World Wrestling Entertainment Inc. v. M/s. Reshma Collection
Before the Hon’ble High Court of Delhi at New Delhi
CS(OS) No. 1801/2013
Decided on: 04.10.2013
Plaintiff filed a suit seeking permanent injunction restraining infringement of Copyright, Infringement of Trade Mark, Passing Off, Dilution, Rendition of Accounts, Damages, etc in respect of their Trade MArks ‘WWE Scratch Logo’ and ‘WORLD WRESTLING ENTERTAINMENT’.
The Plaintiff was a Co. incorporated under the laws of the State of Delaware, USA. The Defendants were located in Mumbai and were not claimed to be doing business in Delhi.
In light of the same, the Hon’ble Court asked the Plaintiff as to how does the Hon’ble High Court of Delhi has the jurisdiction to try the present case in light of Archie Comic Publications Inc. v. Purple Creation Pvt. Ltd. & Ors. and Dhodha House v. S.K. Maingi as Plaintiff is a foreign Co. with no branch office in Delhi.
Averments in the Plaint
The Hon’ble Court has jurisdiction to try the present case under Section 134(2) of the Trade Marks Act, 1999 and Section 62(2) of the Copyright Act, 1957 as the Plaintiff carries on business in Delhi in the following manner:
(i) The plaintiff‟s programmes consisting of its various characters are broadcasted at Delhi.
(ii) The plaintiff‟s products such as its merchandising goods and books are available in Delhi.
(iii) The plaintiff‟s goods and services are sold to consumers in Delhi through its websites which can be accessed in Delhi.
- That Archie Comic Publications Inc. v. Purple Creation Pvt. Ltd. & Ors. and Dhodha House v. S.K. Maingi do not take into account “new media”, i.e. web based business models.
- With the advent of new media and transactions over the internet the Plaintiff is deemed to be carrying on business in Delhi.
- Plaintiff’s website is accessible to consumers in Delhi and Plaintiff’s website was accessible in Delhi.
- Website of the Plaintiff is interactive website.
- The issue of jurisdiction is a mixed question of law and fact and can be adjudicated at the final stage of the suit.
The Honble Court held that the present Court does not have jurisdiction to try the present matter. In arriving at the said conclusion the Hon’ble Court gave the following reasons:
- The Plaintiff cannot be said to be carrying on business in the jurisdiction of the Hon’ble High Court of Delhi as per the Supreme Court judgment passed in Dhodha House v. S.K. Maingi, wherein the sum and substance of the criteria for ‘carrying on business’ is held to be that an essential part of the Plaintiff’s business, coupled with an element of control exercised by the plaintiff must exist in such place where the plaintiff claims to be carrying on business either on it’s own or through an exclusive agent.
- As far as the concept of “new media” and internet transactions are concerned, the same does not interrupt on the determination of the issue whether the merchandiser is carrying on business at a particular place. Business still happens over telephone and fax.
- Therefore, Plaintiff has to show that it actually has business interest at the relevant place, a voice in the proceedings; a share in gain or loss and some degree of control.
- Plaintiff could show presence of an exclusive C & F Operator, Dealer or the fact that Plaintiff has a registered office/branch office or the factum of exclusive tie-up with an agent.
- In the present case, the Plaintiff has not made any averment to the effect that it has any branch office or exclusive agent anywhere in India.
- If the plaintiff’s submission were accepted, it would lead to a situation that a Plaintiff can file suit any place which provides internet access to Plaintiff’s website.
- If the intention of legislature had been to provide jurisdiction at the place of access of Plaintiff’s website, it would have been expressly provided for.
- Reliance placed on the concept of Interactive website of the Plaintiff is misplaced as the prevailing law on the subject deals with website of the Defendant and not the Plaintiff
- The contention that goods of the Plaintiff are sold in Delhi is negativated by the Hon’ble Court in view of Dhodha House v. S.K. Maingi which observed that “It is possible that the goods manufactured by the Plaintiff are available in the market of Delhi or that are sold in Delhi but that by itself would not mean that the Plaintiff carries on any business in Delhi”.