Neela Film Production Private Limited v Tarakmehtakaooltachashmah.com & Ors before the Delhi High Court was a suit for restraining an array of defendants, including John Does, from, among others, infringement of copyright and trademark, misappropriation of publicity rights, unfair competition, passing off and dilution.
The intellectual property rights of the plaintiff, Neela Film Production Private Limited (Neela Films), an Indian production house, in contention before the Court centred around a highly popular sitcom titled, ‘Taarak Mehta Ka Ooltah Chasmah’ (TMKOC). TMKOC, India’s longest running daily sitcom, was first aired on television in 2008 and has been running since then, with approximately 4,000 episodes.
Neela Films owns exclusive intellectual property rights to all concept, format and underlying works of TMKOC. They also own trademark registrations for various marks in respect of TMKOC as well as copyright in the various characters and animations of TMKOC, being works protectable under the Indian Copyright Act, 1957. They have also developed merchandise with the characters of TMKOC.
Neela Films claimed in the suit that there has been rampant infringement of their rights in TMKOC and that content that infringes the rights in TMKOC is created and published daily by countless persons who hide behind the veil of anonymity provided by the internet. It argued that it has become impossible for them to act and prosecute individual acts of infringement. Accordingly, it sought orders against John Does. The following acts of infringement were listed by Neela Films in the suit:
- Registration of the domain name taarakmehtakaooltahchashmah.com, which infringes the registered trademarks of Neela Films;
- Unauthorised display of the artwork, characters and other intellectual property in TMKOC on the website that resolves to the above domain name;
- Sale of merchandise bearing the intellectual property in TMKOC including through the e-commerce platform Amazon to international customers and further diluting the value of the intellectual property in TMKOC;
- YouTube channels publishing videos or images containing AI generated images /deepfakes of characters of TMKOC;
- Creating video games based on TMKOC and uploading videos of the same;
- Publishing videos on YouTube, unauthorizedly reproducing and utilizing the characters, sets, images and videos of the characters, hashtags comprising of the trademarks of TMKOC, all aimed to falsely indicate an association with TMKOC, amounting to unfair competition as Neela Films also publishes content on social media and YouTube based on TMKOC; and
- Publishing videos on YouTube wherein they are sharing sexually explicit and vulgar content using the name and image of the characters of TMKOC.
Neela Fims argued that the acts of the defendants were without their consent and that these clearly misappropriated their intellectual property rights owned by them in the characters of TMKOC. It was contended that the use of such works by the defendants, which is for commercial gains, would draw a direct nexus to TMKOC and thus misrepresentative in nature. Further, these acts of the defendants are extremely egregious and highly detrimental to the goodwill and reputation painstakingly built by Neela Films in TMKOC. Neela Films will be exposed to irreparable financial and reputational loss and injury if the defendants are not restrained from misusing the intellectual property in TMKOC.
After reviewing the submissions of Neela Films and considering the facts of the case, the Court examined the judicial precedents in the matter and held that the celebrity’s right of endorsement cannot be destroyed by permitting unauthorised dissemination and sale of merchandise bearing the face or attributes of their persona on it. Accordingly, the Court restrained the defendants including the John Does from among others, hosting, streaming, broadcasting, re- transmitting, exhibiting, making available for viewing and downloading, providing access to and communicating to the public in any manner or platform, any content, goods or services, that amounts to infringement or passing off, of the copyrighted material and registered trademarks of Neela Films. The Court further ordered that the YouTube posts, which contain characters or material from TMKOC shown in pornographic contexts be taken down by the defendants within 48 hours. The Court also granted Neela Films the liberty to notify YouTube to block or suspend all the infringing URLs that have been uploaded by the defendants listed in the suit.