Protecting the Title of a Film as a Trademark – The “Sholay” Protection – Trademark

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In a recent judgment ending a long pending lawsuit, the Honorable Delhi High Court of Sholay Media Entertainment & Ors. against Yogesh Patel & Ors1 ruled that film titles are eligible for trademark protection, both at statute and at common law. The Honorable Court observed that the content of a film is no longer limited to only theatrical screening 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 coming from the plaintiffs and the contrary argument of the defendants was untenable.

1. The facts of the case

Plaintiffs, Sholay Media Entertainment and Sippy Films Pvt. ltd. are limited liability companies whose business is to produce, exhibit and distribute cinematographic films. Plaintiffs are the owners of the intellectual property in the iconic film “SHOLAY” and have obtained registration of the trade-mark “SHOLAY” in several classes.

The defendants had registered a domain name, sholay.com, and advertised the same as an entertainment portal offering services such as chat, e-greetings, countdown timers, kid zone horoscopes, classifieds, matrimonial and grocery shopping. The website covered various topics including politics, cricket, finance, shopping, updates and Bollywood newsletters.

The defendants had also filed applications for registration of the trademark “SHOLAY” in India and the United States of America.

In view of the defendants’ use of the mark ‘SHOLAY’, the plaintiffs approached the Honorable Delhi High Court to ask, among othersinjunction prohibiting defendants from using the “SHOLAY” trademark, transfer of the sholay.com domain name to itself, and damages.

2. Defendants’ Infringing Activities

The Plaintiffs argued that the Defendants attempted to misappropriate the Plaintiffs’ rights to the “SHOLAY” trademark by engaging in the following activities:

  1. register the trademark “SHOLAY” as a series of domain names, such as sholay.com, sholay.net, sholaychat.com, sholayinida.com, mysholay.com, sholay.fm, etc. ;

  2. use “SHOLAY” as a trademark on their website in connection with various online services such as “SHOLAY Jobs”, “SHOLAY Calendar”, “SHOLAY Chat”, “SHOLAY matrimony”, “SHOLAY e-messages” etc;

  3. incorporating companies with the “SHOLAY” brand, including Sholay.com Pvt. Ltd, Sholay.com Inc, Sholay Dot Co Inc;

  4. apply for registration of the trademark “SHOLAY” in India and the United States of America;

  5. using the word “SHOLAY” as a meta tag on their webpage.

3. Plaintiffs’ Arguments

The plaintiffs argued that they used the word “SHOLAY” in connection with motion pictures, vinyl records, audio cassettes and DVDs, etc. and that due to long, extensive and continuous use, the trade name “SHOLAY” has acquired an enormous reputation and reputation and is associated exclusively with the plaintiffs. The plaintiffs argued that they applied for registration of the trademark “SHOLAY” in connection with various goods in order to expand their presence and operation on the Internet. They also requested 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. Plaintiffs argued that Defendants’ adoption of the mark was not
authentic but for the purpose of taking advantage of the reputation and goodwill of the plaintiffs. As evidence, plaintiffs relied on various examples showing that the adoption of the trade-mark “SHOLAY” caused actual confusion among members of the trade and the public.

4. Arguments of the defendants

The defendants justified their use of the “SHOLAY” mark, mainly on the following grounds:

  1. film titles are not entitled to protection;

  2. the defendants applied for registration of “SHOLAY” as a trademark and incorporated a company under the name “SHOLAY” before the plaintiffs’ application for registration;

  3. there is no likelihood of confusion since “SHOLAY” is a dictionary word, meaning ‘burning coal‘ in Hindi language;

  4. their website bears no resemblance to the movie “SHOLAY”;

  5. third parties also use the “SHOLAY” trademark; and

  6. Sholay.com’ is a website on the Internet, which is used by educated people, which would therefore lead to less risk of confusion.

5. Decision of the Honorable Court

The Honorable Delhi High Court decided the suit in favor of the plaintiffs and awarded the plaintiffs, among otherspermanent injunction prohibiting the defendants from using the trademark “SHOLAY”, damages of INR 25,000,000/- and order to transfer all domain names incorporating the name “SHOLAY” or any deceptively similar variant thereof to applicants. In doing so, the Honorable Delhi High Court observed, that some movies cross the boundaries of just ordinary words and the movie title ‘SHOLAY’ is one of them. The Honorable Court held that film titles can be recognized under trademark law and that in India, ‘SHOLAY’ would be a classic example of such a title. The Honorable Court, relying on precedents, drew a distinction between the copyright protection of a title and the protection of a mark. Although the general opinion in all jurisdictions seems to be that there is no copyright in a title, this does not imply that the owner of a title is left without recourse against a party who copy.2 In the case of a title, claimants will be entitled to relief if they are able to show that (a) the title has acquired secondary meaning, and (b) there is a likelihood of confusion of source, affiliation , sponsorship or connection of potential buyers / public / spectators.3 On the assertion of the defendants, as to the difference in the goods and services of the plaintiffs and the defendants, the Honorable Court, while rejecting the same, observed that the content of a film is not simply limited to the theatrical projection, but also to online distribution and other electronic platforms. It is likely that the goods and services offered under the trademark “SHOLAY” by the defendants are considered an offshoot from the plaintiffs.

This judgment is likely to encourage rights holders to seek protection against the unauthorized use of film references, such as titles, punchlines, slogans, etc. However, the courts will have to test each case on the anvil to find out if such a title makes sense and if the offending use is such that it is likely to confuse the market.

Footnotes

1. CS (COMM) 8/2016 & CRLM 1918/2002

2. Krishika Lulla & Ors. against Shyam Vithalrao Devkatta & Anr, (2016) 2 SCC 521

3. Kanungo Media (P) Ltd. vs. RGV Film Factory & Ors, 138 (2007) DLT 312

The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.

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