By Arpit Kalra and Ananyaa Banerjee
Sholay Media Entertainment And Anr. vs Yogesh Patel And Ors.
The 1970s were a wild time, with bell-bottom jeans and rampant disco music taking over the baton from the era of hippies, which was the 60s. With this change in scenery, the world of movies and cinematography also matured greatly in the 70s, and the decade saw the release of many masterpieces globally – from Francis Ford Coppola’s ‘The Godfather’ in the USA, to Ramesh Sippy’s Amitabh Bachchan led ensemble cast in ‘Sholay’. There are so many famous movie titles from the 70s, which aficionados can speak endlessly about, iconic, distinctive names – from Hollywood legends Star Wars, The Exorcist, Apocalypse Now, to Bollywood behemoths such as Deewar, Anand, Karz, etc. While the movies themselves are unarguably legendary, their individual names also garner much attention and respect, and daresay, reputation and distinctiveness. It can be said that the movie titles form an intrinsic part and parcel of the movies and are one of the most (if not the most) important identifier of a movie. The titles are evocative, and they invoke vivid memories of the cinematograph works themselves. In view of this background, that a trademark law provokes is whether a movie title is entitled to protection as a trademark?
This very question was the subject matter of much debate before the Hon’ble Delhi High Court regarding the famous 1975 film title “SHOLAY”, which was adjudicated upon by the Hon’ble Mrs. Justice Pratibha M Singh. While the Order in this case was recently passed on May 09, 2022, the actual matter is 20 years old.
Sholay Media Entertainment And Anr. vs Yogesh Patel And Ors.
As this case has quite some history, a brief chronology of events that have transpired in this matter, is tabulated below:
|DATE / YEAR||PARTICULARS|
|15th August 1975||The file Sholay was released by M/s. Sippy Films.|
|11th February 1999||Defendants filed a trademark for “SHOLAY”,
“SHOLAY.COM”, INC’, with the USPTO in class 42 and the same was incorporated in December 1999.
|14th May 1999||Defendant, vide its Indian company NET ANGLE COM. PVT. LTD, filed application for the mark SHOLAY in India –
|21st December 1999||Defendant incorporated a company named SHOLAY COM PRIVATE LIMITED in India vide CIN U72200TG1999PTC033091. As on date, the status of the company remains reflected as Active on the website of the Ministry of Corporate Affairs.|
|January 2000||Defendants reached out to plaintiff’s with the proposal of promoting the SHOLAY sequel on the website (www.sholay.com) which was duly rejected by the plaintiff’s|
|January 2000||A magazine “IT-Information Technology” was released by the defendants containing an article which stated that the website hereafter referred to as impugned is a comprehensive site that offers you much more than its Bollywood alias did which was accompanied by a free CD containing link for the website.
|20th December, 2000||Defendant had filed company name rectification against the company SHOLAY COM PRIVATE LIMITED before the Office of the Learned Regional Director, Southern Region at Chennai, who vide order dated December 20, 2000, directed the Defendant No. 2 to delete the word ‘Sholay’ from its existing name.|
|26th August, 2000||CEO Mr. Sascha Sippy received a letter from iAnswers.com, a New York based organization offering the services of Ianswers.com to “Sholay.com”|
|January 2001||During a meeting, between Mr. Sascha Sippy and Ms. Judi Kilachand, director of Business Programs for the Asia Society at New York, Ms Kilachand remarked being under the impression that the website of the defendant and the plaintiff’s company are similar which was cleared by Mr Sippy.|
|22nd April 2003||Defendant had filed a Writ Petition (W.P. (C) No. 4823 of 2001) before the High Court of Madras, inter alia challenging the order of the Regional Director. The Court vide its order dated April 22, 2003, set aside the Regional Director’s Order on the ground of violation of principles of natural justice.|
|27th January 2010||Suit filed in the Delhi High Court.
Justice S.Ravindra Bhat dismissed the Suit Sholay Media Entrainment & Anr Vs Yogesh Patel And Others1 on the premise of paucity of territorial jurisdiction and instructed the plaintiff’s to file the suit before the Court of competent jurisdiction
|24th August, 2015||Sholay was given recognition by Hon’ble court (Sholay Media and Entertainment Pvt. Ltd. and Anr. v. Parag Sanghavi and Ors2.)|
In view of this rather long and winding background, the matter once again resurfaced in 2022, wherein the Hon’ble Justice Mrs. Prathiba M. Singh passed as Order dated May 09, 2022. In this article, we explore the nuances of the said case, particularly those pertaining to the protection of movie titles as trademarks.
Contentions of the Plaintiff
I. Defendants’ adoption of the mark was not bona fide or innocent. The Defendants did not adopt the mark ‘SHOLAY’ only as a part of the domain name being www.sholay.com, but also in the following manner:
- By registering a series of domain names;
- By using the word ‘SHOLAY’ as part of the corporate name;
- By applying for the registrations of the mark ‘SHOLAY’ in India as also in the USA;
- by using an identical logo of ‘SHOLAY’;
- By offering the DVD of the Plaintiff’s film ‘SHOLAY’ on their website;
- By using the name ‘SHOLAY’ as a meta tag.
II. The Plaintiffs revealed the intention of the Defendants to foreclose the natural expansion of the Plaintiffs in the virtual space. The various defenses raised by the Defendants in the written statement have also been addressed by the Plaintiffs in their written submissions.
III. The Defendants have already been proceeded ex parte in this matter. The rights in the mark ‘SHOLAY’ vesting in the Plaintiff’s has already been judicially recognized in the decision dated 24th August, 2015 in (CS(OS) 1892/2006) titled Sholay Media and Entertainment Pvt. Ltd. and Anr. V. Parag Sanghavi and Ors.
IV. Plaintiff attempted to establish:
- That the rights in the mark ‘SHOLAY’ vest in the Plaintiffs, and
- That the Defendants conduct constitutes infringement and violation of statutory and common law rights in the mark ‘SHOLAY’.
Insofar as the first aspect of the rights of the Plaintiffs, is concerned, the same has already been recognized in the earlier decision dated 24th August, 2015 in (CS(OS) 1892/2006) titled Sholay Media and Entertainment Pvt. Ltd. and And. V. Parag Sanghavi and Ors.
Contentions of teh Defendant
Through the course of the proceedings, the Defendants made the following submissions:
- Film titles are not entitled to protection and that they have applied for registration earlier.
- There is no probability of confusion on the internet and that ‘SHOLAY’ is a dictionary word.
- Defendants applied for the mark ‘SHOLAY’ on 16th April, 1999 in India and 11th February, 1999 in the USA, thus they are prior to the Plaintiffs in this regrd.
- The Defendants also incorporated the Defendant No.4- Company with the name ‘SHOLAY’ as early as on 21st December, 1999. Admittedly, the Plaintiffs applied for registrations in the USA in the year 2000 and in India, the earliest application dates back to October, 2000.
- The goods and services offered by the Plaintiffs and Defendants are different, unrelated and not overlapping (wherein the Defendant claims to be engaged in the computer products).
- ‘Sholay.com’ is a website on the internet which is used by educated persons, which would consequently lead to lesser likelihood of confusion
Whether film titles are protected?
While there are a plethora of arguments and contentions from both sides, the crux of the defendant’s defense was predicated upon the argument that film titles are not entitled to any protection. This was further augmented by their claims that they filed for the mark earlier, and that SHOLAY is a dictionary word.
In view of the above, we discuss the various considerations deliberated upon by the Hon’ble Court, while adjudicating the matter.
Considering the case at hand, Justice Pratibha Singh considered the below pertinent points:
- That SHOLAY is a cult movie, over 50 years old, and is famous in India.
- The fact that the defendant’s trademark application is prior to those of the plaintiff’s is not relevant insofar as the movie in question was released in 1975, much before the defendant’s trade mark application or company incorporation.
- The use of identical domain names by the defendant is malafide.
- The mark ‘SHOLAY’ enjoys much reputation and goodwill in India.
- The mark has already been recognized as a well-known mark.
- Mere earlier trademark applications or use as part of a corporate name would not vest any prior rights in favour of the Defendants.
- Very importantly, the plaintiffs clearly have a cause of action under Section 27 of the Trademarks Act, 1999 to sue for passing off.
In view of the above, the Hon’ble Court answered the question of the protection of movie titles.
Protection Of Film Titles Under Indian Law
The Hon’ble Court noted that the word ‘SHOLAY’, is the title of an iconic film, and consequently, as a mark having been associated with the film, produced and now vesting in the Plaintiffs, cannot be held to be devoid of protection. The Court explicated held that titles and films are capable of being recognised under trademark law.
While deliberating upon the factum of film titles being unregistered (trademarks), the Hon’ble Court referred to the case of Kanungo Media (P) Ltd. v. RGV Film Factory & Ors. [2007 SCC OnLine Del 314], regarding the movie ‘Nisshabd’, wherein the Court took note of the below ingredients which may be analyzed in case of such unregistered movie titles:
- Title has acquired the secondary meaning;
- There is likelihood of confusion of source, affiliation, sponsorship or connection of potential buyers/audience/viewers.
In view of the above, the Hon’ble Court held in favour of the plaintiff, and inter alia restrained the defendants from using the name ‘SHOLAY’ in respect of any goods and services and also from using the domain name ‘Sholay.com’ and making any reference to the movie ‘SHOLAY’ or using any images or clippings from the said movie, as also from selling merchandise using the name SHOLAY or any images from the said cinematographic film. The Court also restrained the Defendants from using any variation of the mark/name ‘SHOLAY’ on the internet or otherwise including use as a metatag in the source code.
In addition to the above, the Hon’ble Court also awarded cost and damages to the tune of a whopping INR 25,00,000 (approx. USD 32,058).
Importance of the Judgment
This case seemingly closes the chapter on the controversy regarding the usage of the name/mark/movie title SHOLAY between the said parties, after over 20 odd years. Pertinently, the case emphatically held that movie titles can indeed be protected.
In fact, it is an industry practice to register such names/ titles as trademarks by filing applications before the Trade Marks Registry. For instance, the below famous Bollywood titles, which were released in the last few years, are subject matter of trademark application/ registration in India:
|S.No.||App. Nos.||App. Date||Applicant||Trademark||Status|
|1.||4803726||31-Dec-20||Bhansali Productions Private Limited||Gangubai Kathiawadi||Registered|
|2.||4760387, 4760388, 4760389, 4760390, 4760391, 4760392, 4760393||27-Nov-20||Dharma Productions Private Limited||Shershaah||Registered|
|3.||3749859||08-Feb-18||Cape Of Good Films LLP||PADMAN||Registered|
Thus, in light of such long protracted litigation proceedings, as drawn out in the SHOLAY saga, it would be advisable for filmmakers to trademark their movie titles in all relevant classes, preferably way before the movie is released or announced. In this regard, Bhansali Productions Private Limited (of the revered Bollywood filmmaker Mr. Sanjay Leela Bhansali), sets a very good example – while the hit movie Gangubai Kathiawadi was released in 2022, the company had filed for (and obtained registrations) for ‘Gangubai’ formative marks way before 2022 –
|App. Nos.||App. Date||Applicant||Trademark||Status|
|2689235, 2689214, 2689197, 2689182, 2689224||28-Feb-14||Bhansali Productions Private Limited||GANGUBAI KATHEWALI||Registered|
After all, as the old adage goes, a stitch in time, saves nine (in this case, over 20 years of litigation!).
CS (OS) 1714/2001 & IA Nos. 12828/2009, 15940/2009
Kanchan, Intern at S.S. Rana has assisted in the research of this article.