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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. This was witnessed in Salman Khan starrer “Dabangg”. The movie used the words “Zandu Balm”, a product of Emami group (hereinafter Emami), in one of their songs. Emami served a legal notice on the makers of the movie for copyright infringement. However, the parties i.e. makers of Dabangg and Emami agreed mutually and the matter was settled out of court. The author further would be discussing one of the latest instances before the High Court of Delhi, in the matter of Mattel, Inc. and Ors. V. AmanBijal Mehta and Ors , wherein a similar situation had cropped up.
“Tera Intezaar” is a Sunny Leone and Arbaaz Khan starrer. The movie was scheduled to be released on 24th November, 2017 but was eventually released on 1st December, 2017. The movie contains a song with the word ‘Barbie’ while the chorus line of the Sunny Leone song is, “I am a sexy Barbie Girl”. Mattel Inc. is the manufacturer of the trademark Barbie dolls. The makers of the movie received a notice from Mattel Inc. just three days before its release, objecting to its song “Barbie Girl”. The two major contentions of Mattel Inc. were:
- Mattel had alleged that the song represents their product i.e., Barbie in a manner which is detrimental to the values and interests of the target customer base that they cater to.
- Mattel had objected to the actress featuring in the song, as she is a prominent figure from the adult entertainment industry and most of the customer base of Mattel’s product is younger girls and children. According to Mattel Inc. this would be inappropriate and also would degrade the distinctive mark that Barbie holds.
In a similar case between Mattel Inc. V. MCA Records Inc .
The song, by a Danish group called Aqua, includes the lyrics, “I’m a Barbie girl, in a Barbie world.”
Mattel claims that the customers who buy Barbie dolls were duped into thinking that the song was an advertisement for the doll or part of Mattel’s official line of Barbie products. Mattel also claims that Ad materials for the song used the same electric pink colour which is used by Mattel for packaging Barbie dolls.
MCA sold an estimated 1.4 million copies of the recording. The music company calls the song a parody protected by the First Amendment. Mattel lost in lower courts. California-based 9th U.S. Circuit Court of Appeals rejected the notion that consumers were misled by the song. Appeals Judge Alex Kozinski, known for colourful language wrote “the parties are advised to chill.”
Facts of the case
Mattel Inc. with its subsidiary Mattel Toys (India) Pvt. Ltd (hereinafter plaintiff) raised the same heat and filed a suit against the makers of the Film despite the uncommon advice.
Barbie has been identified as a well known trademark in various jurisdictions. The plaintiff is the owner of the trademark “Barbie” and other merchandise related to or connected to it.
The plaintiff, around 15th November, 2017, 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. The title and lyrics of the song used the trademark “Barbie” without an authorisation of the plaintiff and in a manner that will harm interests of the target customer of the Plaintiff. The sales in India of Barbie products over the last five years have exceeded 2000 million Indian rupees.
Plaintiff claims that the defendants have adopted the mark “Barbie” in order to generate publicity and attract unwanted attention for commercial exploitation and gain. The Barbie girl in the impugned song has been impersonated by an actor who is a prominent figure from the adult entertainment industry.
Analysis by the court
The Court observed that an ex parte order as sought by plaintiff, restraining the defendants from releasing the film “Tera Intezaar” with the impugned song would send a wrong signal to the public at large since CBFC has not granted a certificate to the movie.
Justice End law then noted that the Central Board of Film Certification (CBFC) had been tasked with imposition of “prior restraints” on movies. It, therefore, opined that once a film is cleared by the CBFC, it is presumed that the same is not defamatory. He further added “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.”
Mattel under section 151 of CPC applied to conduct the ex parte hearing ‘in camera’. Court rejected the application as it did not see any point in holding only ex parte hearing ‘in camera’ and entire trial in open court.
The court was of the view that ex parte order to restrain the defendants from releasing the film “Tera Intezaar” with the impugned song, ought not to be granted.
The court was of the opinion that it will be prejudicial to the plaintiff if it did not take into account the compilation of the judgements on the points related to Bloomberg, deletion and removal; (ii) infringement through objectionable content; and, (iii) trademark dilution; and, on (iv) in camera proceedings.
So, Justice End law in the order stated “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 makers of the Film changed the song’s name to “I’m Sexy Baby Girl.”
According to author the court’s view that, the CBFC clearance is the prima facie assumption on the legality of the work and the courts acting as superior censor will dilute the worth of freedom of speech, is the right stand.
The court considered the angle of public interest, with regard to ex parte order as sought by plaintiff, restraining the defendants from releasing the film Tera Intezaar with the impugned song. This was an important consideration pursuant to the recent chaos created on the release “Padmavat.”
Author: Ms. Aditi Limaye, intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at firstname.lastname@example.org
 20182018AD(Delhi)3, 245(2017)DLT677
 296 F.3d 894