A couple of months ago Kapil Dev, at the inauguration of the .Asia domain name, was quoted as saying as “Yes, I lost out on securing KapilDev.com and KapilDev.in for myself”. We were quite outraged by this sorry state of affairs and decided to explore the legal options available to this ace cricketer. Before actually going into the law we randomly investigated the ownership of a couple of celebrity websites such as www.amitabhbachchan.net, www.vluvshahrukh.com & www.diyamirza.org. All three sites have put up disclaimers that they are not official fan-sites and that they do not in any way have contact with the celebrity in question. A Whois database search confirmed that none of these websites were in the names of the celebrity or their fan clubs. Each of these websites also hosts several hundred advertisements for which they get paid by Google Adsense. Considering that these websites are top hits in a Google search I’m guessing these websites earn substantial Ad-revenue.
While it is very true that the celebrity in question may not even have a problem with such websites, the question remains as to what is the position of law if the celebrity wanted to regain control of the website – can he or she do so?
Well the answer is yes – celebrities can in fact regain control of domain names under the common law doctrine of ‘publicity rights’. The ‘publicity rights doctrine’ basically bestows upon a celebrity the right to control the manner in which his name is exploited either for commercial or non-commercial objectives. The rationale for this common law doctrine as outlined by this excellent paper is three fold: 1.) Economic rationale – It provides incentives to promote creativeness and achievement i.e. sportspersons sometimes earn more from celebrity endorsements of particular goods than from the sport itself. 2.) Consumer Protection Rationales for the doctrine – It protects consumers from buying goods that a particular celebrity has not endorsed for reasons ranging from poor quality to unethical business practices. & lastly 3.) The moral justification theory – i.e. a person should be allowed to reap the ‘fruits of his labour’ especially when celebrities (except for Paris Hilton) spend so much time, money and effort in building up their reputations and brands in the market.
As most of you must be know .com, .org, .net disputes are resolved through WIPO arbitrations under the Uniform Dispute Resolution Policy. In the last decade WIPO has arbitrated several such cases such as Julia Fiona Roberts v. Russell Boyd, Case No. D2000-0210 (WIPO, May 29, 2000), Patricia Ford and Online Creations Inc. v. Damir Kruzicevic Case No. D2001-0059 (WIPO, March 20, 2001) & Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, Case No. D2000-1415 (WIPO, January 23, 2001). One such case involving an Indian citizen - Mr. Ratan Tata is that of Tata Sons Ltd. v. Ramadasoft Case No. D2000-1713 (WIPO, February 8, 2001) In most of these cases celebrities such as Patricia Ford & Julia Roberts successfully regained their domain names. The three determining criteria used by the arbitration panel are 1. Whether there was a similarity in domain name & the celebrity name? 2. Whether the respondent (domain owner) had a legitimate interest in the use of that particular name 3. Whether there was bad-faith registration and use on the part of the respondent.
If the celebrity can argue these three points in their favour they will be able to regain control of that particular domain name. It is quite surprising that Indian celebrities have been so lax about their IP rights over the internet. Apart from the enormous commercial benefits that may accrue from the website it is also necessary to protect the domain names from being used for malicious or derogatory purposes.
For more on this area of law please click here and here for some interesting Indian papers and over here for some papers on the American position.
Well the answer is yes – celebrities can in fact regain control of domain names under the common law doctrine of ‘publicity rights’. The ‘publicity rights doctrine’ basically bestows upon a celebrity the right to control the manner in which his name is exploited either for commercial or non-commercial objectives. The rationale for this common law doctrine as outlined by this excellent paper is three fold: 1.) Economic rationale – It provides incentives to promote creativeness and achievement i.e. sportspersons sometimes earn more from celebrity endorsements of particular goods than from the sport itself. 2.) Consumer Protection Rationales for the doctrine – It protects consumers from buying goods that a particular celebrity has not endorsed for reasons ranging from poor quality to unethical business practices. & lastly 3.) The moral justification theory – i.e. a person should be allowed to reap the ‘fruits of his labour’ especially when celebrities (except for Paris Hilton) spend so much time, money and effort in building up their reputations and brands in the market.
As most of you must be know .com, .org, .net disputes are resolved through WIPO arbitrations under the Uniform Dispute Resolution Policy. In the last decade WIPO has arbitrated several such cases such as Julia Fiona Roberts v. Russell Boyd, Case No. D2000-0210 (WIPO, May 29, 2000), Patricia Ford and Online Creations Inc. v. Damir Kruzicevic Case No. D2001-0059 (WIPO, March 20, 2001) & Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, Case No. D2000-1415 (WIPO, January 23, 2001). One such case involving an Indian citizen - Mr. Ratan Tata is that of Tata Sons Ltd. v. Ramadasoft Case No. D2000-1713 (WIPO, February 8, 2001) In most of these cases celebrities such as Patricia Ford & Julia Roberts successfully regained their domain names. The three determining criteria used by the arbitration panel are 1. Whether there was a similarity in domain name & the celebrity name? 2. Whether the respondent (domain owner) had a legitimate interest in the use of that particular name 3. Whether there was bad-faith registration and use on the part of the respondent.
If the celebrity can argue these three points in their favour they will be able to regain control of that particular domain name. It is quite surprising that Indian celebrities have been so lax about their IP rights over the internet. Apart from the enormous commercial benefits that may accrue from the website it is also necessary to protect the domain names from being used for malicious or derogatory purposes.
For more on this area of law please click here and here for some interesting Indian papers and over here for some papers on the American position.
Prashant,
ReplyDeleteso u think that Paris Hilton does NOT spend time and efforts on her image? :-) ;-)
Brother, to create 'that/ such' image too, requires lot of efforts.