The DHC’s recent ex parte ad interim injunction in favour of the makers of famed Indian sitcom “Taarak Mehta ka Ooltah Chashma” opens up multitude of questions on copyright over fictional characters and ownership of attributes of characters by the producers of the show. Discussing these aspects, SpicyIP intern Samridhi Chugh writes on the order below. Samridhi is a final-year student at the Campus Law Centre, Faculty of Law, University of Delhi, and a graduate in Journalism from Lady Shri Ram College for Women. With a passion for the dynamic intersection of law, media and technology, she is particularly interested in exploring intellectual property and tech policy. Her previous post can be accessed here.
John Doe Order Issued Against “Taarak Mehta” Infringers: Revisiting the Rights Vested in Fictional Characters
By Samridhi Chugh
On August 14, the Delhi High Court, in a significant order in Neela Film Productions Private Limited v. Taarakmehtakaooltahchashmah.Com & Ors. (”Neela Film”), issued an ex-parte ad-interim injunction against the defendants, including websites, e-commerce platforms, YouTube channels and ‘John Doe’ parties, restraining them from infringing the copyright and trademark of the makers of the popular Hindi television sitcom “Taarak Mehta Ka Oolta Chashma” (“TMKOC”). The case, on the whole, is emblematic of the novel modes of infringement that have fast-erupted in the age of the internet. However, its specific emphasis on protecting certain elements of the whole scheme of copyrighted content, such as fictional characters and the distinctive personas they embody, has been a focal point, contributing substantially to the discourse surrounding the ever-expanding ambit of copyrightability as well as personality rights.
TMKOC’s Battle against Online Infringement
The facts in the instant case followed an interesting, but ubiquitous, pattern of online copyright infringement. The plaintiffs, Neela Film Productions, alleged the infringement of the statutory and common law rights accruing from the content of their show, TMKOC, including, but not limited to, the character names, mannerisms, dialogues, style, overall look, animations and other distinctive elements. The defendants were accused of misappropriating the rights of the plaintiff in the show’s content, format, and, most pertinently, the image, likeness and persona of the featured characters, protected under Section 13 of the Copyright Act, 1957, by using it unauthorisedly on various websites and other forms of digital media and merchandise, for commercial benefit. Further, it was alleged that they were diluting and tarnishing the brand by publishing AI-generated deepfake content using the said characters image and appearance across online platforms, including pornographic websites, which, the plaintiff argued, was detrimental to the overall reputation and goodwill amassed by the show over the years.
Strikingly, the plaintiff also relied on the landmark verdict in Anil Kapoor v. Simply Life India (2023) (“Anil Kapoor”) (in paragraph 53), wherein the Court, had ruled in favour of safeguarding the distinct personality rights of celebrities, including the rights of endorsement and privacy, against widespread online exploitation and unauthorised commercial use. The Court, in that order, had specifically highlighted the risks posed by AI-based deepfake and facial distortion technology, which can aid derogatory forms of infringement and facilitate the grim unauthorised portrayals of celebrities over pornographic websites, with the effect of diluting and tarnishing their persona.
This reference, while not technically alluding to the rights of a particular celebrity in the present case, was well-accepted as one of the grounds for the grant of injunction. As per the plaintiff, the precedent was relevant in the context of their rights over the iconic and easily recognisable characters, which were being deprecated by the defendants in the various aforementioned ways.
By way of the injunction, the defendants, their associates and other parties, acting on their behalf, were interdicted from broadcasting or distributing any content, including the show’s title, characters, format and any underlying material as well as sale of goods or services, infringing upon the plaintiff’s copyrighted material or registered trademarks related to TMKOC. The Court specifically ordered the take down of infringing content, including YouTube videos as well as the impugned sexually explicit material, within 48 hours of the passage of the order.
Copyright Protection and Fictional Characters
The subject of copyright protection to fictional characters is far from new. While statutory law is generally silent about the specific protectability of fictitious figures, characters and symbolisms, per se, legal interpretation across jurisdictions has read all such creative manifestations of human imagination as a part of the wide purview of protectable creative material.
In the US, the concept began to gain ground through cases such as Nichols v. Universal Pictures Corp. (1930), which laid down the “Character Delineation Test”, and Warner Bros. Pictures v. Columbia Broadcasting System (1954) which introduced the “Story Being Told” test, tying protection to the independent development and centrality of the characters vis à vis the larger storyline. Further, the recent English case of Shazam Productions Ltd. v. Only Fools the Dining Experience Ltd. (2022), the Court held fictional characters to be copyrightable, if they met the test of identifiability and originality, protecting “Del Boy” in the sitcom “Only Fools and Horses.”
In India, while fictional characters, as stated above, are not categorically enlisted within the statutory definition of “works” under Section 13, this definition has been judicially expanded over the years (covered previously here). The courts laid the early groundwork for the concept through decisions in V.T. Thomas v. Malayala Manorama (1987), Raja Pocket Books v. Radha Pocket Books (1996) and Star India Private Limited v. Leo Burnett (India) Private Limited (2003), which established an implied recognition of such a protection, and further expressly extended it to characters in comic books, such as “Nagraj,” and TV serials, against commercial misuse. Recently, the Bombay High Court, even while denying relief against the alleged infringement of the character “Chulbul Pandey,” recognised the copyrightability of “fully developed and uniquely depicted” fictional characters as a “general principle.” Similarly, the Delhi High Court in 2018, highlighted the need to protect commercially valuable characters, such as Disney’s “Lightning McQueen,” from unauthorised merchandising.
While the judicial lack of consistency in applicable standards to ascertain character infringement has already been pointed out by practitioners, the concurrent evolution of the concept of “copymark”, a hybrid of rights flowing from copyright and trademark laws, has promised increased protection to fictional characters if they successfully meet Schienke’s four-point criterion—they must originate from a copyrighted work, be in commercially use, for at least five years, and be famous enough to qualify for protection.
The Personality Rights Conundrum
The issue of personality rights, however, leads us to a slightly trickier terrain. Flowing from the overarching guarantees under the common law umbrella, the bundle of personality or publicity rights serves as a subset of property rights protecting individual identity—whether it be the name, voice, image, likeness or any distinct mannerism—from unwarranted commercial useThese proprietary rights also include the right to privacy which enables the said individual to control the extent of public access to their image or persona.
Globally, these rights are codified in statutes like the Lanham Act in the US, but, in India, they mainly arise from the constitutional right to privacy under Article 21, and as extensions to the moral rights of performers enshrined under Sections 38, 38A and 38B of the Copyright Act. The scope of these rights has been further developed judicially by an array of observations and pronouncements, starting with D.M. Entertainment Pvt. Ltd. v. Baby Gift House & Ors. (2010), in which the Court upheld singer Daler Mehndi’s right to protect his public image, voice and appearance against unauthorised commercial use. Gradually, judicial appreciation for these rights has enhanced from Arun Jaitley v. Network Solutions Private Limited (2011), a rare decision of the time on personality rights and cybersquatting, to the recent slew of orders in Amitabh Bachchan v. Rajat Nagi & Ors. (2022) and Anil Kapoor, in which the Court took cognisance of these rights amidst emerging technological threats. However, most recently, the Court in Jaikishan Kakubhai Saraf Alias Jackie Shroff v. The Peppy Store & Ors. (2024) (“Jackie Shroff”), emphasised the need to balance “legitimate artistic and economic expression” with the celebrity’s “rights to personality, publicity, and moral integrity.”
Conventionally, courts in India have been rather sceptical of expanding the contours of personality rights to include the realm of fiction or fictional entities. The Delhi High Court in ICC Development (International) Ltd. v. Arvee Enterprises and Ors. (2003) ruled against granting non-living entities personality or publicity rights, holding that while on one hand these entities do not fall within the meaning of the term ‘persona’, which, literally, refers to an “individual human being,” on the other, they do enjoy separate legal protections against unauthorised use or misappropriation, under various IP and competition legislations.
Similarly, as also highlighted earlier, while the courts have acknowledged the inherent commercial rights of well-known characters, such as Donald Duck, Winnie the Pooh and Mickey Mouse, within the traditional IP realm, they have refrained from explicitly addressing the vesting of any personality rights specific to their existence. However, as highlighted here, while rights over characters do not exclusively belong to a single person, publicity or personality rights may be capable of extending to fictional characters, when the character’s portrait itself is, or comes to be, intricately tied around the actors and the image they retain while portraying it.
Conspicuous Shift in Paradigm – The Present Order
It is in the above larger context, marred with a certain lack of clarity, that the relevance of the High Court’s comparatively short 25-page order in Neela Film gains prominence.
On one hand, the Court seems to have reiterated the long-standing emphasis on expanding the broad IP canopy, by recognising the plaintiff’s copyright and trademark rights vested in TMKOC’s well-known characters, among the other distinctive elements critical to the sitcom’s central theme. By issuing the broad-based injunction, the Court, without having said much at all, clearly seems to have caught sight of the multiple ways the defendants were misappropriating and diluting the reputation inherent in these characters, as well as the many unpredictable forms in which this could take place by unidentified entities in future.
On the other hand, it is evident that this order has laid the stone for a potential paradigm shift by recognising the personalities intrinsic to character depictions. The plaintiff’s reference to Anil Kapoor, with a focus on the threats posed by deepfake technology, certainly helped build a stronger case for the extension of personality-centred protection to fictional characters, which has so far been seen as an exclusive celebrity bastion. The Court, placing heavy reliance upon this reference in passing a favourable order, seems to have validated the argument.
What is noteworthy, to begin with, is that the order goes in stark contrast to the decisions rendered in both Anil Kapoor and Jackie Shroff in which the Delhi High Court attributed the rights in expressions like “Jhakaas” and “Bhidu” as inherent to the personalities embodied by the eponymous actors, and not the makers of the works of which they formed a part. Conversely, in the present case, the Court has squarely conferred the plaintiff, being the makers of the sitcom, with ownership rights over the infringed characters’ personalities, a divergence which has the potential to raise future litigative conflicts, between actors and production houses, in similar matters.
Further, there should also be no doubt that the broad and inevitable interpretation of the order, extending the personality rights bundle to characters, can potentially open the doors for judicial overreach against bonafide artists and satirists and stifle fair and otherwise lawful expression. These concerns have already been raised by the Court in Jackie Shroff in the celebrity-specific context. Moreover, the enforcement of these protections over globally spread social media platforms, may prove to be a practically impossible pursuit.
At the same time, the combined effect of copyright and personality right protections for fictional characters can grant enhanced control to both creators and actors against exploitation. Obscene and unauthorised use of the characters foremostly taints the image of the actors, being closely intertwined with the popularity of their on-screen avatars, in public memory. Expanding the scope of personality rights can, thus, empower them to curb the uncalled-for hijacking of their imparted personas by miscreants—especially given an unstable AI-horse at loose, the unregulated internet, the continued existence of digital illiteracy, and an intensified general interest in eroding their privacy rights.
The Court has, thus, set a clear precedent for the emerging swathe of litigation in this regard. What remains to be seen is how the balance, highlighted in Jackie Shroff, will be struck by the judicial arm in protecting what rightfully belongs to the creators and actors, together with what is legitimately entitled to public-minded individuals as a part of their constitutionally guaranteed freedom of expression and profession.