In a landmark order regarding right to publicity, the Single Judge Bench held in the case of Digital Collectibles vs Galactus Funware Technology Pvt Ltd that the use of publicly available information of a celebrity will not amount to infringement of right to publicity. Contributing significantly to defining the scope of publicity rights, the Court said that in the absence of statutory basis for right to publicity, one must rely on principles of the tort of passing off. It further went on to say that the right to publicity is subservient to the right to freedom of speech, including commercial speech, and use of a celebrity’s name, image and other information present in the public domain will be protected under Article 19(1)(a) of the Indian Constitution.
When the news of the order broke out, some publications were quick to note that this is a big decision dealing with elements of NFTs. However, it appears to have no particular significance for NFT or blockchain technology, as the fact of one party using NFTs was rather incidental to the issue at hand.
Background- A Duel of (Digital Player) Cards
The plaintiffs are the owner of an Online Fantasy Sports website ‘Rario’ (Plaintiff 1) and five cricket players (Plaintiff 2-6). Plaintiff 1 operates an online marketplace where third parties users sell, purchase and trade the licensed, NFT enabled, “Digital Player Card” of cricketers. These “Digital Players Cards” contain names, photographs and other personalities (called player attributes) of the cricket players and are sold, traded on the platform with real money. To procure the licences, the Plaintiff no. 1 states that it has invested a hefty sum of INR 1,48,32,35,589/- last year alone, along with the sum spent on advertising. The defendants, on the other hand, operate the website Mobile Premier League (Defendant 1) and are the owners of the game, ‘Striker’ (Defendant 2). They offer an allegedly similar platform for trading, selling NFT enabled “Digital Players Cards” with the names and surnames of the players, substituting their real images with copyright protected artistic renditions of the players.
Additionally, the Court allowed submissions by 2 intervenors on the legal position of right to publicity in online gaming in India, considering the wide implication of use of celebrity information in OFS. The intervenors were All India Gaming Federations, the largest non-profit Society for online gaming companies and WinZo Games Pvt Ltd, a tech gaming company.
Arguments of the Parties, and the Order
The Plaintiff argued that violation of right to publicity is not limited to false endorsements but extends beyond the traditional contours of “false advertising laws”. For this, the plaintiff argued that right to privacy is an extended arm of right to publicity, quoting K S Puttaswamy case and case laws from US jurisprudence (such as Haelan Labs vs Topps Chewing Gum, Inc, Motschenbacher vs RJ Reynolds Tobacco Co., Midler vs Ford Motor Co. and Keller vs Elec. Arts Inc).
The Defendants argued that the right to publicity under common law extends only “in the context of endorsements”, citing UK case laws (such as Robyn Rihanna Fenty vs Arcadia Group Brands Limited). Most prominently, it argued that information regarding a celebrity which is available in the public domain cannot be a subject matter of property and no authorisation is needed for using it . Additionally, it supported its argument, stating that the right to freedom of speech enshrined under Article 19(1)(a) of the Indian Constitution allows use of publicly available information for commercial purposes as well. It went on to say that using its own artistic renditions of the players and information about the players is only to enhance the experience of the gamer and it “does not suggest any kind of association or endorsement of a player with Striker”.
The intervenors submitted that tort of passing off is sufficient to deal with the issues of publicity rights. They also pointed out that in the absence of any claim of endorsement by a party, a case of infringement of the publicity rights cannot arise. Significantly, they emphasised that use of celebrity information available in the public domain is necessary for functioning of an online fantasy game.
The Single Judge Bench of the Delhi High Court, decided in favour of the Defendants agreeing that use of information of a celebrity which is available in the public domain does not infringe the right to publicity and right to publicity is a subservient right to freedom of speech and expression under the Indian Constitution. The Court ascertained the scope and limit of the right to publicity, in the Indian context, to the contours of false endorsement and advertising laws invoking violation of the tort of passing off as a test to discern infringement of right to publicity, affirming the position undertaken by the Intervenors to the present case. With respect to the remedies available for an aggrieved celebrity, the Court only cited defamation as a resort.
Publicity Rights- Personality Rights: Same Same, or Different?
In the plaint, the plaintiffs argued that the cause of action arose from the breach of “personality rights” of the celebrities which entails not only right to publicity but also right to privacy and right to integrity emanating from the fundamental right of ‘right to live with dignity’ under Article 21 of the Indian Constitution. The Plaintiffs only associated and argued for violation of the right to privacy of the celebrities under Article 21 but missed out on highlighting this. The Court also did not consider the breach of personality rights of the celebrities which otherwise would have reflected a discussion on the fundamental right to dignity under Article 21 and focused only on the aspect of publicity rights from the umbrella of personality rights (see here, here and here).
Publicity Rights vs Freedom of speech and expression
Striker did not claim any association with the celebrity players and only used the names and statistical information of the performances of the players which is (a) available in the public domain and (b) necessary for functioning of an online fantasy game. Hence the Court, balancing the right to publicity and freedom of speech in a democratic society, upheld that publicity right being a statutory right is subservient to the fundamental right to free speech including commercial speech.
But this takes away from the celebrity the right to associate or disassociate itself from a product/service, or speech/expression. If a third party is allowed to freely use the persona or part of the persona of a celebrity, in a manner that demeans or otherwise negatively impacts the celebrity then the right of the celebrity to live with dignity and privacy could potentially be compromised.
In the light of right to integrity and progress towards the concerns of personal information, when one has the right to be forgotten, it is relevant and crucial to consider giving a celebrity the right to withdraw or disassociate from use of his or her information without prior consent.
The judgement refreshingly brings clarity to the Indian jurisprudence on right to publicity after a very long time but in doing so it has only considered and analysed the cases cited by the parties when it could have stepped beyond finding a competing and relevant argument of right to dignity under Article 21 (see here, here).
As the matter is going for an appeal today (FAO (OS) (Comm) 95 of 2023), it will be exciting to see how the DB perceives the issue!