Case Summary and Outcome

The High Court of Delhi delivered a judgment in a case involving Digital Collectibles, a Singapore-based company operating under the brand “Rario,” and Galactus Funware Technology, trading as “Mobile Premier League” (MPL). The central issue revolved around the use of sportspersons’ names and images to create Digital Player Cards and whether this constituted a violation of the plaintiff’s right to publicity or fell within the defendants’ freedom of expression. The Court extensively analyzed both foreign and Indian jurisprudence on the right of publicity, highlighting that publicly accessible information about celebrities or sportspersons, including names and performance data, could not be exclusively licensed and was not subject to infringement claims. Additionally, the Court emphasized the protection of transformative and creative elements in artworks, concluding that the defendant’s use of such elements was within the purview of freedom of speech and expression. The Court also noted that the trading of Digital Player Cards was influenced by various factors, not solely dependent on player personas. Ultimately, the Court declined to grant an interim injunction against the defendants, upholding the primacy of freedom of speech and expression in this context.

Facts

Digital Collectibles (Plaintiff No. 1) is a Singapore-based company, that operates its business globally, including in India, under the brand name “Rario” primarily through its website and mobile applications. The company’s main focus is on running an online marketplace where users can buy, sell, and trade officially licensed “Digital Player Cards” featuring cricketers. [p. 18.1] These cards function as “Non-Funglible Tokens.” [p. 18.3] The other plaintiffs who are well-known Indian cricketers, have granted Digital Collectibles the exclusive right to use their names, photographs, and other aspects of their personalities, known as “Player Attributes,” on the Rario Website through Player Services Agreements. [p. 18.2] Digital Collectibles had made a substantial investment, amounting to Rs. 1,48,32,35,589/- (or USD 18,092,044) in the previous year alone, to acquire exclusive licenses and authorizations from Plaintiffs No. 2 to 6. [p. 18.6]

Galactus Funware Technology (Defendant No. 1) operates under the name “Mobile Premier League” (MPL), and Defendant No. 2 runs the “Striker” mobile application listed on MPL. Both defendants conduct business under the trade name “Striker Club” on their website and mobile app. They operate an online marketplace, the Striker Website, for buying, selling, and trading Digital Player Cards that include player images and names/initials. [p. 18.7] Like Plaintiff No. 1, the defendants use NFT technology to authenticate player cards. However, unlike Plaintiff No. 1, the defendants do not have authorization from Plaintiffs No. 2 to 6 to use their names and images. Nonetheless, they use Digital Player Cards with NFTs, featuring artistic drawings of Plaintiffs No. 2 to 6 along with their names. The value of the digital art collectibles/NFTs on the Striker Website primarily stems from the players’ names, likeness, and personalities rather than the artistic content of the images. [p. 18.9]

Therefore, the plaintiffs filed the present suit against the defendants on account of unlawful use of player marks and other attributes of plaintiffs no. 2 to 6, which amounted to (i) unfair competition (including passing off); (ii) unjust enrichment; (iii) tortious or unlawful interference with economic interest of the plaintiffs; and, (iv) breach of personality rights of plaintiffs no.2 to 6. [p. 19.9] They contended that publicity rights formed an important facet of the right to privacy and that the players had a right to monetize their personality. [p. 22.2] The plaintiffs opposed the sale and trade of NFTs available on Striker’s website and mobile applications, which involved the use of players’ names, images, and other attributes. They assert that users had the option to directly trade or sell the NFT Player Card which would hurt the economic interests of the players. [p. 22.4-22.9]

The defendants contended that the material used by them for its Online Fantasy Sports (OFS) ‘Striker’ was available in the public domain and was therefore, beyond the scope of the personality rights of the players. [p. 21.2] The defendants’ contention was that the plaintiff’s case was based on a misconception, as they believe there was no requirement for an entity to obtain consent or authorization from individual sportspersons to use facts, information, images, and other materials necessary to identify players for playing games on OFS platforms. [p. 21.3)] According to the defendants, fantasy games relied on the inclusion of all players, and there was no intention to give the impression that any specific player endorsed their fantasy game. [p. 21.5] The defendants emphasized that their OFS platform utilized the names, images, and information of all potential players, making it evident that no individual player was endorsing it. [p. 21.6] The defendants further argued that according to Indian law, a celebrity’s right to publicity was acknowledged for commercial exploitation of their personal attributes only to prevent false endorsements and advertisements. [p. 24.1] According to them, this right did not cover facts or information about the celebrity that was neither personal nor private. The defendants asserted that Striker had the right, under Article 19(1)(a) (right to freedom of speech and expression) of the Constitution of India, to utilize the aforementioned information for commercial purposes. [p. 24.2]

All India Gaming Federation (the intervenor) submitted that “right of publicity” did not have any statutory recognition in India [p. 25.1] and that since there was no claim of a card being officially licensed by a player, there could not be any infringement of the personality rights of the player. [p. 25.5] They contended that “right to publicity” was not a part of the “right to privacy.” [p. 25.7] WinZo Games Pvt. Ltd. (the other intervenor) submitted that the sports companies had freedom of expression under Article 19(1)(a) of the Indian Constitution and that it should not be curtailed unnecessarily. [p. 26.1]

Decision Overview

Judge Amit Bansal of the Delhi High Court delivered a judgment in a case that revolved around the central issue of whether the use of sportspersons’ names and images to create Digital Player Cards constituted a violation of the plaintiff’s right to publicity or if it fell within the ambit of the defendants’ freedom of expression.

The Court commenced its analysis by delving into both foreign and Indian jurisprudence, particularly in relation to the right of publicity. The Court discussed various U.S. cases cited by the plaintiffs, such as Haelan Labs., Inc. v. Topps Chewing Gum, (1953), Motschenbacher v. R. J. Reynolds Tobacco Co., (1974) and Midler v. Ford Motor Co., (1988). It observed that these cases primarily dealt with situations involving wrongful endorsements or false impressions created by the use of sportspersons’ or celebrities’ personas, a scenario distinct from the case at hand. [p. 29-32]

On the contrary, the Court also considered U.S. cases cited by the defendants, including C.B.C. Distrib. & Mktg. v. Major League Baseball Advanced, (2007) and Daniels v. Fan Duel. Inc., (2018), which upheld the notion that information used in fantasy games, readily available in the public domain, was protected under the First Amendment of the U.S. Constitution. [p. 33] These cases emphasized the protection of online fantasy sports operators’ rights to use sportspersons’ names, pictures, and statistics without requiring their consent. [p. 35] Furthermore, the Court highlighted that these judgments clarified that the use of such information did not create a misleading impression of player endorsement, asserting the primacy of the constitutional right to free speech over any statutory recognition of the right to publicity. [p. 36]

The Court succinctly summarized key observations from U.S. jurisprudence, elucidating that U.S. judges had consistently established the subservience of the right of publicity to the First Amendment, ensuring protection for all publicly available information about celebrities or sportspersons, including their names, images, and performance statistics. It was underscored that the use of celebrity names, caricatures, parodies, and other similar elements was well within the purview of the First Amendment. Additionally, if a substantial creative element was introduced into a celebrity’s identity, it was deemed a permissive use and not a violation of the right of publicity. Furthermore, the right to publicity in the U.S. was primarily seen as a means to prevent the misappropriation of economic value generated by a celebrity’s fame. [p. 41] 

The Court then proceeded to scrutinize Indian cases pertaining to the right of publicity. Notably, the Court referenced ICC Development v. ARVEE Enterprises, (2003), where it was acknowledged that the right of publicity vested in an individual who alone was entitled to profit from it. Nevertheless, the judgment lacked a definitive delineation of the scope and limitations of this right. Importantly, the ICC case concerned the rights of organizers rather than individual players, distinguishing it from the present case. [p. 42-43] Furthermore, the Court examined D.M. Entertainment Pvt. Ltd. v. Baby Gift House, (2010), a case involving the sale of dolls resembling the famous singer Daler Mehndi. While recognizing an individual’s right of publicity, the judgment asserted that this right was not absolute and needed to be weighed against the right to freedom of speech enshrined under Article 19(1)(a) of the Constitution. Caricature, lampooning, and parodies were explicitly identified as non-infringing expressions. The Court also referenced K. S. Puttaswamy v. Union of India, (2017), to establish that, in the absence of specific legislation, the right to publicity in India was not absolute and had to be balanced with the right to freedom of speech and expression. [p. 45-53]

Applying the principles derived from these cases to the specific circumstances of the case before it, the Court arrived at the following conclusions:

First, the Court determined that the information used by the defendants, including player names and real-world match performance data, was publicly accessible, and no private details were incorporated, such as height and weight. The Court emphasized that publicly available information could not be exclusively licensed by players to third parties, as it belonged to the public domain, including the players themselves. Consequently, the Court held that the commercial exploitation of such publicly available facts by a third party did not give rise to any actionable right in favor of the plaintiffs. [p. 63-64]

Second, the Court noted that the defendants did not employ actual images of the players but rather used artworks created by them. These artworks were found to possess creative elements that set them apart from the players’ actual images. The Court drew parallels with Winter v. DC Comics, (2003) and Cardtoons L.C. v. Major League Baseball Players Ass’n, (1993). In the former case, the Supreme Court of California held that a work incorporating significant transformative elements or creative contributions became the defendant’s own expression rather than a mere likeness of the celebrity, thereby warranting protection under the First Amendment. In the latter case, the use of transformative elements and artistic contributions in the player cards was likened to caricature, rendering it permissible. In light of these precedents, the Court concluded that the artworks of the players were protected under Article 19(1)(a) of the Constitution of India. [p. 65-66] 

Third, the Court observed that the plaintiffs themselves acknowledged the absence of exclusive rights over players’ names, photographs, and performance statistics in a regular Online Fantasy Sports (OFS) game. Their concerns primarily centered around the use of NFT-enabled Digital Player Cards that were tradable. [p. 67-68] The Court noted that the primary purpose of Digital Player Cards on the Striker platform was for OFS gameplay, with the trading feature introduced to enhance user experience while retaining the platform’s core nature as an OFS platform. Consequently, the Court held that if the name or image of a player could be used in an ordinary OFS game for descriptive or nominative purposes, there was no reason why the same could not apply to Digital Player Cards. [p. 70]

Fourth, the Court dismissed the plaintiffs’ claims that the defendants were capitalizing on the plaintiffs’ personality rights. The plaintiffs alleged that defendant no. 2 utilized sportspersons’ names and artworks on NFT-enabled Digital Player Cards without proper authorization, leading to the trading of these cards at high prices and the defendant earning commissions. The Court rejected this contention, asserting that the price of a Digital Player Card was influenced by various factors, including card rarity, player performance, game-related features (XP and HP), and market demand and supply, rather than solely hinging on the player’s persona. [p. 71-72]

Finally, by analyzing the “disclaimer” on the Rario website, the Court ascertained that the defendants did not claim to be selling or trading officially licensed player cards, video moments, or cricket artifacts. The Court noted that Digital Player Cards were accessible for all current players available for selection, and the defendants did not assert any endorsement from a player or promote their game based on a player’s personality. [p. 77-78]

In conclusion, the Court opined that the use of celebrity names and images for purposes such as lampooning, satire, parodies, art, scholarship, music, academics, news, and other similar uses was permissible as facets of the right of freedom of speech and expression under Article 19(1)(a) of the Constitution of India and did not constitute an infringement of the right of publicity. Accordingly, the Court declined to grant an interim injunction against the defendants.