Introduction:
In the matter of Jaikishan Kakubhai Saraf alias Jackie Shroff. v. The Peppy Store & Ors., a single-judge bench comprising of Justice Sanjeev Narula of the Delhi High Court, restrained several defendants from making unauthorised use of the actor’s name, voice, images, and the signature phrase ‘Bhidu’ for any commercial purposes without his explicit consent thereby safeguarding the personality and publicity rights of the veteran actor.
Before we delve into the facts of the case, let us understand what is personality rights and its evolution in India.
Personality rights is the rights of individuals to control the commercial use of their identity, including their name, image, likeness and other identifying aspects of their personality. In India, the evolution of personality rights has been relatively recent development shaped significantly by judicial interpretations and a growing Personality rights is the rights of individuals to control the commercial use of their identity, including their name, image, likeness and other identifying aspects of their personality. In India, the evolution of personality rights has been relatively recent development shaped significantly by judicial interpretations and a growing awareness of individual rights in the digital age. Here’s an overview of how personality rights have evolved in India:
In India with the rise of the entertainment industry, the concept of personality rights has gained prominence along with the right to privacy.
The concept of personality rights was first recognised in the year 1995 in the case of R. Rajagopal v. State of Tamil Nadu, wherein right to privacy was recognised as a fundamental right under Article 21 of the Indian Constitution. Although primarily about privacy, the judgment laid the groundwork for personality rights by acknowledging individuals’ control over their personal information.
As the concept developed further, the Delhi High Court in ICC Development (International) Ltd. v. Arvee Enterprises (2003), recognised the commercial value of a personality in this case. The Court ruled that famous personalities have a right to protect their personality from unauthorized commercial exploitation. This decision was a significant step towards explicitly recognizing personality rights.
In the year 2010, the Delhi High Court in the case of DM Entertainment v. Baby Gift House, reaffirmed the importance of personality rights involving the unauthorized use of the name and image of Daler Mehndi, a famous singer. The Court emphasized the need to protect the commercial interests of individuals associated with their identity.
In 2015, the Madras High Court in the case of Mr. Rajinikanth v. Varsha Productions, while relying on the above two judgements opined that the personality right vests on those persons, who have attained the status of celebrity.
In the year 2022, the Delhi High Court in the case of Amitabh Bachchan v. Rajat Nagi & Ors., granted an ad interim in rem injunction against the unauthorised use of Amitabh Bachchan’s personality features such as his voice and images for commercial use. Passing an order against the named and unnamed defendants, this is the first time in India that a blanket John Doe order was granted for the protection of personality rights.
Recently in the order passed in the case of Anil Kapoor v Simply Life India & Ors., the Delhi High Court held that the right of publicity protects individuals against the unauthorized use of their personality, which includes their name, image, voice, and other distinctive attributes. It was also held that such unauthorized use can lead to unearned commercial gain for another party, thereby infringing on the individual’s personality rights.
The evolution of personality rights in India reflects a dynamic interplay between judicial interpretations, statutory provisions, and societal changes. While significant strides have been made, the legal landscape continues to evolve, particularly as new challenges arise in the digital age.
We shall now discuss order of Justice Sanjeev Narula passed in the present case in detail.
Factual Background:
The Plaintiff, Jackie Shroff is one of the most celebrated, acclaimed and successful actors in the Indian film industry having an extensive appearance in over 220 films, multiple television shows and web series. Some of the Plaintiff’s well known films include ‘Ram Lakhan’, ‘Tridev’, ‘Devdas’ and ‘Parinda’. The Plaintiff’s contribution to cinema has been recognized and honoured with several noteworthy awards for his outstanding contribution to Indian Cinema. He has also endorsed a large variety of products and services and has appeared in several advertisements as well.
Apart from his film career, the Plaintiff has invested considerable time, effort, labour and skill to cultivate the goodwill and reputation associated with his name, “JACKIE SHROFF”. within the entertainment industry. The Plaintiff is also the registered proprietor of the mark ‘BHIDU’ in Class 25 and Class 41 and of the trademark ‘Bhidu ka khopcha’ in Class 41. Apart from it, ‘JACKIE SHROFF’ being the personal name of the Plaintiff is immediately and uniquely associated with him and no one else. The Plaintiff’s commercial endorsements leverage his personality, name, voice, image, likeness, mannerisms, gestures, and other uniquely identifiable characteristics associated with him. The Plaintiff, being a person of celebrity status, possesses ‘Personality/Publicity Rights’ over all facets of his persona. The unauthorized use of these characteristics for commercial purposes not only infringes upon these rights but also dilutes the brand equity painstakingly built by the Plaintiff over the years.
The Plaintiff’s registered trademarks and name ‘JACKIE SHROFF’ was infringed by various Defendants through selling of printed merchandise on e-store, creation of derogatory YouTube videos, opening of restaurant named ‘Bhidu Shawarma & Restaurant’, and posting links which are selling merchandise and certain pornographic content using the name “JACKIE SHROFF” without prior consent. In this suit, the Plaintiff seeks protection of (a) his personality rights, publicity rights, and various elements associated with his identity, (b) copyright in photographs, literary, musical, artistic, dramatic works, sound recordings, cinematographic films etc in other associated works, (c) common law rights including the right to be protected against passing off, misappropriation and unfair competition and (d) trademark infringement of its registered marks “BHIDU” in classes 25 & 41 respectively and of the mark “Bhidu Ka Khopcha” in class 41.
Rival Contentions:
The Plaintiff’s Counsel had confined his relief for an ex-parte ad-interim injunction to specific Defendants which included Defendant Nos. 1-4, who are allegedly selling infringing merchandise; Defendant Nos. 5-7, who are allegedly involved in creating and publishing certain infringing videos; Defendant No. 13, who has allegedly created an unlicensed AI chatbot; Defendant No. 14, who is allegedly selling infringing wallpapers; and John Does (unidentified persons/entities) through whom the Plaintiff seeks to take down links selling merchandise and certain pornographic content using the name “Jackie Shroff.” It was also clarified that the that although Defendants Nos. 1, 2, 4, 7, and 14 have already removed the infringing listings, their activities warrant an injunction to prevent any future infringement of the Plaintiff’s rights. The Plaintiff’s Counsel had also relied upon several decisions from both foreign and Indian courts to support his argument that elements of a celebrity’s personality, such as name, image, likeness, voice, and other attributes, are protectable elements, consistently recognized by our judicial system. The Plaintiff’s Counsel had also raised objections against a video produced by Defendant No.5 thereby arguing that the said video has been edited in a manner to portray the Plaintiff in a derogatory manner.
The Counsel appearing for the Defendant No.1 conveyed her intention to contest the proceedings and to file a reply. It was further argued that the artwork was created by the artist with significant time and effort and it fell under the doctrine of fair use. It was also emphasized that granting the Plaintiff’s prayer for an injunction would stifle artistic creativity and expression. The Counsel appearing for Defendant No.2 stated that they had taken down the infringing listings and do not intend to use the Plaintiff’s name or photographs or other attributes of his personality rights and shall file an undertaking to this effect.
Court’s Observation/Judgement:
The Court after considering the submissions advanced by the Plaintiff’s Counsel as well as arguments presented by the Counsels for the Defendants was of the view that the elaborate facts narrated in the plaint undoubtedly established the Plaintiff’s status as a celebrity. The Court relied on the case of D.M. Entertainment Pvt. Ltd. v. Baby Gift House wherein it was held that the right of publicity protects individuals against the unauthorized use of their personality, which includes their name, image, voice, and other distinctive attributes. The Court recognized that such unauthorized use can lead to unearned commercial gain for another party, thereby infringing on the individual’s personality rights. Applying the said principle on matter at hand, the Court said that the alleged activities of the Defendants on a prima facie basis, resulted in commercial benefits through the unauthorized exploitation of the Plaintiff’s personality and they had utilized the plaintiff’s name, image, voice, and other unique characteristics without permission, thereby infringing on his personality and publicity rights. Therefore, the Plaintiff is entitled to an ad-interim injunction restraining said Defendants from sale of such merchandise infringing the Plaintiff’s personality rights.
With respect to the YouTube video produced by Defendant No.5, the Court through a contextual analysis held that ‘Thug Life’ is often used in a humorous, positive context in meme culture, celebrating assertive and bold personalities. The additions made by the creator, such as the ‘Thug Life’ caption, aimed to highlight Mr Shroff’s charismatic persona. Therefore, the video could be seen as a tribute rather than a derogatory portrayal, aligning with contemporary usage of the term in popular culture. The Court also highlighted that the video’s popularity and creative inputs act as a source of livelihood for content creators. The Court held that restricting such content could have far-reaching consequences for artistic expression and the YouTuber community. It could also set a precedent that stifles freedom of expression, deterring public speech due to fear of legal repercussions. In balancing Defendant No. 5’s right to artistic and economic expression against Mr Shroff’s right to personality and moral integrity, the Court found it necessary to hear Defendant No. 5’s response and hence did not pass an ex-parte ad-interim injunction in favour of Mr Shroff against Defendant No. 5.
The Court was of the view that balance of convenience lied in favour of the Plaintiff and had established a prima facie case for grant of an ex-parte injunction against Defendant Nos. 3-4, 6-7, 13 and 14. The Court added that if an injunction is not granted in the present case, it will lead to irreparable loss/harm to the plaintiff, not only financially but also with his right to live with dignity. The Court further restrained the above-mentioned Defendants from infringing the Plaintiff’s personality/publicity rights by utilizing/exploiting/misappropriating the Plaintiff’s name ‘JACKIE SHROFF” and other variants including “JACKIE”, “JAGGU DADA” , his voice and image for making downloadable wallpaper, creating distorting videos of the plaintiff which tarnishes the reputation of the Plaintiff and violates his moral rights for any commercial purpose, by commercially using an unlicensed Al chatbot that uses attributes of the plaintiff’s persona, in any manner without his consent and/or authorization.
The Court also directed the Department of Telecommunications (DoT) and the Ministry of Electronics and Information Technology (MeitY) to issue necessary directions to the telecom service providers and internet service providers to block the infringing URLs/ links.
Conclusion:
The Delhi High Court’s decision in favour of Jackie Shroff fortifies the legal framework surrounding personality rights in India. It emphasizes the need for consent in using a person’s identity for commercial purposes, thus safeguarding the personal and commercial interests of individuals, particularly public figures. This judgement also addresses the balance between freedom of speech and protecting celebrities from unauthorized use of their personality rights, thereby encouraging parody, satire, and other forms of creative expression and serves as a significant reference point for future disputes involving the misuse of personal attributes.
– Anushree Rauta, Equity Partner
Radhika Mehta, Associate
