Titan Industries Ltd. v. M/s. Ramkumar Jewellers
2012 (50) PTC 486 (Del)
Plaintiff was a company established in the year 1987 as a joint venture between TATA group and the Tamil Nadu industrial Development Corporation and was engaged in manufacturing and marketing watches, clocks and jewellery.
Plaintiff was using the brand ‘TANISHQ’ in relation to jewellery. The brand was being endorsed by Mr. Amitabh Bachchan and Mrs. Jaya Bachchan for its diamond jewellery collections.
Plaintiff had entered into an ‘agreement for service’ with Mr. Amitabh Bachchan and Mrs. Jaya Bachchan. As per the terms of the said agreements all the Intellectual Property Rights created in the process of providing of services provided by Mr. Amitabh Bachchan and Mrs. Jaya Bachchan to Plaintiff, would vest with the Plaintiff.
In pursuance of the agreement, the Plaintiff created advertisements. The advertisements were disseminated through newspapers, television advertisements, hoardings etc.
One of the depiction of the Plaintiff’s advertisements on hoarding is provided herein below:
Plaintiff came to know that the Defendant has copied the ‘artistic work’ of Plaintiff’s advertisement and reproduced the same for his advertisement. The Defendant’s advertisement contained an identical picture of Mr. Amitabh Bachchan and Mrs. Jaya Bachchan as depicted in Plaintiff’s advertisement. Defendant’s advertisement is reproduced below:
Thus, Plaintiff filed a suit seeking permanent injunction restraining the infringement of copyright, misappropriation of personality rights, passing off, damages, rendition of accounts of profit, delivery up, etc.
• ‘TANISHQ’ jewellery is extensively publicized through print and electronic media.
• For the Diwali season, Plaintiff used the services of Mr. Amitabh Bachchan and Mrs. Jaya Bachchan as brand ambassadors of ‘TANISHQ’ diamond jewellery.
• The campaign in question was at a widespread scale and the focus was on generating awareness and educating consumers on diamond jewellery.
• Hoardings put by the Defendant are exact copies of the Plaintiff’s hoardings.
• Defendant is guilty of infringing the Plaintiff’s copyright in its “True Diamonds” advertisement by misusing and misrepresenting the biggest advertisement of the Plaintiff to mislead the public into believing that its jewellery is associated with the Plaintiff’s ‘TANISHQ’ brand of jewellery and the Defendant is passing off its goods as that of the Plaintiff.
• Alleged hoardings have not been put up by the Defendant and Defendant has no objection if the same are removed. It is a mischief played by some unknown persons to get the Defendant into trouble.
• Defendant has no objection if a decree for permanent injunction is passed in favour of the Plaintiff.
• By virtue of Section 17(b) of the Copyright Act, 1957, Plaintiff is the first owner of the copyright in the said advertisement.
• This dishonest adoption of an identical advertisement for their products on the hoardings, by the Defendant and reproduction of the celebrities in exact situation amounts to infringement of rights vested with the Plaintiff.
• When the identity of a famous personality is used in advertising without their permission, the complaint is not that no one should not commercialize their identity but that the right to control when, where and how their identity is used should vest with the famous personality. The right to control commercial use of human identity is the right to publicity.
• No one was free to trade on another’s name or appearance and claim immunity.
• The basic elements comprising the liability for infringement of the right of publicity are:
(a) Validity: The Plaintiff owns an enforceable right in the identity or persona of a human being.
(b) Identifiability: The Celebrity must be identifiable from Defendant’s unauthorized use Infringement of right of publicity requires no proof of falsity, confusion, or deception, especially when the celebrity is identifiable. The right of publicity extends beyond the traditional limits of false advertising laws.
• Methods of proving identification of the Plaintiff:
If the Plaintiff is very well known and widely recognized celebrity a simple comparison of the Defendant’s use and the Plaintiff’s identifying features may itself be sufficient to create a strong inference of identifiability. This is termed as unaided identification. This on its face comparison is relevant for the present proceedings as the hoardings of the Defendant clearly show Mr. Amitabh Bachchan and Mrs. Jaya Bachchan, being an exact replica of the Plaintiff’s own hording advertising its Tanishq Diamonds with Mr. Amitabh Bachchan and Mrs. Jaya Bachchan.
• Other methods of proving significant identification:
(a) Evidence of a number of elements in the context of Defendant’s use which add up at a geometric rate to point to the Plaintiff.
(b) Direct or circumstantial evidence of the Defendant’s intent to trade upon the identity of the Plaintiff, from which identifiability can be presumed.
• The liability of infringement by the Defendant is based on the identifiability of Mr. Amitabh Bachchan and Mrs. Jaya Bachchan from the Defendant’s advertisement. There is a direct interrelationship between identification and Defendant’s state of mind. The Defendant’s use of the personality rights of Mr. Amitabh Bachchan and Mrs. Jaya Bachchan in its advertisement itself contains a clear message of endorsement and the message is false and misleading. Further, since Mr. Amitabh Bachchan and Mrs. Jaya Bachchan are clearly identifiable there would be an infringement of the right of publicity for it is not tied down to any proof of falsity.
Accordingly, the matter was decreed in favour of the Plaintiff. The Defendant was restrained from infringing the Plaintiff’s copyright in the advertisement for Tanishq diamonds titled “True Diamonds” and from misappropriating the personality rights of the celebrities Mr. Amitabh Bachchan and Mrs. Jaya Bachchan.