Analysis of The TMKOC Case: John Doe Orders and their Necessity in the Entertainment Industry

25th October, 2024 - 7:22 am Categories: Legal Case News & Updates 0 Comments

Introduction

TMKOC which stands for Taarak Mehta Ka Ooltah Chashma is one of the most reputed and long-running TV Shows. It occupies a very special place in people’s hearts as it is a sitcom based on ordinary -middle-class people and depicts situations to which people can relate. The show was created by Asit Kumarr Modi and is produced under the banner of the production company Neela Film Productions. The show has been running from 28^th July 2008 till present successfully on Sony SAB.

Due to its popularity among the people, several platforms used the names of the characters, images of the characters, and famous dialogues from the show to get commercial gains in various forms. There were others who published AI-generated videos and animated videos on YouTube. All such content that was published or the names, images, and dialogues of the characters that were used were without the consent of the owner that is Neela Film Productions, and led to causing grave losses to the plaintiff, and as a result, Neela Film Productions filed a plaint in the Court of Law to prevent the misuse of its copyright and trademark rights.

In the case, Neela Film Productions Vs Taarakmehtakaooltahchashma.com & Ors, Justice Mini Pushkarna of The Delhi High Court passed an order dated 14.08.2024 with the aim of protecting the copyrighted/registered trademarks of the plaintiff.

Background of the Case

The suit was filed by Neela Film Productions for permanent injunction restraining infringement of copyright and trademark, misappropriation of publicity rights, unfair competition etc[1]

The plaintiff in the present case submitted that the production house that is, Neela Film Productions had an exclusive right over the format, concept, and intellectual property of the show that is, Taarak Mehta Ka Ooltah Chashma. The plaintiff further submitted that the rights with respect to such as characters, mannerisms of the character, etc, even the costume, makeup, hair, etc underlying the literary, artistic, dramatic, etc works of the show, derivative and adaption rights in respect of the said show are all owned by them. However, there are certain rights of the show which are vested with Sony Pictures Networks India Pvt. Ltd.

The plaintiff particularly filed the suit because these exclusive rights were obtained by the plaintiff by trademark registration for the various aspects of the show. Therefore, misuse of such exclusive rights owned by the plaintiff over the intellectual property without being authorized to do so is a violation of the law.

Examples of the Trademark Registrations by the plaintiff include – ‘Gokuldhaam,’ ‘Jethalal’ etc

The plaintiff had also obtained Copyright registration for the various characters of the show and also for various animations associated with the show under Section 13 of the Copyright Act, 1957.

The various forms of infringement that occurred were using the names, images, and dialogues of the characters for making merchandise, creating a website with the information regarding the show’s characters to attract traffic to their website, therefore, leading to commercial gains by the usage of the plaintiff’s copyrighted material, certain other infringers published AI-generated images of the characters on their YouTube channels which were portrayed in an inappropriate way leading to tarnishing the image of the show’s well-reputed characters, yet another form of infringement occurred through YouTube videos itself in which the there was unauthorized reproduction of the sets, the format of the show along with the usage of the hashtags of the trademarks of the show in order to obtain commercial gains by increasing the viewership.

Therefore, the plaintiff would have not only suffered financially but also there would be a reputational loss if some appropriate action was not taken against these infringers. As a result, the plaintiff approached the Court of Law to take suitable action against these infringers by issuing orders against John Doe parties as these parties took the benefit of anonymity that the internet provides.

Analysis of the Court’s Order

Till the next date of hearing, the court issued certain orders to protect the rights of Neela Film Productions to prevent the unauthorized use of their trademarks and copyrights.

The court passed an order of ex parte ad interim injunction by restraining the defendants (including the John Doe parties), their owners, partners, proprietors, etc from in any manner hosting, broadcasting, displaying, uploading, etc any content, goods, or services that in any manner amounts to infringement of the plaintiff’s copyrighted material/registered trademarks.

The court also ordered that if the websites/videos/YouTube links which infringed the intellectual property rights of the plaintiff were not brought down within 48 hours then the MeitY and DoT shall direct the respective service providers to suspend all the links.

The Court also granted the liberty to the plaintiff to notify YouTube to block the URLs that were infringing their exclusive rights.

(Such URLs were provided in the Annexure A of the Order)

The court passed further such orders as were deemed appropriate to protect the rights of the plaintiff against the infringement until the next date of hearing.

The order passed is justifiable because as stated in the TRIPS Agreement, the basic underlying principle behind granting intellectual property rights is to give the creator an exclusive right over his/her creation. Similarly, in this case, the rights that were conferred upon the creators of TMKOC over their exclusive creations mind such as copyrights over certain characters or even trademark rights were owned by the creators, and therefore the unauthorized use of these creations is not at all justifiable as usage of such creations in an unauthorized manner which causes harm to the actual creators undermines the basic underlying principle behind granting of Intellectual Property Rights.

Also, not only the unauthorized use but the misuse of such intellectual property by the portrayal of the characters in an inappropriate manner leads to tarnishing the image of such a well-reputed Production House in the entertainment industry.

John Doe Order: Its Need in the Entertainment Industry

The Delhi High Court passed the John Doe Order in the case of Neela Film Productions Vs Taarakmehtakaooltahchashma.com & Ors. It means that along with having passed the ex parte ad interim injunction order by restraining the defendants, it also passed the John Doe order. ‘John Doe’ is used as a name of the defendant who is unidentified. In India, the term John Doe is often replaced by ‘Ashok Kumar.’

A John Doe Order is a type of legal order that allows a person or entity to take legal action against an unknown party or parties.[2] In simple words it means ‘an anonymous party’ to the case which remains unknown at present. It is used when the producer or the filmmaker anticipates that there is going to be piracy of their film, but, they do not know who may cause the piracy or is the infringer.[3]

I believe that to protect the rights of the various innovators in the Entertainment Industry such order acts as a shield of protection against those who try to make an inappropriate use of their original works or creations. There have been several instances in the industry where the infringers have tried to make a wrong and unacceptable use of the intellectual property of the creators and because of such use made by them people have been misguided by the improper portrayal or there has been a damage to the reputation of the creators.

A few instances from the entertainment industry in which the John Doe Order was passed –

• Taj Television Vs. Rajan Mandal [4]– A John Doe Order was passed in this case to restrain the unlawful broadcasting on the FIFA World Cup of 2002 by the illegal broadcasters who were transmitting the plaintiff that is, Taj Television’s channel and therefore infringing the exclusive legal right that the plaintiff held for the broadcasting of the FIFA World Cup.
• Yash Raj Films, one of the leading and biggest production houses in India had filed for a John Doe for protecting its exclusive right over its creation of the movie Hichki[5]. In this situation, the suit was filed in the Madras High Court to take a preventive action of any possible infringement in the future.
• In the case – Amitabh Bachchan Vs Rajat Negi & Ors[6] and others, The Delhi High Court passed an ex-parte ad interim order for protecting the personality rights of the actor by restraining the defendants and even the unknown defendants that is, ‘John Doe’ from misusing the rights that are unique to the personality such as, his voice, personality traits etc.
• In the case – Reliance Big Entertainment Pvt Ltd Vs Multivision Network and Ors[7]– It was established that the plaintiff has exclusive copyright over the film – ‘Don 2’and a John Doe Order was passed by the Delhi HC the defendants and the unknown defendants were restrained from distributing, duplicating, copying, recording the movie through different mediums without having a proper license from the plaintiff.

There are several such instances in the industry in which the John Doe Order has been passed by the court to protect the rights that the creators have over their content. I feel that there are a lot of efforts that go behind creating something for the entertainment of the people, for the people to appreciate and to take into consideration such efforts and to protect the creators from infringement, John Doe Orders by the Court in the Entertainment Industry are an essential mechanism to curb the misuse of the creative work exclusively created by an individual.

Conclusion

The basic principle behind the protection of Intellectual Property is to protect the creation of an innovator from the illegal use of such a creation by others, it simply means that there are lot of efforts – mental, physical, financial that are made to create something that is capable of being unique and can be used by the authorized to gain returns from this creation. In the Entertainment industry, with the advent of technology, creating duplicates of original works or misusing the intellectual property of the creators causes grave losses to the original creators and to sustain in such a competitive industry, there is needs to be some sort of protection that they must get. Therefore, John Doe Orders are essential in the Entertainment Industry to protect the works of the creators from being inappropriately used by the infringers who are anonymous. In the TMKOC Case, with it being a well – reputed show on television, unauthorized use of their copyright and trademark material or indecent portrayal of the characters using AI is unacceptable as it tarnishes the image of the production house – Neela Film Productions which has been in the industry for a long period of time. The John Doe Order passed by the Delhi HC in the case will protect the creators of TMKOC from the infringement of their exclusive rights that they have over their creations such as their characters, dialogues, the personalities of the characters etc by anonymous entities in the world out there.

Author: Riya Risbud, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at  Khurana & Khurana, Advocates and IP Attorney.

[1]  Neela Film Productions Vs Taarakmehtakaooltahchashma.com, CS(COMM) 690/2024.

[2] Madhu Gadodia, Sujoy Mukherji, Tarini Kulkarni History and Development of John Doe Orders in India, Live Law (Feb 4, 2023, 9:01 AM), https://www.livelaw.in/law-firms/law-firm-articles-/john-doe-order-fifa-world-cup-quia-timet-civil-procedure-code-delhi-high-court-non-fungible-token-220689.

[3] Shristi Talukdar, John Doe Jurisprudence – The Much – Awaited Hero of Bollywood, SCC Online (Jan 20, 2021)  https://www.scconline.com/blog/post/2021/01/20/john-doe-jurisprudence-the-much-awaited-hero-of-bollywood/.

[4]  Taj Television Vs. Rajan Mandal, (2003) FSR 22.

[5]  Maryam Farooqui, Money Control, (April 28, 2018) https://www.moneycontrol.com/news/trends/entertainment/yrf-files-john-doe-to-protect-hichki-from-piracy-a-menace-that-made-film-industry-lose-30-revenue-in-2017-2532925.html.

[6]  Amitabh Bachchan Vs Rajat Negi & Ors, CS (COMM) 819/2022.

[7] Reliance Big Entertainment Pvt Ltd Vs Multivision Network and Ors, (2011) SCC OnLine Del 5609.