CELEBRITY RIGHTS: PROTECTION UNDER IPR REGIME by-Rinkal Goyal
A Celebrity, like any other individual, enjoys the right of privacy. The fame and reputation which a celebrity holds give rise to certain other rights. These rights are protected under Intellectual property laws widening the scope of intellectual properties. Celebrity rights constitute a form of intangible property, which he exclusively enjoys. These rights are susceptible to encroachment or unauthorized use. The paper discusses the international conventions which directly or indirectly protect celebrity rights. A modest attempt is made to acknowledge the protection granted to celebrity rights under Copyright and Trademark Law, passing off remedy under common law. It also goes on to discuss the judicial approach towards the publicity right of celebrities.
Keywords: Celebrity rights, protection, publicity rights, right to privacy, moral rights.
Celebrity is an individual of eminent profile enjoying recognition of public at large. He relishes greater degree of social status. Such a person enjoys a bundle of rights owing to his goodwill and reputation in public. The emerging phenomenon of celebrity rights, which is protected under Intellectual Property Laws in India, extends to performances, digital merchandising and moral rights. The word celebrity is explained at length in latter part of this paper. Various international conventions address this issue, whereas Indian laws are still at a pre-mature stage in this regard. Celebrity rights are protected under copyright, trademark, passing-off, etc. The paper discusses the rights to publicity, privacy, performance, moral/personality right that vests in a celebrity. The relevant statutes and judicial approach in context of protection of rights of celebrities in India will be elaborately explored. Right to
1 Student at Symbiosis Law School, Pune
privacy hold its root to the Part III of the Constitution which deals with Right to Life under Article 21, in whose ambit Right to Privacy is covered.
Celebrity rights are being abused in several ways but mainly for commercial purposes. Their photographs, voice and identities have often been misused for many purposes such as advertisements, promotions purposes. The inquisitiveness of public often leads to cases of details of private life of such celebrities being leaked in public giving rise to protection of their privacy rights. There is an urgent need to form a concrete statute that recognizes celebrity rights under intellectual property laws, thereby protecting their property rights against any violation or unauthorized use. In India, these laws are at a pre-mature stage. Performance and publicity rights are the ambit to which celebrity right extends. Moral rights are conferred on authors and performers which do not include within its bound every type of celebrity.
REVIEW OF LITERATURE
Howard I. Berkman, The Right of Publicity–Protection for Public Figures and Celebrities2 – The author has discussed the emergence of right of publicity emanating from right of privacy. These two rights are contrastingly different in terms of protection of personal and pecuniary interest of individuals. It stresses the recognition of right of publicity in emerging era of digital media, advertising and promotion to protection public figures from economic appropriation by others.
Vinay Ganesh Sitapati, Conferring ‘Moral Rights’ on Actors: Copyright Act and Manisha Koirala Case3- The author highlights the need to confer moral rights on actors and their blatant violation which takes place in film industry by case study of Manisha Koirala. Although the article holds less value after coming of the Copyright Amendment Act, 2012, which brought forth performers’ moral and economic rights in a work. Yet the prior explicit view against granting of authorship to actors and the logic behind is an interesting study.
2 Howard I. Berkman, The Right of Publicity–Protection for Public Figures and Celebrities, 42 BROOK. L. REV. 527 (1976).
3 Vinay Ganesh Sitapati. Conferring ‘Moral Rights’ on Actors: Copyright Act and Manisha Koirala Case, 38 no. 14, Economic and Political Weekly, 1359–61, (2003), http://www.jstor.org/stable/4413397.
Anurag Pareek and Arka Majumdar, Protection of Celebrity Rights – The Problems and the Solutions4- The author has majorly focused on the Celebrity’s publicity rights and lack of recognition of the same in India. It marks these rights as property of a person which has both dignitary and commercial aspects. The need for legislative action to recognize commercial aspects of publicity rights along with adequate exception of right of speech & expression has been made in this research.
Dr. Ranjana Ferrão, Status of Celebrity Marks in India5- The research sheds light on the registration of celebrity marks worldwide to prevent encroachment of their name. Celebrities try to get their name registered as a trademark to prevent unauthorized commercial exploitation of their names. In India, the strategy generally followed is defensive registration without intent to use the mark nullifying the basic purpose of registration of a trademark. Celebrities adopting an approach of protection and commercial exploitation of their name would suffice the purpose of both.
After studying the available literature and relevant articles, the researcher has not come across any research that primarily focused on the protection of celebrity rights in lieu of available intellectual property laws in the country which shall be studied in the current research study.
To analyze the existing intellectual property laws in the light of protection granted to celebrity rights in India.
The research model undertaken tends to be qualitative, consisting of secondary data like books, journals, reports and articles from credible authorities in the field. The researcher has adopted an analytical approach from the literature available on the subject and gave suggestion on the same.
4 Anurag Pareek and Arka Majumdar, Protection of Celebrity Rights – The Problems and the Solutions, 11 JIPR, 415-423(2006).
5 Dr. Ranjana Ferrão, Status of Celebrity Marks in India, JLJ, 64-68 (2017).
Celebrities have the exclusive right to exploit the value of being a celebrity.6 Today anyone who is able to capture public attention deems to be a celebrity. Actors, artists, authors, models, politicians, musicians, athletes, singers, well-known business executives, television personalities are all deemed to be celebrities. Emerging use of internet and social media is adding to the scope of this phenomenon. It is public perception which is the deciding factor whether an individual enjoys the status of a celebrity or not.
The term Celebrity originated from a Latin term ‘Celebritatem’ that means ‘the state of being famous’.7 In the case of Martin Luther King Jr Center for Social Change v American Heritage Products Inc,8 it was pronounced that the term ‘celebrity’ incorporate more than movie actors, ball players, rock stars. It includes other than the traditional actors and the rights belonging to a celebrity survives after his death being inheritable in nature. Being a celebrity and enjoying the rights attached to the same is a reward of success attained by the efforts put in by various types of celebrities. Where businessman earns it by wit, sportsmen and artist put in their skills, while actors use their dramatic talent to reach this stage. The ultimate power of recognizing a celebrity vests in the public which is stipulated by the media. Apart from the modern celebrities, Royal prince and princess acquire celebrity status by birth, which do not require any skill or talent but automatic.
Celebrity enjoys many rights such as right to privacy, publicity rights, performance rights, personality rights and so on. In this paper we will be addressing publicity rights, privacy rights and personality rights.
Right of publicity implies the ingrained asset of every individual to check the commercial usage of their identity in conformity with his desire.9 This right is granted to protect a celebrity to ensure that he enjoys financial benefits of his work. Any digital handling and
6 White v. Samsung Elecs. Am., Inc. (1992) U.S. App. LEXIS 19253 (9th Cir. Aug. 19, 1992).
6 Morgan Piers, The power of celebrity, http://www.arabianbusiness.com/the-power-of-celebrity-122473.html (23 January 2010).
8 Martin Luther King Jr Centre for Social Change v American Heritage Products Inc, 694 F.2d 674 (11th Cir 1983).
9Mccarthy J Thomas, The Spring 1995 Horace S Manges Lecture: The Human Persona as Commercial Property: The Right of Publicity, Columbia-VLA Journal of Law and the Arts, 19 (1995) 131.
subsequent exploitation of existing photographs and videos of celebrities by making unauthorized use of the same poses a real threat to their reputation. Further, unveiling of manipulated images on befitting websites cause damage to their goodwill among the public. Nonetheless, Right to publicity is at infant stage in country especially India and in developed countries their approach is different and no uniform justification has been crystallized.
Initially, a performer possessed all the rights of voice, publicity, performance, privacy in his work where his personality was involved. With the advent of audio-visual technology, threat of bootlegging has emerged which is basically recording of live performances unauthorizedly. Moreover, animation technology has possibly encroached upon the appearance of celebrities, thereby creating look-alikes of actors, performers etc.
Commercial gains has encroached the privacy of celebrities. Their private life is no more personal and has become a matter of gossip and more and more public is involved in their daily businesses, thus infringing their right to privacy.
Right to Privacy is an integral part of Right to Life guaranteed under Article 21of the Constitution which also provide right to live with dignity. Often, it happen that when privacy of a celebrity is harmed, then his right to live with dignity is also affected and thus provokes Article 21 of the Constitution.
Public generally tends to personalize the private life of a celebrity and celebrities try to control the flow of information as the same may sometimes led to humiliation and embarrassment for celebrity. Right to privacy is inclusive of the right ‘to be let alone’ which was put forth by Warren and Brandeis in their doctrine of privacy.10 Remedy for violation of privacy can be availed as an assertion of right or an action for invasion of privacy.
Personality is an attribute by which one individual is distinguished from another. By creating one’s personality an individual sets his behavior in the society and creates his image in front of others. Each personality contributes individually as per their talent. Personality becomes
10 Louis Brandeis D & Warren Samuel D, The right to privacy, Havard Law Review, 4(5)(1890), http://groups.csail.mit.edu/mac/classes/6.805/articles/privacy/Privacy_brand_warr2.html (11 January 2010)
the property of the celebrity and any encroachment of the same by digital or other means without permission gives rise to claim for protection of the same. Also, contribution of an individual to the society is an extension of his personality.11
Globally this concept of celebrity right is evolving slowly and steadily. Different International Conventions and treaties address this concept and provide provisions for performer’s rights. Some of the major conventions in this subject-matter are Trade related aspects of Intellectual Property (TRIPS) and the WIPO Performances and Phonograms Treaty (WPPT), 1996.
• TRIPS, 1994 – The agreement provides protection to performers, phonogram producers and broadcasting organisation. Article 14 grants power to the performers to manage certain acts such as fixing their performance, reproducing such performance and broadcasting of live performances. The term of protection for performer’s rights and producers of phonograms lasts up to 50 years from the next calendar year in which such performance occurred. Unlike other international arrangements, TRIPS agreement has an effective enforcement mechanism wherein member states may reach out to WTO’s dispute settlement mechanism in case of non-compliance of the provisions.
WIPO Performances and Phonograms Treaty (WPPT), 1996 – The basic objective behind signing of this treaty was to redefine in clear terms the rights of performers and producers of phonograms in a uniform manner. It lay down the rights of performers and producers of phonograms, the two beneficiaries in growing digital era. It also focuses on the need to strike a balance in the rights of performers and producers of phonograms and the larger public interest. The public interest here refer to the fair use doctrine particularly education, research and access to information which is tried to be achieved.
11 Datta A, Celebrity rights: A legal overview, http://www.goforthelaw.com/articles/fromlawstu/article31.htm (21 January 2010).
PROTECTION OF CELEBRITY RIGHTS
In the contemporary era of internet and digitisation, it has become easier to violate the rights of celebrity. The growth of communication media has increasingly publicised image of celebrities, invasion of their privacy and defamation of their moral rights in community unauthorizedly at a faster pace.
A recent ruling given by WIPO Arbitration and mediation Centre in the case of Julia Fiona Roberts v. Russell Boyd, the defendant launched a website named Julia Roberts.Com. In the name of plaintiff, defendant organised online auctions to sell his goods on his website which was visited by public worldwide. The defendant promoted his website in an unauthorised manner by using publicity rights of plaintiff. It was held that the trademark was registered in the name of plaintiff and it was used with bad motive by defendant to make ill-gains.12
It can deduced that the concept and protection of celebrity rights has become significant owing to increasing popularity of media and global communication through internet, leading to transgression of moral, publicity rights of celebrities.
The intangible rights of publicity and personality belonging to celebrity are often abused or misappropriated. These celebrities can avail the rights of assignment and licensing for commercial benefits. However, a protection mechanism is required to restrain unauthorised commercial exploitation of a celebrity’s identity or intruding privacy of celebrity rights. A specific regulation is not in place to protect interest of these celebrities, but the laws in action for protection of the same are Trademark Act, Copyright Act and passing off action. The fundamental right under article 21 through widest judicial approach protects the right of privacy of every individual including a celebrity under the Constitution of India.
Copyright laws in nations like United States, Germany, European Union, France protects rights of celebrity in varying degrees. In US, the judicial decisions attributes that personality and publicity rights are inclusive of the name, images13, voice14, style15, appearance16, etc. thereby, making any unauthorised use to be an act of infringement of the rights of person in
13 Healan Laboratories Inc V Topps Chewing Gum Inc (1953) 202F.2d.866 (2d Cir)
14 Waits v. Frito-Lay, Inc. 978 F.2d 1093 (9th Cir. 1992)
15 Motsenbacherv .J. Reynolds Tobacco Co. (498 F.2d 921,9th Cir. 1974)
16 White v. Samsung Electronics America, Inc. 971 F.2d 1395 (9thCir. 1992)
whom right vests. In Canada, the marketable value of an individual as to his likeness among public raises ground for an action in appropriation of personality of such person by any other being.17 In EU, the European Convention on Human Rights provides under article 8 that taking of photos without the consent is violative of the rights of celebrity. Goodwill is attached to the personality and unauthorised use gives rise to compensation.18 In France, Article 9 of French Civil Code recognises and protects personality and publicity rights of individual. Any encroachment of personality, history and privacy is actionable per se.
Indian Scenario: The term ‘celebrity’ does not come under the purview of the Indian Copyright Act, 1957. The act provides protection to the moral rights of author, performer’s rights and publicity rights to a limited extent. These rights covers within its ambit protection granted to celebrity rights. The Copyright Act, 1957 defines that a “performer includes an actor, singer, musician, dancer, acrobat, juggler, conjurer, snake charmer, a person delivering a lecture, or any other person who makes a performance.”19 Any person who is a performer can be a celebrity but not every celebrity necessarily falls into the definition of performer. This leaves a gap in protection of celebrity rights.
Section 38 provides protection to the performance of a performer which subsists for 50 years thereby protecting the rights attached to such performance. After amendment of 2012, performer’s right is granted irrespective of incorporation of his performance in any cinematographic film. However, the performer has no right to object to the enjoyment of performer’s right by producer in exchange for royalties of making commercial use of the same.20
The Indian Copyright Law grants protection to moral rights of performers and authors under Section 38B and section 57 respectively. Both of these sections cover the ambit of celebrity rights. The most significant moral right of an author or performer is right to be identified and claim authorship or performance. A performer enjoys right to integrity of his performance against any mutilation, distortion, modification of his performance which is prejudicial to his reputation. An author has the right to integrity, right to paternity and right to divulgation of
17 Krouse v Chrysler Canada Ltd 1971 5 CPR 2d 30
18 Irvine v Talksports  EWCA Civ 423
19 The Copyright Act, 1957, § 2(qq), No. 14, Acts of Parliament, 1957 (India).
20 Id. at § 38A.
his works. Any infringement gives rise to claim for damages or injunctive action. These provisions cover publicity rights belonging to a celebrity. Any commercial use of identity of a celebrity in any manner whatsoever without permission arises a cause of action in favor of the concerned celebrity and he has got the right to control use of his identity where, when and how. The legal issue not yet resolved remains the same whether a digital image is the property of the author/creator or of the person who features in the image. This arena of law is to be explored and needs more clarity.
The Indian Judiciary is yet to elaborately discuss publicity rights that vests in an individual. The first case decided by Delhi High Court which recognized Publicity rights is ICC Development (International) Ltd v Arvee Enterprises21. The court observed that right of publicity owes its origin to right of privacy which belongs to an individual only or his personality such as name, voice, style, etc. Such right may be acquired by virtue of any newsworthy event, sports, movie or so on but the right inhere solely in the individual but event. It is now sufficiently clear that right of publicity cannot be taken away by the person, even by the event organiser which became reason of publicity. The individual enjoys the economic benefits attached to his personality and any violation gives rise to right under IP laws and Part III of the constitution. A celebrity therefore has the right to protect his image and name as a constitutional right. There are a series of landmark judgements which shows a trend towards development of celebrity rights in future. The person shall have an enforceable right in his identity and any use of his identity by another person in an unauthorised manner causes infringement of his right of publicity.22 An individual is permitted to prevent others from using his name and fame for economic purposes, to protect his individual autonomy and personal dignity.23 In Rajat Sharma v Ashok Venkatramani & Anr,24the personality and publicity rights of plaintiff was violated to which the Delhi High Court granted relief. The Court held that Plaintiff had an unassailable right in his public persona and identity as a famous television show host. Zee’s advertisement campaign was prima facie unlawful and that the balance of convenience lied in favour of plaintiff.
21 ICC Development (International) Ltd v Arvee Enterprises & Ors. (2003) 26 PTC 245 Del.
22 Titan Industries Ltd. V. M/S Ramkumar Jewellers, 2012 SCCOnline Del 2382.
23 Justice K. S. Puttaswamy (Retd.) v. Union of India, AIR (2017) SC 4161.
24 Rajat Sharma v Ashok Venkatramani & Anr, CS(COMM) 15/2019.
The judicial trend in protecting the persona and popularity coupled with commercial value of celebrities, the rights of personality and publicity are protected. The celebrities have also become vigilant in enforcing their rights by preventing unauthorized use of their images or association by third party in any disparaging manner. The logic behind granting of protection to celebrity is that the celebrity has the right to control when, how and where his identity should vest and not that no one should commercialize their identity.
To ward-off the exploitation of celebrity names, Celebrities around the globe are protecting their names by registering their name as trademark. Such registration serves dual purpose of protection and commercial use of the mark by celebrity himself and authorised contracts and assignments for use of trademark in advertising, promotion and so on.
The trend for registration of celebrity marks in India is merely to protect the esteemed worth of a person, but the trademark protection is granted when the mark is actually been used on goods or services. The Trade Marks Act, 1999 provides definition of mark under section 2(1)(m) which include name, signature, word or letter within its ambit, providing scope for registration of names of celebrities as trademark for the purpose of protection and its use or registration by any person as an encroachment upon their right. A trademark cannot be registered merely for the purpose of protecting brand value of a person. Therefore, registration of any such name should be with respect to any class of goods or services. Shah Rukh Khan too has filed applications to register trademark ‘SRK’, in almost all the 45 classes. However, if such defensive registered mark remains unused for a period of five years from the date of registration, it can be removed from the register of trademarks.
Such registration of celebrity marks will open the door for authorised assignment and licensing of his personality for commercial purposes under relevant class of goods and services. This will also help to guard those aspects of his personality against unsanctioned use which are registered as it provides prima facie evidence of validity and ownership of mark. Under Class 41, movie names can be registered and granted protection. Fictional characters are also registered as a trademark. It can be safely inferred that celebrities are registering their names as trademark. Various instances of the same are- Kajol25 has
registered its name under broadcasting, household utensils, websites, carpet, rugs etc., Ajay Devgan, Sunny Leone and so on.
In D.M. Entertainment .v. Baby Gift House and Ors,26 the Court prohibited the defendants from using the mark Daler Mehndi as his domain name, thus recognizing that the performer’s name had a prized value which is being infringed. In Sourav Ganguly v. Tata Tea,27 the plaintiff, after his return from England found that a tea company was making ill-gains by using his name. The defendants lured customers by giving a chance to congratulate the cricketer. The court ruled in favor of plaintiff by accepting that his name and personality were his Intellectual Property.
In instances of personality merchandising when an individual’s name, performance, goodwill, or characteristics are abused for commercial gains, the common law remedy of passing-off can be claimed.
Under passing-off, goodwill or reputation of a person is misrepresented by another to pass off his merchandise as the goods of other. Simple example of such action is taken that when image or fame of celebrity is used for advertisement purpose without his authorisation so as to take advantage of his reputation, will amount to the action of passing-off. In India, this action will succeed only when the person claiming the action of passing-off can establish himself as celebrity by virtue of public recognition, misrepresentation of the such recognition and irreparable damage to the individual.
Celebrities have right to privacy, right of publicity and moral right that ought to be protected. The unprecedented growth of media and internet has led to rise in the number of celebrities and subsequent derogation of their rights. It is the appropriate to introduce a legislation in this regard to give effect to their rights and an action against violation of the same. Despite international treaties recognizing this aspect, India has taken no concrete step to protect their rights. The rights of a celebrity which come within the ambit of performer’s right are protected under Copyright Act, 1957.
26 D.M. Entertainment .v. Baby Gift House and Ors, CS(OS) No. 893/2002.
27 Sourav Ganguly vs Tata Tea Ltd, CS no. 361/1997.
These rights need to be protected through a multi-phased approach under copyright, trademark, passing off and anti cyber squatting laws. Litigation can be the effective mechanism in action wherever legislation do not provide a solution. Awarding higher damages might stop infringement of rights by those who malfunction in appreciating celebrities’ privacy in the past. The active judicial approach has recognised and somehow prevented any encroachment of celebrity rights. The legislature must settle down commercial aspects of celebrity rights which will fill the lacunae in law and keeping up with rapid commercialization of celebrity status.
A few suggestions to safeguard celebrity rights are as follows:
• Registration of trademark for the name, signature, and brand is highly advisable to prevent its use by another.
• Registration of Copyrightable subject-matter such as images, performances of celebrities to prohibit unsanctioned use and control over reproduction, distribution and publication.
• Celebrity domain names can be acquired and registered to reduce the possibility of cyber-squatting and misrepresentation.
1. Howard I. Berkman, The Right of Publicity–Protection for Public Figures and Celebrities, 42 BROOK. L. REV. 527 (1976).
2. Vinay Ganesh Sitapati. Conferring ‘Moral Rights’ on Actors: Copyright Act and Manisha Koirala Case, 38 no. 14, Economic and Political Weekly, 1359–61, (2003), http://www.jstor.org/stable/4413397.
3. Anurag Pareek and Arka Majumdar, Protection of Celebrity Rights – The Problems and the Solutions, 11 JIPR, 415-423(2006).
4. Dr. Ranjana Ferrão, Status of Celebrity Marks in India, JLJ, 64-68 (2017).
5. White v Samsung Electronics America Inc, 971 F.2d 1395, 1397 (9th Cir 1992), cert denied, 113 S. Ct. 2443 (1993).
6. Martin Luther King Jr Centre for Social Change v American Heritage Products Inc,
694 F.2d 674 (11th Cir 1983).
7. Morgan Piers, The power of celebrity, http://www.arabianbusiness.com/the-power- of-celebrity-122473.html (23 January 2010).
8. Mccarthy J Thomas, The Spring 1995 Horace S Manges Lecture: The Human Persona as Commercial Property: The Right of Publicity, Columbia-VLA Journal of Law and the Arts, 19 (1995) 131.
9. Louis Brandeis D & Warren Samuel D, The right to privacy, Havard Law Review, 4(5)(1890),
http://groups.csail.mit.edu/mac/classes/6.805/articles/privacy/Privacy_brand_warr2.html (11 January 2010)
10. Datta A, Celebrity rights: A legal overview, http://www.goforthelaw.com/articles/fromlawstu/article31.htm (21 January 2010).
12. Healan Laboratories Inc V Topps Chewing Gum Inc (1953) 202F.2d.866 (2d Cir)
13. Waits v. Frito-Lay, Inc. 978 F.2d 1093 (9th Cir. 1992)
14. Motsenbacherv .J. Reynolds Tobacco Co. (498 F.2d 921,9th Cir. 1974)
15. White v. Samsung Electronics America, Inc. 971 F.2d 1395 (9thCir. 1992)
16. Krouse v Chrysler Canada Ltd 1971 5 CPR 2d 30
17. Irvine v Talksports  EWCA Civ 423
18. The Copyright Act, 1957, § 2(qq), No. 14, Acts of Parliament, 1957 (India).
19. ICC Development (International) Ltd v Arvee Enterprises & Ors. (2003) 26 PTC 245 Del.
20. Titan Industries Ltd. V. M/S Ramkumar Jewellers, 2012 SCCOnline Del 2382.
21. Justice K. S. Puttaswamy (Retd.) v. Union of India, AIR (2017) SC 4161.
24. D.M. Entertainment .v. Baby Gift House and Ors, CS(OS) No. 893/2002.
25. Sourav Ganguly vs Tata Tea Ltd, CS no. 361/1997.