In what could be an interesting publicity rights case, ace cricketer Gautam Gambhir has taken a Delhi based restaurateur to Court for unauthorized use of his name in the tagline of his pubs. The twist is…the hotelier is named Gautam Gambhir too!
Facts
Gautam Gambhir discovered that two pubs in Delhi, ‘Hawalat’ and ‘Ghungroo’, were using the tag line ‘by Gautam Gambhir’, which was causing confusion among his fans. A teetotaler himself, he was distressed at this ‘false association’ caused by the tagline and claimed that his name had been used without his consent in a way that can prejudice his image.
On the other hand, the proprietor has claimed that the tagline refers to his name, which is also Gautam Gambhir; and that his restaurants, neither by name nor by ambiance, use any cricket lingo, symbolism or images to create the ‘false association’ being alleged. Arguing that he has a right to use his name for his ventures, he has denied the allegations of the Cricketer. He further added that he has run a resto-bar called ‘Blu Wavs’ with the same tagline for years, and no such claims have been made in the past.
Plaintiff’s Claim
The Cricketer claimed that due to his reputation and ‘immense’ recognition accorded to him, his name has attained a ‘distinctive and peculiar indicia of its own’, leading to an immediate association of his persona with the name. He further added that by using his name in a commercial venture, the restaurateur has exploited the value of the name as the public identifies every activity in such a venture with the cricketer. He furnished comments on social media, including tweets, as evidence of the confusion caused by the tagline. Based on this, he requested the Court to restrain the proprietor, DAP & Co., from using the tagline.
Publicity Rights
Publicity rights as a sphere in itself in India’s IP Law is still in its nascent stage of development, covered extensively by us here, here and here. Publicity rights were recognized in Indian jurisprudence by the Delhi High Court in ICC Development (International) v. Arvee Enterprises, the judgment states-
“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…Any effort to take away the right of publicity 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. No persona can be monopolised. The right of Publicity vests in an individual and he alone is entitled to profit from it.”
The justification of publicity rights rests in the value afforded to the reputation and goodwill of the celebrity. As the fruit of labor of the holder, only he/she should have the sole right to use it commercially in a manner they consider suitable a la Locke’s labor theory.
The two pronged test for determining the liability for infringement of publicity rights was laid down in Titan Industries Ltd Vs. Ramkumar Jewellers, which stated-
“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.”
This was recently followed in the famous case filed by Rajnikanth against the film ‘Mai Hoon Rajnikanth’ in which the director had not only used Rajnikanth’s name without prior permission, but also his style/ caricature and image. The relevant paragraph enunciates-
“In Titan Industries Ltd Vs. Ramkumar Jewellers it has been observed that ‘No one was free to trade on another’s name or appearance and claim immunity’…In the instant case, on seeing the title of the impugned movie, it could be easily inferred that the public perspective about the impugned movie appears to be only with reference to the plaintiff herein alone and not connected to any other person…”
It also highlighted the element of mala fide usage of the image and name of the celebrity-
“The defendant has deliberately used the plaintiff’s name/image/caricature/style of delivering dialogues in its forthcoming feature film only with a mala fide intention to derive illicit benefits based upon the goodwill emanating from the well known personality status of the plaintiff.”
This was referred to as the infringer’s ‘intention’ or ‘state of mind’ in Titan, listed as one way of determining ‘identifiability’.
As a plain reading of the above cases would indicate, there are two factors that have to be proved by the Cricketer to succeed (a) validity and (b) identifiability.
Though the first criterion stands proved as he does own a right in his name which, he alleges, is being used by the proprietor, difficulties arise in fulfilling the second criterion.
Identifiability requires that the celebrity must be identifiable from the defendant’s unauthorized use. This can be presumed from the evidence of the infringer’s intent to trade upon the identity of the plaintiff or from some comparison of the infringer’s use and the plaintiff’s identifying features. This was obvious in the Titan case as the infringing posters bore pictures of Amitabh Bachchan and Jaya Bachchan. Similarly, in the Rajnikanth case, the name, style and image of the South Indian Superstar was very evidently being used mala fide to illicitly exploit his popularity and cultural image. In both the cases, the intent of the infringer or the mala fide usage of the name/image/ style was prima facie determinable.
In the present scenario, though it is undeniable that the cricketer Gautam Gambhir has a massive fan following and international repute; it is not equally simple to show that the proprietor intended to or traded on this reputation or that it was definitely him the proprietor had represented in the tagline. As stated by the restaurateur himself, he never claimed that these pubs were owned by the cricketer or associated with him in any manner, and no symbols, image etc. of him or cricket were used to either promote his pub or formed a part of the ambience. Most importantly, he too has a bona fide right to use the name ‘Gautam Gambhir’ for his ventures, since his own is the same.
A similar scenario came before WIPO, where Armani sued A.R Mani, an artist, for registering the domain name “armani.com” and thus infringing its rights. The Panel held that though Armani was a well known trademark, this was not enough to show the existence of a right over the domain or its infringement. The Panel held that A.R Mani had a legitimate interest in the domain name owing to his own name and previous use, which Armani had failed to falsify, ruling against the Brand.
Similarly, no doubt that many associate the name Gautam Gambhir with the famous cricketer, but that in itself will not be enough to prove an infringement of publicity rights; the proprietor too has a bona fide claim to use his own name to promote his ventures, which unless falsified, stands as a defense to the Cricketer’s allegation.
The next hearing is scheduled to be on July 13, 2017.
The order can be read here-Gautam Gambhir Order
Image from here.
Lovely article! Clear concise, and very well explained. Particularly in the murky field of Personality rights in India
Quick question though, because this part bothered me a little.
” The justification of personality rights rests in the value afforded to the reputation and goodwill of the celebrity. As the fruit of labor of the holder, only he/she should have the sole right to use it commercially in a manner they consider suitable a la Locke’s labor theory”. I disagree that a Lockean justification of the Labor theory is the valid philosophical justification, and rather think that it is a Kantian justification, is it not? A Lockean justification runs into numerous problems, such as the fact that a Locekan justification is nothing more than an individual exerting right on something that is a marketable commodity, which is purely used for economic purposes. This ignores the non-economic interest narrative, aka Privacy. In fact our courts themselves root its justification in Article 21, and a right to privacy ( As an aside, the Aadhar case probably has a concommittant effect on the Right to Publicity, if that is the justification.)
The above isn’t just a theoretical discussion, which serves some esoteric interests, but rather a real one, because unless we pull our socks up and decide what is going to be our justification for Publicity Rights, we will not be able to draft a robust statutory law, and it would waddle in the uneasy waters of common law, where we IP enthusiasts must wait with bated breath for a celebrity’s namesake to open up a bar and sign off on it with his own name.
Hello,
Thank you for your kind words. While you’re absolutely correct about theoretical justifications forming the very basis of any law and its subsequent interpretation, allow me to justify my grounding in the Lockean theory.
Personality rights can be (very roughly) divided into two broad categories: publicity rights and privacy rights. While the first treats the reputation, fame and goodwill of the celebrity as an economic commodity to be exploited by him/her only, the right to privacy prevents people from writing about the celebrities’ personal lives, i.e. the information that does not exist in the public domain, which is grounded in an Article 21 justification. Cases about the latter are the Auto Shankar case, the Khushwant Singh case and the Veerappan Case, which clearly lay down the principle of privacy. While I agree that the Lockean justification does have its drawbacks, it fits perfectly with the objective of publicity rights (exclusive economic exploitation of reputation) while the Article 21 justification fits the bill for the second kind of personality rights, i.e. privacy.
I edited the line that caused the confusion, replacing ‘personality’ with ‘publicity’.
Hope this helps!
Links to Judgments: Auto Shankar Case -https://indiankanoon.org/doc/501107/
Khushwant Singh Case: https://indiankanoon.org/doc/1203848/
Veerappan Case: https://docs.google.com/file/d/0Bxi2TzVXul5ZUndLVkFNdlZlSDg/edit
Prashant Sir’s analysis of the same can be found here: https://spicyipweb.wpcomstaging.com/2013/03/madras-high-court-judgment-gives-boost.html
Hello Maitreyee!
Thank you for your response! The cleaving of personality rights into Publicity and Privacy aka an economic and non-economic right has been met with great controversy and doctrinal confusion in the academic circles. Amongst them is the fundamental question of where do you draw the line. An example that would help:
1. A is a well known celebrity, who passes away suddenly. X makes a movie of A, does A have privacy/ publicity rights after death? If privacy only, then how can A’s estate restrict A from using his likeness in the movie? Because Likeness/ imitation etc. are not under “privacy law” they fall under publicity rights, which is an economic right. Taking your argument a bit further, that would lead to the improbable paradox whereby you apply for a non economic relief for a violation of an economic right. Which is why they are not as segregated as you argue.
I do believe however, that a Lockean Justification, while traditional, has severe shortcomings, that Kant does not. For one, the Lockean appropriation scheme does not require the person appropriating the property right to exercise any will on the object, while the Kantian perspective does. In other words, if I pick up an apple/acorn (Locke) even with a gun pointed to my head that would justify a Lockean vesting of a property right, while it would not for Kant. Kant’s idea is simply, person exerts will on object ( Here the object is self, from human capital), after exerting will the object is off limit to others ( bodily autonomy) and this bodily right can be possessed by a person and is therefore a property right. What does it protect? The accumulation of the human capital exerted by the celebrity to become a famous person, thus, right of publicity.
If you haven’t already, you might want to read this excellent law review article on Kant and the Right of Publicity,
http://scholarship.law.duke.edu/cgi/viewcontent.cgi?article=1064&context=dlj
Additionally, Professor Merges’ chapter on Kant and the Right of Publicity in Justification of Intellectual Property Pages 96-101
https://tinyurl.com/y9uwvv9h
Thank you!
https://indiankanoon.org/doc/106318101/