As many of our readers would have recently noticed, the cricketing world and social media in general was abuzz with tributes after the recent unfortunate demise of Australian cricketer Philip Hughes. The phrase “63 not out” was used in many of these tributes, both on social media as well as on various memorabilia. In response to this, the Australian Cricket Board has recently decided to trademark the phrase “63 not out”. As his first entry to our SpicyIP Fellowship applicant series, Atharva Sontakke, a 3rd year student from Gujarat National Law University, brings us this interesting post with his take on whether the phrase “63 not out” can be trademarked or otherwise protected in India. [Readers interested in finding out more details about our SpicyIP Fellowship applicant series can click here.]
Cricket, Death and a Trademark! – Cricket Australia trademarks “63 not out”!
By: Atharva Sontakke
Imagine the following scenario:- It is the Cricket World Cup 2015 Final and India wins the World Cup thanks to a splendid innings of ‘63 not out’ by Virat Kohli. Social media is abuzz with #63NotOut and T-shirts and other merchandise with the phrase “63 not out” are selling fast. Hold your thoughts, this might just constitute trademark infringement. According to news reports, Cricket Australia (CA), the national cricket board of Australia, has sought registration of the phrase “63 Not Out” as a trademark. For those not in the know, Australian cricketer Philip Hughes tragically passed away recently after being hit on the head while he was batting at a score of 63 runs. CA has stated that the move is purely defensive and is intended to prevent people who had started selling merchandise and memorabilia related to Hughes bearing the phrase “63 Not Out” from cashing in on his death. This post comments on whether such a phrase is capable of trademark registration or is otherwise protectable under Indian laws.
As per Section 9(1)(a) of the Trademarks Act 1999, in order to be registrable, a mark should not be devoid of distinctive character, that is, it must be capable of distinguishing the goods of a particular proprietor from that of others. Therefore, the mark must either be inherently capable of distinguishing or should be demonstrated to have acquired a distinctive character as a result of the use made of it before the date of application. Since the mark “63 not out” was not used before by CA, there is no question of acquiring distinctive character over a period of time.
So the question to be asked is, whether a purchaser who sees that mark will immediately associate the product to its origin i.e. CA. The phrase clearly does not satisfy this test because any person who buys a product or memorabilia bearing “63 not out” purchases it as it refers back to Philip Hughes and not CA. Thus, the mark does not in any way designate the origin of the goods, and is not capable of distinguishing the products of CA from any other trader. Therefore, it is not registrable as a trademark. A similar view was expressed in the English case of Elvis Presley Enterprises v Sid Shaw Elvisly Yours where trademark registrations for the names “Elvis” and “Elvis Presley” were denied on the ground that the names bear no connection with the origin of the goods, and that consumers would purchase them only because they relate to Elvis Presley. It was further observed that it should not be assumed that only the concerned personality or his legal representatives could rightfully market such products.
Moreover, the object of having a rider of distinctiveness is that other traders should not be restrained from using the same mark without any improper motive. The phrase here is so common that others might want to legitimately use it in the future when the phrase might gain greater value as described in the hypothetical illustration above.
This brings us to another interesting question. Whether there is any exclusivity associated with “63 not out” at all to allow the legal representatives of Hughes to exploit it through CA and remove the phrase from the public domain? In India, legal protection to such a phrase might be possible only as a personality or publicity right. It is however unclear whether Hughes’ publicity rights contractually vest with CA. News reports suggest that the trademark registration was done ‘in conjunction’ with Hughes’ management, thereby implying some sort of an agreement between the parties. Assuming there was no prior contractual assignment of any publicity rights, such rights cannot directly be exploited by an organization like CA only because it organizes the event (cricket matches) in which the person participates. The fact that personality rights cannot be exploited by anyone other than the person himself was recognized in India by Delhi High Court, in ICC Development (International) Ltd. v. Arvee Enterprises where it was observed that personality rights flow from the right to privacy under Article 21 of the Constitution.
But the real question to be asked here is, ‘Can “63 not out” be even considered a personality right at all?’ Although there is very little Indian jurisprudence on the point, all cases thus far have involved commercial usage of names (Shivaji Rao Gaikwad v. Varsha Productions where Rajinikanth’s name and dialogue delivery style were used), images (Sonu Nigam v. Amrik Singh where Sonu Nigam’s pictures were used on hoardings without his consent, Titan Industries Limited v. Ramkumar Jewellers where photographs of Amitabh Bachchan and Jaya Bachchan were displayed on hoardings), or attributes of persons which were unique to those persons. Therefore it is very difficult to categorize “63 not out” as a personality right because it is in no way uniquely related to Hughes’ personality. The purpose of granting such proprietary rights is to reward the time and efforts invested by the persons in creating a favourable brand image of themselves over time. This is also not the case with Hughes as he had not proactively established his identity using that phrase during his lifetime. It will be ironical to recognize a personality right which came into existence only after the death of the person! The phrase in fact originated through social media where Facebook and Twitter were flooded with “#63NotOut” after his death.