CELEBRITIES
Trademark use in Europe: revisiting Arsenal in the light of Opel and Picasso
Two relatively new European Court of Justice cases may help clarify the issue. In OPEL, the ECJ suggested that infringing use of a trademark must be use that is seen by the relevant public as a designation of origin. T e Picasso decision limits the eff ect of the Arsenal decision on the relevance of confusion in non-sale situations to the facts of that specifi c case. In particular, it stresses the point that when assessing the likelihood of confusion in the context of an opposition to an application for registration, the court should focus on the perception of the relevant public at the point of sale.
The US situation
In the US, the law dealing with celebrities’ trademark protection and First Amendment defences is splintered within and among the federal circuits. When a celebrity takes issue with the use of their name or image in artistic works used in commerce, such as popular music or fi lm, First Amendment concerns arise. Creation of a message, by its nature, confl icts with attempts to control that message. Creative works, or their titles (when they include a celebrity’s name), could imply endorsement or involvement. T ree tests—likelihood of confusion, alternative avenues and the Rodgers balancing test—are used to determine whether this type of use is permitted under the false endorsement section of the Lanham Act, Section 43 (a), in light of First Amendment freedom of speech.
A plaintiff claiming to be a celebrity for the purpose of trademark infringement must have been a celebrity at the time of infringement in order to have standing. T e Lanham Act protects against economic injury, so plaintiff s must have an economic interest in their names at the time of infringement for it to be actionable. T e potential for commercial interest at a later time is insuffi cient.
Misappropriation of personality
Courts have defi ned ‘personality’ to include a person’s image, name, voice and any other elements that might uniquely identify a celebrity. In order for a celebrity to plead misappropriation of personality, they must show that the advertiser has used their personality for commercial gain. Although it does not matter whether the celebrity is living or dead, misappropriation of personality does not apply to fi ctional characters.
The Indian situation
Section 2 (1) (zb) of the Trade Marks Act, 1999, defi nes a trademark as follows:
“[A] mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours.”
Emerging paradigm of celebrity marks
When compared to the global regime, India has been lagging behind in regard to publicity rights, without a body of case law, nor any comprehensive statute governing image or publicity rights. T e legal system in India is quite inadequate to deal with the modern trend of endorsement advertising. However, the law has started to evolve in recent years and the High Court of Delhi has ruled on the matter. Image rights in India as conceived by the Delhi High Court arise from the right of privacy, which has emerged through a case-by-case development in India and fl ows from human dignity as enshrined in Articles 19 and 21 of the Constitution. When publicity rights are treated as commercial property, they get a limited amount of protection under the following intellectual property laws.
Section 14 of the Trade Marks Act, 1999, provides that where an application is made for the registration of a trademark that falsely suggests a connection with any living person, or a person whose death took place within 20 years prior to the date of application, the Registrar may require the applicant to furnish him with written consent from the living person or, as the case may be, the legal representative of the deceased person. So no unauthorised use is possible.
Section 38 of the Copyright Act, 1957 recognises performers’ rights. Section 57, which recognises the moral right of the author, can also be used to protect the reputation of the author. In Amar Nath Sehgal v Union of India, the Delhi High Court observed that many rights fl ow from a creation, including paternity rights in the work.
In India, an action for protection of image rights/ personality rights can also take the following forms:
1. An action for violation of the tort of privacy with requests for an injunction and damages
2. An action for passing-off and infringement
3. An action for breach of confi dence with requests for an injunction and damages
4. An action for defamation, civil or criminal. A civil suit may seek an injunction and damages
36 World Intellectual Property Review March/April 2011
www.worldipreview.com
5. An action for the economic tort of unlawful interference with business or the procurement of breach of contract where the plaintiff celebrity has a subsisting contract with a third party to commercially exploit his images/ likeness in any manner.
In India, competition in the market is becoming fi ercer by the day. T e advertising industry is one of the major service sectors. Indian celebrities are also growing in stature. Celebrities such as Amitabh Bachan, Sachin Tendulkar and many more have acquired brand status, which has every possibility of being misused.
Conclusion
A publicity right is a distinct right, which requires special attention due to its unique nature. T us, it rests with the legislature to recognise the commercial and property rights aspects of publicity rights to fi ll up the lacunae in law and keep up with the rapid commercialisation of personality and the development of the Internet. While doing so, the legislature should also adequately balance the public interest and the individual interest of the celebrity. T e statute should also refl ect the need for preserving human dignity and the need for effi cient commercial use of property beyond a person’s lifetime.
Amit Mahajan is a senior associate at Lall Lahiri & Salhotra. He can be contacted at:
gpo@lls.in
Amit Mahajan has been handling all aspects of trademark opposition and prosecution over the years. He has also been involved in fi ling rectifi cation/cancellation actions, fi ling appeals and miscellaneous petitions at the IPAB, attending hearings and arguing matters at the Trade Marks Registry and the IPAB, and rendering legal advice and opinion to clients. Mahajan has also represented the fi rm at various conferences, including the INTA Annual Conference 2009 and the BRIC IP Forum.
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