The happiness of fans of English football club ,Manchester United knew no bounds when Jose Mourinho, the famous Portuguese football coach was selected as their manager for the next three seasons. However the official announcement regarding the same took some time . The reason for such delay is quite interesting. The trademark of JOSE MOURINHO in around seven categories (as per NICE classification) was held by Chelsea Football Club. Mourinho was the manager of Chelsea in two brief stints i.e from 2004 to 2007 and 2013 to 2015. In the first stint, his rise in the popularity graph was steep and Chelsea applied for trademark and registered the name successfully. Subsequently they filed for few other trademarks including mark rights on his signature and image. In this article an attempt has been made to look at the issue of protecting a celebrity’s trademark, image rights, domain name rights and copyright from the point of view of existing laws in USA, Europe and India.
Now one may be curious to know what exactly is a celebrity trademark right . However, there is no legislation which deals with the meaning of a celebrity. Fortunately , a few courts have looked into the matter and have defined the term celebrity .The word celebrity has been derived from a Latin word celeber or celebritas which means frequented or honored i.e. someone who is rewarded or given respect in the society . In the famous case of Martin Luther King Jr. Center for Social Change v American Heritage Products Inc[1], the word celebrity was defined from the legal point of view and right was extended to public figures like Martin Luther King Jr. too which was earlier extended only to professional athletes, comedians, actors and actresses, and other entertainers. Today, anyone who has reached a state of prominence or is yet to reach prominence in the society and seeks to gain public attention by their acts can be called as a celebrity. The Indian trademark law (The Trademarks Act, 1999) does not have any mention of the definition of celebrity. However, Section 2(qq) of Indian Copyright Act, 1957 though not defining directly the term celebrity , does define a performer as someone including “an actor, singer, musician, dancer, acrobat, juggler, conjurer, snake charmer, a person delivering a lecture or any other person who makes a performance”. The copyright act also provides performer’s right and remedy in case of infringement of the right by an unauthorized person. The status of being a celebrity is more of an honor bestowed on someone and it also includes a person who has become a celebrity involuntarily by being related to someone who is famous and a celebrity, for example, as prince and princesses.
The celebrity rights can be broadly divided into personality rights, privacy rights and publicity rights. Now let’s have a look at what these rights are all about. Personality right is more about distinguishing one person from another. Thus, every celebrity has the right to reap benefit from the performance he does and popularizes and no other person has the right to reap benefit from it.
The personality right has largely been replaced to a large extent by Right to Privacy and Publicity Right. The Right to Privacy stemmed up in the late nineteenth century as a right to be let alone as a result of a doctrine put forward by Samuel D. Warren and Louis D. Brandeis in their work ‘Right to Privacy’[5]. The right to privacy was upheld in several cases such as Barber v Times Inc[6] and Cohen v Herbal Concepts Inc[7]. In the case of Barber v Times, a photographer took pictures of delivery of child of Ms. Barber despite her protest and when a suit was filed the court awarded compensation to her. The court again supported the right to privacy in Cohen when the plaintiff and her daughter’s picture were put into an advertisement without their permission.
Publicity right can be defined as an individual’s right to control the commercial use of his or her identity[8]. The publicity right can be of different types, the most powerful being the merchandising through which publicity reaches to every corner pf the society while ensuring certain economic benefit too. However it is often found that people tend to exploit the merchandising rights of a celebrity or a popular person without any authorization which causes loss to the celebrity while some people gets benefited wrongfully. Thus it is of utmost necessity to regulate the publicity right of an individual so that a celebrity does not feel deprived of his or her right on its creation. In the case of Midler v Ford Company & Ors[9]., the United States Court of Appeal held that the celebrity has exclusive right over his publicity and if someone does an imitating act without the creator’s permission the same will be considered as an illegal act with an intention to reap benefit from the original creator by willfully bypassing him or her.
Position in USA
When it comes to the protection of celebrity trademark and copyright protection in USA,it can be considered to be one of the most advanced countries. If a name, mark, voice, noticeable slogans or image is used by any third person and is found close to or having a certain affinity to a celebrity, the same is sufficient for the celebrity to get damages and compensation for unauthorized use. The case of Martin Luther King Jr Centre for Social Change and Bette Midler’s case bears testimony to this fact. The US Copyright Act does not provide any provision for the registration of a celebrity name, but in case of rights over images of celebrities it provides certain protection to the celebrities. A photographer has the primary right over a photo but as soon as the image is being transferred to a different person in lieu of economic benefit, the celebrity has a right over the same image and thus it cannot be used without the celebrity’s right. Apart from this, a celebrity can claim protection under Lanham Act (trademark law), AnticyberSquatting Protection Act and the Federal Trademark Dilution Act.
Position in Europe and UK
The position of UK has become a very peculiar one currently. Previously, when it was a part of European Union (EU), a trademark could have been registered through it’s country office or through European Union. Once registered under the European Union Intellectual Property Office (EUIPO). A product or brand used to get protection in all 28 states of European Union. But now since United Kingdom is leaving EU it is upto the negotiation between EU and United Kingdom about what to do with the marks registered under EUIPO. If EUIPO refuses to continue the registration of the brands or products of UK based companies then in that case, those commodities have to be re-registered with UK’s Intellectual Property Office and the problem involving Jose Mourinho’s mark will be solved without any trouble! But if the marks are transferred to UK by EU, then in that case either Jose Mourinho has to buy the rights from Chelsea, or his club Manchester United has to pay royalty to Chelsea for using his name and signature for merchandising. There is another way out – Manchester United can make merchandises under those NICE classes which has not been registered by Chelsea, i.e. Any class other than 3, 9, 14, 18, 21, 25 and 28. Again if Chelsea does not use the registered trademarks then also the registered marks can be taken away from the registry and be used by Manchester as per it’s choice. In United Kingdom, the celebrities can get protection of their rights under The Copyright, Designs and Patents Act of 1988 and the Trademarks Act of 1994. Apart from that a celebrity can claim protection under Common Law Malicious Falsehoods as laid down in Tolley’s case. However the UK does not have any law or provision in law on image rights of celebrities[10].
Position in India
India does not have specific law for the protection of celebrity rights in India. Right to privacy has been inferred in several cases from Article 19 and 21 of Indian Constitution and is basically in a very nascent stage. A precedent can be said to have been set in the case of ICC International (Development) Ltd v Arvee Enterprises & Anr[11] where the right to publicity and celebrity rights in India were highlighted. Post that we don’t have any specific legislation, but already mentioned Section 38 and 39 of the Copyright Act given certain protection. The trademark act also provides opportunity to celebrity to register their name into several classes, an opportunity recently used by famous actor Shahrukh Khan in registering his mark SRK which has been registered in all twenty seven classes under Trademark Act[12]. Celebrity rights protection in India therefore does not have much legal protection and will certainly go along way before we get some act protecting celebrity rights. However in few domain name cases like Arun Jaitley v Network Solutions Private Limited[13], the court held that Arun Jaitley being a celebrity by his own right can protect his name from being used by any other person and therefore the defendants were wrong using his name in making website in his name.
Few Instances of Celebrity Trademark Registration
Recently many celebrities across the world have started registering their names or their children’s name and trademarks associated with them and this issue is gaining grounds among popularity. Shahrukh Khan’s registration of SRK mark or Tim Tebow trademarking his style as Tebowing[14][15] shows that even celebrities are getting aware of their own rights and are attempting to prevent misuse of their name by enforcing the laws available to them
Conclusion
Celebrity like all other people has right to privacy and their right to publicity should be allowed else they might feel deprived of their own creations and that will not be a good poster for the celebrities or for the law of the land. USA’s law is certainly the most powerful among the lot whereas UK’s law for protection of celebrity’s right is up-to-the mark, India needs to cover a long distance before it can boast of its legal protection for the celebrities. Thus it is the need of the hour for the Government to materialize and implement a law that will provide strong cover for the celebrities in India much in the line of US laws.
[1] No. 38748 Supreme Court of Georgia 250 Ga. 135; 296 S.E.2d 697 October 28, 1982, the case can be accessed at: http://rightofpublicity.com/pdf/cases/mlkcenter.pdf
[2] http://www.legalserviceindia.com/article/l139-Celebrity-Rights.html
[3] http://plato.stanford.edu/entries/hegel/
[4] (1931) 1 All ER Rep 131
[5] http://faculty.uml.edu/sgallagher/Brandeisprivacy.htm
[6] 348 Mo. 1199 (Mo. 1942)
[7] 100 A.D.2d 175 (1984)
[8] http://jolt.law.harvard.edu/articles/pdf/v11/11HarvJLTech401.pdf
[9] 849 F.2d 460; 1988 U.S. App. LEXIS 8424
[10] Halliwell v Panini
[11] (2003) 26 PTC 245 (Del)
[12] http://www.deccanchronicle.com/141026/entertainment-bollywood/article/brand-srk-now-trade-mark
[13] (2011) 181 DLT 716
[14] http://www.usatoday.com/story/sports/nfl/2012/10/19/tim-tebow-trademarks-tebowing/1645333/
[15]http://www.livemint.com/Consumer/Dss3fISYwLqa0bQr53dhfL/Celebrities-using-trademark-route-to-check-name-misuse.html
