If you are not an Indian, the word Sholay might not ring any bells for you. However, if you are an Indian, the word would likely bring a range of emotions that will be difficult to gauge. Sholay is the name of one of the most popular and iconic Indian movies of all time. However, an interesting development regarding the 1975 made film came when someone registered a series of domain names related to SHOLAY, including Sholay.com among others, and applied for trademarks as well.
The Delhi High Court witnessed a trademark dispute filed by Sholay Media Entertainment and Sippy Films Pvt. Ltd. The Plaintiff claimed that they had produced a tremendously popular film and had trademark rights over the mark SHOLAY. The Plaintiff claimed that the Defendant infringed upon their trademark rights by a chain of actions.
The Respondent had registered a series of domain names with the key term SHOLAY in it. These included Sholay.com, Sholay.net, SholayChat.com, SholayInida.com, MySholay.com, Sholay.fm, etc. The Respondent also used a number of SHOLAY related services such as SHOLAY Jobs, SHOLAY Calendar, SHOLAY Chat, SHOLAY matrimony, etc. The Respondent even applied for trademark rights over the same, in India as well as the US.
The Respondent contested on the ground that the film titles are not entitled to protection. Regarding the trademarks of the Plaintiff, the Respondent presented that the Plaintiff acquired the trademarks only after the Respondent had applied for the same. The Respondent also presented that the term in question, i.e., SHOLAY was a generic term that meant burning coal.
The Court decided in favor of the Plaintiff. The Court presented that although movie titles are not given Copyrights, it cannot be the case that no remedy is provided to an entity when someone tries to copy their product. The Court established that movie titles are subject to copyrights, given that (a) the movie title has acquired a secondary meaning and (b) there is a greater chance of confusion.
The Court transferred the domain names to the Plaintiff as well as awarded the Defendant with a hefty fine.
You can read the case in full detail here.
In India, the Trademarks Act, 1999, confers protection to the domain names in the world. Thus, registered domain names can obtain the protection of trademark infringement, and the unregistered domain name can get the protection of passing off under the Act. A lawsuit is always an option, whether or not you pursue ICANN’s dispute resolution process.