Written by Ridhima Lohia*
Introduction
Image rights/right to publicity/personality rights implies the protection given to players against “the unauthorised appropriation of their persona which causes the unearned commercial gain to another.” [1] The judiciary [2] interprets image rights as the famous personality’s right to control when, where and how their identity is used. The court also clarified that “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. [3] Identifiability refers to the name, picture, likeness, voice and signature. [4] Even though the courts have acknowledged its existence, the problem of infringement continues because image right does not constitute a statutory right in India and there is a lack of legal framework. This needs to change, and their image must be protected because if a third party uses their image without informing the players, it could damage the goodwill and reputation of the athletes and also amount to unfair trade practices and competition. [5]. Acknowledging and respecting such rights through law would aid the sports personality “control one’s commercial enterprise and would prevent consumers mistaking connection between the brand or product with the sports personality.” [6]
How Image Rights Of Athletes Has Been Abused
Companies may use the athletes’ celebrity status to gain a customer base by tapping into their goodwill and reputation. Still, it becomes problematic when companies use their image wrongfully. If a player does not wish to be associated with promoting a specific brand or product, then the illegal use of his image would affect his decision-making power. An example of this can be seen in the case of Sourav Ganguly v. Tata Tea Ltd, where tata tea was conducting a campaign of aiding consumers to congratulate him through a postcard that was included with their tea. This was being done without the cricketer’s knowledge or permission. The court granted relief to Ganguly by holding that “fame and constitute an intellectual property right.” [7]
Another similar instance occurred when a cigarette company’s packaging displayed John Terry’s image, the captain of England’s football team, without his consent. [8]. His lawyers contacted the Indian government to remove that picture. He even posted an Instagram story, condemning Gold Flake and stating that he hates smoking. When this came up before the Indian government, the official was more concerned with the quality of the image rather than the fact that image rights had been violated. This demonstrates the casual approach towards these rights.
Similarly, in Puma Se vs UniQlo, the latter used the former’s logo and the logo of ONE8, which is a clothing brand in collaboration between Virat Kohli and Puma. This was done to wrongfully associate themselves with Kohli’s renowned name, attract the customers and commercially gain. This is an instance of misrepresentation and violation of image rights.
Not just companies, but sports associations too violate sportsmen’s image rights. In ICC Development (International) Ltd. v. Arvee Enterprises and Ors,[9] the court held that “personality rights do not vest in non-living objects/corporations. The right of publicity vests in an individual, and he alone is entitled to profit from it.” [10] Thus, it is clear that even if a player belongs to a specific franchise, they do not own his image rights.
Coming to IPL, we have seen a spike in companies sponsoring franchises making the cricketers look like walking billboards and using them in television advertisements because it helps the brands “leverage player images to create co-branded campaigns and promotions.” This becomes problematic when the players’ consent is not taken. The cricketers had refused to endorse brands associated with their IPL teams and even complained to BCCI, saying that the teams were exploiting their brand image. The players have cited conflict of interest stating the team sponsors are in direct competition with their endorsers. Meanwhile, a team official said that the endorsement clause was always there. Still, some teams were “flouting the norms” by pressurising the players. [11]. Later, the governing council asked all teams to revisit the endorsement clause. However, no enquiry was made to solve the complaints of the players. If the teams were exploiting the players even when the endorsement clause existed, the governing council’s request to revisit the clause does not do much to prevent the teams from misusing the players’ image.
Domain names, which is treated as trademarks by Indian courts, play a major role in protecting image rights. Domain names build brand image, portability and search engine optimisation, and thus it is a significant contributor to the image of the player in the eyes of the people.
In MS Dhoni v. Hanley [12], a cyber squatter was trying to exploit the image of a famous Indian cricketer by using his name as his domain name <msdhoni.com>.[13]. The domain name was identical to the MS DHONI trademark. The squatter neither had legitimate interests in the Domain Name nor could he provide an explanation behind why he chose this specific domain name. Additionally, “the website frequently used “MS DHONI” trademark to raise advertising revenue through the use of sponsored or “click-through” links.” [14] Thus, it was held that “the registration and use were in bad faith.” [15]
Limitations/Defences to Personality Rights Claims
Not every use of sportspersons’ names are illegal as long as the person using the name does not represent to the public to be associated with him and “he is entitled to carry on ‘his’ business in ‘his’ ‘own’ name.” [16] This was the position in Gautam Gambhir v. D. A. P [17] where the defendant, who had the same name as the famous cricketer, had started restaurants under the names “Blu Wavs by Gautam Gambhir” and “Play Reloaded by Gautam Gambhir.” The court held that this did not violate the image rights of the cricketer because “an individual is entitled to carry on his business in his ‘own’ name so long as he does not do anything more to cause confusion with the business of another and if he does so honestly.” [18]
Court also held that no infringement occurs when no loss is caused to the “goodwill of the plaintiff in his field, i.e., Cricket.” [19] This is problematic because sportspersons have two images – one on the field and one as an individual who has the right to decide how he wants himself portrayed. Just because his reputation in this sport has not been affected, that does not mean image rights have not been violated.
Conclusion
The main problem is that “image rights of sportspersons in India is still in a nascent stage.” [20] There is no clarity on who gets access to such rights as the Indian Copyrights Act, nowhere defines ‘celebrity’ in it. [21]. Even though the courts have acknowledged the existence of this right, there is no specific law on this matter.
The solution that this paper suggests is the implementation of a law that tackles this issue. It can be in separate legislation, added as a provision in the copyright act, recognised as a part of the right of privacy under Article 21 or through the right to publicity inferred from article 19. Many countries have recognised such rights. The United States has established protection under copyright and property laws, specifically, the torts of unfair competition and publicity. [22]. The UK has given a legal basis to this right through the right to privacy and tax laws. “The rest of Europe, like France and Germany, have already legislated special statutes for the Right of Publicity.” [23]
This statutory codification may lead to greater awareness and protection of the rights of sportspersons. [24] “A professional athlete’s right of publicity should be secured as it has come from the hard work they have done over the year and they have every right to exploit it and also to control who could exploit it.” [25]
*The author is a law scholar of Jindal Global Law School, India.
(The image used here is for representational purposes only)
References
[1] An Analysis Of Personality Rights In Sports - Anand And Anand Updates’ (Anand and Anand Updates, 2016) <https://updates.anandandanand.com/an-analysis-of-personality-rights-in-sports/> accessed 23 September 2021.
[2] Titan Industries Ltd. v. Ramkumar Jewellers [2012 (50) PTC 486 (Del)]
[3] Jain M, ‘An Overview Of Celebrity Rights - Athletes And Sportspersons - ALG India Law Offices LLP’ (ALG India Law Offices LLP, 2020) <https://www.algindia.com/an-overview-of-celebrity-rights-athletes-and-sportspersons/> accessed 23 September 2021
[4] Cheryl Kwok, ‘Cheryl Kwok - Academia.Edu’ (Independent.academia.edu) <https://independent.academia.edu/CherylKwok> accessed 23 September 2021.
[5] Aswathy Sujith, ‘SPORTS AND INTELLECTUAL PROPERTY RIGHTS – AN OVERVIEW ON THE INDIAN STANDARDS’ (Thelawbrigade.com, 2021) <https://thelawbrigade.com/wp-content/uploads/2019/05/Aswathy.pdf> accessed 23 September 2021.
[6] Divyakshi Jain, ‘Personality Rights In Sports’ (Lexlife India, 2021) <https://lexlife.in/2021/04/06/personality-rights-in-sports/> accessed 23 September 2021.
[7] Ibid.
[8] Ibid.
[9] ICC Development (International) Ltd. v. Arvee Enterprises and Ors [ 2003 (26) PTC 245 (Del)],
[11] Indranil Basu, ‘IPL: Players Need Not Endorse IPL Sponsors | New Zealand In India 2016 News-Times Of India’ (The Times of India, 2011) <http://timesofindia.indiatimes.com/articleshow/7583322.cms?from=mdr&utm_source=contentofinterest&utm_medium=text&utm_campaign=cppst> accessed 23 September 2021.
[12] Mahendra Singh Dhoni and Rhiti Sports Management Private Limited v. David Hanley [Case No. D2016-1692]
[14] 'WIPO Domain Name Decision: D2016-1692' (Wipo.int, 2016) <https://www.wipo.int/amc/en/domains/decisions/text/2016/d2016-1692.html> accessed 26 September 2021.
[15] Ibid.
[17] Gautam Gambhir v. D. A. P. & Co. and Ors [CS (Comm.) 395/2017, IA Nos. 8432 and 6797/17]
[18] Ibid. para 9
[19] Ibid Para 9
[22] Frodl, C. Commercialisation of sports data: rights of event owners over information and statistics generated about their sports events, Marquette Sports Law Review, 26(1), 72.