Film remake plan needs a rethink

Following a claim against him alleging trademark infringement (CS (OS) 1892 of 2006, filed on October 4 2006), filmmaker Ram Gopal Verma has given a number of undertakings to the Delhi High Court relating to his planned remake of the popular film Sholay.

The exclusive rights in the film Sholay belong to Sippy Films Private Limited and Sholay Media and Entertainment Private Limited (the plaintiffs). The plaintiffs own a number of trademark registrations relating to the film, including a registration for the mark SHOLAY for goods in Class 9 (covering cinematographic films) of the fourth schedule to the Trademarks Act 1999, which reflect the Nice Classification.

Following Verma's decision to remake the Sholay film and distribute it under the name Gopal Verma Ke Sholay, the plaintiffs brought a suit against Verma alleging infringement of copyright and trademark rights. The plaintiffs moved for an interim injunction.

At the interim stage, the plaintiffs contended that the use by Verma of the trademark SHOLAY and, among others, the character names Gabbar Singh, Jai, Veeru and Basanti amounted to an infringement of the plaintiffs' trademark rights and also passing off. The plaintiffs also contended that use of a theme, plot or characters which are substantially similar to the theme, plot or characters of the original film would, without the authorization of the plaintiffs, be an infringement of copyright should the remake be released.

The Delhi High Court issued an ex parte order restraining Verma "from manufacturing, selling, offering for sale, distributing, advertising including on the Internet and in any other manner using the SHOLAY, GABBAR [and] GABBAR SINGH trademarks or any other deceptively similar mark amounting to infringement of the plaintiffs' registered trademarks". Verma was "also restrained from infringing the copyright of the plaintiffs in the cinematographic film Sholay".

The matter was hotly contested and, after pleadings were completed, it was heard at length.

The Delhi High Court chose to decide the question of trademark infringement and leave the copyright aspect to when the film is released.

Among other things, Verma contended that film titles are not protectable trademarks - an issue that had never been fully resolved under prior case law. The plaintiffs argued that the trademark SHOLAY had acquired secondary meaning and the film of that name was identified with the plaintiffs and no one else. They also argued that if Verma were permitted to release the new film the public would be under the impression that the film was endorsed, sponsored and/or affiliated with the plaintiffs' original work.

On the eve of conclusion of arguments, Verma conceded a part of his case and provided several undertakings to the court. He undertook to change the title of the movie in question from Ram Gopal Verma Ke Sholay to Ram Gopal Verma Ki Aag. He also undertook not to use character names that are the same or similar to those of characters in the original film. In addition, he assured the court that the new film will not contain any portion of the script, screenplay, music, lyrics or any other part of the original production.

The outcome of the litigation supports the argument that a filmmaker cannot, on moral and legal grounds, be allowed to ride on the coat tails of an earlier film either by copying its title and character names or by advertising the film as a remake of another famous film.

Dhruv Anand, Anand And Anand Advocates, New Delhi