By Vikrant Rana and Diksha Singh
For decades now, people all around the world have been bewitched by the wonderful wizarding world introduced by Ms. Joanne Kathleen Rowling through the HARRY POTTER® books, which were brought to life by the Warner Bros. Pictures. Children, for over two decades, have waited years for their own Hogwarts® letters – the invitation to attend the prestigious Hogwarts School of Witchcraft and Wizardry, where Harry and his best friends have had many an adventure; and since one cannot simply walk into Diagon Alley (or in Mordor!), fans have to make do by participating in numerous pop culture conventions and attending book / movie events, just to feel like they belong in the wizarding world. Naturally, many would jump at the opportunity to dine in eateries inspired by the wizarding world, just to bask in the fictional universe associated with the Harry Potter books and movies. Such is the popularity of the wizarding world that correspondingly, it is a quick recipe for commercial success, by setting up “inspired” restaurants and cafes, offering fans an opportunity to participate in the magical world, and earn a few galleons in the process, perhaps not realizing that the same violates various IP rights vesting in the Harry Potter world.
One such recent instance was in the case of Warner Bros Entertainment Inc. v. Mr Ishant Kashiwal trading as the Hogwarts Kafe & Ors.1 where the Plaintiff (the registered proprietor of the Harry Potter trade marks worldwide and in India), brought a suit for injunction and damages for infringement, passing-off and unfair competition against the Defendant and their use of the name THE HOGWARTS KAFE and other related WIZARDING WORLD PROPERTIES in respect of the Defendant’s café / restaurant.
RIGHTS THAT MAY BE AFFECTED BY SUCH THEMED EATERIES
In what has apparently become a common phenomenon, individuals have started coming up with themed eateries, which are “inspired” from famous books, movies and even TV shows.
Apart from the unlikely event that proprietors of themed restaurants have indeed obtained a trade mark or copyright license from the registered proprietors / owners of such rights to use these IP-protected works in respect of their eateries, such themed eateries may give way to a plethora of IP-right violations, even though they may have been commenced with good intentions (to offer fans a glimpse of what it means to be a part of a fictional world):
- Infringement of a registered trade mark (which are often registered in the names of the studios / producers);
- Passing off of an unregistered but well-known name / trade mark / logo that is associated with a pop culture phenomenon (or has a secondary significance), as the same will inevitably be used to derive undue benefit from the goodwill and reputation in the well-known trade marks and portray an affiliation with the real owner of the IP rights. For instance, such is the fame of J.K. Rowling’s Wizarding World, on account of the immense global (and Indian) fan-following, millions of book sales and movie-viewership, online engagements and activities as well as sale of merchandise, that mere references to phrases like Expecto Patronum, or Hogsmeade (amongst others), would portray an automatic association with Harry Potter and/ or The Wizarding World;
- Copyright violation of original artistic works / logos / font styles, which are synonymous with movies, books or TV shows, and are been used as a part of the décor / menu in such eateries in an unauthorized manner, in an attempt to portray an obvious association with the fictional world;
- Copyright violation on account of the expression of the eatery, i.e., if the eatery has elements that are obviously reminiscent / an imitation of a particular fictional world. Under copyright law, an idea itself is not protected, but the expression of an idea is protected. Therefore, if for instance, the layout / get-up of an eatery inspired by a pop culture phenomenon incorporates various elements that are associated with the particular movie / TV show, so much so that it acts as a near-replica of the fictional world, then the same may amount to copyright violation as well. Merely having a medieval-castle themed layout in an eatery is not infringing HBO’s copyrighted material (relating to the popular show Game Of Thrones®), however, if an eatery incorporates interiors, images or visual imagery similar to those from Game Of Thrones, for instance The Iron Throne replica, different House banners or House words, the Hall of Faces, replica of important swords and weapons portrayed in the show, alongwith similar furniture and décor, and character / place references, then an argument for copyright violation may be made out.
Coming back to the present case, let us analyse the different IP rights that appear to be violated by the Defendant:
|Defendant’s Use||IP Rights Being Violated|
|Hogwarts Kafe (as the name of the Defendant’s restaurant)||HOGWARTS is the registered and well-known trade mark of the Plaintiff, and use thereof as the prominent part of the name of the Defendant’s restaurant is infringement of the Plaintiff’s statutory rights.|
|Infringing Use On Menu / Menu Items|
|Dumbledore’s Dimsums, Ravenclaw Nachos, Hufflepuff Breads, Voldemort Hollowed Bread, Slytherin Salads, The Hogwarts Grilled Panini, Hogwarts Grilled Fish, Gryffindor Burgers, Hagrid’s Favourite Grill,||ALBUS DUMBLEDORE, RAVENCLAW, DUMBLEDORE, HUFFLEPUFF, LORD VOLDEMORT, SLYTHERIN, GRYFFINDOR, HOGWARTS and HAGRID are registered trade marks of the Plaintiff, and use of the same as names of menu items being offered at the Defendant’s cafe are infringing the plaintiff’s registered trade marks.|
|Severus Soups, Ascendio Fries, Godric’s Though SEVERUS (SNAPE), Hollowed Bread, Draco Malfoy Egg Panini, ASCENDIO, DRACO MALFOY, Kathi Kedavra, Luna’s Love Grill, Dobby Sliders, Cho Chang Oriental, Potterhead Pizzas, Draco Desserts||Though SEVERUS (SNAPE), ASCENDIO, DRACO MALFOY, (AVADA) KEDAVRA, LUNA LOVEGOOD, DOBBY, CHO CHANG and POTTERHEAD are not registered trade marks, the same are well-associated with Harry Potter and the Wizarding World, and use of the same, in relation with a Harry Potter / Hogwarts / Wizarding World themed restaurant would portray an automatic connection/ reference with the Plaintiff and their trade marks and amounts to passing off by the Defendant.|
|The logo being used on the Defendant’s menu||The said logo, which represents THE DEATHLY HALLOWS, was heavily featured in the movie Harry Potter and the Deathly Hallows® as well as related merchandise, and use thereof by the Defendant not only amounts to passing off of the Plaintiff’s unregistered trade mark, but also the Plaintiff’s copyright in the original artistic work.|
|Infringing use as Decor of the Cafe|
Use of Wizarding World Properties, such as Ministry Of Magic, The Burrow, Godric’s Hollow, Diagon Alley, Hogsmeade, Azbakan.
|All the said places marked on this sign post (apart from King’s Cross) are fictitious places created by J.K. Rowling, and form an intrinsic part of the wizarding world, so much so that a mere Google search for Azkaban or even something as descriptive as The Burrow reveal innumerable search results in association with Harry Potter The Wizarding World. Thus, even though unregistered trade marks, use thereof by the Defendant amounts to passing off i.e., portraying that the Defendant’s services are somehow related to (or authorized by) the Plaintiff.|
Use of merchandise (i.e. banners, cushions) bearing the house logos for the Hogwarts houses i.e. Gryffindor, Hufflepuff, Rvenclaw and Slytherin, life-size models of house-elves, wall graffiti with a likeness of Harry Potter characters.
|There appears to be an obvious violation of copyright in the copyright-protected original artistic works, such as the logos of the Hogwarts Houses, and the interiors of the café – by placing models of house elves (who are common features in The Wizarding World), wall paintings that feature a likeness with the cast of the Harry Potter movies, photos or pictures of The Wizarding World, may also amount to violation of the Plaintiff’s copyright (which is not required to be registered in order to be protected).|
On account of finding a prima facie case in favour of the Plaintiff, the Hon’ble Delhi High Court granted an ex-parte ad interim injunction in favour of the Plaintiff, thereby restraining the Defendant from using the marks THE HOGWARTS KAFE and THE WIZARDING WORLD Properties in respect of their restaurant, and take down its advertisements and listings from third-party websites / social media.
OTHER POP-CULTURE MISAPPROPRIATIONS
Other instances of themed eateries / cafes include F.R.I.E.N.D.S. themed Central Perk cafes (inspired from the Central Perk café in the extremely popular sitcom F.R.I.E.N.D.S.), in Kolkata and Delhi, which featured the orange couch (as featured in the sitcom), the dog statue owned by the characters Joey and Chandler, the distinctive purple door, and the words “Central Perk” as they appeared on the café’s window in the show.
Another incredibly famous TV show that has inspired a host of themed eateries, is GAME OF THRONES, and such themed restaurants have cropped up all around the world (and even in India), featuring a wide variety of famous elements from the show, like the Iron Throne, House banners, character posters, dishes and drinks names after characters and places, and so on!
WHAT’S NEXT FOR HOGWARTS KAFE?
In the instant case, the Hon’ble Court issued summons to the Defendant, indicating that the Defendant is to file the written statement to the suit within thirty days of receipt thereof, alongwith an affidavit of admission / denial of documents filed by the Plaintiff.
As directed by the Hon’ble Court, the matter was taken up by the Joint Registrar on November 26, 2021, wherein the Defendants stated that they had complied with the High Court’s order dated September 17, 2021, and both parties thereafter requested that they wished to settle the matter in Mediation. Therefore, the Learned Joint Registrar has directed both parties to appear before the Delhi High Court Mediation and Conciliation Centre on December 15, 2021, and has listed for report of settlement on February 22, 2022.
 CS(COMM) 457/2021