M Ramesh |
As per the plaint, the defendants sought to misappropriate the rights of the plaintiffs in the mark ‘SHOLAY’
The name Sholay evokes nostalgia. The 1975 movie has—as observed by the Delhi High Court—transcended generations. The Court has also spoken approvingly of the reputation of the movie as “a part of India’s heritage”.
However, a legal question arises if a person uses the name ‘Sholay’ for his business. That’s what a man called Yogesh Patel did. He registered a domain name called www.sholay.com, published a magazine with the name Sholay and has sold various merchandise using scenes and names from the movie.
Sholay Media and Entertainment and Sippy Films decided they would not take this lying down. They sued Yogesh Patel and others.
Judge Pratibha M Singh observes in her judgment: “Some of the dialogues used in this film such as ‘Jo dar gaya, samjho mar gaya’, ‘Ai chhammia’, ‘Arre o Sambha’, Kitne aadmi thay?’ are part of colloquial language in the Hindi heartland. It received unbeatable reviews which led to the movie being run ‘Housefull’ for more than five years.
As per the plaint, the manner in which the defendants sought to misappropriate the rights of the plaintiffs in the mark ‘SHOLAY’ has been elucidated below: “i) registering the same as a series of domain names, including: a) sholay.com, b) sholay.net, c) e-sholay.com, d) sholaychat.com e) sholayindia.com, f) sholaymall.com, g) sholaynews.com, h) sholayonline.com. i) sholayradio.com, j) sholaytv.com, k) Mysholay.com, l) Asksholay.com, m) sholay.fm n) n) sholay.co.in ii) Using SHOLAY as a trademark on their website, www.sholay.com in relation to various online services such as “Sholay Jobs”, “Sholay Calendar”, “Sholay Chat”, “Sholay matrimony”, “Sholay e-messages” etc. iii) Incorporating companies with the name SHOLAY, including the following: i) Sholay.com Pvt Ltd ii) Sholay.com Inc iii) Sholay DOT Co Inc iv) Applying to register the name SHOLAY as a trademark in India and the United States of America.”
Apart from the above, the defendants were also using a similar logo, colour scheme, and device and offering Ganpati silver coins, sweets and savouries from Indian Mithai shops, 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 took the stand that they are in the business of computer products. It is urged that the intention of the plaintiffs is to extract money from the defendants who have created a popular website called www.sholay.com, registered by the defendants in the USA. The case of the defendant was that the suit did not disclose a cause of action. The defendants urged that a movie title is not entitled to any rights and, hence, there can be no passing off.
The judge ruled in favour of the plaintiffs and restrained the Patels from using the name Sholay and also fined them ₹25 lakh towards costs and damages.
The defendants, their directors, partners, proprietor and anyone acting for and on their behalf are restrained 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 defendants shall also stand restrained from using any variation of the mark/name ‘SHOLAY’ on the internet or otherwise including use as a metatag in the source code
The adoption of the mark ‘SHOLAY’ by the defendants was clearly mala fide and dishonest, owing to the use of the infringing logo, designs, selling of the DVD of the film ‘SHOLAY’ on the defendants’ website, etc. For the reasons contained above, this Court is convinced that this is a fit case for award of costs to the Plaintiffs. Accordingly, the present suit is decreed for a sum of ₹25,00,000 as costs and damages.