Delhi High Court- In a civil suit filed by famous actor Jackie Shroff (‘plaintiff’), seeking protection of his publicity/personality rights against unauthorized misuse, the Single Judge Bench of Sanjeev Narula*, J., held that the balance of convenience lied in favour of plaintiff and had established a prima facie case for grant of an ex-parte injunction. Thus, the Court restrained several defendants from infringing the plaintiff’s personality/publicity rights and held that Order XXXIX Rule 3 of the Code of Civil Procedure, 1908 be complied with within one week from 15-05-2024.
The Court directed the Department of Telecommunication (DoT) and the Ministry Electronics and Information Technology (MeitY) to issue necessary directions to telecom service providers and internet service providers to block the infringing URLs/links.
Factual Matrix
In the present case, the plaintiff Jackie Shroff being a well-known Indian actor had registered ‘BHIDU’ in Class 25 and Class 41 and ‘Bhidu ka khopcha’ in Class 41 as a trademark. Apart from it, ‘JACKIE SHROFF’ being the personal name of the Plaintiff is immediately and uniquely associated with him and no one else. The plaintiff’s registered trademarks and name ‘JACKIE SHROFF’ was infringed by various defendants through selling of printed merchandise on e-store, creation of derogatory YouTube videos, opening of restaurant named ‘Bhidu Shawarma & Restaurant’, and posting links which are selling merchandise and certain pornographic content using the name “Jackie Shroff” without prior consent.
Analysis
The Court relied on D.M. Entertainment Pvt. Ltd. v. Baby Gift House 2010 SCC OnLine Del 4790, wherein it was held that the right of publicity protects individuals against the unauthorized use of their personality, which includes their name, image, voice, and other distinctive attributes. The Court recognized that such unauthorized use can lead to unearned commercial gain for another party, thereby infringing on the individual’s personality rights. Applying the said principle on matter at hand, the Court said that the alleged activities of some of the defendants, on a prima facie basis, resulted in commercial benefits through the unauthorized exploitation of the Plaintiff’s personality and they had utilized the plaintiff’s name, image, voice, and other unique characteristics without permission, thereby infringing on his personality and publicity rights.
As to the challenge against a YouTube video titled “Jackie Shroff Is Savage (*) Jackie Shroff Thug Life!”, the Court said that the term “Thug Life” is often featured in memes that portray individuals demonstrating boldness or audacity, always with an undertone of humour or defiance and the phrase is employed to highlight moments of cleverness or resistance, framing the individual as admirable rather than nefarious. The Court added that the portrayal did not introduce any falsehoods; rather, it embellished the existing public perception of the plaintiff as a formidable and commendable figure. Considering the growing community of memes, spoof, parody, and the economic benefits that the youth draws from the viewership, the Court said that these videos represent a form of artistic expression that requires creators to engage thoughtfully with their content. The Court also said that consequently, this creative process can be seen as generating not only economic value but also employment opportunities for a significant number of young individuals. The Court stated that restricting such creative expressions and producing similar videos or blocking these videos might have far-reaching consequences for this vibrant community and could set a precedent that stifles freedom of expression, potentially deterring the public from exercising their right to free speech due to fear of legal repercussions. Hence, the Court sought response from the creator of the video, against whom the plaintiff had sought ex-parte ad-interim injunction and refused to allow the same at the present stage.
The Court was of the view that balance of convenience lied in favour of plaintiff and had established a prima facie case for grant of an ex-parte injunction against an AI chatbot platform; defendant engaged in selling wallpapers of the plaintiff; creators of videos which distorted the plaintiff’s face; an e-commerce website selling t-shirts and posters using the plaintiff’s photographs and name; and ‘Inverted Mushrooms’ selling autographed pictures of the plaintiff. The Court added that if an injunction is not granted in the present case, it will lead to irreparable loss/harm to the plaintiff, not only financially but also with his right to live with dignity.
The Court further restrained the above-mentioned defendants from infringing the plaintiff’s personality/publicity rights by utilizing/exploiting/misappropriating the plaintiff’s
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name ‘JACKIE SHROFF” and other sobriquets including “JACKIE”, “JAGGU DADA”
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voice;
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image;
for making downloadable wallpaper, creating distorting videos of the plaintiff which tarnishes the reputation of the plaintiff and violates his moral rights for any commercial purpose, by commercially using an unlicensed Al chatbot that uses attributes of the plaintiff’s persona, in any manner without his consent and/or authorization.
The Court then directed Department of Telecommunications (DoT) and the Ministry of Electronics and Information Technology (MeitY) to issue necessary directions to the telecom service providers and internet service providers to the block the infringing URLs/ links. The Court also directed for the compliance of Order XXXIX Rule 3 of the Code of Civil Procedure, 1908 be done within one week from the date of order.
[Jaikishan Kakubhai Saraf v. Peppy Store, 2024 SCC OnLine Del 3664, Decided on: 15-05-2024]
Judgment By: Justice Sanjeev Narula
Advocates who appeared in this case :
For Petitioner: Pravin Anand, Ameet Naik, Dhruv Anand, Madhu Gadodia, Udita Patro, Rinku Gajaria, Sampurnaa Sanyal, Sujoy Mukherjee, Ashotosh Upadhyaya, Nimrat Singh, Tarini Kulkarni and Dhananjay Khanna, Advocates.
For Respondents: Sharat Kapoor, Shubh Kapoor, Anirudh Dusaj and Bhavyah Garg, Advocates; Shikha Sachdeva, Kriti Rathi and Annie Jacob, Advocates; Aditya Narayan Mahajan and Kara Aggarwal, Advocates; Shruttima Ehersa, Rohan Ahuja, Diva Vishwanath and Rahul Choudhary, Advocates
