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Sports are one of the foremost forms of entertainment in the world. It has expanded from fun and games to a billion-dollar industry. Marketing and promotions through franchising, advertising, brand establishment of the sport as well as sportsmen has given a push to the development of the industry.
Popular sports such as cricket, golf, tennis, football, etc. just to name a few have expanded into mammoth international events with a huge amount of fan following, thus opening a new sponsorship avenue for organizers. The events are organized in order to get the maximum benefits whether in terms of profit or promotion of their own brand. There have been dedicated sports authorities set up to perform this task. For example: ICC (Indian Cricket Corporation) in India organizes all cricket related events, big or small, from Ranji Trophy (at the state level) to Indian Premier League (at international level).
Hence, it is patently clear that these sports organizations are exploiting and commercializing various forms of intellectual property rights created by them. These IPR created by them are used as a tool of profit maximization through brand placement and increasing goodwill. There are various football clubs around the world who are the perfect examples of IP capitalization such as Real Madrid, Manchester United, etc. And it’s not just football, other sports also have their own niches like NBA, NHL, etc. in USA. These sports provide a huge avenue for profit through IP exploitation and brand creation.
These sports associations strive to set themselves apart through team names which become famous such as Royal Challengers Bangalore or New York Yankees have become names which are known around the globe. Just the name alone holds significant value and is generally trademarked by the team. Furthermore, there are broadcasting rights, franchising and licensing rights which further forms another stream of revenue. There are sports persons who become famous and are even given catchphrases such as Captain Cool for M.S. Dhoni so as to add more value to the personality already existing.
This article seeks to deal with the concept of personality rights of these sports celebrities which are used an effective cog in the huge wheel of the sports industry. Now you would ask what personality rights are, personality rights are the rights associated with the exploitation of the brand associated to a personality/celebrity. This exploitation might take the form of advertisements, picture ads, merchandise and much more. Thus, I would first deal with the concept of personality rights in detail. Then, I would move to the international position of such rights and famous examples of the same. Lastly, I would deal with the legal position relating to personality rights in India.
Personality Rights
Personality right is the right to control or direct the commercial exploitation of one’s name, image, likeness or any other facets of personality per se. Publicity rights of individual sportsperson also add a large amount of value to the sports association or teams they are associated with. Celebrity status provides avenues of earning revenue through image creation, brand endorsement or capitalization on fame. It has become very common for sportspersons to trademark their names or their likeness in order to avoid its exploitation by other people without consent. Some of these famous examples include but are not limited to David Beckham, Sachin Tendulkar, etc.
Intellectual property rights (IPR) could be a way to protect the rights of the professional players. IPR works on certain theories which could justify the personality rights. These theories are: Labour Theory, Personhood Theory and Economic Justification Theory.
The labour theory suggests that a person should be allowed to reap the fruit of his own labour, which is justified as the players have to work really hard in order to reach their position and to develop their reputation. Unlike other celebrities, a sportsperson is known because of his ability and not because of his lineage or the controversies he was involved in. A player should thus be allowed to benefit economically from his reputation.
The personhood theory states that a person undoubtedly has a deep interest in his own personality and property. Property has been decided to be both internal and external, and the only thing a person carries on himself is his personality and if he does not have an autonomy over it, it would be akin to slavery. The sportspersons have a right to their personality as it defines them, and they have worked hard to reach the station in life.
The economic justification theory suggests that if a person has been given a right to his personality, then they would work on it which would encourage them to spend time, money and effort on it. And sportspersons have to continue working hard to raise their effectiveness in the field.
This all establishes that sports personalities have deep connection with IPR. Furthermore, even sports have deep connection with IPR for example every team has trademarks to protect and to stop its misuse.
Just association with a certain person’s name can boost the image and reputation of the so associated person or entity. This has led to the use of celebrity’s names being used in order to sell their products or service without the consent of the celebrity in question. This is a loss to the team and the sportsperson while being an unprecedented benefit to the associated person who is gaining without paying the requisite royalties or license fee. This phenomenon has in turn led to the emergence of an IPR for protection from such exploitation like personality rights and the ensuing importance attached to it.
Another very popular and important aspect of personality rights is character merchandising. Character merchandising is a huge revenue source for sports associations, teams and sportspersons. Lots of brands have associated themselves with famous sportspersons such as Michael Jordan with Nike (where Nike releases the Air Jordan collection and earned a lot of revenue from the sale of the same) and Sachin Tendulkar with Reynolds (where Reynolds had created an ad campaign where they released a pen with his signature on it). While few sportspersons have their own merchandising business like Sachin Tendulkar or Roger Federer who have their own businesses selling their merchandise or exploiting their name to sell stuff to their fans.
Some sports association also use the sportsman’s image to produce and sell merchandise. But herein the player needs to be dissected into two halves, one, the part of the team wearing team paraphernalia which the association has control over and second, the individual who has the right to make decisions on the manner in which he wants himself portrayed.
In Europe, sports organizations have used player’s images and personality rights to generate a huge amount of revenue. In September 2013, Real Madrid bought the Welsh footballer Gareth Bale for a record amount of £85.3 million. Bale in return assigned 50% of his image or personality rights to Real Madrid, which allowed the club to recover their massive investment by selling merchandise and other product endorsements through the use of the assigned image rights.
The wage structure of a player with clubs or these sports organizations, is also affected by the fact that whether they are allowing the club permission to exploit their image rights. Players such as David Beckham have even found methods to be tax-efficient by incorporating a company which manages his image rights.
Another prominent example of the power of image and personality rights was the appointment of Jose Mourinho as the manager of England’s football club Manchester United, wherein he brough two superpowers of the sport, namely Chelsea and Manchester United to a stop over the issue of his image and personality rights as Chelsea held multiple trademarks over his name in the EU, and also owned his image rights. Manchester United thus paid an undisclosed but hefty sum to obtain those image rights.
Jurisprudence Behind Personality Rights
During the nineties, products were advertised through TV, newspapers, billboards, etc. However, the emergence of internet changed the whole scenario and made everything much more global. This created a lot of issues in protection of people’s rights. Social media gave everybody the chance to become a celebrity. Which led to the conception of personality rights being introduced and protected. There is a need for a legislation to protect these image rights at this time.
Personality rights for the first time were discussed in USA by Louis Brandeis and his legal partner Samuel Warren in their article in 1890. The article while introducing “Right to Privacy”[1] also mentioned the right to publicity. However, the difference between the two was not expounded upon in the article.
Melville Nimmer authored the second article which centered around the concept of “Right to Publicity”[2] which has now come to be known as “personality rights” around the world. This article, however, gave a clearer picture than the earlier one.
Right to Publicity can also be linked to another legal scholar Dean William Prosser. Prosser divided the “amorphous collection of civil wrongs falling within the category called ‘invasion of privacy’” into four categories:
- Intrusion upon the plaintiff’s physical solitude;
- Public disclosure of embarrassing private facts;
- Placing the plaintiff in a false light in the public eye; and the plaintiff in a false light in the public eye; and
- Appropriation for commercial benefit of the plaintiff’s name or likeness.
These four categories made up Prosser’s “Four Torts of Privacy,” which is followed around the world. The fourth concept of this theory quite resembles the right to publicity in the current times, this helped right to publicity be established in the United States of America.
This could be seen as the jurisprudence behind the right to publicity around the world. The right to publicity has been known by various names around the world. The United Kingdom prefers to call it as Personality Rights and in the rest of Europe it is known as Image rights.
Right of Publicity was coined by Judge Jerome Frank in 1953 in the case of Haelan Laboratories, Inc. v. Topps Chewing Gum, Inc. which for the first time mentioned that individuals possess a property right in their own image. Since 1953 there have been a lot of cases related to it. Various states of the United States have different views on it but still it is recognised around the states.
Finally in the case of Hirsch v. S.C. Johnson & Son, Inc., the Supreme Court of Wisconsin distinguished the right to publicity from right to privacy. The court indicated that the right of publicity “protects a property right, not only the right of a person to be let alone or to live his life in seclusion without mention in the media.” This is from where the right derived its place in the law.
Reasons to Permit Personality Rights
To understand why there is a need for such a right, first we need to understand the elements of the right itself. So basically there are two elements of any claim which comes under the right, which are given below.
The elements of a Right of publicity claim include:
- Validity, The plaintiff owns an enforceable right in the identity or persona of a human being.
- Infringement.
- Defendant, without permission, has used some aspect of identify or persona [of the plaintiff] in such a way that plaintiff is identifiable from defendant’s use.
- Defendant’s use [of plaintiff’s identity or persona] is likely to cause damage to the commercial value of that [identify or] persona.
A sports personality would definitely give arguments in favour of such a right. A celebrity or a sports personality would argue that they should be allowed the right to profit from their image as it is an outcome of a lot of achievements and efforts during initial years. An athlete would prefer to promote his talent through some specific endorsements and which match with his own values. Thus, giving such rights would protect the value of the sports personalities without tarnishing it and would not like to overuse it to lose marketability and depreciation in value.
Furthermore, a sports personality would not want to be associated with promoting a specific brand or product. Retaining such rights would help the sports personality control one’s commercial enterprise and would prevent consumers mistaking connection between the brand or product with the sports personality. This situation was in seen in India, in the unreported case of Sourav Ganguly v. Tata Tea Ltd., when Sourav Ganguly returned to India after the tour of England he found that his employer Tata Tea Ltd. were promoting their tea by offering it consumers an opportunity to congratulate him through a postcard which was included with their tea. Sourav Ganguly though being their employee of the company had not given consent or authorized the company to use his name. The court while granting relief to the sports personality held that fame and popularity constitutes intellectual property right (IPR).
The right of publicity has been used in the United States of America for a very long period of time so there have been many cases around it, some accepting it and some rejecting it. The very famous case related to sports could be seen in Tiger Woods in the year 1998. The case was fought between Tiger Woods’ exclusive licensing agent, ETW Corporation and Jireh Publishing. This case was about a painting titled “The Masters of Augusta”, created by Rick Rush and was published by Jireh Publishing. The painting was made to commemorate Tiger Woods’ victory at the 1997 Masters Tournament in Augusta, Georgia.
ETW Corporation sued Jireh Publication alleging trademark infringement, dilution of the mark and unfair competition and false advertising under Lanham Act popularly known as the Trademark Act. ETW alleged that it created unfair competition and deceptive trade practices under the Ohio Revised Code and unfair competition, trademark infringement and violation of Tiger Woods’ right of publicity under Ohio common law. It was held that there was no violation of right to publicity as Rick Rush’s art was protected under the First Amendment and that there was no violation of the Lanham Act.
The problem lies therein- there being no law created confusion, though it can been seen that artistic work is safe under the first amendment but this created confusion for the consumers and ETW Corp. would have made some authorised products available for the consumers and then there was Rick Rush’s painting could have harmed right of publicity of Woods as his image was being used for commercial purposes and he could not benefit from it. The extent of such harm cannot be easily determined.
Legal Position in India
One of the first cases to recognize publicity rights in India was that of ICC Development (International) Ltd. v. Aarvee Enterprises & Anr., where the Supreme Court had elucidated the origin of publicity rights and their place in law: “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. Any effort to take away the right of publicity from the individuals, to the organiser {non-human entity} of the event would be violative of Articles 19 and 21 of the Constitution of India. No persona can be monopolised. The right of Publicity vests in an individual and he alone is entitled to profit from it. For example, if any entity, was to use Kapil Dev or Sachin Tendulkar’s name/persona/indicia in connection with the ‘World Cup’ without their authorisation, they would have a valid and enforceable cause of action.”
Further, image or personality rights are a form of intellectual property (IP) rights, which can survive even after the death of the individual. Image or personality rights recognize the commercial value of the picture representation of a prominent person, performer or sportsperson, and protect their proprietary interest in the profitability of their public reputation or persona.
If the name, image or the likeness of a person is registered or used as a trademark, or has been copyrighted, then the said trademark or copyright can be licensed. Some Indian sportspersons, especially famous cricketers such as Sachin Tendulkar and Kapil Dev, have protected their image rights by trademarking their name or domain names for their websites.
In India, while no specific law has been created in this respect, Indian courts have acknowledged and enforced this right in various cases. In Titan Industries v M/S Ramkumar Jewellers, the court observed: “When the identity of a famous personality is used in advertising without their permission, the complaint is not that no one should not commercialize their identity, but that the right to control when, where and how their identity is used should vest with the famous personality. The right to control commercial use of human identity is the right to publicity.”
The protection offered to such image/personality rights of sportspersons in India is still in a nascent stage. For instance, the Indian government had permitted the use of a picture of John Terry, a world-renowned footballer who was the captain of England’s national team, on cigarette packets.
With Sachin Tendulkar assigning his image rights for his biography, Playing It My Way, more and more celebrities and sportspersons are following the trend. There is a need for greater exposure, which will lead to more commercial opportunities, which in turn leads to a host of legal issues.
So, a statutory codification of the principles of passing off with reference to personality or image rights may lead to greater awareness and protection of the rights that are inherent in celebrities and sportspersons.[3]
In the past ten- twelve years, even India has become a rising country in the field of commercialization of sports. With the advent of Indian Premier League (IPL) in 2008, a lot of things changed. Even before 2008, their leagues were going on but were so much commercialized. IPL changed the whole concept and increased the commercial value of sports in India, in later stages various sports like kabaddi, badminton, football, etc started their leagues since then a lot of things have changed in India.
The rights to Publicity of celebrities are now being infringed on a routine basis, they are abused in many ways through misappropriation by others. The right to publicity and right to commercial use of their identity are constantly being infringed. Now-a-day’s even their privacy is encroached. Though it is understandable, being in the public domain brings in such problems where privacy is breached. Right to publicity originates from the right to privacy and other laws under Intellectual Property Rights.
Personality rights have never been taken as specific rights; it has been taken as implied part of Article 19 and 21 of the Indian constitution. Publicity Rights have never been part of the Intellectual Property Rights’, though a persons’ image and name can be saved through copyright and trademark and this is practiced in India majorly.
The Indian Copyrights Act, nowhere defines ‘celebrity’ in it, but inference can be made from the word performer in Section 2(qq), though a performer is not always a celebrity and a celebrity may not be a performer all the time. A performer is any person who gives a performance a singer, a dancer, a footballer, an actor etc., Section 38 of the Act gives a special right i.e. performers’ right to any performer who appears or engages in any performance in relation to such performance and the right shall subsist until fifty years from the beginning of the calendar year next following the year which the performance is made. Clause 3 of the same section says that during the performance if anyone makes a copy, recording of the same is said to have infringed a performers’ right and it would be dealt under Section 39 of the Act. Well the problem comes in here the performance is protected but not the performer and his image in general and that is what is needed in the new era.
There have been some other cases as well but they do not exactly use the jurisprudence of right of publicity in the judgment. The main problem lies here; there is no nationwide recognition of the right. Also, High Court’s judgments just have a persuasive value, rather than binding on other High courts. In the absence of binding precedent by the Supreme Court or statutory provisions conferring the right of publicity, any claim of the right’s violation remains undefined and ambiguous in most states.
Conclusion
We can conclude from the above discussion that, that does need a legislation regarding Right of Publicity. Intellectual Property Right is not sufficient enough to protect a celebrities’ personality, the above mentioned cases provide for the same. The right of publicity is a sui generis, which cannot be positioned under any IPR law in a wholesome way.
There are many countries which have recognized such rights, the United States is the pallbearer, though it has no proper legislation but through court’s jurisprudence the right has evolved which has been discussed in the paper. Even in the UK, the right has been recognized through right to privacy and tax laws. The rest of Europe, like France and Germany have already legislated special statutes for the right of Publicity.
Currently the right of publicity is safeguarded under the Constitution of India, as the right originates from the right of privacy which was declared as a fundamental right in the case of KS Puttaswamy and Anr. v. Union of India and Other. But the whole problem lays here, in the United States the right of publicity seen as property law and if the same practice is used in India, it would be contradicting the constitution. Thus there is a need of separate legislation for the same.
Sports’ is a very lucrative market in the current times it is around three percent of the world trade. 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 to also control who could exploit it. The Indian sports market is expanding at a very fast rate, so is making the professional players more vulnerable to exploitation. India is in a need of legislation to protect its celebrities or even that it could be recognized as a part of the right of privacy, so that till the point a legislation is made, there is still some protection for the celebrities in India.
[1] Louis Brandeis et. Al., Right to Privacy, 4 Harvard L.R. 193 (1890).
[2] Melville B. Nimmer, The Right of Publicity, 19 Law and Contemporary Problems, 203-223 (1954).
[3] https://law.asia/celebrities-just-what-are-their-personality-rights/
Author: Divyakshi Jain, Semester X, B.B.A. LL.B. (IPR Hons.) National Law University Jodhpur
Editor: Kanishka Vaish, Senior Editor, LexLife India.
Lexlife India 