CELEBRITIES’ AGONY: LOCATING THE PUBLICITY RIGHTS IN THE EXISTING

IPR FRAMEWORK.

Prakash Sharma* & Devesh Tripathi**

Abstract

With the advent of various forms of mass media and over activism on their part, and also the
ever increasing trend of advertisements, the celebrities are very often exploited by invasion of
their privacy and misappropriation of their names. The celebrities possess privacy and
personality rights along with a unique right of publicity. The right to publicity sprouted from
right of privacy in the USA. UK also recognized this right of celebrities through judicial
pronouncements. Many civil law nations like Germany and France have acknowledged this right
through statutory enactments. Disappointingly, India is lagging far behind in recognition of this
right of celebrities, despite having plethora of celebrities, whose names and likeness are been
misappropriated every now and then. Though the trademark and copyright laws can be relied
upon to protect celebrity rights to some extent, these laws have their own shortcomings in
protecting publicity rights completely. This article attempts to point out all the variety of rights
celebrities possess, and the legal means to protect them. The trademark, copyright and tort of
passing off along with the lacunae in them, have been engrossed in the relevant context. The
paper finally highlights on the judicial trend of considering publicity rights in India, along with
some suggestions in its way ahead.
I. INTRODUCTION

Celebrities, as we know, have been made ubiquitous in our contemporary culture, by the mass
media. The inquisitive urges of the fans of celebrities and the pecuniary gluttony of the traders
have further led even the personal affairs of celebrities aired in public.1 A celebrities’ name and
likeness holds a great deal of economic potential, which can be seen being misappropriated far
and wide. Particularly in the rural areas of India, the names of celebrities can be seen on a wide
range of merchandises ranging from detergent powder to tobacco products, which is vindictive to
the celebrities’ reputation too. In the event of such breaches, the celebrities have to undergo the
excruciating plight of locating this unique right of theirs in the existing legal framework.

Since the celebrities hold a great deal of rights, ample protection to them is thus
necessitated. Instances of their privacy breach, misappropriation of their names and unauthorized
                                                                                                                       
*Assistant Professor, Vivekananda Institute of Professional Studies (VIPS), New Delhi.
**Advocate.
1
David Tan, “Beyond Trademark Law: What the Right of Publicity Can Learn from Cultural Studies” 25 Cardozo
Arts & Entertainment Law Journal 913 (2007); see also Greame Turner, Understanding Celebrity 4 (Sage
Publications, London, 2nd ed., 2013) (arguing that the pervasiveness of celebrity exists because modern mass media
has expanded the celebrity's contemporary cultural visibility).

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commercial use of their names or images on products are too common to be ignored. These
rights of celebrities are violated by the media houses by leaking their personal affairs, or by
derogatory use of their names to incidents, or by unscrupulous use by the traders and
manufactures etc. Despite plethora of incidents of encroachments on the celebrities’ rights, only
a few nations have explicitly recognized their rights in a statute. Majority of countries have
protected it under the realm of fundamental or human rights, moral rights, trademark and
copyright. Due to absence of an appropriate legal framework for protection of celebrities’ right,
even the courts get baffled in applying such principles.2

India boasts of its rich art, culture and a massive film industry thereby producing a large
number of celebrities in diverse fields. However, the protection accorded to them is far less than
enough. The paper seeks to point out the various existing legal framework under which
protection can be bestowed to the celebrities.

II. DEFINING CELEBRITY AND THEIR RIGHTS

Celebrity

A celebrity can be defined as "a person who, by his accomplishments, fame or mode of living, or
by adopting a profession or calling which gives the public a legitimate interest in his doings, his
affairs, and his character, has become a 'public personage.' He is, in other words, a celebrity."3
The roots of the word celebrity come from the Latin word “celebritatem” implying ‘the condition
of being famous’.4 The list of people who qualify as a celebrity therefore becomes endless. A
succinct definition by one commentator describes a celebrity as an "actor, author, artist,
politician, model, athlete, musician, industrialist, executive, playboy or any other of a hundred
types who wish to be in the public eye for any of a hundred reasons.”5 A large list of personal

                                                                                                                       
2
Nishant Kewalramani and Sandeep M Hegde, “Character Merchandising” 17 Journal of Intellectual Property
Rights 454 (2012).
3
Richard B. Hoffman, “The Right Of Publicity-Heirs' Right, Advertisers' Windfall, Or Courts' Nightmare?” 31
DePaul Law Review 1 (1981-1982). See also Daniel J. Boorstin, The Image: A Guide to Pseudo-Events in America
57 (1961) where the author rendered a broader definition to celebrity as “A celebrity is a person who is known for
his well-knownness...He is neither good nor bad, great or petty. He is the human pseudo-event.”
4
Morgan Piers, “The Power of Celebrity” available at: http://www.arabianbusiness.com/the-power-of-celebrity-
122473.html (Visited on January 28, 2015), as quoted in Tabrez Ahmed and Satya Ranjan Swain, “Celebrity Rights:
Protection under IP Laws” 16 Journal of Intellectual Property Rights 7 (2011).
5
Donenfeld, Property or Others Rights in the Names, Likenesses, or Personalities of Deceased Persons, 16 (Bull.
Copyright Socy, 1968).

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attributes contribute in the making of the unique personality of a celebrity.6 All of these attributes
need to be protected, like “ name, nickname, stage name, picture, likeness, image, identity, act,
traits, walk, habits, style, reputation, history, statistics, facts concerning professional careers,
signature, and any identifiable personal property, such as a distinctive race car.”7

Various Rights of Celebrities

Having considered who celebrities are and their potential to influence the market of a product, it
becomes quintessential to understand that the celebrities are vulnerable to frequent violations of
their rights. The celebrities have been accorded a bundle of rights, personal, proprietary,
physical, intangible, moral, economic, positive and negative. In the event of a broader
classification resorted to, one may convincingly, to much extent, concede that celebrity rights
may be divided into three broad categories, i.e. moral rights/personality rights, publicity rights
and privacy rights.8

Personality Rights

The personality rights of a celebrity are much of civil law origin which took got its cradle in
France and Germany.9 A person is perceived by others in a peculiar way depending upon his/her
occupation, social status, fashion and other endeavors of life. These endeavors are considered as
an extension of their personality. Therefore an individual’s personality embodies emotional,
dignitary, human and moral values attached to it.10 Kant and Hegel support the contention of

                                                                                                                       
6
Unlike this obvious conception some authors like David Tan believe that a celebrities’ personality is achieved not
only by one’s own efforts or attributes but also the audience (the people who consume the product or service related
to the celebrity), and the producers (e.g., mass media or cultural intermediaries who propagate the personality of the
celebrity). See David Tan, “Beyond Trademark Law: What The Right Of Publicity Can Learn From Cultural
Studies” 25 Cardozo Arts & Entertainment Law Journal 913 (2007-2008).
7
Supra note 3 at 4.
8
See Tabrez Ahmed and Satya Ranjan Swain, “Celebrity Rights: Protection under IP Laws” 16 Journal of
Intellectual Property Rights 7 (2011) and Garima Budhiraja, “Publicity Rights Of Celebrities: An Analysis under the
Intellectual Property Regime” 7 Nalsar Student Law Review 85 (2011).
9
In France, though the first law review article on the matter can be traced back to 1909, written by H.E. Perreau,
who used the term droits de la personnalite, meaning personality rights, the Germans and the Swiss were the first to
propound on this right using the word Personlichkeitsrecht during the nineteenth and twentieth centuries. See Adrian
Popovic, “Personality Rights -A Civil Law Concept” 50 Loyola Law Review 349 (2004).
10
Garima Budhiraja, “Publicity Rights Of Celebrities: An Analysis under the Intellectual Property Regime” 7
Nalsar Student Law Review 85 (2011).

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private property rights in one’s personality as they promote self-expression and human
development and thus contribute to the society.11

The personality rights can further be divided as the right to bodily integrity, the right to
physical liberty (i.e. functionally two features of corpus), rights in family life and moral sexual
relations, at least one aspect of informational privacy, and specific aspects of dignity and
reputation.12 However, much to one’s dismay, these personality rights of celebrities are often
encroached upon by various media houses and traders and manufacturers.13 Such instances are
numerous. Misappropriation of Amitabh Bachchan’s voice to advertise a tobacco brand and
unauthorized use of Rajnikant’s persona14 are only a few famous instances of such violations of
celebrities’ personality rights. In McFarland v. E & K Corp.,15 the court held that "[a] celebrity's
identity, embodied in his name, likeness, and other personal characteristics, is the 'fruit of his
labor' and becomes a type of property entitled to legal protection."16

Privacy Rights

The celebrity rights got its inception from the concept of privacy as was put forward by Samuel
Warren and Louis Brandeis in their article - 'The Right to Privacy', in which they argued that the
basic concept of personal freedom extended to all persons the right 'to be let alone'.17 The
celebrities often face situations where their celebrity personality eclipses their real selves. World-
renowned celebrities would have every moment of their lives open to media and public scrutiny
as the audience's desire to “possess” the celebrity personality has resulted in “the colonization of

                                                                                                                       
11
Hegel maintained that one’s private property is the extension of one’s personality. Drawing analogy from this
statement one may say that an individual’s contribution to the society is also the extension of his personality. See
Robert C. Bird & Lucille M. Ponte, “Protecting Moral Rights in United States and United Kingdom: Challenges and
Opportunities Under U.K.’s New Performance Regulations”, 24 B.U. INT’L. L.J.  213, (2006).
12
John Blackie, “Doctrinal History of the Protection of Personality Rights in Europe in the Ius Commune: General
Actions or Specific Actions?” 13 Electronic Journal of Comparative Law 4 (2009). Available at:
http://www.ejcl.org (Visited on January 20th, 2015).
13
Anurag Pareek and Arka Majumdar, “Protection of Celebrity Rights- Problems and Solutions” 11 Journal of
Intellectual Property Rights 415 (2006).
14
See character merchandising FN 13.
15
18 U.S.P.Q.2d (BNA) 1246 (D. Minn. 1991).
16
Id. at 1247.
17
Louis D. Brandeis and Samuel D. Warren, “The Right to Privacy” 4 Harvard Law Review 193 (1890).

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the veridical self by the public face.”18 David Tan considers a modicum of privacy for celebrities
as fundamental human requirement.19 Braudy puts it as:20

"Fame is desired because it is the ultimate justification, yet it is hated because it

brings with it unwanted focus as well, depersonalizing as much as individualizing
....Then, when the public image threatens to become overpowering, privacy seems
to be a retreat."

The loss of privacy even extends to the intrusions of the media into the personal space of
other people close to the celebrity individual - partners, children, parents, and other friends and
relatives.

In the early case of Pavesich v. New England Life Ins. Co.,21 the publication of plaintiff's
likeness in advertisement without his consent held to be libelous invasion of plaintiff's right to
privacy.

In the classic case of Barber v Times Inc,22 Ms Dorothy Barber filed a suit of ‘invasion of
privacy against Time Inc for unauthorized and forceful entry into her hospital room and for
photographing her during her delivery despite her protests. Ms. Barber was successful in her suit
and the court while awarding damages of US$ 3000.

Publicity Rights

The right of publicity is the right to control uses of one's identity that protects the commercial
value of the celebrity personality; it is broadly defined as the "inherent right of every human
being to control the commercial use of his or her identity."23 It prevents the unauthorized
commercial use of an individual's identity, giving a celebrity the exclusive right to license the
                                                                                                                       
18
Supra note 1 at 952.
19
Ibid.
20
Leo Braudy, The Frenzy Of Renown: Fame & Its History 578 (1986);
21
122 Ga. 190, 50 S.E. 68 (1905).
22
159 SW 2d 291, 295 (1942), the Court opined ““In publishing details of private matters, the media may report
accurately and yet - at least on some occasions – may be found liable for damages. Lawsuits for defamation will not
stand where the media have accurately reported the truth, but the media nevertheless could lose an action for
invasion of privacy based on similar facts situations. In such instances the truth sometimes hurts.”
23
Lerman v. Flynt Distrib. Co., 745 F.2d 123, 127-30, 134 (2d Cir. 1984); see also: Melville B. Nimmer, “The
Right of Publicity” 19 Law & Contemporary Problemss 203 (1954), (Nimmer, like many other authors, argued that
right of publicity developed from right to privacy, but he also contended that publicity right was way much opposite
to privacy right. For celebrities who actively seek fame through the attention of the media, it was a tenuous
argument to extend the traditional right of privacy to prevent the unauthorized commercial uses of their identities

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use of his or her identity for commercial promotion. The celebrity has a right to be compensated
for the misappropriation his name or likeness for commercial purposes.24 The very first case of
USA where this right was recognized was Harlan Laboratories, Inc. v. Topps Chewing Gum,
Inc.25 where the court recognized a baseball player's right to grant an exclusive license for his
picture on a bubble gum card and the grantee's right to exclusivity after the license was granted.

The right of publicity came into being in the 1950s once the practice of advertising using
celebrities had grown to such an extent that the commercial value of celebrity became apparent.26
Increased access to media and a weakening of familial ties in the early 1900s paved the way for
rapid growth in the popularity of entertainment and sports figures, with a concomitant premium
placed on their use in advertising.27 Celebrities now had new economic value; hence, they
needed new legal privileges to protect that value. The prevailing narrative, therefore, intimately
links the right of publicity with the commodification of celebrity. Once something is viewed as
having market value, the legal system invariably steps in to protect that value.28
In Zacchini v. Scripps-Howard Broad. Co.,29 plaintiff's entire human cannonball
performance was broadcast by the defendant without his consent. The US Supreme Court held
that:30
"[T]he State's interest in permitting a 'right of publicity' is in protecting the
proprietary interest of the individual…the protection [afforded by state right of
publicity laws] provides an economic incentive for [the artist] to make the
investment required to produce a performance of interest to the public. This
same consideration underlies the patent and copyright laws."

In the latter half of the twentieth century, legal opinion was split on whether the right of
publicity should be descendible.31 In Martin Luther King, Jr. Center for Social Change, Inc. v.

                                                                                                                       
24
Gary S. Stifleman, “Community Property Interests in the Right of Publicity: Fame and/or Fortune” 25 UCLA Law
Review 1102 (1978).
25
202 F.2d 866 (2d Cir.), cert. denied, 346 U.S. 816 (1953).
26
See George M. Armstrong, Jr., “The Reification of Celebrity: Persona as Property” 51 La. LR 443 (1991)
(discussing how opportunities to market personas were practically nonexistent in the nineteenth century); Steven
Semeraro, “Property's End: Why Competition Policy Should Limit the Right of Publicity” 43 CLR 753 (2011)
("[W]hen the right of publicity arose in the 1950s, 'the needs of Broadway and Hollywood' were far different from
the use of celebrity in popular culture in earlier times.").
27
Kirsten Rabe Smolensky, “Rights of the Dead” 37 Harvard Law Review 763 (2009).
28
See Armstrong, supra note 26 at 463.
29
433 U.S. 562 (1977).
30
Ibid.

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American Heritage Products, Inc.32 while answering the question whether the right of publicity
of a celebrity exists even after death, the court held that:33

"[i]f the right of publicity dies with the celebrity, the economic value of the
right of publicity during life would be diminished because the celebrity's
untimely death would seriously impair, if not destroy, the value of the right of
continued commercial use."

Thus the court emphatically made it clear that the publicity right is transferable and
inheritable too. California State of USA also has recently converted, by statute, the right of
publicity into an assignable and descendible right: the right of the family upon death to the
exclusive exploitation of the celebrity's name and image.34 California Civil Code section 990,
changes the nature of the right by making it assignable and descendible. Thereafter a number of
states made it a discernible right by mentioning it in their respective statutes.35

Rationale for Protection of Celebrity Rights

The need for publicity right protection arises most commonly when a commercial
advertiser uses a celebrity's name, picture, or likeness to promote a particular product or
service.36 The specific attributes draw the public's attention to any commercial products
with which the celebrity is associated.37 The fame and desirability of a celebrity is the
outcome of his own efforts, sacrifice and relinquishment of his own privacy.38 In other

                                                                                                                                                                                                                                                                                                                                                                                             
31
See Roberta Rosenthal Kwall, “Is Independence Day Dawning for the Right of Publicity?” 17 U. Ill. L. Rev.207
(1983) (stating that some courts refused to grant recovery for a decedent's relatives, even when the defendants
appropriated the deceased's name and likeness for commercial purposes)); see also Memphis Dev. Found. v. Factors
Etc., 616 F.2d 956 (6th Cir. 1980).
32
694 F.2d 674 (1lth Cir. 1983).
33
Ibid.
34
Stuart B. Walzer and Jan C. Gabrielson, “Celebrity Goodwill” 2 Journal of the Academy of Matrimonial Lawyers
39 (1986).
35
For e.g. Kentucky, California, Tennessee and Oklahoma were the first to provide for such recognition, see Mark
Bartholomew, “A Right Is Born: Celebrity, Property, and Postmodern Lawmaking” 44 Connecticut Law Review 316
(2011).
36
Hoffman supra note 3 at 4.
37
Ibid (the author argues that the use of a celebrity's personal features, whether authorized or not, is intended to and
does make a company's product or service more desirable.)
38
Treece, “Commercial Exploitation of Names, Likenesses, and Personal Histories” 51 Texas Law Review 637
(1973).

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words, a celebrity's unique act, special recognized skill, or particular cultivated look is
solely the product of his or her own labors, talents, energy, time, efforts, and expense.39

The celebrities’ attributes possess tremendous economic potentials, which he has

developed over years due to some uncommon sacrifices. The celebrity, therefore, becomes
entitled to protection by virtue of theory of unjust enrichment too. In other words he should be
free to enjoy the fruits of his own labors free from unjustified interference.40 This justification
has been enforced by the use of state property law. In McFarland v. E & K Corp.,41 the court
held that "[a] celebrity's identity, embodied in his name, likeness, and other personal
characteristics, is the 'fruit of his labor' and becomes a type of property entitled to legal
protection."42 It would also be unjust to the celebrity if he is not able to control any tasteless
exposure which might affect his public image. It is because of these reasons that courts grant the
celebrities relief in case their rights are impinged.43 Moreover some individuals like Professor
Madow are of the opinion that by association of the celebrities’ name with products which do not
match their personality the respect, economic value and reputation of the celebrity may be
jeopardized.44 To illustrate, if Amitabh Bachchan’s voice is misappropriated for the endorsement
of a tobacco brand, his clean image would be spoiled.45

The celebrity should be able to fully exploit his name, image, and likeness, the celebrity
will lack the incentive to create a valuable persona.46 Another justification is that argument
contends that if celebrities are not allowed to control their images and likeness, traders would
                                                                                                                       
39
Supra note 29 at 571, (performer of "human cannonball" act brought a suit against a television station for
broadcasting his entire act).
40
Palmer v. Schonhorn Enters., Inc., 96 N.J. Super. 72, 79, 232 A.2d 458 (1967), (court spoke in terms of right of
privacy; however, the conduct at issue was the use of data for commercial profit and thus more appropriately
characterized as an infringement of the right of publicity).
41
18 U.S.P.Q.2d (BNA) 1246 (D. Minn. 1991).
42
Id. at 1247.
43
See Lombardo v. Doyle, Dane & Bernbach, Inc., 58 A.D.2d 620, 622, 396 N.Y.S.2d 661(1977) (there is no doubt
that celebrities have a legitimate proprietary interest in their public personalities); Ettore v. Philco Television
Broadcasting Corp., 229 F.2d 481 (3d Cir.) (Television station broadcasted prize fight without one of the fighters'
consent), cert. denied, 351 U.S. 926 (1956); Hicks v. Casablanca Records, 464 F. Supp. 426 (S.D.N.Y. 1978)
(famous writer sought to enjoin movie producers and publishers from distributing a movie and book about her life);
Groucho Marx Prods. v. Playboy Enters., No. 77 Civ. 1782 (S.D.N.Y. Dec., 30, 1977) (magazine used comedian's
likeness in pictorial satire without his consent); Gautier v. Pro-Football, Inc., 198 Misc. 850, 99 N.Y.S.2d 812
(animal trainer's act televised at halftime of football game without approval).
44
Michael Madow, “Private Ownership of Public Image; Popular Culture and Publicity Rights” 81 CLR 125 (1993).
45
Supra note 14.
46
Supra note 44; see Zacchini v. Scripps-Howard Broadcasting Co. (supra note 29, “…to protect the entertainer's
incentive in order to encourage the production of this type of work.”)

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easily be able to persuade the public into believing that the celebrity is actually endorsing the
product with which he is pictured. This argument concerns the theoretical foundation of
trademark law seeking to avoid confusion as to which manufacturer the goods come from.

III. PROTECTION OF CELEBRITY RIGHTS THROUGH INTELLECTUAL

PROPERTY RIGHTS

Protection via Trademark

A trademark is a mark capable of being represented graphically and which is capable of
distinguishing the goods or services of one person from those of others.47 Like goodwill, it is also
a property which can be bought and sold by way of assignment, and is protected under the law.
Since a trademark is essentially a mark, a variety of features can be registered.48 Thus a
celebrity’s name and the likeness can also be easily registered and used as a trademark.49 Having
registered the name or likeness as trademark, the celebrity gets the benefit of licensing and
assigning it too.50 Trademark protection in this way lets the celebrity to have control over his
name, image and the likeness. The protection offered by trademarks is the best amongst the
various forms of IPR protection. The registered proprietor of a trademark can not only prevent
others from using an identical mark, but also one which is deceptively similar to the trade mark
in relation to goods or services in respect of which the trade mark is registered and in such
manner as to render the use of the mark likely to be taken as being used as a trade mark.51
Moreover, a non-deceptive dilution can also constitute infringement. This includes tarnishing of
a trade mark or blurring of its distinctiveness. This can be understood to be intended to protect
the image of a trade mark and so to support the advertising or merchandising function of the
trade mark, but it is also explicable in terms of origin function, i.e., in terms of effect in
hindering communication with consumers.52

                                                                                                                       
47
The Trade Marks Act, 1999 (Act 47 of 1999), section 2 (1) (zb).
48
Id., section 2 (1) (m), (“mark includes device, brand, heading, label, ticket, name, signature, word, letter, numeral,
shape of goods, packaging and combination of colors or any combination thereof.”).
49
Id., section 14 (the section specifically allows the use of name of person living or dead to be used as a trademark,
provided the consent of the person if alive, or representatives if dead, is obtained by the applicant. However, the
trademark sought to be registered has to qualify the basic requirements of sections 9 and 11 which provide for
absolute and relative grounds for refusal of trademark.).
50
Id., sections 37 to 45 (assignment and transmission); and sections 46 to 56 (licensing trademarks as permitted
use).
51
Id., section 29.
52
Id., section 29 (8).

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 A number of celebrities have started registering their name and likeness as trademarks to
prevent others from misappropriating them. Mallika Sherawat, Baba Ramdev, Sachin Tendulkar,
Naresh Trehan, Kajol, Shahrukh Khan, A.R. Rehman, Sanjeev Kapoor and many others have
registered their names as trademark.53 In an unreported case, Sourav Ganguly v. Tata Tea Ltd.,
the courts granted senior batsman Sourav Ganguly relief stating that his fame and popularity is
his intellectual property.54 Sourav Ganguly on his return from Lords after scoring magnificent
centuries found that Tata Tea Ltd. was promoting its tea by offering consumers an opportunity to
congratulate him through a postcard which was included in each one kilo packet of tea. Though
Sourav Ganguly was the employee of the Company, he had at no time authorized the company to
market its tea in association with him in any way.

However, the protection accorded by trademarks is not absolute or flawless, for the
simple reason that if the mark is used for unrelated merchandising or souvenir purposes by a
well-known artist, the registration would be difficult. It is also likely to be more difficult to
register as a trademark the name of a deceased artist rather than of a living artist.55 In Re: Elvis
Presley Trade Marks,56 Elvis Presley Enterprises, Inc. wanted to register 'Elvis Presley' in the
United Kingdom, and another British company that used the name Elvis in its mark contested the
registration. The court held that the name Elvis could not be registered because it was well
known by the public and therefore, was not distinctive. When Elvis Presley Enterprises claimed
that the public would be confused, the court stated that57

"[w]hen a fan buys a poster or a cup bearing an image of his star, he is buying
a likeness, not a product from a particular source….[w]hen people buy a toy of
a well-known character because it depicts that character, I have no reason to
believe that they care who made, sold or licensed it".

Despite some difficult issues surrounding merchandising and trademark protection, a

practical matter, celebrities are advised to consider carefully protecting their logos, names and
                                                                                                                       
53
Surabhi Mehta & Teesta Hans, “Publicity and Image Rights in India” available at: http://asklegalmart.com/
yahoo_site_admin/assets/docs/article.356121953.pdf (Visited on November 15, 2014).
54
Supra note 10.
55
In these circumstances the name is more likely to be seen by consumers as merely a historical reference to the
subject matter of goods and services, rather than to the trade source of goods and services. See Simon Stokes, Art
and Copyright 217 (Hart Publishing, Oxford, 2nd edn., 2012).
56
(1999) RPC 567.
57
Id. at 545.

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other brands through trademarks, where appropriate and available. Also any use made of their
brands by others, for example for merchandising purposes, should be strictly controlled by
license in their appropriate form, in order to seek to preserve and maintain rights in the brands.

Protection via Copyright

Copyright protection is available to original literary, dramatic, musical and artistic works;
cinematograph films; and sound recordings.58 A copyright grants the owner an exclusive right of
reproduction, issue, performance, adaptation, translation and storing the work so copyrighted in
any form.59 Therefore, a variety of celebrities’ works can be protected under the copyright
regime. All the manifestations of a celebrity in the form of an original literary, dramatic, musical
and artistic work; or in cinematograph/ sound recording receives an automatic protection under
the copyright law. A famous character fictional or otherwise if appropriated with a merchantable
product can produce huge economic benefits. Over the years, the avenues of character
merchandising have increased in such varied forms that what was seen as a secondary source of
commercial exploitation by the entertainment industry, has become the forerunner in terms of
revenue.60 In Raja Pocket Books v Radha Pocket Books,61 the plaintiff had been in the business
of publishing and distributing comic series titled ‘Nagraj’. The character Nagraj is usually attired
in green colour body stocking giving the impression of serpentine skin and red trunks with a belt
which appears to be a snake. Defendants also started publishing comic books comprising of a
character called Nagesh bearing a look very similar to that of Nagraj. Both the characters were
depicted to possess magical powers of snakes. The Delhi High Court pronounced that the
copyright in the Nagraj character rests with the plaintiff and any attempt by the defendant to use
the likeness of the character in stickers, posters or any other advertising material will likely be
considered infringement.

                                                                                                                       
58
The Copyright Act, 1957 (Act 14 of 1957) section 13.
59
Id., section 14.
60
Supra note 2 at 455. (for example the famous cartoon character ‘Tintin’ became so popular that a number of
movies have been made around him and also an all in all merchandising world has developed around this character).
See Savvy Verbauwhede Lien, “Marketing: Merchandising of Intellectual Property Rights” available at:
http://www.wipo.int/sme/en/documents/merchandising.htm (Visited on January 19, 2014).
61
1997 (40) DRJ 791.

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 Sometimes a fictional character is played by a real life celebrity which becomes very
popular amongst the audience.62 In such cases the public is easily able to associate the character
with the celebrity playing the role. A number of international conventions63 have been bade in
this regard to protect the performer’s right. The inclusive definition of performer64 includes
actor, singer, musician, dancer, acrobat, juggler, conjurer, snake charmer, a person delivering a
lecture or any other person who makes a performance65. Following the various conventions, the
performers have been accorded with various economic rights in the digital age like the right of
making a sound recording or a visual recording of the performance including the right of
reproduction, issuance of copies, communication to public, selling or giving it on commercial
rental and to broadcast the performance to public.66 They have also been accorded some moral
rights. In India, for example, the moral rights available to the performer are right of attribution
and right of integrity of work.67

In the case of Indian Performing Rights Society v. Eastern India Motion Pictures
Association68 the Supreme Court of India held that the composer of musical or lyric work retains
the right of performing it in public for profit otherwise than as a part of the cinematograph film
and he cannot be restrained from doing so, though the film producer may have the copyright in
the music and lyric, if the producer has commissioned for valuable consideration a composer of
lyric and music. Similarly in Fortune films v. Dev Anand,69 it was said that acting in films does
not fall under any category of work. A performer’s right is expressly excluded under Section
38(4) by stating that ‘once a performer has consented to the incorporation of his performance in a
cinematograph film, the provisions of sub-sections (1), (2) and (3) shall have no further
application to such performance.’
                                                                                                                       
62
Supra note 2 at 455. (James Bond played by various actors, Munna Bhai played by Sanjay Dutt, Sherlock Holmes
by Benedict Cumberbatch etc., can be said as examples of such works.)
63
The International Convention for the Protection of Performers, Producers of Phonograms and
Broadcasting Organizations, 1961 (Rome Convention), Trade Related Aspects of Intellectual Property Rights, 1994
(TRIPS) and the WIPO Performances and Phonograms Treaty, 1996 (WPPT), are some of the landmark conventions
in this regard.
64
Supra note 58, section 2 (qq).
65
Id. section 2 (q) defines performance in relation to performer’s right, as any visual or acoustic presentation made
live by one or more performers.
66
Supra note 58, section 38A.
67
Id., section 38B.
68
AIR 1977 SC 1143. (Krishna Iyer J. remarked that: “…the composer alone has a right in a musical work. The
singer has none, although the major attraction which lends monetary value to a musical performance is not the music
maker, so much as the musician.”).
69
AIR 1979 Bom. 17.

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 The photographs or paintings also qualify to be an “artistic work”70, which can be
copyrighted. However, where a photograph is taken, or a painting or portrait drawn, or an
engraving for valuable consideration at the instance of any person, such person (in the absence of
any contrary agreement) will be the first owner of the copyright therein.71 Moreover, a person
can have copyright only in the particular photographs or paintings in which he owns copyright,
but it has no right to prevent the reproduction or exploitation of any myriad of photographs in
which it does not own copyright.72 In Associated Publishers v. K. Bashyam73, where the question
before the Court was whether a portrait-photo of Mahatma Gandhi made by combining two
photos of Mahatma constituted copyright infringement. The Court held that since skill and labour
was expended in producing the photo by combining the parts of two other photos, it did not
amount to copyright infringement. However, in US, the general test applied is ‘Commercial
aspect v/s public interest’, i.e., if the importance of the digitally altered photo can be found
primarily in its social usefulness as a work of art, it would receive the first amendment
protection.74

Having analyzed the various forms of protection under the legal regime of copyright, one
would agree that the protection available thereunder is inadequate. The exceptions very often
outweigh the principles in case of copyright. The reason for this is the underlying principle of
copyright, i.e. the idea-expression dichotomy.75 In addition, there are a plethora of fair use
exceptions in the copyright law, which further deteriorate the strength of protection.

Protection via Tort of Passing-off

The passing-off is a common law tort, the object of which is to protect some form of property-
usually the goodwill of plaintiff in his business or his goods or his services. The goodwill of the
business is ordinarily represented by a mark, name, etc. The law of passing off provides a
remedy against a false representation tending to deceive customers into believing that the goods

                                                                                                                       
70
Supra note 58, section 2 (c).
71
Id., section 17.
72
Supra note 56.
73
AIR 1961 Mad 114.
74
Hoepker v. Kruger, 200 F Supp 2d 340 (S D N Y 2002). (the first amendment of the Constitution of USA
provides for freedom of speech and expression).
75
The doctrine enunciates that only the expression of an idea can be protected under copyright, and not the idea per
se. Providing copyright on an idea would tend to monopolize the idea itself which would be inimical to creativity.).

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which the defendant is selling are really the plaintiff’s. Celebrities may well use this common
law tort for false attribution of ownership or misappropriation. This right extends beyond the
artist to successor owners of this right.76

In Erven Warnick v. Townend,77 Lord Diplock gave five essential requirements for
claiming an action of passing off, i.e. firstly misrepresentation, secondly done in course of trade,
thirdly done to prospective or ultimate consumers of the goods, fourthly done to injure the
goodwill of another trader’s business and lastly that it should have caused actual damage to the
78
plaintiff’s goodwill or business. In the case of Irvine v. Talksport, the defendant had used a
manipulated photo of the plaintiff who was a famous sportsman in a fashion as if were endorsing
the defendant’s radio station. The court ruled that the name and image of a sports star is
constitutive of a brand, with all various economic rights associated with that status. The court
further accentuated that ‘passing off’ cases are maintainable even if the endorsements do not
pertain to their field of expertise.79 This case came as a big weapon for protecting the celebrities’
right of publicity.

In Henderson v. Radio Corporation Pvt Ltd,80 the claimants were professional ballroom
dancers. The defendants produced a record ‘Strictly for dance’ in which they used a picture of
the claimants in the cover illustration. The claimants argued that this amounted to passing off.
The court held it as wrongful appropriation of personality and professional reputation of the
plaintiffs. In the case of Alan Clark v. Associated Newspapers Ltd.,81 the facts were in the
context of parodies. The issue was whether a substantial number of readers of the defendant’s
newspaper, in which the parodied articles appeared, had been misled, or were likely to be
misrepresented as to the authorship of the articles, although that deception had to be more than
momentary and inconsequential. The court, here, protected the author (Alan Clark) by the law of
passing off, since his goodwill and reputation as an author was placed at risk, as were the
prospective sales of his published works and the market value of his rights to exploit his works.
                                                                                                                       
76
Supra note 55 at 211.
77
(1980) RPC 31, see Reckitt & Coleman Products Inc. v. Borden Inc. (1990) 1 WLR 491 (in this earlier case
‘classical trinity’ of requirements of passing off were propounded, which are reputation acquired by the plaintiff for
his goods; misrepresentation by the defendant, and damage to the plaintiff.).
78
[2002] WLR 2355.
79
Id. at 2379.
80
(1969) RPC 218 as cited in supra note 8 at 11.
81
(1998) RPC 261.

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IV. CELEBRITIES’ RIGHT OF PUBLICITY IN INDIA- TRENDS AND
DEVELOPMENTS

Unlike the western counterparts, India is lagging far behind in acknowledging publicity rights of
the celebrities. Legislation on the matter has been conspicuous by its absence hitherto. The
jurisprudence of publicity rights also could not develop owing to lack of any ruling on the
subject by the Supreme Court of India. Moreover, the celebrities too have been very un-attentive
in protecting their publicity rights. However, in the last decade some instances and cases have
come about throwing light on the publicity rights.

The Emblems and Names (Prevention of Improper Use) Act, 1950, which to a certain
extent, protects unauthorized use of few dignitaries’ names and symbols by prohibiting the use of
the names given in its schedule.82 Such a mark has also been prohibited to be registered as a
trademark as an absolute ground for refusal of registration.83 However, only the celebrities and
symbols of national importance are protected by the above mentioned law. The celebrity right of
publicity, thus, only can be inferred from some of the intellectual property laws in India, owing
to lack of any specific reference in any of the laws. Thus, India does not offer an adequate
protection to the publicity rights.

The only case making a special reference to the celebrity rights in India is ICC
Development (International) Ltd. v. Arvee Enterprises,84 where the Delhi High Court while
acknowledging the right of publicity in India, observed that it has developed from right of
privacy. The court held that such a right exists only in an individual or in any indicia of the
individual’s personality like his name, personality trait, signature, voice etc., which the person
may acquire by virtue of his association with an event, sport, movie etc.85 However, the court

                                                                                                                       
82
Emblems and Names (Prevention of Improper Use) Act, 1950 (Act 12 of 1950), section 3 (“Notwithstanding
anything contained in any law for the time being in force, no person shall, except in such cases and under such
conditions as may be prescribed by the Central Government, use, or continue to use, for the purpose of any trade,
business, calling or profession, or in the title of any patent, or in any trade mark or design, any name or emblem
specified in the Schedule or any colorable imitation thereof without the previous permission of the Central
Government or of such officer of Government as may be authorized in this behalf by the Central Government.”).
83
Supra note 47, section 9 (2) (d).
84
2005 (30) PTC 253 (Del).
85
Ibid.

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said that the right does not vest in any event or the organization that made the person famous.
The court held:86

"... 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. An individual may acquire the right of
publicity by virtue of his association with an event, sport, movie, etc. However,
that right does not inhere in the event in question, that made the individual
famous, nor in the corporation that has brought about the organization of the
event. Any effort to take away the right of publicity from the individuals, to the
organizer {non-human entity} of the event would be violative of Articles 19
and 21 of the Constitution of India. No persona can be monopolized. The right
of Publicity vests in an individual and he alone is entitled to profit from it."

In Sonu Nigam v. Amrik Singh (alias Mika Singh),87 singer Sonu Nigam won a case
against Mika Singh for defamation and infringement of personality rights, wherein the Bombay
High Court imposing a heavy fine on the defendant made it clear that no third person should be
commercially profited by using images of the celebrities without their consent, exploiting the
personality right of the celebrities and observed that the heavy fine so imposed would act as a
deterrent to people who intend to engage in such acts.

In Titan Industries Ltd. v. M/S Ramkumar Jewellers,88 the Court observed "When the
identity of a famous personality is used in advertising without their permission, the complaint is
not that no one should not commercialize their identity but that the right to control when, where
and how their identity is used should vest with the famous personality. The right to control
commercial use of human identity is the right to publicity."

Recently, Superstar Rajnikanth moved to the Madras High Court for an injunction
restraining the release of a movie titled as"Main hoon Rajnikanth" invoking his personality
rights.89 The superstar in his application stated that,90 "A large section of the public across India

                                                                                                                       
86
Id. at 274.
87
CS 372/2013(Bombay High Court).
88
CS(OS) 2662/2011 (Delhi High Court).
89
Shivaji Rao Gaikwad (aka Rajinikanth) v. Varsha Productions, CS(OS) 598/2014 (Madras High Court).

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is, therefore, likely to be misled into viewing such project/film on the mere belief that the said
project/film has been approved by their matinee idol. It is to prevent such widespread hysteria
and undue confusion amongst the public, besides maintaining his personal integrity; he has
chosen to abstain from approving or supporting any project based on his personal
self/personality. Besides, such film based upon Rajinikanth's name, image or likeness would be a
gross violation of his privacy, and would subject him to needless embarrassment as he does not
have any control over the content of any unauthorized or unapproved project/film." In the present
suit, filed by Superstar Rajnikanth, Madras High Court ordered an interim injunction and has
also put stay on the release of the questioned film.

The development of publicity rights of the celebrities is thus at a very nascent stage. The
legal protection accorded to the right is lagging far behind when compared with the European
countries and USA. However, the recent above mentioned cases are harbinger of the
jurisprudence of publicity rights in India and give a ray of hope for further expansion.

V. CONCLUSION

From the foregoing discussions we conclude that none of the IPR frameworks are equipped
enough to protect the celebrities’ right of publicity completely. The trademark, passing-off and
copyright laws have their own lacunae. The publicity rights of the celebrity are sui generis,
which cannot be positioned in any of the IPR laws in a wholesome way. Some European nations
like France and Germany have legislated special statutes for the protection of celebrity rights.91
Many states in USA have also legislated to the effect, besides their courts actively recognizing
this right.92

Learning from other nations, India also should start thinking of enacting a legislation to
protect the publicity rights, lest the celebrities should suffer. The judiciary will have to play a
major role in this direction, as it can legislate when there are interstices in the laws. The publicity
rights would require to be elevated a higher level. However, Indian courts will have to be
                                                                                                                                                                                                                                                                                                                                                                                             
90
Zoya Nafis, “India: Personality Rights - Need for a Clear Legislation” available at:
http://www.mondaq.com/p/1248280/Zoya+Nafis/LexOrbis (visited on January 29, 2015).
91
Personality rights are protected under art. 9 of the French Civil Code. In Germany, articles 1 and 2 providing for
the human rights of persons read with section 22 and 23 of the Authors Rights Act, provide that a person has a right
to control the publication of his picture.
92
Supra note 35.

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cautious enough not to equate the personality and publicity rights of celebrities with that of
property. Doing so would impair the primacy of fundamental rights and the larger public interest.
With these cautions we just hope that India develops its own law for the publicity rights, keeping
the larger public interest at a higher pedestal.

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