Recently, HMJ Amit Bansal of the Delhi High Court delivered a judgment with far-reaching implications, as the Hon’ble Court rejected the Plaintiffs’ application for interim injunction in Digital Collectibles Pte. Ltd. & Ors. v. Galactus Funware Technology Pvt. Ltd. & Anr. [2023:DHC:2796]. In what is, in all likelihood, a first of its kind in Indian jurisprudence, the case at hand involved allegations of, inter alia, passing off, unjust enrichment, and breach of personality rights / right to publicity of the Plaintiff Nos. 2 to 6 (who are well-known Indian cricketers), on account of the usage of players’ images, names / initials and other attributes in Digital Player Cards (“DPCs”) which can be purchased, sold and/or traded through the platform ‘Striker’. A summary of the brief facts, followed by the Hon’ble Court’s findings and a brief reflection on / analysis of the same, is provided below:

A. Brief Facts

a. Plaintiffs:

1. Plaintiff No. 1 owns and operates ‘Rario’, a NFT-based digital collectibles platform, where users sell, purchase and trade officially licensed DPCs of cricketers. As stated above, Plaintiff Nos. 2 to 6 are well-known cricketers, who have duly licensed and authorized Plaintiff No. 1 to exclusively use, inter alia, their names and photographs on Rario.
2. The said DPCs are sold, purchased and traded for real money on Rario, via Rario’s private blockchain. Each DPCs price is contingent upon the demand and supply for said DPC, which is in turn linked to the popularity and fame of the respective cricketers.

b. Defendants

1. Defendant No. 1 owns and operates the online fantasy sports / OFS platform ‘Mobile Premier League’. Defendant No. 2 owns and operates the platform ‘Striker’, which is listed on Mobile Premier League.
2. Akin to Rario, users of Striker can also purchase, sell and trade DPCs, and Striker also employs NFT technology to authenticate DPCs on its platform. However, Striker does not have licenses and/or authorization from various cricketers, including Plaintiff Nos. 2 to 6, whose names, initials, etc. are depicted on Striker’s DPCs. Further, Striker’s DPCs are ‘in-game’ assets, i.e., they are used only within the game (although, in theory, they can be purchased without playing the game), whereas Rario’s DPCs can be traded outside the Rario gaming platform.
3. Notably, Striker only portrays independently commissioned art-works of cricketers on its DPCs, and not the cricketers’ actual / real photographs and images.

c. Parties’ Submissions

1. Plaintiffs claim that the entire value of the DPCs, which are purportedly in the nature of digital art collectibles, is derived from and hinges upon the names, likeness, etc. of the cricketers whose DPCs are made available on the Striker platform.
2. As the Defendant No. 2 does not have requisite licenses and/or authorization from Plaintiff Nos. 2 to 6, the Plaintiffs assert that the Defendants are liable for, inter alia, passing off and breach of personality rights / right to publicity.
3. Per contra, the Defendant No. 2 contended that the material it uses for DPCs on its Striker platform, is in the public domain, used for the purpose of identifying those cricketers on its platform, and thereby beyond the scope of those cricketers’ personality rights.
4. Further, Defendant No. 2’s platform is in the nature of an OFS game, and does not purport to enable its users to buy and ‘own’ cricket moments (which is a key selling point of the Plaintiffs’ licensed DPCs). To this effect, Defendant No. 2 claimed that its DPCs cannot be traded or used outside the Striker platform, and is thus intrinsically and solely linked to the user experience and format of the Striker platform. Moreover, various other OFS games also use players’ names, images, etc. in such a manner, and thus, the same is a well-settled industry practice.
5. Defendant No. 2 also asserted that its DPCs do not suggest any endorsement and/or affiliation with a player / cricketer, and it uses DPCs for all current players.
6. Thus, the Defendants contend that the Plaintiffs’ are not entitled to an interim injunction, as the usage of players’ names, images, etc. on Striker’s DPCs does not fall afoul of the Plaintiff Nos. 2 to 6’s personality rights, which are not absolute and must be countervailed against the right to freedom of speech and expression.

Lastly, it is pertinent to note that intervention applications were also filed on behalf of other concerned entities / players in the OFS industry, i.e., WinZO Games Pvt. Ltd. and All India Gaming Federation. The said applications were allowed by the Hon’ble Court and submissions were also advanced on behalf of these entities, which too were opposed to the Plaintiffs’ attempt to restrain Striker’s usage of cricketers’ names, statistics, etc. on the DPCs. For the sake of brevity, the intervenors’ submissions have not been reproduced / reiterated herein in extensive detail.

B. Discussion on Personality Rights / Right of Publicity

As can be gathered from the abovementioned, the critical legal question in the instant dispute pertained to the contours of the Plaintiff Nos. 2 to 6’s personality rights / right of publicity and whether such rights can justifiably be enforced against, inter alia, the Defendant No. 2 to restrain it from making available DPC’s of renowned cricketers on its Striker platform. Submissions and the Hon’ble Court’s observations in this regard are accordingly captured hereinbelow:

a. Parties’ Submissions on Right to Publicity

1. Relying on DM Entertainment Pvt Ltd v Baby Gift House & Ors [MANU/DE/2043/2010] and Titan Industries v M/s Ram Kumar Jewellers [(2012) 50 PTC 486], the Plaintiffs asserted that the Striker DPC’s tantamount to unauthorized endorsement and, generally, contravene the Plaintiffs’ publicity rights.
2. Per contra, the Defendants placed reliance on judgments of U.S. courts in, inter alia, CBC Distrib. & Mktg. v Major League Baseball Advanced [505 F. 3d 959] and Daniels v Fan Duel Inc [109 N.E. 3d 390], to assert that when the information and facts, pertaining to certain celebrities, used by the Defendants are admittedly available in the public domain, no claim for violation of publicity rights can be sustained, irrespective of whether the Defendants’ usage of such information is commercially motivated or not.
3. In this regard, the aforesaid intervenors also highlighted, inter alia, that (a) in other common law jurisdictions (such as the U.K.), the tort of passing off suffices insofar as claims of misappropriation of goodwill / reputation of a celebrity are concerned (i.e., it is imperative to show that consumers were misled to believe that a celebrity has endorsed a certain good / service, when that is not the case); (b) judgments of U.S. courts are based on state-specific statutes governing the right to publicity, and their applicability under Indian law is thus suspect; and (c) the judgments cited by the Plaintiffs do not define the contours of the right to publicity, and, in any event, such purported restrictions on freedom of speech can only be framed and enforced through legislative action.

b. Court’s Analysis and Findings

1. After an extensive analysis of the array of foreign judgments cited by the parties on the aspect of right to publicity, the Hon’ble Court observed that:

a. As stated, the U.S. has various state-specific statutes which recognize the right to publicity with statutory exemptions / defenses also provided thereunder. Further, it is trite law, in the U.S., that the right to publicity is subservient to the right to free speech, including the right to utilize publicly available information of a celebrity / sportsperson. U.S. courts thus view the right to publicity as a right to prevent others from misappropriating the economic value generated by the celebrity’s fame through merchandising of said celebrity’s name, voice, photograph, etc.

b. The U.K. does not have any statute governing the right to publicity, and akin to India, the position in the U.K. is governed by common law. Further, in the U.K., the right to publicity does not inhere in a celebrity and principles of passing off are to be invoked while alleging unauthorized usage of a celebrity’s name or image to sell a product.

2. The Hon’ble Court subsequently proceeded to analyse Indian case law, albeit relatively limited, on the right to publicity. While the Hon’ble Court evaluated and summarised each relevant Indian decision on the right to publicity (from para 42 to 51), the same has not been reproduced herein, for the sake of brevity. However, a gist of the Hon’ble Court’s findings on the right to publicity in India and its jurisprudential development thus far is captured below:

a. None of the Indian judgments cited by the Plaintiffs recognize the right to publicity as an absolute right. In fact, the right to publicity was even held to be subservient to the constitutional right to freedom of speech, albeit not in those categorical terms, in DM Entertainment (supra), wherein exceptions in the form of caricature, lampooning, parodies, etc. were carved out vis-à-vis the right to publicity.

b. Indian courts, in all cases involving / asserting right to publicity thus far, have applied principles of passing off.

3. In light of the foregoing analysis, the Hon’ble Court held, inter alia, as follows:

a. In the absence of specific legislation, the right to publicity cannot be deemed an absolute right.

b. Violation of the right to publicity must be evaluated in accordance with the settled tests and principles governing the tort of passing off. What is critical thus is whether the identity or image of a celebrity is used to promote the sale of a product / service or to indicate an endorsement thereof by the said celebrity, without the celebrity’s consent. Essentially, it must be shown that there has been a misappropriation of a celebrity’s goodwill and reputation in selling a good / service.

c. The same must also be assessed keeping in mind the constitutional right to freedom of speech and expression. Usage of celebrity names, images, etc. “for the purposes of lampooning, satire, parodies, art, scholarship, music, academic, news and other similar uses would be permissible as facets of the right of freedom of speech and expression under Article 19(1)(a)”, and would not fall afoul the right to publicity.

4. Applying the aforesaid findings to the facts at hand, the Hon’ble Court was of the view that the use of names, images, etc. of cricketers along with data / statistics pertaining to their performances, on an OFS platform, is protected under the right to freedom of speech (including commercial speech). Further, the Hon’ble Court dismissed any possibility of confusion of endorsement arising on account of Striker’s usage of cricketers’ names, images, etc. in its DPCs, as Striker uses such publicly available data for all cricketers and not just a handful of eminent cricketers, in a manner which insinuate endorsement of Striker by such cricketers. The Hon’ble Court also relied upon the presence of clear disclaimers on Striker’s website, which clarify that it is not, in any manner, affiliated or licensed by any individual.

5. Pertinently, in reaching this finding, the Hon’ble Court was also swayed by the fact that Striker is using commissioned art-works of cricketers (and not their actual images), thereby amounting to transformative use and caricaturing, which will be constitutionally protected forms of speech / expression. Likewise, the Hon’ble Court observed that Striker uses such information / data of cricketers essentially for the purposes of player identification (akin to a typical OFS game). Admittedly, the Plaintiffs have no objection to usage of such data in typical OFS games, to identify the players / cricketers in the game. Thus, when Striker’s DPCs serve the same purpose (i.e., player identification), the Plaintiffs cannot object to such usage of cricketers’ names, images, etc. on the Striker platform, which, in the Hon’ble Court’s opinion, was akin to an OFS game with features such as tradeable DPCs added merely to enhance user’s experience.

Based on the above prima facie observations, the Hon’ble Court thus refused to grant an injunction against the Defendants.

 C. Concluding Remarks

As prefaced in this article, the Hon’ble Court’s judgment, in this author’s view, is bound to have far-reaching implications insofar as the commercial usage of celebrity’s names, images, etc., without their consent / authorisation, is concerned. The Hon’ble Court has rightly recorded that the right to publicity is not an absolute right, and as such, it has to necessarily be countervailed against the constitutionally recognised right to freedom of speech and expression. In doing so, the Hon’ble Court has given the proverbial go-ahead to various creators, be it of NFTs or even general entertainment content, to freely utilise publicly available information of renowned persons / celebrities, provided that such usage does not falsely indicate endorsement of such content by the concerned celebrity.

While the Delhi High Court has previously, in DM Entertainment (supra), briefly touched upon potential exceptions to the right to publicity, the Hon’ble Court’s categorical and express recognition, in the instant judgment, of certain uses (i.e., lampooning, satire, parodies, art, scholarship, music, academic, news and other similar uses) falling outside the ambit of this right to publicity helps obviate any ambiguity in this regard and better define the contours of the right to publicity in India.

The Hon’ble Court has also, upon a thorough evaluation and analysis of Indian judgments on this aspect, correctly observed that the test to ascertain violation of the right to publicity involves the same tenets and principles as the tort of passing off. Hence, it is now abundantly clear that the right to publicity is impinged upon when a third-party uses a celebrity’s information / trait / attribute in a manner likely to cause confusion by falsely suggesting endorsement of said third-party’s good / service by the concerned celebrity, and not in cases involving a mere passing reference / usage of a celebrity’s name, image, etc. in relation to a good / service, for the purposes of, inter alia, identification or by way of transformative use(s).

Thus, the Hon’ble Court’s judgment has afforded much-needed precision to, and fortified, Indian jurisprudence on the right to publicity, while also emphasising upon the need to strike a balance between justly enforcing the right to publicity and upholding the constitutional right to freedom of speech and expression (by identifying, for instance, the illustrative list of exceptions captured above).

Needless to say, the Hon’ble Court’s views, summarised hereinabove, are admittedly prima facie in nature and may be subject to appeal by the Plaintiffs (as on date, an appeal has not yet been filed by the Plaintiffs against this judgment).

This article was first published on IPRMENTLAW