The Right of Publicity and Use of Player Attributes
By Roshan Gopalakrishna
The ‘right of publicity’ is a relatively nascent personal right in the Indian context. In brief, the right of publicity is the right of an individual to exercise control over the commercial use of the individual’s name, image, likeness or other distinctive features that relate to an individual such as voice, signature, nickname, sobriquet, etc. The right of publicity also gives rise to ‘image rights’, which are an individual’s proprietary rights in and to the individual’s personality, giving each individual the right to prevent unauthorised use of personal attributes such as physical or stylistic characteristics, photographs and other personal representations.
Evolution of the Right of Publicity
The right of publicity evolved as a legal concept in the U.S.A person’s name and likeness were both held to be his/her property and commercial misappropriation of a person’s name and likeness was held to infringe upon an economic interest, with its financial value belonging to the person whose name and likeness are used rather than the person seeking to make use of them. This principle was crystallised in Haelan Laboratories, Inc. v. Topps Chewing Gum, Inc..In Zacchini v. Scripps-Howard Broadcasting Co., the Supreme Court of the United States distinguished the right of privacy from the right of publicity by holding that the right of privacy was a personal right as opposed to the right of publicity, which was a commercial right covering a wider aspect of the performers’ rights.
Until recently, English law did not explicitly recognise the right of publicity. Irvine v Talksport  seemed to turn this position under English law on its head after Formula 1 driver Eddie Irvine objected to the unauthorised and unlicensed use of his image in an advertisement by and for a radio station. His property right in the goodwill attached to his image was recognised and he was held entitled to compensation through an endorsement fee. The concept that celebrities should be afforded protection such that others ought not to profit from their intellectual property has been accepted in UK courts. In the UK Court of Appeal such a right was referred to as “[an] exclusive right of a celebrity to the profits to be made through the exploitation of his fame and popularity for commercial purpose” in Douglas and Zeta Jones v. Hello Ltd .
Attempts have been made to raise the issue of the right of publicity in Indian courts, which have in the past interpreted the right to life and liberty in Constitution of India to include a right to privacy. The Supreme Court has held that the right to privacy is implicit in the fundamental right to life. As regards the right of publicity of individuals, in Sourav Ganguly v. Tata Tea Ltd the Calcutta High Court granted Sourav Ganguly relief while accepting that his fame and popularity are his intellectual property. While the availability of such rights to individuals has not been conclusively determined by the courts, they have unambiguously stated that non-living entities are not entitled to the protection of publicity rights in an event. This has been justified in ICC Development (International) Ltd. V. Arvee Enterprises and Anr on a variety of grounds, the most important being that 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. While an individual may acquire the right of publicity by association with, an event, sport or film, the right of publicity could vest only in a living person and not in a non-living entity.
How Should the Right of Publicity be addressed in an Agreement?
The right of publicity and image rights are generally acknowledged as property rights rather than personal rights. Such rights would prevent any third party from exploiting an individual’s attributes without their prior permission or without obtaining a license. They are therefore alienable and can be assigned. The assignment of the rights can be limited to specific components of the right and for specific territories. For example, a prominent athlete could assign the right of publicity in the athlete’s name and images to a manufacturer of fast moving consumer goods for marketing their products in India, while at the same time assigning the right to use the athlete’s signature to a manufacturer of sports goods in Australia for the creation of a ‘signature’ line of products.
Furthermore, it is also possible to license the ownership of the right on either an exclusive or non-exclusive basis. A non-exclusive license operates as limited right and permission to use the individual’s name and/or attributes in a manner specified by the license, but at the same time also allows the individual to permit other third parties to commercially use the very same right. On the other hand, an exclusive license excludes all third parties as well as the individual granting the right, from commercialising the licensed right. In addition, unless the agreement is to the contrary, an exclusive license often implicitly authorises the licensee to independently pursue legal action against infringers.
In any assignment or license agreement relating to the right to publicity or image rights, it is imperative to obtain adequate consent and permission from the individual to use that individual’s likeness in a promotional or commercial capacity. A provision for consent could be part of a larger agreement, such as an agreement between an IPL franchise and its players, or the consent could be sought and obtained through a stand-alone agreement. In the context of professional sport, consent is often implied as part of the larger employment contract. Image rights read into player contracts are often at the centre of many disputes between footballers and their clubs in Europe.
A related provision in a licensing agreement is the scope of use. In the event that the individual only wants to license use of images for certain purposes, the parties should be certain to adequately describe the scope of the use that is permitted under the license. The use of concise and clear legal language is of prime importance to avoid instances of violation of the license agreement, especially in situations where the individual intends to exploit other components of the individual’s attributes through personal use or through the grant of another license. However, it is also important to ensure that the license granted is sufficiently broad enough so as to enable the licensee to use the attributes for the intended business purpose.
In addition to standard provisions that are included in licensing agreements, a license for the use of the likeness of a celebrity should ideally contain a morals clause that allows the licensee to terminate the license if the celebrity fails to maintain a certain standard of behaviour and bring himself into public ridicule, scandal or disrepute. Prime illustrations include decisions by beverage manufacturers to terminate and discontinue their association with a prominent American golfer and a star English footballer over the past year. A morals clause would go a long way in protecting the value of the license by ensuring that the celebrity’s image remains favourable and the goodwill generated would also reflect well on the brands and products associated with the celebrity.
While the right of publicity is slowly finding recognition under Indian law, the remedies for infringement are limited. An action for “passing off” would be available against any third party that causes injury to the business, goodwill or reputation of an individual by trying to pass off its goods or business as those of the individual. However, for such action to be successful three elements would need to be established, damage to reputation, misrepresentation and that these have caused irreparable damage. Limited protection is also afforded under trademark laws with Indian courts have recognised the name of a celebrity as having trademark significance, and consequently restraining third parties from misappropriating such names for use as domain names. Copyright law allows for protection of a specific image transferred onto a medium. However, protection under intellectual property rights laws would not extend to the likeness of the celebrity’s name or image. While the Indian legal framework surrounding publicity and image rights lacks some level of certainty at present, it is an area in which new developments are inevitable given the growth of professional sports and sports leagues in the country.
© The Sports Law & Policy Centre