Harry Potter vs Hari Puttar: If You Delay, You Will Pay

In her recent post, Sumathi rightly points to the fact that Justice Khetrapal’s decision against Warner Brothers hinges substantially on:

i) “Delay” In Taking Action Against Hari Puttar

Despite knowledge of the defendant’s proposed movie title “Hari Puttar” in 2005, the judge finds that Warner Brothers sat on their rights and chose to approach the court only in 2008. In the court’s words:

“It is settled law that if the plaintiffs stood by knowingly and let the defendants build up their business or venture , then the plaintiffs would be estopped by their acquiescence from claiming
equitable relief”

ii) Suppression of Material facts by Warner Brothers in a Bid to Cover up Their “Delay”

The judge is quite scathing in her reprimand of Warner Brothers for “half-heartedly whimpering against the use of the title “Hari Puttar” by the defendants” and thereafter “attempting to trip up the defendants at the finishing line”. Most noteably, the judge accuses Warner Brothers of misleading the court with false statements and attempting to “pollute the stream of justice”. Sample these statements from the court:

“The plaintiffs in the instant action have attempted to lightly brush off their intentional non disclosure by feigning oversight, contending that they had nothing to gain from the aforesaid non disclosure . What has been lost sight of is the fact that it is a cardinal principle that a person who seeks the equitable relief of injunction must come to the court with unclean hands”.

and later..

“the false assertions of the plaintiffs and the suppression by them of material facts were quite obviously intended by them to be a cover up for their delay in approaching the court”

and later..

“any suppression or concealment of material facts cannot therefore, but be viewed as an attempt to pollute the stream of justice”

Very damaging statements for Warner Brothers! Statements that are no doubt likely to be exploited by wily defendants in future law suits. Warner Brothers can therefore be expected to appeal this decision. Howeveer, their “appeal” window is quite short, as the movie is scheduled for release this Friday. Unless they appeal by tomorrow, the chances of securing an injunction are next to impossible.

Most of the press reports today however miss out the above aspects and merely focus on “confusion” and the “sophisticated vs rustic” consumer distinction that the judge seems to have drawn out. I’ll come back to this and the “initial interest confusion” doctrine in a later post.

What is particularly noteworthy is that this is the second big IP litigation this year that has been impacted by “delay”. We’d blogged on the Scotch Whisky case earlier, where the Supremes refused to grant any relief to the Scotch Whisky Association (SWA) on the ground that they waited for 12 years before taking action against “Peter Scot”. We noted then that:

“One of the factors that influenced the court to hold the way it did was the delay/acquiescence on the part of SWA i.e. although SWA had knowledge about registration of the ‘Peter Scot’ trademark as early as September 1974, it waited for more than 12 years to move the Registrar for deletion of the said mark. The judge held that “We, therefore, in the peculiar facts and circumstances of this case, are of the opinion that action of the respondents is barred under the principles of acquiescence and/ or waiver.”

The message from the Indian courts appears to be pretty clear: “If you delay, you will pay….”

Shamnad Basheer

Shamnad Basheer

Prof. (Dr.) Shamnad Basheer founded SpicyIP in 2005. He's also the Founder of IDIA, a project to train underprivileged students for admissions to the leading law schools. He served for two years as an expert on the IP global advisory council (GAC) of the World Economic Forum (WEF). In 2015, he received the Infosys Prize in Humanities in 2015 for his work on legal education and on democratising the discourse around intellectual property law and policy. The jury was headed by Nobel laureate, Prof. Amartya Sen. Professional History: After graduating from the NLS, Bangalore Prof. Basheer joined Anand and Anand, one of India’s leading IP firms. He went on to head their telecommunication and technology practice and was rated by the IFLR as a leading technology lawyer. He left for the University of Oxford to pursue post-graduate studies, completing the BCL, MPhil and DPhil as a Wellcome Trust scholar. His first academic appointment was at the George Washington University Law School, where he served as the Frank H Marks Visiting Associate Professor of IP Law. He then relocated to India in 2008 to take up the MHRD Chaired Professorship in IP Law at WB NUJS, a leading Indian law school. Later, he was the Honorary Research Chair of IP Law at Nirma University and also a visiting professor of law at the National Law School (NLS), Bangalore. Prof. Basheer has published widely and his articles have won awards, including those instituted by ATRIP, the Stanford Technology Law Review and CREATe. He was consulted widely by the government, industry, international organisations and civil society on a variety of IP issues. He also served on several government committees.

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