Warner Bros fails to prevent release of Hari Puttar film
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In Warner Bros Entertainment Inc v Kholi (Case CS(OS) 1607/2008, September 22 2008), the Delhi High Court has dismissed an application for an interim injunction restraining the defendants from releasing the film Hari Puttar: a comedy of terrors.
In late 2005 Warner Bros Entertainment Inc became aware of the making of a film entitled Harry Puttar. It issued a warning letter notifying the producer of its rights in the HARRY POTTER mark. In ensuing correspondence, the producer referred to ‘Harry Puttar’ as a tentative title and offered to make cosmetic changes to it. Warner rejected these changes. The matter then seemed to have been settled.
In 2008 leading Indian daily newspapers began to refer to the film under the title Hari Puttar: a comedy of terrors, some saying that 'Hari Puttar' was in Punjabi what ‘Harrius Potterus’ was to Harry Potter in Latin. In addition, the producer's website referred to the film as "India’s answer to Harry Potter". The lead actor of the Hari Puttar film also confessed to being confused between the Hari Puttar and Harry Potter films when he was first approached.
In June 2008 a newspaper announced the forthcoming release of the film on September 19 2008.
Warner filed suit against the defendants (the producer of the film and others) for infringement of its HARRY POTTER mark and passing off. Among other things, Warner contended that:
- the defendants sought to take advantage of the well-known HARRY POTTER mark;
- passing off was inevitable as the HARRY POTTER mark had acquired secondary meaning; and
- there was no justification for the adoption of the title Hari Puttar, as the combination of the words 'Hari' and 'Puttar' had no meaning.
The defendants argued that:
- The names Hari Puttar and Harry Potter were not similar;
- The name Hari Puttar resulted from the combination of the name of the lead actor in the film Hari Prasad Dhoonda and the word ‘puttar’, which means ‘son’ in Punjabi;
- The theme and plot of the film was completely different from those of the Harry Potter films (the Hari Puttar film revolves around a boy who is accidentally left behind when the rest of his family goes on holiday and has to protect his home against two intruders); and
- The injunction sought by Warner was unduly delayed, as Warner had been aware of the defendants' plans since 2005.
With regard to the delay in filing the application, the defendants relied heavily on the June 2007 registration of the title Hari Puttar with the Motion Picture Association of America Inc (MPAA), to which Warner had objected. The defendants argued that Warner had deliberately omitted to mention this fact because it would prove that it was aware of the defendants' plans a year before the present suit was filed.
The Delhi High Court refused to grant the interim injunction on the following grounds:
- There was an undue delay in filing the action as the film was about to be released.
- Warner had tacitly acquiesced to the release of the film by allowing the defendants to invest money and effort in this project.
- The correspondence between Warner and the defendants was "friendly" and did not amount to a cease and desist letter.
- Warner had failed to disclose material facts pertaining to the registration with the MPAA. Warner’s contention that it discovered that the film was completed only in March 2008 was not accepted.
- Illiterate or semi-literate moviegoers would not associate the Hari Puttar film with Harry Potter.
Unfortunately, the court did not deal with the following important facts and issues, among others:
- whether there was initial interest confusion due to the media hype;
- whether the statutory provisions of the Trademarks Act 1999 - which set a lower threshold for a finding of infringement of a well-known mark - applied in this case;
- the implications of Warner’s omission to refer to the MPAA registration, which had no bearing on the film’s release in India;
- the fact that the MPAA registration was inoperative since Warner had objected to it and the registration had not been cleared under MPAA rules; and
- the implications of the defendants' application for the registration of the trademark HARRY PUTTAR in India.
Indian courts increasingly take into account any delay in filing an application for an injunction and are reluctant to restrain activities that have a short lifespan (in particular, films). Therefore, the scales can easily be tipped in favour of the defendants where the release of a film is imminent - although the courts will apply the balance of convenience test where the film is advertised only shortly before its commercial launch.
Binny Kalra and Diva Arora, Anand And Anand Advocates, New Delhi
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