PRESENTATION ON CELEBRITY RIGHTS MANAGEMENT BY ANUSHREE RAUTA

PRESENTATION ON CELEBRITY RIGHTS MANAGEMENT BY ANUSHREE RAUTA

CELEBRITY: “A celebrity can be defined as a person, who has a prominent profile and commands a great degree of public fascination and influence in day-to-day media. ” CELEBRITY RIGHTS MANAGEMENT COPYRIGHT ACT q ARTIST AGREEMENTS q BRAND ENDORSEMENTS q DIGITAL RIGHTS MANAGEMENT PERSONALITY RIGHTS q q RIGHT TO PRIVACY PUBLICITY RIGHTS COPYRIGHT ACT TRADEMARK ACT CONTRACTS OF PERSONAL SERVICE

COPYRIGHT ACT q Section 2 (qq) of the Copyright Act defines performer as 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 Amendment Act, 2012, adds a proviso to the definition of performer to exclude the so called ‘extras’ from the definition. The proviso reads as: “Provided that in a cinematograph film a person whose performance is casual or incidental in nature and, in the normal course of the practice of the industry, is not acknowledged anywhere including in the credits of the film shall not be treated as a performer except for the purpose of clause (b) of S. 38 B” q Performer’s rights: comprises of all rights which may accrue to a performer by virtue of his performance. Performer’s rights are therefore of three distinct types: v Economic rights which include rights of reproduction, adaptation, distribution, rental, lending, remuneration and communication. v Moral rights which are rights of attribution and integrity over the work performed. v Intangible rights which include right over the persona of a performer, the right against use of likeness or name of the performer and other personality rights. q. Neighboring Rights: Related rights/ Neighboring Rights is a term in copyright law, which is independent of any author’s rights. The rights of performers and broadcasting organisations are covered under neighboring rights.

COPYRIGHT AMENDMENT ACT, 2012 PERFORMER’S RIGHT: Section 38 A has been introduced to provide certain exclusive rights to performers which include his right to make sound recording/ visual recording of the performance, reproduction, issuance of copies not already in circulation, communication to the public, selling/ giving on commercial rental, broadcast the performance…. Royalty rights: Section 38 (A) (2) provides: Once a performer has, by written agreement, consented to the incorporation of his performance in a cinematograph film he shall not, in the absence of any contract to the contrary, object to the enjoyment by the producer of the film of the performer’s right in the same film: Provided that, notwithstanding anything contained in this sub-section, the performer shall be entitled for royalties in case of making of the performances for commercial use. Interpretations revolving around amendments to performers rights: v Whether performance under the Copyright Act is intended to be restricted only to live performance or to include all performances whether live or recorded in a studio? v Whether royalty rights of performers can be assigned/ waived? v Whether royalties to performers is payable for commercial use of cinematograph film only or for cinematograph films + sound recordings?

Whether performance under the Copyright Act is intended to be restricted only to live performance or to include all performances whether live or recorded in a studio? Live performance: q Section 2 (q) of the Copyright Act defines “performance” in relation to performer’s right to mean any visual or acoustic presentation made live by one or more performers; q However Rule 68 (3) of Copyright Rule, 2013 provides: “Performance includes recording of visual or acoustic presentation of a performer in the sound and visual records in the studio or otherwise. ” q In Neha Bhasin vs Anand Raj Anand [2006 (32) PTC 779 Del] wherein the Delhi High Court observed that “Every performance has to be live in the first instance whether it is before an audience or in a studio. If this performance is recorded and thereafter exploited without the permission of the performer then the performer’s right is infringed. ” q While the Act does not define “commercial use” as referred under Section 38 (A) (2), Rule 68 (2) of the Copyright Rules, 2013 provides “Commercial use as mentioned in proviso to sub-section (2) of Section 38 A, means the exploitation of the performers right by way of reproduction , issue of copies or distribution, communication to public including broadcasting and commercial rental of the cinematograph film. ”

Interpretation 1: The right to receive royalties granted to the performers under Section 38 (A) (2) would be only limited to the live audio-visual performances given by the performers. Interpretation 2: On a harmonious reading of Section 38 A (2) and Explanation 2 and 3 to Rule 68, another possible interpretation could be that royalties are payable to performers for all performances (whether or not such performance is made in the presence of audience and whether or not such performance is made in a studio or otherwise), each time the performance is reproduced, distributed, communicated to the public including broadcasting and commercial rental of the cinematograph film.

Whether royalty rights of performers can be assigned/ waived? Interpretation 1: Assignable q Non-Assignability of royalty rights a limited privilege granted only to authors of literary and musical works and does not extend to all works under the Copyright Act including dramatic and artistic works which are essential to films. q Had the intention of the Legislature been to provide non assignable royalty rights to performers, Section 38 A (2) would have specifically provided the same the way it has been mentioned in the third and fourth provisos to Sec 18. q The royalty right of performer is not available to a performer whose performance in a film is causal or incidental in nature and is not acknowledged including in credits of the film while royalty rights of authors are available to all authors. q The Act does not prescribe the quantum of royalty right of performer while the royalty rights of authors of literary and musical works is prescribed to be shared on an equal basis with the assignee of copyright. q Had the third and fourth provisos to Section 18 applied to all copyrighted works (instead of only literary and musical works) and Section 38 (A) (2) referred to a share of royalty on equal basis, then it might have been arguable that Section 39 A made third and fourth provisos to Section 18 applicable to performers of cinematograph films, but such is not the case.

Interpretation 2: Non-Assignable: q Strict interpretation of Section 39 -A (which includes Section 18 in the list of sections which would apply mutadis mutandis with performer’s rights) would be that royalty rights of performers are non- assignable. q Had the intention been to allow assignment of royalty rights, the same would not have been granted in the first place.

Whether royalties to performers is payable for commercial use of cinematograph film only or for cinematograph films + sound recordings? Interpretation 1: q Section 38 A (2) provides that “Once a performer has, by written agreement, consented to the incorporation of his performance in a cinematograph film he shall not, in the absence of any contract to the contrary, object to the enjoyment by the producer of the film of the performer’s right in the same film: Provided that, notwithstanding anything contained in this sub-section, the performer shall be entitled for royalties in case of making of the performances for commercial use. ” q Explanation 2 to Rule 68 provides “Commercial use as mentioned in proviso to sub-section (2) of Section 38 A, means the exploitation of the performers right by way of reproduction , issue of copies or distribution, communication to public including broadcasting and commercial rental of the cinematograph film. q On perusal of Section 38 A (2) read with Exp 2 to Rule 68, it can be seen that the sub-section does not refer to sound recordings and is confined to "cinematograph film" only. q Therefore it could be interpreted that where only sound recording is played without the visual, royalty may not be payable to the performers. q This interpretation would result into radio broadcasters being exempted from royalty payments to performers.

Interpretation 2: Another way of looking at Explanation 2 to Rule 68 would be as follows: q Commercial use as mentioned in proviso to sub-section (2) of Section 38 A, means the exploitation of the performers right by way of : v reproduction (of performance), v issue of copies or distribution(of performance), v communication to public (of performance), including broadcasting and commercial rental of the cinematograph film. q In which case, performance in sound recordings would be included within the scope of commercial use and would attract royalties.

ARTIST AGREEMENT- WAIVER OF PERFORMER’S RIGHTS CLAUSE PRO-PRODUCER AGREEMENT PRO-ARTIST AGREEMENT The Artist irrevocably and unconditionally waives all The Artist shall be entitled to receive royalties in rights in respect of the said Film including the following accordance with Section 38 A (2) of the Copyright Act, rights or any other similar benefits to which Artist is 1957 and any amendment thereto. presently entitled to pursuant to any law in force or which may accrue to Artist under a similar doctrine, principle or law, to the extent permitted by such doctrine, principle or The Artist shall be entitled to moral rights granted to performers under 38 B of the Copyright Act, 1957 or any law: i) performer’s rights under Section 38, 38 (A) (1) of the amendment thereto. Copyright Act, 1957 and Rule 68 of the Copyright Rules, 2013 or any amendment thereto ii) exclusive rights granted to the performers including the right to receive royalties under Section 38 A (2) of the Copyright Act, 1957 or any amendment thereto and iii) Moral rights granted to the performers under 38 B of the Copyright Act, 1957 or any amendment thereto.

BRAND ENDORSEMENTS v Celebrity Endorsement Services vary from deal to deal and is subject matter of commercial understanding between the concerned brand, talent management agency and the celebrity. However, these services generally include the following: v Featuring the celebrity as a model in all materials that may be created by the concerned brand to promote sale of the endorsement product(s) including but not limited to print advertisements, television commercials, cinema commercials, merchandise, radio programmes/ commercials, point of purchase (POP) materials, hoardings, labeling, packaging, internet content, mobile content v Endorsement of products. v Use of the celebrity’s nickname, initials, autographs, voice, signature in relation to the endorsement products. v Featuring / acting / participation of the celebrity in commercials/ audio advertisements. v Modelling for photo shoots, stills, visuals, clippings, portraits, caricatures, silhouettes, etc. v Attending/participating in trade and consumer promotional campaigns of the brand, launch conferences, press meets, publicity activities, interviews, media interactions, store promotions, retailer/ trade and consumer meets, on ground events including in-store promotions. v To act as an ambassador of the brand in relation to the endorsement products.

Some essential points to protect the rights of a celebrity in brand endorsement agreements: q The agreement should clearly specify the products/ brand the celebrity is endorsing and the competing products as well which the celebrity is not entitled to endorse. Indirect endorsement of competing products in films/ participation in live events/ shows, etc sponsored by competitors/ use of competing products in day to day personal life should be excluded from the scope. q The exact duration of the number of hours in the days the celebrity would render his/ her services. q Approval process on all materials where the attributes of the celebrity would be used. q Cool off period is usually given to the brand to remove the materials from the market on expiry of the agreement q Provision for additional royalties where the materials are used beyond the scope of the agreement. q Also in artist agreements for films it is essential to record that the artist shall not be asked to endorse any products competing with the products which the artist is endorsing.

DIGITAL RIGHTS MANAGEMENT There are some talent management agencies which deal with only the digital rights of celebrities such as rights to use the name, likeness and other attributes of the celebrities by means of the Internet, telephone and all digital media (including, but not limited to, websites, mobile platforms, blogs, tweets, Facebook (or other social media) postings, social media accounts, Internet sites, webcasts, podcasts, Live Chat, SMS and any other digital media platform or device.

PERSONALITY RIGHTS Personality rights consist of two types of rights: q The right of publicity i. e. , to keep one's image and likeness from being commercially exploited without permission or contractual compensation, which is similar to the use of a trademark; and q. The right to privacy i. e. , the right to be left alone and not have one's personality represented publicly without permission. Right of Publicity q. 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. q. In common law jurisdictions, publicity rights fall into the realm of the tort of passing off. Scope in India: Image rights as a concept is still developing in India. The judiciary is yet to recognise the right of publicity and the right of image as distinct legal rights. Further, there is no statute governing image or publicity rights of individuals.

In ICC Development (International) Ltd. Vs. Arvee Enterprises [2003 (26) PTC 245 Del]. The Hon’ble Delhi court has observed as under: “The right of publicity has evolved from the right of privacy and can be inherent only in an individual or in any Indicia of an individual’s personality like his name, personality trait, signature, voice etc. An individual may acquire the right of publicity by virtue of his association with an event, sport, movie etc. However, that right is not inherent in the event in question, that made the individual famous, nor in the corporation that has brought about the organization of the event. Any effort to take away the right of publicity from the individuals, to the organizer/ non-human entity of the event would be violative of Articles 19 and 21 of the Constitution of India – No persona can be monopolised. The right of publicity vests in an individual and he alone is entitled to profit from it. For example, if any entity was to use Kapil Dev or Sachin Tendulkar’s name persona/ indicia in connection with the World Cup without their authorization, they would have a valid and enforceable cause of action. ”

PROTECTION UNDER TRADEMARK LAW Individuals may apply for the protection of their name, likeness and nicknames, among other things with the Indian Trademarks Registry in order to obtain statutory protection against its misuse. Certain celebrities like Shahrukh Khan, Kajol, Mallika Sherawat, AR Rehman, etc have obtained registration of their names in several classes with the Trademarks Registry. In the absence of statutory protection, an individual may also resort to an action for passing off in order to protect his/her publicity and image rights. However, an action for passing off requires proof of: q The reputation of the individual; q Some form of misrepresentation; and q Irreparable damage to the individual. In DM Entertainment Pvt Ltd vs Baby Gift House [CS(OS) 893 of 2002], the Defendant had a business of selling dolls bearing singer Daler Mehndi’s likeness and singing voice, and consequently cashed in on his popularity. Aggrieved by the Defendant’s unlawful acts, the Plaintiff filed for a permanent injunction restraining the Defendant from infringing the artiste’s right of publicity and the false endorsement leading to passing off. The use of Mehndi’s persona to capitalise on his name by using it in conjunction with a commercial product was not proper or legitimate; rather, it amounted to a clear dilution of the uniqueness of such personality and gave rise to the false belief either that the Plaintiff had granted license for such usage or that the Defendant was associated with Mehndi who allowed the Defendant to use his exclusive right to market images of the artiste. The court granted the Plaintiff a permanent injunction against the Defendant and also directed damages in favour of the Plaintiff.

PROTECTION UNDER COPYRIGHT LAW: Copyright law may protect a specific image in the form of a photograph, painting or other derivative works and the celebrity may sue for infringement in case of unauthorized usage of any such work depending upon the ownership of copyright in such work. In the case of Titan Industries Limited Vs. Ramkumar Jewellers [CS(OS) 2662 of 2011], the plaintiff had asked celebrity couple Amitabh Bachchan and Jaya Bachchan to endorse and advertise its range of diamond jewelry sold under the brand name Tanishq. The couple had assigned all the rights in their personality to the plaintiff to be used in advertisements in all media, including print and video. The plaintiff had invested huge sums of money in the promotional campaign. The defendant, a jeweler dealing in identical goods to those of the plaintiff, was found to have put up a hoarding identical to the plaintiff’s, including the same photograph of the celebrity couple displayed on the plaintiff’s hoarding. Since the defendant had neither sought permission from the couple to use their photograph, nor been authorized to do so by the plaintiff, the court held it liable not only for infringement of the plaintiff’s copyright in the advertisement, but also for misappropriation of the couple’s personality rights. The Delhi High court thereby granted an interim injunction in favour of the plaintiff while specifically recognising the couple’s rights in their personalities.

RIGHT TO PRIVACY This right flows from the ‘right to privacy’ enshrined under Article 21 of the Constitution of India. The right to privacy under Article 21 of the Constitution of India protects individuals against unlawful government invasion. This was illustrated in R. Rajagopal V/s. State of Tamil Nadu [AIR 1995 SC 264] in which restrictions on the usage of a person’s biography were envisaged. The right to privacy protects all individuals, whether Indian or foreign, against omissions and/or acts of the State. This right applies in case of invasion of the private sphere, rather than use of an individual’s likeness. A person whose privacy has been infringed by a private individual may seek compensation through a tort action, which may be coupled with an action for defamation, breach of confidence and/or misappropriation.

IMPORTANT CASE LAWS ON PERSONALITY RIGHTS q. In Sourav Ganguly Vs. Tata Tea Ltd. [Calcutta High Court C. S. No. 361 of 1997] , Sourav Ganguly had returned from an extremely successful tour of England found that Tata Tea Ltd. was promoting its tea packet by offering the consumers a chance to congratulate Sourav through a postcard which was inside each packet. The company intended to profit from his popularity and his latest success. Sourav could successfully challenge it in the Court before settling the dispute amicably. • In Sahara One Media and Entertainment & Ors vs Sampat Pal & Ors [Suit no. 372 of 2013], Plaintiff Sampat Pal had filed a suit for permanent injunction and damages at Delhi HC wherein she claimed that she is a social activist and runs an organization in the name and style of “Gulabi Gang”. The suit was filed to restrain Sahara One Media & Entertainment & Ors for releasing the film “Gulaab Gang” which she claimed was an adaption of her life story into a movie. She claimed that the portrayal of the characters in the film defamed her and degraded her along with the others members of the organization. She further alleged that the film defames her and portrays her work in bad light and in a horrific manner with swords and sickles. The Single bench of the Delhi High Court passed an order restraining the film’s release until the next date of hearing from broadcasting, distributing and promoting the film “Gulaab Gang” in its censored or uncensored prints. • Thereafter the Producers i. e. Sahara One Media & Entertainment & Ors appealed before the Division Bench of the Delhi High Court. The Division Bench of the Delhi High Court allowed the release of the film with a condition in the Disclaimer that Sahara Media and Entertainment can show the film by stating that he has nothing whatsoever to do with the life and works of Sampat Lal and her organization.

In Sonu Nigam vs Amrik Singh (alias Mika Singh [Suit no. 372 of 2013], the parties to the case were to appear at the Mirchi Awards 2013, and were shown through photographs on the official posters of the event, with their due consent. Mika Singh, in order to promote himself displayed hoardings and posters, which were different from official hoardings and posters of the event, carrying huge pictures of himself along with smaller pictures of the other artists, including Sonu Nigam, without their consent and permission. It was stated that the said hoardings and posters gave an unjustified and incorrect impression to the public about the prominence given to Mika Singh as compared to the other artists. The Bombay High Court restrained the defendant from displaying the pictures of the Plaintiff without his consent and ordered the defendant to pay Rs. 10 Lakhs as damages towards specified charities, as consented by the parties. In Shivaji Rao Gaikwad vs. Varsha Productions[Suit no. 372 of 2013] (Main Hoon Rajnikath ) superstar Rajnikanth filed a suit seeking injunction restraining the respondent from using the applicant’s name/caricature/ style of dialogue delivering etc. in its forthcoming film “Main Hoon Rajinikanth” in any manner whatsoever alleging infiltration of his personality rights by such unauthorized use. Rajnikanth also expressed distress that the film had scenes of immoral nature and the respondent was trying to cash in on his popularity. The court observed that it cannot be disputed that intellectual property right is a recognized valuable right under the modern laws being followed by all civilized countries. Copyright Act, Trade Marks Act, etc are properly safeguarding the rights, by way of relevant statutes. As per Article 21 of the Constitution, everyone is entitled, not only for his life and personal liberty from taking away the said rights, except by procedure established by law, but also guaranteed to lead a dignified life in the human society and hence, no one can cause damage to the fame or reputation of any person against law. From the available materials of the film, the Court held that the film’s title and caricature of Rajnikanth in the film would degrade his reputation. The Court was of the view that there was a prima facie case made out and the balance of convenience was also in favour of Rajnikanth. Accordingly, interim injunction was granted.

DISPUTES RELATING TO AGREEMENTS OF PERSONAL SERVICE Percept D'Mark (India) Pvt. Ltd vs Zaheer Khan & Anr [AIR 2006 SC 3426] Facts: Cricketer Zaheer Khan had signed a promotional agreement with Percept D’Mark India Pvt. Ltd. in the year 2000 for a term of 3 years subject to extension of the same by mutual consent. The agreement between Zaheer Khan and Percept D’Mark also envisaged a ROFR in favour of Percept for extension of term of the agreement. Zaheer Khan had turned down the renewal offer proposed by Percept on the ground that he was being approached by other agencies. Percept filed for an injunction restraining Zaheer Khan from entering into any third party contracts without offering the ROFR to Percept. The single judge of the high court had granted ad-interim relief and thereafter the Respondents preferred separate appeals against the ad-interim order whereby a divison bench allowed the said appeals and dismissed the arbitration petition. Percept filed two special leave petitions before the Supreme Court against the order of the division bench of the high court. Ratio: The Apex court dismissed the appeals and observed as under: • Firstly, grant of this injunction resulted in compelling specific performance of a contract of personal, confidential and fiduciary service, which was barred by Clauses (b) and (d) of Section 14(1) of the Specific Relief Act, 1963. • Secondly, it was not only barred by Clause (a) of Section 14(1) of the Specific Relief Act, but the Court has consistently held that there shall be no specific performance of contracts for personal services. • The court further held, whereas Percept (Appellant) could be fully compensated in monetary terms if they finally succeeded at trial, Respondent No. 1 (Zaheer Khan) could never be compensated for being forced to enter into a contract with a party he did not desire to deal with, if the trial resulted in rejection of Percept’s claim.

q The court held that a restrictive covenant extending beyond the term of the contract is void and not enforceable. Clause 31(b) of the agreement contains a restrictive covenant in restraint of trade as it clearly restricts Respondent No. 1 (Zaheer Khan) from his future liberty to deal with the persons he chooses for his endorsements, promotions, advertising or other affiliation and such a type of restriction extending beyond the tenure of the contract is clearly hit by Section 27 of the Contract Act and is void. Similar order was passed by the Bombay High Court in PERCEPT TALENT MANAGEMENT PVT. VS YUVRAJ SINGH & GLOBOSPORT INDIA [2008 (2) BOMCR 654]

Infinity Optimal Solutions Pvt. Ltd (IOS) vs Vijender Singh & Ors [IA No. 12369 of 2009 in CS(OS) 1807/2009] Facts: The Plaintiff and the Defendant No. 1 (boxer Vijender Singh) had entered into a representation agreement, through which the Defendant No. 1 had granted exclusive rights to the Plaintiff to represent him in all commercial possibilities that could emanate from such a relationship. The said agreement was for a term of 10 years and the right of termination was only with the Plaintiff. The Plaintiff via media reports learnt that the Defendant No. 1 had entered into a similar contract/agreement with Defendant No. 2 and thus sought an injunction restraining Defendant No. 1 from entering into any sports management agreement/contract with Defendant No. 2 or any other third party during subsistence of his agreement/contract with the Plaintiff. Ratio: The Delhi High Court dismissed the suit. It observed that: q Where a contract between the parties is entered into for mutual profits and gains and where running of contract is found disadvantageous by either of the party, it can be terminated by either party irrespective of the fact whethere is a termination clause in the contract or not. The right of termination of contract cannot be restricted only to the Plaintiff. It may be that if the performance of the Defendant No. 1, in the eyes of the Plaintiff fell below the mark, the contract could be terminated by the Plaintiff. q Performances of such a contract of service or management cannot be specifically enforced and the only remedy is to claim damages, if it is considered that the termination of the contract by Defendant No. 1 with the Plaintiff has resulted into any loss or damage to the Plaintiff. q The contract of representation and services is based on mutual trust and if the trust is lost between the parties, one party cannot be compelled by the court to keep the contract alive. q The court further stated that in view of Section 27 of the Indian Contract Act, the restrictions cannot be put for a player from terminating the contract of an agency of one company and giving it to some other company. Section 27 disapproves and negates the restrain or restriction on the trade and business or profession.

CONCLUSION Given the stakes involved for each of the stakeholders, celebrity management needs to be further streamlined. In view of the growing number of platforms for exploitation, there is a need to understand the manner in which the booming technologies/platforms function, the nature of rights which may be exploited across platforms, the value of such rights and available protection of such rights. Celebrities are becoming aware of the commercial value of their personality and therefore have started resorting to multi-fold protection of rights emerging from their personality. In the absence of a specific law, courts have repeatedly drawn from existing statutes to protect celebrity rights. This is an evolving field and the law and its interpretation needs to keep pace with rapid commercialisation of personality and development of technology.

THANK YOU PRESENTATION BY ANUSHREE RAUTA SENIOR ASSOCIATE