Sholay’s reputation ‘unchallenged’, Delhi High Court says
The name Sholay evokes nostalgia. The 1975 film has, as the Delhi High Court observed, transcended generations. The Court also spoke approvingly of the film’s reputation as “part of India’s heritage”.
However, a legal issue arises if a person uses the name “Sholay” for their business. That’s what a man called Yogesh Patel did. He registered a domain name called www.sholay.com, published a magazine under the Sholay name and sold various merchandise using scenes and names from the film.
Sholay Media and Entertainment and Sippy Films have decided not to accept this. They sued Yogesh Patel and others.
Judge Pratibha M Singh observes in her judgment: “Some of the dialogue used in this film as ‘Jo dar gaya, samjho mar gaya’, ‘Ai chhammia’, ‘Arre o Sambha’, Kitne aadmi thay?’ are part of the colloquial language at the heart of Hindi. It received unbeatable reviews which led to the film being aired “Housefull” for over five years.
According to the complaint, the manner in which the defendants sought to circumvent the plaintiffs’ rights to the “SHOLAY” trademark was explained below: “(i) the registration of 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 connection with various online services such as “Sholay Jobs”, “Sholay Calendar”, “Sholay Chat”, “Sholay matrimony”, “Sholay e-messages”, etc. the following: i) Sholay.com Pvt Ltd ii) Sholay.com Inc iii) Sholay DOT Co Inc iv) Application for registration of the name SHOLAY as a trademark in India and the United States of America. »
In addition to the above, the defendants also used a similar logo, color scheme and device and offered Ganpati silver coins, candies and flavors from Indian Mithai stores, “SHOLAY” movie DVDs on their website . The word “SHOLAY” was also used as a meta tag by the defendants on their web pages.
The defendants maintained that they were in the business of computer products. It is alleged that the intention of the plaintiffs is to extort money from the defendants who created a popular website called www.sholay.com, registered by the defendants in the United States. Defendant’s case was that the suit disclosed no cause of action. Defendants insisted that a film title is not entitled to any rights and therefore there can be no deception.
The judge ruled in favor of the plaintiffs and stopped the Patels from using Sholay’s name and also fined them ₹25 lakh for costs and damages.
Defendants, their directors, partners, owners and anyone acting for and on their behalf are prohibited from using the name “SHOLAY” with respect to the goods and services, as well as from using the domain name “Sholay.com and making any reference to the film “SHOLAY” or using images or excerpts from said film, as well as selling goods using the name SHOLAY or images from said motion picture film. Defendants will also refrain from using any variation of the “SHOLAY” trademark/name on the Internet or otherwise using any metatag in source code.
Defendants’ adoption of the “SHOLAY” trademark was manifestly in bad faith and dishonest, due to the use of the logo, infringing designs, the sale of the “SHOLAY” movie DVD on the Defendants’ website, etc For the above reasons, the Court is satisfied that this is a case warranting an award of costs to the plaintiffs. Accordingly, this lawsuit is ordered for an amount of ₹25,00,000 as costs and damages.
June 05, 2022