jm15-20 appellants

5th Jamia National Moot Court Competition, 2015

IN THE HON’BLE SUPREME COURT OF MORDOR

Special Leave Petition Jurisdiction

SLP(C) NO. 1/2015 and SLP(C) NO. 2/2015

IN THE MATTERS BETWEEN

MOONSHINE MORDOR PVT LTD. & Another ….APPELLANTS

Versus

NEPTUNE MORDOR PVT. LTD ….RESPONDENT

CLUBBED WITH

NEPTUNE MORDOR PVT. LTD ….APPELLANTS

Versus

MOONSHINE MORDOR PVT LTD. & Another ….RESPONDENTS

MEMORANDUM ON BEHALF OF THE APPELLANTS

Memorial on the Behalf of the Appellants

TEAM CODE: JM15-20


TABLE OF CONTENTS

ABBREVATIONS……………………………………….…3

INDEX OF AUTHORITIES..................................................4

STATEMENT OF JURISDICTION......................................6

STATEMENTS OF FACTS..................................................7

STATEMENT OF ISSUES...................................................9

ARGUMENTS ADVANCED……………………………10

ARGUMENTS ADVANCED.............................................11

PRAYER FOR RELIEF......................................................30



ABBREVIATIONS

¶ : Paragraph

AIR : All India Reporter

Art. : Article

Cri LJ / Cr LJ : Criminal Law Journal

Del : Delhi High Court

Ed. : Edition

Factsheet : Statement of Facts, 5th JNMCC, 2015 Problem

Freesports Ltd. : Freesports Mordor Pvt. Ltd.

Hon'ble : Honourable

IC : Indian Cases

MMBL : India Moonball Basketball League

Moonshine Ltd. : Moonshine Mordor Pvt. Ltd.

Neptune Ltd. : Neptune Mordor Pvt. Ltd.

p. : Page No.

PIL : Public Interest Litigation

RTE, Act : Right to Free and Compulsory Education Act, 2009

SC : Supreme Court

SCC : Supreme Court Cases

SCJ : Supreme Court Journal

SCR : Supreme Court Reporter Sec. Section

v. : Versus



INDEX OF AUTHORITIES

B OOKS AJAY SAHANI, LAL’S COMMENTARY ON COPYRIGHT ACT, 1957 (5TH ED. DELHI LAW

HOUSE, 2013)

RANBIR SINGH, IYENGAR’S COMMENTARY ON THE COPYRIGHT ACT (8TH ED.,

UNIVERSAL LAW PUBLISHING CO. PVT. LTD., 2013)

KEVIN GARNETT, COPINGER AND SKNE JAMES ON COPYRIGHT (7TH ED., THOMSON

REUTERS, 2014)

AJAY SAHANI, LAL’S COMMENTARY ON COPYRIGHT ACT, 1957 (4TH ED. DELHI LAW

HOUSE, 2011)

AKHIL PRASAD, ADITI AGARWAL, COPYRIGHT LAW DESK BOOK, (UNIVERSAL LAW

PUBLISHING CO. PVT. LTD., 2009)

3MELVILLE B. NIMMER, DAVID NIMMER, NIMMER ON COPYRIGHT (LEXIS NEXIS, 2010)

P.NARAYAN, INTELLECTUAL PROPERTY LAW (3RD ED. EASTERN LAW SCHOOL, 2013)

HELLEN E NORMAN, INTELLECTUAL PROPERTY LAW (OXFORD UNIVERSITY PRESS,

2011)

HELLEN E NORMAN, INTELLECTUAL PROPERTY LAW (2ND ED.OXFORD UNIVERSITY

PRESS, 2014)

C ASES

International News Service v. Associated Press1(INS Case) 248 U.S. 215, 39 S. Ct. 68

(1918)

Pittsburgh Athletic Co. et al v. KQV Broadcasting Co. 24 F. Supp. 490

National Exhibition Company v. Martin Fass 143 N.Y.S. 2d 767

Twentieth Century Sporting Club Inc. and Ors. v. Transradio Press Service Inc. and Anr

300 N.Y.S. 159

National Basket ball Association and NBA Properties v. Sports Team Analysis and

Tracking Systems Inc. 939 F. Supp 1071

Marksman Marketing Services Pvt. Ltd. v. Bharti Tele-Ventures Ltd. & Ors. O.A. No.

78/20061 248 U.S. 215, 39 S. Ct. 68 (1918)



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

Star India Pvt. Ltd and Anr. v. Haneet Ujwal and Ors. CS(OS) No.2243/2014

Sulamangalam R. Jayalakshmi and Another v. Meta Musicals, Chennai and Others 2000

PTC 681, 694

Cannon Kabushiki Kaisha v. MGM (1999) RPC 117

Caterpillar Inc. v. Mehtab Ahmed, 2002 (25) PTC 440 (Del )

Marage Studies v. Counter Feat Clothing Co. Ltd. case reported in (1991) FSR 145

Intel Corporation v. S. Ramanan Director and Anr., (Chennai High Court, OA 276 of

2002)

Primark Stores ltd. v. Lollypopclothing ltd (2002) FSR 60

Magnolia Metal v. Tanden Smelting (1900) 17 RPC 477 at 486

Office cleaning v. Westminster (1946) 63 RPC 39 at 42

Turmix, oertli v. bowman (1957) RPC 388 at 397

Mosely v. Secret Catalogue Inc 537 us 418 (2003)

STATUTES REFERRED

The Copyright Act, 1957

The Indian Trademarks Act, 1999

Trademark Dilution Revision Act of 2006 (TDRA)

W EBSITES R EFERRED

www.manupatra.com

www.westlaw.com

www.selvamandselvam.in

www.jstor.org

www.bits-pilani.ac.in

www.medianama.com

www.lexology.com

www.spicyip.com



STATEMENT OF JURISDICTION

THE PETITIONER HAS APPROACHED THE HON’BLE SUPREME COURT OF MORDOR UNDER ARTICLE 136

“ARTICLE 136 IN THE CONSTITUTION OF INDIA

136. SPECIAL LEAVE TO APPEAL BY THE SUPREME COURT

(1) Notwithstanding anything in this chapter, the Supreme Court may, in its discretion, grant special leave to appeal from any judgment, decree, determination, sentence or order in any cause or matter passed or made by any court or tribunal in the territory of India

(2) Nothing in clause (1) shall apply to any judgment, determination, sentence or order passed or made by any court or tribunal constituted by or under any law relating to the armed forces.”



STATEMENT OF FACTS

Part I

Mordor is a Republic in South Asia which is one of the most rapidly emerging markets in the

world. Moonshine Mordor Pvt. Ltd. (Moonshine) is an industrial conglomerate engaged in a

variety of manufacturing businesses which wanted to grow and invest into other businesses as

well. Moonshine launched a tournament by the name of “Mordor Moonball Basketball League”

(MMBL) and announced huge prize money under the banner of MMBL through which young

talent would be picked, every year from different parts of the country and matches would be held

for a period of one month across the country in 2011. In its 3 rd edition i.e., during 2013 many

television channels tried to get the broadcasting rights from Moonshine which were subsequently

bagged by Free Sports Mordor Pvt. Ltd. (Free Sports), a national television channel via an

agreement signed on 5th August, 2013 which provided with “bouquet of rights” exclusively to

Free Sports which included recording, broadcasting, mobile rights etc.

Part II

Further in 2014 tournament, seeing the 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 via on electronic and print

media. Neptune was able to rope in big advertisers like Pepsi, Nike, McDonald’s etc. on their

SuperDunk App and started making lot of profit by using the name of MMBL and prominent

pictures of players in this tournament. On getting to know about SuperDunk, Moonshine and

FreeSports filed a suit against Neptune since Moonshine had assigned the “bouquet of rights” to

FreeSports, which felt aggrieved that Neptune was indulging in unfair competition, commercial

misappropriation and unjust commercial enrichment. Moonshine contended that their property

rights were being violated and that the match information was a product of its “originality and

creativity” and therefore it had a copyright over it. Another issue was with regard to usage of the

name MMBL in the advertisements of Neptune to promote its Mobile application SuperDunk.

Part III

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



There does not lie any copyright protection in information emanating out of a match

The match scores are in public domain and cannot be protected

The tort of unfair competition could not aid FreeSports in its effort to seek equitable

relief

There is no unjust enrichment as the benefit gained by Neptune is not at the expense of

FreeSports.

Using the name of MMBL in the advertisements of SuperDunk causes Trademark

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

Part IV

Aggrieved by this order, 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:

With regard to the issue of copyright protection, the Division Bench upheld the view of

the Single Judge.

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

broadcasted on the television.

Neptune has to pay 75 crores to Moonshine and FreeSports as damages because of unjust

enrichment gained by it.

With regard to the issue of Trademark dilution, Division Bench upheld the view of the

Single Judge.

Part V

Moonshine and FreeSports filed a Special Leave Petition (SLP) before the Supreme Court of

Mordor against the order of the Division Bench, High Court with respect to issues decided

against them. The Supreme Court admitted the SLP, and directed that the matter to be listed for

final hearing.



STATEMENT OF ISSUES

I. Whether the information emanating out of the match is liable to copyright protection?

II. Whether FreeSports is entitled to equitable relief under tort of unfair protection and

whether Neptune has indulged in unfair competition, commercial misappropriation and

unjust commercial enrichment?

III. Whether using the name of MMBL in the advertisements of SuperDunk causes trademark

dilution?



SUMMARY OF ARGUMENTS

ISSUE 1: THE INFORMATION EMANATING OUT OF THE MATCH IS LIABLE TO COPYRIGHT

PROTECTION.

The counsel on the behalf of the appellants humbly submits that Moonshine Ltd. has paramount

rights over MMBL and information emanating out of a match is protected under Copyright. This

is contended because Moonshine Ltd. has a copyright over the information emanating out of the

match, information emanating out of a match is not available in public domain and the use of

such information by Neptune Ltd. is in violation with the rights vested by the Copyright Act.

ISSUE 2: FREESPORTS IS ENTITLED TO EQUITABLE RELIEF UNDER TORT OF UNFAIR

PROTECTION AND NEPTUNE HAS INDULGED IN UNFAIR COMPETITION, COMMERCIAL

MISAPPROPRIATION AND UNJUST COMMERCIAL ENRICHMENT.

The counsel on the behalf of the appellants humbly submits that the Neptune Ltd. has unjustly

benefited at the expense of appellants by indulging in unfair competition, commercial

misappropriation and unjust commercial enrichment and thus, FreeSports Ltd. are entitled to

equitable relief under the tort of unfair protection.

ISSUE3: USING THE NAME OF MMBL IN THE ADVERTISEMENTS OF SUPERDUNK CAUSES

TRADEMARK DILUTION.

It is humbly submitted before this Hon’ble Court that using the name of MMBL in the

advertisements of SuperDunk causes Trademark dilution as “Mordor Moonball Basketball

League” is a well known trademark, and its unauthorized use leads to misrepresentation of

trademark which further results in trademark dilution and thus trademark infringement.



ARGUMENTS ADVANCED

ISSUE 1: WHETHER THE INFORMATION EMANATING OUT OF THE MATCH IS LIABLE TO

COPYRIGHT PROTECTION?

The counsel on the behalf of the appellants humbly submits that Moonshine Ltd. has paramount

rights over MMBL and information emanating out of a match is protected under Copyright. This

is contended because Moonshine Ltd. has a copyright over the information emanating out of the

match (A), information emanating out of a match is not available in public domain (B) and the

use of such information by Neptune Ltd. is in violation with the rights vested by the Copyright

Act (C).

(A) Moonshine Ltd has a copyright over the information emanating out of match

Encouragement of intellectual creation, which is afforded through Copyright, is recognized as

one of the basic prerequisites of all social, economic and cultural development.2. In

Sulamangalam R. Jayalakshmi and Another v. Meta Musicals, Chennai and Others3, the Madras

High Court stated that “copyright law is to protect the fruit’s of a man’s work, labour, skill or test

from annexation by other people.” It is humbly submitted that Moonshine Ltd. has paramount

rights over all information emanating from the MMBL4 events as the organizer and promoter of

that sport in Mordor. Moonshine contends that they have by an agreement dated 05.08.2013

assigned a “bouquet of rights” exclusively to FreeSports Ltd. These included ‘recording’,

‘broadcasting’, ‘Mobile Rights’ and that the Neptune Ltd and Others had violated those rights

which were exclusively assigned to FreeSports Ltd. Neptune Ltd. had no license for such rights

from Moonshine Ltd. to disseminate match information. If any of the acts specified in Section 14

of the Indian Copyright Act relating to the work, is carried out by a person other than the owner

or without licence from the owner or a competent authority under the Act it constitutes

2 In Holy Faith International and Others v. Dr. Shiv K. Kumar, 2006 (33) PTC 456, 463 (AP), the court observed that the primary function of a copyright law is to protect the fruits of a man’s work, labour, skill or test from being taken away by other people. 3 2000 PTC 681, 6944 Mordor Moonball Basketball League, Pg 1, Factsheet.



infringement of copyright. The type of acts, which will constitute infringement, will depend upon

the nature of the work. Secondary infringement such as making for sale or hire of, exhibition in

public by way of trade of, distribution - infringing copies - is also prohibited and punishable

under the Act.

A.1 FreeSports has exclusive rights regarding any information arising out of an MMBL

As the organizer of MMBL event in Mordor, Moonshine had exclusive rights in respect of

content generated during any such event according to the agreement dated 05.08.2013. These

included the right to commercially exploit all event content. Such rights were then transferred to

Freesports vide an agreement and hence it was the exclusive right of Freesports to control

‘mobile rights’ activities emanating out of the basketball event. Similarly, in the Marksman

Case5, 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 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 Plaintiff prayed for an injunction under Sections 55 and 61 of the Copyright Act,

1957, restraining the defendants 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. Relying on National Basketball Association

and NBA Properties Inc. v. Sports Team Analysis and Tracking Systems Inc. (“the NBA-1 Case”)

the High Court held that: “The right of providing scores, alerts and updates is the result of

expenditure of skill, labour and money of the organisers 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 Organisers business. The defendant’s act of appropriating facts and

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

where the defendants have not sown.”

Similarly, in the instant case, Moonshine Ltd. as the owner of MMBL has all these rights which

have been further provided an exclusive license to Freesports Ltd by a “bouquet of rights” which

5 Marksman Marketing Services Pvt. Ltd. vs. Bharti Tele-Ventures Ltd. & Ors., O.A. No. 78/2006



included recording, broadcasting, mobile rights, etc. Thus, Freesports has exclusive rights over

the information emanating out of MMBL.

A.2 Infringement of exclusive rights with the use of information emanating out of the

match by Neptune Ltd.

The Copyright Act creates several rights besides copyright. These rights include the rights of

broadcasting organisations under Section 37, the rights of performers under Sections 38 and

exclusive rights of the performer to make a sound recording or a visual recording which is

inclusive of any form of reproduction, issuance of copies, any form of communication to public

or any form of commercial rental or use or even broadcasting rights as specified under 38A, and

the moral rights of authors which are recognized under Section 576; which are all distinct from

copyright. Satellite broadcasting rights are treated as separate rights and the said rights are

recognized throughout the world as independent rights7. In the instant case, there is a clear

breach of these rights wherein exclusive rights of the performer i.e., Freesports with the vesting

of “bouquet of rights” vide an agreement which has a binding effect under Article 38-A sub

clause 2 of the Act. The exclusive right of an Organizer to monetize his own event need not find

its source in any statutory enactment, because it is a fundamental principle of equity as observed

in the INS Case8, "The underlying principle is much same as that which lies at the base of the

equitable theory of consideration in the law of trusts - that he, who has fairly paid the price,

should have the beneficial use of the property." In other cases regarding dissemination of content

through updates/alerts arising from sporting events, i.e. Pittsburgh Case9, and, National

Exhibition Case10; the decision in Twentieth Century Fox Case11. In all three cases, the Courts

followed the benefiting ratio in the INS Case. Hence, since Freesports acquired rights

exclusively, it is they who can exercise them and no one else. These precedents have great

persuasive value due to the similarity in the circumstances, especially with respect to minute-by-

minute updates being analogous to the ball-by-ball updates provided by the opposite party. Thus,

in the instant case the use of information emanating out of MMBL is an exclusive right vested

6 Indian Copyright Act, 19577 2008 (38) PTC 477 (Del.), AIR 2002 Del8 International News Service vs. Associated Press, 248 U.S. 215, 39 S.Ct. 68 (1918)9 Pittsburgh Athletic Co. et. al v. KQV Broadcasting Co., 24 F. Supp. 49010 National Exhibition Company vs. Martin Fass, 143 N.Y.S. 2d 76711 Twentieth Century Sporting Club Inc. and Ors vs. Transradio Press Service Inc. and Anr., 300 N.Y.S. 159



over FreeSports Ltd via an agreement which is being infringed with the use of such information

by Neptune for broadcasting and advertisement purposes.

(B) The information emanating out of MMBL is not available in public domain

It is humbly submitted that it is in the best interest of the game of basketball in Mordor and

Moonshine Ltd. that such information permeates the public domain to its fullest extent however,

the owner and the performer have exclusive right provided over it and thus it is not the intention

of Moonshine to prevent Neptune from disseminating match information to the public, but to

ensure that Neptune share their revenue with Moonshine by obtaining a license for such

dissemination. Further, the time-sensitive nature of the information emanating from sporting

events with specific reference to score updates/match alerts has to be taken into consideration.

Match information does not completely enter public domain for a particular span of time. For

instance, a person who has access to television/radio will be updated about the status of a match

in real-time. Whereas, persons who do not have access to a television/radio, such as persons

inside office or even courtrooms may not be updated about match status contemporaneously.

The term “public domain” connotes that the information becoming freely available to the public,

it can be said that the information emanating from a match, enters the public domain at different

moments of time i.e. is becomes freely available to the public at different moments of time. To

elucidate through an example, the outcome of the first basket scored in a basketball match, enters

the public domain instantly qua the spectators in the stadium. The same information enters the

public domain after a delay of a few seconds (or micro-seconds) subject to the time-lag in

transmission of such information over a live telecast through television/radio. As a corollary, the

information has 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. Further, there is a great demand for

knowing minute by minute progress of a match as opposed to the match-summary at the end of

the match. This is evidenced by the fact that customers of such app services are willing to

download apps and use their data packs to follow such updates. The match information does not

enter public domain i.e. available to the public, the very instance it is broadcasted. It is similar to

saying that the plot of a book or movie has entered the public domain as soon as it is released.

Therefore, we humbly submit that match information has not entered ‘public domain’ i.e. is not



readily available to the class of persons who do not have access to TV/radio, who also happen to

be the target consumers of the both the parties. Hence, it is our submission that since the

information emanating out of the match is not a part of public domain, the opposing party should

not be allowed to make free use of it. They should either stop using such information till it enters

the public domain which we content to be after thirty minutes or get proper licensing to be deal

with such information instantly.

C.The use of such information by Neptune Ltd. is in violation with the rights vested by the

Copyright Act

C.1 Malafide use of the garb of Constitutional Right to Receive Information by the

Public by Neptune Mordor

The Supreme Court has made it amply clear in cases such as Tata Press12 that the public’s right

to receive information is within the ambit of Article 19(1)(a) of the Constitution of India. The

Court held “Article 19(1)(a) not only guarantees freedom of speech and expression, it also

protects the rights of an individual to listen, read and receive the said speech”. The Courts have

held that the freedom of speech and expression was available to the press to disseminate such

information but a line has to be drawn in cases where the power is misused.

Finding that raising revenue under the garb of ‘reporting’ was not in consonance with the spirit

of Article 19(1)(a), the it was observed, "Thus, the cry in the media or the press, which we may

possibly hear tomorrow after our opinion is pronounced, that freedom of the media and the press

to disseminate information has been curtailed by us, if at all, is set at rest by us by noting that the

freedom of the press and the media to disseminate information was recognized by the society

keeping in view the press and the media which existed in the 19th and the 20th Century i.e. as

organs of thought, of empowerment, of culture and of refinement. Not as organs of entertainment

and revenue generation; least of all as an organ offering on its back, a piggy ride for commercial

entities i.e. business houses to advertise their products by commercializing the goodwill of

others.13" It is pertinent to note that, “news” or “noteworthy information” arising from a match is

very different from the ball-by-ball or minute-by-minute information. For instance, who made

12 (1995) 5 SCC 139 Tata Press Limited vs Mahanagar Telephone-Nigam Limited13 New Delhi Television Ltd v. ICC Development (International) Ltd. & Anr., FAO (OS) 460/2012 (NDTV Case)



the first basket, whether any player received or took a penalty for the team, or a player

misbehaved, or a new world record being set constitutes" news in the realm of a basketball

match. To substantiate with an example, a news channel “reporting” such a match would not

engage in the contemporaneous dissemination of minute-by-minute match information. A news

channel would only report selective excerpts from the match which is news worthy.

It is amply clear that the dissemination of the minute-by-minute updates at a premium cannot be

exonerated under the freedom of speech and expression as guaranteed under Article 19(1)(a).

Meanwhile, all noteworthy information arising from a cricket match constitute “news”, and the

“reporting” of such noteworthy information would be protected under Article 19(1)(a).

C.2 Obtaining proper licence vis a vis Public Interest

The instant dispute is not between a commercial entity and the public, but between two

commercial entities and hence there is no substantial question of public policy. Further, the

public also cannot, as a matter of right, claim the access to contemporaneous score

updates/match alerts, equal to those who are enjoying rights at a premium, by buying the tickets

at the stadium or watching it live on TV. While recognizing the right of the general public to

have score updates/match alerts at their convenience on mobile phones via apps, Neptune should

either obtain a license and gain equal rights to Freesports, or make them wait for a considerable

time in order to not prejudice the right of Freesports to earn revenue from the match information.

It is gathered that, as it is, about 3-5 minutes are taken for gathering, compiling and

disseminating the score updates/match alerts by the defendants. In such a circumstance, those

who do not obtain a license, should not disseminate the score update/match alert before 30

minutes from the moment such score update/match alert is telecasted/broadcasted by the

Freesports. Thus, this maintains a balance between our right to monetize the match and the right

of the public to receive such information, and also prevents the others from free-riding on our

efforts.



ISSUE 2: WHETHER FREESPORTS IS ENTITLED TO EQUITABLE RELIEF UNDER TORT OF

UNFAIR PROTECTION AND NEPTUNE HAS NOT INDULGED IN UNFAIR COMPETITION

COMMERCIAL MISAPPROPRIATION AND UNJUST COMMERCIAL ENRICHMENT?

The counsel on the behalf of the appellants humbly submits that the Neptune Ltd. has unjustly

benefited at the expense of appellants by indulging in unfair competition, commercial

misappropriation and unjust commercial enrichment (A) and thus, FreeSports Ltd. are entitled to

equitable relief under the tort of unfair protection (B).

(A)The Neptune Ltd. has unjustly benefited at the expense of appellants by indulging in unfair

competition, commercial misappropriation and unjust commercial enrichment

A.1 Unfair Competition

Unfair competition is a sequel to free competition in the economy. It is an intellectual concept. In

a free market economy, competition is a basic policy in relation to trade and business. However,

competition must not only be free but also fair. Unfair competition is a commercial tort. It is well

established that any act or conduct, which confuses or tends to confuse the public mind in

relation to the identity of the plaintiff or his products is a violation of the plaintiff’s rights. Unfair

competition law enforces increasingly high standards of fairness or commercial morality in trade.

This concept have been applied in the case of International News Service v. Associated

Press14(INS Case) it was held that “the defendants acts of taking material acquired by the skill,

organization and money of the complainant and appropriating it and selling it as its own, is

trying to reap where it has not sown and would thus constitute unfair competition. The

underlined principle behind the tort of unfair competition is that a he who has fairly paid the

price should have the beneficial use of the property.”

In the instant case the FreeSports Ltd., a national television channel was given the exclusive right

of recording and broadcasting the basketball match information along with the mobile rights.

However, Neptune Ltd., a telecommunication company provided the minute-by-minute updates

14 248 U.S. 215, 39 S. Ct. 68 (1918)e



of the match through its application called Superdunk. By this it roped in big advertisers like

Pepsi, Nike, McDonalds etc. and started making huge profit at the cost of appellant’s expense.

This constitutes unfair competition.

A.2 Commercial Misappropriation & Unjust Enrichment

In law, commercial misappropriation is the unauthorized use of another's name, likeness, or

identity without that person's permission, resulting in harm to that person and unjust

enrichment is where one person is unjustly or by chance enriched at the expense of another, and

an obligation to make restitution arises, regardless of liability for wrongdoing.

Further it is pertinent that the principle of unfair competition and commercial misappropriation

enunciated in the INS case was followed in the respective cases:

In the case of Pittsburgh Athletic Co. et al v. KQV Broadcasting Co.15 (Pittsburgh Case), the

plaintiff prayed for a preliminary injunction to restrain the defendants from defendants from

broadcasting play-by-play reports and description of baseball games played by the plaintiff’s

baseball team.

In the case of National Exhibition Company v. Martin Fass16 the SC was faced with the prayer

for injunction against the defendants who were listening to the broadcast of play-by-play

descriptions of baseball games organized by the plaintiff and sending out simultaneous teletype

reports of the games to radio stations for immediate broadcast.

In the case of Twentieth Century Sporting Club Inc. and Ors. v. Transradio Press Service Inc.

and Anr.17 The court was faced with a prayer for injunction against the defendants from

interfering with exclusive right of the plaintiff to broadcast a description of certain boxing

exhibition.

In the present case, the appellants had the exclusive rights in relation to the content generated

during the basketball event, including the right to commercially exploit all content arising from

such event. Moreover, the respondents have unduly taken away into the mobile rights along with

15 24 F. Supp. 49016 143 N.Y.S. 2d 76717 300 N.Y.S. 159



the broadcasting rights, without sharing the profit gained by them, thereby indulging in unfair

competition and unjust commercial enrichment.

Further, it has been held in the case of National Basket ball Association and NBA Properties v.

Sports Team Analysis and Tracking Systems Inc.18 it was held that "the right of providing scores,

alerts and updates is the result of labour and money of the organisers and so the same is saleable

only by them. The sending of score updates and match alerts amounts to interference with the

normal operation of the organisers business. The defendants act of appropriating facts and

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

where the defendants have not sown." These precedents have a high persuasive value due to the

similarity in the factual matrix, specifically with respect to play-by-play updates or ball-by-ball

minutes provided by the defendants.

Similarly, in the instant case, Moonshine Ltd. has spent substantial amount of money19 over the

advertisements and setting up sport managers and the requisite teams at the time of initiation of

tournament. Further, the rights in relation to broadcasting are essentially vested with the owner

which further have been provided to Freesports Ltd. vide an agreement20. However, Neptune Ltd.

without any license provided by the owner has been unduly exercising these rights by providing

minute by minute updates21 of the match.

Also, in the case of Marksman Marketing Services Pvt. Ltd. v. Bharti Tele-Ventures Ltd. &

Ors.22, the plaintiff prayed for an injunction under Section 55 and 6123 restraining the defendants

from disseminating information relating to scores through mobile phones. Thus, in the present

case the dissemination of match information through minute-by-minute match updates of MMBL

i.e. Mordor Moonball Basketball League by the defendants constitutes the tort of unfair

competition and a commercial misappropriation/unjust commercial enrichment. The defendants

ere neither assigned any rights nor acquired any license to from the plaintiffs to disseminate any

match information. The plaintiff seeks a remedy in these suits under common law, de hors the

18 939 F. Supp 107119 Factsheet para 3 at 120 Factsheet para 4 at 121 Factsheet para 5 at 222 O.A. No. 78/200623 Copyright Act, 1957



Copyright Act, 1957. In the present case the intention of plaintiff is not to prevent the defendants

from disseminating any match information to the public but to ensure that the defendants share

their revenue with the plaintiff by obtaining a license for such information.

Further, in response to the argument regarding match information already being in public

domain, the emphasis is laid upon the time- sensitive nature of the information emanating from

cricketing/boxing/ basketball events with specific reference to score updates/match alerts. It is

argued that the match information does not completely enter public domain for a particular span

of time. For instance, a person who has access to television/radio will be updated about the status

of a cricket match in real-time, whereas, persons who do not have access to a television/radio,

such as persons inside office or even courtrooms may not be updated about match status

contemporaneously.

( B ) Freesports Ltd. are entitled to equitable relief under the tort of unfair competition

The appellants has approached this Court to find a remedy in common law against the tort of

unfair competition and does not seek a creation of copyright or a similar right from this Court. It

is submitted that since the respondents have indulged into commercial misappropriation and

unjust enrichment and thus leading to the tort of unfair competition, this provides effective

means to the appellant’s rights against the undue benefits of the respondents at the cost of

appellant.

In the case of Mahabir Kishore & Ors v. State of Madhya Pradesh24 the Apex Court has

observed that the Courts in England have formulated the doctrine of unjust enrichment in certain

situations where it would be unjust to allow the defendant to retain a benefit at the plaintiff’s

expense. The Court held, "The principle of unjust enrichment requires; first, that the defendant

has been 'enriched' by the receipt of a "benefit" and secondly, that the enrichment is "at the

expense of the plaintiff" and thirdly, that the retention of the enrichment be unjust. Enrichment

may take the form of direct advantage to the recipient wealth such as by the receipt of money or

indirect one for instance where inevitable expense has been saved."

It is observed in the present case that the FreeSports Pvt. Ltd. is only seeking the declaration of a

24 1989 SCR (3) 596



right to generate revenue by monetizing the information arising from an event, which has been

conceptualized, developed, created and organised by the sole efforts and expenditure of

Moonshine Mordor Pvt. Ltd; as its assignee. Admittedly, in order to monetize the expense, effort

and skill employed in organising cricket matches in Mordor, the plaintiff (Moonshine Mordor

Pvt. Ltd) assigned exclusive rights such as recording rights, broadcasting rights, and mobile

rights for the basket ball event to the plaintiff but the defendants violated the same by providing

minute-by-minute updates of the match without paying for it or obtaining the license. Thus, it

has unjustly enriched or made profit by disseminating the match information on the application

Superdunk when the plaintiff made all the efforts of compilation etc. Applying the test of unjust

enrichment as observed in the Mahabir Kishore case, it is amply clear that the defendants are

enriching themselves at the cost of the plaintiff.

In the case of Star India Pvt. Ltd and Anr. v. Haneet Ujwal and Ors.25 , the plaintiff’s prayed for

permanent injunction as substantial investments had been made by the plaintiffs in acquisition of

the exclusive rights for the 2014 India-England Series. Also significant expenses were incurred

by the plaintiff in setting-up the infrastructure of STARSPORTS.COM internet and mobile

service (video player, internet bandwidth etc.), advertising, promoting and broadcasting the

series matches on the internet and mobile. Bearing in mind that the Rogue Websites do not make

any investments in acquisition of the exclusive rights for the 2014 India-England Series nor do

they take any efforts in legalizing their infringing activity despite repeated reminders and legal

notices, the Rogue Websites are misappropriating and unfairly competing with the plaintiffs by

seeking to reap what they have not sown. The plaintiff’s were entitled to protection against such

unfair competition and commercial misappropriation by the Rogue Websites and dilution and

erosion of its valuable intellectual property rights.

The contemporaneous dissemination of score updates/match alerts, without payment, but en-

cashing the labour and expenditure of the plaintiff would amounts unjust commercial

enrichment, which would not be fair on the part of the defendants. To reiterate again, if the

defendants are doing so gratuitously, then they enjoy the absolute right of transmission,

25 CS(OS) No.2243/2014



contemporaneously with respect to the telecast/broadcast of the plaintiff, because there is no

instance of free-riding or unjust commercial enrichment in such a circumstance. by free-riding

upon the efforts of the plaintiff, the defendants are eating into the revenue which the plaintiff

would have made, thereby causing the plaintiff irreparable injury.

The respondents while having their fundamental right of trade and free speech, including the

dissemination of match information to the public, cannot be permitted to have a free ride or reap

what they have not sown. The respondents have caused commercial misappropriation and

benefitted unjustly at the expense of the appellants and thus FreeSports Ltd. is liable to equitable

relief under the tort of unfair competition.



ISSUE 3: WHETHER USING THE NAME OF INDIA MOONBALL BASKETBALL LEAGUE IN THE

ADVERTISEMENTS OF SUPERDUNK CAUSES TRADEMARK DILUTION?

The counsel on the behalf of appellants humbly submits before this Hon’ble Court that using the

name of MMBL in the advertisements of SuperDunk causes Trademark dilution as “India

Moonball Basketball League” is a well known trademark(A), and its unauthorized use leads to

misrepresentation of trademark (B) which further results in trademark dilution and thus

trademark infringement (C).

(A) MMBL is a well-known trademark

The Indian Trademark Law accords extraordinary protection to trade marks that are well known

and safeguard them from the vices of infringement or passing off. The Indian Intellectual

Property Office recognizes well-known trademarks in India on the basis of their international,

national and cross border reputation. As per the Indian Trademarks Act, 1999 a well known

trademark is one which includes the following essentials:

Known to the substantial segment of the public which uses such goods or receives such

services

that the use of such mark in relation to other goods or services

would be likely to be taken as indicating a connection in the course of trade or rendering

of services

between those goods or services and a person using the mark in relation to the first

mentioned goods or services.26

In the instant case, Moonshine Ltd. has launched a tournament27 under the name of the trademark

“India Moonball Basketball League (MMBL)” is in its fourth edition and gained popularity28.

Thus, MMBL comprises of all the aforesaid essentials.

26 As per Section2(1)(zg) of the Indian Trademarks Act, 199927 Factsheet para 3 at 1.28 Factsheet para 4 at 1.



In determining as to well-known status of a trademark, in addition to section11(6) and (7) the

opinion of the court whether the trademark is well known in any relevant section of the public in

India is important.29 Further, while determining as to whether a trade mark is known or

recognized in a relevant section of the public for the purpose of Sec 11(6), take into account-

the number of actual or potential consumers of the goods or services;

the number of persons involved in the channels of distribution of the goods or services;

the business circles dealing with the goods or services, to which that trade mark

applies.30

Herein, the trademark MMBL has been associated with a tournament31 which is gained

popularity and millions of mobile users have started downloading application related to this

tournament32. This makes the trademark satisfy the aforesaid conditions.

Moreover, it would be a finding of fact by the court that mark is well known, for determination

of which it may keep in mind the factors emanating from the definition in Section2(1)(zg). That

if such a trademark is used on different or non-competiting goods or services, it would indicate

to the consuming public as if it is mark of the same person who has been using it on some other

goods or services of which they are aware. Since, the trademark MMBL is a mark for tournament

and gaining popularity and being followed by millions of users33, it is a well-known trademark.

Further, Single Judge bench34 in its decision have identified MMBL as a well-known trademark.

(B) Misrepresentation with the help of Trademark

False representation of business connection which has sometimes come before the courts is

where the defendant has pretended to be agent for the sale of the claimant’s goods.35 The sale of

the goods that are identical to genuine authorized products but that were manufactured without

the authorization of the trademark owner constituted passing off unless and until the trademark

owner adopted the goods, taking responsibility for their quality and origin.36

29 As per section 11(8) of the Act.30 Sec. 11 (7) of the TMA, 199931 Factsheet para 3 at 132 Factsheet para 5 at 2.33 Ibid34 Factsheet para 8 at 2.35 The Linden Singers; Galer v. Walls, The Times, Aug 2, 196436 Primark Stores ltd. v. Lollypopclothing ltd (2002) FSR 60



Actions based on direct misrepresentation are comparatively rare. The claimant’s case more

commonly is that the defendant has copied or imitated the trading name, trademark, the get up,

are specifically concerned. Where the charge is one of indirect misrepresentation of this sort the

case is unusually based on alterations that (a) a mark, get up., is distinctive of the claimants

goods exclusively that (b) the defendants has used the mark or get up or an imitation so close as

to likely deceive. It may be fallacious to treat the two allegations as propositions namely that the

defendant’s conduct is likely to lead to passing off.37 Nevertheless the claimant must establish on

the one hand that badge of trade concerned has been used for goods or a business that are not

his or at least that has no right to the badge, so as to be recommended by it.38

In Caterpillar Inc. v. Mehtab Ahmed39, the defendants had copied totally the trade marks ‘cat’

and ‘caterpillar’ which had become the world famous in relation to footwear of the plaintiffs and

its reputation had crossed over into India. Permanent injunction was granted.

In the instant case, the trademark “India Moonball Basketball League (MMBL)” is in its fourth

edition and gained popularity and a lot of television channels were trying to get broadcasting

rights for the same40. These “bouquet of rights”41 were subsequently bagged by Freesports Ltd.

Seeing this potential, Neptune Ltd. under the name of SuperDunk had provided minute-by-

minute details of the tournament and has also used the name of MMBL in its advertisements

along with pictures of prominent players involved in the tournament.42 Thus, the respondents

have used identical mark or rather have imitated the trademark which provides false

representation regarding the business relations .

(C) Dilution of Trademark

Dilution or association of an earlier trade mark by use of another mark is comparatively a new

area in India. It has been popular in the USA for the redress against dilution and has found its

way in the 1999Act both, as a ground of opposition registration of a later trademark and has been

recognized as a ground for infringement by such later trade mark. Dilution is different

37 Magnolia Metal v. Tanden Smelting (1900) 17 RPC 477 at 486, office cleaning v. Westminster (1946) 63 RPC 39 at 4238 Turmix, oertli v. bowman (1957) RPC 388 at 39739 2002 (25)PTC 438 (Del) at 44240 Factsheet para 4 at 1.41 Ibid42 Factsheet para 5, at 2.



proposition than deceptive or confusing similarity as it is related with lowering the value of

earlier trade mark. If the exclusivity of earlier trademark gets lowered, the mark is said to be

diluted. In India there has been a lot of impetus to doctrine of dilution. One of the results for

successful opposition under Sec. 11(1) is likelihood of associating later mark with the earlier

mark. If the public shall associate or are likely to associate subsequent or junior mark with the

earlier or senior mark, it is a new ground for opposition to registration as the Doctrine of

Dilution.

The thrust in dilution is not the confusion would result but the image of trade marking the minds

of public would be diluted irrespective of whether there is confusion in the public mind. It’s

underlying objective is that there is presumption that the relevant customers start associating the

trade mark with a new and different source which results in smearing or partially affecting the

descriptive link between trademark of the prior use and its goods i.e., the link between the mark

and the food is blurred. It amounts not only reducing the force or value of the trademark but also

it gradually tapers the commercial value of the trade mark slice by slice. Such kind of dilution is

not a fair trade practice that is expected in trade and commerce.43

The European court of justice in Cannon Kabushiki Kaisha v. MGM44, wherein Art. 4(1)(b) of

EC Directive which provides for “a likelihood of confusion on the part of the public, which

includes the likelihood of association with the earlier trademark”. The court explained the 3

circumstances which can be made out as a likelihood of association with the earlier mark:

1. when the public confuses the sign and the mark in question

2. when the public makes a connection between the proprietor of the sign and those of a

mark and confuses them

3. when the public considers the sign to be similar to the mark and perception of the sign

calls to mind the memory of the mark, although the two are not confused

In this case, the court held that “the result of their analogous semantic content is not itself a

sufficient ground for concluding that there is a likelihood of confusion.”

43 Caterpillar Inc. v. Mehtab Ahmed, 2002 (25) PTC 440 (Del )44 (1999) RPC 117



The IPAC and the courts show tendency not to allow the copy of or imitation of the get up or

trade dress, even when there is no phonetic similarity of the trade mark; even if the

trademarks are poles apart in the sound or spoken part of it and injunction it still issued.45

If a proprietor of a later mark or junior use structures his affairs in such a manner as to take

advantage of another mark, it is considered unfair and the advantage would always be deemed to

be without cause both under Section 11(2) and Section 29(4) of the 1999 Act. The Court, while

referring to section 29 (4) of the Trade Marks Act, 1999 (the Act), recognized the essentials for

dilution as under:

(1) The impugned mark must be identical or similar to the injured mark;

(2) The one claiming injury due to dilution must prove that her/his mark has a reputation in

India;

(3) The use of the impugned mark is without due cause;

(4) The use of the impugned mark (amounts to) taking unfair advantage of or is detrimental to,

the distinctive character or repute of the registered trade mark.

In Marage Studies v. Counter Feat Clothing Co. Ltd. case reported in (1991) FSR 145, where

Browne Wilkison V−C said that the so-called requirement of the law that there should be a

common field of activity is now discredited. The real question in each case is whether there is as

a result of misrepresentation a real likelihood of confusion or deception of the public and

consequent damage to the plaintiff. The focus is shifted from the external objective test of

making comparison of activities of parties to the state of mind of public in deciding whether it

will be confused. Further, in the case of Intel Corporation v. S. Ramanan Director and Anr.,

(Chennai High Court, OA 276 of 2002) it has been held that “simply because the name of the

respondents was registered earlier in point of time, it cannot be said that they have got prima

facie case. The trade name INTEL has been coined by the applicant and they have widely used

the same for a very long time. No doubt, the trade name of the respondents is INTELTOOLS;

but by this, it cannot be said that they are entitled to use the same. The products manufactured by

the applicant company are marketed under the trade name INTEL and if the same name is used

45 The case of Coalgate to ANCHOR tooth paste may be seen.



by the respondents also there is very possibility for deception and confusion in the minds of the

public. Apart from that, although the products manufactured by the respondents are a different

one from the products manufactured by the applicant, the trade public will be misled and the

product of the respondents would be misunderstood as the product of the applicant.”

Dilution of Trademark can take place by two mechanisms: Blurring and Tarnishment. Blurring

means erosion or watering done of “distinctiveness, uniqueness, effectiveness and prestigious

connotations of the trade mark.” It is to be noted that dilution by blurring happens upon

unauthorized use of famous mark for unrelated or dissimilar goods/ services. Tarnishment means

“weakening of a mark through unsavoury or unflattering associations.”

Whenever the nature of dilution, whether by blurring or tarnishment it is clear that proof of

actual dilution not just likelihood of dilution is required. However, to some extent, this

requirement of proof depends on whether the conflicting marks are identical or otherwise.

Plaintiff must prove dilution by blurring or tarnishment of non-identical trademark in order to

succeed and a mere claim that customers associate or likely to associate the junior marks with the

senior one would not suffice the actionable dilution. In Mosely v. Secret Catalogue Inc.46 (victors

secret and retail store victoria’s secret)the court observed that “at least where the marks at issue

are not identical the mere fact that consumers mentally associate the junior user’s mark with a

famous mark is not sufficient evidence to prove actual dilution to establish actionable dilution”

The clear identification of this holding is that where the marks are identical the mere fact that

customers mentally associate the juniors user’s mark with a famous mark could be sufficient to

establish dilution.

In the instant case, Neptune Ltd. under the name of SuperDunk had provided minute-by-minute

details of the tournament and has also used the name of MMBL (which is an earlier mark used to

represent tournaments launched by Moonshine47) in its advertisements along with pictures of

prominent players involved in the tournament.48 Thus, the marks issues are completely identical

and junior mark is seen as a clear imitation of the earlier one which makes a complete

association with the tournament. However, the rights with respect to broadcasting and other

46 537 us 418 (2003)47 Factsheet para 3 oat 1.48 Factsheet para 5, at 2.



bouquet of rights49 are vested with Freesports Ltd. by the appellant. Thus, respondents have

unauthorizely used the trademark MMBL by blurring the relation between the goods and the

mark in terms of business relationship. This has further caused confusion in the minds of

consumers also.

Further a dilution action is usually available where there is no likelihood of confusion in absence

of competition. It is applied when there is an erosion of the communication or advertising

function of a trademark.50 The advertising function of a mark is reflected in the ability of the

mark to call to mind the specific product and to envoke association of satisfaction and

desirability for that product. The damage inflicted on the advertising function results in its loss of

exclusivity.

In the instant case with the use of the trademark MMBL along with pictures of prominent players

involved in the tournament51 in the advertisements of SuperDunk launched by Neptune Ltd.

have caused a confusion in the minds of the consumers and further caused damage to

Moonshine Ltd. and Freesprots Ltd. thus causing a loss of exclusivity of the mark.

Thus, in light of the aforementioned reasons, it is humbly submitted that using the name of

MMBL in the advertisements of SuperDunk causes Trademark dilution.

49 Factsheet para 4 at 1.50 Fredrick W. M ostert, Famouse and well known trademarks, Buuterworths, 1997, 56; NS Gopalkrishnan & T.G. Agistha, Principles of IPR, Eastern Book Co. p. 513 1st Ed.(2009)51 Factsheet para 5, at 2.



PRAYER

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

humbly and respectfully requested that this Hon’ble Supreme Court of India to adjudge and

declare on behalf of Appellants that: declare on behalf of Appellants that:

1. There does lie a copyright protection in information emanating out of a match and the

match scores are not in public domain and thus can be protected.

2. Freesports should be allowed to seek equitable relief through tort of unfair competition

and thus Neptune is liable for unjust enrichment

3. Using the name of MMBL in the advertisements of SuperDunk causes Trademark

dilution of a well known trademark “MMBL” and thus this results in trademark

infringement.

4. Provide for a permanent injunction over SuperDunk from using any information

emanating out of MMBL and using the name of MMBL and photographs of its prominent

players in its advertisements.

The court may also be pleased to pass any other order, which this Hon’ble Court may deem

fit in light of justice, equity and good conscience. All of which is respectfully submitted on

behalf of

The Appellants

Sd/-

..............................

(Counsel for the “Appellants’”)


jm15-20 appellants

Documents

copyright act

delhi law house

universal law publishing

copyright law desk book

appellantsversusneptune

freesports mordor

criminal law journaldel

eastern law school