Renowned Indian actor Jackie Shroff recently filed a lawsuit to protect his name, image, and other distinctive attributes from unauthorised use online. In the court proceedings before the Delhi High Court, Shroff detailed various infringements and sought protection for his personality rights, publicity rights, and trademarked identities.
Beyond his acting career, the plaintiff highlighted his efforts in brand cultivation, evident in trademarks like ‘BHIDU’ and ‘Bhidu ka khopcha,’ as well as social media handles like @apnabhidu and @bindasbhidu. The plaintiff stated that his commercial endorsements rely on his distinct personality traits, which are protected under his personality and publicity rights. He also emphasised the importance of safeguarding his name, voice, image, and unique mannerisms, which are crucial to his public identity, the unauthorised use of which infringes on his exclusive rights.
Additionally, it was claimed that the plaintiff’s name, “JACKIE SHROFF,” holds substantial goodwill and is globally recognised, with associated names like ‘Jackie,’ ‘Jaggu Dada,’ and ‘Bhidu’ exclusively linked to him. The plaintiff asserted that these names are protectable trademarks under the Trademarks Act of 1999, along with personality rights, copyright protection, common law rights against passing off and unfair competition, and trademark rights marks like ‘BHIDU’ and ‘Bhidu Ka Khopcha.’
The lawsuit identified several parties engaging in activities infringing upon Shroff’s rights, including online retailers selling merchandise featuring his likeness to content creators distorting his image for commercial gain. The plaintiff accused Defendant No. 1 of selling wall art featuring animated images of the plaintiff alongside other actors on their website, which the Defendant confirmed has been removed. Defendant No. 1 argued that the artwork while resembling the plaintiff, fell under fair use and cited a prior Instagram video in which the plaintiff appeared to appreciate similar artwork.
The Court’s assessment carefully weighed the balance between Shroff’s rights and the defendants’ creative expression, recognising the complexities of modern digital culture. The Court noted that the facts presented by the plaintiff undoubtedly established his status as a celebrity. The Court relied on D.M. Entertainment Pvt. Ltd. v. Baby Gift House, wherein it was held that the right of publicity protects individuals against the unauthorised use of their personality, which includes their name, image, voice, and other distinctive attributes. The Court also recognised that such unauthorised use could lead to unearned commercial gain for another party, thereby infringing on the individual’s personality rights.
The Court applied this principle to the present case and stated that the alleged activities of some of the defendants, on a prima facie basis, resulted in commercial benefits through the unauthorised exploitation of the plaintiff’s personality. The defendants had utilised the plaintiff’s name, image, voice, and other unique characteristics without permission, infringing on his personality and publicity rights.
Defendant No. 2, an online store, stated they removed infringing listings and wouldn’t use the plaintiff’s attributes further. The plaintiff also raised objections against a video produced by Defendant No. 5, which compiles interviews with the plaintiff and adds elements like a photoshopped gold chain and sunglasses with the caption “Thug Life.” The plaintiff argued it portrays him derogatorily, with the term “Thug Life” associated with rebellion, and objected to monetising the video, which garnered 1.3 million views.
The Court examined the video titled “JACKIE SHROFF IS SAVAGE (*) JACKIE SHROFF THUG LIFE!” and noted that the term ‘Thug Life’ is commonly used in rap music and social media to denote resilience and toughness, often with humour. The video, comprising interview clips of Mr Shroff with added elements like ‘Thug Life’ captions, could be interpreted as a tribute to his assertive demeanour rather than a derogatory portrayal. Moreover, it aligns with meme culture’s celebration of boldness. The Court awaits Defendant No. 5’s response to the plaintiff’s allegation of tarnishing his reputation.
Additionally, the Court acknowledged the substantial viewership of such videos on YouTube, highlighting their popularity as humorous renditions of public figures’ interviews. These videos, akin to memes or parodies, contribute to a growing comedic genre on the platform and serve as a vital source of income for creators, particularly the youth. Restricting such creative expressions could have significant consequences, including stifling freedom of expression. Therefore, the Court refrained from granting an ex-parte ad-interim injunction against Defendant No. 5 until hearing their response.
However, Defendants Nos. 6 and 7 created videos with distortions and profane language that were prima facie prejudicial to the plaintiff’s reputation. While Defendant No. 7 removed the infringing video, Defendant No. 6’s video remained, distorting the plaintiff’s face and featuring profane language. The Court found these actions tarnishing the plaintiff’s reputation and granted an ad-interim injunction against them.
Further, the Court noted that Defendant No. 13 operated an unlicensed chatbot platform featuring a chatbot imitating the plaintiff’s responses, likely infringing on the plaintiff’s personality rights and warranting restraint. Defendant No. 14 sold wallpapers of the plaintiff, which prima facie violated the plaintiff’s personality rights.
Defendant No. 18, identified as John Does, was involved in hosting pornographic content using the plaintiff’s name and selling infringing merchandise. These actions were prejudicial to the plaintiff’s reputation and violated his personality rights, justifying an ex-parte ad interim injunction against them.
Considering the above, the Court stated that the plaintiff had established a prima facie case for an ex-parte injunction. The balance of convenience favoured the Plaintiff against Defendants Nos. 3-4, 6-7, 13, and 14, and failure to grant an injunction would result in irreparable harm to the plaintiff financially and in terms of dignity.
Hence, the Court restrained the defendants from infringing the plaintiff’s personality/publicity rights by utilising/exploiting/misappropriating the plaintiff’s name ‘JACKIE SHROFF” and other sobriquets, including “JACKIE” and “JAGGU DADA”, voice, image and for making downloadable wallpaper, creating distorting videos of the plaintiff which tarnishes his reputation 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 authorisation.
The Court further directed the Department of Telecommunications (DoT) and the Ministry of Electronics and Information Technology (MeitY) to issue necessary directions to telecom and internet service providers to block the infringing URLs/ links.
The legal action in this matter underscores the evolving landscape of intellectual property rights in the digital age, where public figures navigate complex challenges posed by online content creation and dissemination. Shroff’s case is pivotal in defining the boundaries between creative freedom and protecting individual rights in the digital sphere.
