SANJEEV NARULA, J. (Oral):
I.A. 10961/2024 (u/Order XXXIX Rule 1 & 2 r/w Section 151 of the Code of Civil Procedure, 1908)
1. Mr. Jaikishan Kakubhai Shroff, (popularly known as Jackie Shroff), a well-known Indian actor, has instituted the present lawsuit seeking inter-alia protection of his own name, image, likeness, persona, voice and various other distinctive attributes of his personality against unauthorised and misuse over the internet.
2. The Plaintiff asserts that he is one of the most celebrated, acclaimed and successful actors in the Indian film industry, and has extensive appearance in over 220 films, multiple television shows and web series. He has endorsed a large variety of products & services and has appeared in several advertisements as well.
3. The details of films and serials in which the Plaintiff had acted are detailed in paragraph 11 to 18 of the plaint. Some of the Plaintiff's well- known films include 'Ram Lakhan', Tridev,' 'Devdas' and 'Parinda'. Plaintiff's contribution to cinema has been recognized and honoured with the Special Honour Jury Award at the Asianet Awards for outstanding contribution to Indian Cinema. The Plaintiff is also a recipient of the National Award - Hindi Cinema Gaurav Samman at Vigyan Bhawan in the year 2017 and around multiple Filmfare Awards as well.
4. Apart from his film career, the Plaintiff has invested considerable time, effort, labor, and skill to cultivate the goodwill and reputation associated with his name, "JACKIE SHROFF," within the entertainment industry. His prominent stature has been meticulously built over the years, extending beyond his on-screen roles to encompass his overall persona and
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brand. The Plaintiff is also the registered proprietor of the trademark 'BHIDU' under No. 3227968 in Class 25 (Ready-made garments, hosiery, articles of clothing shirts; jeans, cotton trouser, garments included in class-
25) and under No. 3227969 in Class 41 (Entertainment, Education, Providing of Training, Film Production, Sporting And Cultural Activities, Playschool, Nursery And Kindergarten School, Event Organization And Management included in Class 41). Further the Plaintiff is also the registered proprietor of the mark "Bhidu ka khopcha" under No. 4362494 in Class 41 (Education; Providing of Training; Entertainment; Sporting And Cultural Activities As Covered Under Class 41). The Plaintiff's Instagram handle is called @apnabhidu and Twitter handle (now X) handle is called @bindasbhidu.
5. The Plaintiff's commercial endorsements leverage his personality, name, voice, image, likeness, mannerisms, gestures, and other uniquely identifiable characteristics associated with him. These attributes, over which the Plaintiff exercises exclusive control, constitute his 'personality rights' and 'publicity rights.' The unauthorized use of these characteristics for commercial purposes not only infringes upon these rights but also dilutes the brand equity painstakingly built by the Plaintiff over the years. The Plaintiff, being a person of celebrity status, possesses 'Personality/Publicity Rights' over all facets of his persona. In this suit, the Plaintiff seeks protection of his personality rights, publicity rights, and various elements associated with his identity, including his name, voice, photograph, image, likeness, unique style of dialogue delivery, distinctive gestures, and mannerisms. These attributes collectively form the Plaintiff's public persona, and unauthorized use of any of these elements infringes upon the exclusive rights he holds
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over his identity.
6. The name "JACKIE SHROFF," being the personal name of the Plaintiff, is immediately and uniquely associated with him and no one else. This name carries substantial goodwill and an esteemed reputation, exclusively linked to the Plaintiff. Over the past 25 years, the Plaintiff has become a household name, not only in India but also globally. Apart from the above, it is contended that, the names 'Jackie', 'Jaggu Dada' and 'Bhidu' are associated exclusively with the Plaintiff and the unauthorized use of the same by third parties is likely to lead to confusion and deception. Furthermore, the personal name of Mr. Jackie Shroff is protectable as a trademark and being a personal name stands on a higher footing than the use of a trademark in relation to goods/services. Section 2(m) of the Trademarks Act, 1999 specifically includes 'name' in the definition of 'mark'.
7. The legal rights asserted by the Plaintiff in the present lawsuit are as broadly categorised under following heads:
A. Personality Rights/ Publicity rights
B. Copyright in photographs, literary, musical, artistic, dramatic works, sound recordings, cinematographic films etc in other associated works; The interests of famous personalities (such as the Plaintiff herein) is protectable under The Copyright Act, 1957 ['the Act'] as an extension of Moral Rights which inure to artists, in particular, Sections 38, 38A and 38B of the Act which grants performers the right to be given credit and claim authorship of their performance (the Right of Attribution). The corollary of this is equally true, i.e., performers have a negative right of restraining others from causing any kind of damage to their performance, which in turn damages their reputation (the Right of Integrity). The Plaintiff enjoys moral rights to
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prevent the mutilation, distortion or any other modification of his performances such that it maligns his reputation; C. Common law rights including the right to be protected against passing off, misappropriation and unfair competition.
D. Trademark infringement of their registered marks "BHIDU" under No. 3227968 in class 25 and under No. 3227969 in class 41 and of the mark
"Bhidu Ka Khopcha" under No. 436294 in class 41.
8. The lawsuit is brought against both identified and unidentified parties. The identified parties, arrayed as Defendants, are alleged to have committed the following illegal acts:
| S.No. |
Defendants |
Infringing Activities |
| 1. |
Defendant No. 1- The Peppy Store |
• sells wall art with animated images of the Plaintiff and other actors on the website https://thepeppystore.in/. |
| 2. |
Defendant No. 2- Frankly Retail Private Limited |
• sells merchandise featuring the Plaintiff’s images, animated images of the famous recipe of the Plaintiff of ‘Anda Kadipata’ that went viral on Instagram along with the word “Bhidu” associated solely with the Plaintiff on the website https://www.franklywearing.com/. |
| 3. |
Defendant No. 3- Ice Poster |
• Offers t-shirts and posters with the Plaintiff's photographs. |
| 4. |
Defendant No. 4- Inverted Mushrooms |
• Sells autographed posters of the Plaintiff. |
| 5. |
Defendant No. 5- Mr. Mahesh Keshwala |
• Mr. Mahesh Keshwala’s YouTube channel publishes derogatory compilations of the Plaintiff's interviews. |
| 6. |
Defendant No. 6- Kegg Gaming |
• Distorts videos of the Plaintiff to create misleading content. |
| 7. |
Defendant No. 7- Meme Archives |
• Overlays profane language on a video clip on Instagram. |
| 8. |
Defendant No. 8- Adict1893 |
• Adict1893” on YouTube publishes videos with morphed images of the |
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|
|
Plaintiff. |
| 9. |
Defendant No. 9- Bhidu Shawarma and Restaurant |
• Uses the registered Trademark “Bhidu” of the Plaintiff in its name. |
| 10. |
Defendant Nos. 10 and 11- Tenor Inc. and Giphy |
• Allow users to search for and share GIF files exploiting the Plaintiff's image, likeness, and name. |
| 11. |
Defendant No. 12- Abhishek Prabhu |
• Creates content using generative artificial intelligence (Gen AI) tools, exploiting the Plaintiff’s image and persona. |
| 12. |
Defendant No. 13- Reclation Technologies Pvt. Ltd |
• Hosts an unlicensed chatbot of the Plaintiff. |
| 13. |
Defendant Nos. 14 and 15- Zedge, Inc and Ringtone Park |
• Offer ringtones and wallpapers featuring the Plaintiff’s image without authorization. |
| 14. |
Defendant Nos. 16 and 17 - The Ministry of Electronics and Information and Technology and the Department of Technology |
• Proforma Defendants who have been impleaded only to facilitate the implementation of the orders of this Hon’ble Court |
| 15. |
Defendant No. 18- John Does |
• Presently unidentified but verily believed to be engaged in infringing activities which would fall within the scope of the present suit. |
9. The Court has carefully considered the submissions advanced by Mr. Parveen Anand and Mr. Dhruv Anand, representing the Plaintiff, as well as the arguments presented by the Counsel for the Defendants, as noted in the appearances above. Mr. Shroff claims ownership of Marathi Slang "Bhidu"
which means 'a close friend'. He asserts statutory rights over the said trademark by relying upon the registrations of mark "BHIDU" in class 25 (for ready-made garments, hosiery, articles of clothing shirts; jeans, cotton trouser, garments) and in class 41 (for Education; Providing of Training; Entertainment; Sporting and Cultural Activities) bearing registration nos. 3227968 and 3227969 and the mark "Bhidu Ka Khopcha" bearing
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registration no. 4362494 in class 41. He alleges that Defendant No.9's tradename as shown in the extracted image - " "
utilised for their restaurant amounts to trademark infringement. However, at this stage, the court need not express any view on this issue as Mr. Anand, has fairly stated that he is not pressing for an ex-parte injunction against the aforesaid Defendant.
10. It must also be noted that Mr. Anand has confined his relief for an ex- parte ad-interim injunction to specific Defendants. The targeted Defendants include Defendants Nos. 1-4, who are allegedly selling infringing merchandise; Defendants Nos. 5-7, who are allegedly involved in creating and publishing certain infringing videos; Defendant No. 13, who has allegedly created an unlicensed AI chatbot; Defendant No. 14, who is allegedly selling infringing wallpapers; and John Does (unidentified persons/entities) through whom the Plaintiff seeks to take down links selling merchandise and certain pornographic content using the name "Jackie Shroff." Mr. Anand further clarifies that although Defendants Nos. 1, 2, 4, 7, and 14 have already removed the infringing listings, their activities warrant an injunction to prevent any future infringement of the Plaintiff's rights.
11. Mr. Anand has relied upon several decisions from both foreign and Indian courts to support his argument that elements of a celebrity's
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personality, such as name, image, likeness, voice, and other attributes, are protectable elements, consistently recognized by our judicial system. A few relevant case laws on this issue are:
a) Zacchini v. Scripps-Howard Broadcasting Co;1
b) Ali v Playgiri.2
c) Downing v. Abercrombie & Fitch.3
d) Titan Industries Ltd. v. Ramkumar Jewellers.4
e) Amitabh Bachchan v. Rajat Nagi.5
f) Anil Kapoor V Simply Life India and Ors.6
g) D.M. Entertainment Pvt. Ltd. v Baby Gift House and Ors.7
12. The elaborate facts narrated in the plaint, briefly noted in this order, undoubtedly establish the Plaintiff's status as a celebrity. This status inherently grants the Plaintiff certain rights over his personality and associated attributes. The case law relied upon by Mr. Anand underscores the legal protections available to individuals in the Plaintiffs position. In particular, the case of D.M. Entertainment Pvt. Ltd. v. Baby Gift House & Ors. (supra) is highly relevant. In this case, the court explicitly 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 this principle to the present case, it 1 1977 SCC OnLine US SC 153
2 INC 447 F.Supp 723 (1978). 3 265 F. 3d 994 (9th Cir. 2001) 4 2012 SCC OnLine Del
5 2022 SCC OnLine Del 4110
6 CS(COMM) 652/2023
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becomes evident that the alleged activities of some of the Defendants have, on a prima facie basis, resulted in commercial benefits through the unauthorized exploitation of the Plaintiff's personality. Such Defendants have utilized the Plaintiff's name, image, voice, and other unique characteristics without permission, thereby infringing on his personality and publicity rights.
13. Defendant No. 1 is accused of selling wall art featuring animated images of the Plaintiff alongside other actors, available on their website- https://thepeppystore.in/. An illustration of the contentious art is extracted below for reference herein below:
14. Ms. Shikha Sachdeva, counsel for Defendant No. 1, appearing on advance notice, conveys her intention to contest the proceedings and to file a reply. Despite this intention, she confirms that the listing of the disputed product has already been removed from the website. Ms. Sachdeva further argues that while the artwork posted on their website may bear a likeness to 7 2010 SCC OnLine Del 4790
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the Plaintiff, it was created by the artist with significant time and effort. She contended that the Plaintiff should not have any objections to it, as it falls under the doctrine of fair use. Moreover, Ms. Sachdeva expresses surprise at the Mr. Shroff's objections, citing a 2018 Instagram video where the Plaintiff is seen meeting with the creator of the wall art and appears to appreciate and encourage their work. Ms. Sachdeva argues that this prior endorsement by the Plaintiff introduces a degree of ambiguity regarding his current objections. Ms. Sachdeva also emphasizes that granting the Plaintiff's prayer for an injunction would stifle artistic creativity and expression. She argued that such a decision could have a chilling effect on artists and creators who draw inspiration from public figures, ultimately harming the broader artistic community. Mr. Anand, representing the Plaintiff, challenges the authenticity and relevance of the Instagram video but agrees to clarify the Plaintiff's position on this matter to the Court. Nonetheless, pending further deliberation, Defendant No.1 is bound by the statement made above.
15. Defendant No. 2/ 'Frankly Wearing,' is an online e-commerce store - https://www.franklywearing.com/ selling merchandise using the Plaintiff's photograph and name. Counsel for Defendant No. 2, appears on advance service and states that they have taken down the infringing listings and do not intend to use the Plaintiff's name or photographs or other attributes of his personality rights. He states that he shall also file an undertaking to this effect before the next date of hearing. Defendant No.2 is also held to be bound by the statement made above.
16. Defendant No. 3/Ice Poster is an e-commerce website- https://www.iceposter.com/ selling t-shirts and posters using the Plaintiff's
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photographs and name. Defendant No. 4, Inverted Mushrooms, operates an e-commerce website- https://www.bidcurios.com/ selling autographed pictures of the Plaintiff. These activities of the Defendants are prima facie infringing of the Plaintiff's personality rights. This is evident from the fact that such activities indicate to the common public that the Plaintiff is endorsing the said products or is associated with the Defendants. Therefore, on a prima facie assessment, Plaintiff is entitled to an ad-interim injunction restraining said Defendants from sale of such merchandise infringing the Plaintiff's personality rights.
17. Mr. Shroff has particularly raised objections against a video (accessible at https://www.youtube.com/watch?v=xASc0k1U8EU) produced by Defendant No. 5, a YouTuber/content creator. The video in question compiles various interviews with Mr. Shroff, highlighting his responses, which is followed by a pause in the video, during which Mr. Shroff's face is prominently displayed with a photoshopped gold chain, sunglasses, and the caption 'Thug Life'.
18. Mr. Anand argues that the said video has been edited in a manner to portray the Plaintiff in a derogatory manner and the Defendant is seen commenting on each video in a contemptuous manner in the compilation of videos. He argues that words "Thug Life" mentioned is a phrase often associated with a rebellious or defiant attitude. He further argues that the sunglasses/caps/cigarettes/gold chains other animated images/gifs with the words "Thug Life" and other photoshopped elements, distorts Mr. Shroff's persona and infringes upon his personality rights. Mr. Anand emphasizes that the alterations and the incorporation of the term 'Thug Life' not only misrepresent Mr. Shroff, but also tarnish his reputation significantly. Mr.
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Anand also objects to the monetization through use of the said video, pointing out the whopping 1.3 million views that the infringing video has generated.
19. The Court has reviewed the video titled "JACKIE SHROFF IS SAVAGE (*) JACKIE SHROFF THUG LIFE!" The term 'Thug Life' as explained on dictionary.com, is a slang term and defined as "Especially in Black hip-hop culture, thug life refers to a determined and resilient attitude to succeed in life in spite of racism and injustice." A basic search on the internet would reveal that the term 'Thug Life' is commonly used in rap music, social media, and youth slang to denote a tough, resourceful persona. In this context the term "savage" generally refers to someone who is perceived as tough, fearless, and unapologetically bold. The term "Thug Life" is often featured in memes that portray individuals demonstrating boldness or audacity, always with an undertone of humour or defiance. The phrase is employed to highlight moments of cleverness or resistance, framing the individual as admirable rather than nefarious. In fact, a search of the term 'thug life' on YouTube would bring results of various such videos which prima facie indicate that the term is meant as a compliment and not a derogatory word. Given this understanding of the term, the video in question could arguably be viewed as a tribute to Mr. Shroff's assertive demeanour. The video compiles publicly available interview clips where Mr. Shroff is portrayed with forthrightness and wit. The additions made by the creator— such as the 'Thug Life' caption and accompanying visual embellishments— are intended to underscore Mr. Shroff's charismatic and assertive persona, aligning with the meme culture's characteristic celebration of such traits. Therefore, Mr. Anand's contention that the video casts Mr. Shroff in a
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derogatory light may not align with the broader, more contemporary understanding and use of the term 'Thug Life' in popular culture. The portrayal does not introduce any falsehoods; rather, it embellishes the existing public perception of Mr. Shroff as a formidable and commendable figure. Thus, the court would like to hear the Defendant No. 5's response on the same as the Plaintiff's allegation that the video tarnishes his reputation requires further scrutiny.
20. At this juncture, it is also imperative to recognize that the video in question has garnered substantial viewership on YouTube, underscoring its popularity as a humorous rendition of Mr. Shroff's interviews. The format, akin to a meme, spoof, or parody, is part of a burgeoning comedic genre that leverages the cultural resonance of public figures to create engaging content. YouTubers8are a growing community, and the substantial viewership of these videos translate into significant revenue for the creators, underscoring that such content is not merely entertainment but also a vital source of livelihood for a considerable segment, particularly, the youth.
21. These videos represent a form of artistic expression that requires creators to engage thoughtfully with their content. This involves researching target demographics, curating videos anticipated to resonate with audiences, and editing a diverse array of available content into a cohesive and entertaining package. Consequently, this creative process can be seen as generating not only economic value but also employment opportunities for a significant number of young individuals. Restricting such creative expressions by enjoining Defendant No. 5 from producing similar videos or
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blocking these videos might have far-reaching consequences for this vibrant community. More critically, it 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.
22. Therefore, in considering the relief sought by the Plaintiff against Defendant No. 5, this Court considers it is essential to balance the legitimate interests of Defendant No. 5 in artistic and economic expression against the Plaintiff's rights to personality, publicity, and moral integrity. Thus, the court would like to have the response from the Defendant No. 5 before expressing its view on this issue. Therefore, at this stage, the Court is not inclined to order an ex-parte ad-interim injunction in favour of the Plaintiff and against Defendant No.5.
23. Defendant No. 6 and 7 are creators of videos with distortions and the same are prima-facie prejudicial to the Plaintiff's reputation. The video published by Defendant No. 6 distorts the face of the Plaintiff and it is made to appear that the Plaintiff is singing a song. There is use of profane language used and the video is prima-facie prejudicial to the Plaintiff's reputation. While Defendant No. 7 has taken down the alleged infringing video, Mr. Anand has pressed for an ad-interim injunction. It is averred that Defendant No. 7 has posted a video clip of the Plaintiff and overlayed it with audio which contained extremely profane words and abuses. The same prima-facie tarnishes the reputation of the Plaintiff. Therefore, the Plaintiff is entitled to relief of ad-interim injunction against such Defendants.
24. Defendant No. 13 operates an AI chatbot platform wherein an unlicensed chatbot of the Plaintiff is hosted. Users can 'chat' with the chatbot which responds as the Plaintiff would. On a prima-facie view the
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same is violating the Plaintiff's personality rights and there are also liable to be restrained.
25. Defendant No. 14 is engaged in selling wallpapers of the Plaintiff. As evident from the and are prima-facie violative of the Plaintiff's Personality rights.
26. Defendant No. 18 are unidentified persons and are impleaded as John Does seeking taking down of links which are pornographic in nature and use the Plaintiff's name in the said links. That apart, Plaintiff also seeks taking down of listings of infringing merchandise as available for sale on the impugned links. The said material is prima-facie prejudicial to the Plaintiff's reputation and violates his personality rights. Therefore, the Plaintiff is entitled to an ex-parte ad-interim injunction against such defendants.
27. In view of the above, the Plaintiff has established a prima facie case for grant of an ex-parte injunction. Balance of convenience lies in his favour and against the Defendants Nos. 3-4, 6-7, 13 and 14. 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.
28. Accordingly, till the next date of hearing- a. Defendant Nos 1 and 2 are held bound by the statements made by their respective counsels. Defendant Nos. 3-4 and/or persons claiming through them, are restrained from infringing the Plaintiff's personality/publicity rights by utilizing/exploiting/misappropriating the Plaintiff's (a) name 'JACKIE SHROFF" and other sobriquets including
"JACKIE", "JAGGU DADA", (b) voice; (c) image; for any commercial purpose without the Plaintiff's consent and/or authorization. b. Defendant Nos. 6-7- and/or persons claiming through them are
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restrained from infringing the Plaintiff's personality/publicity rights by distorting videos of the Plaintiff which tarnishes the reputation of the Plaintiff and violates his moral rights for any commercial purpose, without the Plaintiff's consent and/or authorization.
c. Defendant No. 13 and/or persons claiming through it from infringing the Plaintiff's personality/publicity rights by commercially using an unlicensed Al chatbot that uses attributes of the Plaintiff's persona without the Plaintiff's consent and/or authorization, including on formats and mediums like the Artificial Intelligence.
d. Defendant No. 14 and/or persons claiming through it are restrained from infringing the Plaintiff's personality/publicity rights by utilizing/exploiting/misappropriating the Plaintiff's (a) name 'JACKIE SHROFF' and other sobriquets including "JACKIE", 'JAGGU DADA' and
(b) image for making available for download a wallpaper for any commercial purpose in any manner whatsoever without the Plaintiff's consent and/or authorization.
e. Defendant No. 16/ Department of Telecommunications (DoT) and Defendant No. 17/the Ministry of Electronics and Information Technology (MeitY) are directed to issue necessary directions to the telecom service providers and internet service providers to the block the infringing URLs/ links, which are mentioned in Annexure attached to this order (Annexure-A) of this order.
29. Compliance of Order XXXIX Rule 3 of the Code of Civil Procedure, 1908 be done within one week from today.
30. Issue notice. Counsel for Defendants mentioned in the appearance above, accept notice. Reply, if any, be filed within four weeks from today.
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31. Upon filing of process fee, issue notice to the remaining Defendants, by all permissible modes, returnable on the next date of hearing. Reply, if any, be filed by the said Defendants within four weeks from the date of service. Rejoinder thereto, if any, be filed within two weeks thereafter.
32. List before Court on 15thOctober, 2024.
CS(COMM) 389/2024
33. List before the Joint Registrar for marking of exhibits on 07thAugust,
2024.
34. List before the Court thereafter.
SANJEEV NARULA, J
MAY 15, 2024
nk
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