This post was first published on September 14th, 2011.
Daler Mehndi is a popular music composer, lyricist, and singer in India. He was involved in the creation of numerous music albums such as BOLO TA RA RA RA, DARDI RAB RAB and so on, which have been sold extensively across the world. He incorporated a company, D.M. Entertainment Pvt. Ltd., the plaintiff in this case, in 1996, in which the letters DM stands for the initials of the name, Daler Mehndi. The company was originally incorporated to manage Daler Mehndi’s advancing career and also helps in raising funds for charities, causes and to fund the DALER MEHNDI GREEN DRIVE project. Daler Mehndi assigned all his rights in publicity, commercial endorsement and other related rights to the Company.
The defendants in the case were toy and gift shops at different places in Delhi. They were selling dolls, which, were allegedly imitations of, and identical to the likeness of Daler Mehndi. The dolls were being imported from China and being sold in the Indian market. In addition to having Daler Mehndi’s features, the dolls could also sing a few lines from some of his compositions.
Aggrieved by the activities of the defendants, D.M. Entertainment filed a case in Delhi High Court alleging that the importation and sale, of such dolls or images, which were able to sing a few lines of the artist’s compositions, were a blatant infringement of Daler Mehndi’s right to control the commercial exploitation of his persona. The company also claimed that the defendants were liable for false endorsement and passing off and prayed for a permanent injunction against the defendants.
After reviewing the facts of the case and arguments submitted by D.M. Entertainment, the Court held the defendants to be liable for violation of the right of publicity, false endorsement and passing off. A permanent injunction was granted against the defendants along with token damages. The decision was given Ex Parte as the defendants did not contest the case of the plaintiff.
While assessing infringement of the right of publicity by the defendants, the Court ascertained the following factors:
a. Public recognition and popularity of Daler Mehndi
b. Identifiability of Daler Mehndi from the unauthorized use; and
c. Sufficiency, adequacy, and substantiality of the user to identify the appropriation of the persona of Daler Mehndi or some of the essential attributes.
After hearing the arguments submitted by D.M. Entertainment, the Court agreed that Daler Mehndi is a famous and popular personality. The Court looked at various facts relating to awards received by the artist, sales of the albums and so on to come to the conclusion. As per the Court, Daler Mehndi was extremely famous and brings an instinctive association in the mind of the public and trade alike, with his high-quality entertainment services, and products emanating from him. Therefore, according to the court, his persona had assumed tremendous significance as a quasi-property right meant to protect the economic value associated with the identity.
With respect to the second and third factors, the Court after considering the evidence stated that the characters or features of Daler Mehndi were incorporated in the toys. The toys looked like Daler Mehndi and performed certain moves like him along with his musical composition. Furthermore, the Court pointed out that the identity of Daler Mehndi was fused into the toys with the objective of gaining commercially through increased sales. As per the Court, the defendants were selling the dolls, on the basis of publicity value or goodwill in the artist’s persona into the product. Based on the aforestated analysis, the Court concluded that the right of publicity of Daler Mehndi was infringed.
The Court then went on to point out that the right of publicity can, in a jurisprudential sense, be located with the individual’s right and autonomy to permit or not permit the commercial exploitation of his likeness or some attributes of his personality. However, the Court noted that in a free and democratic society, where every individual’s right to free speech is assured, the over-emphasis on a famous person’s publicity rights can tend to chill the exercise of such invaluable democratic right. Thus, as per the Court, caricature, lampooning, parodies and the like, which may tend to highlight some aspects of the individual’s personality traits, may not constitute the infringement of such individual’s right to publicity.
The Court pointed out that such caricature, lampooning or parody may be expressed in a variety of ways, i.e. cartoons in newspapers, mime, theatre, even films, songs, etc. Such forms of expression in the Court’s view, cannot be held to amount to commercial exploitation, per se; if the individual is of the view that the form of expression defames or disparages him, the remedy of damages for libel, or slander, as the case may be, would then, be available to him.
With respect to false endorsement, the Court stated that an individual claiming false endorsement must prove that the use of the identity likely misled consumers into believing the concerned personality endorsed the product at issue. In the present case, the Court stated that the use of Mr. Mehndi’s persona for the purpose of capitalizing upon his name by using in conjunction with the commercial product was not proper or legitimate; it amounted to a clear dilution of uniqueness of such personality and gives rise to a false belief that, plaintiff had either licensed or the Defendants have some connection with them (i.e. the plaintiff or the artist), to use its exclusive right to market images of the artist. Therefore, the Court held the defendants liable for false endorsement.
Turning to the passing off claim, the Court observed that in a passing off action, one has to see as to whether the Defendant is selling goods/service so marked to be designed or calculated to lead purchasers to believe that they are plaintiff’s goods. The court stated that even if a person uses another’s well-known trademark or trademark similar thereto for goods or services that are not similar to those provided by such other person, although it does not cause confusion among consumers as to the source of goods or services, it may cause damage to the well-known trademark by reducing or diluting the trademark’s power to indicate the source. Further, it pointed out that where a person uses another person’s well-known trademark or trademark similar thereto for the purpose of diluting the trademark, such use does not cause confusion among consumers but takes advantage of the goodwill of the well-known trademark, it constitutes an act of unfair competition. As the plaintiff, suffered loss of business, goodwill, and reputation due to the sale of the dolls, the court held the defendants liable for passing off as well.