Judgment:
* IN THE HIGH COURT OF DELHI AT NEW DELHI % Order delivered on:
19. h January, 2015 + CS(OS)784/2013 WORLD WRESTLING ENTERTAINMENT, INC. ..... Plaintiff Through Mr. Pravin Anand, Adv. With Ms. Jaya Negi Adv. versus SAVIO FERNANDES & ORS Through ..... Defendants Ex parte CORAM: HON'BLE MR.JUSTICE MANMOHAN SINGH MANMOHAN SINGH, J.
1. The plaintiff has filed the present suit for permanent injunction for infringement of copyrights, infringement and dilution of registered trademark, passing off, rendition of accounts, damages, delivery up, etc. against the defendants.
2. The plaintiff, is a company incorporated under the laws of the State of Delaware, USA and also has offices in New York City, Los Angeles, London, Shanghai, Tokyo, Singapore and in India (Mumbai). The plaintiff was previously known as World Wide Wrestling Federation (WWWF) and later as World Wrestling Federation (WWF). In 1982, it was sold to the same family's Titan Sports company, which later changed its name to World Wrestling Federation Entertainment (WWFE), before finally becoming World Wrestling Entertainment (WWE) in May, 2002.
3. It has been stated in the plaint that the plaintiff, which commenced its business in the year 1952, is an international integrated media and entertainment company principally engaged in the development, production and marketing of television programming, pay-per-view programming and live events, and the licensing and sale of branded consumer products featuring its highly successful WWE brand. Plaintiff has been providing to the public live and televised wrestling and entertainment events since February 1983. In addition to the televised events, plaintiff presents live WWE events on a regular basis in most major cities throughout the world including India.
4. Since the year 1985 the plaintiff has been conducting annually a major wrestling and entertainment event, broadcast live via pay-per-view worldwide called WRESTLEMANIA which culminates the year’s WWE events and is the occasion for determining and crowning the champion WWE wrestler for that year. Thus, WRESTLEMANIA is the biggest wrestling event of the year for the WWE attracting millions of viewers from all over the world. It has been stated that WRESTLEMANIA28 broadcast on 1st April, 2012 generated approximately 1.3 million pay-perview buys and generated USD$30.1 in pay-per-view revenue. Fans from all the U.S. states and 30 countries attended the said event. televised WWE broadcasts twelve live events per year, via pay-per-view including WRESTLEMANIA, SUMMERSLAM, ROYAL RUMBLE, EXTREME RULES and MONEY IN THE BANK. It is stated that since the year 2000, WWE pay-per-views have generated an average of approximately USD$95 million in revenue and 5+ million buys annually.
5. Plaintiff offers a variety of consumer products in the form of mementos/souvenirs including, but certainly not limited to apparel (e.g. t-shirts, sweatshirts, masks, hats, caps, jerseys, belts, etc.), posters, calendars, fact books, sunglasses, water bottles, key rings, action figures, DVDs, video tapes, etc. In 2010, WWE consumer products had global retail sales of USD$1.2 Billion. WWE has more than 200 licensees distributing product in 86 countries, including India. The plaintiff also has a large digital presence. Its official homepage 6. Plaintiff also publishes books with Simon & Schuster Inc. WWE’s first Simon & Schuster biographies “Hollywood Hulk Hogan” and “It’s Good to be King…Sometimes” by Jerry Lawler both became New York Times Best Sellers. WWE’s other books include inter alia “The Stone Cold Truth” and “WWE Unscripted.” Since WWE began publishing books, more than twenty-three books have made the New York Times Bestseller List, with three making it to the No.1 position. Plaintiff’s publishing operations also consist of WWE Magazine and WWE Kids Magazine, magazines, and mini-magazines. special edition The magazine business has a combined annual circulation of approximately 6 million. 7. All the wrestling events of the plaintiff feature professional wrestlers having distinctive appearances and carrying fictitious and unique names which are evocative of the same image sought to be projected by the characters. The combination of both name and image, have the effect of making an indelible impression in the mind of the viewer. Thus, for instance, there are wrestlers with names such as JOHN CENA, RANDY ORTON, THE ROCK, CM PUNK, UNDERTAKER, SHAWN MICHAELS, THE GREAT KHALI, REY MYSTERIO, HHH, EDGE, etc. As a further example of the “images” of these characters, the character named UNDERTAKER typically appears in wrestling exhibitions and in printed matter as an intimidating figure in black with darkened eyes. CS(OS) NO.784/2013 characters holds United States copyright registrations in the talent images of these characters. 8. Apart from its common law rights, plaintiff has also obtained registrations of the mark WORLD WRESTLING ENTERTAINMENT and WWE Scratch Logo in relation to various goods in different countries worldwide. Some of the fictitious names of the wrestlers have also been registered as trademarks by the plaintiff in relation to various goods in different classes in the USA and India. A list of the trademark registrations obtained by the plaintiff in India are mentioned in Para 7 of the plaint. It is stated that the plaintiff’s trademark WWE and WWE Scratch Logo (i.e. the logo) is registered under various classes in over 80 countries. 9. It has been stated that the sporting events organized by the plaintiff are broadcasted on television networks across the world and their viewership rating constitutes a record of sorts. Each year, more than 7,500 hours of WWE’s television programming can be seen in more than 145 countries and 30 languages around the world. Versions of WWE’s RAW, SMACKDOWN, WWE SUPERSTARS, and WWE NXT programs are shown in US domestic and international markets. In India, WWE’s RAW, SMACKDOWN, WWE SUPERSTARS and WWE NXT programs are televised on Ten Sports. It is averred that with millions of men, women and children patronizing hundreds of arenas around the world each year, and watching numerous televised and pay-perview programming year-round, WWE is among the most popular brands in the world. 10. Apart from holding wrestling matches which are televised and broadcast in millions of homes worldwide, the plaintiff’s business consists of granting licenses for the manufacture, distribution, sale, advertising and promotion of a wide range of products utilizing the WWE brand and associated characters and talent. Plaintiff's professional wrestlers with the fictitious names and unique images of the plaintiff’s creation are used in merchandise of a wide range of products. These marks and images when used on any category of goods or services whatsoever are immediately associated with the plaintiff. 11. Plaintiff's right to merchandise extends to India amongst other countries and is valuable rights for the plaintiff in as much as substantial revenues are earned by the plaintiff by virtue of this part of its business relating to character merchandising. 12. The plaintiff’s merchandising program at the time of filing of the present suit included a product line of sales of items falling under nearly 25 different categories including various types of apparel, action figures and toys, video games, trading cards, sticker albums, music CDs, and shows featured in VCD’s and DVD’s. 13. Plaintiff licenses in Indian market among other things, T- shirts, sweat shirts, caps, vests and other licensed products like CDs, VCDs and DVDs reproducing the trademarks WORLD WRESTLING ENTERTAINMENT and the WWE Scratch Logo, and the WWE characters of the plaintiff on the said products. 14. It is averred that there is public awareness in India of the plaintiff, since its trademarks and its activities receive unprecedented media coverage and publicity. The sports channel Ten Sports broadcasts WWE shows on a regular basis in India. Thus, the activities of the plaintiff under the trademark/trading style WORLD WRESTLING ENTERTAINMENT and the WWE logo are very well-known in India and the different WWE characters each with his unique and highly distinctive name and image, are also exclusively associated with the plaintiff. 15. Plaintiff is also the copyright owner of the pictorial representations of the WORLD WRESTLING ENTERTAINMENT and WWE wrestlers and the WWE Scratch Logo as they appear on the various publicity material/promotional merchandise of the plaintiff. Apart from this the plaintiff is also the proprietor of the events that are relayed through various satellite channels throughout the world in various languages and the same are sold in VCD/ DVD formats through authorized publishers. Plaintiff acquires ownership of the copyright to the photographs of these talents/characters assignment by given virtue by of the express declaration talents/characters of and photographers in writing at the time of undertaking a project. Thus, the talent/character assigns entire rights to the plaintiff to the use of the photographs. Plaintiff, as a purchaser for valuable consideration, has all such rights as are vested by the copyright law in the owner of such photographs which are original artistic works. Further, being registered with the Copyright Office in the United States of America the overall format, structure, photographs, sequence, layout, etc. of the plaintiff’s magazines are also protected copyright works. These copyrights of the plaintiff extend to India by virtue of the International Copyright Order, 1991 read along with Berne Convention and the Universal Copyright Convention. 16. Plaintiff does extensive business on the Internet. Through its official e-commerce website 17. The defendant No.1 is the proprietor of the defendant No.2 and 3, who are engaged in selling apparel and merchandise bearing the registered trademark WWE and other copyrightable content of the plaintiff. Defendants additionally sell their products online through their websites www.wrestlezoneindia.com and www.wrestlezone.co.in. 18. It is the case of the plaintiff that in the month of November 2012 the plaintiff came across the defendants websites www.wrestlezonindia.com and www.wrestlezone.co.in which were claiming to be “The WWE Merchandise Store” incorporating the WWE Scratch Logo (i.e. the logo) of the plaintiff. Through the said websites the defendants were claiming to be selling official WWE merchandise including T-shirts, caps, wristbands, jerseys, sweatshirts, action figures, toy belts, full size replica belts, etc. Defendants were advertising the said products bearing the trademarks, logos and other copyrightable content of the plaintiff on the said websites. The website had also displayed a collage of various photographs bearing various copyrightable content of the plaintiff. Defendant’s infringed websites 19. Pursuant thereto, plaintiff conducted a Whois search to ascertain the contact details of the registrants of the said websites which revealed that the registrant of the said websites was located at Deccan Towers, Shop No.11, 14 Sholapur Road, Pune, Maharashtra – 411 001. 20. In order to ascertain the extent of the activities of the defendants, the plaintiff deputed an independent investigator to initiate an investigation into the activities of the defendants. On 6th December 2012 the investigator visited the store of Wrestle Zone i.e. defendant No.2 which appeared to be an exclusive retail store of products bearing the trademarks and copyrights of the plaintiff including the logo WWE. During the visit to the said store, the investigator met the store in-charge who informed him that Wrestle zone is owned by defendant No.1 and the present store has been in operation for the past 18 months. 21. The investigator was also informed that Wrestle Zone is a popular retail store and known for the exclusive products of the WWE brand. The T-Shirts sold at the said premises were between the price range of Rs. 800 to Rs.2500 with approximately 900 articles of merchandise bearing WWE logos or other copyrights estimated to be stored in the said store. The investigator purchased a sample T-shirt of the WWE brand for Rs.1500/- and was given an invoice bearing No.763 dated 6th December 2012 for the said purchase. 22. During the investigation, it was further revealed that the defendants have another store called WWE Shop, i.e. defendant No.3. On 7th December 2012, the investigator came across the hoarding of defendant No.3 that read ‘WWE Shop – The WWE Merchandise Superstore’ incorporating the WWE Scratch Logo (i.e. the 23. logo). There the investigator met defendant No.1 who during the course of investigation informed the investigator that they are retail store of garments and accessories stocking exclusive products of the WWE brand. The investigator observed that almost all the products in the said store including the T-Shirts, caps, wrist-bands, playing cards, statuettes, belts, etc., were being sold under the brand of WWE. There were approximately 1300 merchandise articles bearing the WWE logo, trademarks and other copyrightable content available at the said store. Defendant No.1 informed the investigator that they are the authorized distributors of WWE merchandise sourcing their goods directly from the plaintiff in the US. However, as per a search conducted within the plaintiff’s records revealed that defendant No.1 had made only an insubstantial number of purchases (imports) of genuine products from the plaintiff. The investigator thereafter purchased one T-Shirt bearing the WWE logo for Rs. 1000/from the said store and was given a receipt bearing invoice number 899 dated 7th December 2012 for the said purchase. 24. On 9th January 2013, the investigator visited the premises of the defendants again to make few more purchases to enable it to analyze the authenticity of the products sold by the defendants. 25. The goods purchased from the defendants by the investigator on 6th December 2012, 7th December 2012 and 9th January 2013 were then sent to the plaintiff’s representatives to examine the authenticity of the same. Upon inspection of the same, the following was revealed to the plaintiff as counterfeits: S. No.Product Reason 1. JOHN CENA “U CAN’T The neck tag had been torn out. SEE ME” t-shirt 1 2. JOHN CENA “U CAN’T The neck tag is incorrect (does not SEE ME” t-shirt 2 have “WWE Authentic” marking” or the trademark registration “®” symbol). The “Authentic Wear” tag on the bottom of the shirt does have the proper trademark registration “®” symbol. 3. REY MYSTERIO t-shirt CS(OS) NO.784/2013 Hang tag on the neck should be printed and not a physical tag; the “Authentic Wear” tag on the bottom of the shirt does have the proper trademark registration “®” symbol. REY MYSTERIO’s head is improperly cut off by the neck of the t-shirt; the grey color is 4. JOHN CENA “U CAN’T The front logo is smaller than it SEE ME” cap should be; there is an improper “Authentic Wear” tag on the inside of the hat; it does not have the proper “Authentic” inner lining; the outside of the hat does not have black embroidery on the seams. 5. JOHN CENA sweatband/headband set There are no tags anywhere on these items. Defendant’s infringing products 26. It is submitted by the plaintiff that the plaintiff is the creator of its original characters and holds a copyright in all modes of depiction of the said characters and the WWE Scratch Logo. Plaintiff’s rights in its characters are well recognized both by the public and by the Wrestlers themselves. Therefore, the plaintiff has sole copyright and merchandising rights over the images of its talents and the WWE Scratch Logo used by the defendants. The illegal representation of the WWE characters and WWE Scratch Logo on the impugned products and website has been done without obtaining any proper license or permission from the plaintiff. The said act of the defendants has led to upfront infringement of copyrights belonging to the plaintiff as per the Copyrights Act, 1957. The WWE characters are immensely popular and appear on the various publicity material/promotional merchandise of the plaintiff and the use of the same is a blatantly dishonest and malafide attempt by the defendants to derive unfair advantage by creating the impression that its products emanate from the plaintiff or have some connection, nexus, association, affiliation with or endorsement from the plaintiff. 27. It is stated that the defendants’ impugned use of the plaintiff’s registered trademark WWE as a part of their trade name and also as a part of their website in relation to goods identical to those offered by the plaintiff amounts to infringement of the plaintiff’s registered trademarks. 28. It is stated that the infringing acts of the defendants out of the unauthorized use of the plaintiffs’ trademarks, logos and copyrightable content not only causes harm to the plaintiff but also result in unjust enrichment to the defendants from the benefits accruing to the defendants out of such unauthorized use. 29. Further, the HTML source code of the defendants’ websites are embedded with not only the plaintiffs’ registered trademark WWE but also the names of various WWE talents such as John Cena, Rey Mysterio, etc. without any authorization from the plaintiff whatsoever. These form a series of hidden or embedded keywords, called meta-tags, which become identifiable and become a part of the search results when a user searches for the plaintiffs or its products. Therefore, any user who might search for the plaintiffs is likely to be directed to the defendants’ website owing to the abovementioned meta-tags embedded therein. This may give rise to a misapprehension in the mind of the user that the defendants are authorized by the plaintiffs to sell merchandise and other goods on their behalf. 30. The use of the pictorial representations of the WWE characters as well as the WWE trademarks and the WWE Scratch Logo (i.e. the logo) by the defendants will create confusion and deception in the minds of the purchasing public and members of the trade who will be misled into purchasing the defendants’ products enabling unjust enrichment of the defendants at the plaintiff’s and the consumers’ expense. Defendants are selling the counterfeit goods in a dishonest and malafide manner to derive unfair advantage by creating the impression that the goods as being sold by the defendants through their websites www.wrestlezone.co.in and www.wrestlezoneindia.com and also through the stores of the defendants located in Pune emanate from the plaintiff or have some connection, nexus, association, affiliation with or endorsement from the plaintiff. The conduct of the defendants is also apparent from the fact that they advertise themselves as ‘WWE Shop – The WWE Merchandise Superstore’ incorporating the WWE Scratch Logo (i.e. the logo). Further, on the invoices issued by the defendants they claim to be selling “Officially Licensed WWE Merchandise.” Such acts of the defendants amounts to passing themselves off as being the plaintiff itself. This coupled with the fact that the defendant is selling counterfeit goods under its name is not only completely unacceptable to the plaintiffs but also amounts to cheating the consumers and followers of the plaintiff. 31. The misrepresentation by the defendants is done in a manner that in all probability any visitor to the defendant’s webpage or stores will be induced to believe that the defendants have a direct nexus or affiliation with the plaintiff; and/or the plaintiff has licensed its trademark “WWE” to the defendants or has authorized the defendants to sell their official merchandise to the consumers; and/or the business of the defendants has been endorsed by the plaintiff; and/or all products available on the impugned website and stores are legitimate products and originate from the plaintiff. In view thereof the defendants are passing off their goods as those of the plaintiff. 32. It is averred that the blatant and unrestricted use of identical trademark belonging to the plaintiff by defendants in relation to their goods will inevitably lead to the gradual whittling away and eventual erosion of the uniqueness and exclusivity associated with the plaintiff’s well known trades mark by reducing the capacity to identify and distinguish the services of the plaintiff as originating from a particular source. In the event that the defendants’ activities are not curbed, they will also prompt others to imitate the plaintiff’s well-known trademark thereby leading to their further dilution. 33. The defendants are using the trademarks, logos and copyrightable content of the plaintiff, without their authorization and permission, with a view to making illegal profits by riding on the reputation of the plaintiff’s aforementioned trademarks. The illegal trade activities of the defendants have caused and are bound to cause incalculable harm and injury to the business, goodwill and reputation of the plaintiffs. All profits earned by the defendants in pursuance of its illegal activities are the plaintiff’s losses and amount to unjust enrichment. The damage that has already been inflicted on the plaintiff’s business goodwill and reputation is incapable of being calculated. 34. When the matter was listed before Court on 29th April, 2013, summons and notice were issued. Court granted an exparte ad interim injunction in favour of the plaintiff and against the defendants restraining the defendants, their partners, officers, servants, agents, representatives, etc., from selling, displaying, advertising or dealing with the goods of the plaintiff under the WWE mark or logo, registered in the name of the plaintiff, or any other mark or name containing the WWE mark of the plaintiff for their products, including at their stores or on their website, etc. Also, vide the same order, two Local Commissioners were appointed to visit the premises of the defendants to inspect the goods of the defendants and verify the extent of infringement indulged in by the defendants vis-à-vis the plaintiffs’ goods bearing the mark WWE. The findings of the local commissioner show that 267 goods were counterfeit and infringing the trademark of the plaintiff. 35. Since the defendants had not been appearing in the matter, this Court on 6th August 2014 proceeded the defendants as ex-parte for non-appearance despite having been served. 36. In evidence, the plaintiff proved the facts stated in the plaint by evidence by way of affidavit of Mr. D.C. Sharma, the Constituted Attorney of the plaintiff. The following documents were also produced: (i) Copy of the original Power of Attorney exhibited as Ex. PW11. (ii) Copy of the Power of Attorney dated 22nd August 2008 exhibited as Ex. PW12 (iii) List of domain names exhibited as Ex. PW13. (iv) Whois record of the website www.wwesho.com to illustrate the ownership of the domain name by the Plaintiff exhibited as Ex. PW14. (v) Copies of the Original Trademark Registration Certificates for Legal Use for the marks owned by the Plaintiff exhibited as Ex.PW15 (Colly) (vi) Copies of the Original Copyright Certificates issued in favour of the plaintiff in the United States of America for its various proprietary works Ex. PW16 (Colly). (vii) Print outs of the defendant’s websites as well as the source code as Ex. PW17 ( Colly) and Ex. PW18 (Colly). (viii) Print outs of the orders to India pertaining to the sale of goods to the defendant No.1 as Ex. PW19. 37. The evidence of the plaintiff was concluded on 11th December, 2014. The evidence filed by the plaintiff has gone unrebutted as no cross-examination of the plaintiff's witness was carried out, therefore, the statements made by the plaintiff are accepted as correct deposition. Under these facts and circumstances, the plaintiff is entitled for a decree for permanent injunction in terms of Para 49(a), (b) and (c) of the plaint. 38. As regards the relief claimed in Para 49 (f) is concerned, the plaintiff has prayed for damages to the tune of Rs.10,00,500/- to be paid by the defendants. 39. On the question of damages, the learned Counsel for the plaintiff has referred various judgments in support of his submission pertaining to the aspect of damages where this Court has previously CS(OS) NO.784/2013 granted both exemplary punitive damages against the defendants in ex-parte matters of similar nature. Some of the decisions which have been referred are as under: (i) In Hero Honda Motors Ltd. vs Shree Assuramji Scooters (125 (2005) DLT504 this Court stated that “18. I am in agreement with the aforesaid submission of learned counsel for the plaintiff that damages in such cases must be awarded and a defendant, who chooses to stay away from the proceedings of the Court, should not be permitted to enjoy the benefits of evasion of court proceedings”… “A party who chooses to not participate in court proceedings and stay away must, thus, suffer the consequences of damages as stated and set out by the plaintiff. The figure of Rs. 5 lakhs as damages can hardly be said to be astronomical keeping in mind the nature of deception alleged by the plaintiff which not only causes direct loss to the plaintiff, but also affects the reputation of the plaintiff by selling sub-standard goods in the market where the public may be deceived in buying the goods thinking the same to be that of the plaintiff. There is a larger public purpose involved to discourage such parties from indulging in such acts of deception and, thus, even if the same has a punitive element, it must be granted.” (ii) In Time Incorporated Vs. Lokesh Srivastava & Anr., 2005 (30) PTC3(Del.) while awarding punitive damages of Rs. 5 lakhs in addition to compensatory damages also of Rs. 5 lakhs, Justice R.C. Chopra observed that “time has come when the Courts dealing in actions for infringement of trademarks, copyrights, patents etc., should not only grant compensatory damages but also award punitive damages with a view to discourage and dishearten law breakers who indulge in violation with impunity out of lust for money, so that they realise that in case they are caught, they would be liable not only to reimburse the aggrieved party but would be liable to pay punitive damages also, which may spell financial disaster for them.” (iii) In Microsoft Corporation Vs. Rajendra Pawar & Anr., 2008 (36) PTC697(Del.) decided on 27th July, 2007, this Court held that “Perhaps it has now become a trend of sorts, especially in matters pertaining to passing off, for the defending party to evade court proceedings in a systematic attempt to jettison the relief sought by the plaintiff. Such flagrancy of the Defendant’s conduct is strictly deprecatory, and those who recklessly indulge in such shenanigans must do so at their peril, for it is now an inherited wisdom that evasion of court proceedings does not de facto tantamount to escape from liability. Judicial process has its own way of bringing to tasks such erring parties whilst at the same time ensuring that the aggrieved party who has knocked the doors of the court in anticipation of justice is afforded with adequate relief, both in law and in equity. It is here that the concept of awarding punitive damages comes into perspective.” 40. Keeping in view the infringement committed by the defendants which has gone unrebutted and since the claim is based upon assessment of the plaintiff, I am of the opinion that a sum of Rs.5 lacs can be reasonably awarded to the plaintiff as damages. The prayer made in Para 49 (f) is granted to the above extent. The plaintiff is also awarded Rs.1 lac as costs of the suit in terms of prayer made in para 49 (g) of the plaint. 41. The decree be drawn accordingly. The suit as well as the pending applications are disposed of accordingly. (MANMOHAN SINGH) JUDGE JANUARY19 2015