On April 26th, 2023, the Hon’ble High Court of Delhi (hereinafter referred to as the “Hon’ble Court”) in its decision Digital Collectibles v. Galactus Funware, rejecting the Plaintiffs’ plea for an interim injunction, held that the use of celebrity names, images for the purposes of lampooning, satire, parodies, art, scholarship, music, academics, news and other similar uses would be protected speech and expression under Article 19(1)(a) of the Constitution of India and would not violate their publicity rights, and the same protection would extend to use of such information related to cricketers/athletes by ‘online fantasy sports’ (hereinafter referred to as the “OFS”) platforms.
In the present case, the Plaintiff No. 1 (hereinafter referred to as the “Plaintiff”), a Singapore-based company, Rario, operates through its websites and mobile apps where it provides an online platform for third-party users to buy, sell and trade officially licensed ‘Digital Player Cards’ of cricket players. The other plaintiffs (No. 2 to 6) are popular Indian cricketers who have licensed and authorized Rario to exclusively use, inter alia, their names, and photographs on its website. Rario uses its unique software code embedded in these cards for authenticity, by virtue of which these cards function as “Non-Fungible Tokens” (hereinafter referred to as the “NFTs”) which can be sold, purchased and traded for real money on Rario’s website.
Defendant No. 1 operates a business named “Mobile Premier League” (hereinafter referred to as the “MPL”). Defendant No. 2 runs a mobile application called “Striker,” which is featured on MPL. Together, they operate under the name “Striker Club” on their website and mobile app. Their business involves an online marketplace for third-party users to buy, sell, and trade Digital Player Cards, which include a player’s image and name/initials. Similar to the Plaintiff, the Defendants also use NFT technology to authenticate player cards on the Striker Website.
The Plaintiff filed a suit seeking a permanent injunction against the Defendants, alleging unlawful use of player marks and other attributes of Plaintiffs no. 2 to 6, which amounts 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.
However, the Defendants contended that the use of sportspersons’ names and images is a common and significant aspect of online fantasy sports games, both in India and globally. These games revolve around the actual performances of real-life players and events that occur on the field. Since fantasy games require the presence of all relevant players on the platform and their identification, it is necessary to include their names and images. The defendants submitted that such information used by them is fact-based and is available in the public domain, and hence is beyond the scope of personality rights of Plaintiffs No. 2 to 6. Moreover, Striker uses artwork of Defendants on its Digital Card Players and not the actual photographs. Further, the Defendants argued that they were not involved in purchasing, selling, or trading of NFT cards as mentioned in the suit. The NFT cards are merely an entry requirement for playing the Defendants’ OFS game. These Digital Player Cards cannot be used or traded outside of the Striker platform and are intended solely to enhance the user’s experience within the fantasy games.
The Hon’ble Court, dismissing the suit seeking interim relief, held that Plaintiff was unable to establish a cause for a temporary injunction against the Defendants. Further, the Hon’ble Court noted that since the defendants were direct competitors of Plaintiff in the OFS industry, the suit was not bona-fide and such an injunction would force the Defendants’ business to shut down and cause significant financial losses.
The Hon’ble Court, relying on the decision, D.M. Entertainment Pvt. Ltd. v. Baby Gift House and Ors., held that “use of celebrity names, images for the purposes of lampooning, satire, parodies, art, scholarship, music, academics, news and other similar uses would be permissible as facets of the right of freedom of speech and expression under Article 19(1)(a) of the Constitution of India and would not fall foul to the tort of infringement of the right of publicity.”
The Hon’ble Court observed that the player information used by the Defendants in their game was easily accessible to the public, especially the name of the players and data about their real-world match performances, and could be used by anyone without restriction. Therefore, the right of publicity cannot be infringed merely on the basis of a celebrity being identified or the defendant making commercial gain, and such public information cannot be exclusively licensed by the players in favour of a third party.
Further, the Hon’ble Court asserted that “The plaintiffs cannot claim to have an exclusive right over the use of an NFT technology. NFT is a technology that is freely available. The defendants used the NFT technology to ensure security and authenticity as a means of proof of ownership of its cards and to keep a record of transactions on a blockchain.” The Digital Player Cards used on Defendants’ platform did not suggest any kind of endorsement or affiliation with the player concerned, nor were they autographed or officially licensed by the players. Hence, the Hon’ble Court opined that a collector or a fan of a player would be less inclined to buy such a card as memorabilia when other NFTs using the actual photograph/video moments of sportspersons are available to purchase on the Plaintiff’s platform.
This decision has provided a much needed clarity with respect to the extent of celebrities’ publicity rights including the use of a celebrity’s name, image, and other distinctive attributes for commercial purposes, and the limitation of such rights with regard to freedom of speech and expression. This judgment offers reassurance to OFS platforms whose business model majorly relies on the usage of such information related to sportspersons for in-game features and enhanced user experience