Cricketer Yuvraj Singh is in the news for invoking arbitration against Delhi based real estate firm Brilliant Etoile Private Limited (BEPL) alleging violation of his personality rights, in contravention of a Memorandum of Understanding executed between the parties. Singh has alleged that BEPL has continued to commercially exploit his image on billboards, articles, and social media posts beyond the term of the agreement between the parties. This, according to Singh, is a violation of intellectual property rights and misuse of his brand value.
This dispute brings a new dimension to the growing jurisprudence on personality rights in India and can potentially set a precedent for celebrity endorsements in India.
This article elucidates in brief the law relating to personality rights, enforcement of personality rights, and arbitrability of such disputes.
Personality Rights
The concept of personality rights in India originates from common law. These rights were established as inherent and unalienable. Personality rights is a bundle of the right to publicity, which protects individuals from the unauthorized commercial exploitation of their image and likeness without consent or compensation, and the right to privacy, safeguarding individuals from the public representation of their personality without authorization. These flow primarily from the fundamental rights enshrined in Articles 19 and 21 of the Constitution of India.
However, they can also be further derived from certain elements of copyright law, trademark law and advertising laws, i.e. performer's rights under copyright law, the Trademark Act, 1999 includes ‘name' in its definition of a ‘mark', and the Advertising Standards Council of India Code of Self-Regulation also recognizes the likelihood of misappropriation and exploitation of well-known personalities in advertisements.
Criteria For Arbitrability Of A Dispute
The case of Vidya Drolia v. Durga Trading Corporation, laid down a four-pronged test for arbitrability of a dispute, replacing the earlier test propounded in the case of Booz Allen & Hamilton Inc. v. SBI Home Finance Ltd.
In Booz Allen, the Supreme Court stated that two broad categories of disputes are not arbitrable –
(i) Disputes relating to rights in rem, which are required to be adjudicated by courts and public tribunals. Pertinently, the court specifically carved out that disputes relating to subordinate rights in personam arising from rights in rem are arbitrable.
(ii) Disputes arising out of a special statute, which are reserved for the exclusive jurisdiction of special courts are generally considered to be inarbitrable.
Vidya Drolia, while affirming the stance taken in Booz Allen, expounded the criteria for arbitrability of disputes, as follows –
“76. In view of the above discussion, we would like to propound a fourfold test for determining when the subject-matter of a dispute in an arbitration agreement is not arbitrable:
76.1. (1) When cause of action and subject-matter of the dispute relates to actions in rem, that do not pertain to subordinate rights in personam that arise from rights in rem.
76.2. (2) When cause of action and subject-matter of the dispute affects third-party rights; have erga omnes effect; require centralised adjudication, and mutual adjudication would not be appropriate and enforceable.
76.3. (3) When cause of action and subject-matter of the dispute relates to inalienable sovereign and public interest functions of the State and hence mutual adjudication would be unenforceable.
76.4. (4) When the subject-matter of the dispute is expressly or by necessary implication non-arbitrable as per mandatory statute(s).
76.5. These tests are not watertight compartments; they dovetail and overlap, albeit when applied holistically and pragmatically will help and assist in determining and ascertaining with great degree of certainty when as per law in India, a dispute or subject-matter is non-arbitrable. Only when the answer is affirmative that the subject-matter of the dispute would be non-arbitrable.”
Enforcement of Personality Rights By Arbitration
In order to effectively analyse law relating to arbitration viz. personality rights, it is pertinent to understand enforcement of personality rights, in light of the concepts of “rights in rem” and rights in personam.
Intellectual property rights are rights in rem, i.e. against the world at large. Rights in personam, on the other hand, can be enforced against an individual. Generally, actions initiated for infringement of intellectual property filed against an individual would be an in personam proceeding, which arises out of the IP owner's right in rem.
Pertinently, both, Booz Allen and Vidya Drolia, have carved out an exception for actions in personam arising out of rights in rem, as far as arbitrability of disputes is concerned.
The Delhi High Court, in the case of Hero Electric Vehicles Private Limited & Anr. v. Lectro E-Mobility Private Limited & Anr., dealt with a trademark dispute between two parties that arose out of a Family Settlement Agreement (“FSA”) (containing an arbitration clause) whereby the rights to use the trademark “Hero” were assigned to different sections of the family for use on the products and services provided by them. In this case, the plaintiff sought an injunction against the use of the mark “Hero” by the defendant. While considering the concept of arbitrability, the court held that the suit for injunction was not maintainable as the dispute would fall under the scope of the arbitration clause in the FSA. This was borne out from the conclusion that although the decision as to the ownership of the intellectual property would grant the successful party a right in rem, the action itself sought to be asserted by the plaintiff is only against the defendants, and not the whole world.
This principle has been reiterated in various subsequent cases by Indian Courts and aligns with the position in Vidya Drolia. Essentially, as in the Hero case, if the ownership of the intellectual property is to be determined basis a contract, it could be subject matter of arbitration. However, this of course, would be subject to the facts and circumstance of each individual case.
Having said that, most of the legal jurisprudence regarding arbitrability of intellectual property disputes, are purely in relation to intellectual property rights. However, personality rights are a bundle of rights which includes the right to privacy and right to publicity, both of which are derived from the Constitution of India.
So far, legal action in cases of infringement of personality rights largely follow the same patterns as those of infringement of intellectual property rights. This rings true for quia timet and omnibus actions as well. However, the consideration given by court for quia timet and omnibus orders, differs from the criteria considered when passing judgements against identified infringers.
In the present scenario, it remains to be seen how the court / arbitral tribunal would deal with the issue of arbitrability, and whether it will follow the established principles as propounded in cases involving disputes on intellectual property.
Moreover, in any event, in the present case of Yuvraj Singh, a claim for damages on account of unauthorised exploitation of personality rights would undoubtedly lie before the arbitral tribunal.
Singh's case is an interesting action, which will definitely contribute to the larger developing jurisprudence of personality rights. Given that celebrities enter into endorsement deals with several parties, a precedent in this regard would serve to provide a clearer understanding of enforcement of their rights and may impact the way such agreements are negotiated.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.