Topics Covered in this article
The present case is concerned with the different contributing elements and principle of infringement when it comes to disputes falling under Intellectual Property Rights.
A notable aspect provided for by this case is the debate between a citizens’ right to freedom of speech and expressions and the kinds of consequences it entails when there is an abuse of this inherent and fundamental right. The case also makes it a point to highlight the various exceptions provided against this right.
It is quite undebatable that every Indian citizen has the privilege of expressing their opinions whether it is through speech or other forms of expression such as imitation, art, written words, etc. It is however, important to remember that this privilege does not come without a ceiling cap as to its usage. There are several instances and ways where this fundamental right has been subjected to abuse and misappropriation. Things of which, will be discussed further in this case analysis.
The letters “DM” in “D.M. Entertainment” is an abbreviation of the very affluent and famed Punjabi musician, Daler Mehndi (To put this in a more appropriate context for any young readers, he is responsible for composing and singing the now very famous, albeit meme-centric, song, “Tunak Tunak Tun” which has racked up a very impressive 17 crore views on Youtube). Before the year 1996, Daler Mehndi was the sole owner of the rights concerned with his name and the brand that he has accumulated over the course of his artistic career and was responsible for the management and production of his own musical career.
However in 1996, a company (which was registered in the same year) was incorporated with the sole purpose of managing and maintaining Daler Mehndi’s reputation and public image. Over the years, Daler Mehndi decided that it was a reasonable choice to transfer every vested interest and rights that he previously acquired over to the Plaintiffs of the case i.e. D.M. Entertainment Pvt. Ltd. This transfer of rights, placed the power and privilege to the plaintiff of doing whatever it thought was appropriate with Daler Mehndi’s name and trademark within reasonable grounds.
The defendants in the present case were namely:
- Baby Gift Shop which operated at 13/18, Ajmal Khan Road, Karol Bhag, New Delhi
- A gift gallery in Bengali Market, Delhi
- A shop selling gift-items at Kamala Nagar
- Poonam Gift Palace which operated at 133, Palika Bazaar, Connaught Place, New Delhi
For purposes of convenience, the four gift shops will collectively be referred to as the “defendants’ throughout the remainder of this case analysis. All four of these gift-selling shops were engaged in the business of selling impugned products i.e. dolls, which is alleged by the plaintiff, to have been cheap imitations of Daler Mehndi’s image and likeness. These dolls were all packaged under the brand “Sun Toys” which was an indication that all the dolls came from and were manufactured by a single entity/source. The phrase, “Made in China” is also fashioned at the bottom of these dolls indicating that these products were imported from China and were being sold by all 4 defendants
There were a total of 5 questions of law that was brought up by the plaintiff in their complaint:
- A contention of the defendants passing off these dolls, which were open for view and purchase to a third party (i.e. the public), as products that are associated with or approved by Daler Mehndi or D.M. Entertainment Pvt. Ltd.
- A contention that the defendants abused the reputation and public image that Daler Mehndi accumulated by selling these products, which, at the very least, shared a likeness to the artist.
- A contention that the defendants were selling these dolls under the false pretence that they were endorsed by Daler Mehndi and/or his company. The plaintiffs contended that such activities are detrimental to Daler Mehndi’s image and undermines his reputation.
- A contention that there was a violation of Daler Mehndi’s artistic rights to publicity as the dolls were accessorised to play his music upon usage. The dolls were playing recordings of Daler Mehndi’s songs without, having first, acquired permission from the artist himself and from D.M. Entertainment Pvt. Ltd.
- A contention on the damage that Daler Mehndi’s reputation and public image suffered as a result of the selling of these products and an abuse of the artist’s commercial value and/or potential
Contentions from both parties:
The plaintiff’s in their complaint alleged that the defendants have, without acquiring prior permission and without the supervision of the plaintiffs, manipulated Daler Mehndi’s image and personality by selling dolls that carried a likeness to the artist and that the defendants have infringed the copyright to the literary and musical works of Daler Mehndi’s song, “Bolo Ta Ra” (which, if anyone is still interested in these numbers, has amassed a very respectable 7 crore views on Youtube). Such acts of infringement and misappropriation of the plaintiff’s publicity rights, committed by the defendants, compiled with the defendant’s persistence to sell these dolls under the guise of a false endorsement by the artist or the company, is undoubtedly a mala fide action and invites liabilities to the defendants. Furthermore, the defendants by selling these products have caused the plaintiff’s to suffer an exponential loss to the reputation of Daler Mehndi and D.M. Entertainment Pvt. Ltd. as well as committing fraud by making their customers believe that the products they were selling were under the management of the artist and that they were endorsed by Daler Mehndi and his company. The defendants made it seem that they had some sort of connection with the plaintiffs and the artist to use their exclusive rights to market products that shared a likeness to the artist and his work.
The plaintiffs further contended that the commercial value that the products carried were due to the popularity of the artist and that the artist’s reputation was being abused for trademark and other commercial exploitations by the defendants.
The defendants in their written statements to the plaintiff’s contention emphasised that they denied all the allegations in the complaint. The defendants, however, did not show up to the court’s proceedings on the dispute and defaulted themselves in contesting the proceedings. The defendants were, accordingly, set down ex-parte.
Summary of the judgment:
After assessing arguments from both sides of the dispute, the court held that the defendants were liable for violating D.M. Entertainment Pvt. Ltd.’s right of publicity, for inducing their customers to buy their products under the pretence of a false endorsement by the artist, and passing off the products they sold as having been approved or managed by the artist himself. A permanent injunction was imposed on the defendants, in addition to which, they were ordered to pay token damages. The judgment by the court was passed ex parte as the defendants, as earlier stated, were not present during the court proceedings and did not wish to contest the allegations made by the plaintiffs.
During their review of the infringement of right of publicity allegedly committed by the defendants, the court took the help of the following factors:
- The popularity and reputation that Daler Mehndi possessed
- The ease of identification of Daler Mehndi from the illegal use of his image in the products sold by the defendants
- Sufficiency, adequacy, and substantiality of third parties, such as customers, to identify the appropriation committed by these products or of other noticeable attributes that the products possessed which were identical to the image of Daler Mehndi.
After assessing the arguments brought forth by the plaintiffs, the court was also of the opinion that Daler Mehndi was (and is) a famed and reputable personality. The court reviewed several factual anecdotes that were concerned with the achievements that the artist accumulated over the course of his musical career, the sales numbers of his albums, etc. to come to the earlier conclusion. In the opinion of the court, Daler Mehndi was an enormous personality amongst the general public which brought about a natural association in the minds of the customers and people engaged in trade, with the respectable services that he has contributed to the entertainment industry and the merchandise originating from his persona. Thus, the court decided that Daler Mehndi’s personality carried an enormous economic and commercial value as a quasi-property that needed to be protected.
As far as the second and third factors were concerned, the court after reviewing the evidence submitted by the plaintiffs, agreed that the accessories and features that adorned the products did, in fact, carry a likeness to Daler Mehndi’s image. To further substantiate this conclusion, it was shown and highlighted that the dolls danced and moved similarly to the artist’s actual real-life choreography as well as singing some of his musical works. The court further noted that the image of Daler Mehndi was being incorporated into the dolls as a means to increase their commercial value and to induce customers into buying them by taking advantage of the reputation and goodwill that the image of Daler Mehndi possessed. As a result of these factual anecdotes, the court reached the conclusion that there was an infringement of Daler Mehndi’s and D.M. Entertainment Pvt. Ltd.’s right of publicity.
The court then proceeded to highlight that the right of publicity, jurisprudentially speaking, can be found with the concerned individuals right and autonomy to permit or not permit the commercial exploitation of his image or anything identical to his image or bears a likeness to his image. The court, however, emphasised that as we live in a free and democratic society, wherein everyone’s right to free speech and expression is guaranteed, the priority shown to a famed person’s right of publicity can tend to freeze the appropriate exercise of such a valuable privilege. Therefore, according to the court’s judgment, caricature, lampooning and other similar art forms, which highlights an individual’s personality, may not be deemed as a violation of that particular individual’s right of publicity. It further emphasised that such art forms cannot be considered to be forms of commercial exploitation. However, if the concerned individual considers such art forms to be damaging to his reputation and that they are slanderous or libel, then the remedies for such violations would be available to him.
Speaking on the question of false endorsement, the court was of the view that for a claim of false endorsement to have standing before it, it must be proven that the use of the individual’s personality has led customers to believe that he/she has endorsed the product, when in reality, they have not. In the present dispute, the court observed that the usage of Daler Mehndi’s reputation as a means of capitalizing on the potential profits that his brand entails was mala fide and inappropriate. The court was of the opinion that the misappropriation was a “clear dilution” of the original image that the Daler Mehndi brand possessed and that the defendants were selling these dolls with the false advertisement that they were endorsed by the plaintiffs or that the products had some sort of connection with them to be able to make use of the artist’s image. As a result of this understanding, the court held that the defendants were liable for false endorsement.
Lastly, with regards to the passing off claim, the court held that in a passing off action, it must be decided whether the concerned defendant is selling products in such a way that it misleads the customers to think that the products are personally endorsed by the plaintiff. The court observed that even if an individual decides to use another person’s well-established brand or a trademark that is associated with that person or which a third party can easily recognise or identify as being associated to the famous person’s persona, although it is not confusing to customers, it may inflict damage to the established brand of the famous person or result in a dilution of the trademark’s capability to indicate the source from which it is coming from. As a final decision, the court recognized that when a person is using another person’s well-established brand or trademark, although it may not be confusing to customers as to the origin of the trademark, it may still be taken advantage of by that person which would, in turn, constitute an act of unfair competition. In the present case, as the plaintiffs have suffered a substantial loss of the reputation of their brand and the goodwill that it has fostered with the public, the court held that, alongwith the other mentioned charges, the defendants were also liable for passing off.
The Hegelian justification of intellectual property rights established that an individual’s property is, essentially, an extension of his/her own personality. Having said this, it is well-known that achieving celebrity status in contemporary society is not an easy feat. This kind of status is achieved through various mediums, whether by accumulated votes or by pure skill and talent. The one commonality being years of effort and hard work (although it can be argued that some people are born with such skills). This sort of status drags along with an element of envy from others, especially ones with a mala fide intention to capitalize on someone else’s dedication to their craft.
It is appropriate at this point to highlight that there is a likelihood of someone’s personality being “trespassed” into for their own personal motives and gains. The court, in their judgment, made it a point to stress that an individual who seeks to claim the right of publicity must establish that their reputation (acquired through whatever possible means) is a tangible form of merchandise, on which a value can essentially be attached to. To quote the Lockean Labour theory, to justify that the right of publicity is essentially a matter of intellectual property, “It is only the creator who has the right to exploit his creation in a manner that he wants.” An individual having put in dedication and hard work to achieve the fame that he now currently possesses is his property exclusively.
To put this issue in an international context, the United States of America recognizes that the right to exploit one’s own economic value, as a result of the reputation that the individual has acquired, is essentially the right of publicity. In Australia, the same opinion was achieved when a group of dancers succeeded in suing for a passing off action against a magazine company for misappropriating their images on the covers. Additionally, England and Wales also share the same opinion as that of Australia.
In a national context, the Indian judicial system is at fault of not keeping up with the evolving jurisprudence with the issue at hand. Despite this, a pioneer judgment discussing the right of publicity was passed in ICC Development (International) Ltd. v. Arvee Enterprises. As a source of origin, the right of publicity is envisioned and provided for under Articles 19 and 21 of the Indian Constitution.
The present dispute is a pioneering case which clarified the discrepancies surrounding celebrity merchandising. Daler Mehndi, a well-known Punjabi musician had amassed a huge following and became a household name for the general public. Subsequently, D.M. Entertainment Pvt. Ltd. was brought in to handle the affairs and public image of Daler Mehndi. The root of this dispute is linked with the illegal selling of dolls that resembled a likeness to the artist’s persona by the defendants for their own personal monetary gain. Rightly so, the plaintiffs filed for a permanent injunction against the defendants for infringing Daler Mehndi’s and D.M. Entertainment Pvt. Ltd.’s publicity rights and for selling the products under the guise of a genuine endorsement by the artist, when no such thing happened in reality.
With regards to the plaintiff’s allegations, the court rightly referred to Section 29 of the Trademark Act, 1999 which provided for the factors constituting an infringement of trademarks. The provision envisioned that when an individual is utilising any sort of mark, in the course of a trade, which bears a likeness to or is identical to an already well-established mark that he or she is not entitled to capitalise on, then that individual is considered to have infringed upon the publicity rights of the person who is responsible for that trademark.
Although the law surrounding character merchandising is still a fairly fresh area of law in India with little jurisprudence attached to it, the court, in my opinion, accurately cited the Star India Pvt. Ltd. v Leo Burnett (Pvt.) Ltd. case to help in deciding that the commercial exploitation of a pre-established trademark of a celebrity is considered to be “Character merchandising.”
Other similar incidents of a celebrity’s reputation being commercially exploited for profits in trade are (a) Katrina Kaif filing a suit against a public hygiene company who used the actress’ trademark to advance the trade and profitability of their products; and (b) Saurav Ganguly seeking for relief against Tata Tea for capitalising on the former Indian Cricket Team Captain’s reputation to sell their tea.
It is important to note here that this court when faced with a similar question of character merchandising in Chorian Rights Ltd. v MS Ishaan Apparel & others rejected a similar plea of temporary injunction against the defendants due to a lack of evidence.
The court, in the D.M. Entertainment case has shown wisdom by acknowledging character merchandising as a question of law by referring to the judgment passed in the Star Burnett case which is an indication that Indian courts are finally ready and equipped to tackle the legal question of character merchandising. The judgment passed by the court is a testament to the Indian judiciary’s intention to do everything in its power to tackle the issue of publicity rights, character merchandising, passing off claims and ultimately, to safeguard the dedication and hard work put in by celebrities to achieve this status.