Appellants: D.M. Entertainment Pvt. Ltd.

Vs.

Appellants: D.M. Entertainment Pvt. Ltd.

Vs.

Respondent: Baby Gift House and Ors.

Decided On: 29.04.2010, [MANU/DE/2043/2010]

Held: The plaintiff in the suit seeks a permanent injunction against the defendants restraining from infringing his right of publicity and against false endorsement, leading to passing off. He claims damages and rendition of accounts.

The plaintiff company was incorporated in 1996, in which the letters DM stands for the initials of the name, Daler Mehndi (hereafter "the artist"). The company was originally incorporated to manage his advancing career. The plaintiff also helps in raising funds for charities, causes and to fund the DALER MEHNDI GREEN DRIVE project and has made a significant mark in providing employment and broad-based awareness in terms of music, ecological/environmental and social issues.

The first defendant, Baby Gift shop- The Toy Shop, operates a toy store at 13/18, Ajmal Khan Road, Karol Bhag, New Delhi; the second defendant is a gift gallery in Bengali Market, Delhi; the third defendant similarly is a shop selling gift items at Kamala Nagar, and the fourth defendant, Poonam Gift Palace operates at 133, Palika Bazaar, Connaught Place, New Delhi; (they are hereafter collectively referred to as "the defendants"). All defendants are engaged in the business of selling the impugned product, i.e. dolls, which, the plaintiff alleges, are cheap imitations of, and identical to the likeness of the artist. Such dolls or three-dimensional images are packaged under the brand or banner "SUN TOYS" indicating that there is a single source for all the products sold.

The words, "MADE IN CHINA" appears at the bottom of the doll indicates that the same product is imported from China and sold by each defendant. It is submitted that the importation and sale, of such dolls or images, which claim to be able to sing a few lines of the artist's compositions, are a blatant infringement of the artist's right to control the commercial exploitation of his persona. It is pertinent to note that the plaintiff has exhibited the first Defendant's cash memo reflecting the bill raised for the sale of the Doll lists the words, "DALER MEHNDI" under the heading "Description of The Article Sold".

The suit alleges that the defendants have, without the plaintiff's authority and consent misappropriated the artist's persona and likeness for their ignoble ends, thereby invading the plaintiff's exclusive rights to market the personality of the artist and also infringed the copyright to the literary and musical works in the song, BOLO TA RA RA RA. Such acts of misappropriation of the plaintiff's exclusive right of publicity, by the defendants, and their persisting to sell such infringing products, containing false endorsements is completely mala fide and liable to be restrained. In addition to causing commercial loss to the plaintiff by infringing it's exclusive right to market as well as caused tremendous loss and damage to the reputation of the plaintiff and the artist and further, the defendants attempt to induce the consumers and purchasers of such products, to believe that, plaintiff has either licensed or the Defendants have some connection with the plaintiff, or the artist, to use its exclusive right to market images of the artist.

Held: An individual claiming false endorsement must prove that the use of the identity likely misled consumers into believing the concerned personality endorsed the product at issue. In this case, it has seen that the use of Mr Mehndi's persona to capitalize upon his name by using its conjunction with the commercial product is not proper or legitimate; it amounts to a clear dilution of the uniqueness of such personality and gives rise to a false belief that, plaintiff has either licensed or the Defendants have some connection with the plaintiff or the artist, to use its exclusive right to market images of the artist.

In a passing-off action, one has to see as to whether the Defendant is selling goods/service so marked to be designed or calculated to lead purchasers to believe that they are plaintiffs’ goods. Even if a person uses another's a well-known trademark or trademark similar thereto for goods or services that are not similar to those provided by such other person, although it does not confuse consumers as to the source of goods or services, it may cause damage to the well-known trademark by reducing or diluting the trademarks power to indicate the source. Further, where a person uses another person's well-known trademark or trademark similar thereto to dilute the trademark, such use does not confuse consumers.

Given the above findings, it is clear that the plaintiff has also established its case for passing off. The evidence of the plaintiff has gone un-rebutted which includes loss of business, reputation and goodwill in the market.

The suit, therefore, deserves to succeed, as far as the claim for a permanent injunction is concerned. However, so far as other reliefs are concerned, the court is of opinion that in the absence of any positive evidence of persistent or widespread appropriation of the persona, for commercial gain, the plaintiffs are entitled to token damages, in addition to costs. The suit is accordingly decreed to the extent of the claim for permanent injunction; a decree for Rs. 1,00,000/- as damages, is also granted. The suit is decreed, in the above terms, with costs.

Respondent: Baby Gift House and Ors.

Decided On: 29.04.2010, [MANU/DE/2043/2010]

Held: The plaintiff in the suit seeks permanent injunction against the defendants restraining from infringing his right of publicity and against false endorsement, leading to passing off. He claims damages and rendition of accounts.

The plaintiff company was incorporated in 1996, in which the letters DM stands for the initials of the name, Daler Mehndi (hereafter "the artist"). The company was originally incorporated to manage his advancing career. The plaintiff also helps in raising funds for charities, causes and to fund the DALER MEHNDI GREEN DRIVE project and has made a significant mark in providing employment and broad-based awareness in terms of music, ecological/environmental and social issues.

The first defendant, Baby Gift shop- The Toy Shop, operates a toy store at 13/18, Ajmal Khan Road, Karol Bhag, New Delhi; the second defendant is a gift gallery in Bengali Market, Delhi; the third defendant similarly is a shop selling gift items at Kamala Nagar, and the fourth defendant, Poonam Gift Palace operates at 133, Palika Bazaar, Connaught Place, New Delhi; (they are hereafter collectively referred to as "the defendants"). All defendants are engaged in the business of selling the impugned product, i.e. dolls, which, the plaintiff alleges, are cheap imitations of, and identical to the likeness of the artist. Such dolls, or three-dimensional images are packaged under the brand or banner "SUN TOYS" indicating that there is a single source for all the products sold.

The words, "MADE IN CHINA" appears at the bottom of the doll indicates that the same product is imported from China and sold by each defendant. It is submitted that the importation and sale, of such dolls or images, which claim to be able to sing a few lines of the artist's compositions, are a blatant infringement of the artist's right to control the commercial exploitation of his persona. It is pertinent to note that the plaintiff has exhibited the first Defendant's cash memo reflecting the bill raised for the sale of the Doll lists the words, "DALER MEHNDI" under the heading "Description of The Article Sold".

The suit alleges that the defendants have, without the plaintiff's authority and consent misappropriated the artist's persona and likeness for their own ignoble ends, thereby invading the plaintiff's exclusive rights to market the personality of the artist and also infringed the copyright to the literary and musical works in the song, BOLO TA RA RA RA. Such acts of misappropriation of the plaintiff's exclusive right of publicity, by the defendants, and their persisting to sell such infringing products, containing false endorsements is completely mala fide and liable to be restrained. In addition to causing commercial loss to the plaintiff by infringing its exclusive right to market as well as caused tremendous loss and damage to the reputation of the plaintiff and the artist and further, the defendants attempt to induce the consumers and purchasers of such products, to believe that, plaintiff has either licensed or the Defendants have some connection with the plaintiff, or the artist, to use its exclusive right to market images of the artist.

Held: An individual claiming false endorsement must prove that the use of the identity likely misled consumers into believing the concerned personality endorsed the product at issue. In this case, it has seen that the use of Mr. Mehndi's persona for the purpose of capitalizing upon his name by using its conjunction with the commercial product is not proper or legitimate; it amounts to a clear dilution of uniqueness of such personality and gives rise to a false belief that, plaintiff has either licensed or the Defendants have some connection with the plaintiff or the artist, to use its exclusive right to market images of the artist.

In a passing off action, one has to see as to whether the Defendant is selling goods/service so marked to be designed or calculated to lead purchasers to believe that they are plaintiffs’ goods. Even if a person uses another's well-known trademark or trade mark similar thereto for goods or services that are not similar to those provided by such other person, although it does not cause confusion among consumers as to the source of goods or services, it may cause damage to the well-known trade mark by reducing or diluting the trademarks power to indicate the source. Further, where a person uses another person's well-known trade mark or trademark similar thereto for the purpose of diluting the trade mark, such use does not cause confusion among consumers.

In view of the above findings, it is clear that the plaintiff has also established its case for passing off. The evidence of the plaintiff has gone un-rebutted which includes loss of business, reputation and goodwill in the market.

The suit therefore, deserves to succeed, as far as the claim for permanent injunction is concerned. However, so far as far as other reliefs are concerned, the court is of opinion that in the absence of any positive evidence of persistent or widespread appropriation of the persona, for commercial gain, the plaintiffs are entitled to token damages, in addition to costs. The suit is accordingly decreed to the extent of claim for permanent injunction; a decree for Rs. 1,00,000/- as damages, is also granted. The suit is decreed, in the above terms, with costs.