Advertising or Ambush Marketing? A law school overlooking intellectual property law?
Can a law school use an image of any celebrity to lure in admissions?
No, they certainly cannot unless they have been permitted by the celebrities themselves. It is indeed true that the education system in India has always been used more as a tool for business rather than adding value to society. Recently, one such venture caught the attention of students, professionals, academicians, enthusiasts from the legal fraternity and perhaps from members of the marketing and business fraternity as well.
We blokes were stunned to see a promotional advert engaged an entire front page of Times of India released by Indore Institute of law (“law school”) comparing Harvey Spector (a character from an American drama series titled as “Suits” played by Gabriel Swann) and Jagdishwar Mishra (a character from a Bollywood movie titled “Jolly LLB 2” played by a renowned actor, Akshay Kumar)
While there ensues discourse, discussion and criticism on how questionable such an advert is, from an ethical point of view, we would like to throw some light on the IP facet of this venture by Indore Institute of Law.
In order to understand the issue with the advertisement above, firstly you need to have clarity on “publicity right” as a concept and what does it entail. Since the concept has not been codified yet, the only way to understand it is from the precedents laid down by the courts in India.
How have the courts examined the publicity rights?
The Delhi High Court got an opportunity to adjudicate a similar instance in Titan Industries vs M/S Ramkumar Jewellers in the year 2012. The court granted a permanent injunction against the defendant for unauthorizedly using the image of Mr. Amitabh Bachchan and Mrs. Jaya Bachchan on hoardings for endorsing its products. The court relied on Laborotories v. Topps Chewing Gum [202 F2d 866] wherein it was said that “a man has right in publicity value of his photograph” and has the right to exclusively grant the right to use of his/her photograph which entitles them to yield money by authorizing advertisements on newspapers, magazines, busses, trains and subways.
A crucial aspect that should be flagged is that the publicity rights have been evolved from rights of privacy and can only be bestowed to an individual and but not to any events, sports or movie he/she is associated with, as laid down in the case of ICC Development vs Arvee Enterprises and Anr. This means that if the image of Kapil Dev or Sachin Tendulkar is used by any fantasy sports operator without their authorization, they would have a valid and enforceable cause of action against them.
Let’s Apply the law:
In light of the definition explained above, it is apparent that Akshay Kumar and Gabriel Swann has exclusive rights over their images and persona. The issue to mull over is:
Can the law school be held liable for passing off and indulging in unfair trade practice by misappropriating publicity rights of the actors?
Analysis
If the identities of these well known and famous persons have been used in an advertisement without their permission, it violates their right to control the commercial use their identity’s which exclusively vests with them. Therefore, the violation in the present case rests on the fact that did the law school acquire the requisite permission from the concerned celebrities?
As apparent from the advertisement, the law school has tried to glorify and portray the character of Harvey Spector as superior to that of Jagdishwar Mishra. The institution has made an attempt to capitalize on the hysteria/obsession of young law students with the character Harvey Spector without realizing that their attempt might raise a cause of action against them. The concerned actors by virtue of putting in efforts to acquire fame and reputation have the exclusive rights to commercially use or exploit their names, images and personality.
Are the actors portrayed in the advertisement entitled to injunction?
Yes, in case the parameters listed below are being satisfied. This bloke believes that a bare perusal of certain factors would make the road to injunction more clearer for the readers. The grounds required to be satisfied to obtain an injunction in a matter pertaining to publicity rights are not codified but have been devised through precedents such as Mr.Shivaji Rao Gaikwad vs M/S.Varsha Productions in the past, which are as follows :
i) The actors owns an enforceable rights in their identity
ii) Personality rights vests in those who have attained the status of celebrity (A celebrity is merely a person who many people know or talk about). A celebrity must be identifiable from counter party’s unauthorized use. Infringement of right of publicity requires no proof of falsity, confusion, or deception, especially when the celebrity is identifiable.
iii) If any person uses the name of a celebrity without his/her permission, the celebrity is entitled for injunction, if the said celebrity could be easily identified by the use of his name by the other party.
In guise of opening admission to its institution, the law school takes a dig at trial court lawyers. The first impression that this advertisement creates and did create on law professionals was that it is intended to demean career as that of a trial court litigator and lure admissions by sending across a message that the students pursuing law from their college might turn out to attain reputation and practice that of Harvey Spector as showcased in the famous web series “Suits”.
No sooner did the law school faced the wrath of the members of legal fraternity and netizens on twitter, than it released an explanation along with an unconditional apology attached below.
The administration released a statement astutely using and depicting the character Jagdishwar Mishra to that of a heroic litigator. Obviously! After all even the college is being run by lawyers…even they know how to use the situation to their advantage.
Is this a case of Ambush Marketing!
As the literal meaning of the term suggests, attempting to capitalize on the popularity and/or reputation of another entity, without consent or authorization from such entity is known as ambush marketing. This practice of ambush marketing involves the act of trying to form direct or indirect associations with such entity, in the minds of potential customers so as to benefit in terms of popularity and/or brand value from the attention of these customers, fetched, by using the popularity and/or brand value of another entity.
Pertinently, in the instant case, given that the advertisement is of a law school, ‘market’ would, inter alia, comprise of, an intersection of aspiring law students/their guardians AND viewers of Suits and/or Jolly LLB 2. Now with this in mind let us evaluate this incident as set forth.
Whether the instant advertisement amounts to ambush marketing, first and foremost, depends on whether the institute obtained any authorization/consent from the owners of the intellectual properties used by the institute. Since, this fact stands unknown, as yet, we would not pass any judgment from our side or accuse the institute of ambush marketing.
However, only to analyze this situation from an IP enthusiast’s perspective, let us assume that the institute has not obtained any such authorization/consent. Now, such a scenario, begs the following questions.
Why were the pictures of Gabriel Swann and Akshay Kumar used in this advertisement in the first place? What is the purpose behind using characters from a popular TV series and a popular Bollywood film by the institute for advertisement?
The obvious answer is that these are characters (as played in the film/series) and/or personalities (as the celebrities) who, by virtue of their popularity, generated painstakingly, over the years, by these actors and those associated with the film/series, have a reputation of their own amongst the potential customers of the institute, i.e. aspiring law students. Therefore, they will attract the potential customers’ attention and, almost inevitably, cause them to associate these characters with their own future selves and draw comparison between the two.
Here, it is clear, that the institute aims at riding on the goodwill established by someone else in order to achieve its own marketing objectives. This, assuming that due authorization/consent had not been obtained, makes it a case of ambush marketing wherein the institute has ‘ambushed’ on the marketing potential vested in brand value, goodwill, reputation and personality of the actors in person, but also in the characters they play in the respective film/series.
While we do not have specific legislations in place to address ambush marketing issues, such a case may be brought within the scope of passing off.
With above assumption in mind, on a hypothetical basis, we note that a) these characters as well as personalities have a substantially large and well-established goodwill of their own; b) the institute’s act is likely to make one believe that its use of these characters is authorized or legitimate, when it is not or their exists an association between the personalities depicted in the advertisement and the institute, when there is none; and c) this is detrimental to the personalities and those who hold rights in these characters because their goodwill is exploited without authorization and there intellectual property in these characters and actors’ intellectual property in their personalities, stands diluted. This implies that classic trinity of passing off, i.e. goodwill, misrepresentation and damage, is satisfied and hence, a case of passing off can be made out.
Conclusion
We observe that there is a need for a robust legislation to address the issue and fix the liabilities of entities/institutions infringing publicity rights of the celebrities. Having said that, a legislation does not guarantee that, it would halt the occurrence of such instances altogether, but it would indeed help the courts to adjudicate the cases and fix the liability more efficaciously. Additionally, once the legislation reaches the table of Parliament, the celebrities would be vigilant of their rights and observant enough to not let go off such instances breezily.
The above post have been written by Amay Jain and Harshit Singh Jadoun. The authors can be contacted on their email id’s at:
Amay Jain: amayxaviers@gmail.com
Harshit: harshit9281@gmail.com
