Others Trademark

Part I: The “Sexy Barbie Girl” Controversy #Mattel #Camera Hearing #TM Dilution (DHC)


I write to report a recent DHC Order issued by J. Endlaw denying Mattel Inc. (the famed toymaker behind the Barbie doll) an ex-parte injunction Order restricting the release of the movie “Tera Intezaar” with the song “Barbie Girl”. Also, the Order rejected Mattel’s application for conducting proceedings under cameras, instead of public view.

We will look into the Order’s analysis of the following concerns in sequence:

  1. Application for Hearing Under Camera (Part I).
  2. TM Infringement and Dilution of the Mark “Barbie” (Part II).

But first, the facts…

BASIC FACTS

There exists a movie, released on 24th November, called “Tera Intezaar”. The movie wasn’t released at the time of the Order’s issue (22nd November).

Said movie consists of a song called “Barbie Girl”, which was, as is common practice, released for public consumption prior to the movie itself on 8th November.

 The song’s Gulzar-esque lyrics, as reported by the Court, run as follows:

I’m a sexy Barbie girl…

hip matke chaal…

milky milky gaal…

Barbie beauty ko sambhaal…

Apart from noting that the lyrics & video were somewhat risqué, we also need to note that the central actress (some “Sunny Leone”) in the song’s video is, apparently, quite a prominent figure in the adult entertainment industry.

Readers interested in forming a more comprehensive and thorough understanding of the song, can click here.

Consequently, Mattel Inc. sued  for TM Infringement and prayed for an ex-parte injunction restraining the release of any version of the movie that contained the song.

Now that we are acquainted with the facts, let us proceed to deconstruct the Order.

DECONSTRUCTION

Issue I: Application for Hearing Under Camera.

Mattel filed an application under S. 151 of the Civil Procedure Code (1908) praying for conducting the hearing for the ex parte injunction “in camera”, as opposed to conducting it in open court.

151 of the CPC reads as follows:

151. Saving of inherent powers of Court— Nothing in this Code shall be deemed to limit or otherwise affect the inherent power of the Court to make such orders as may be necessary for the ends of justice or to prevent abuse of the process of the Court.

Given that S. 151 is quite generally worded, we cannot rely on it for understanding the factors that go into deciding upon an application to be heard under cameras.

Mattel argued for an “in camera hearing” for the following reasons:

i. That the subject-matter was highly “confidential“.

ii. That the proceedings would garner media attention, leading to “distorting/misrepresenting of facts“. I am inferring from a later paragraph of the Order, that Mattel was concerned about the same because the resultant publicity would prejudicially affect Mattel, while benefiting the defendants.

iii. That parties may be more receptive to a settlement in an atmosphere where media coverage is absent.

Though the Order doesn’t deal with these contentions individually, I shall take the liberty to put forth a few concerns contention wise.

i. I fail to see how a TM dilution issue is “highly confidential subject-matter“.

ii. The contention regarding publicity is an interesting one.

Let us first deal with the relevance of the contention that public attention would be beneficial to the Defendant. I see 2 possible takes on whether benefit accruing out of a legal proceeding to a participating party should be relevant:

One side of the argument is that a party should only be concerned about protecting its own legal rights. Whether the proceedings would benefit the opposing party or not should be irrelevant.

The other side of the argument would be that that litigants should not be benefiting from a legal infraction. Otherwise, parties would be incentivized to breach the law for gaining through the litigation process. So, a proceeding which reduces the possibility of parties benefiting by virtue of the process’ existence itself, should be encouraged.

I side with the latter take.

Moving on, the contention that publicity would have a deleterious effect on Mattel is also relevant. There exist situations wherein a party has a legal right, but enforcement of that legal right might harm its public image. For instance, in the famous McDonald Coffee Case, the legal right did exist in the favour a party, but the said party was undeservedly lampooned in popular media for enforcing the said right. I submit that a party should be able to exercise its legal right, without running the risk of ruining its image in the public. The public image becomes all the more relevant in the case of a company.

iii. I have nothing to add to the third contention.

The final holding:

J. Endlaw didn’t deal with each of Mattel’s contentions (listed above) individually, but set aside the application on the ground that hearing the ex parte injunction proceeding “in camera” would not serve any purpose. He reasoned that since Mattel’s counsel had requested for “in camera” hearing only for the injunction proceedings and not the entire trial, acceding to the request would serve no purpose:

10. I fail to see the purpose in the ex parte hearing also being in camera if ultimately the dispute is to come out in the open and reporting in the media thereof cannot be prevented.

The Order seems to have oversimplified the issue. I don’t agree with the Court’s reasoning that having an open hearing for the final trial would cancel out all effects of having the injunction hearing in camera. While the Court would not have been able to completely wipe-out the contended ill effects of an inevitable full trial open hearing, the Court should, nevertheless, try to mitigate the effects to the greatest extent possible.

For instance, after the release of the movie, the contention that the Defendant would benefit from the proceedings would not hold much ground. So, if we were to accept that there is value in preventing parties from accruing benefits out of the very existence of legal proceedings, then it would follow that an in camera hearing for the injunction proceedings would have a beneficial effect that would not be cancelled out as a result of the full trial being conducted in open court.

Please note that I am not criticizing the Court for not endorsing the above line of reasoning. I am only criticizing it for the oversimplified approach and not giving due consideration to the various arguments put forth by Mattel.

Further, it is interesting to note that finally, the hearing took place in a special chamber specifically meant for “in camera” hearings. The Judge had asked Mattel’s counsel whether the hearing concerning the application for “in camera hearing” was also preferred to be heard in camera and upon receiving an affirmative response, the hearing was moved to a special chamber (where the “in camera hearings” take place). After the application for “in camera” hearing was rejected (as discussed above), the Court chose to stay back in the same chamber itself for purposes of convenience.

The Court doesn’t disclose whether the chamber was opened to the public after it was decided that an “in camera” proceeding would not be allowed. Otherwise, Mattel effectively got what it wanted, at least to the extent of having the injunction proceeding in camera.

Coming up:
In Part II, we will discuss the TM dilution claim.

Chief References:
The Order

Image from here.

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