In a recent judgement disposing of a long pending lawsuit, the Hon'ble Delhi High Court in Sholay Media Entertainment & Ors. v. Yogesh Patel & Ors1 has held that titles of films are eligible for protection as a trade mark, both under statute and at common law. The Hon'ble Court observed that the content in a movie is no longer restricted to theatrical screening alone but is also available on online platforms and electronic media. Therefore, the goods and services offered by the defendants can be considered by viewers as emanating from the plaintiffs and the contention of the defendants to the contrary was untenable.
1. Facts of the case
The plaintiffs, Sholay Media Entertainment and Sippy Films Pvt. Ltd. are private limited companies engaged in the business of producing, exhibiting and distributing cinematograph films. The plaintiffs are the owners of intellectual property in respect of the iconic film "SHOLAY" and had secured registration of the trade mark "SHOLAY" in several classes.
The defendants had registered a domain name, sholay.com and were advertising the same as an entertainment portal having services such as chat, e-greetings, countdowns, horoscopes kid zone, classifieds, matrimonial, and grocery store. The website covered various subjects including, politics, cricket, finance, shopping, news updates, and bulletins from Bollywood.
The defendants had also filed applications for registration of the trade mark "SHOLAY" in India and in the United States of America.
In view of the defendants' use of the mark "SHOLAY", the plaintiffs approached the Hon'ble Delhi High Court seeking, inter-alia, injunction restraining the defendants from using the trade mark "SHOLAY", transfer of the domain name sholay.com to itself and damages.
2. Infringing activities of the defendants
The plaintiffs contended that the defendants had attempted misappropriating the rights of the plaintiffs in the trade mark "SHOLAY" by engaging in the following activities:
- registering the trade mark "SHOLAY" as a series of domain names, such as sholay.com, sholay.net, sholaychat.com, sholayinida.com, mysholay.com, sholay.fm, etc.;
- using "SHOLAY" as a trade mark on their website in relation to various online services such as "SHOLAY Jobs", "SHOLAY Calendar", "SHOLAY Chat", "SHOLAY matrimony", "SHOLAY e-messages" etc;
- incorporating companies with the trade mark "SHOLAY", including Sholay.com Pvt. Ltd, Sholay.com Inc, Sholay Dot Co Inc;
- applying for registration in respect of the trade mark "SHOLAY" in India and the United States of America;
- using the word '"SHOLAY"' as a metatag on their web page.
3. Plaintiffs' contentions
The plaintiffs contended that they have been using the word "SHOLAY" in relation to cinematographic films, vinyl records, audio tapes and DVDs etc. and as a result of long, extensive and continuous use, the trade name "SHOLAY" has acquired tremendous goodwill and reputation and is associated exclusively with the plaintiffs. The plaintiffs submitted that they have applied for registration of the trade mark "SHOLAY" in relation to various goods in order to expand their presence and operation on the internet. They have also sought registrations for domain names such as esholay.com, esholay.com, esholay.net, esholay.com, esholay.net, sholayent.com and esholay.com, esholay.net, sholayent.com and sholaytwo.com. The plaintiffs contended that the defendants' adoption of the mark was not bona fide but with a view to encash upon the reputation and goodwill of the plaintiffs. As evidence, the plaintiffs relied upon various instances demonstrating that the adoption of the trade mark "SHOLAY" caused actual confusion among the members of trade and public.
4. Defendants' contentions
The defendants' justified their use of the trade mark "SHOLAY", primarily on the following grounds:
- film titles are not entitled to protection;
- the defendants have applied for registration of "SHOLAY" as a trade mark and incorporated a company with the name "SHOLAY" prior to the plaintiffs' application for registration;
- there is no probability of confusion since "SHOLAY" is a dictionary word, meaning 'burning coal' in the Hindi language;
- their website does not have any resemblance to the movie "SHOLAY";
- third parties are also using mark "SHOLAY"; and
- Sholay.com' is a website on the internet, which is used by educated persons, which would consequently lead to lesser likelihood of confusion.
5. Decision of the Hon'ble Court
The Hon'ble Delhi High Court decided the suit in favour of the plaintiffs and granted the plaintiffs, inter-alia, permanent injunction restraining the defendants from using the trade mark "SHOLAY", damages of INR 25,00,000/- and direction to the transfer all domain names incorporating the name "SHOLAY" or any deceptively similar variation thereof to the plaintiffs. In doing so, the Hon'ble Delhi High Court observed, that certain films cross the boundaries of just being ordinary words and the title of the film 'SHOLAY' is one of them. The Hon'ble Court held that titles of films are capable of being recognised under trade mark law and in India 'SHOLAY' would be a classic example of such a title. The Hon'ble Court, by relying on precedents, drew a distinction between copyright protection for a title and trade mark protection. While the general view across jurisdictions appears to be that there is no copyright in respect of a title, it does not imply that the owner of a title is left without a remedy against a party copying the same.2 In case of a title, the plaintiffs will be entitled to relief if it is able to demonstrate that (a) the title has acquired secondary meaning, and (b) there is likelihood of confusion of source, affiliation, sponsorship or connection of potential buyers/audience/viewers.3 On the contention of the defendants, as to difference of goods and services of the plaintiffs and the defendants, the Hon'ble Court, while rejecting the same, observed that content in a movie is not merely restricted to theatrical screening, but also to online and other electronic platforms. There is a likelihood of the goods and services being offered under the mark "SHOLAY" by the defendants, being considered as an off shoot emanating from the plaintiffs.
This judgement is likely to encourage right holders from seeking protection against unauthorised use of movie references, such as titles, punch-lines, catch phrases etc. However, courts will have to test each such instance on the anvil of whether such title has acquired secondary meaning and if the use complained of, is such that it is likely to cause confusion in the market.
1. CS (COMM) 8/2016 & CRLM 1918/2002
2. Krishika Lulla & Ors. v. Shyam Vithalrao Devkatta & Anr, (2016) 2 SCC 521
3. Kanungo Media (P) Ltd. v. RGV Film Factory & Ors, 138 (2007) DLT 312
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