Attempt to misappropriate Sholay watered down by Delhi High Court
02 June 2022
Sholay, the title of an iconic film, cannot be held devoid of protection, the Delhi High Court said, while restraining a US-based company and others from misappropriating the film name. The court also slapped costs of Rs2.5 million (US$32,200) on the infringing companies.
“Certain films cross the boundaries of just being ordinary words, and the title of the film Sholay is one of them. Titles and films are capable of being recognized under trademark law and in India Sholay would be a classic example of such a case,” the Delhi High Court said, while restraining a US-based company, its Hyderabad-based sister concern and their directors from misappropriating the mark.
“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 (Sholay Media Entertainment Pvt Ltd and Sippy Films Pvt Ltd) cannot be held to be devoid of protection,” said Justice Pratibha M. Singh, while deciding a suit instituted by the plaintiffs through Noida-based Anand and Anand.
The plaintiffs had sued US-based company Sholay.com Pvt Ltd, another company named Netangle.com Pvt Ltd and its three directors as well as three other controlling entities of the domain name sholay.com. The defendants were publishing a magazine using the mark/name sholay and was selling various merchandise, using scenes and names from the movie Sholay.
Anand and Anand advocates Pravin Anand, Dhruv Anand, Udita M. Patro and Sampurna Sanyal informed the court that upon coming across a magazine titled IT-Information Technology, released in December 2000, plaintiffs learnt that the defendants had registered the domain name www.sholay.com. The magazine was accompanied by a free compact disk containing the advertisement of the website. An article published in the magazine made assertions that the biggest Bollywood blockbuster has hit the internet while also claiming that “sholay.com is a comprehensive site that offers much more than its Bollywood alias did”.
The defendants sought to create an entertainment portal offering various services such as chat, e-greetings, countdowns, horoscopes kid zone, classifieds, matrimonial and grocery. The website covered various subjects ranging from politics to cricket, finance to shopping, news updates and bulletins from Bollywood.
The plaintiffs shared with court instances where the infringement of mark sholay by the defendants had caused confusion in the minds of users globally.
Lawyers at Anand and Anand noted that the defendant had filed a trademark registration application in the name of a company called sholay.com in 1999 for the sholay mark with the United States Patent and Trademark Office (USPTO).
In India, the trademark application was filed by defendant Netangle.com Pvt. Ltd. The Regional Director, Southern Region, Registrar of Companies, Chennai, in its order dated December 20, 2000, directed the defendants to delete the word sholay from its existing name after objection raised by the plaintiff. The defendant moved a writ before the Madras High Court which set aside the order of the registrar solely on the ground of violation of principles of natural justice.
While deciding the instant suit, Justice Singh noted that the defendants were also using a similar logo, colour scheme, and device and offering Ganpati silver coins, sweets and savouries from Indian Mithai shops and DVDs of the movie Sholay on their website. The word sholay was also being used as a metatag by the defendants on their web pages.
The defendants also tried to misappropriate the rights of the plaintiff in sholay by registering it as a series of domain names like sholay.com, sholaynews.com, sholaychat.com etc. They were even offering various online services like Sholay Matrimony, Sholay Jobs, Sholay e-messages, etc.
Holding their adoption of mark sholay to be dishonest, the court restrained “the defendants, their directors, partners, proprietor and anyone acting for and on their behalf 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 film”.
It also barred them from using the mark or its variation on the internet while directing the concerned domain names registrars to transfer the infringing domain names to the plaintiffs, within one week of the receipt of the present order.
Sholay is a 1975 Indian Hindustani-language action-adventure film about two criminals who have been hired to capture a bandit. In 2002, it was ranked first in the British Film Institute’s poll of the Top 10 Indian Films of all time. The movie’s promotional poster boasts that it has “the greatest star-cast ever assembled.”
