Pankhuri Malik is an IPilogue Writer, IP Innovation Clinic Fellow, and an LLM Candidate at Osgoode Hall Law School.
On May 09, 2022, the Delhi High Court protected the title of the iconic Bollywood movie “Sholay” from trademark infringement and passing-off by a U.S. based company, as well as its Indian affiliates and founders.
The lawsuit was filed in 2001 when the defendants were found to have registered the domain name ‘www.sholay.com’ for its website. Additionally, the defendants were also found to be publishing a magazine with the same name and offering for sale various merchandise using content from the movie, including its title, in the same logo script. Through its website, the defendants were found to be offering various electronic services, such as web-chat, e-greetings, horoscopes, classifieds, and Bollywood news.
The iconic film “Sholay” was released in India in 1975 and became the biggest record-breaking film in the history of Indian cinema. The movie ran in fully packed theatres until 5 years after its release and made history on numerous occasions., The High Court of Delhi has previously acknowledged the widespread popularity of Sholay and rights in its’ title and content.
The defendants did not deny their use of the impugned marks. The defendants however contended, in their written response, that:
- Film titles are not entitled to IP protection;
- There is no probability of confusion between the defendants’ business and the plaintiffs’ movie;
- “Sholay” is a dictionary word (translation: embers)
These defences were considered by the court separately. Regarding confusion, the court held that the internet has created an additional market for “Sholay”. The popularity of the film, along with its widespread availability on the internet, would lead individuals to consider the defendants’ goods and services to be “off-shoots” from the film. The court also held that since the defendants’ website is popular within the Indian community in the U.S., the final demographic of the website is yet unclear. This, in addition to the use of an identical logo and marks by the defendant, creates a “likelihood of confusion”.
Can movie titles be protected as trademarks in India?
It is settled law in India (and Canada) that titles of movies, books, songs etc. are not eligible for copyright protection. However, Indian courts have accorded trademark protection to titles registered as trademarks and protected titles from passing off where:
- The title has acquired a secondary meaning; and
- There is likelihood of confusion of source, affiliation, sponsorship or connection of potential buyers/audience/viewers.
Accordingly, the court re-iterated that Sholay has acquired such a reputation over the past (almost) 50 years that the word Sholay connotes only that film and none other.
In accordance with the above findings, the High Court imposed an injunction restraining the defendants from using the mark Sholay and any images from the film for its business.
What about Canada?
As stated above, Canadian copyright law also does not protect titles of works. However, unlike India, Canadian courts also do not accord trademark protection to titles. The Federal Court of Canada last addressed this issue in Drolet v. Stiftung Gralsbotchaft where protection of a book title as a trademark was refused.
Canadian courts have not addressed this issue in the past decade. It will be interesting to see if the Courts’ stance has changed, given the increasing prevalence of the internet and streaming of content, and sale of artwork etc. in recent years.