Delhi High Court, continuing with its problematic jurisprudence on personality rights, has picked up right where it left off. Recently, it issued injunctions against individuals/entities selling T-shirts, coffee mugs, wallpapers and posters bearing the image/name of Abhishek Bachchan, Aishwarya Bachchan, and Karan Johar. This, as the Court writes, creates a ‘perception of endorsement.’ With due respect, to me, this is beyond ludicrous. However, as I show, for the DHC, this is no laughing matter. In the past few years, Courts have grown increasingly aggressive on the issue of personality rights. The present orders are only an (needless) addition to the judicial morass being created on personality rights.
Facts
The facts are simple- certain Defendants were selling merchandise (T-shirts, coffee mugs, stickers, wallpapers, posters) bearing the image/name of the Plaintiffs. Although the facts also included certain entities creating AI-morphed images and videos, I am focusing solely on merchandise. Plaintiffs argued that use of their persona on merchandise resulted in confusion and false perception of endorsement. No one, it was further contended, could use any facet of the Plaintiff without consent or authorization.
Passing Off: Endorsement v. Merchandising
In the orders (Abhisek and Aishwarya), the Court has held- “adoption of…name, images…will inevitably cause confusion and create a perception (among laypersons) of endorsement by the Plaintiff.”
The order confuses and conflates both ‘endorsement’ and ‘merchandising.’ The difference, when deciding passing off suit in merchandising context, becomes crucial. The simple question is- whether the Defendant is trying to pass off the merchandise as though authorized/endorsed/associated with the celebrity.
In Irvine and Rihanna, the English Courts clarified the distinction- endorsement implies authorization or approval of the good/services by the celebrity whereas merchandising is mere exploitation of the image/name/likeness for commercial/non-commercial purpose.
Thus, proving passing off in merchandising is more onerous. For instance, if a layperson buys a T-shirt bearing the image of Bachchan Sr., he is buying it because it carries his image. He is not buying it because of the source of origin or that Bachchan Sr. himself authorized it. This is a crucial nuance which this judgement misses.
In Rihanna, the Judge wrote- “it by no means follows that simply because the name or image of a celebrity appears upon a consumable commercial item, the public will assume that it has in some way been endorsed by that celebrity.”
Thus, the fact that a shirt bears the image of Aishwarya Bachchan cannot be the sole factor to determine confusion and false endorsement. To argue against this is to assume that Bollywood fans are gullible and naïve consumers. But the Court uses the standard of reasonable layperson to assess confusion in the orders- how to reconcile this?
In merchandising cases, Rihanna spelled out two factors to decide passing off- (i) application of the image has consequence of telling a lie; and (ii) the lie is material. In Rihanna, the Court said that the first factor is not satisfied if the merchandise does not indicate a source of origin. In other words, the merchandise must demonstrate a ‘relevant connection’ with the Plaintiff indicating source or endorsement or authorisation.
In the present orders, there is no inquiry in this respect. The order does a circular reasoning- since the name/image is being used to sell the merchandise, it will create confusion of endorsement. There is no reasoning as to whether the activities of the Defendant amount to misrepresentation or create confusion of source of origin.
Mere usage of image/name on merchandise is, thus, sufficient to create impression of false endorsement or confusion. The Court is assuming that people buying merchandise are easy game who can be easily deceived. Maybe the Court doesn’t realise that the same people buying Abhishek’s merchandise have surely seen Bunty and Babli too.
The order, in Karan Johar’s suit, is also on similar lines- “(the activities) mislead the general public to believe that the Plaintiff is either associated with the said Defendants or endorsing the products listed on the website of the said Defendants.” The same criticism is applicable to this judgement.
(Problematic) Jurisprudence on Personality Rights:
Frankly, this order is not an aberration. It is part of, in Dworkin’s words, a chain novel of judgements on the issue. And the DHC is not the only Court contributing to this problem. Let me sum up the judicial morass.
In D.M. Entertainment, the Court held that right to publicity protects against unauthorized appropriation of individual’s persona for commercial gain. If the celebrity is identifiable from the Defendant’s usage, it is violative of publicity rights. The Court did not do any inquiry into confusion or misrepresentation. (see here)
Titan went even further- if the celebrity is identifiable, there is no for proof of falsity, confusion, or deception.
In the above judgements, the Courts are placing personality rights within the framework of right to privacy, dignity and autonomy. Thus, the Court are fixating on authorization of the celebrity, irrespective of commercial or non-commercial usage.
The problem arises when the Courts extend this reasoning to passing off context.
In Anil Kapoor, where Justice Pratibha Singh wrote- “sale of merchandise…bearing the face or attributes of their persona on it” is unlawful without authorization. Otherwise, it is written, right to livelihood of the celebrity will be ‘completely destroyed.’ How? Plaintiff never asserted that he was engaged in a similar sphere of activity. There was also no proof to show that consumers were misled into believing that the Defendants had a licensing agreement with the Plaintiff. (here)
In Jaikishan, furthering the illogicality, merely using the name, image, autographed pictures indicate to the common public that the Plaintiff has endorsed or associated with the Defendants. (here)
In Shivaji, the Court held that as long as the public identifies and associates the movie with the Plaintiff, there is a violation of publicity rights. There is no requirement to prove confusion, falsity or deception. (here)
In Karan Johar, again, the Bombay HC held that use of the words ‘Karan’ and ‘Johar’ in the film title created a false perception of association. Mere proof of identifiability, thus, was sufficient to create confusion. (here and here)
In Arijit Singh, the Court said sale of merchandise bearing/exploiting Plaintiff’s personality traits is violative of publicity rights. (here)
The Three HCs, together, have created a jurisprudence where (i) no distinction between endorsement or merchandising is being made; and (ii) mere identifiability of the celebrity is proof of confusion and false endorsement. I have highlighted the problems with this approach in the above section. The important question to ask, then, is: why are the Courts doing it?
Privacy and Passing off Framework
Almost all the above judgements cite R. Rajagopal v. State of T.N. to reach their conclusion. The SC had observed: “right to privacy…must be said to have been violated where…a person’s name or likeness is used without his consent for advertising- or non-advertising- purpose.”
I have two observations. One, the above observations were obiter to the judgement. Two, the same observations were made within the framework of right to privacy.
What the HCs have done is extended this logic to passing off analysis. As a result, the test of likelihood of confusion is not only diluted but rendered irrelevant. A mere lip service is paid to the factor of confusion without ever engaging how there is a false perception of endorsement or confusion is created. The orders mention a ‘layperson’ or ‘reasonable person’ as a disguise for a naïve, unsuspecting and unthinking consumer.
The need is to disentangle the passing off and privacy framework before deciding publicity rights issues before Courts. Current situation has created a complete monopoly for celebrities over their name/images/monikers. The day is not far away when Courts may entertain the idea that clicking a picture with a celebrity and posting it online without authorization is violative of publicity rights.
Courts, today, have forgotten that ‘Fandom’ exists in India. People can’t get enough of their favorite celebrities- from posters, T-Shirts, wallpapers, coffee mugs- they want it all. From massive fan following to dedicated fan pages on social media handles, fans want more from their celebrities. The only people hurt by this jurisprudence are the Fans and adorers.
Surely, personality rights did not mean to hurt the very people who made it possible for someone to be called a celebrity.