“Sholay”, the title of the “iconic film”, could not be held to be bereft of protection, the Delhi High Court said today, restraining people from using the word for commercial purposes, especially if the commerce is cinema-related. The high court, which said certain films, like Sholay, cross the boundaries of just being ordinary words, also awarded damages of Rs 25 lakh to the makers of the movie — Sholay Media and Entertainment Pvt Ltd and Sippy Films Pvt Ltd — which had filed the lawsuit against some people who were using the popular film title to run their businesses.
Dealing with a trademark lawsuit, Justice Prathiba M Singh said that titles and films were capable of being recognised under the trademark law.
The high court noted that the case had been contested for longer than 20 years and the adoption of the mark ‘Sholay’ by the defendants for selling the DVD of the film on their website etc was “clearly mala fide and dishonest”.
Awarding Rs 25 lakh as costs and damages to the plaintiff and granting three months to the defendants to pay the amount, the court said, “Accordingly, 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 court said in its order released on 23 May.
The court said further, “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, cannot be held to be devoid of protection. 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 recognised under trademark law and in India ‘Sholay’ would be a classic example of such a case.”
The high court also restrained the defendants from using any variation of the mark or name ‘Sholay’ on the internet or otherwise including use as a metatag in the source code and directed the transfer of the infringing domain names to the plaintiffs.
“If there is one film that transcends generations of Indians, it is ‘Sholay’. The said film, its characters, dialogues, settings, and 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 court observed.
“In the present case, the defendants have contested this matter for over 20 years. The adoption of the mark ‘SHOLAY’ by the Defendants was clearly mala fide and dishonest, owing to the use of the infringing logo, designs (and) selling of the DVD of the film ‘Sholay’ on the Defendants’ website, etc,” the high court stated.
Represented by lawyers Pravin Anand and Dhruv Anand of the law firm Anand and Anand, the plaintiff had filed the lawsuit against the defendants for indulging in several infringing activities including registering the domain name ‘http://www.sholay.com” \nwww.sholay.com’, publishing a magazine using the mark/name ‘Sholay’ and selling merchandise using scenes and names from the Bollywood movie that was released on 15 August 1975.
The defendants sought to justify their use of the plaintiffs’ mark on several grounds including that film titles are not entitled to protection, there is no probability of confusion on the internet, and that ‘Sholay’ is a dictionary word.