“Hi, Barbie….Hi, Ken! Do you wanna go for a ride? Sure, Ken! Jump in…I’m a Barbie girl in the Barbie world……Life in plastic, it’s fantastic! You can brush my hair, undress me everywhere…..Imagination, life is your creation…..Come on, Barbie, let’s go party!……I’m a blond bimbo girl in a fantasy world…..Dress me up, make it tight, I’m your dolly……Kiss me here, touch me there, hanky panky…
You can touch, you can play, if you say, ‘I’m always yours’.” These lyrics will indubitably bring back memories of the mid-1990s and the song ‘Barbie Girl’ written by Søren Rasted, Claus Norreen, René Dif and Lene Nystrøm, and performed by the Danish group ‘Aqua’. One might also recollect the controversy surrounding the said song as well as the protracted litigation between Mattel, Inc., MCA Records, Inc. and Universal Music International., in the United States of America.
Mattel, Inc. once again raised a similar issue in India, against the producers of a film in Hindi (a widely spoken language in India) entitled ‘Tera Intezaar’ which was due to be released on 24th November 2017, before the High Court of Delhi in Mattel, Inc. and another v. Aman Bijal Mehta and others CS(COMM) 803/2017, IA No.13724/2017. The plaintiffs claimed to be the owner of the trade mark “BARBIE” used in relation to toy dolls and other related merchandise, and that around 15th November, 2017 they came across a music video on YouTube of a song entitled “Barbie Girl” from the said movie Tera Intezaar and that the title and lyrics of the song used the registered and well-known trade mark “BARBIE” without requisite authorisation from the plaintiffs. The plaintiffs also claimed that the said trade mark was used in a manner which is antagonistic to the values and interests of the plaintiff’s target audience. The plaintiffs sought interim relief (in relation to the said purported trade mark infringement and dilution) and interestingly, also prayed for holding the hearing in relation to the ex parte injunction, in-camera (on the basis that the suit pertains to a highly confidential subject matter which may invoke media attention leading to the distortion of facts and the proceedings before the Court).
In its order dated 22nd November 2017, the High Court failed to see the purpose of the ex parte Hearing being in-camera if, ultimately, the dispute is to come out in the open and be reported in the media. Hence, the interlocutory application for an in-camera interlocutory hearing was dismissed.
With respect to the application for an interlocutory injunction, the High Court drew guidance from the decision of the United States District Court for the Central District of California in relation to a similar matter, in which the said Court denied relief to the plaintiff Mattel, Inc. and against which denial Mattel, Inc. appealed to the United States Court of Appeal for the Ninth Circuit which held, inter alia, that:
• Music companies’ use of the “BARBIE” trade mark in a song was not an infringement of the toy manufacturer’s trademark associated with the doll;
• A song that lampooned the toy manufacturer’s doll fell under the non-commercial use exemption in the Federal Trademark Dilution Act;
• Trade mark 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 trade mark owner does not have the right to control public discourse merely because the public imbues its mark with a meaning beyond its source identifying function;
• Trade mark law grants relief only against uses that are likely to confuse;
• Although the boundary between commercial and non-commercial speech has yet to be clearly delineated, the core notion of commercial speech is that it does no more than propose a commercial transaction;
• And, that if speech is not purely commercial, that is, if it does more than propose a commercial transaction, then it is entitled to full First Amendment protection.
Though the counsel for the plaintiffs appeared to submit (before the Delhi High Court in the subject case) that the laws of India are different from that applied by US Courts, the Court observed that it cannot be forgotten that India has the benefit of one of the most modern and liberal Constitutions, one of the most cherished rights wherein is to speak one’s mind and write what one thinks – no doubt, this is subject to reasonable restrictions, but the ambit of what one can express is wide. The Court also observed that Mattel, Inc. is seeking in India what has been denied to it in the Courts of its origin!
Further, the High Court opined that newspapers and stories in the electronic news media in India today are widely broadcasting the demand by only one section of society for a ban to another film; the recent petitions filed before the Supreme Court in this regard have not met with any success and have been disposed of as premature owing to the Central Board of Film Certification (‘CBFC’) having not granted a certificate to the films as yet.
The Court also observed that the grant of any ex parte order in this case is likely to send a wrong signal to the public at large. For inter alia the aforementioned reasons, the High Court refused to grant the said ex parte relief to the plaintiffs at this stage. Be that as it may, the Court observed 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 the defendants that on their failure to do so, the plaintiffs would be entitled to damages from the defendants.