The growth of technology and the increasing involvement of the internet in our daily lives has stirred debate around various aspects of intellectual property. One of the most curious elements gaining much traction is the right to publicity of celebrities. With the internet and various online forums, celebrities now have numerous avenues to reap the benefits of their popularity by banking on their persona that is sought out by their fans. With an increase in the exploitation of their image by celebrities, the legal community has also risen to the occasion to ensure that celebrities’ publicity rights are being exploited appropriately and with their consent. In the recent landmark order in the Digital Collectibles vs Galactus Funware Technology Pvt Ltd, (CS(COMM) 108/2023, 26 April 2023), the Single Judge Bench of the Delhi High Court has provided much-needed clarity regarding publicity rights.
Cricket is one of the most popularly enjoyed sports in India, and the cricketers are the most beloved personalities of our nation, almost revered in a godlike manner by their fans. Hence, it does not come as a surprise that the cricketers recognize the importance of their popularity and ensure that their images are being exploited beneficially. In the present case, the plaintiffs provided an online marketplace where third-party users sell, purchase, and trade officially licensed collectibles known as “Digital Player Cards” (DPCs) of cricketers in the form of NTFs. The plaintiff runs this business under their trade name, “Rario”. The DPCs on the plaintiff’s websites use the name and photograph of the players and other aspects of their personalities, known as Player Attributes. The Defendants operate a website, the Mobile Premier League, and also provide the game, ‘Striker’. Like the plaintiff’s platform, the defendant offers NFT-enabled DPCs containing the names and surnames of the players and artistic renditions of their images.
While the above summarises each party’s business, it is also essential to understand the difference between the parties’ platforms to grasp the order appropriately. For the plaintiff’s business model authenticity of DPCs is crucial, as these cards can identify and distinguish the players. Hence, the plaintiff has entered into service agreements with the players that duly license and authorize the plaintiff to exclusively use their names and photographs on the Rario Website. These authorized DPCs are sold, purchased, and traded for real money as NFTs. It is interesting to note that the DPCs of the Plaintiffs are collectibles, and their prices are not linked to the real-world performances of the players and depend mainly on the relative demand-supply of the cards. However, better performances of the players may enhance the demand for their DPC, ultimately influencing the price.
On the other hand, the defendant’s platform is an online fantasy sport that allows users to form their fantasy teams to compete with other users. The trading of NFT-enabled DPCs enables users to change their teams by trading their players with others. The trading value of the DFCs on the defendant’s website depends upon the real-world performance of the players and their demands. As the Hon’ble High Court quoted, “The defendant enables a user to wear the hat of a manager of a team so as to enable him to trade in players”.
In support of their arguments, each side relied on numerous judgments. While the plaintiffs had attempted to establish that the right of publicity is inherent or unrestricted in India, the defendants argued that the right should be subjected to various restrictions. Interpreting each of the judgments cited, the Court set out to determine the scope of publicity rights in India.
The Court stated that in cases of infringement of the right to publicity, the rule applied in passing off cases would be applicable. When a brand relies on a celebrity’s image to promote its product or services, without the celebrity’s consent, it leads to misrepresentation in the minds of the consumer, who confusingly and wrongfully believe that the celebrity endorses the said products or services. Such a situation would cause an infringement of the right to publicity of the celebrity. The Court further clarified that there must be a misappropriation of goodwill and reputation of a celebrity in selling a good/service and not a mere claim that a celebrity is being identified or that the defendant is making commercial gain.
In determining the limitations to the right to publicity, the Court placed reliance on the well-known judgment of D.M. Entertainment Pvt. Ltd. v. Baby Gift House and Ors., MANU/DE/2043/2010, wherein the High Court of Delhi had read the publicity rights in line with the freedom of speech and expression, cautioning against an unfettered right to publicity. The Court stated that publications incorporating celebrities, such as caricatures, lampooning, parodies, etc., may not infringe on the right to publicity. If such instances were to be covered under the restrictions of publicity rights, a significant portion of the mode of expression to the public would be impacted. However, the Court added that if such forms of expression cause grievance to certain individuals who view the publication as defamatory or disparaging, a remedy for damage against defamation shall be available.
Hence, the Court concluded that the right of publicity of an individual cannot be so unrestricted as to overreach its limit and affect the right to freedom of speech enshrined under Article 19(1)(a) of the Constitution.
Siding with the defendants, the Court analyzed that in most cases, online fantasy sports (OFS) platforms rely on publicly available information on sports players and their real-world performances to identify and link the players to the game. In such situations, the chances that the users would mistakenly assume that there is an endorsement from the said celebrity is negligible. Further, the Court also observed that plaintiffs did not have an issue with the use of players’ information by the defendants on their OFS platform. Rather, the plaintiffs had expressed their grievances with trading the NFT-enable DPCs. However, the Court stated that while the defendants were making commercial gains, there was no inherent conclusion that celebrity endorsements were on their DPCs.
Further, the defendants also took measures to disclaim that they had no license or affiliation from any individual. The only purpose of using NFT-enabled cards was to ensure player identification to form fantasy teams, and it does not change the character of the defendant’s platform from an OFS app to a trading platform. Lastly, the Court also noted defendants’ use of player images was covered under fair use of copyrights, as they were using artistic renditions of players’ faces rather than original photographs.
Considering the rampant infiltration of technology in the sporting world, the judgment comes at an opportune time. In the absence of proper statutory provisions in the arena of rights to publicity, the judgment cogently clarifies the principles governing the scope and limitation of publicity rights. The decision shall have far-reaching implications on the exploitation of personality and content creation limited not only to the sports and gaming industry.