian cases on the subject of personality rights related to different celebrities – Steve Irwin, Sonu Nigam, Daler Mehndi, Rajnikanth, Sridevi and Sourav Ganguly)
The right to publicity as a form of the right of privacy was perhaps first recognized in India by the Supreme Court in R RajaGopal v State of Tamil Nadu, where the Court stated that “the first aspect of this right must be said to have been violated where, for example, a person’s name or likeness is used, without his consent”.
The right to publicity as one that extends only to persons was upheld by the Delhi High Court, in ICC Development (International) vs. Arvee Enterprises and Anr –
“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. An individual may acquire the right of publicity by virtue of his association with an event, sport, movie, etc. However, that right does not inhere in the event in question, that made the individual famous, nor in the corporation that has brought about the organization of the event…”
Liability for infringement of the Right of publicity depended on proving the existence of two factors, as held by the Delhi HC in Titan Industries Ltd. vs M/S Ramkumar Jewellers :
“Validity: The plaintiff owns an enforceable right in the identity or persona of a human being.
Identifiability: The Celebrity must be identifiable from defendant’s unauthorized use. Infringement of right of publicity requires no proof of falsity, confusion, or deception, especially when the celebrity is identifiable. The right of publicity extends beyond the traditional limits of false advertising laws”.
The present case is also reminiscent of the Arun Jaitley v. Network Solutions cybersquatting matter (covered here), where although the Delhi HC didn’t explicitly uphold the principle of “publicity rights” per se, its decision is based on the essence of the principle itself – it notably held, “A necessary corollary which follows is that the right to use a personal name is superior than that of the commercial right of using the trade mark and thus the entitlement to use it as a trade mark or domain name vests with the person having its personal name. Afortiori it can be conveniently stated that the name which besides being a personal name is also distinctive due to its inherent distinctiveness and also by virtue of the popularity of the person specific also fulfils the criterion of trade mark”.
Because Indian judicial interpretation of right to publicity is at a nascent stage, several questions are yet to be addressed by the courts. Considering the ambiguousness and subjectivity of the definition of the term “celebrity” itself, it seems tough to determine what considerations would lead to a conclusive determination of who falls within the ambit of a “famous or well-known person”. Secondly, it is not known as to whether this right survives death in India, and if it is capable of being transferred before death. In the USA, the states of California and South Carolina, for instance, both recognize post mortem rights to publicity – but while California imposes a durational limit of 70 years after the person’s death, it is unclear as to whether South Carolina courts have decided on a period for which the right shall extend (see Gignilliat v. Gignilliat, Savitz & Bettis L.P). On the other hand, New York does not recognize post mortem rights at all.
The law also starkly differ in these states as regards the persons to whom this right is extended to – for instance, while in California and New York, the right of publicity as embodied in their respective statutes( Civil Code Section 3344 and Art. 5 of New York’s Civil Rights law) and protect all persons irrespective of their social status – it appears that in South Carolina and Minnesota the right is not statutory but derived from the common law right of privacy, and is extended only to celebrities (see Uhlig LLC v. Shirley and House v. Sports Films & Talents respectively).
Considering the contrasts in the legal position on the subject of the right of publicity in India vis-à-vis USA – largely attributable to the slow pace of the right’s development in the country – it is going to be interesting to see how the Indian judiciary interprets the various facets of the right to publicity that currently remain unexplored.
