Sholay Media Entertainment and Anr. Vs. Yogesh Patel And Ors.(Delhi High Court)
Facts- If there is one film that transcends generations of Indians, it is ‘SHOLAY’. The said film, its characters, dialogues, settings, box office collections are legendary. Undoubtedly, ‘SHOLAY’ is one of the biggest, record-breaking films that India has ever produced, in the history of Indian cinema. The present suit has been filed by Sholay Media and Entertainment Pvt Ltd. and Sippy Films Pvt. Ltd. against Defendant no. 1 to 8.
The said Defendants have registered the domain name ‘www.sholay.com’, published a magazine using the mark/name Sholay and have put on sale various merchandise, using scenes and names from the movie ‘SHOLAY’. Defendant No.5 – Netangle.com Pvt. Ltd. is a company registered by Defendant Nos. 1 to 3 as well. Defendant Nos. 6, 7, and 8 are controlling entities of the domain name ‘Sholay.com’.
Conclusion- The use of the mark ‘SHOLAY’ as part of domain names and company names, etc. are completely illegal and unlawful in these facts.
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.
FULL TEXT OF THE JUDGMENT/ORDER OF DELHI HIGH COURT
1. This hearing has been done through hybrid mode.
2. If there is one film that transcends generations of Indians, it is ‘SHOLAY’. The said film, its characters, dialogues, settings, box office collections are legendary. Undoubtedly, ‘SHOLAY’ is one of the biggest, record-breaking films that India has ever produced, in the history of Indian cinema.
3. The present suit has been filed by Sholay Media and Entertainment Pvt Ltd. and Sippy Films Pvt. Ltd. against Defendant Nos. 1 to 8 who are described hereinbelow. Defendant Nos. 1 to 3 are members of the Patel family: Mr. Yogesh Patel, Mr. Jayesh Patel and Ms. Bhavna Patel and Defendant No.4 is ‘ www.sholay.com Pvt. Ltd’. The said Defendants have registered the domain name ‘www.sholay.com’, published a magazine using the mark/name Sholay and have put on sale various merchandise, using scenes and names from the movie ‘SHOLAY’. Defendant No.5 – Netangle.com Pvt. Ltd. is a company registered by Defendant Nos. 1 to 3 as well. Defendant Nos. 6, 7, and 8 are controlling entities of the domain name ‘Sholay.com’.
4. The film ‘SHOLAY’ was produced by Mr. G. P. Sippy and the censor certificate for the film was issued on 8th August 1975, who was running M/s. Sippy Films. It was released on Independence Day i.e., 15th August 1975. Several well-known actors and actresses namely, Mr. Sanjeev Kumar, Mr. Amitabh Bachchan, Mr. Dharmendra, Ms. Hema Malini, Ms. Jaya Bhaduri, and Amjad Khan, featured in the said film. It would not be inapposite to state that ‘SHOLAY’ has acquired a cult status and the film’s appeal has cut across geographical boundaries, language, ideology, class, etc. It has been rightly described as a film which is a part of India’s heritage. Some of the dialogues used in this film such as ‘Jo dar gaya, samjho mar gaya’, ‘Ai chhammia’, ‘Arre o Sambha’, Kitne aadmi the?’ 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 movie is stated to have very unique features some of which are:
i. ‘SHOLAY’ was the first Indian movie to market its background music/songs and dialogues.
ii. The film made use of several cinematic innovations, such as the use of 70 mm format with 6 track stereophonic sound.
iii. SHOLAY chalked up the record of maximum shows and the highest number of prints (1100) among Indian movies. In fact, it continues to have over 100 prints in circulation even today.
5. Enormous investment went into the making of the film. The mention of the word ‘SHOLAY’ immediately creates a connection with the movie ‘SHOLAY’. There are industry estimates which claim that, although the words ‘SHOLAY’ may have a dictionary meaning in Hindi (specifically, ‘burning coal’), upon the movie going public, the word ‘SHOLAY’ came to be associated only with the film.
6. The rights in the word ‘SHOLAY’, which is also a registered trademark, have been recognised by Courts in favour of the Plaintiff. In judgment dated 24th August, 2015, in CS(OS) 1892/2006 titled Sholay Media and Entertainment Pvt. Ltd. and Anr. v. Parag Sanghavi and Ors. the history of the Plaintiff Companies and the devolution of rights was summarised and the Court had recognised the rights of the Plaintiffs herein – Sholay Media and Entertainment Pvt. Ltd. and Sippy Films Pvt. Ltd., in the mark ‘SHOLAY’. It was also observed that the copyright in the film which was produced by Sippy Films Pvt. Ltd. vests in the producer, in terms of Section 17 in the Copyright Act, 1957. The findings of the Court are extracted hereinbelow.
7. The grievance of the Plaintiffs in the present case is that upon coming across a magazine released in December, 2000 titled “IT-Information Technology”, the Plaintiffs learnt that the Defendants had registered the domain name ‘sholay.com’. The magazine was accompanied by a free compact disk (“CD”) containing the advertisement of the website. In the said article published in the magazine, the representation made was that the biggest Bollywood blockbuster has hit the internet. The article claimed ‘SHOLAY.com’ is a comprehensive site that offers you much more than its Bollywood alias did. In the said advertisement of the website, the Defendants sought to create an entertainment portal having various services such as chat, e-greetings, countdowns, horoscopes kid zone, classifieds, matrimonial, and grocery store, as depicted below. The website covered various subjects including, politics to cricket, finance to shopping, news updates, and bulletins from Bollywood. The said advertisement is set out below:
