COMODITIZING PERSONALITIES: A LEGAL PERSPECTIVE INTO THE CONCEPTS OF “CHARACTER AND PERSONALITY MERC
“In today’s media landscape, content has been commoditized and audience is the new currency”, a highly condemnatory phrase by Brendan Gahan is capable of analogizing the current notions of “character” and “personality” merchandizing in India. Character Merchandising has transformed into one of the most valued ‘marketing techniques” in the growing space of “bottleneck advertising”, aimed at creating the largest market royalty through consumer association. Character merchandising is define
d as the adaptation or secondary exploitation by the creator of the fictional character or by one or several authorized third parties. This exploitation is in relation to the essential personality features of the character such as name, image or appearance and is done to create an association between the products and such personality traits so as to create a desire in the minds of the customers to acquire such product or avail such service because of customer’s attachment with the character. Though the courts of various countries have recognized the right to protect the commercial value of a character, Indian courts are still struggling to prevent the unauthorized use of a character and its hard earned reputation. While the origin of this concept remains unknown, its historical development can be traced to the time when Walt Disney Studios began licensing their illustrious characters in 1930s , in order to profit from the undisputed popularity their characters had attained across the globe. However, with transformation of the entertainment industry, character merchandizing has subsumed the use of crucial traits of non-fictional characters to attain consumer attention. The growth of a brand in today’s era relies a great deal on creating and maintaining an ‘image’ in the public domain and investment in ‘image management’ is an essential part of content based industry .
The panorama of brand promotion has now evolved to include the highly controversial concept of “personality merchandising”, which is defined as commercially appropriating the persona to promote and sell almost anything with the name of the personality put on them in a decorative manner, subject to approval by the personality. This includes the practice of affiliating various goods and services with a famous personality in order to achieve consumer loyalty. Moreover, the modern proposition of a “famous personality” is no longer limited to a “public figure” but has transformed into a source of commodity, capable of being monetized. However, the merchandising of personalities guarantees its holder the ability to control how his personality is being commercialized. A classic example of personality merchandising is Shahrukh Khan, a legendary Indian actor who secured trade mark registrations for his signature mark ‘SRK’ in numerous classes and as on date, holds twelve registration in his name.
A rather unique fragment of character marketing includes “image merchandising” which is a conglomerate of merchandising of fictional characters along with the most important aspects of the source of their origin. For example, a product showcasing the appearance and wand of Harry Potter or the knife scene in Crocodile Dundee would fall under the category of image merchandising. However, while the spurge of instances involving character merchandising seem unprecedented, the same involves a large number of legal complications.
The convergence of these concepts with the intellectual property terrain in India is inexorable. The Indian Trade Marks Act, 1999 explicitly deals with the various things which are capable of being registered. It states, inter alia, that personal names, designs and the packaging of goods can be registered as trademarks. Indian courts have upheld the registration of character names as trademarks – the best example being the case of Sholay Media vs. Parag M Sanghavi, in which the court prevented the defendant from using plaintiff’s trademarks including the words “Sholay” and “Gabbar Singh”. While recognizing the cult status achieved by the antagonist in the said movie, the court affirmed that any unauthorized reference to this character shall amount to an infringement of the holder’s rights. In another recent dispute involving the legal nuances of the evolving concept of personality merchandizing, Katrina Kaif filed a suit against a public hygiene company alleging transgression of publicity rights, and the Bombay High Court granted an order restraining the company from using the advertisement which was the subject matter of the dispute. In another landmark case involving Daler Mehndi, a well-known popstar in India wherein the defendant was selling dolls representing the star, the court took held that that Mr. Mehndi’s persona was improperly used by the defendants in the dolls and that this misled consumers into believing that the dolls were endorsed by Mr. Mehndi. The court further stated that such commercial exploitation caused significant losses to the plaintiff and held the defendant liable for passing off.
Moreover, the Indian Copyright Act also provides protection and exclusivity for an individual to authorize the reproduction of a work into another form, such as the conversion of a 2-dimensional work into a 3-dimensional form. The same has enabled the burgeoning of merchandises such as toys, books etc. pertaining to well-known characters and personalities. However, in a bid to buy the cheapest available merchandise, consumers are often deceived by counterfeits which contribute to the growth of counterfeiting across the globe. While some of the issues revolving around the legal challenges pertaining to the expansion of character and personality merchandising are capable of being dealt with the existing legal statutes, there exists an inevitable need to prevent overlapping of conflicting norms which inhibit the growth of this industry and to put in place clear guidelines that would promote the progress of this innovative form of marketing.
While the concepts of character and personality merchandising are relatively contemporary, they have achieved remarkable acceptance from consumers , leading brands to rely more on these dynamic forms of marketing. However, in order to enable their unhindered growth, laws are required to develop across the country to keep pace with the dynamic nature of these concepts in order to prevent exploitation and unauthorized use. Moreover, with the recent addition of “Right to Life” to include within its ambit the “Right to Privacy”, it is integral for the Indian legal scenario to promulgate effective legislations in order to prevent intrusion into the privacy of an individual under the garb of “personality merchandising” of non-fictional characters.
 Wipo, Report on Character Merchandising (World Intellectual Property Organisation., Geneva, 1994).
 Private Ownership of Public Image: Popular Culture and Publicity Rights, Michael Madow , California Law Review 1993.81 Calif. L. Rev. 125
 223 (2015) DLT 152
 D.M. Entertainment Pvt. Ltd. Vs. Baby Gift House MANU/DE/2043/2010
The article was originally published on www.lexology.com on March 26, 2020 and can be accessed here.