D.M. Entertainment Pvt. Ltd. v. Baby Gift House and Ors.

D.M. Entertainment Pvt. Ltd. v. Baby Gift House and Ors.

CS(OS) No. 893/2002 before the Hon’ble High Court of Delhi at New Delhi

Decided On: 29.04.2010

Facts:

Plaintiff company was incorporated in 1996, in which the letters ‘DM’ stand for the initials of the name, Daler Mehndi. The company was originally incorporated to manage Mr. Daler Mehndi’s career.

Subsequently, Mr. Daler Mehndi assigned all his rights, title and interest in his personality inherent in his rights of publicity along with the trademark ‘DALER MEHNDI’ as well as goodwill vested therein, with effect from 13th November, 1996, to the Plaintiff.

Defendants were engaged in the business of selling dolls, which were cheap imitations of and identical to the likeness of the Mr. Daler Mehndi. Such dolls were imported from China and sold by each Defendant.

These dolls could sing a few lines of the artist’s compositions. Videos to illustrate the same are accessible here and here. The dolls were being sold as ‘DALER MEHNDI’ dolls.

Plaintiff filed a suit seeking permanent injunction against the Defendants restraining them from infringing his right of publicity and against false endorsement, leading to passing off. Plaintiff claimed damages and rendition of accounts.

Defendants had filed their written statement. However, they stopped appearing in the matter and hence were proceeded ex-parte.

Plaintiff’s Contentions:

• The impugned dolls are a blatant infringement of Mr. Daler Mehndi/artist’s right to control the commercial exploitation of his persona.

• Mr. Daler Mehndi’s persona, has assumed tremendous significance as a quasi-property right meant to protect the economic value associated with identity. The artist’s business affairs and public persona have continued to grow at an exponential rate ever since he came into prominence.

• Unauthorized or unlicensed use by any party of the said persona would leave a false impression on the public and members of the trade, that the goods or services either originate from the Plaintiff or its sponsors, licensor or endorsee. Such misrepresentation would constitute acts of false endorsement and passing off by such third party and would lead to dilution and erosion of uniqueness and exclusivity associated with Plaintiff’s right, by reducing its capacity to identify and distinguish the services of the Plaintiff as originating from a particular source. This would also result in generation of huge unearned commercial gains at the hands of person who have no right to use the persona and will cause great financial detriment to the Plaintiff.

• If a famous person’s persona or any individual aspect of his personality is used by another for commercial exploitation or gain, without such person’s authorization or license, the act of using the said persona, or attributes of such personality constitute infringement of the famous person’s right of publicity.

Court’s Observations:

• To avail the right against the infringement of right to publicity, the Plaintiff must be ‘identifiable’ from Defendant’s unauthorized use. In this instant case, the evidence on record very well establishes the primary requirement. As a secondary consideration, it is necessary to show that the use must be sufficient, adequate or substantial to identify that the Defendant is alleged to have appropriated the persona or some of its essential attributes.

• In the present instance, the commercial use of an individual’s identity is intended to increase the sales of product by fusing the celebrity’s identity with the product and thereby the Defendants were selling those dolls, on the basis of publicity value or goodwill in the artist’s persona into the product i.e. doll.

• No one is free to trade on another’s name or appearance and claim immunity because what he is using is similar to but not identical with the original.

• The right of publicity can, in a jurisprudential sense, be located with the individual’s right and autonomy to permit or not permit the commercial exploitation of his likeness or some attributes of his personality. However, a word of caution has to be expressed here. In a free and democratic society, where every individual’s right to free speech is assured, the over emphasis on a famous person’s publicity rights can tend to chill the exercise of such invaluable democratic right. Thus, for instance, caricature, lampooning, parodies and the like, which may tend to highlight some aspects of the individual’s personality traits, may not constitute infringement of such individual’s right to publicity. If it were held otherwise, an entire genre of expression would be unavailable to the general public. Such caricature, lampooning or parody may be expressed in a variety of ways, i.e. cartoons in newspapers, mime, theatre, even films, songs, etc. Such forms of expression cannot be held to amount to commercial exploitation, per se; if the individual is of the view that the form of expression defames or disparages him, the remedy of damages for libel, or slander, as the case may be, would then, is available to him.

• An individual claiming false endorsement must prove that the use of the identity likely misled consumers into believing the concerned personality endorsed the product at issue. In this case, it has seen that the use of Mr. Mehndi’s persona for the purpose of capitalizing upon his name by using its conjunction with the commercial product is not proper or legitimate; it amounts to a clear dilution of uniqueness of such personality and gives rise to a false belief that, Plaintiff has either licensed or the Defendants have some connection with them (i.e. the Plaintiff or the artist), to use its exclusive right to market images of the artist.

• In a passing off action, one has to see as to whether the Defendant is selling goods/service so marked to be designed or calculated to lead purchasers to believe that they are Plaintiff’s goods.

• Even if a person uses another’s well-known trademark or trade mark similar thereto for goods or services that are not similar to those provided by such other person, although it does not cause confusion among consumers as to the source of goods or services, it may cause damage to the well-known trade mark by reducing or diluting the trademarks power to indicate the source. Further, where a person uses another person’s well-known trade mark or trademark similar thereto for the purpose of diluting the trade mark, such use does not cause confusion among consumers but takes advantage of the goodwill of the well-known trade mark, it constitutes an act of unfair competition.

Injunction was granted in favour of the Plaintiff.