By Adv. Nikita Vaigankar
Personality right is basically a right to have control over the commercial exploitation of one’s name, image, signature, or any other personal attributes which are admired by people or in fact, any other quality of personality. In terms of a sportsperson, this right can even extend to a particular style of player in related sports like the style of bowling, batting, celebrating a victory, etc.
These are of relevance as they carry much importance nowadays since the sports industry has changed its nature from entertainment to commercial industry. Marketing has been playing the most important role in it, especially in cases of important and huge events of different kinds of sports.
It has become a common aspect for a sportsperson to trademark their name or their unique style of personality or character for which they are known for.
A sportsperson or any celebrity can reap the benefits of his or her success because of their popularity.
A mere association with some famous player can boost the financial benefit of any entity and therefore, there are high chances that any entities might make misuse the same and try to depict themselves to be associated with someone without the consent of that particular sportsperson. This can range from indirect to direct depiction like simply putting an image of any famous sportsperson on their hoardings to directly stating that they are being associated with someone famous and popular.
Being similar in nature, personality rights and publicity rights are taken together as they walk together.
There is another concept in personality rights which is called Character Merchandising. For eg. Reynolds pens had created an ad-campaign where they released a pen with the signature of Sachin Tendulkar on it. This is a clever technique for commercial exploitation of a famous character or personality, thereby, gaining huge profits and attracting a flow of the customers towards their product.
The case of ICC Development (International Limited) v/s Arvee Enterprises & Another [2003 (26) PTC 245 Del], which we are going to analyze in the next chapter is the first case in India to recognize the publicity rights in India where the Supreme Court elucidated the origin of Publicity rights and its place in law which shall be elaborated further.
Case Analysis of ICC Development (International Ltd.) v. Arvee Enterprises & Anr.
A detailed overview of the Case
In this case, Plaintiff is a body or a company namely the Indian Cricket Council (ICC), which owns and controls all the commercial rights relating to ICC events. In the year 2003, when ICC was the Organizer of ICC World Cup which is an international event seeking the participation of teams from different nations in an ODI format and is considered to be the most important event as this event declares its winner as a World Champion for the next four years.
ICC World Cup, 2003 was going to be held in South Africa, Zimbabwe, and Kenya. Plaintiff had created a distinct ‘logo’ and a ‘mascot’ for the event. There was wide publicity of said logo and mascot and hence, people started recognizing the said logo and mascot to be associated with the Plaintiff.
Plaintiff, hence, filed for the registration of trademark in several countries. In India, they filed an application for registration of the words ‘ICC Cricket World Cup South Africa, 2003’ and their logo.
Speaking about the Defendants, they are authorized dealers for the sale and service of electronic goods and manufacturers of them. Plaintiff claimed that the Defendants are misrepresenting their association with the Plaintiff and are harming the reputation of the Plaintiff by wrongfully carrying out commercial exploitation of the goodwill of the Plaintiff by making target consumers believe that the Defendant’s goods have some sort of business connection with the Plaintiff.
According to Plaintiff, there are damages to the business of the official sponsors of the event who are duly authorized by Plaintiff to offer any schemes associated with the World Cup.
The Plaintiff even stressed the right of publicity which is held by them in a form of right of publicity in an event due to their popularity in an event which is obtained by them through lots of efforts.
The Defendants were indulged in the promotion campaign offering cricket world cup tickets as prizes and used slogan as ‘Philips: Diwali Manao World Cup Jao’ and also ‘Buy a Philips audio system win a ticket to the world cup’ by inserting a pictorial representation of a ticket with an imaginative seat and gate number saying ‘Cricket World Cup, 2003’.
Plaintiff pleaded that without contributing a single penny, Philips India is trying to pass off their goods and was blamed for resorting to ‘ambush marketing’. This also deprived the official sponsors exercise the exclusive rights granted to them and thus, Plaintiff is prevented from performing a contractual obligation.
On all these bases, Plaintiff filed Temporary Injunction before the Delhi High Court.
The Defendants on the other hand denied all the averments of the Plaintiff. First of all, they challenged the maintainability of the suit on technicalities like non – joinder of necessary parties and Plaintiff not having a cause of action to file the suit.
The Defendants raised an objection on the core of the Plaint i.e. it challenged the trademark/logo itself. It stated that ‘world cup’ is a generic word and is not capable of conferring an exclusive trademark right to anyone. It tried to challenge the genericness of the said word by stating that the word ‘world cup’ is also commonly used in sporting events too.
The Defendants justified themselves by saying that they have not used the said logo with any malafide intention. They further added that the term was used by them in a generic manner in their advertisement and have never used the whole phrase which was sought to be protected by the Plaintiff. They stated that they had already booked a travel package of more than 100 people and that too with the authorized agents / sub-agents and paid around 25 lakhs rupees to them. Moreover, the ticket conditions as pleaded by Plaintiff were never brought to the notice of the Defendants.
The Plaintiff relied heavily on various judgments to support their case as well as the Defendants left no stone unturned to bring out various precedents before the Court to prove their point to the Court.
The Court, however, stressed upon the width of the principle developed upon by the Australian High Court in the case of Cadbury Schweppes Pty Ltd and others v. Pub squash Co. Pty Ltd [(19810 ALL RR 213]. The principle laid down in this case proved that tort can no longer be anchored to only the trademark of the product or business. The test is whether the product has derived a distinctive character from advertising and has obtained recognition in the market. Here, soft drink cans were advertised through themes and get up of goods like that of the cans of beer which was also presented as an alternative to beer.
The court hence observed that Plaintiff must prove that he has obtained an intangible property right in his goods through advertised description of his product. A simple test here could be whether the consuming public is being misled by the outer appearance of the good similar to that of another one compelling them to think that the goods belong to the other company manufacturing similar ones.
Judgment of the Court
The Central question framed by the Hon’ble Court, in this case, is ‘whether a sufficient number of purchasers of defendant’s goods unmistakably are likely to be confused about the source of defendants’ goods or assume that defendants have some connection with the official sponsors of the event?’
The court after its due observations admitted that the Defendants have not used Plaintiff’s logo or mascot, but they did use the pictorial representation as described above.
From the pictorial representation, public may be attracted towards the event but there may not be confusion in their minds that Defendants are sponsors of the event. The depiction merely shows that the Defendant’s goods may win a ticket and travel package to enjoy the world cup and nothing more. Therefore, the court stated that the basic ingredients of passing off and unfair competition are not made out against the Defendants.
With regard to the plea of ambush marketing, the court stated that ambush marketing is opportunistic commercial exploitation of an event. Ambush marketing is something wherein someone’s popularity is taken advantage of to promote the product and here advertising or campaign offering tickets of the event as prizes without using the logo or the mark of the Plaintiff cannot be held to be wrongful.
The court even cited a decision of the Hon’ble Supreme court in Tata Press v. MTNL [1995 (5) SCC 139] in which it stated that ‘world cup’ or the event is not protected by any international treaty or domestic law unlike the word ‘Olympics’ and its logo.
With respect to the right of publicity, the court stated that they do not agree that the right of publicity exists in non-living things. Court even went to an extent of explaining the evolution of the right to publicity and stated that this right evolved from the right to privacy and can be adhered to only individuals. Similarly, right to publicity inherits in an individual by virtue of his association with an event / sport but not directly in an event and hence, the averment of the Plaintiff that the right of publicity in respect of ICC cricketing events vests with the Plaintiff was vehemently rejected being without any merit.
Furthermore, commenting on the genericness of the word ‘world cup’, the court cleared that ‘Generic word’ according to the dictionary is neither special nor specific. It belongs to one genus. These words cannot be any brand names nor do they have any protections. ‘World cup’ is a dictionary word which an event in which several nations participate and hence, these words are considered generic and not granting any exclusive right to anyone.
The court stated in favor of the Defendants that they have not used the entire phrase of the Plaintiff. The pictorial representation suggests only the game by virtue of its genericness. Court referred it to be fair use permitted under the law as it is used by the Defendants in descriptive manner.
Court further analyzed Plaintiff’s averment with regard to the breach of contract with the sponsors, it stated that no cause of action is being put up. The plaint does not contain any averments about the prior knowledge of the Defendants about the contract with the sponsors. Moreover, the sponsors or the official agents or the organizers of the tour are not impleaded as the parties to the suit and hence, it rejected the plea of inducement to breach the contract.
Thus, the court concluded that the Defendants have not used the logo or the mark of the Plaintiff. They merely offered the tickets as the prizes in their advertising campaign and these advertisements were even read personally by the Hon’ble presiding judges and according to them, they do not in any way signify the association of the Defendants with that of the Plaintiff.
Hence, the Plaintiff had failed to make out their prima facie case for the grant of interim injunction according to the Court.
Hence, the application of Plaintiff was dismissed by the Court.
Related Concepts in Brief
Passing off is an act when someone deliberately or even unintentionally passes off their goods or services like those belonging to another party. Through this action, the goodwill and reputation of another party are damaged.
There are three essentials often known as basic trinity to prove the action of passing off. These are Goodwill owned by the trader, Misrepresentation, and Damage to the goodwill.
Passing off can also be categorized as ‘extended passing off, which means a representation as to a particular quality of a product or service which causes harm to another’s goodwill. Another form is ‘reverse passing off’, where a trader markets another’s goods or services as being his own.
Unfair Trade Practice
Unfair trade practice is a business practice or act that is deceptive, fraudulent or causes injury to a consumer. These practices can be unlawful or unethical. Examples of these are offering free gifts, which is a false offer, false advertising, etc. by adopting unfair methods.
These are the methods adopted by the traders to increase profits. Apart from this, unfair trade practice occurs even if the prescribed standards for any goods or services are not complied with and giving low quality items which are below the prescribed standard.
Publicity rights are referred to as Celebrity rights which is a right of an individual to prevent others from using his name, likeness, photograph, or image without his consent for commercial purposes.
Basically, it is a right of an individual to control his / her identity. Courts even went to an extent of saying that infringement of publicity rights violate article 19 and 21 of the Constitution of India.
Some of the celebrities even registered trade marks of their signatures and names so that they can assign their personality through proper licensing to earn profits as well as to obtain a means to defend it from unauthorized use.
This is a scenario where an advertiser ambushes or lies secretly down there, with preparation to attack by surprise in an event to compete against other advertisers. These actions are most common in sports and major events related thereto.
Here, traders try to advertise their products in such a way as to create a mental illusion among customers that their product is associated to the event. If the victim does not take action in time then the one doing ambush marketing will reap huge profits within no time.
This is a word that is used to describe some general class or group rather than some specific thing. Protecting a generic word is a hard task as they require a lot of effort and solid proof to show that even though they are generic but fall under a different category of goods.
A classic example of ‘Apple’ is being relied upon here. Though the word apple is generic as it is a fruit but registering it as a mark for electronic devices could be allowed.
In this commercial world, there is an ever-expanding scope of personal rights and there have been many instances where these rights are violated and therefore, it is a need of the hour for having legislation regarding the right of publicity as these rights are not guaranteed readymade but are the rights that are earned by the sportspersons through their hard work and success and others cannot violate the same without their consent.
The present case which we analyzed above is the first case to be falling within the legal regime of the publicity and personality rights of an individual.