An Overview Of Celebrity Rights – Athletes And Sportspersons

Author: Manavi Jain

Introduction

Celebrity Rights are a bundle of rights that inure to a person, by virtue of having created a distinct “identity”. Personality Rights or Image Rights inextricably linked with Right to Publicity and Right to Privacy may all be together referred to as Celebrity Rights.

“Personality” can be defined as the combination of characteristics or qualities that form an individual’s distinctive character[1]. The bundle of rights emanating from such characteristics or features of an individual are typically termed as “Personality Rights”. Right to Publicity is an individual’s right to commercially exploit her/his attributes. Right to Privacy, in simple terms, is an individual’s right to regulate what’s known to the world at large about him/her and what is not.

Protection and enforcement of Celebrity Rights vis-à-vis sportspersons and athletes gained momentum in Europe at least a decade back. As of today, with majority of the “famous” (or, G. O. A. T.s – as we often like to call them!) athletes and sportspersons being active on-field as well as off-field, the importance of diligently protecting and enforcing Celebrity Rights has become indispensable.

Celebrity Rights: What are they?

Celebrity Rights are not codified under a separate law, or defined under any legislation in India, and are thus per se not statutory rights. Recognition and enforcement is by way of tapping on the overlapping nature of these “bundle of rights” under the existing legislations and under the common law of passing off.[2]

Legislation(s) covering Celebrity Rights

Personality Rights can be said to broadly comprise two types of rights – Personality Rights and Right to Publicity thereof viz. commercial exploitation, and Right to Privacy.

The Right to Publicity aspect finds basis in various statutes in India – the Trade Marks Act, 1999, the Copyright Act, 1957, the Emblems and Names Prevention of Improper Use Act, 1950; and the Right to Privacy is now a recognized fundamental right in India.

The Trade Marks Act, 1999

The definition of a mark includes names, initials, signatures, sounds etc. All these aspects belonging to an individual and used in commerce as a means to signify a source, can thus be protected as trade marks, and their commercial exploitation be regulated. In the sporting world, athletes and sportsperson usually, either by themselves, or by collaborating with a sporting brand, come up with their own “lines” and brands. While starting a brand, some prefer retaining their name in plain words, others go for an artistic logo. Some even prefer using their signatures, or a signature “move” / “pose”.

For example, Sachin Tendulkar has registrations for his name as a trade mark in India[3] and Usain Bolt has numerous registered trademarks across (viz. in his name, initials, etc.) including in his “pose”[4].

The Copyright Act, 1957

Copyright Act defines “performers”, which may give some basis for enforcement vis-à-vis Celebrity Rights to athletes and sportspersons. Since Personality Rights are not defined, they are not “exhaustive” from the point of view of protection and enforcement. Thus, there may be other aspects vested in an individual’s persona that may deserve copyright protection.

The Constitution of India

Articles 19 and 21 of the Indian Constitution form the basis of Right to Privacy[5], an accepted aspect of Celebrity Rights.

Rights Vest in an Individual or in All Juristic Entities?

Athletes and sportspersons are often represented by agencies, who are responsible for managing the commercialization of the “brand” emanating from them. This may, in the absence of carefully drafted Agreements, lead to disputes, including ones challenging the very existence of these rights in the particular athlete or sportsperson.

In the case of ICC Development (International) Ltd. v. Arvee Enterprises and Ors.[ 2003 (26) PTC 245 (Del)], a Single Judge Bench (Surinder Kumar Aggarwal, J.) of the High Court of Delhi (“Court”) addressed an important question and made it clear that Personality Rights do not vest in non-living objects/corporations or other juristic entities. The Court held “In my considered view, the non-living entities are not entitled to the protection of publicity rights in an event, for more than one reasons. Firstly, the copyright law, trade-mark law, dilution law and unfair competition law provide full protection against all forms of appropriation of property to such legal entities…Secondly, it would be against the basic concept of “persona”. The “persona” is defined in Black’s Law Dictionary, seventh edition to mean “a person; an individual human being”…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 vocative 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 above, however, does not bar an athlete or a sportsperson from assigning aspects of its Celebrity Rights to a company created specifically to manage commoditizing of their persona. In fact, a lot of sportsperson usually do this for streamlining and better management of Celebrity Rights.

Merchandising Rights

Celebrities, including athletes and sportsperson in India, also enjoy the right to “merchandize” their “persona”.  Right to Merchandized was recognized by the High Court of Delhi in D. M. Entertainment Private Limited v. Baby Gift House & Ors. [CS(OS) 893/2002], where Daler Mehendi, a famous performer in India, had assigned his rights in his personality to a company, the plaintiff in this case. The case concerned “dolls” which were allegedly imitations of and identical to the likeness of Daler Mehendi and sang a few lines of the artists’ songs. As per the plaintiff, these dolls constituted an infringement of various aspects of Daler Mehendi’s personality rights. A Single Judge Bench (S. Ravindra Bhat, J.) of the Court decided in favour of the plaintiff and held “To avail the right against the infringement of right to publicity, the plaintiff must be “identifiable” from the defendant’s unauthorized use. In this instant case, the evidence on record very well establishes the primary requirement. As a secondary consideration, it is necessary to show that the use must be sufficient, adequate or substantial…”.

Domain name squatters

In the URDP Case of Mahendra Singh Dhoni and Rhiti Sports Management Private Limited v. David Hanley [Case No. D2016-1692], the famous Indian cricketer “captain cool” Mahendra Singh Dhoni filed a complaint against a squatter, concerning the domain name <msdhoni.com>. The Panel, deciding in favour of the complainants, held “…While the UDRP does not specifically protect personal names as such, in situations where a personal name unregistered as a trademark is being used for trade or commerce, the complainant may be able to establish common law or unregistered trademark rights in that name. In order to do so, proof of use of the person’s name as a distinctive identifier of goods or services offered under that name would normally be required….A trademark-equivalent basis has been found in the common law action of passing-off…Given the relevant facts (see above) the Panel finds that the Complainants have clearly established unregistered trademark rights in the name MS Dhoni…”.

Limitations/Defences to Personality Rights Claims

In the case of Gautam Gambhir v. D. A. P. & Co. and Ors. [CS (Comm.) 395/2017, IA Nos. 8432 and 6797/17], Gautam Gambhir, a famous Indian cricketer, sought to enforce the rights accrued in his name. The facts involved restaurants under the names inter alia “Blu Wavs by Gautam Gambhir” and “Play Reloaded by Gautam Gambhir” which, as per Gambhir, was violative of his personality rights. The defendant was incidentally name “Gautam Gambhir” as well. Deciding in favour of the defendant, a Single Judge Bench (S.P. Garg, J.) of the High Court of Delhi held “Celebrity status of the plaintiff is not disputed. However, there is no material on record to infer if any time in running the said restaurants with the tagline ‘by Gautam Gambhir’, the defendant ever represented to the public at large in any manner that the said restaurants were owned by the plaintiff or he was associated with them in any manner… he is entitled to carry on ‘his’ business in ‘his’ ‘own’ name”.

Case Studies and Precedents of Significance – International

The trend of proactively protecting and enforcing Celebrity Rights in India, particularly in the field of sports, is slowly but steadily catching up to international standards. Celebrity Rights, however, even in the international sphere, are still a niche and evolving concept. Sporting world is a globalized community – and even the international cases involving issues pertaining to Celebrity Rights serve as a lesson for athletes and sportspersons world over.

One of the most talked about cases is the 2010 case against the famous footballer Wayne Rooney[6]. This case concerned an Image Rights Representation Agreement (IRRA) signed between Rooney and his former management agency. While the case was eventually decided on the legal point of “restraint of trade”, a Queen’s Bench Division of England and Wales High Court (Judge Hegarty QC) defined image rights as “Image Rights means the right for any commercial or promotional purpose to use the Player’s name, nickname, slogan and signatures developed from time to time, image, likeness, voice, logos, get-ups, initials, team or squad number (as may be allocated to the Player from time to time), reputation, video or film portrayal, biographical information, graphical representation, electronic, animated or computer-generated representation and/or any other representation and/or right of association and/or any other right or quasi-right anywhere in the World of the Player in relation to his name, reputation, image, promotional services, and/or his performances together with the right to apply for registration of any such rights”.

Subsequently, we saw personality/image rights playing a crucial role in quite a few disputes, deals and transactions involving athletes and sportspersons. Image Rights were the culprit in the 2016 hold-up in Jose Mourinho’s taking over as Manchester United’s manager from Chelsea[7]. Everyone is familiar with Roger Federer’s woes in allowing Nike to register the famous logo, and subsequently shifting sponsorship to Uniqlo.[8] Lionel Messi fought an almost decade long battle in EUIPO to get a logo with his name registered as a trade mark.[9]

The above examples are lessons on what not to do while looking at protecting an aspect of Celebrity Rights, especially by an athlete or a sportsperson. The constant evolution and introduction of new elements and dimensions into the sporting world is making the issue of protection and enforcement of Celebrity Rights increasingly complex, strategic and diligence-heavy.      

Conclusion

Who is a celebrity? What are the essential ingredients needed to make a case concerning Celebrity Rights?

A Single Judge Bench (Manmohan Singh, J.) of the High Court of Delhi answered these questions in the case of Titan Industries Ltd. v. Ramkumar Jewellers [2012 (50) PTC 486 (Del)], wherein it observed that, “A celebrity is defined as a famous or a well-known person. A “celebrity” is merely a person who “many” people talk about or know about”. Therefore, the basic ingredients of (i) Validity; and (ii) Identifiability need to be established to make a case for infringement of Celebrity Rights.

[1] Definition provided by Oxford Languages on Google, < https://www.lexico.com/definition/personality>.

[2] In Shivaji Rao Gaikwad (aka Rajinikanth) v. Varsha Production, 2015 (62) PTC 351 (Mad), the High Court of Madras held that “…though there is no definition for the personality right under any statute in India, the Courts in India have recognized the personality right in the name, in various judgments”.

[3] Indian TM Registration No. 2008276, etc.

[4] US TM Registration No. 4177904.

[5] In R Rajagopal v. State of Tamil Nadu, AIR 1995 SC 264, the Supreme Court of India held that the right to privacy has two aspects “(1) the general law of privacy which affords a tort action for damages resulting from an unlawful invasion of privacy and (2) the constitutional recognition given to the right to privacy which protects personal privacy against unlawful governmental invasion”.

[6] Proactive Sports Management Ltd v. 1) Wayne Rooney, 2) Coleen Rooney (formerly McLoughlin), 3) Stoneygate 48 Limited, 4) Speed 9849 Limited, [2010] EWHC 1807 (QB).

[7] Read more at: <https://www.bbc.com/sport/football/36382637>.

[8] Read more at: <https://scroll.in/field/955787/two-years-after-moving-to-uniqlo-roger-federer-gets-rf-logo-back-from-nike-report>.

[9] Read more at: <https://www.business-standard.com/article/sports/barcelona-s-lionel-messi-wins-court-fight-over-trademark-of-his-logo-120091800088_1.html>.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP.