Guest Post: When Man becomes a Brand

In this guest post, Deepshikha Malhotra, a 2nd year student from Faculty of Law, University of Delhi, raises some questions of what happens when a person becomes a ‘brand name’. This is Deepshikha’s first entry to our 2nd Annual SpicyIP Fellowship. [Note: We will be accepting submissions till 15th January]

When Man becomes a Brand

In our age of media and advertising, celebrities are paid crores just to endorse products. Their name or image is associated with the product and in some cases, the celebrity endorsing the product becomes the sole USP. And that’s because the celebrity is very much a brand in himself. The mere image of Sonu Nigam in a print ad for a music school is more likely to attract attention than one without it.

How many times in a day do we come across shops with images of Bollywood stars looking back at us? From the local barber’s salon to the corner juice shop- celebrities feature everywhere. But what if Sonu Nigam has no association to that music school whatsoever? Does the school’s use of his image amount to violation of his Intellectual Property rights?

Well, if the trend to trademark your name and image is anything to go by, it does. Kajol, Shah Rukh Khan (TM no. 1744444, 1737534), Sunny Leone (Reg. No.: 3139186 (USA)), Sanjeev Kapoor (Applcn No.: 2006064) and Amitabh Bachchan belong to the long list of people who have trademarked their names and their images in classes ranging from telecommunications to sacks, bags and even thread!

Recent additions to the list are Baba Ramdev, MallikaSherawat, Yuvraj Singh and Sachin Tendulkar.

The legend Amitabh Bachchan went a step ahead to ensure that his trademark voice became literally so, taking the concept of ‘intangible property’ to an all new level.

The name/image of an individual like a celebrity is exclusively associated with him/her. The use of the name or image creates a distinct connection to the individual in the mind of the people and is “capable of distinguishing the goods/services of one person from those of another”. The name/image also carries goodwill.

The idea behind registering the person’s name as a trademark in a class is to prevent misuse of the name in the trade of any item within that class. For example, if Shah Rukh Khan registered himself in the class of say, textiles, then nobody can use his name in the trade/business of textiles, without Shah Rukh Khan’s consent.

This not only allows the individual to protect his name and image from being associated arbitrarily with a plethora of products, but also ensures that he is paid every time he lends his name to a product (like Shah Rukh Khan was, in return of allowing the use of his name for a perfume).  It also allows the individual to prevent the use of his name in company names, accounts on social networking sites (e.g.: in case of Kajol and fake tweets in her name on Twitter) and even unauthorized domain names by virtue of the Uniform Dispute Resolution Policy of the Internet Corproration for Assigned Names and Numbers (e.g. D.M. Entertainment v. Jhaveri, Ratan Tata in Tata Sons Ltd. v. Ramadasoft).

It enables the individual to file an action of passing-off, in-keeping with the requirement of proof of reputation, misrepresentation and irreparable damage to the individual, provided it is in the same class of goods or services in which the trade mark of the individual has been registered. But it does not apply to situations where there is genuine use of a name similar to the celebrity’s name.

However, if this trend is to be followed, and in the absence of any legal development in the field, it could very well amount to rendering our current laws futile. Consider a scenario where singers trademark their voice. What good would then be the contracts that they’re being asked by music labels to sign whereby the singer waives off his/her equal right in a song in return of a lump sum payment? These contracts enable the music labels to deal with the song in any manner they wish without any interference by the singer and regardless of his right in it. However, if a singer trademarks his voice, then even if he does sign such a contract, he still has rights in it by virtue of his trademarked voice, thereby nullifying the effect of the contract. Also, in such a scenario, would a song come within the ambit of both the laws of copyright and trade mark? And whom does it actually belong to?

If images are to be considered, do they become the property of the photographer (copyright of the author) or that of the individual who features in them (image trade mark)? And if the ownership of the photographs vests with the author, how can the same picture be trademarked by the individual?

This trend of seeking trademark protection for celebrity images reflects a problem-solution mismatch. A ‘moral and publicity rights’ problem, more suited for publicity rights or copyright systems, is being thrust upon an ‘economic and not so moral’ trademark regime.

Moreover, in this age of reverse endorsement where the product’s reputation also affects the individual’s and not just vice versa, how far is the ‘trademarked’ celebrity liable to the public for the product (say, under the Consumer Protection Act, or even under the Trade Marks Act for defrauding the public)?

So, apart from bringing out the possibility of conflicts in the area of performer’s rights, author’s rights and the concept of trademark, the phenomenon of an individual becoming a brand highlights the need to develop this new field of property rights commonly called ‘personality rights’ or more aptly, ‘publicity rights’.