jamia moot memo - a

5th Jamia National Moot Court Competition, March, 2015

Team code: JM15-04

BEFORE THE HON’BLE SUPREME COURT OF MORDOR

IN THE MATTERS OF:

MOONSHINE MORDOR PVT LTD. & ANR ... APPELLANT

V.

NEPTUNE MORDOR PVT.LTD …

RESPONDENT

SLP(C) NO. 1/2015

CLUBBED WITH

SLP (C) NO. 2/2015

ON SUBMISSION TO THE HON’BLE SUPREME COURT OF MORDOR

UNDER ARTICLE 136 OF THE CONSTITUTION

WRITTEN SUBMISSIONS ON BEHALF OF THE APPELLANTS

COUNSEL APPEARING ON BEHALF OF THE APPELLANTS

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Table of Contents

I. Index of authorities……………………………………………………………………...3-5

II. Statement of Jurisdiction………………………………………………………………….6

III. Statement of Fact……………………………………..…………………………………7-8

IV. Statement of Issues………………………………………………………………………..9

V. Summary of Argument…………………………………………………………………..10

VI. Argument Advanced………………………………………………………………….11-27

VII. Prayer……………………………………………………………………………...……..28

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Index of Authorities

STATUTES

1. Indian copyrights act ,1957

2. Indian trademarks act,1999

BOOKS, ARTICLES & TREATISES

Treatises

1. Ruddolf Callmann, The Law of Unfair Competition Trademarks and Monopolies (4th ed.,

1981-date)

2. Horwitz ethan World Trademark Law and Practice (2d ed., 1985-date).

3. Anne Gilson Laldone, Gilson on Trademarks (2007-date).. LexisNexis: GILSON

4. J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition (4th ed., 1996-date).

Westlaw: MCCARTHY.

5. Siegrun D. Kane, Kane on Trademark Law: A Practitioner’s Guide (5th ed., 2007-date).

LexisNexis: TRDLAW.

6. BNA Intellectual Property Law Resource Center.

7. Patent, Trademark and Copyright Journal Westlaw: BNA-PTCJ.

8. World Intellectual Property Report Westlaw: BNA-WIPR.

9. Paris Convention for the Protection of Industrial Property,1883

10. Madrid system for the international registration of marks,1891

11. Protocol Relating to the Madrid Agreement (1989)

12. Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).1996

13. Singapore Treaty on the Law of Trademarks,2006

14. Community Trade Mark (CTM)

15. Uniform Domain-Name Dispute-Resolution Policy (UDRP

16. Berne convention for the protection of literary and artistic works,1886

17. WIPO Copyright Treaty, Geneva, 2002

Articles:

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http://en.wikipedia.org/wiki/WIPO_Copyright_Treaty


1. "International Copyright Law Survey". Mincov Law Corporation.

2. Boyle, James (1996). Shamans, Software and Spleens: Law and the Construction of the

Information Society. Harvard University Press. p. 142.

3. Copyright in Historical Perspective, p. 136-137, Patterson, 1968, Vanderbilt Univ. Press

4. "Statute of Anne". Copyrighthistory.com. Retrieved 2012-06-08.

5. Ronan, Deazley (2006). Rethinking copyright: history, theory, language. Edward Elgar

Publishing. p. 13.

6. Pelanda, Brian. Declarations of Cultural Independence: The Nationalistic Imperative Behind

the Passage of Early American Copyright Laws, 1783–1787 58 Journal of the Copyright

Society of the U.S.A. 431 (2011).

7. Peter K, Yu (2007). Intellectual Property and Information Wealth: Copyright and related

rights. Greenwood Publishing Group. p. 346.

8. Simon, Stokes (2001). Art and copyright. Hart Publishing. pp. 48–49.

CASES

1. International News service vs. Associated Press 248 U.S. 215, 39 S.Ct. 68 (1918

2. Marksman Marketing Services Pvt. Ltd. vs. Bharti Tele-Ventures Ltd. & Ors [FOA No.

78/2006]

3. National Exhibition Company vs. Martin Fass, 143 N.Y.S. 2d 767

4. Twentieth Century Sporting Club Inc. and Ors vs. Transradio Press Service Inc. and Anr.,

300 N.Y.S. 159

5. Relying on Secretary, Ministry of Information and Broadcasting, Govt. Of India & Ors. V.

Cricket Association of Bengal & Ors(1995) 2 SCC 161

6. National Basketball Association and NBA Properties Inc. v. Sports Team Analysis and

Tracking Systems Inc. 939 F. Supp. 1071 (“the NBA-1 Case”)

7. New Delhi Television Ltd. v. ICC Development (International) Ltd. & Anr. on 11 October,

2012

8. ESPN Star Sports v. Global Broadcast News Ltd. & Ors2008 (38) PTC 477 (Del.)

9. Jay Laxmi Salt Works (P) Limited v. State of Gujarat 1994 (4) SCC 1

10. Ellora Industries v. Banarsi Dass Goela,AIR 1980 S C 254 (Del)

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http://en.wikipedia.org/wiki/Harvard_University_Press


11. Railway Board v. Niranjan Singhi, 1969 (1) SCC 502 and Life Insurance Corporation of

India Limited v. Manubhai, AIR 1993 SC 172

12. Mahabir Kishore & Ors. v. State of Madhya Pradesh 1989 (3) SCR 596

13. Singer Manufacturing Company v. Loog(1880) 18 Ch.D. 395

14. Bear & Sons (India) Ltd. v. Prayag Narain

15. Perry v. Truefitt, (1842) 6 Beav 66, Lord Langdale

16. Lego System Aktieselskab and Anr. v. Lego M. Lemelstrich Ltd., Fleet Sheet Reports

(1983);

17. The Dunlop Pneumatic Tyre Co. Ltd. v. The Dunlop Lubricant Co., 1899 (16) RPC 12;

18. Surjit Singh v. Almbic Glass Industries Ltd., ;

19. Essel Packaging Ltd. and Ors. v. Essel Tea Exports Ltd., 1999 PTC (19) 521 ;

20. Banga Watch Company v. N.V. Philips and Anr.,

21. Bata India Ltd. v. Pyare Lal & Co. and Ors., ;

22. C.A. Shimer (M.) SDN BHD, 2000 RPC

23. Tube Investments of India ltd v. BSA-regal group ltd 2010(42) PTC 493 (Mad-DB);

24. Mars Incorporated v. Kumar Krishna Mukherjee, 2003 (26) PTC 60 (Del)

25. Erven Warnink B.V. v. J. Townend & Sons (Hull) Ltd1980 RPC 31

26. Honda Motors Co. Ltd. v. Mr. Charanjit Singh and Ors 2003(26)PTC1(Del

27. Heinz Italia v. Dabur India(2007) 6 SCC 1

28. Cadila Health vs. Cadila Pharma2001 PTC 300(SC)

29. Bata India Ltd. v. Pyare Lal & Co AIR 1985 All 242

30. Bulmer v. Bellinger, (1978) RPC 79 (CA

31. Apple Computer v. Apple Leasing1993 IPLR 63 [1992 (1) Arb.LR 93 (Delhi)]

32. Honda Motors Co. Ltd. v. Mr. Charanjit Singh and Ors 2003(26)PTC1(Del) Daimler Benz

Aktiegesellschaft and Anr. v. Hybo Hindustan, ; Ciba-Geigy Ltd. and Anr. v. Surinder Singh

and Ors. , 1998 PTC (18) 545 Sunder Parmanand Lalwani and Ors. v. Caltex (India) Ltd.

33. Taittinger v. Allbev Ltd (1993) FSR 641 (CA)

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Statement of Jurisdiction

The Appellants has approached this Hon’ble Court under Article 136 of the Constitution. Leave

has been accordingly granted.

6


Statement of Facts

MOONSHINE’S BACKGROUND

Moonshine Mordor Pvt. Ltd (Moonshine) is an industrial conglomerate engaged in a variety of manufacturing businesses, including the manufacture of sporting equipment, computer peripherals, telephone instruments, electrical appliances, and textiles. The company wanted to grow and invest into other businesses as well. The Chairman of the Moonshine Group, Mr. Frodo Potter, was very fond of Basketball and had a dream of starting an Annual Basketball Tournament in Mordor, where young talent would be picked up every year from different parts of the country and matches would be held for a period of one month across the country. Moonshine launched such a tournament by the name of “Mordor Moonball Basketball League” (MMBL) and announced huge prize money under the banner of MMBL. A team of sports managers was assembled and after spending a substantial amount of money in advertising and setting up teams, the basketball tournament was started.

CONCEPTION OF MMBL

Moonshine started MMBL in the year 2011, but it was not a big success initially. However, by the time its third edition was announced in 2013, the tournament had started to gain popularity and lot of television channels tried to get the broadcasting rights from Moonshine. On 5 th August, 2013, Moonshine entered into an agreement with FreeSports Mordor Pvt Ltd. (FreeSports), a national television channel, and assigned a “bouquet of rights” exclusively to FreeSports which included recording, broadcasting, mobile rights etc. The tournament in 2013 was a big success. By the time 2014 edition was announced, the whole nation wanted to follow the tournament.

CAUSE OF ACTION ARISED

Seeing this potential market, Neptune Mordor Pvt. Ltd. (Neptune), a leading telecommunication company, started a mobile application under the name SuperDunk, which would provide minute-by-minute match updates of MMBL. Neptune also started advertising SuperDunk on electronic and print media. Neptune used the name of MMBL in the advertisements for SuperDunk. The advertisements also consisted of pictures of some prominent players of this tournament. SuperDunk became a rage and millions of mobile users started downloading this free Application on their mobile phones to receive free minute-by-minute match updates. Neptune was able to rope in big advertisers like Pepsi, Nike, McDonald’s etc on their SuperDunk App and started making lot of profit.

FILING OF SUIT

On getting to know about SuperDunk, Moonshine and FreeSports filed a suit against Neptune. Moonshine contended that their property rights were being violated. Moonshine considered the IMPL Project as its baby and whatever information (time sensitive information like match scores) that was generated from the project was their property. Moonshine also contended that the match information was a product of its “originality and creativity” and therefore it had a copyright over it. Another issue that was raised by Moonshine was with regards to usage of the name MMBL in the advertisements of Neptune to promote its Mobile application SuperDunk. Further, since Moonshine had assigned the “bouquet of rights” to FreeSports, FreeSports felt

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aggrieved that Neptune was indulging in unfair competition, commercial misappropriation and unjust commercial enrichment.

TRIAL COURT’S FINDING

The Single Judge heard the contentions of both sides and returned with the following findings:

a) There does not lay 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 MMBL in the advertisements of SuperDunk causes Trademark dilution of a well known trademark “Mordor Moonball Basketball League”.

FINDING - By DIVISION BENCH OF HIGH COURT

Aggrieved by the order of the Single Judge, Moonshine and FreeSports filed an appeal in front of the Division Bench. The Division Bench heard the parties on their grievances and decided the matter partly in favour of Moonshine and FreeSports and partly in favour of Neptune. The Division Bench held as follows:

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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Statement of Issues

1. Whether there lies any copyright protection in information emanating out of a match?

2. Whether any tort of unfair competition is committed by Neptune Mordor Pvt Ltd against

FreeSports Mordor Pvt Ltd and whether there arise any liability to pay damages to

FreeSports Mordor Pvt Ltd. for unjust enrichment gained by it?

3. Whether using the name of MMBL in the advertisements of SuperDunk causes Trademark

dilution of a well known trademark “Mordor Moonball Basketball League”?

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Summary of Arguments

1. THAT COPYRIGHT PROTECTION LIES IN INFORMATION EMANATING OUT OF A MATCH.

1.1. Match updates were not in public domain

1.2. Copyright over match information not hit by Section 16, thus it is Inapplicable

1.3. Violation of broadcasting rights

1.4. Claim not hit by Article 19(2) of the Constitution of the India, 1950

1.5. Concept of “off tube reporting” is well recognized and is actionable when it can be

shown that the off tube broadcaster is holding himself out to be the official broadcaster

(i.e. a case of passing off).

2. THAT TORT OF UNFAIR COMPETITION IS COMMITTED BY NEPTUNE

MORDOR PVT LTD AGAINST FREESPORTS MORDOR PVT LTD. & IS

THEREBY LIABLE TO PAY DAMAGES FOR UNJUST ENRICHMENT GAINED

BY IT.

2.1. Interpretation of phrase ‘bouquet of rights’ with respect to ‘mobile rights’

2.2. Existence of Direct Competition Between Neptune Pvt Ltd & FreeSports Pvt Ltd

2.3. “free-riding” or commercial misappropriation by Neptune Pvt Ltd

3. THAT USING THE NAME OF MMBL IN THE ADVERTISEMENTS OF

‘SUPERDUNK’ CAUSES TRADEMARK DILUTION OF A WELL KNOWN

TRADEMARK “MORDOR MOONBALL BASKETBALL LEAGUE”

3.1. Trade Mark Used with intention to deceive the public.

3.2. Appropriation of gain full opportunity.

3.3. Advertising by way of Character Merchandising and violation of Rights of celebrities.

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Arguments Advanced

1. Whether there lies any copyright protection in information emanating out of a match?

Moonshine being the organizer of cricketing events in Mordor, thus it owned exclusive rights in

respect of content generated during a basketball event. These included the right to commercially

exploit all event content. It funds all basketball related activities, from setting up of the stadium

to starting training academies for participants, scorers etc. Its main source of funding is by

monetizing content arising from basketball matches, such as sponsorships and commercial

advertisements. The revenue received from sale of match tickets is negligible. Of the revenue

generated, Moonshine plough back substantial percentage of it into promoting the game of

basketball worldwide. The respondents on the other hand do not contribute their revenue or a

part thereof for the purpose of promoting the game of basketball in Mordor. The Moonshine and

FreeSports thus rightfully claim that respondents are eating away into the mobile and internet

rights, without sharing the profit gained by them; thereby indulging in unfair competition and

unjust commercial enrichment.

Basing the arguments upon the principle underlying the decision of the United States Supreme

Court in International News service vs. Associated Press1, to the effect that “one who fairly pays

the price should have beneficial use of the property.2”, In all three cases, the Courts granted

injunction following the ratio in the INS Case. The appellants stated that these precedents had

great persuasive value due to the similarity in the circumstances, especially with respect to play-

by-play/ ball-by-ball updates being analogous to the minute-by-minute updates provided by the

respondents. The appellants also relied on the decision of the Madras High Court in Marksman

Marketing Services Pvt. Ltd. vs. Bharti Tele-Ventures Ltd. & Ors., (“the Marksman Case”),

which dealt with nearly identical facts as the present case. 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

1 248 U.S. 215, 39 S.Ct. 68 (1918) (hereafter FAO(OS) Nos.153, 160 & 161/2013 Page 6“INS”)2 Reliance also placed on cases regarding dissemination of content through updates/alerts arising from sporting events Pittsburgh Athletic Co. et. al v. KQV Broadcasting Co.,24 F. Supp. 490 (“Pittsburgh Case”), and National Exhibition Company vs. Martin Fass, 143 N.Y.S. 2d 767, (“National Exhibition Case”); the decision in Twentieth Century Sporting Club Inc. and Ors vs. Transradio Press Service Inc. and Anr., 300 N.Y.S. 159 (“Twentieth Century Fox Case”).

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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 India’s Tour of Pakistan. The Appellant prayed

for an injunction under Sections 55 and 61 of the Copyright Act, 1957, restraining the

respondents 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 right of providing scores, alerts and updates is the result of

expenditure of skill, labour 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 respondent’s act of appropriating facts and

information from the match telecast and selling the same is nothing but endeavoring to reap

where the respondents have not sown3.”

Relying on Secretary, Ministry of Information and Broadcasting, Govt. Of India & Ors. V.

Cricket Association of Bengal & Ors4., where the Supreme Court, underlining the need to Protect

time sensitive information emanating from cricketing events specifically score updates/match

alerts the appellants position was that match information did not enter public domain for a

particular span of time. A distinction was drawn between those having access to television or

radio and their ability to be informed about match status in real -time and those who do not have

such access ( like those in office or courtrooms etc) who cannot have instant access to match

status.

1.1. Match updates were not in public domain: The match updates were not facts as they did

not enter the public domain simultaneously with the events, due to the time lag of few

seconds as a result of time taken for transmission. As a corollary, the information had 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.” The facts relating minute by minute

progress of the match were in great demand and consequently it could not be said to be

available immediately after the event. The fact that respondents have a fundamental right to

disseminate such information as demanded by the public; yet it must be felt that “to balance

the right of the organizer of an event to monetize his own event as against the right of the

3 National Basketball Association and NBA Properties Inc. v. Sports Team Analysis and Tracking Systems Inc. 939 F. Supp. 1071 (“the NBA-1 Case”)4 (1995) 2 SCC 161

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public to receive information regarding such event.” The classification of members of the

public into three categories, i.e. those who attended the event after purchasing tickets; those

who watch the event being telecast live and those who depend on reporting of the event.

After analyzing the decision in New Delhi Television Ltd. v. ICC Development

(International) Ltd. & Anr., it was observed that “the freedom of speech and expression

was available to the press to disseminate information, but a line had to be drawn in cases

where the freedom is misused.” Moreover reporting of such news with the motive of

profiting did not amount to exercise of freedom of speech. On the contrary, reporting of the

cricketing event was quite different from providing a ball -by-ball/minute-by-minute

account of the match, for a consideration, through SMS/instant messaging/any application

alerts, protection of right to freedom of speech did not extend to such activities. The

respondents insist that the narrow scope of this case involves protection of Property Rights

in contemporaneous/ almost instantaneous dissemination of Match Information through

Mobile SMS updates to those class / market of persons who have no access to television,

radio or internet and have access to Match Information only through mobile phones. It is

asserted that match information does not pass into public domain upon broadcast / telecast

of the match for third parties to freely and commercially exploit. There is a clear distinction

between the information passing into public domain and information being available to the

public. Exploitation of Match Information through one mode of communication (such as

television / radio broadcast) does not imply that Moonshine has foreclosed / abandoned its

right to exploit Match Information through all other modes of communication (such as

mobile, internet). Modes of access to a match have evolved from stadium to radio to TV to

internet and mobile. The advent of mobile technology provides an additional independent

market of cricket lovers who are not in a position to follow the progress of a cricket match

either through television, internet or radio.

Contemporaneous dissemination of match information is targeted at exploiting the high

curiosity of a cricket lover to receive instantaneous information of an on-going match. Thus,

Match Information is time-sensitive and has commercial value only so long as it is

disseminated while it is fresh i.e. “Hot”. Moreover, match information would be

commercially worthless if it is stale or dated. As long as the mobile user remains unaware

of the on-goings of the Match and is willing to pay a premium fee to quench his curiosity to

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know, Match Information has commercial value, and has all the trappings of “hot news”.

Dissemination of match information through SMS updates has high commercial value.

In terms of first principles, it is the person who has brought into existence a product which

has a demand in the market, who is entitled to the exclusion of all others to exploit the

revenue streams arising out of such product and realize the fruits of its product (in this case,

a cricket match). A usurper (like the respondent) cannot set up a case that there exists othe r

equally lucrative revenue opportunities (like broadcast rights) for the organizer of an event

and consequently the mobile value added service market should be abandoned by the

organizer. Counsel does not assert a Property Right against the members of the public at

large, who are free to provide SMS updates of Matches gratuitously. It is however being

asserted against competitors who are commercially exploiting such Match Information by

disseminating it contemporaneously / almost instantaneously through SMS alerts, for a

premium fee.

1.2. Copyright over match information not hit by Section 16, thus it is Inapplicable: The

Appellant’s claims are not hit by section 16 as Section 16 applies to, work, which is defined

under Section 2(y) of the Act as (i) a literary, dramatic, musical, or artistic work; (ii) a

cinematograph film; (iii) a sound recording. The definition is exhaustive and not inclusive,

signifying the parameters of Section 16. Section 16 consequently is thus inapplicable to

“anything which is not a work”. Section 16 stood further limited by Section 39A as the

latter provision belonged to the Chapter of the Act which deals with, neighboring or related

rights‟. It enumerates provisions of the statute which apply to copyright would also apply,

mutatis mutandis to the neighboring rights (e.g. Performer’s rights, broadcasting

reproduction rights). Section 16 is not enumerated under Section 39A of the Act. Under the

Copyright Act, rights besides copyright are created; they include rights of broadcasting

organizations under Section 37, rights of performers under Sections 38 and 38A, and the

moral rights of authors which are recognized under Section 57. They are distinct from

copyright. Relying on ESPN Star Sports v. Global Broadcast News Ltd. & Ors5., it was

held that “pre-emption under Section 16 of the Act, only applies to copyright or any similar

right with respect to „works‟ and cannot be extended to the other rights in any manner

whatsoever.” The appellants have merely approached this Court to find a remedy in

5 2008 (38) PTC 477 (Del.) (DB) (ESPN Case)

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common law against the tort of, unjust commercial enrichment”. The appellants submit that

what is asserted is not an intellectual property right, or a copyright. It is a unique property

right, which stems out of a negative obligation of the appellants, who secure match related

information contemporaneously, not to use it commercially for a short duration. Whereas the

right of the members of the public – who witness the event, having paid for the tickets or

millions of television viewers who subscribe and watch paid channels, which cover the

event, to share it on a non-commercial basis cannot be denied, yet the obligation of a third

party not to commercially exploit it is self evident. It is asserted that a distinction has to be

recognized, between general content on the one hand, and newsworthy content generated

from a special event on the other and must be observed that the organizer is entitled to

appropriate the newsworthy information/value of such special events i.e. not all factual

information is the subject matter of protection, but only a limited property right – the

right to generate revenue by monetizing Match Information through the new platform

/ medium of Mobile services.

The nature of the rights, are not proximate to copyright; they really emanate out of

broadcasting, which is covered by a separate Chapter of the Copyright Act. Even the rights

claimed in this case are not covered as broadcasting rights. It was argued that the best

argument could have been that Section 16 precluded any rights akin to copyright. However,

the rights flowed out of broadcasting rights, and not copyrights; further, counsel contended,

a crucial element was that Section 16 stood excluded in respect of broadcasting rights.

Relying on the ESPN case, it was submitted that if Parliament had intended Section 16 to

apply in respect of broadcasting rights, it would have said so. The omission was conscious

and deliberate, which meant that only those provisions of the Copyright Act mentioned in

Section 39A would apply, nothing else. The findings of the Single judge were therefore,

justified.

1.3. Violation of broadcasting rights: It was submitted that a sporting event itself is the end

result or product of exercise of considerable managerial effort and use of finance. The

performance itself is the subject matter of recordings which constitute “work”; they are also

simultaneously broadcast. These activities are also protected as “broadcasting rights”. Under

the circumstances, the right to use any other activity or aspect, capable of monetization

inheres only with the sports organizer or owner of the content, such as the Moonshine and

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FreeSports Ltd. Learned senior counsel submitted that even reportage of match content

through telecasts, in the same form, i.e. rebroadcast of the event of howsoever short a

duration, would be subject to the legal regime, i.e. the promotion or license of the content or

things owner would have to obtain. In these circumstances, the valuable rights, such as

mobile rights cannot be seen in isolation. FreeSports and Moonshine would have exclusive

rights of such information which can be disseminated commercially only with their consent

upon satisfaction of the terms which may be imposed in that regard. Learned counsel further

emphasized that the existence of mobile rights of the kind which are subject matter of

present case have been clearly established by custom and usage across the world and are

capable of enforcement.

1.4. Concept of “off tube reporting” is well recognized and is actionable when it can be

shown that the off tube broadcaster is holding himself out to be the official broadcaster

(i.e. a case of passing off). It is argued that property rights evolve and are to be viewed

contextually. The ownership of some rights need not be based on the ability of the

proprietors to exclude the entire world but from its enjoyment for all times or absolutely; it

can be a limited one as in the circumstances of the present case. Just as property need not be

tangible, the exclusivity need not be absolute at any point of time or against absolute in other

time or as regards the object, i.e. the entire world. So long as the one who asserts the right

can establish exclusivity that he, as creator or one having exclusive rights to the underlying

events that constitute the fact can successfully prevent commercial dissemination, the Courts

would enforce the monopoly – a limited one, having regard to the context of the case, i.e.

the typical nature of the basketball match scores – as a negative restraint upon those

who seek to appropriate and commercially gain from it6. It was argued that existence of

statute law in regard to activity related to or arising from the subject matter in question

would not, by itself, bar common law remedy. It is thus submitted that the tort of passing-of

exists and damages can be legitimately recovered upon proof of the necessary requisites,

irrespective of the law relating to registered trademarks and their infringement7.

1.5. Claim not hit by Article 19(2) of the Constitution of the India, 1950: It is argued that the

respondents cannot claim an unrestricted right to free speech, to clothe their otherwise

illegal activities. The right to free of speech and expression is not unrestrained, but subject to

6 Jay Laxmi Salt Works (P) Limited v. State of Gujarat 1994 (4) SCC 17 Ellora Industries v. Banarsi Dass Goela,AIR 1980 S C 254 (Del)

16


reasonable restriction under Article 19(2) itself8. Further the “hot news” doctrine and the

Court’s authority to injunct its misappropriation has been recognized as evident from the

ruling of the Madras High Court in Marksman Marketing Services Private Limited v. Bharti

Televentures Limited9. In that case too, inter alia, SMS rights were assigned by the content

owner. The Court held that sending score updates through SMS would amount to

interference with the normal functioning of the “organizer’s business” and the resultant

misappropriation should be injuncted. Lastly, it is argued that the respondent’s submissions

are unfounded because the Moonshine is under a mandate to ensure that dissemination of

match information is optimized commercially for the greater public good. Concomitantly,

the mobile rights too have to be monetized to promote the sport of basketball in Mordor 10.

Learned counsel lastly relied upon the ruling of the Division Bench in New Delhi Television

Limited v. ICC Development (International) Limited and Another11 and submitted that the

limited protection by way of injunction of a finite duration granted to preserve the sanctity

of “hot news” on the basis of the “unfair competition” and “unjust enrichment” doctrine was

warranted by the facts and circumstances of the case.

2. Whether any tort of unfair competition is committed by Neptune Mordor Pvt Ltd against

FreeSports Mordor Pvt Ltd and whether there arise any liability to pay damages to

FreeSports Mordor Pvt Ltd. for unjust enrichment gained by it?

8 Railway Board v. Niranjan Singhi, 1969 (1) SCC 502 and Life Insurance Corporation of India Limited v. Manubhai, AIR 1993 SC 1729 [FOA No. 78/2006]10 Broadcasting v. Cricket Council of Bengal 1995 (2) SCC 161.11 [FAO(OS) 460/2012]

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The counsel for the appellant contend that the unauthorized dissemination of match information

through live score cards, match updates and score alerts through Instant Messaging, by the

respondents constituted, unfair competition, commercial misappropriation or unjust commercial

enrichment. FreeSports have spent substantial amount in Crores to acquire these rights, through

the Auction dated 5TH August 201312. The respondents had no license for such rights from

FreeSports or Moonshine to disseminate match information. Relying on the judgment of the

Supreme Court in Mahabir Kishore & Ors. v. State of Madhya Pradesh13, to hold that

“Courts in England have formulated the doctrine of unjust enrichment in certain situations

where it would be, unjust to allow the respondent to retain a benefit at the appellant’s expense.”

In the instant case, the appellant is seeking the declaration of a right to generate revenue by

monetizing the information arising from an event, which has been conceptualized, developed,

created and organized by the sole efforts and expenditure of the Moonshine; as its assignee.

Admittedly, in order to monetize the expense, effort and skill employed in organizing basketball

matches in Mordor, Moonshine conducted an auction in August 2013 to assign exclusive rights

such as recording, broadcasting and mobile rights, for all MMBL events14. Applying the test of

unjust enrichment as observed in the Mahabir Kishore case, it is amply clear that the respondents

are enriching themselves at the cost of the appellant (FreeSports).

2.1. Interpretation of phrase ‘bouquet of rights’ with respect to ‘mobile rights’: The Media

Rights Agreement defines-Mobile Activation Rights means the right to make available any

form of BCCI-branded schedule; match and score alert and application exploited via SMS,

MMS or any other form of Mobile Communications Technology or Mobile Wireless

Technology; It is clarified that no other form of exploitation would be permitted such as

competition, game, fantasy event, predictor game, application or other activation which are

expressly prohibited. Mobile Rights means the Mobile Activation Rights and the right to

deliver or provide access to the Feed or Footage, the Audio Feed, any Unilateral

Commentary and Unilateral Coverage in the Territory during the Rights Period, for

reception and viewing in an intelligible form on a Mobile Device where the communication

link(s) used in such delivery comprises, at least in part, Mobile Communications

12 ¶moot preposition13 1989 (3) SCR 59614 ¶moot preposition

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Technology and/or Mobile Broadcast Technology but excluding Television Delivery and

Internet Delivery.

The appellant (FreeSports) in the instant case had successfully bid for the entire, “bouquet of

rights” which also included, mobile rights and mobile activation rights. The Media Rights

Agreement defines-Mobile Activation Rights means the right to make available any form of

Moonshine-branded schedule; match and score alert and application exploited via SMS,

MMS or any other form of Mobile Communications Technology or Mobile Wireless

Technology; It is clarified that no other form of exploitation would be permitted such as

competition, game, fantasy event, predictor game, application or other activation which are

expressly prohibited.

2.2. Existence of Direct Competition Between Neptune Pvt Ltd & FreeSports Pvt Ltd: The

action of the respondents directly competes with the appellants by way of similarity in the

services provided by both of them. This is because both the appellant and respondent are

seeking to generate revenue by way of providing contemporaneous score updates/match

alerts to the public at large. The counsel for the respondent contends that they have adopted

a particular name for their application i.e. SUPERDUNK, the trademark MMBL has been

used in the advertisement only to convey that their product/application is suitable for

MMBL matches only. Thus there is no chance of passing off or infringement of the

trademark of the appellant since Neptune Mordor Pvt Ltd is itself a prominently established

leading telecommunication giant in the market and customers recognize its products. But

this contention does not hold any good as courts in plethora of cases has held that

similarity between the products –irrelevant. Moreover, unfair competition also subsist as

Neptune without seeking permission from Moonshine disseminates match information and

causes unfair competition by using the trademark MMBL. Neptune disseminates match

alerts and information through SUPERDUNK mobile application and causes violation of

property rights (here broadcasting rights).

2.3. “free-riding” or commercial misappropriation by Neptune Pvt Ltd: It is clear, that

match information is generated because of the cost incurred by the Moonshine in organizing

the basketball as a sport in Mordor. It is undisputed, that Moonshine plays the cardinal role

in all aspects of basketball in Mordor. Right from remunerating the players, umpires and

other match officials, to arranging sponsors for the cricket match itself. It is also undisputed

19


that the one of the main source of income for the Moonshine is from monetizing the

basketball events organized by it. In such a circumstance, the respondents would have had a

legitimate right to disseminate contemporaneous match information, had they obtained a

license by either participating in the bid conducted by the Moonshine or by obtaining a sub-

license from the other appellant (FreeSports). The argument that expenditure is being

incurred by the respondents to set-up infrastructure and employ personnel has no merit,

because such expenditure is incurred upon the process of dissemination and not towards the

organization of the sport or in the process of legitimately obtaining the information from the

appellants (FreeSports or Moonshine). Therefore, it is clear that the action of the

respondents cashing upon the efforts of the appellants constitutes free-riding. in terms of

first principles, it is the person who has brought into existence a product which has a

demand in the market, who is entitled to the exclusion of all others to exploit the revenue

streams arising out of such product and realize the fruits of its product (in this case, a

cricket match). A usurper (like the respondent) cannot set up a case that there exists other

equally lucrative revenue opportunities (like broadcast rights) for the organizer of an event

and consequently the mobile value added service market should be abandoned by the

organizer. Counsel argued that FreeSports does not assert a Property Right against the

members of the public at large, who are free to provide SMS updates of Matches

gratuitously. It is however being asserted against competitors who are commercially

exploiting such Match Information by disseminating it contemporaneously / almost

instantaneously through SMS alerts, for a premium fee.

Moonshine claims, that it owns property rights in the match information, subject only to

public interest considerations like gratuitous dissemination by public, Mandatory Sharing of

Feed, etc. which are not relevant to this case.

Learned counsel submits that denying a basis in common law and equity for FreeSports to

assert its property rights / ownership in dissemination of Match Information through SMS

updates, is contradictory and paradoxical. In this context it is argued that this would lead to

denial of all property rights / ownership claims in the cricket match itself; furthermore, the

entire structure of rights in sports event, including broadcasting rights, audio rights, internet

rights, stadium rights etc. would be rendered nugatory. Counsel also states that if ownership

20


is partially or fully conceded even for one of the rights, then all incidents and insignia of

ownership must follow in respect of the entire bundle of rights vesting in the Moonshine.

3. Whether using the name of MMBL in the advertisements of SuperDunk causes Trademark

dilution of a well known trademark “Mordor Moonball Basketball League”?

21


The respondents, by using the mark MMBL in respect of their goods/services (SuperDunk

mobile Application), are passing off the same as the goods of the appellant and encashing upon

the appellant's goodwill and reputation attached to its mark MMBL.

SUIT FOR PASSING OFF: The substantive law of passing off is entirely based on common

law i.e. case law. In an action for infringement of a trade mark, title of the appellant is

established by evidence of registration whereas in a passing off action, title is established by the

evidence of reputation and goodwill of the business acquired by the use of a mark, symbol or

other badge. The concept of passing off has undergone considerable changes in the course of

time. It is applied to many forms of unfair trading and unfair competition where the activities of

one person cause damage or injury to the goodwill associated with the activities of another

person or group of persons. A classic decision on "passing off" is the case of Singer

Manufacturing Company v. Loog15, when it was held as under: "No man is entitled to represent

his goods as the goods of another man; and no man is permitted to use any mark, sign or

symbols, device or other means, whereby, without making a direct false representation himself to

a purchaser who purchases from him he enables such purchaser to tell a lie or to make a false

representation to somebody else who is the ultimate consumer16." Thus it is clearly indicated

from the above observations that the action in passing off is an actionable wrong where a person

passes off his goods as the goods of another.

DETERMINATION OF PASSING OFF: As per Kerly’s Law of Trade mark & Trade names,

the appellant in an action for passing off has to prove three elements in order to succeed: First;

he must establish a goodwill or reputation attached to the goods or services which he supplies, in

the minds of the purchasing public an association with the identifying ‘get up’ (whether it

contains simply a brand name or a trade description, or the individual features of labeling or

packaging) under which his particular goods or services are offered to the public, such that

get up is recognized by the public as distinctive specifically of the appellant’s goods or

services. Secondly; he must demonstrate a misrepresentation by the respondent to the public

(whether or not intentional) leading, or likely to lead the public to the belief that the goods or

services offered by him are the goods or services of the appellant. The misrepresentation by the

15 (1880) 18 Ch.D. 395,16 Followed in the case of Thomas Bear & Sons (India) Ltd. v. Prayag Narain. Yet in an earlier case in Perry v. Truefitt, (1842) 6 Beav 66, Lord Langdale

22


respondent, by which he passes off his goods or business as those of the appellant may be made

in any manner whatsoever, whether by using in relation to his goods a mark which is identical

with or a colorable imitation of the trade mark of the appellant or by using some of the features

by which the goods of the appellant are known to be his or any features color-ably resembling

them, in connection with his goods, not being goods of the appellant or by direct statement or in

any other way, in such a manner as calculated to cause the goods to be taken by ordinary

purchaser to be the goods of the appellant. Thirdly; he must demonstrate that he suffers or, in a

‘Quia timet’ action, that he is likely to suffer damage, by reason of the erroneous belief

engendered by the respondent’s misrepresentation that the source the respondent’s goods or

services is the same as the source of those offered by the appellant. The principles granting

relief is the quia timet action with regard to passing off have been laid down: A. Whether it is

likely to cause confusion or to deceive the purchasers as to source or origin of the trade mark or

the goods to be sold in future under the said mark irrespective of the fact whether goods

intended to be sold are competitive goods or not17; B. Whether the intention to use of

infringed trade mark is to trade or cash upon the reputation and goodwill of the appellant

earned over the years through extensive advertisement and huge expenses; C. Whether there is

likelihood of real or tangible damage or injury to the appellant or reasonable probability if the

same would take place. In other words whether use of the trade mark by the respondent is

likely to be associated with the appellant’s trade mark or business; D. Whether the hardship

sufficient suffered by the appellant would be greater than that of the respondents if injunction is

not granted against the respondents18.

In passing off the appellant has to prove that the features of the offending trade mark are such

that the customers would be confused into buying the goods/services of the respondent believing

that they are the goods/services of the appellant. Here the onus is on the owner to prove that the

offending mark is causing confusion in the market as to the origin of goods/services bearing the

trade mark or that there is a likelihood of deception19. In Erven Warnink B.V. v. J. Townend &

17 Lego System Aktieselskab and Anr. v. Lego M. Lemelstrich Ltd., Fleet Sheet Reports (1983); The Dunlop Pneumatic Tyre Co. Ltd. v. The Dunlop Lubricant Co., 1899 (16) RPC 12; Surjit Singh v. Almbic Glass Industries Ltd., ; Essel Packaging Ltd. and Ors. v. Essel Tea Exports Ltd., 1999 PTC (19) 521 ; Banga Watch Company v. N.V. Philips and Anr., Bata India Ltd. v. Pyare Lal & Co. and Ors., ; C.A. Shimer (M.) SDN BHD, 2000 RPC18 Tube Investments of India ltd v. BSA-regal group ltd 2010(42) PTC 493 (Mad-DB); Mars Incorporated v. Kumar Krishna Mukherjee, 2003 (26) PTC 60 (Del) 19 Honda Motors Co. Ltd. v. Mr. Charanjit Singh and Ors 2003(26)PTC1(Del)

23


Sons (Hull) Ltd20., Lord Diplock stated the essential characteristics of a passing off action as

under:

"(1) misrepresentation, (2) made by a person in the course of trade, (3) to prospective customers

of his or ultimate consumers of goods or services supplied by him (4) which is calculated to

injure the business or goodwill of another trader (in the sense that this is a reasonably forseable

consequence and (5) which causes actual damage to a business or goodwill of the trader by

whom the action is brought or (in a quia timet action) will probably do so."

The essentials of passing off action as stated in Halsbury's Laws of England Vol. 38 (3rd

Edition) para 998 as reproduced below are worth noting: "Essentials of the cause of action. The

appellant must prove that the disputed name, mark, sign or get up has become distinctive of his

goods in the sense that by the use of his name or mark, etc in relation to goods they are

regarded, by a substantial number of members of the public or in the trade, as coming from a

particular source, known or unknown; it is not necessary that the name of the appellant's firm

should be known.....The appellant must further prove that the respondent's use of name or mark

was likely or calculated to deceive, and thus cause confusion and injury, actual or probable, to

the goodwill and the appellant's business, as for example, by depriving him of the profit that he

might have had by selling the goods which ex hypothesis, the purchaser intended to buy. Thus,

the cause of action involves a combination of distinctiveness of the appellant's name or mark and

an injurious use by the respondent of the name or mark or a similar name or mark, sign, picture

or get-up does or does not amount to passing off is in substance a question of evidence; the

question whether the matter complained of is likely to deceive is a question for the Court."

RECENT TEST LAID BY SUPREME COURT: In Heinz Italia v. Dabur India21, the

Supreme Court has reiterated the tests which courts should adopt while determining whether the

respondent has “passed off” his goods or products as the appellant’s as were laid down in Cadila

Health vs. Cadila Pharma 22 B.N KIRPAL J. broadly stated 7 factors to be considered for

deciding the question of deceptive similarity in an action of passing off of unregistered trade

mark on the basis of:

20 1980 RPC 3121 (2007) 6 SCC 122 2001 PTC 300(SC)

24


(a) The nature of the marks i.e. whether the marks are word marks or label marks or composite

marks, i.e. both words and label words.

(b) The degree of resemblances between the marks, phonetically similar and hence similar in

idea.

(c) The nature of the goods in respect of which they are used as trademarks.

(d) The similarity in the nature, character and performance of the goods of the rival traders.

(e) The class of purchasers who are likely to buy the goods bearing the marks they require, their

education and intelligence and a degree of care which they are likely to exercise in

purchasing or using the goods.

(f) The mode of purchasing the goods or placing orders for the goods and

(g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity

between the competing marks. The weight-age to be given to each of the aforesaid factors

depends upon facts depends upon facts of each case and the same weight-age cannot be given

to each factor in every case.

In Bata India Ltd. v. Pyare Lal & Co., it was observed as follows: "Where a trader uses the

name or mark or sign deceptively similar to that of the second trader is relation to goods

marketed by the former even though it may not be the same goods or the same type of goods as

produced by the second trader, yet a question of passing off may arise. The main consideration

will be whether there is a misrepresentation." It is also well settled that the appellant in passing

off action does not have to prove that he has actually suffered damage by loss of business or

in any other way. A probability of damage is enough but the actual or probable damage must be

damage to him in his trade or business i.e., damage to his goodwill in respect of that trade or

business23. It has further been observed in Apple Computer v. Apple Leasing24, that it is not even

necessary in the context of the present day circumstances of free exchange of information and

advertising through newspapers, magazines, video, T.V. movies, freedom of travel between parts

of the world to insist that a particular appellant must carry on business in a jurisdiction where

improper use of its name or mark can be restrained by the Court. It was also observed that in a

case of passing off action, the main consideration is the likelihood of confusion and

23 Bulmer v. Bellinger, (1978) RPC 79 (CA).24 1993 IPLR 63 [1992 (1) Arb.LR 93 (Delhi)]

25


consequential injury to the appellant, and the need to protect the public from deception,

deliberate or otherwise.

In a nutshell, in an action for passing off, the appellant has to establish that his business or goods

has acquired the reputation he is claiming, by showing that, his trade name has become

distinctive of his goods and the purchasing public at large associates the appellant's name with

them. The appellant is, however, not required to establish fraudulent intention on the part of

the respondent. Causing of actual confusion amongst the customers is also not to be proved.

What is required to be established is the likelihood of deception or confusion in the minds of the

public at large. The likelihood or probability of deception depends on a number of factors, which

necessarily, is a question of fact and varies in the circumstances of each case. The appellant has

also to establish that the respondent's use of the appellant's marks, letters or other indicia with

regard to his goods is likely to lead to confusion in the minds of public, and such confusion is

likely to cause damage or injury to the reputation, goodwill and fair name of the appellant. The

appellant has also to show his prior user of the trade mark, in point of time than the respondent.

The appellant, however, need not prove actual loss or damage in an action of passing off. Also

registration of the trade mark is inconsequential in such an action.

In this present case the appellant's mark MMBL has acquired a global goodwill and reputation.

Its reputation is for quality products. The name of MMBL is associated with the appellant's

especially in the field of manufacturing of sporting equipment and Mordor Moonball Basketball

League on account of their quality products and high standard. The appellant's business or

products under the trade mark MMBL has acquired such goodwill and reputation that it has

become distinctive of its products and the respondents' use of this mark for their product "Mobile

Application” Advertisements tends to mislead the public to believe that the respondents services

or goods are that of the appellant. Such use by the respondents has also diluted and debased the

goodwill and reputation of the appellant.

SIMILARITY BETWEEN THE PRODUCTS -IRRELAVANT: Learned counsel for the

respondents contend that the appellant company was an industrial conglomerate engaged in of

variety of manufacturing businesses, including the manufacture of sporting equipment,

computer peripherals, telephone instruments, electrical appliances, and textiles, whereas the

26


respondents product is an mobile application and as such the two sets of goods are neither allied

nor cognate, much less identical and as such there is no likelihood of any deception or confusion

being caused in the minds of the public to purchase the respondents' goods as those of the

appellant's. But it must be taken into consideration that the case of the appellant is in fact based

on passing off action and not for infringement of the trade mark. It has never been the case of the

appellant that the two sets of goods are identical. The concept of passing off, which is a form of

tort, has undergone changes with the course of time. The appellant now25 does not have to be in

direct competition with the respondent to suffer injury from the use of its trade name by the

respondents. Learned senior counsel for the appellant contends that the trade mark MMBL has a

unique goodwill and reputation all over the world and the use there of by the respondents will

dilute appellant's goodwill and reputation, as the public while purchasing any product under the

said trade mark would believe that the said item might have come from the house of MMBL. The

distinctiveness of the mark MMBL of the appellant is likely to be eroded and debased. In

Taittinger v. Allbev Ltd26., Per Peter Gibson LJ, observed: "By parity of reasoning it seems to me

no less obvious that erosion of the distinctiveness of the name champagne in this country is a

form of damage to the goodwill of the business of the champagne houses." In the same judgment

Sir T. Bingham said that: "Champagne" has an exclusiveness which is impaired if it is used in

relation to a product. (Particularly a potable product) which is neither champagne not

associated or connected with the business which produce champagne. The impairment is a

gradual debasement: dilution or erosion are not demonstrable in figures of lost sales but that

they will be incrementally damaging to goodwill is in my opinion inescapable."

Prayer

Wherefore in the light of the issues raised, arguments advanced and authorities cited, it is

humbly requested that this Honourable Court may be pleased to adjudge and declare:

25 Honda Motors Co. Ltd. v. Mr. Charanjit Singh and Ors 2003(26)PTC1(Del) Daimler Benz Aktiegesellschaft and Anr. v. Hybo Hindustan, ; Ciba-Geigy Ltd. and Anr. v. Surinder Singh and Ors. , 1998 PTC (18) 545 Sunder Parmanand Lalwani and Ors. v. Caltex (India) Ltd.

26 (1993) FSR 641 (CA)

27


THAT, there lies copyright protection in information emanating out of a match.

THAT, tort of unfair competition is committed by Neptune Mordor Pvt ltd against FreeSports

Mordor Pvt ltd. & Moonshine, thereby is liable to pay any damages for unjust enrichment.

THAT, using the name of MMBL in the advertisements of ‘SuperDunk’ causes trademark

dilution of a well known trademark “Mordor Moonball basketball league”

And pass any such order, writ or direction as the Honourable Court deems fit and proper,

for this the Appellants shall duty bound pray.

ALL OF WHICH IS RESPECTFULLY SUBMITTED

COUNSEL FOR THE APPELLANTS

28

jamia moot memo - a

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