Recently, in the matter of Neela Film Productions Private Limited vs Taarakmehtakaooltahchashmah.Com & Ors., the plaintiff approached the Delhi High Court seeking urgent relief for the alleged infringement of their registered copyright and trademark, including unauthorised sale of infringing merchandise of the plaintiff’s show.
Facts of the Case
The plaintiff is a renowned Indian production house with the famous show ‘Taarak Mehta Ka Ooltah Chashmah’. Through its predecessor, Neela Tele Films Pvt. Ltd., the plaintiff has produced several fiction and non-fiction shows since 1998, broadcast on various television channels and OTT platforms. The plaintiff submitted that it owns exclusive rights to all concepts, formats and intellectual property relating to the show. This includes the rights in the title, the format, rights to the characters, characterisations, character mannerisms, characteristic dialogues, voice, dialogue delivery, mannerism and style of the characters, costumes of the characters, the overall look of the character including hair, make-up and costume etc., all underlying literary, dramatic, artistic and musical works, derivative and adaptation rights in respect of the show.
The plaintiff had also applied for and obtained trademark registrations for various marks, including ‘Taarak Mehta Ka Ooltah Chashmah’, ‘Ooltah Chashmah’, ‘Taarak Mehta’, ‘Jethaalal’, ‘Gokuldhaam’, etc. The plaintiff also owned copyright in its various characters and animations under Section 13 of The Copyright Act, 1957. Additionally, the plaintiff had also applied for and obtained copyright registrations for the show’s characters and various animations.
The plaintiff asserted that they became aware of extensive violations of their rights by numerous individuals across various online platforms. The plaintiff found it challenging to take legal action against each infringer due to the vastitude of the Internet and the advanced technologies, including AI, that facilitated such infringements. As a result, the plaintiff sought to obtain orders against the defendants and any John Doe parties in order to address and restrain the widespread and continuous violation of their rights.
Infringements Identified by the Plaintiff
Defendant No. 1 was operating a website registered with the domain name https://taarakmehtakaooltahchashmah.com/, which features the artwork, characters, and other intellectual property of the plaintiff in the show. Defendants No. 2 to 4 were selling merchandise that featured images and dialogues of characters from the plaintiff’s show. They were also using the names of the characters and the name of the show as product titles on their website: https://brokememers.com/collections/tmkoc. Additionally, Defendant No. 2 listed such goods on third-party e-commerce platforms “Amazon” and “Redbubble,” selling to international customers, thereby further diluting and tarnishing the value of the plaintiff’s intellectual property in the show. Defendant No. 3 sold posters, and Defendant No. 4 sold mugs featuring the images and dialogues of the characters from the plaintiff’s show, also using the name of the characters and the show as the product title.
Defendants 5 to 9 are YouTube channels that were publishing videos or images containing AI-generated images or deep fakes of characters from the show. The plaintiff argued that the defendants’ actions clearly infringed upon the former’s rights to the show’s characters by using their image, likeness, and persona to create new images through generative AI without the plaintiff’s consent.
Defendants 11 and 12 had developed video games inspired by the television show and were sharing videos of their gameplay. These video games extensively incorporated the show’s characters and other key elements, as well as various trademarks belonging to the plaintiff. The plaintiff stated that these video games were clearly adapted from or directly derived from the show.
Defendants No. 14 and 15 were found to be actively uploading videos on their YouTube channel, containing unauthorised reproductions and utilisation of the characters, sets, images, videos, and hashtags that were trademarked properties of the plaintiff’s show. This unauthorised usage falsely indicated an association with the show for commercial gains. Defendants 16 to 19 were posting videos on YouTube in which they used the name of the plaintiff’s show without permission. They also created animated videos telling stories or riddles using characters and images from the plaintiff’s show. The plaintiff claimed that the defendants violated their legal rights to the trademarks and copyrights associated with their show.
Further, Defendant No. 23 was portraying the characters wearing inappropriate clothing. Defendants nos. 20 and 21 were publishing videos on YouTube featuring sexually explicit and vulgar content, using the name and image of the show’s characters. The plaintiff claimed that unknown face distortion technology was used to make it seem as though the animated characters were speaking vulgar content and profanities. Defendant No. 21 was also creating brief, animated videos that narrated sexually explicit stories using the names of characters from the show. Additionally, they were also hosting videos containing explicit pictures of the actors from the show, while using the names of the characters.
The plaintiff contended that the defendants were not authorised to utilise the plaintiff’s intellectual property in the show. The plaintiff alleged that any actions, including posting, streaming, broadcasting, retransmitting, exhibiting, making available for viewing, downloading, providing access to the public, displaying, uploading, modifying, or publishing any content, goods, or services showcasing the plaintiff’s intellectual property in the show, such as the names and images of the iconic characters and iconic dialogues, constituted an infringement of the plaintiff’s exclusive rights.
It was further highlighted that the illicit and infringing materials were widely available and easily accessible throughout India, posing a significant challenge for the plaintiff to address these issues in various legal jurisdictions. This unauthorised dissemination not only undermined the plaintiff’s intellectual property rights but also resulted in substantial economic and personal losses.
Decision of the Court
Based on the case presented by the plaintiff, the court held that there was a prima facie case by the plaintiff to be granted an injunction against such infringement. It was held that the balance of convenience was also in favour of the plaintiff and against the defendants. Additionally, the court expressed that failing to grant an ex-parte ad interim injunction would result in the plaintiff suffering irreparable loss.
The court passed an order of ex-parte ad interim injunction to restrain Defendant Nos. 1 to 12 and 14 to 21, including any John Doe parties, their owners, partners, proprietors, officers, servants, employees and all others in the capacity of principal or agent, acting for and on their behalf or anyone claiming through by or under it. The court restricted the defendants and any other John Doe parties from hosting, streaming, broadcasting, or in any way making available for viewing and downloading content that infringes on the plaintiff’s copyrighted material or registered trademarks, including but not limited to the show’s title, characters, format, and any other related materials in the said show. Additionally, the defendants were restrained from offering for sale any goods or services that involved infringement of the plaintiff’s copyrights, trademarks, or passing off of the plaintiff’s goods and services.
The court further directed defendants nos. 1 to 12 and 14 to 21 to remove any infringing videos, websites or YouTube links within 48 hours. If they failed to do so, the Ministry of Electronics and Information Technology (MeitY) and the Department of Telecommunications (DoT) would be required to instruct the relevant Internet Service Providers/intermediaries to suspend access to all such videos, websites or YouTube links. Additionally, the plaintiff was granted the option to request YouTube to block or suspend all URLs containing infringing content uploaded by the defendants.
In Conclusion
The ruling by the Delhi High Court is an important milestone in the fight against digital piracy and the unauthorised use of intellectual property in India. It emphasises the importance of John Doe orders in addressing digital IP infringement, particularly in today’s digital landscape, where online infringement is widespread and often carried out by individuals who conceal their identities through pseudonyms or anonymous accounts. The emergence of AI has further underscored the significance of John Doe orders, as the risk of IP infringement is amplified by technologies such as deep fakes and face-morphing. By enabling the identification and accountability of those who utilise AI tools to infringe on IP rights, John Doe orders play a vital role in upholding the law. Furthermore, such legal rulings serve as an effective deterrent to potential infringers, signalling that intellectual property rights will be upheld, and any infringements will be pursued with due diligence.
Authors: Manisha Singh and Shivi Gupta
First Published by: Lexology here