D.M. Entertainment Pvt. Ltd v. Baby Gift House & Ors. [MANU/DE/2043/2010]

Introduction-

This case highlights the different components and principles of infringement under Intellectual Property Rights.

One peculiar point about this case is that it is hinged on the rights to freedom of expression, its exceptions and what happens when one misuses or overuses the inherent right to freedom of speech.

It is true that everyone has the right to freedom of speech and expression but the law was not provided to be abused. Also, in instances where it is abused, the law tries to ensure that such abuse falls under a particular genre of expression such as Pastiche, Parody, etc.

The facts of the Case-

D.M. which stands for Daler Mehndi is famous and popular Punjabi musician. His pop music is greatly loved in Punjab from where he hails from. Prior to 1996, Daler Mehndi had the entire rights pertaining to his name and brand vested on him. He oversaw the management and production of his music career.

In 1996, a company was incorporated to oversee Daler Mehndi and manage his publicity. Such publicity includes his music labels, his appearances, fame, awards, etc. The company was registered in 1996.

Subsequently, Daler Mehndi handed over his entire interests and rights to the Plaintiff. The entirety of the rights was to do whatever they want with the name including the trademark but such must be within the confines of the law.

The defendants were sellers and distributors of toys in India. They created and produced a toy in India which looks like Daler Mehndi and sings a few of his musical lines. The toys were traded not under D. M. Entertainment Pvt. Ltd but they were all called Daler Mehndi toys and products.

The Plaintiff sued the defendants for passing off, false endorsement, and infringement of artistic rights to publicity.

Issues Raised-

• The Plaintiff contended that the Defendants where passing off by producing toys which can be viewed by a third party as products sanctioned by Daler Mehndi or the company.
• The defendants relied on the economic value of his reputation to produce products that although not identical but similar to the artist.
• The Plaintiff also contended that the defendants sold those products under false endorsements. This means that anyone buying the product will actually think that they represent the company or Daler Mehndi himself and this can affect his reputation and undermine his authority.
• Another issue was the infringement of the artistic rights to publicity because they relied on his music and videos to produce the toys. The toys could sing a recorded version of his songs and videos. This was done without the express or implied permission of the company.
• The product infringement on Daler Mehndi’s reputation and personality especially hiss rights on commercial exploitation.

Judgment Delivered-

The Court analyzed the permanent injunction filed by the Plaintiff and the issues raised pertaining to the case and heard as follows.

In an instance where the Plaintiff brought about the publicity rights and commercial exploitation, the court held that such is not available to the plaintiff. The reason is that every human being is provided with the rights to freedom of speech and expression. Such right is inherent and cannot be taken away.

If this right is taken away, there would be no class in genres of expression. This right brought about instances of

• Lampooning,
• Pastiche,
• Caricature,
• Parodies, etc.

These instances can be expressed through several means such as

• Mime,
• Cartoons in newspapers, magazines, and booklets,
• Theatre,
• Songs,
• Films, etc.

Carrying out any of these instances does not amount to commercial exploitation either does it amount to an infringement of publicity rights.

If the Plaintiff felt that the actions of the defendants affect him through the toys by bringing him to ridicule in the eyes of right-thinking or reasonable persons in the society, or disparages him or defames him, then he can sue for defamation – Libel, and Slander and the remedy will be for damages. In a case where it does not affect his reputation or personality, the infringement will fail.

In the claim for false endorsement, the court argued that where an individual or a group of persons uses the name of another sell a product in such a way that the society believes the products were either from the person it is sold under or was endorsed by him or her, it will amount to false endorsement.

Therefore, the defendants were infringing on the name, brand, and trademark of the Daler Mehndi by relying on his fame to market the toys. They ought to have obtained permission prior to producing those toys.

On the aspect of trademark infringement, the court highlighted section 29 of the Trademark Act, 1999.

This section of the Act provides that when an individual in the course of trade uses a name or mark which is identical or similar to another without an express permission, it will amount to an infringement. As such, the defendants were infringing on the trademark of the plaintiff by making use of the name and trademark to sell their toys.

Although Passing off was not defined in the Act but it is portraying deceiving the people to think or believe that the toys being sold were a part of the company managing the rights and interest of Daler Mehndi.

Therefore, the Defendant’s reply that they are immune from the infringement allegation because their products are not identical but similar to the trademark did not hold water. The reason is that once the said product will create confusion in the eyes of the people even though it is not identical amounts to an infringement because such product is deceptive.

After analyzing the issues presented, the Plaintiff won and the court awarded a permanent injunction restraining the defendants from producing or selling the toys.

Conclusion

This is a classic case of infringement of trademark and passing off, including what the courts define as commercial exploitation. The Plaintiff succeeded because they had a strong case against the defendants.