- A movie, released on 24th November, called “Tera Intezaar”. “Tera Intezaar” was a Sunny Leone and Arbaaz Khan starrer.
- The movie wasn’t released at the time of the Order’s issue (22nd November).
- The song was released on 8th of november and the plaintiffs, around 15th November, 2017, came across a music video on YouTube of a song.
- The lyrics of the song:
“ I’m a sexy Barbie girl……hip matke chaal……milky milky gaal…..Barbie beauty ko sambhal……..” etc.”
Plaintiff (Mattel Inc.) is an American multinational toy manufacturing and entertainment company founded in 1945. The plaintiff is known World-wide for manufacturing its toy named “Barbie doll”
Apart from this, the Barbie girl in the song has been impersonated by an actress who is a prominent figure from the adult entertainment industry.
- Consequently, Mattel Inc. have sued for use of the defendant’s trademark “BARBIE” in their song amounting to infringement and dilution of the plaintiff’s trademark.
Application for hearing under Section 151 of CPC, 1908 for “in-camera” proceeding.
Mattel Inc had filed an application under Section 151 of Code of Civil Procedure, 1908 (CPC) for “in-camera” proceeding because plaintiff considers the following reasons for this issue:-
(a) suit pertains to a highly confidential,
(b) the matter may invoke media attention leading to distorting/misrepresentation of facts and proceedings of the Court,
(c) the parties will be more receptive to a settlement in the absence of media.
The court set aside the application on the ground that hearing the ex parte injunction proceeding “in camera” would not serve any purpose. The court says it fails to see the purpose in the ex parte hearing also being in camera if ultimately the dispute is to come out in the open and reporting in the media thereof cannot be prevented.”
Has there been infringement of a right and trademark dilusion by using the mark “Barbie”?
Trademark dilution is a trademark law concept giving the owner of a famous or well-known trademark power to forbid others from using the mark in a way that would lessen its uniqueness.
Mattel Inc. claims “Barbie has been identified as a well known trademark worldwide and the defendants by adopting the mark “BARBIE” as a catchy word in the title and lyrics of their impugned song video solely to generate publicity and attract unwanted attention for commercial exploitation and gain. The lyrics of the impugned songs are suggestive of an adult woman who is sexually attractive and enticing.”
Similarly , the plaintiff Mattel, Inc. had brought the action, from which the appeal to the United States Court of Appeal arose, against the music companies marketing the “Let’s go party” song by the band Aqua, on similar grounds as on which the plaintiffs were seeking to restrain the defendants therein.
Points that can be noted from the U.S judgement :
1) Music companies which use the “BARBIE” mark in songs are not an infringement of the toy manufacturer’s trademark associated with dolls.
2) “Dilution” refers to the reducing away of the value of a trademark when it is used to identify different products.
3) Trademark law grants relief only against users that are likely to be confused.
DELHI HIGH COURT DECISION:
“The court considered the angle of public interest, acting as superior censors,with regard to ex parte order as sought by plaintiff, restraining the defendants from releasing the film Tera Intezaar with the impugned song.The opinion that no case for grant of ex parte order sought, restraining the defendants from releasing the film Tera Intezaar with the impugned song, ought not to be granted. Granting of any such order is likely to send a wrong signal to the public at large since CBFC (Central Board of Film Certification) has not granted a certificate to the movie.”
An order issued by Justice Endlaw denied Mattel Inc. (the famed toymaker behind the Barbie doll) an ex-parte injunction restricting the release of the movie “Tera Intezaar” with the song “Barbie Girl”. The use of catchy words and established brand name in a song, to attract the attention of the viewer is not something that is new these days.
However, the court was of the opinion that it will be unfair to the plaintiff if it did not take into account the compilation of the judgements on the points related to (i) Bloomberg, deletion and removal; (ii) infringement through objectionable content; and, (iii) trademark dilution; and, on (iv) in camera proceedings and has contended that there is no case of pornographic association, in which injunction has been refused.
Therefore, Justice Rajiv Sahai Endlaw in the order mentioned that “It will be open to the counsel for the plaintiffs to, with or without a copy of this Order, call upon the defendants to delete the word “BARBIE” from the impugned song and to notify the defendants that on their failure to do so, the plaintiffs would be entitled to damages from the defendants.”
Accordingly the maker of the film updated the song name to “I’m Sexy Baby Girl”.
- Case Citation: Mattel, Inc. and Ors. V. Aman Bijal Mehta and Ors 20182018 AD(Delhi)3,245(2017)DLT677
- Ashi Singh
- Faculty of Law, Delhi University (2nd Year)
- [email protected]