Chill Barbie – freedom of speech and expression is sacrosanct
In an interesting dispute, Mattel, Inc., owner of the brand name BARBIE sought to seek an injunction for use of the mark BARBIE being used in a song of a movie Tera Intezaar. It was alleged by Mattel that the title and lyrics of the song used its registered and well known trademark “BARBIE” without their authorisation and in a manner antagonistic to the values and interests of the customers/ target base they cater to. Thus amounts to an infringement and dilution of their mark BARBIE associated with the doll (Mattel, Inc. & Anr. Vs. Ms. Aman Bijal Mehta & Anr. CS (COMM) 803/2017) that has had multiple careers including of a doctor, surgeon, firefighter, tennis player, astronaut etc.
Mattel sought a) an ex parte interim injunction restraining the party from using the mark as part of its song lyrics, b) requested for ‘in camera’ proceedings.
Their main contentions of Mattel were:
- That they are the owner of the BARBIE trademark used in relation to toy dolls and other merchandise related to or connected to the toy doll named “BARBIE” which they had introduced in 1959.
- They have produced or licensed the product to numerous motion pictures based on their world famous “BARBIE” brand.
- They have worked with various public figures to create Barbie Dolls in their likeness; examples are given of Diana Ross, Audrey Hepburn, Princess Kate Middleton, J.K. Rowling, Grace Kelly, Jenifer Lopez, Marilyn Monroe, Shakira and the popular Indian actress Katrina Kaif.
- Their sales in India of Barbie products over the last five years have exceeded 2000 million Indian rupees.
- Barbie has been identified as a well-known trademark in various jurisdictions;
- Around November 15, 2017, they came across a music video on YouTube of a song titled “Barbie Girl” from the Hindi movie Tera Intezaar scheduled to be released on November 24, 2017.
- The actress/ female dancer in the impugned song/ video is seen to be inspired from the Barbie doll as she is dressed in a baby pink dress and is found to be performing some dance steps portraying to be their Barbie mannequin doll.
- The defendants have adopted the mark “BARBIE” as a catchy word in the title and lyrics of their song/ music video solely to generate publicity and attract unwanted attention for commercial exploitation and gain.
- The promotions and teasers of the impugned song used the script similar to that of their trademark.
- The contents of the impugned song/ its video are not suitable for children and are provocative and inappropriate for younger girls and children, tarnishing and degrading the distinctive quality of the mark “BARBIE”.
The court, after hearing the Plaintiffs’ case, refused to grant injunction and order for ‘in camera’ hearing of the case. The court made the following observations:
- The Plaintiffs had also brought an action in United States against the music companies marketing the popular Barbie song “Let’s go party” on similar grounds as on which they are seeking to restrain the Defendants in the present case. It was found the United States District Court for the Central District of California denied relief to the Plaintiff No. 1 (Mattel, Inc.) and its appeal to the United States Court of Appeal, Ninth Circuit was refused for a host of reasons including “trademark rights do not entitle the owner to quash an unauthorized use of the trademark by another who is communicating ideas or expressing points of view”.
- The court further invited the attention of the Plaintiffs’ counsel to the Supreme Court decision in W.P. (C) No. 1119/2017 titled Nachiketa Walhekar Vs. Central Board of Film Certification in a proceeding to issue a writ for staying the nationwide release of a film namely “An Insignificant Man” as it contained a video clip pertaining to the petitioner. The Supreme Court held that “it is worthy to mention that freedom of speech and expression is sacrosanct and the said right should not be ordinarily interfered with. That apart, when the respondent No.1, CBFC, has granted the certificate and only something with regard to the petitioner, which was shown in the media, is being reflected in the film, this Court should restrain itself in not entertaining the writ petition or granting injunction”.
- Barbie is seeking in India what has been denied to it in the Court of its origin.
- That Barbie is a nick name for Barbara, a common name in the Western world. The use of the name Barbie in a song has to be viewed in the said light also.
The court in view of the above concluded that grant of any order, as sought, is likely to send a wrong signal to the public at large. Thus the court refused to grant the ex parte injunctive relief to the Plaintiffs. However, the court mentioned that it will be open to the counsel for the Plaintiffs to call upon the Defendants to delete the word “BARBIE” from the impugned song and to notify them that on their failure to do so, the Plaintiffs would be entitled to damages from them.
Request for ‘in Camera hearing/proceedings’
Mattel, Inc.’s contention was that subject matter was highly confidential. It will lead to media attention and distorting of facts. Further, that without media reporting, the parties may be more amenable to settlement. The court was not in agreement that by having ex parte interim injunction proceedings ‘in camera’, this objective can be achieved. The court was of the view that the normal procedure of court orders being uploaded on court website cannot be bypassed. If ‘in camera’ hearing is for ex parte injunction proceedings only and media can write about it later, there is no reason for this request to be allowed.