Full Court fees was directed to be refunded in terms of settlement on first date of hearing

Royal Challengers Sports Private Limited Vs Sun Pictures A Division of Sun TV Network Ltd and ANR (Delhi High Court)

Conclusion: In present facts of the case the matter was compromised on the first day of hearing wherein the broadcasting of the plaintiff’s jersey was in dispute without the permission of the plaintiff. Accordingly full court fees was directed to be refunded to the plaintiff in terms of the judgment of the ld. Division Bench of this Court in Nutan Batra v. M/s. Buniyaad Associates, 2018 (255) DLT 696.

Facts: In present facts of the case, the application was filed under u/s 12A of the Commercial Courts Act seeking exemption from instituting pre-litigation mediation and in the prayer urgent interim relief was sought for. In present case, the Plaintiff has raised objections to some scenes in the film ‘JAILER’ wherein the Plaintiff pleaded that their team’s jersey was used in a denigratory manner.

The Plaintiff found recently that the film ‘JAILER’ featuring the well-known actor had a scene in the said film the plaintiff’s jersey was used. The grievance of the Plaintiff was that the Plaintiff’s jersey being used firstly without the permission of the Plaintiff and too in a negative depiction in the film, which was likely to dilute the Plaintiff brand image, disparages the Plaintiff brand, hurts the brand equity and also the rights of the sponsors of the Plaintiff whose name is also reflected in the jersey.

The suit therefore prays for a permanent injunction against the Defendants and for deletion of the said depiction of the RCB jersey in the film Jailer. On the date of hearing, the e-mails were exchanged between the parties have been shown to the Court. As per the said e-mails, the terms which have been agreed by the parties were that the defendant would not show the plaintiff’s jersey in the film or on the OTT content.

In view of the fact that the suit was settled on the very first date when it was listed, full court fee was directed to be refunded to the Plaintiff through counsel, in terms of the judgment of the ld. Division Bench of this Court in Nutan Batra v. M/s. Buniyaad Associates, 2018 (255) DLT 696.

FULL TEXT OF THE JUDGMENT/ORDER OF DELHI HIGH COURT

1. This hearing has been done through hybrid mode.

I.A. 15862/2023 (for exemption)

2. This is an application seeking exemption from filing originals//cleared/translated copies of documents, left side margins, etc. Original documents shall be produced/filed at the time of Admission/Denial, if sought, strictly as per the provisions of the Commercial Courts Act and the DHC (Original Side) Rules, 2018.

3. Exemption is allowed, subject to all just exceptions.

I.A. 15861/2023 (u/S 12A of the Commercial Courts Act)

4. This is an application seeking exemption from instituting pre-litigation mediation. In view of the prayer for urgent interim relief and also the judgement of the Division Bench of this Court in Chandra Kishore Chaurasia v. R A Perfumery Works Private Ltd, 2022/DHC/004454, the application is allowed and disposed of.

CS(COMM) 581/2023 & I.A. 15859/2023 (for stay), I.A. 15863/2023 (for court fee), I.A. 15864/2023 (permission to file video), I.A. 15860/2023 (for additional documents)

5. Let the plaint be registered as a suit.

6. Issue summons in the suit and notice in the application to the Defendant.

7. Ld. counsel for the Defendant accepts summons and notice.

8. The recently released feature film JAILER – featuring well-known actor Rajnikant is the subject matter of the present suit. The Plaintiff has raised objections to some scenes in the film wherein the Plaintiff team’s jersey is used in a denigratory manner.

9. The Plaintiff in the present suit is Royal Challengers Sports Private Limited which is a wholly subsidiary of United Spirits Limited, a Diageo plc Group company. The Plaintiff had applied and purchased rights for the Bangalore franchise of Indian Premier League (IPL) from the BCCI for a sum of USD 111.6 million. The team Royal Challengers Bangalore (‘RCB’) has featured a large number of well-known cricketers Virat Kohli, Faf Du Plessis, Dinesh Karthik, Michael Bracewell, Glenn Maxwell, Wanindu Hasaranga, Kedar Jadhav, Wayne Parnell, Mohammed Siraj, Josh Hazlewood, Harshal Patel, among others. In the past, the team also included legends of the game such as Rahul Dravid, Anil Kumble, Jacques Kallis, Tillakaratne Dilshan, AB De Villiers, Zaheer Khan, Daniel Vettori, Chris Gayle, Cheteshwar Pujara, Kevin Pieterson, Ross Taylor, Dale Steyn, Cameron White, Yuvraj Singh, Albie Morkel, Mitchell Starc, Parthiv Patel, among others.

10. The RCB team/franchise was created in 2008 and claims to have established followings of more than 10.8 million users on Instagram and 10 million users on Facebook respectively with more than 6 million followers on X (previously known as ‘Twitter’).

11. It is the case of the Plaintiff that RCB has attracted various corporates and brand sponsors over the years. The latest sponsor is the Muthoot Group which was the title sponsor for 2022. The details of the sponsorships in paragraph 10 of the plaint as under:

“10. RCB is sponsored and partnered by various brands, which sponsor the men’s and women’s team. The men’s cricket team is sponsored by Qatar Airways as the main partner KEI Wires & Cables, Happilo and JIO as principal partners, Puma, Hindware, BOAT, Equitas, Mahindra and Nippon Paint as associate partners, Eat Sure, Rario, Munch, Ampere, Restolex, Dream 11, BIRA, Royal Challenge, Hombale, Amul Organic, Manipal Hospitals, Aryaka, 7UP, ITC Master Chef, Fever 104 FM, Bela Vita Luxury, Jio Cinema, Birla Estates, Alstone as official partners. The Muthoot Group in particular was the title sponsor for 2022. On the other hand, the women’s cricket team is sponsored by Kajaria as Title Sponsor, Mia by Tanishq and Dream 11 as principal partners, Puma Himalaya Rose Face Wash and Vega as associate partners, and ZUNO as official partners.”

12. The name and logo ‘RC ’ as also ‘ROYAL CHALLENGERS BANGALORE’ along with the devices thereof are also registered trademarks in various classes including 28, 41, 25, 16. The details of the same are as under:

S.No.	Registration No.	Trademark	Class
1.	1958570		28
2.	1958574	Royal Challengers Bangalore	28
3.	1958571		41
4.	1958569		25
5.	1958568		16
6.	1958572	Royal Challengers Bangalore	16
7.	1958575	Royal Challengers Bangalore	41
8.	1958573	Royal Challengers Bangalore	25
9.	4484626		41

13. As is a commonly known fact, most teams are recognized by the colour and get up of the jersey that the players wear while playing IPL. The 2022 jersey which reflects the branding of Muthoot group is depicted herein below:

14. The Defendants are Sun TV Network Ltd. – Defendant No.1 and the producer, Mr. Kalanithi Maran who is Defendant No.2. The Plaintiff found recently that the film ‘JAILER’ featuring the well-known Tamil actor Mr. Rajnikanth had a scene in the said film wherein a contract killer is wearing the RCB jersey and also making derogatory and misogynistic statements about a lady in the said film. The entire scene has been described in the plaint along with the storyboard of the clips which clearly show the RCB jersey being used. The transcript of the scene has also been placed on record. The grievance of the Plaintiff is that the RCB jersey being used firstly without the permission of the Plaintiff and too in a negative depiction in the film, which is likely to dilute the RCB brand image, disparages the RCB brand, hurts the brand equity and also the rights of the sponsors of RCB i.e., the Muthoot Group whose name is also reflected in the jersey.

15. The further case of the Plaintiff is that the same would constitute disparagement and results in dilution and tarnishment of the Plaintiff’s brand image apart from constituting violation of Plaintiff’s statutory and common law rights. The suit therefore prays for a permanent injunction against the Defendants and for deletion of the said depiction of the RCB jersey in the film Jailer.

16. Ld. Counsel for the parties have appeared today and submit that the advance copy of the suit was served upon the Defendants on 19th August, 2023. Immediately thereafter, the Defendants had contacted the Plaintiff and they have in fact resolved their disputes in respect of the depiction of the RCB jersey in the film Jailer.

17. The e-mails exchanged between the parties have been shown to the Court. As per the said e-mails, the terms which have been agreed by the parties are as under:

i) That the Defendants would digitally alter the clippings of the movie that feature the RCB team jersey in a manner so as to ensure that the jersey is not identifiable as the RCB jersey. This would include deletion of primary colours of RCB jersey as also the branding of the sponsors, etc. which appear on the RCB jersey;

ii) The producers shall ensure that this alteration/editing is carried out prior to the release of the feature film on television, satellite or on any OTT platform;

iii) In view of the fact that the feature film Jailer has already been released in theatres as on 10th August, 2023, the parties have agreed that the Defendants shall carry out this alteration in theatrical mode, within ten days i.e. by 1st September, 2023.

18. The Defendants as also all parties acting for or on their behalf including their distribution network shall be bound by the above terms and conditions. With effect from 1st September, 2023, in the theatrical depiction of the film Jailer the RCB team jersey shall stand edited/altered. The Defendants shall ensure that after 1st September, 2023, none of the theatres would exhibit the RCB jersey in any form whatsoever. Insofar as television, satellite or any OTT platform is concerned, prior to the release thereof, the altered version of the film shall be broadcasted/telecasted.

19. Ld. Counsel for the Defendants shall file their vakalatnama by tomorrow i.e., 23rd August, 2023 and give a copy of the same to the Court Master.

20. In view of the above undertakings which are recorded on behalf of the Defendants, the Plaintiff does not press for cost and damages.

21. Binding the parties to these terms, the suit is decreed in terms of paragraphs 17-18 above. Accordingly, let the decree sheet be drawn up.

22. In view of the fact that the suit has been settled on the very first date when it was listed, full court fee is directed to be refunded to the Plaintiff through counsel, in terms of the judgment of the ld. Division Bench of this Court in Nutan Batra v. M/s. Buniyaad Associates, 2018 (255) DLT 696.

23. All pending applications are also disposed of.