QUERIST: UNI STYLE IMAGE

QUERY: The Querist wants to start a series of clothing with picture and brief description
of the famous national personalities on T-shirts. The query raised before us is whether
any permission is required for the same from those individuals who are living or with the
trusts or legal heirs in case any such personality is dead. We present our opinion, on the
basis of our research and knowledge on the issue, as under:

OUR REPLY:

1. PERSONALITIES WHO’S IMAGE CANNOT BE ORDIANRILY USED

The legislature has passed an enactment with name The Emblems and Names (Prevention
of Improper Use) Act 1950. Which prohibits improper use of National Flag, Emblem, and
other names and marks as provided in the schedule attached to the Act. Section 3 of the
said act says:

“3. Notwithstanding anything contained in any law for the time being in force,
no person shall, except in such cases and under such conditions as may be
prescribed by the Central Government, use or continue to use for the
purpose of any trade, business, calling or profession, or in the title of any
patent, or in any trade mark or design, any name or emblem specified in
the Schedule or any colourable imitation thereof without the previous
permission of the Central Government or such officer of Government as
may be authorised in this behalf by the Central Government”

Article 9A in the Schedule to the Act, is relevant to mention here which says :

“9A. The name or pictorial representation of Mahatma Gandhi, Pandit

Jawaharlal Nehru, Shrimati Indira Gandhi, Chatrapati Shivaji Maharaj
or the Prime Minister of India or the words 'Gandhi', 'Nehru' or 'Shivaji',
except the pictorial use thereof on calendars where only the names of the
manufacturers and printers of the calendars are given and the calendars
are not used for advertising goods”

The schedule also talks about name or picture of Ashok Chakra, Ramkrishna Mission
logo and Sathya Sai Trust, its logos and name ‘Sathya Sai’. However it may be made
clear the said list is not exhaustive as the Act gives power to the Central Government to
add any name or alter the condition in which the name may or may not be used.

Therefore it can be said that use of pictures of Mahatma Gandhi, Pandit Jawaharlal
Nehru, Shrimati Indira Gandhi, Chatrapati Shivaji Maharaj or the Prime Minister of
India, cannot be used for purpose of trade, business or profession without prior
permission of Central Government and if allowed for specific purposes, subject to
restrictions imposed by Government at the time of approval.
In a case before Supreme Court titled as Sable Waghire & Company and Ors Vs Union of
India [(1975)1SCC763], the appellant wanted to use the name of “Chhatrapati Shivaji” as
the Trade-Name for their product, the Court said that famous personality, like Chhatrapati
Shivaji have gained a sacred importance and national sentiments are attached to such
names. Therefore such sacred names should not be used for individual interests.

The use of such Emblems and Names is permitted for academic, artistic, biographical,
cultural, educational, scientific or spiritual purpose only subject to conditions laid down
at the time of granting permission.

2. USE OF PICTURES OF OTHER PERSONALITIES

We may mention that there is no express provision for use of pictures of other
personalities or names which are not part of the Schedule provided in the Act. In this
regard we would mention that even though there is no restriction under the said Act but
still the use of name or image should not be improper. We would further like to mention
that the specifically enacted Intellectual Property Rights Acts, viz. Copyrights Act,
Trademark Act, Patents Act, Design Act etc. do not have provisions on the use of picture
of a National Personality in any product. Therefore, the part of said matter comes into the
purview of common law, i.e. law which is made by court decisions. A tort action can lie
for any misuse or wrong use or improper use of the pictures or names of any famous
personalities.

It is pertinent to note that India, unlike several other countries, does not have any
legislation that recognises the right of a person to exploit his or her name, fame, goodwill
for commercial purposes. India is yet to recognize the rights of publicity and image as
distinct legal rights. As such, there is no specific guiding legislation in India in so far as
‘celebrity rights/ publicity rights’ are concerned.

We shall now refer to some other legislation which may have some significance to the
matter in hand and for your overall guidance.

Individuals may apply for the protection of their name, likeness and nicknames, among
other things, with the Indian Trademarks Registry, under the Trademarks Act, 1999 in
order to obtain statutory protection against misuse. This is of strategic importance for
celebrities who intend to use their image and likeness to identify their own or an
authorized line of merchandise. Recently, well-known Indian actress Mallika Sherawat
registered her name as a trademark.

Sec 14 of the Trademarks Act, 1999 lays down the following

“Use of names and representations of living persons or persons recently dead:
Where an application is made for the registration of a trade mark which falsely
suggests a connection with any living person, or a person whose death took place
within twenty years prior to the date of application for registration of the trade mark,
the Registrar may, before he proceeds with the application, require the applicant to
 furnish him with the consent in writing of such living person or, as the case may be, of
the legal representative of the deceased person to the connection appearing on the
trade mark, and may refuse to proceed with the application unless the applicant
furnishes the registrar with such consent.”

It is clear from the foregoing that the legislative intent is to discourage the
misappropriation of the name of any living person, or a person whose death took place
within twenty years preceding the relevant time.

Further, in the absence of statutory protection, an individual may also resort to an action
for passing off in order to protect his or her publicity and image rights. However, an
action for passing off requires proof of:
• the reputation of the individual;
• some form of misrepresentation; and
• irreparable damage to the individual.

Inspite of the lack of a specific legislation in Indian pertaining to celebrity

rights/publicity rights, Indian courts have recognized celebrity rights/ publicity rights. A
recent judgment of the High Court of Delhi may be cited as a case in point in order to
gain some insight in the matter. In Icc Development (International) Limited vs. Arvee
Enterprises and Anr. (2003 (26) PTC 245), the H’onble Delhi High Court observed that
“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……….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. An
individual may acquire the right of publicity by virtue of his association with an event,
sport, movie, etc. However, that right does not inhere in the event in question, that made
the individual famous, nor in the corporation that has brought about the organization of
the event……..The right of Publicity vests in an individual and he alone is entitled to
profit from it...”

In DM Entertainment v Jhaveri (Case No. 1147/2001), Daler Mehndi, a famous Indian

composer and performer, brought an action against the defendant following the
registration of the domain name ‘dalermehndi.net’. The Delhi High Court restrained the
defendant from using the trademark DALER MEHNDI, thus recognizing the fact that an
entertainer’s name may have trademark significance.

Copyright law may protect a specific image in the form of a photograph, painting or other
derivative works (Section 13 of the Copyright Act, 1957). Pictures or images can be
copyright protected under the Copyrights Act, and it is famously known as ‘Water
Marking the Images’. The Copyright Act of various countries allows protection of the
pictures, under the Act and to ‘Water Mark’ those for preventing unauthorised use.
Please note that a photographer is the first owner of all photographers of celebrities taken
by him/ her. His intellectual property rights over such photographs are only limited by
rights of the subjects (celebrities) in the event of exploitation of such photographs for
commercial gains.

It may be noted a celebrity actor is deemed under the Indian Copyright Act to have
assigned all his/her rights in his/her performance if the performance is recorded in an
audio-visual media such as a cinematograph film and, by virtue of such incorporation,
such actor is deemed to have assigned all such rights to the producer (employer) of such
cinematograph films. (Section 17 of the Copyrights Act, 1957). The actor concerned may
not be entitled in law to assert a violation of his/ her rights of publicity because film
producer is the first owner in respect of a copyright-protected photograph.

We understand that USI wishes use pictures, photographs and images of Michael Jackson
(“MJ”) as designs for some of its T-shirts and other products without permission. We
presume that the late MJ being an eminent personality may have copyright protected his
pictures, images, paintings etc in his name, under applicable US laws. Any commercial
use of the same without prior permission from the authorised person may amount to
violation of the rights and may attract claims for damages and/or injunction under such
US laws. Furthermore, the publicity rights or personality rights are protected in USA by
both common and statutory laws and any violation of the above rights under US law shall
attract legal action. Please note that intellectual property rights can be inherited or even
transferred. Hence, the legal heirs of MJ or whoever has been vested with such rights
shall be at liberty to seek legal redress against such violations.

Further, let us examine the possibilities, in both India and USA, whereby USI may be
challenged legally for using the images/ pictures of MJ (without any prior permission/
license) for commercial purposes:

i) India: As discussed hereinabove, trusts or organizations (non living entities)

are not entitled to the protection of publicity rights in the opinion of the
courts. However, on discovery of any violation of rights, the legal heirs of MJ
may take recourse to legal remedies under common law in India. In case USI
desires to use certain photographs of MJ for the T-shirts without due
permission, the photographer may also seek similar legal redress to either
restrain USI or claim damages.
ii) USA: The publicity rights or Personality rights are protected in USA by both
common and statutory laws. We are of the view that in the event of USI’s
material/merchandise in question reaching USA by way of commercial usage
or in course of business for commercial gains; the chances of facing charges
of infringement or violation of all such applicable laws cannot be ruled out.

In the absence of any specific legislation in the matter and for the lack of any clear
Since nothing much could be found in Indian judicial precedent in India gementin the
matter,s, we extended our research to the legal positions in other countries in this regard
just to provide an idea of the applicable law as it has developed so far across the world.
3. POSITION IN OTHER COUNTRIES

Few Countries have already recognised the right of a person to exploit his or her name,
fame, goodwill for commercial purposes. The said right is termed as personality right.
Personality rights are generally considered to consist of two types of rights: the right to
publicity, or to keep one's image and likeness from being commercially exploited without
permission or contractual compensation, which is similar to the use of a trademark; and
the right to privacy, or the right to be left alone and not represent one's personality
publicly without permission.

The said personality rights are in some places have been recognized by the statue, and in
some other it is matter of common law, i.e. judge-made law. It may be mentioned here
that the countries which recognize the personality rights also recognize that the said
rights are assignable and may survive even after death of the personality. We take a look
at the positions in some of the countries:

Australia:

Courts of Australia have recognized the Personality rights very early in 1969. In a case
where a music company without permission put the picture of a famous couple ballroom
dancer on its gramophone record entitled "Strictly for Dancing: Vol. 1, the said dancers
sued the company in court for grant of injunction from selling of said records. An
injunction was granted on the ground that the use suggested the plaintiffs recommended
or approved of the defendant's goods, or had some connection with the goods. [The
Henderson case [1969] RPC 218]

Canada:

Canadian common law recognizes the right to personality on a limited basis. It was first
acknowledged in the 1971 Ontario decision of Krouse v. Chrysler Canada Ltd.. The
Court held that where a person has marketable value in their likeness and it has been used
in a manner that suggests an endorsement of a product then there is a ground for an action
in appropriation of personality. This right was later expanded upon in Athans v.
Canadian Adventure Camps (1977) where the Court held that the personality right
included both image and name.

England:

England has recognized the right in common law. In the Mirage Studios case [1991] FSR
145, Browne-Wilkinson, V.C., after referring to the Australian cases of Children's
Television Workshop v. Woolworths (NSW) Ltd. [1981] RPC 187 and Fido Dido Inc. v.
Venture Stores (Retailers) 16 IPR 365, court said the law as developed in Australia is
sound. There is no reason why a remedy in passing off should not cover a case where the
public is misled in a relevant way as to a feature or quality of the goods sold when an
action is brought by the people with whom the public associate that feature or quality. An
interim injunction was granted.

United States of America

The right of publicity evolved out of the right of privacy in the United States, and is still
often referred to as a "subset" of privacy rights. In American context, roughly defined, it
is the right to charge for (or bar entirely) the commercial exploitation of name, likeness,
voice or "personality." By some definitions, it only applies to commercial advertising. By
others, it is broader, and applies to any commercial exploitation, including such things as
t-shirts (As is the case of the Querist).

By the broadest definition, the right of publicity is the right of every individual to control
any commercial use of his or her name, image, likeness, or some other identifying aspect
of identity, limited (under U.S. law) by the First Amendment. The right of publicity can
be referred to as publicity rights or even personality rights. The term "right of
publicity" was coined by Judge Jerome Frank in the 1953 case Haelan Laboratories, Inc.
v. Topps Chewing Gum, Inc., 202 F.2d 866 (2d Cir.).

The publicity rights or the personality rights are protected in USA by both common and
statutory laws. Because the Right of Publicity is governed by state (as opposed to
Federal) law, the degree of recognition of the Right of Publicity varies significantly from
one state to the next. To date, twenty-eight states are on record as recognizing the Right
of Publicity in USA. In state of California there is a specific enactment called The
Celebrities Rights Act,1985, which protects the right of Celebrities to exploit the
commercial value attached to their personality. The said rights are protected even after
death of the personality and some statutes have extended such rights to exist even after
100 years of death of the personality. There are various precedents in USA which
recognize the said law in form of common law.

CONCLUSION

Before concluding we may mention that the current market scenario and competition has
developed the idea of merchandising goods and services through personalities by way of
endorsing them to their brand name. In this way, personalities, under endorsement, give
exclusive rights to the companies with which they have entered into contract to use their
image, name and other details in any form for advertising their products. This is however
seen in case of marketing the product. However, we are concerned with only use of
image of famous personalities, not amounting to advertising. Still, the element of
commercial purpose is present, which mostly has been looked into by the Courts in cases
involving rights of a personality, in other Countries and under the Common Law.
In relation to national heroes who are no more alive, there may be averment from our side
that we are not producing/using the image so as to suggest that personality has any
relation or contract with the company but simply to bring awareness about the personality
itself. However, it will depend on the facts and circumstances, if the case is brought about
in the court, what interpretation the court makes. As already said, the law in this regard in
India is still not developed. The Courts generally look towards the legal position in other
countries in tort actions.

Talking about national personalities who are alive, it is advisable to take licence from the
personality. If such license is not taken, then the Querist may go in with the calculated
risk involved.

Thus in the light of above we may conclude that, though in India we do not have any
specific recognition to such right like “pPersonality Right” by way of sStatute but
definitelybut, definitely, the remedy is available under the common law. Any personality
whoich is alive, or his/ her legal heirs in case of those who are dead, and feels that his/her
name/ picture is being used for unjust enrichment by any person, that is, commercially
exploited without permission of suchaid personality, he/she may bring about the a case
for injunction. Though in our research we could nothave not been able to find any such
case but this does not negates the possibility of future litigation. If the personality is a
famous and has specifically endorsed himself/herself for any commercial purpose, in that
case the use of picture or name of said personality without their permission will be
deemed to beas mala-fide use by the Courts.

As far as National figures are concerned, the Emblems and Names (Prevention of
Improper Use) Act 1950 prohibits improper use of National Flag, Emblem, and other
names like Mahatma Gandhi, Pt. Nehru, Smt Indira Gandhi and Chhatrapati Shivaji for
commercial purpose. So far as other personalities are concerned, it has to be kept in mind
that there should be no improper use of image (i.e. using image in bad faith or in any
derogatory way). It is advisable that prior permission may be sought from the
personalities/ celebrities whose pictures/ images are proposed to be used for commercial
purposes.

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