Your Image…My Brand Image

                               (Image used for Non-Profit Editorial Only)

The identity of an individual refers not only to his photographs or physical appearance but to all distinct, recognizable element which make up a particular persona, image or likeness, name, voice, signature, style, gestures, recognizable attire, look and facial features. A public persona generates an enormously lucrative and instant brand recognition among the masses.

A celebrity under Indian Laws and as well as under major legal regimes enjoys what are known as rights of publicity or image rights which enable them to commercially exploit the goodwill associated with their star and/or celebrity status.

There are several ways in which the image of a celebrity can be used in advertising. The most obvious manner is tools of the trade& endorsements of products that are closely related to a celebrity’s field of activity. For instance, sportsmen routinely endorse sports equipment or clothing. Another is non-tools Endorsements where a celebrity’s image is used in connection with goods or services that are completely unrelated to his field of activity, for instance a film star endorsing a bank or a telecommunications company.

Need to protect Celebrity Rights:

The right to publicity is inheritable. Therefore descendants of celebrity can gain from the popularity created by celebrity during his/her lifetime.

Celebrity Rights are assignable &licensable for commercial benefits. In the present times publicity involves immense amount of money& the public image of a celebrity is of tremendous value. Thus, this creates an economic incentive of the public & celebrities are adequately rewarded due to their moral claim over money arising out of their name and fame.

Violation of Publicity Rights:

Use of a person’s persona for commercial gain in an unauthorized manner amounts to violation of publicity rights of the person. Any person must therefore take permission of a celebrity for using his persona for commercial gain.  The unauthorized use of a celebrity’s personality can be call for an action of passing off, of unfair competition, of misrepresentation and can cause damage to their reputation. It can also amount to a breach of confidence or a violation of privacy, both duly accepted under present Indian regime.

The right of publicity encompasses the right to initiate action to prevent   the wrongful appropriation of an individual’s identity for commercial purposes without his or her consent; or seek compensation.

Intellectual Property Protection in India:

• The Supreme Court of India in R.R. RajaGopal v. State of Tamil Nadu, (JT 1994 (6) SC 514) recognized right of publicity in the form of right of privacy as follows: “the first aspect of this right must be said to have been violated where, for example, a person’s name or likeness is used, without his consent, for advertising – or non-advertising – purposes or for any other matter”.

• Delhi High Court in ICC Development (International) Ltd. v. Arvee Enterprises, (2003 (26) PTC 245 Del) held that the right of publicity does not extend to events and is confined to persons.

Under Trademarks Act individuals may apply for the protection of their name, likeness among other things, with the Indian Trademarks Registry in order to obtain statutory protection against misuse. This is of strategic importance for celebrities who intend to use their image and likeness to identify their own or an authorized line of merchandise. Few of the pertinent cases are discussed below:

• In DM Entertainment v Jhaveri (Case 1147/2001), Daler Mehndi, a famous Indian composer and performer, brought an action against the defendant following the registration of the domain name ‘dalermehndi.net’. The Delhi High Court restrained the defendant from using the trademark DALER MEHNDI, thus recognizing the fact that an entertainer’s name may have trademark significance.

• Another case involving an Indian citizen was that of Ratan Tata, the chairman of Tata  lodged a complaint in Word Intellectual Property Organization (WIPO) arbitration panel seeking the transfer of domain names comprising the name Tata (Tata Sons Ltd v Ramadasoft (Case D2000-1713, February 8 2001)).

 

• Sourav Ganguly v. Tata Tea ltd., Sourav Ganguly, a hugely popular cricketer and former Indian captain, who returned from a tour of England to find a well-known brand of tea cashing in on his success by offering consumers a chance to congratulate the cricketer. The offer implied that the cricketer had associated himself with the promotion, which was not the case. Ultimately, Sourav Ganguly   could successfully challenge it in the Court before settling the dispute amicably.

In a different but pertinent case, In 2009 Montblanc released luxury pens in India called “Mahatma Gandhi Limited Edition 241” and “Mahatma Gandhi Limited Edition 3000”, which were engraved with Mahatma Gandhi’s portrait on the nib. Tushar Gandhi (Gandhi’s great-grandson) had given his prior approval; however, the launch was met with immediate opposition on account of the Protection under the Emblems and Names (Prevention of improper use) Act 1950. Under this act, unless the government permits it, names and images of nationally important personalities cannot be used for any trade, business or professional purpose. As a result, Montblanc was forced to withdraw its advertisements and the pens in question from the market.

The Indian copyright Act, 1957 does not define the word “celebrity”. But reference can be made to the definition of a performer as given under section 2(qq). The performer includes an actor, singer, musician, dancer, acrobat, juggler, snake charmer, a person delivering a lecture or any other person who makes a performance. There is not much clarity as to what aspects of celebrity rights may be protected under Copyright Law.

The Indian Copyright Act, 1957 provides protection of  specific image in the form of a photograph, painting or other derivative works. To pursue an action of infringement individual must show ownership of copyright in the image or photograph and copying of that image.  In the context of celebrities, it becomes difficult for them to show their ownership  of  their specific image or photograph being exploited.

• In Titan Industries Limited v 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 jewellery 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 beenauthorized 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 court thereby granted an interim injunction in favour of the plaintiff while specifically recognizing the couple’s rights in their personalities.

• Phoolan devi Vs  Shekar Kapoor & others, Phoolan Devi herself protested that the film has distorted the facts .She sought an injunction as she had given up her past criminal activities & had started her life afresh. The court held that issue need to be thoroughly examined and the implications of such exhibition on the private life of an individual be scrutinized before permitting release of such films. Thus, a celebrity can protect his /her name & image as a constitutional right.

Remedies:

Passing Off Action is a remedy to damages to reputation and goodwill of an individual caused by misrepresentation by another person trying to pass off his goods or business as goods or business of another .An action in passing off  may lie for any  unauthorized exploitation of celebrity’s goodwill or fame by falsely indicating  endorsement of products by the celebrity.

An action for passing off requires proof of:

• the reputation of the individual;
• some form of misrepresentation;
• irreparable damage to the individual.

In Henderson Vs Radio Corporation the claimants were professional ballroom dancers .The defendants produced a record “strictly for dance” in which they used a picture of the claimants in the cover illustration. The claimants argued that this amounted  to  “Passing Off “.The court held it as wrongful appropriation of personality and professional reputation of plaintiff’s.

Provisions in International Conventions:

Few landmark conventions in  regards  to protection of performer’s rights  are The International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations,(1961)Rome Convention, TRIPS & The WIPO Performances and Phonograms Treaty 1996  (WPPT) .

Conclusion:

The protection of publicity and image right is expanding in a celebrity obsessed culture of India. Recent cases where legendary Bollywood actor Amitabh Bachchan  spoke out against the unauthorized use of a sound-alike of his distinctive deep baritone in an advertisement promoting a brand of gutka (chewing tobacco), an association which was detrimental to his image and of the famous Indian actor Rajnikanth ,published a legal notice in various magazines before the release of his latest film prohibiting anyone from  damaging  his screen persona or from using his character in the film for any financial gain including advertisements  ,and impressions by comedians ,clearly suggests  that  Right of publicity has emerged as an individual class of IP protection.

While Indian celebrities have intermittently attempted to protect their personality rights, the law on this aspect has taken a long time to develop.

My Brand…Your Image ???

If you have a fashion website and/or apparel business, I find it makes a huge positive impact on sales to show celebrities wearing the same sort of item you’re selling or offering on your websites.

So, what about using celebrity images on the E-commerce website? If you don’t have the opportunity to shoot the images yourself, is it possible to use celebrity images without violating any copyrights? This article introduces the legality of using images you find on the internet.

Always Get Permission to Use the Image

Unless you’ve taken the image yourself, regardless of where you find it, it’s usually owned by someone else. It’s fine to use images owned by another party as long as you receive written permission from that person/entity to use their image.

Send an email to the contact person at the web site whose image you would like to use. After they respond in a positive fashion, including the photographer’s permission, they’ll usually send you high-res images or state they give their permission for you to download the image from their web site to your desktop.

The owner will usually tell you how to attribute ownership. If not, a good attribution is ©photographer’s name / Web site name.

Editorial versus Commercial Use of Images

Editorial use of images means you want to use the image to accompany a story you’ve written on a topic of general interest. For example, you write a story about the latest trend in celebrity handbags and you want to use an image of Kareena Kapoor holding the handbag. Generally, no model release is required for editorial use; however this is always something to clarify with the owner prior to using the image.

Using an image on any website that generates revenue, advertises products or services is commercial. E-commerce, of course, falls in to that definition. So use of a celebrity image on your Ecommerce website in conjunction with selling your product is held to a much higher standard than editorial use.

Here is an example of image owner use restrictions:

Contact xxx@the photo images service you want to use.com for all commercial or promotional uses.

Getting Commercial Use Permission

There are free images sharing sites on the internet such as Shutter, Getty, Flickr and Google Images from which you can access a wide variety of images (although celebrity images are very hard to find). Make sure that any image you use for your web site is approved by the owner for commercial use.

Some owners won’t let their image be used at all commercially, others will charge a fee or ask that you provide a link back to their web page.

Model’s Release

Another dicey issue is getting a model’s release. Just because someone has his or her picture taken doesn’t necessary mean you can use it without a release. Generally, celebrity images don’t need a model release for editorial use.

Altering the Image

Some owners allow you to crop or re-touch the image, others don’t. Most owners will make this type of information abundantly clear.

Find Out More Information Before You Post Images

When in doubt, always check it out. It’s better to make sure you have permission to use an image on your E commerce website than get an advocate’s email with a cease-and-desist order, requesting damages for the use of the image.

NDA

‘Shall I sign…shall I not!’

What is an NDA?

A non-disclosure agreement (NDA) is a signed formal agreement in which one party agrees to give second party confidential information about its business or products and the second party agrees not to share this information with anyone else for a specified period of time. Non-disclosure agreements are common in multitude of companies where products are sometimes jointly developed. An NDA is also sometimes used when a company seeks venture capital from potential financial backers as a way to make sure that proprietary secrets or ideas are not stolen or leaked to someone else by the prospective investors.

Protecting your Intellectual Property

There are several ways to protect your intellectual property (IP). Protecting your IP should can be done using Patents, Trade Marks and other legal ways that do not reveal the most important parts of your venture such as any concepts, scripts, sketches, layouts, concept, manuscripts, reports, data, know-how, works-in-progress, designs, development tools, specifications, computer software, source code, object code, flow charts, databases, inventions, information and trade secrets to anyone who does not need to know it in order to evaluate your venture or help you achieve something. Protecting your IP is also important for small start-ups, as revealing the most important secrets should be done only within a very close circle of employees.

Why People Don’t like to sign NDA’s

Most entrepreneurs will not agree to sign an NDA. Because these people meet so many entrepreneurs and see so many ideas from across several industries, the chance that they have seen something similar to your idea before or have heard something about it before is really high. Even in those exceptional cases where your idea is so unique that it is the first time they’ve heard about it, this does not mean that the next person coming to meet with them will not have a similar idea.

As evolution is one of the strongest forces that govern our societies, often new ideas evolve only within the right climate or perhaps when there is a gap in the marketplace that it can uniquely fill. As Thomas Hobbes said, “Need is the mother of all invention”. Hence, it could be that your idea, although new and somewhat original, is already in the process of being developed by others. This is not as rare of a circumstance as one might think; since it is very likely that what you may have noticed missing from the market is also being notices by many others at the same time.

When and how to use an NDA

If you are going to ask someone to sign an NDA, make sure that he or she is about to be part of a very small group of people that are allowed to probe into your confidential informations, unregistered Intellectual Property (s) or, in case of non-technical startups, your formulas.

If you are going to have working relationships with an employee or service providers, during such relations you would like to protect yourself, this is when you should have an NDA signed.

The NDA should be specific to the extent that it explains in detail what you are protecting and what should not be disclosed. An NDA in many cases should be about mutual safeguards and protections for the other party as well. Bringing the other party to a place where they feel comfortable with the legal document you are asking them to sign makes it more likely for them to treat it with respect.

Summary

Hence, NDA’s may serve your best interests. But for more protection for your IP, it is better that you use patents and trademarks, and most importantly, don’t show the most secret parts of your venture to people. Only show the few people to whom you must explain it to in order to get their attention and feedback.

Who Owns…Who Hires!

 

The Copyright Act’s “work made for hire” doctrine is the major exception to the fundamental principle that copyright ownership vests initially in the individual who creates the work. If the work is a “work made for hire” the publisher under copyright law will be considered both the author and copyright owner of the work. The significance of copyright ownership is that, as the copyright owner of the work, the publisher will own all exclusive rights in the work and therefore is able to commercialize the book publishing property to its fullest extent; publishing and distributing the work in print and other formats, creating derivative works, or by licensing or transferring the rights owned by the publisher to third parties. The publisher should also remember that the “work made for hire” doctrine pertains to much more than the just the “written word.” This doctrine also applies to any other type of copyrightable work in the book publishing process including illustrations, photographs, and book cover designs.

 

The Copyright Act’s “work made for hire” definition is two-pronged and provides that a work will be “for hire” if it falls within one of the following two categories. (1) The work will be a “work made for hire” if it is prepared by an employee of an employer (publisher) working within the scope of their employment. If this situation exists, copyright ownership belongs to the publisher unless an employment contract stipulates that the creation of copyrightable material is not within the scope of employment. If the creation of the work falls outside the scope of employment the employee, and not the publisher, would have copyright ownership of the work. (2) It is also a “work made for hire” if a freelancer (independent contractor) and the publisher (employer) agree in writing that the work to be created shall be considered a “work made for hire” and if the work was specially ordered or commissioned for use as one of nine categories of work enumerated in the Copyright Act: contribution to a collective work, translation, supplementary work, compilation, instructional text, test, answer material for a test, atlas, or part of a motion picture or audio-visual work. In this situation the publisher would own the copyright. If, however, the requirements are not strictly followed, the freelancer, and not the publisher, would have copyright ownership of the work.

For many years the question of whether a specific work was a “work made for hire” was a source of great confusion to the courts as judicial decisions generally focused upon the “manner and means” by which the hired party developed the creative work. In 1989 the United States Supreme Court resolved much of the confusion surrounding the issue of who was an “employee” and who was an “independent contractor.” The Court concluded that “common law agency principles” must be used to determine whether the work was prepared by an employee or an independent contractor. The Court enumerated the following factors that are instrumental in determining whether a hired party qualifies as an employee or is instead an independent contractor:

 

(1) the hiring party’s right to control how the work was accomplished,

 

(2) the skill required,

 

(3) who provided the materials and tools,

 

(4) where the work was performed,

 

(5) length of relationship between the parties,

 

(6) whether or not the hiring party could assign additional projects to the hired party,

 

(7) extent of hired party’s discretion over when and how long to work,

 

(8) method of payment,

 

(9) who hired and paid assistants for the project,

 

 (10) whether the work was part of the hired party’s regular business,

 

(11) whether the hiring party is in business,

 

(12) did the hiring party pay employee benefits, and

 

(13) the tax treatment of the hired party.

 

 Although the Court went on to say that these factors were not an exhaustive list they also noted that no single factor was determinative of whether or not a hired party would be considered an employee under the first prong of the “work made for hire” definition. The significance of this Supreme Court decision was its conclusion that the two prongs of the “work made for hire doctrine” were mutually exclusive. Furthermore this decision restricted the “work made for hire” doctrine under the first prong to “actual” employees while the second prong was held to be only applicable to independent contractors.

 

FOOLING AROUND

False advertisement is any type of advertisement that deceives consumers or affects their purchasing decisions. Even advertisement that only has the potential to be misunderstood by the consumers may be construed as false advertisement. Basically, false advertising is the use of false or misleading statements in advertising instead of telling the consumers the truth where ‘truth’ is the concept that the consumer has the right to know what they are buying.

To establish the fact that the advertisement is false, certain points needs to kept in mind:

a) a false statement of fact has been made about the advertiser’s own or another person’s goods, services, commercial activities;

b) the statement either deceives or has the potential to deceive a substantial portion of its targeted audience;

c) the deception is likely to affect the purchasing decision of its audience;

d) the deception is likely to cause injury/loss to the customer.

Types of False advertisement:

Usually, false advertisement is in the form of:

§ Failure to disclose:

Misleading misstatements or partially correct statements are considered to be ‘failure to disclose’ because they fail to disclose something the consumer should know. Sometimes even misrepresentation is not required. Merely not stating the truth can be a ‘failure to disclose’.

§ False and insignificant research:

Stating facts based on false and insignificant research can also be construed as false advertisement. For example, basing advertising claims on statistically insignificant test results can well be false advertising on the grounds of flawed and insignificant research.

§ Product disparagement;

Discrediting a competitor’s product to boost sales is called product disparagement and is considered to be a part of false advertisement as well.

Other than these, false advertising in a wider sense may include hidden fees and surcharges, manipulation of the standards and commodities, mixing of adulterants, over sizing of packages, using ambiguous undefined terms, etc.

LIABILITIES IN ADVERTISING

When an injury (a violation of the legal right) is caused to a third-party due to the advertising of a business house of its goods and services, advertising liability arises. Liability of a company to another is the company being legally obligated or accountable to the other company.

Publishers of advertising content are liable for the content of the advertisement as well as their traditional content.

Advertising liability can arise through:

i. Libel: It is the defamation of another person or company in a written or visual form.

ii. Slander: it is defamation by speech.

iii. Invasion of privacy: Invasion of privacy may come in different forms:

· It may be in the form of misappropriation (intentional, illegal use) of a person’s likeliness or name, usually for the commercial benefit of another.

· Intrusion into the private affairs of a person and his right to seclusion and solitude.

· Depicting a person in a false light through the use of publicity. Whether the depiction is objectionable is judged by a reasonable standard.

· Public disclosure of true facts (even if they are true), if it leads to embarrassment and are reasonably objectionable comes under invasion of privacy.

iv. Copyright infringement: It is what the name itself suggests. Using copyrighted material of another person or company gives rise to liabilities.

v. Trademark or trade dress claims: As in the case of copyrighted material, misusing someone’s trade dress (a business style or image that is unique or distinctive) gives rise to liabilities under advertising.

Other than aforesaid, liabilities in advertising may arise because of certain misappropriation claims or unfair competition claims.

 

WHO OWNS THE RIGHTS?

IF YOU PAY AN AGENCY TO CREATE AN ADVERTISEMENT FOR YOUR BUSINESS, WHO OWNS THE RIGHTS?

If your advertisement has been developed by an employee who is employed for this purpose, then, in most countries, you (as the employer) would own the copyright over the advertisement, unless you otherwise agreed with your employee.

However, many companies outsource the creation of their advertising campaigns to an outside contractor, and assume they own IP rights in it, simply because they paid for the work. Beware! You may be surprised to find out that you do not own the IP rights in what has been created for you. Independent contractors (unlike employees) usually own all IP rights in the works they create – even if you have paid for it –, unless otherwise agreed in a written contract.

• Copyright – In practice, the advertising agency will usually own copyright in an advertising campaign, as well as in copyrightable elements contributing to the campaign (such as colors, gifs, jpegs, setup, sound and music, photographs, etc.). Without a valid, written agreement transferring to you all these rights, you may end up owning nothing except perhaps a non-exclusive license to use your own advertising campaign. Different rules or exceptions may apply, such as in the case of commissioned photographs, films and sound recordings.

• Example: You commission a freelance advertising designer to create an advertising campaign for your company. The advertisement consists of a logo, some graphic illustrations, and text material. There is no agreement transferring all rights to you, so the copyright belongs to the designer (Copyright laws). A year later, you want to reuse some elements for another campaign. Under most copyright laws, you will need authorization from the designer, and may be required to pay an additional fee, to reuse the works. Before commissioning an advertising, it is better to enter into a clear, written agreement with the designer that spells out clearly as to who owns IP rights in each element of the advertising campaign.

• Trademarks – Unlike copyright, which exist from the moment of creation, trademark rights arise either from the use of a trademark in business in relation to the relevant goods or services, or from its registration. Accordingly, if an advertising agency creates a trademark or logo for your company, the agency will seldom own trademark rights, because it does not use the marks it creates in relation to any goods or services, and it does not apply for its registration as a trademark.

• Industrial designs – If you commission a freelance designer to produce a specific design for your advertisement, in many cases the ownership of IP rights will not automatically belong to you, but will remain with the designer.

• Patents – In some countries, where software patents are granted, you may have to consider filing for patent protection over certain aspects of rich media advertisements.

You should always have a written agreement with your advertising agent and other independent contractors, and specify the ownership details of each element of the work that will be created. Make sure that you receive ownership rights or a license that is broad enough so that you can use the advertisement (and all its elements) how and where you want. In negotiating and drafting such an agreement, consider the following issues:

• The price you pay for the creation of an advertisement will depend on who owns IP rights in the different components of the advertisement that are created by the advertising agency or designer (e.g., text, graphics, design, logos, music, etc.). For each element of an advertisement, you should carefully contemplate what you need to own versus what you only need a license to use.