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TEAM CODE: JM15-05

5TH JAMIA MILLIA NATIONAL MOOT COURT COMPETITION 2015

IN THE HONBLE
SUPREME COURT OF MORDOR
Civil Appellate Jurisdiction
Special Leave Petition
(Under Article 136 of the Constitution of India)
SLP(C) NO. 1/2015
MOONSHINE MORDOR PVT LTD. & Anr ..........................................APPELLANTS
Vs.
NEPTUNE MORDOR PVT. LTD ..............................................................RESPONDENT
CLUBBED WITH

SLP(C) NO. 2/2015


NEPTUNE MORDOR PVT. LTD ...................................................................APPELLANT
Vs.
MOONSHINE MORDOR PVT LTD. & Anr ...........................................RESPONDENTS

MEMORANDUM ON BEHALF OF THE APPELLANT

TABLE OF CONTENTS

5th JAMIA NATIONAL MOOT COURT COMPETITION 2015

Index of Authorities

Table of Cases..3
Books and Articles...4
Statutes.6
Dynamic Links6

List of Abbreviations.7
Statement of Jurisdiction...8
Statement of Facts..9
Statement of Issues...10
Summary of Arguments...12
Arguments Advanced13
1. Whether there lies any Copyright Protection in the information emanating out
of a match?............................................................................................................13-17
2. Whether the match scores, when in Public Domain can be protected?.......18-22
2.1 After broadcast, the scores do not enter public domain immediately..
2.2 The Fairdealing concept..........................................................................20
3. Whether there has been a tort of unfair competition and unjust enrichment by
Respondent?................................................................................................................23
-25
4. Whether there is a trademark dilution of the MMBL trademark?.............26-33

Prayer...........34

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INDEX OF AUTHORITIES

TABLE OF CASES

- JUDICIAL DECISIONS
1.
2.
3.
4.

Adidas-Salomon AG v Fitnessworld Trading Ltd [2004] Ch 120


Associated Press v. KVOS, Inc. 9 Cir., 80 F.2d 575
Bata India Ltd. v. Pyarelal & Co AIR 1985 All. 242
Bloomberg Finance Lp v. Prafull Saklecha IA No. 17968 of 2012 in CS (OS) No.

2963 of 2012
5. Caterpillar Inc. v. Mehtab Ahmed 2002 (25) PTC 438 (Del.)
6. Cycle Corporation of Indian Limited v T I Raleigh Industries Pvt Ltd And others
7. Daimler Benz Aktiegessellschaft & Anr. V. Hybo Hindustan AIR 1994 Del. 239
8. Diesel Recon Private Ltd. v. Kirloskar Proprietary Ltd. AIR 1996 Bom. 149
9. DM entertainment v Baby Gift House and others CS(OS) 893 of 2002
10. ESPN Star Sports v Global Broadcast News Ltd. 2008(38)PTC477(Del)
11. Ford Motor Co. v. Mrs. C. R. Borman 2008 (2) CTMR 474 (Del.) (DB)
12. Honda Motors Co. Ltd. v. Charanjit Singh 2003 (26) PTC 1 (Del.)
13. ICC Development (International) Ltd. & Anr. v. New Delhi Television Ltd., C.S.
(O.S.) No. 2416/2012
14. Indian Council for Enviro-Legal Action v Union of India (2011) 8 SCC 161
15. International News Service vs. Associated Press, 248 U.S. 215, 39 S.Ct. 68 (1918)
16. Marksman Marketing Services Pvt. Ltd. vs. Bharti Tele-Ventures Ltd. & Ors.
(Marksman Case) O.A. No. 78/2006
17. McDonalds Corporation v. Joburger 1997 (1) SA 1
18. Media Works NZ Limited & Anr v. Sky Television Network Ltd NZHC 924
19. Multi Screen Media Pvt Ltd versus Sunit Singh and Ors. CS (OS) 1860/2014
20. National Exhibition Company vs. Martin Fass (National Exhibition Case) 143
N.Y.S.2d 767
21. NBA Properties Inc. v. Sports Team Analysis and Tracking Systems Inc. 939
F.Supp. 1071
22. New Delhi Television Ltd v. ICC Development (International) Ltd. & Anr., Secretary,
Ministry of Information and Broadcasting, Govt. of India & Ors. V. Cricket
Association of Bengal & Ors. 1995 2 SCC 161
23. Pittsburgh Athletic Co. et.al vs. KQV Broadcasting Co. (Pittsburgh Case) 24
F.Supp. 490
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24. Schock v. Nash, 732 A.2d 217, 232-33 (Delaware.1999) USA


25. Shri Vallabh Glass Works Ltd., and Anr. v. Union of India and Ors. 1984 (16) ELT
171 SC
26. South Eastern Coalfields Limited v. State of M.P. (2003) 8 SCC 648
27. Star India vs. Piyush Agrawal & Anr CS (OS) No. 2722/2012, Del HC
28. Taj Television Ltd. and Ors. v. Rajan Mandal and Ors [2003] F.S.R 24
29. Tata Sons Ltd. v. Manoj Dodia 2011 (46) PTC 244 (Del.)
30. Twentieth Century Sporting Club Inc. and Ors vs. Transradio Press Service Inc.
and Anr. 300 N.Y.S. 159
31. Zafar Khan v. Board of Revenue, U.P , (1984) Supp SCC 505
- BOOKS AND ARTICLES
1. Akhil Prasad & Aditi Agrawal, Copyright Law Deskbook, Universal Law
Publishing Co. Pvt. Ltd., Edition 2009
2. C.B Raju, Intellectual Property Rights Serial Publications, First Edition 2006
3. Carlos M Korrea , Abdulqawi A Yusuf, Intellectual Property and International Trade:
The TRIPS Agreement Wolters Kluwer, Edition II
4. CCH India Intellectual Property Rights Case Digest ,Edition III 2010
5. Charlotte Waelde, Graeme Laurie, Abbe Brown, Smita Kheria, Jane Cornwe,
Contemporary Intellectual Property: Law and Policy, Second Edition 2010
6. Christopher Antons, Traditional Knowledge, Traditional Cultured Expressions and
Intellectual Property Law in Asia-Pacific Region Wolters Kluwer 2009
7. Cornish & Llewelyn, Intellectual property, Thomson, Sweet & Maxwell, Edition: V,
2011
8. Dr. Raghbir Singh, TP Srinivas Iyengar Commentary on The Copyright Act,
Universal Law Publishing Co. Pvt. Ltd., Edition VII, 2010.
9. Dr. Sreenivasulu N.S Intellectual Property Rights Regal Publications, Edition II
2011

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10. Dr. Wadhera B.L., Law Relating To Intellectual Property, Universal Law Publishing
Co., Edition: IV 2007.
11. Hart Tina & Fazzani Linda, Intellectual Property Law, Palgrave Law Masters,
Edition: III 2004.
12. J.A. L Sterling World Copyright Law London Sweet & Maxwell, South Asian
Edition 2011, Edition III
13. Mark F. Grady, 1 A Positive Economic Theory of the Right of Publicity (97 ed. UCLA
Entm't Law Review )
14. Merry Moiseichik, 4 Copyright: An Issue in Sport and Recreation (1st ed. Journal of
Legal Aspects of Sport 1994).
15. Narayanan P., Law of Trade Marks and Passing Off, Eastern Law House, New
Delhi, Edition: VI 2004.
16. Richard Stim, Intellectual Property: Patents, Trademarks and Copyrights West
Thomson Learning, Edition II
17. Robert P Merges, Peter S Menell, Mark A Lemley, Intellectual Property in the
Technological Age, Wolters Kluwer, Edition V 2010
18. Steven N. Geise, 5 A Whole New BallGame: The Application of Trademark Law to
Sports Mark Litigation (Seton Hall Journal of Sport Law 1995)
19. Veena, Intellectual Property: Legal Framework The ICFAI University Press, Edition
I 2007

- STATUTES

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Copyright Act - Lois du Canada

Copyright Law of the United States

Indian Copyright Act, 1957

The Constitution of India


Trademarks Act 1999

-DYNAMIC LINKS-

1. www.heinonline.org
2. www.manupatra.com
3. www.westlawindia.com
4. www.indiankanoon.org
5. www.ssrn.com
6. www.academia.edu

-IMPORTANT DEFINITIONS1.

Appellant for the purpose of this memorandum shall stand for Moonshine Mordor Pvt. Ltd
& FreeSports.
2. Respondent for the purpose of this memorandum shall stand for Neptune Mordor Pvt. Ltd.

-LIST OF ABBREVIATIONS - Double Citation


- Single Citation
AIR All India Reporters
ALL-Allahabad
BOM. -Bombay
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CAL. - Calcutta
CIR. - Circuit
DEL- Delhi
ELT- Excise Law Times
MMBL- Mordor Moonshine Baseball League
NYS-New York State Law
NZHC- New Zealand High Court
PTC Patent and Trademarks Cases
SA- South African Law Reports
SCC- Supreme Court Cases
SC-Supreme Court
SLP- Special Leave Petition
U.S.C.- United State Code

STATEMENT OF JURISDICTION

The Honble Supreme Court of Mordor has the inherent jurisdiction to try, entertain and
dispose off the present case by virtue of Article 136 of The Constitution of Mordor.

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STATEMENT OF FACTS
1. Mordor is a republic in South Asia, one of the most rapidly emerging markets in the world.
The laws of Mordor are in parimateria with the laws of India, with limited exceptions. The
decisions of courts, tribunals and Indian Commission have a high persuasive value in Mordor.
2. Moonshine Mordor Pvt. Ltd. is an industrial conglomerate engaged in variety of
businesses. The Chairman of Moonshine Group, Mr. Frodo Potter was very fond of basketball
and had a desire of starting an Annual basketball Tournament in Mordor. In 2011, the dream
was given a real shape, when Moonshine launched a tournament Mordor Moonball
Basketball League. They spent substantial amount of money in its setup.
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3. Initially, it wasnt a big success. However, by the 3 rd edition announced in 2013, it gained
immense popularity and a lot of television channels tried getting the broadcasting rights from
Moonshine. On 3rd August 2013, Moonshine entered into an agreement with Free Sports
Mordor Pvt. Ltd. and assigned a bouquet of rights exclusively to FreeSports which
included recording, broadcasting, mobile rights etc. It was a huge success.
4. Seeing the potential market, Neptune Mordor Pvt. Ltd., leading Telecommunication
Company launched a mobile app under the name SUPERDUNK, which would provide
minute-to-minute match updates of IMBL. Neptune used the name of IMBL and pictures of
its prominent players for advertising on electronic and print media. Neptune made a lot of
profit as many people downloaded the free service and also it could rope in big advertisers.
5. Moonshine & FreeSports filed a suit against Neptune for property right violation. The
IMBL and all its time sensitive information was a product of its originality & creativity and
therefore had a copyright over it. Neptune used the name IMBL in advertisement to promote
its free mobile app SUPERDUNK. Moonshine assigned a bouquet of rights to Freesports;
therefore, Neptune was indulging in unfair competition, commercial misappropriation and
unjust commercial enrichment.
6. Single Judge found:
a) There does not lie any copyright protection in information emanating out of a match
b) The match scores are in public domain and cannot be protected
c) The tort of unfair competition could not aid FreeSports in its effort to seek equitable relief
d) There is no unjust enrichment as the benefit gained by Neptune is not at the expense of
FreeSports.
e) Using the name of IMBL in the advertisements of SuperDunk causes Trademark dilution
of a well known trademark India Moonball Basketball League
7. Division Bench held on:
a) With regards the issue of copyright protection, the Division Bench upheld the view of the
Single Judge.
b) The match scores are not in public domain until they are broadcast on the television.
Therefore, Neptune can send match updates only after a 5 minute gap after it has been
broadcast on the television.
c) Neptune has to pay 75 crores to Moonshine and FreeSports as damages because of unjust
enrichment gained by it.
d) With regards the issue of Trademark dilution, Division Bench upheld the view of the
Single Judge.
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8. Both parties filed SLP before Supreme Court of Mordor. SLP was admitted.

STATEMENT OF ISSUES

1. Whether there lies any Copyright Protection in information emanating out of a


match?
2. Whether the match scores, when in Public Domain can be protected from
commercialization?
3. Whether there has been a tort of unfair competition and unjust enrichment by
Neptune?
4. Whether there is a trademark dilution of the MMBL trademark?

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SUMMARY OF ARGUMENTS
1. Whether there lies any Copyright Protection in information emanating out of a
match?
There does lay Copyright Protection in the information emanating out of the match. The
match is broadcasted in Television and Internet and all the broadcast rights were given to Free
Sports. Free Sports has been given the bouquet of rights which included recording,
broadcasting, mobile rights etc. The defendants have indulged in unfair competition after
unauthorized dissemination of match information through live score cards, match updates and
score alerts after downloading the application on their mobile phones.
2. Whether the match scores, when in Public Domain can be protected from
commercialization?

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The Match scores can be protected when they are in Public Domain. The Free Sports has paid
a huge amount of money to buy broadcasting rights and now this third party company has
come down to the market and launched their own application based mobile services which
has hampered the sale and service of Free Sports. The exclusive bouquet of rights has been
given to Free Sports and the defendant has interfered into the rights of Free Sports which has
resulted in Unjust Enrichment and Unfair Competition.
3. Whether there has been a tort of unfair competition and unjust enrichment by
Neptune?
There is a commission of tort of unfair competition and unjust enrichment gained by
Respondent. The dissemination of match updates and scores via the SUPERDUNK app by
the defendants constitutes the tort of unfair competition and commercial misappropriation/
unjust commercial enrichment. The Moonshine assembled a team of sports managers and
after spending a substantial amount of money in advertising and setting up teams, the
basketball tournament was started. The Free Sports acquired the bouquet of rights which
included recording, broadcasting, mobile rights etc. by paying a huge sum of money to
Moonshine.
4. Whether there is a trademark dilution of the MMBL trademark?
There is a trademark dilution of the MMBL trademark. The MMBL trademark was
vigorously used by the Respondent to promote its phone based application which confused
the public about the originality of the application. Everyone thought that application to be a
product of Moonshine, but it was the contrary to it.
ARGUMENTS ADVANCED

1. WHETHER

THERE

LIES

ANY

COPYRIGHT

PROTECTION

IN

INFORMATION EMANATING OUT OF A MATCH?


The council on behalf of appellant humbly submits that there does lay copyright protection in
information emanating out of a match. As the organiser of Basketball event in Mordor, we
own the exclusive broadcasting rights with respect to content emanating out of the match.
Here, the appellant is a private organisation who has taken up the initiative of organising this
event in Mordor. The appellants company has incurred all the costs of hiring the Umpire,
Players and officials who have been a part of taking up the series to a new level. It takes a lot
of hard work and huge cost to initiate one of its kind tournaments in Mordor. Now, it is
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unjustifiable for any other company to take up the rights which has been conferred to the Free
Sports i.e. the broadcasting rights. Here, the defendants are not contributing a single penny of
the revenue they are generating for the purpose of promoting the game of Basketball in
Mordor. One who fairly pays the price should have beneficial use of the property. 1 The
defendants process amounts to an unauthorized interference with the normal operation of
complainants legitimate business precisely at the point where the profit is to be reaped, in
order to divert a material portion of the profit from those who have earned it to those who
have not; with special advantage to Defendant in the competition because of the fact that it is
not burdened with any part of the expense of gathering the news.2
Further council submits that in this case, Defendants conduct should be considered unfair
competition because if Defendant were to permit to use Appellants research without
compensation, there would be no reason for the appellant to gather the news. Defendants
businesses seek only to free ride off the Defendants effort and reap the benefits.3
In the case of Pittsburgh Athletic Co. et.al vs. KQV Broadcasting Co. (Pittsburgh Case) 4,
the District Court of Pennsylvania in the year 1938 dealt with a case where the plaintiff
prayed for a preliminary injunction to restrain the defendants from broadcasting play-by-play
reports and description of baseball games played by the plaintiffs baseball team. The
defendant admitted to the broadcasting of play-by-play news of the plaintiffs games and
asserted its intention to continue doing so. In a similar case, National Exhibition Company
vs. Martin Fass (National Exhibition Case)5, the Supreme Court of New York County was
also faced with a prayer for injunction against the defendants who were listening to the
broadcast of play-by-play descriptions of baseball games organised by the plaintiff 6 and
sending out simultaneous teletype reports of the games to radio stations for immediate
1 International News Service vs. Associated Press, 248 U.S. 215, 39 S.Ct. 68 (1918)
2 ibid
3 http://www.law.cornell.edu/supremecourt/text/248/215 (last visited Feb. 26, 2015)
4 24 F.Supp. 490
5 143 N.Y.S.2d 767
6 Robert Alan Garret & Philip R. Hochberg, 59 Sports Broadcasting and the Law (2nd ed. Ind. Law
Journal 1984)
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broadcast.7 The same Court in the year 1937 was faced with a prayer for injunction against
the defendants from interfering with the exclusive right of the plaintiffs to broadcast a
description of certain boxing exhibition in the case of Twentieth Century Sporting Club
Inc. and Ors vs. Transradio Press Service Inc. and Anr. 8(Twentieth Century Fox Case)9.
In this case the New York Supreme Court applied the principles of unfair competition to the
broadcast of the Louis-Farr fight and entered an injunction. In all the three cases, the Courts
granted the injunction following the ratio of the INS Case.
Further counsel humbly submits that, these precedents have a large persuasive value due to
the similarity in the factual matrix, specifically with respect to play-by-play updates being
analogous to the ball-by-ball updates provided by the defendants.
The Madras High Court in the case of Marksman Marketing Services Pvt. Ltd. vs. Bharti
Tele-Ventures Ltd. & Ors.(Marksman Case)10, which dealt with nearly identical facts as
the instant case.11 In the Marksman Case, the Pakistan Cricket Board (PCB) had assigned its
exclusive rights over a cricket series between India and Pakistan in the form of television
rights, audio rights, internet rights, SMS rights and other rights to several persons on global
basis for a valuable consideration. M/s VECTRACOM Pvt. Ltd., a company incorporated
under the laws of Pakistan had entered into an agreement with the PCB, dated 29.12.2005
with respect of SMS rights in Indias Tour of Pakistan. The Plaintiff prayed for an
injunction12, restraining the defendants from disseminating information relating to scores,
alerts and updates through SMS technology on wireless and mobile phones by means of
transmission to handheld mobile phones in respect of the matches. The Madras High Court,
relying on the decision of the New York District Court in the case of National Basketball
7 http://www.leagle.com/decision/19541242284AD958_2335 (last visited on 07.02.2015)
8 300 N.Y.S. 159
9http://lobis.nic.in/dhc/MLM/judgement/13-03-2013/MLM13032013S27222012.pdf (last visited on
07.02.2015)
10 O.A. No. 78/2006
11http://www.delhicourts.nic.in/MARCH2013/MARCH2013/Star%20India%20Pvt.%20Ltd.%20Vs.
%20Piyush%20Agarwal.pdf, (last visited on 07.02.2015)
12 Copyright Act 55-61 1957
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Association and NBA Properties Inc. v. Sports Team Analysis and Tracking Systems
Inc.13(NBA-1 Case) held
The right of providing scores, alerts and updates is the result of expenditure of skill, labor
and money of the organizers and so the same is saleable only by them. The sending of score
updates and match alerts via SMS amounts to interference with the normal operation of the
Organizers business. The defendants act of appropriating facts and information from the
match telecast and selling the same is nothing but endeavoring to reap where the defendants
have not sown.
In Associated Press v. KVOS, Inc.14, a preliminary injunction was granted to restrain Station
KVOS from appropriating and broadcasting news gathered by the Associated Press on the
ground that the broadcasting station was in competition with the Associated Press in the
business of publication of news for profit.
The first case establishing property rights of a professional sports team to the broadcast of its
games was Pittsburgh Athletic Company v. KQV Broadcasting Company.15 In Pittsburgh,
KQV had positioned several observers outside Forbes Field who, from their vantage points,
could see into the game and broadcast the accounts and descriptions of the action. 16 The
Pittsburgh Athletic Company, better known as the Pirates, had licensed the exclusive
broadcast rights of their games to General Mills. The National Broadcast Company
contracted with General Mills to broadcast the Pirate games over two local radio stations. The
defendant asserted that it had a legal right to broadcast its own account of the game, via its
observers of the game, to the listening public.17
The court disagreed, holding that the exclusive right to broadcast play-by-play descriptions
of the games played by the Pirates rests with the plaintiffs. That is the property right of the
plaintiff with which defendant is interfering when it broadcasts the play-by-play description
13 939 F.Supp. 1071
14 9 Cir., 80 F.2d 575
15 Pittsburgh Athletic Co. v. KQV Broad. Co., 24 F. Supp. 490, 492 (D.C. Pa. 1938)
16 The court did not indicate exactly where the observers were stationed as they were viewing the
game
17 Pittsburgh, 24 F. Supp. at 492
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of the ball games obtained by the observers.18 The court observed that, the plaintiffs and the
defendant are using baseball news as material for profit. The Pirates have at great expense,
acquired and maintained a baseball park, pays the players who participate in the game, and
have, as we view it, a legitimate right to capitalize on the news value of their games by
selling exclusive broadcasting rights to companies which value them as affording advertising
mediums for their merchandise. It is our opinion, that the Pittsburgh Athletic Company, by
reason of its creation of the game, its control of the park, and its restriction of the
dissemination of news there from, has a property right in such news, and the right to control
the use thereof for a reasonable time following the games.19
This was the first judicial opinion which specifically recognized a protectable property
interest in the accounts and descriptions of a professional sports teams performance. The
opinion confirms that sports ball clubs do have a tangible property right in the descriptions
and dissemination of the accounts of their games 20. This recognition of the intellectual
property right in broadcasts of games and events was codified later in the 1976 Copyright
Act21. In this case, the honourable court came out with some valuable points such as:
1. The right, title and interest in and to the baseball games played within the parks of
members of the National League, including Pittsburgh, including the property right in, and
the sole right of, disseminating or publishing or selling, or licensing the right to disseminate,
news, reports, descriptions, or accounts of games played in such parks, during the playing
thereof, is vested exclusively in such members.22
2. The actions and threatened actions of the defendant constitute a direct and irreparable
interference with, and an appropriation of, the plaintiffs' normal and legitimate business; and

18 Ibid
19 Ibid
20http://studentorgs.kentlaw.iit.edu/ckjip/wpcontent/uploads/sites/4/2013/10/02JIntellProp32001.pdf(Last visited 08.02.2015)
21 17 U.S.C. 101-801
22 http://law.justia.com/cases/federal/district-courts/FSupp/24/490/1682221/ (last visited 08.02.2015)
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said action is calculated to, and does, result in the unjust enrichment of the defendant at the
expense of the plaintiffs and each of them.
3. The defendant's unauthorized broadcasts of information concerning games played by the
Pittsburgh team constitute unfair competition with the plaintiffs and each of them.
4. The defendant wrongfully deprives the plaintiffs and each of them of the just benefits of
their labors and expenditures in respect of the baseball games and the public dissemination of
news thereof as alleged in the complaint; and the action, threatened action and practice of the
defendant constitute a fraud on the public.
5. The actions and threatened actions of the defendant herein alleged constitute a wrongful
interference with the contractual rights and obligations of the parties.
In September 2012, the High Court of Delhi delivered a judgment in the suit filed by ICC
(Development) International Ltd (IDI) and ESPN (Mauritius) Ltd (ESPN), (hereinafter
collectively referred to as the Respondents), against New Delhi Television Ltd (NDTV),
with respect to the excessive usage of match footage by NDTV during the ICC Cricket World
Cup 2011. The Court, while upholding the limits set by the News Access Guidelines framed
by the International Cricket Council (ICC) for the ICC World Twenty20 Sri Lanka 2012,
granted an injunction restraining NDTV from using related video footage in excess of the
prescribed limits. The appeal by NDTV was disposed by the Division Bench on October 11,
2012. The Division Bench, while prescribing limits for usage of match footage by television
news channels, held that all television news channels should use match footage strictly in
accordance with the limits prescribed by the ICC or purchase the right to use such footage,
from either the ICC or the official broadcaster to whom the broadcasting and reproduction
rights was assigned by the ICC.23

23 ICC Development (International) Ltd. & Anr. v. New Delhi Television Ltd., C.S. (O.S.) No. 2416/2012
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2. WHETHER THE MATCH SCORES, WHEN IN PUBLIC DOMAIN CAN BE


PROTECTED FROM COMMERCIALIZATION?
The Council humbly submits that, this suit is De Hors the Copyright Act and since the
appellants are not seeking copyright of the score updates/match alerts, there is no question of
the information entering the public domain as envisaged under the Act.

AFTER BROADCAST, THE SCORES DO NOT ENTER PUBLIC DOMAIN IMMEDIATELY

Let us analyze as to when does the match score update enters the Public Domain. The
Merriam Websters dictionary defines Public Domain as: The realm embracing property
rights that belong to the community at large, are unprotected by copyright or patent, and are
subject to appropriation by anyone24
However, if we may use the term public domain to connote the information becoming
freely available to the public (emphasis supplied), it can be said that the information
emanating from a cricket match, enters the public domain at different moments of time i.e. it
becomes freely available to the public at different moments of time. To elucidate through an
example, the outcome of the first ball bowled in a cricket match, enters the public domain
instantly qua the spectators in the stadium. The same information enters the public domain
after a delay of a few seconds (or micro-seconds) subject to the time-lag in transmission of
24 Merriam Webster Page 342
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such information over a live telecast through television/radio. As a corollary, the information
has still not entered the public domain qua the persons who do not have any access to a
source of contemporaneous information i.e. TV or radio.
In Star India vs. Piyush Agrawal & Anr25, it was argued that there is a great demand for
knowing ball-by-ball progress of a match as opposed to the match-summary at the end of the
match which is evidenced by the fact that customers of such SMS/MVAS are willing to pay
between two to three rupees per alert/update. There is no merit in the argument that the match
information has entered public domain i.e. available to the public, the very instance it is
broadcasted by Star India. It is similar to saying that the plot of a book or movie has entered
the public domain as soon as it is released. Therefore, it is humbly submitted that match
information has not entered public domain i.e. is not readily available to the class of
persons who do not have access to TV/radio, who also happen to be the target consumers of
the both the parties.26
Likewise, in our case, there was a huge demand from the public for match updates, as the
tournament got popularized because of the previous edition 2013 tournament. But, it doesnt
imply that the match scores enter public domain as soon as it is broadcasted by FreeSports.
In the New Delhi Television Ltd v. ICC Development (International) Ltd. & Anr., 27 case,
it is pertinent to note that news or noteworthy information arising from a cricket match is
very different from the ball-by-ball or minute-by-minute information. For instance, who won
the toss and chose to bat/bowl, whether the batsman has scored a century, or a bowler has
taken a hat-trick, or a new world record being set constitutes news in the realm of a cricket
match. To substantiate with an example, a news channel reporting a cricket match would
not engage in the contemporaneous dissemination of ball-by-ball or minute-by-minute match
information. A news channel would only report selective excerpts from the match which is
news worthy. This characterization of news is in consonance with the observation of the
Division Bench in the NDTV Case. Those who do not obtain a license from the plaintiff, may

25 CS (OS) No. 2722/2012, Del HC


26 Supra note 24
27 FAO (OS) 460/2012
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not disseminate the score update/match alert before 15 minutes from the moment such score
update/match alert is telecasted/broadcasted by the plaintiff.
It is already stated that we do not intend to prevent the information arising from the MMBL
matches from entering the public domain. In fact, it is in best interest of the event that the
match information permeates the public domain to its full extent. But, the instant dispute is
between two commercial entities and hence there is no question of public policy. The
appellant doesnt prevent the respondents from disseminating match information to the
public but to ensure that respondents share their revenue with the appellant by obtaining a
license for such dissemination.
Also, in our case of Moonshine, where the information is in question is related to a private
event such as a match, whose rights have been licensed to someone, it is argued that the
information is protected and copyrightable to a certain extend.28
In a decision of the Apex Court in the case of Secretary, Ministry of Information and
Broadcasting, Govt. of India & Ors. V. Cricket Association of Bengal & Ors. 29(MIB
Case) in which, the Honble Supreme Court, finding the BCCI to be a non-profit making
organization, which controls officially organised game of cricket in India, observed that:
Being the organisers of the event had a right to sell the telecasting rights of the event to any
agency It has the right to choose the best method to earn the maximum revenue possible. In
fact, it can be accused of negligence and maybe attributed improper motives, if it fails to
explore the most profitable avenue of telecasting the event, when in any case, in achieving the
object of promoting and popularizing the sport, it has to endeavour to telecast the cricket
matches.

THE FAIRDEALING CONCEPT

The council on behalf of appellant humbly pleads a defence placing reliance on Section 39
and Section 52(1)(a)(iii) of the Copyright Act 1957 which states :
Section 39 of the Copyright Act 1957 reads as under:39. Acts not infringing broadcast reproduction right or performer's right - No broadcast
reproduction right or performers right shall be deemed to be infringed by 28http://www.livemint.com/Consumer/RzodVfIVymLutiOOSDAcmI/The-tussle-over-live-cricketscores.html (last visited 10.02.2015)
29 1995 2 SCC 161
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(a) the making of any sound recording or visual recording for the private use of the person
making such recording, or solely for purposes of bona fide teaching or research; or
(b) the use, consistent with fair dealing, of excerpts of a performance or of a broadcast in the
reporting of current events or for bona fide review, teaching or research; or
(c) such other acts, with any necessary adaptations and modifications, which do not constitute
infringement of copyright under section 52.
Section 52(1) (a) (iii)30 reads as under:52(1) The following acts shall not constitute an infringement of copyright, namely:(a) A fair dealing with any work, not being a computer program, for the purposes of :
(iii) The reporting of current events and current affairs, including the reporting of a lecture
delivered in public."
Therefore, the appellant doesnt deny the proprietary rights pleaded by the respondents, but
claimed the benefit of Section 39(b) of the Copyright Act 1957, as per which a use, consistent
with fair dealing, of a broadcast in the reporting of current events is not an infringement of
the broadcasters reproduction right and as per Section 52(1) (a) (iii) a fair dealing of a work
while the reporting of current events and current affairs do not constitute an infringement of a
copyright31. The appellant wishes to present before the honble court that there is no fair
dealing by Respondent. Respondent indulged in unfair competition and unjust enrichment.
They launched the app SUPERDUNK and reaped profits from the seeds sown by Moonshine
and FreeSports. It distributed score updates without a license from FreeSports and
Moonshine.
In ESPN Star Sports v Global Broadcast News Ltd.32 wherein it was held that both
copyright and broadcasting reproduction rights could separately co-exist and that the same
may vest with two different persons or even with a single person. It was observed that the
broadcasting reproduction right of the broadcaster was an exclusive one and that excessive
usage of the telecast in the form of news may amount to infringement as the exclusive
30 Copyright Act, 1964
31 FAO (OS) 460/2012
32 2008(38) PTC 477(Del)
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monopoly to broadcast the live feed or its reproduction lay with the broadcaster. The learned
Single Judge has noted that prolonged and repeated footage of the broadcast, beyond what
was permissible by fair dealing, would unfairly affect the goodwill, advertising and
commercial prospects of the right holder.
The Delhi High Court vide its order dated 23.06.2014 in Multi Screen Media Pvt Ltd
versus Sunit Singh and Ors.,33 granted an ex-parte injunction to Multi-Screen Media Pvt.
Ltd. (MSM) against 219 websites which were either infringing or were likely to infringe its
exclusive broadcasting rights in the FIFA World Cup 2014.Pursuant to a Licensing
Agreement dated 14.01.2014 with FIFA, MSM Satellite (Singapore) won the broadcasting
rights in Television, Radio, Mobile Transmission and Broadband Internet Transmission. In
India, this set of exclusive rights is protected under Section 37 of the Copyright Act, 1957;
the infringement of which will entitle the broadcaster to bring a civil action against the
pirates.
In Taj Television Ltd. and Ors. v. Rajan Mandal and Ors 34. during the course of the 2002
FIFA World Cup held in Korea and Japan (2002 Football WC). Taj Television Ltd. owned
the sports channel Ten Sports and was the owner of the broadcasting rights. The Court
granted Taj an ex-parte injunction against both named and unnamed cable operators for
unauthorized transmissions as its broadcasting rights under section 37(3)35 were being
infringed. Although a large number of cable operators had taken licenses, several prominent
cable operators had not signed up with Taj or its authorized operators and broadcasted the
tournament without any approvals, thereby costing the television industry in terms of millions
of rupees.
In Media Works NZ Limited & Anr v. Sky Television Network Ltd 36, the case concerned
the broadcasting rights of the Rugby World Cup 2007, held exclusively by MWNZ. The court
held that three Sky programme entitled The Cup (a magazine programme, The Crowd Goes
Wild (discussing the performance and prospects of teams and players, and Reunion (another
33 CS (OS) 1860/2014
34 [2003] F.S.R 24
35 Copyright Act, 1964
36 NZHC 924
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magazine styled programme with rugby reviews did not use MWNZ Rugby footage for the
purpose of reporting current events. Furthermore, it was held that Skys use of MWNZ
footage did not amount to fair dealing given the number of programs and the number of times
they were repeated. Skys coverage had gone beyond public interest considerations by
eroding the status of MWNZ as an exclusive broadcaster of the Rugby World Cup 2007 and
negatively impacting upon MWNZ investment in the copyright. In the instant case,
Respondent failed to indulge in fair dealing and therefore it is liable to pay the damages
caused to our client, who has the bouquet of rights and license to exploit the match
information commercially.37

3. WHETHER THERE HAS BEEN A TORT OF UNFAIR COMPETITION AND


UNJUST ENRICHMENT BY RESPONDENT?
The council humbly submits that there has been a tort of unfair competition and unjust
enrichment by Respondent. Here, Respondent without any permission from Moonshine
floated its own application and started using the trademark of MMBL. Due to this, the
common people got confused about the originality of the phone based application and
thought it to be floated out by Moonshine. Due to the act of the defendant here, Free Sports
suffered a huge loss. As Free Sports had got the bouquet of rights from the Moonshine after
paying a considerable amount of money, it is very obvious that Free Sports has got all the
right to have its own mobile based application. Even if he didnt wanted to have a mobile
based application, it is not the problem of the appellant as my client has been paid for the
mobile arena too and it is up to the defendant for floating a application or not. But without
37 Merry Moiseichik, 4 Copyright: An Issue in Sport and Recreation (1st ed. Journal of Legal
Aspects of Sport 1994).
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any prior information or permission of the appellant, the defendant here went a step ahead
and came up with its own application which provided minute to minute updates. As Free
Sports has given a considerable amount of money for acquiring the broadcasting and mobile
rights, the act done by the defendant is not taken up in good faith. It shows the malafide
intention of the defendant that even after knowing the ongoing between my client and Free
Sports, he floated his own application which is a violation in terms of unfair competition and
unjust enrichment. Even the defendant didnt pay the profit acquired by it due the
commercialization of Moonshines property. The match scores are the property of Moonshine
and what Respondent did is commercialize it to gain huge amount of revenue. Many big
advertisers roped in and invested in the mobile based application. This simply shows the long
term planning of the defendant in over riding the rights of the appellant.
Unjust enrichment has been defined as: "A benefit obtained from another, not intended as a
gift and not legally justifiable, for which the beneficiary must make restitution or
recompense."38
In Shri Vallabh Glass Works Ltd., and Anr. v. Union of India and Ors. 39 , this Court,
while examining the question as to what is the point of time from which the limitation should
be deemed to commence observed that relief in respect of payments made beyond the period
of three years may not be granted from the date of filing of the petition, taking into
consideration the date when the mistake came to be known to the party concerned. Just as an
assessee cannot be permitted to evade payment of rightful tax, the authority which recovers
tax without any authority of law cannot be permitted to retain the amount, merely because the
tax payer was not aware at that time that the recovery being made was without any authority
of law. In such cases, there is an obligation on the part of the authority to refund the excess
tax recovered to the party; subject of course to the statutory provisions dealing with the
refund.
In Indian Council for Enviro-Legal Action v Union of India 40, as the name suggest, the
Court was concerned with issues of environmental law. For the purposes of our discussion, it
suffices to note that the Supreme Court passed an order in 1996 giving certain directions to
industries to the Government to take remedial action to clean a village badly affected by
38 Black's Law Dictionary, Eighth Edition (Bryan A. Garner) at page 1573
39 1984 (16) ELT 171 SC
40 (2011) 8 SCC 161
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pollution caused by chemical industries. In this order, the Court found that the industries in
question were liable to pay the costs, which were later quantified as Rs. 37.385 crores. This
amount was not paid by the industries for more than fifteen years, and the litigation, the Court
records, was kept alive by filing a number of interlocutory applications. In these
circumstances, the question arose whether the Supreme Court could direct the industries to
not only pay Rs. 37.385 crores, but also to pay compound interest on it for the period of nonpayment (14 years). It may be that the Court could have made this order as a punitive
measure, but it chose to analyse the law of unjust enrichment for an answer.
Para 152. Unjust enrichment has been defined by the court as the unjust retention of a
benefit to the loss of another or the retention of money or property of another against the
fundamental principles of justice or equity and good conscience. A person is enriched if he
has received a benefit, and he is unjustly enriched if retention of the benefit would be unjust.
Para 159. A person is enriched if he has received a benefit, and he is unjustly enriched if
retention of the benefit would be unjust.
Unjust enrichment is
(i)
(ii)
(iii)

the receipt of a benefit that causes loss to the claimant41, or


the wrongful receipt of a benefit by the defendant42, or
the receipt of a benefit that belongs to the claimant43

Para 154. Unjust enrichment occurs when the defendant wrongfully secures a benefit or
passively receives a benefit which would be unconscionable to retain. A defendant may be
liable even when the defendant retaining the benefit is not a wrongdoer and even though he
may have received it honestly in the first instance.44
South Eastern Coalfields Limited v. State of M.P.45 on examining the principle of
restitution in para 26 of the judgment observed as under:
In our opinion, the principle of restitution takes care of this submission. The word
"restitution" in its etymological sense means restoring to a party on the modification,
41 Para 152 of Indian Council for Enviro-Legal Action v Union of India
42 Para 154 of Indian Council for Enviro-Legal Action v Union of India
43 Para 161 of Indian Council for Enviro-Legal Action v Union of India
44 Schock v. Nash, 732 A.2d 217, 232-33 (Delaware.1999) USA
45 (2003) 8 SCC 648
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variation or reversal of a decree or order, what has been lost to him in execution of decree or
order of the court or in direct consequence of a decree or order.
In Zafar Khan v. Board of Revenue, U.P ,46 In law, the term "restitution" is used in three
senses:
(i) return or restoration of some specific thing to its rightful owner or status;
(ii) compensation for benefits derived from a wrong done to another; and
(iii)compensation or reparation for the loss caused to another
Here it is very well contended that there has been a case of unjust enrichment and it itself
gives the apprehension of Unfair competition. Restitution here speaks about returning the
specific thing to the rightful owner. Here, the defendant has taken the right to broadcast
through mobile from the appellants. This right should be returned back to the appellants and
the honourable court may restrict the defendant from indulging in such discriminatory
practices which shows over stepping into the rights of my client by the defendant. A monetary
compensation has been granted by the Division Bench which is a welcoming decision. But
the honourable court should look up into the point that the right which has been infringed in
case of Moonshine should be restored by way of restitution.

4. WHETHER THERE IS A TRADEMARK DILUTION OF THE MMBL


TRADEMARK?
The council humbly submits that there is a trademark dilution of the MMBL trademark. The
MMBL trademark was vigorously used by the Respondent to promote its phone based
application which confused the public about the originality of the application. Everyone
thought that application to be a product of Moonshine, but it was the contrary to it. Due to
46 (1984) Supp SCC 505
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such an act of Respondent, Moonshine suffered a lot as their identity was crushed to mere
broadcasting to the Television only. Where the bouquet of rights has been given to Free
Sports, the defendant brought the application into the market and created the trademark
dilution by the appellants product.
In Cycle Corporation of Indian Limited v T I Raleigh Industries Pvt Ltd And others 6
wherein it was held by Hon'ble Supreme Court that "the expression by any proprietor" in
section 4747 should not be restricted to user by the proprietor or registered user who should
also include bona fide or authorized user. The legislature did not intend registered proprietor
to be deprived of their property at the instance of user whose use is unregistered. The
expression, therefore, should not be restricted to user by the proprietor himself or any
registered user but should also take into account bona fide authorized user.
This shows that it is not necessary for a company/entity to be registered to file claim against
any other entity for Trademark Dilution. The only point in determining the same is
interpreting the term Aggrieved Person. Here, the appellant i.e. Moonshine is an aggrieved
person which has suffered huge losses due to the act of the defendant.
According to Section 29(4) of the Trademark Act, 1994 Trademark dilution happens when
there is a popular product in the market and any other company uses the information
emanating out of it for commercial purpose without the permission of the Trademark holder.
In the recent cases, it has been already propounded that a company which may not be popular
but has a reputation in the country or a particular area can raise the issue of Trademark
dilution against any other company who has tried to carry out similar operations as that of the
trademark holder. It is contended by respondent that MMBL has not been registered in the
country of Mordor and Trademark Dilution cannot be initiated against Respondent at all. But
the point here is that MMBL is a sister product of Moonshine Private Limited which is a
conglomerate and has a huge reputation in the country of Mordor. It is not mentioned here if
Moonshine or MMBL is a registered entity in Mordor. But it is mere common sense that
where a company is dealing with textiles, automobiles and other such heavy industries, it is
directly or indirectly speaking for itself i.e. the company is a registered entity. So it is not
necessary for its sister production to register itself as a separate entity. MMBL has all the
right to use the trademark of Moonshine and any infringement or dilution against MMBL is
directly or indirectly against Moonshine.

47 Trademark Act, 1999


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Here, MMBL is one of its kind tournaments which is organised in the country of Mordor. The
bouquet of rights has been given to FreeSports which consists of broadcasting rights. But
now, a new company comes from nowhere sending minute to minute updates to the viewers
which is an attack indirectly against my client. There is always a reasonable restriction to
anyone freedom of speech and expression and any such right is valid till it over rides
someone elses rights. Here, Respondent is over riding my clients rights and they are
indirectly straining the revenue which could have been earned by Free Sports. My client has
spent huge worth of capital just to ensure that he gets the bouquet of broadcasting rights and
now the defendant is trying to encroach upon my clients right of broadcasting it. If this
would have been the case at all, my client wouldnt have paid such huge amount of money
and rather he also could have opted the same way of harassment as used by the defendant. It
costs nothing to him to get such an application designed in the Open Source Market and bring
in subscribers from all over the country for free. But, somehow he is restraining my client
from doing what he has paid for to the Moon Shine. This is gross violation of Right to Life
which includes Right to Livelihood. The defendant is simply encroaching upon the rights of
my client with a notion that data which has reached the public domain cannot be protected. In
my previous contention, I have already proved to the honourable Supreme Court that there
are exceptions to the fact that data cannot be protected after it reaches the Public Domain. So
here, the defendant has come to the court of law with a malafide intention to harass the
appellant. The appellant has paid for what he is entitled to. If anybody encroaches upon my
clients wilful right, there is this honourable Supreme Court of Mordor and its impartial
judges who will surely differentiate between the evil and the good. The contention raised here
by the defendant is baseless and it is contended by my client that there is Trademark Dilution
which has caused my client face huge losses during the match period.
In the case of McDonalds Corporation v. Joburger48, the South African court held that the
term well-known should be tested on the basis of whether sufficient people knew the mark
well enough to entitle it protection against deception or confusion.
India is a member of the World Trade Organization (WTO) and a signatory to the TRIPS
Agreement. In India, the Trade Marks Act, 1999, which contains provisions for the protection
of well-known marks, came into effect in 2003. The incorporation of these provisions can be
traced back to WIPO Resolution. Section 2(1) (zg) of the Trade Marks Act, 1999 defines well
known mark as follows:
48 1997 (1) SA 1
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Well-known trademark, in relation to any goods or service, means mark which has become
so to the substantial segment of the public which uses such goods or receives such services
that the use of such mark in relation to other goods or services would be likely to be taken as
indicating a connection in the course of trade or rendering of services between those goods
or services and a person using the mark in relation to the first mentioned goods or
services.49
In the case of Bata India Ltd. v. Pyarelal & Co 50, the District Court of Meerut refused to
grant injunction to the plaintiff, Bata India Limited (Bata), against passing off by the
defendants, who were using the mark BATAFOAM for rubber foam used in manufacturing
mattresses, sofas, cushions, and automobile seats. The plaintiffs mark BATA is a famous
footwear brand in India holding registrations for canvas, rubber, rubber plates, and leather
shoes. The plaintiff argued that by using the mark BATAFOAM, the defendants were guilty
of deceiving customers and such fraudulent and mala fide conduct amounted to passing off
the plaintiffs goodwill and reputation. The defendants, denying these allegations, alleged that
they were involved in business different from that of the plaintiff, and because their product
was sold as BATAFOAM, there could not be any confusion or deception. The District Court
rejected the plaintiffs claim by holding that the plaintiff had no registration for the mark
BATA for mattresses, sofas, cushions, automobile seats, etc., and that because the defendants
mark BATAFOAM was not identical in appearance to the plaintiffs mark BATA, there could
be no passing off. The decision of the District Court, on appeal, was reversed by the High
Court of Allahabad. The court said that the defendant failed to give any reasonable or valid
justification for the use of the name BATAFOAM which was likely to arise confusion in
the mind of the unwary purchaser of average intelligence that it was a product of the plaintiff.
The court held:
It is this impression which may ultimately cause damage to the reputation of the plaintiff. It
amounts to an invasion of his right vis-a-vis the name Bata. The name Bata is
neither a fancy name nor paternal name nor in any way connected with the defendants. It is
not the name of a flower or fauna. It is a fancy name of a foreigner who has established his
business in making shoes and the like products in this country. The name is well known in the

49 Steven N. Geise, 5 A Whole New Ball Game: The Application of Trademark Law to Sports Mark
Litigation (Seton Hall Journal of Sport Law 1995)
50 AIR 1985 All. 242
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market and the user of such a name is likely to cause not only deception in the mind of an
ordinary customer but may also cause injury to the plaintiff-Company.
It is pertinent to note that in this case, while the Court considered likelihood of confusion and
deception by the defendants mark BATAFOAM as a factor in granting injunction to the
plaintiff; it also took into consideration the injury which the plaintiff might suffer by the
defendants use of their mark which was well-known in the market.
The case of Daimler Benz Aktiegessellschaft & Anr. V. Hybo Hindustan51 is the most
celebrated case on trademark dilution prior to the 1999 Act. The issue in this case was the use
of the mark BENZ along with a three pointed human being in a ring. Ignoring the defense
of honest concurrent use by the defendant, the High Court of Delhi granted injunction to the
plaintiff and observed that imitation of mark such as MERCEDES BENZ by anyone
including the defendant would result in perversion of the trademark law in India.52 The Court
held:
Such a mark is not up for grabsnot available to any person to apply upon anything or
goods. That name is well known in India and worldwide, with respect to cars, as is its symbol
a three pointed star.
The Court further held:
In the instant case, Benz is a name given to a very high priced and extremely well
engineered product. In my view, the defendant cannot dilute that by user [sic] of the name
Benz with respect to a product like underwear.
In the case of Kirloskar Diesel Recon Private Ltd. v. Kirloskar Proprietary Ltd.53, the
plaintiffs, in a District Court of Pune, alleged that the use defendants use of the trademark
KIRLOSKAR as part of their trade name amounted to passing off and such adoption of this
mark was also in bad faith as one of the defendants had formerly worked for the plaintiffs.
The District Judge passed an order restraining the defendants from using the aforesaid mark.
On appeal before the Bombay High Court, the defendants argued that the nature of the
business of both parties was different, thereby ruling out the question of likelihood of
confusion or deception. They further alleged that the mark being a surname, any person with
51 AIR 1994 Del. 239
52 Mark F. Grady, 1 A Positive Economic Theory of the Right of Publicity (97 ed. UCLA Entm't Law
Review )
53 AIR 1996 Bom. 149
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that surname was entitled to use it. The respondent plaintiffs argued that a trade names
exclusive reputation was entitled to protection from tarnishment and also pointed out that the
adoption of the surname by the defendants was not bona fide. Relying on the ruling of
Mercedes Benz case, the Bombay High Court affirmed that the law on passing off protected
goodwill in a trademark against erosion, and that it was not intended to protect a person who
deliberately set out to take advantage of somebody elses commercial reputation. Also, taking
into account that one of the defendants was once involved in the plaintiffs image-building
program, the Court rejected the defendants appeals and affirmed the order of the District
Judge.
In the case of Caterpillar Inc. v. Mehtab Ahmed 54, a famous trademark CATERPILLAR
came under attack when a local defendant in Delhi adopted it representing footwear. The
plaintiff company, Caterpillar Inc. established since 1904 in USA, filed a suit for passing off
and copyright infringement before the Delhi High Court. The Court framed two issues for
consideration. Firstly, whether the trademarks CAT and CATERPILLAR could be
monopolized by anyone; and secondly, whether the plaintiff was required to prove the use of
the mark by showing sales of its goods under the mark in the country where it alleged passing
off. The Court after making a detailed analysis of trademark dilution found that the object of
protecting well-known marks was to avoid the weakening or dilution of the concerned mark.
The Court opined that it was a commercial invasion by the subsequent user and such kind of
dilution or weakening of the trademark need not be accompanied by an element of confusion.
The Court further stated that such use resulted in smearing or blurring the descriptive link
between the mark of the prior user and its goods and reduced the force or value of the
trademark. It further observed:
Another kind of dilution is by way of sullying or impairing distinctive quality of a trade
mark of a senior user. This in common parlance is known as dilution by tarnishment. The
object of such an invasion is to tarnish, degrade or dilute the distinctive quality of a mark.
The act of dilution of mark by way of tarnishment is always with regard to well-recognized,
strong and famous marks; it should have effect to diminish or weaken the strength and
identification value of the mark. There is no need to establish likelihood of confusion as to
source, affiliation and connection.
In the case of Honda Motors Co. Ltd. v. Charanjit Singh55, The plaintiff found that the
mark HONDA was registered in the defendants name with respect to pressure cookers. The
54 2002 (25) PTC 438 (Del.)
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plaintiff therefore, filed an opposition and a suit for passing off, claiming international
reputation and goodwill of its brand. The defendant, on the other hand, alleged that its use of
the mark dated back to 1985; that the defendant was the prior user of the mark in connection
with pressure cookers; that the parties respective goods were different, hence ruling out the
possibility of any confusion or deception; and that the plaintiffs claims were barred by laches
as a result of its delay in filing the suit. The Court held that HONDA had a reputation for
superior quality products in the field of automobiles and power equipment and that the
defendants use of this mark in connection with pressure cookers would mislead the public
into believing that the defendants business and goods originated from the plaintiff. The Court
found that such use by the defendants had also diluted the goodwill and reputation of the
plaintiff. The Court further held:
The trade mark HONDA being of global reputation, its user by the defendants is likely to
cause not only deception in the minds of ordinary customers but may also cause injury to the
plaintiff company
The Courts decision in this case was based on two prime factors: firstly, deception of the
public; and secondly, dilution of the plaintiffs goodwill and reputation in connection with the
mark HONDA. An analysis of the above decisions shows that the Indian courts have applied
the common law remedy of passing off to reach findings of dilution as an act of unfair
competition.
There being a lacunae in the existing law on trademark dilution, the principle of dilution by
passing off was developed by the courts on the basis of globally recognized standards of
protection of well-known trademarks. In addition to dilution of goodwill and reputation of
trademarks, in most cases, the courts heavily relied on the elements of confusion and
deception, except in Mercedes Benz case. Under the TMM Act, there was also no remedy
available against infringement unless the well-known mark was registered in the class of
goods for which the defendant chose to use the mark. However, the aggrieved trademark
owners could still avail the remedy of passing off in the absence of a defensive registration,
that too in a different class of goods.
The case of Ford Motor Co. v. Mrs. C. R. Borman56 was decided by the Division Bench of
the High Court of Delhi from an order of the Single Judge granting the defendants motion to
55 2003 (26) PTC 1 (Del.)
56 2008 (2) CTMR 474 (Del.) (DB)
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dismiss the plaintiffs complaint. The defendants filed their motion on several grounds,
alleging that they were not subject to the jurisdiction of the Delhi High Court, that there was
no infringement and that the plaintiffs complaint did not state a claim for which relief could
be granted. The defendants used the mark FORD in connection with footwear, to which the
plaintiff objected in the suit before the learned Single Judge. The plaintiffs infringement case
rested on Section 29(4)57. On appeal, the Division Bench reversing the order of the Single
Judge held:
The view of the learned Single Judge is that the intendment of the Act could not be for a
blanket protection to be made available to a trademark in respect of the entire gamut of
Classes. What should not be lost sight of is the fact that Section 29(4) 58 is palpably an
exception to the scheme of the Act and applies only to those trademarks which have earned a
reputation in India. If it is, prima facie, clear or it is proved through evidence that the
concerned trademark enjoys and commands a reputation in India, the Plaintiffs do not have
to prove deception on the part of the Defendants or likelihood of the customer being misled
because of the use of the challenged trademark. Once the Plaintiffs have made out a case
that the offending trademark is identical with or similar to its registered trademark, relief
would be available even if the purveyed goods are not similar and/or fall in the same
category or class.
Unlike in Hamdard, the Court in this case followed the language of Section 29(4) and found
that if the mark enjoys a reputation in India, the plaintiff does not have to prove the
defendants deception.
In the case of Tata Sons Ltd. v. Manoj Dodia59, Decreeing the suit in plaintiffs favor, the
court awarded the company punitive damages of 2 lakh rupees against the defendant.
It was held, in Adidas-Salomon AG v Fitnessworld Trading Ltd 60, that it is not necessary
to establish confusion or the likelihood of confusion in order to establish infringement under
this head. The plaintiff has to show that there is sufficient degree of similarity between the
mark with a reputation and the sign (i.e. the impugned mark) to have the effect that the
57 Trademark Act, 1999
58 Trademark Act, 1999
59 2011 (46) PTC 244 (Del.)
60 [2004] Ch 120
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relevant section of the public establishes a link between the sign and the mark. The court also
cautioned that all tests have to be cumulatively satisfied, or else the courts would be indulging in
over-protection to the registered mark, affecting competition:

Thus the national court must be satisfied in every case that the use of the contested sign is
without due cause; and that it takes unfair advantage of, or is detrimental to, the distinctive
character or the repute of the mark. These requirements, properly applied, will ensure that
marks with a reputation, whether or not the reputation is substantial, will not be given unduly
extensive protection.
In Bloomberg Finance Lp v. Prafull Saklecha 61, the court in this case went further and
clarified that it may not be necessary to prove that the impugned registered mark is a well
known mark, even in fact if it is. This makes easier to suffice the requirement as to the
reputation of the mark under section 29(4) of the Trade Marks Act, 1999.
In the case of DM entertainment v Baby Gift House and others 62. , The court held that
passing off would occur when the mark is not only being used deceptively similar to the mark
of another but it is being used to create confusion in the minds of the consumer that results in
the damage or loss of business for the person or company who/which is the lawful owner of
the trademark. The court meted out a compensatory amount to the tune of Rs. 1, 00,000.

61 IA No. 17968 of 2012 in CS (OS) No. 2963 of 2012


62 DM entertainment v Baby Gift House and others CS(OS) 893 of 2002
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PRAYER FOR RELIEF

WHEREFORE, in light of the issues raised, arguments advanced and authorities cited it is
most humbly and respectfully requested that this Honble Court to adjudge and declare that:
1. Moonshine has a copyright protection over the scores emanating out of the
Match
2. The scores, when in Public Domain can be protected from Commercialization
3. Moonshine & FreeSports has been subjected to Unjust Enrichment and Unfair
Competition from Respondent
4. There has been Trademark Dilution on the part of Moonshine due to the act of
Respondent
All of which is respectfully affirmed and submitted.
The court may also be pleased to pass any other order, which this Honble Court may deem
fit in the light of justice, equity and good conscience.

Sd/Amiya Kumar Pati (Senior Counsel)


Nidhi Singh (Counsel)
Roselin Sara Alex (Junior Counsel)
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