Contempt petition for breach of ad interim injunction on registered trademarks and photographs disposed of upon unconditional apology by respondents and undertaking by internet platforms to remove infringing URLs.
Accepted apology and undertaking; directed YouTube and Facebook to remove listed URLs from their platforms.
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IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION
CONTEMPT PETITION (L) NO. 226 OF 2019 IN
INTERIM APPLICATION NO. 1 OF 2019
IN
COMMERCIAL IP SUIT NO. 17 OF 2020
WITH
INTERIM APPLICATION NO. 1 OF 2020 (NOT ON BOARD)
...Plaintiffs/Petitioners
The Indian Express (P) Ltd. & Ors. ...Plaintiffs/Petitioners vs. Prashant Goenka & Ors. ...Defendants
Dr.Abhinav Chandrachud with Amol Joshi, Ranjita Shinde and Tejaswi Ghag i/b. Poorvi Kamani for Petitioners/Plaintiffs.
Mr.Nausher Kohli i/b. Jay Vakil for Respondent Nos.1 to 8. Mr.Chaitrika Patki and Ruhani Sanghavi i/b. Anand and Anand and Khimani for Respondent No.9.
Ms.Bency Ramakrishnan i/b. Akash Menon for Respondent No.10. Mr.Dinesh Pednekar with Chanakya Keswani i/b. Economic Laws Practice for Respondent No.11.
CORAM : S.C. GUPTE, J.
DATE : 10 FEBRUARY 2020
P.C. :
This contempt petition alleges breach or disobedience of an interim order passed by this court on 20 November 2019 in Interim Application No.1 of 2019 in the commercial IP suit. The order is an adinterim injunction against Defendant Nos.1 to 8 restraining them from making use of the first Petitioner’s registered trade mark “INDIAN EXPRESS”, “RAMNATH GOENKA EXCELLENCE IN JOURNALISM AWARDS” in their cognate or agnate forms either in isolation or in conjunction with any other words / symbols / marks so as to infringe the Contempt
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Petitioners’ (Plaintiffs’) trademarks and intellectual property rights and also from passing-off their goods and services as those of the Plaintiffs. The order also restrains original Defendant Nos.1 to 8 from breaching the copyright of the Plaintiffs in the photographs of Ramnath Goenka in their publications or in their archives. The grievance of the Plaintiffs in the present contempt petition is that though original Defendant No.1 was personally present in court, when this order was passed in open court, these Respondents/Contemnors (who are original Defendant No.1 and the entities represented by him) continued to use the name, initials as well as photographs of Ramnath Goenka for promoting their goods or services.
2 Learned Counsel for Respondent Nos.1 to 8 unconditionally apologises on behalf of his clients for an inadvertent breach of the order passed by this court on 20 November 2019. Learned Counsel submits that the publications made were all pre-dated and they continued to be in public domain through inadvertence. Learned Counsel submits that his clients regret the inadvertent error and have since withdrawn all offending statements from their publications. Learned Counsel submits that since the programme was already announced in prior publications, his clients went through the ceremony under the name of Ramnath Goenka Charitable Trust. Though learned Counsel accepts that even this user of the name of Ramnath Goenka could not have been made in view of the order of 20 November 2019, learned Counsel once again expresses his unconditional apology for this lapse.
3 Learned Counsel submits that if it is shown that the publications of his clients containing offending words or photographs continue to be in public domain, his clients would forthwith take off the content from any media in which the offending words or photographs are
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displayed. The apology and the statement/undertaking made by learned Counsel are accepted.
4 Learned Counsel for the Petitioners also submits that besides these, content is available on the web which contains offending statements or photographs. Learned Counsel for Respondent Nos.1 to 8 submits that these publications are not by his clients and he has no objection if the material to be found in the respective URLs is taken off the net by the internet platform. Learned Counsel for the Petitioners tenders the list of URLs including the videos and material available with different media on the net with YouTube.com and also on facebook.com. YouTube LLC (Google, Incorporated), Proprietors of YouTube.com and Facebook Incorporated, Proprietor of facebook.com, are parties to the present contempt petition (they are also parties to the suit) as Respondent Nos.10 and 11, respectively. Learned Counsel appearing for these parties submit to the orders of the court. Learned Counsel submit that if this court directs them to remove the URLs, they will proceed to do so. The list tendered by learned Counsel for the Petitioners together with the copies of the contents forming part thereof is taken on record, marked “X” for identification. Copies of the list be made available by the office to Respondent Nos.10 and 11. Respondent Nos.10 and 11 shall proceed to remove these URLs from their respective platforms. The contempt petition is disposed of accordingly.
5 Interim Application (Lodging) No.1 of 2020 is taken out by original Defendant No.9. The application seeks rejection of the plaint as against Defendant No.9 / striking-off of the plaint as against Defendant No.9 under Order I Rule 10, Order VI Rule 16 and Order VII Rule 11 of CPC. The original Plaintiffs to file their reply to the interim application. Such reply to be filed within two weeks from today. Rejoinder, if any, within
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two weeks thereafter. The interim application to come up for hearing after four weeks.
(S.C. GUPTE, J.)
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The Indian Express (P) Ltd. & Ors.
Prashant Goenka & Ors.
YouTube LLC
Facebook Incorporated
S.C. GUPTA
As recorded by the court registry
Judgements on the same questions, provisions and authorities, from every court
