9 January, 2018
Ex-parte injunctive relief refused to “Barbie” owner
This is pertaining to an application filed in a commercial suit before the Delhi High Court by Mattel, Inc. in conjunction with its Indian subsidiary Mattel Toys (India) Private Limited (together the “Plaintiffs”) against Aman Bijal Mehta & Ors. (together the “Defendants”), the producers of a Hindi film titled Tera Intezaar. The aforesaid application was filed by the Plaintiffs praying for in camera ex parte injunctive relief against the Defendants. In relation to the in camera proceedings, the counsel for the Plaintiffs had contended that as the suit pertained to a highly confidential matter, the media attention might lead to distortion of facts and the absence of reporting by the media may make the parties more receptive to a settlement. The Plaintiffs stated that they are the owner of the “Barbie” trade mark and that they have been using the trade mark “Barbie” in relation to toy dolls and other merchandise. The mark “Barbie” has been identified as a well-known trade mark in various jurisdictions. The toy doll “Barbie” is very popular amongst the girl children and it has different versions, such as, doctors, surgeons, firefighter etc. and the Plaintiffs have also worked with various renowned celebrities, such as, Princess Kate Middleton, J.K. Rowling, Shakira and Katrina Kaif amongst others, to create Barbie dolls in their likeness. The Plaintiffs stated that the song titled “Barbie Girl” in the movie Tera Intezaar is used without the authorisation of the Plaintiffs and that the Defendants have used “Barbie” as a catchy word in the title and lyrics of the song to generate publicity and for commercial exploitation and gain. The Plaintiffs further contended that the Barbie girl in the song is played by an actress prominent in the adult entertainment industry and that the content of the said song and its video are not suitable for children and are inappropriate which degrades the trade mark “Barbie”.
While listening to the arguments of the Plaintiffs, the Court inquired regarding the song “Lets go party” by Aqua band with the “Barbie” word and indicated that the lyrics of that song were also provocative and inappropriate. The Plaintiffs informed that Court that the Plaintiffs had also filed proceedings against the music companies in US with the contention that the song “Lets go party” is inappropriate for young girls. However, the Plaintiffs did not receive any favourable order in the US courts. The Court noted that the United States Court of Appeals, Ninth Circuit in Mattel, Inc. Vs. Walking Mountain Products 353 F.3d 792 (2003) did not accept the argument of “market harm by impairing the value of Barbie”, reasoning the infringement therein to be perceived as a “parody of Barbie”. The Court noted that the Plaintiffs were trying to seek in India what was denied to it in the Court of its origin.
On the Plaintiffs’ suggestion that the laws of India are different from that applied by the US Courts, the Court referred to Justice Sanjay Kishan Kaul speaking for the Division Bench of the High Court of Madras in S. Tamilselvan vs. The Government of Tamil Nadu that India has the benefit of one of the most modern and liberal Constitutions, one of the most cherished rights wherein is to speak one’s mind and write what one thinks, no doubt, that is subject to reasonable restrictions, but then the ambit of what one can do is wide. The Court further stated that the law has constituted CBFC to adjudge the need if any, for imposing “prior restraints” which otherwise are at serious odds with the fundamental right enshrined in the Constitution of speech and expression. Thus, once a film has been cleared by CBFC for viewing, there is a presumption in its favour including of the same being not defamatory of any one. If after a film has been so cleared by CBFC, the Courts were to act as super Censor Board at the mere asking, it will have the potential of imposing arbitrary and at times irrational prior restraints causing severe damage to the right of freedom and expression.
The Court vide its order dated 22nd November, 2017 denied any ex parte relief including any relief for in camera proceedings to the Plaintiffs and noted that granting ex parte relief to the Plaintiffs in this matter may send a wrong signal to the public at large when the newspapers and the stories in the electronic media are broadcasting a demand by one section of the society for a ban on another film.
The Delhi High Court ordered that notice/summons be issued to the Defendants and further stated that the Plaintiffs may call upon the Defendants to delete the word “Barbie” from the song and to notify the consequences to the Defendants if they fail to do so.
Rajesh Tailang v Tata Motors Limited [CS No 773 of 2017]
The Karkardoma District Court, New Delhi in the case of Rajesh Tailang v Tata Motors Ltd. granted an interim injunction restraining the defendant from infringing the plaintiff’s copyright in his original cinematographic work.
The plaintiff, being a professional artist, actor, writer and director had created a short film titled ‘Right Perspective’ or ‘Saaf Nazaria’ and published the same on his YouTube channel ‘Theatre Talkies’. Subsequently, Tata Motors published an advertisement, essentially copying the Plaintiff’s said original short film and promoted the said advertisement as a ‘Tata Motors Initiative’ on various social media platforms. Aggrieved by the defendant’s infringing activities, the plaintiff, represented by Clasis Law, initiated copyright infringement proceeding against the defendant.
The Hon’ble Court, upon comparing the plaintiff’s original and the defendant’s work, observed the defendant’s work to be based on the idea and script of the plaintiff’s original work and granted an interim injunction restraining the defendant from making its infringing work available in any mode on any social networking media or video sharing platforms.
For further information, please contact:
Vineet Aneja, Partner, Clasis Law
vineet.aneja@clasislaw.com
