November 25, 2017
Date of Judgment- November 22, 2017
In this case recently taken up by the Delhi High Court, the Court was confronted with alleged misuse of the Plaintiff’s well-known trademark BARBIE in a Bollywood song. The Plaintiff prayed to restrain the Defendants from using the trademark in their upcoming movie Tera Intezaar. However, the Plaintiff was denied relief in the case.
Background of the case: In the case, Plaintiffs claimed to be the owner of “BARBIE” trademark used in relation to toy dolls and other merchandise related to or connected to the toy doll named “BARBIE”. The Plaintiff contended that they have produced or licensed the product to numerous motion pictures based on plaintiffs’ world famous “BARBIE” brand. The Plaintiffs further stated that around November 15th they came across a music video on YouTube of a song titled “Barbie Girl” from the movie Tera Intezaar scheduled to be released on 24th November, 2017 and alleged that the the title and lyrics of the song used their registered and well known trademark “BARBIE” without their authorisation.
The Plaintiff also alleged that the lyrics of the impugned song were suggestive of an adult woman who is sexually attractive and enticing and that the contents of the impugned song / its video were not suitable for children and are provocative and inappropriate for younger girls and children, tarnishing and degrading the distinctive quality of the mark “BARBIE”.
In the case while pronouncing its order, the Delhi High Court made reference to the famous song “Lets go party”, also with the name “BARBIE” and stated that the lyrics of the said song was also provocative. The Plaintiff in this context informed the Court that they had moved application against “lets go party” song on the ground that the song was inappropriate for young girls however, the United States Court of Appeal, Ninth Circuit denied relief to the Plaintiff and held that music use of “BARBIE” mark in song was not an infringement of toy manufacturer’s trademark associated with the doll and that the trademark rights do not entitle the owner to quash an unauthorized use of the trademark by another who is communicating ideas or expressing points of view.
In view of facts and circumstances of the case, the Delhi High Court made reference to a recent verdict of Supreme Court in the case of Nachiketa Walhekar Vs. Central Board of Film Certification, (read here), wherein a writ had been filed for staying the release of a film namely “An Insignificant Man” as it contained a video clip pertaining to the petitioner.
In the case some noteworthy observations made by the Supreme Court are:
That freedom of speech and expression is sacrosanct and the said right should not be ordinarily interfered with.
That when the CBFC has granted the certificate and only something with regard to the petitioner, which was shown in the media, is being reflected in the film, this Court should restrain itself in not entertaining the writ petition or granting injunction.
That a film or a drama or a novel or a book is a creation of art. An artist has his own freedom to express himself in a manner which is not prohibited in law and such prohibitions are not read by implication to crucify the rights of expressive mind.
In view of the abovementioned observations of the Apex Court, the Delhi High Court opined that the law has constituted CBFC to adjudge the need if any for imposing ‘prior restraints’ which otherwise are at serious odds with the fundamental right enshrined in the Constitution of speech and expression.
That once a film has been cleared by CBFC for viewing, there is a presumption in its favour including of the same being not defamatory of any one. If after a film has been so cleared by CBFC, the Courts were to act as super Censor Board at the mere asking, it will have the potential of imposing arbitrary and at times irrational prior restraints causing severe damage to the right of freedom and expression.