Editor's Column

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This Blog is written by Prakriti Dadsena | Column Editor

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INTRODUCTION

Undoubtedly, the name or title is one of the most important aspects of a film that creates a distinct identity among audiences. The filmmakers around the globe give a lot of thought and significance in choosing a specific distinct title or name for their film to make the film famous and become a blockbuster among all audience groups. This association of title to a film brings interested audiences to watch the film in theaters and to associate it with producers, making it commercially viable. When selecting a film title, it must be chosen with the utmost care, caution, and deliberate choice of intention that should be related to the audience’s mind, taste, and interest. It’s interesting to know that film titles cannot be copyrighted to protect film titles. Protection under trademark law is the resort to which filmmakers look. That said, achieving such protection isn’t that simple. Since it cannot be denied that a “Title” plays an important role in recognizing any cinematographic work, it is relevant to register title ownership and validity with Trademark Registry. Registration grants the exclusive right to use the title and prevent others from unauthorized use or adoption or infringement of the same[1]. The Indian Film Industry, also popularly called the Bollywood, has seen stupendous growth in revenue collection in recent years as it has delivered one of the highest-grossing films of recent times and is steadily moving forward with a current growth rate of 20 percent per year. It has become one of the world-class film producers. In 2001, India’s government granted Bollywood the status of “Industry,” which only helped attract some high-prolific global investors to invest in the Indian Film Industry, including 20th Century Fox, Viacom Motion Pictures, Warner Brothers, etc. With plenty of films releasing each year, a lot of controversies continues to surface on film titles. In such cases, securing various aspects of a film by Intellectual Property proves advantageous to them.[2]

Under the Indian Trademark Act, 1999, a film’s title can be registered under Class 41[3] of the Fourth Schedule of Trademark Rules, 2001. In India, major production houses apply for Class 41 film titles and labels that include a number of services, including “entertainment.” On the other hand, these applications are also filed in Class 9[4] as films can also be viewed on storage devices such as DVDs providing, among other goods, “apparatus for recording, transmitting or reproducing sound or images” It should be noted that the title of a film is protected in Trademark Law under two conditions:–

1) Film Title Series–This film title series Types of film titles include Dhoom franchise viz. Dhoom 2, Dhoom 3.

2) Single Film Title–A single film title must pass certain qualifications to acquire mark protection and registration.

To gain trademark protection for a single film title, a secondary definition must have been acquired. The secondary definition means,’ the identification of the title of a film with a certain source, production house, etc. by a filmgoer or audience.’ Before a film is released in theatres, it goes through pre-release advertisement and other promotional activities that are necessary for the protection of a trademark under the provisional clause referred to in section 9(1) of the Trademark Act, 1999.[5]

Continued use and its duration; expenditure on advertising & promotion; the number of viewers; revenue collection of the film; the closeness of the geographical and product markets of the complainant and defendant may be considered by the court in deciding the secondary meaning of the film title.

Under the Indian Trademarks Act (1999) film titles qualify as’ service signs’ instead of trademarks. It is always advisable to sign a film title as a service mark for exclusive rights and title protection. Trademark registration is prima facie recognition of the same in legal proceedings.

PROTECTING “SONG TITLE” IN INDIAN UNDER TRADEMARK ACT, 1999

The trademark song title in India has been unprecedented for many years. The first trademark protection song in India is “Why this Kolaveri Di?[6]” Viral blockbuster song. This Tamil-English mix song became an international hit by youtube, facebook, and twitter as it received 4.10 million views within 4 days of its official release. Sony Music Entertainment India one of India’s largest generating music company recorded this song and filed for trademark registration (Application No. 2246257, Dec. 8, 2011)”Why this Kolaveri Di?[7]“(Song’s first line). A trademark application was sought for the protection of song lyrics under the Class 9 and Class 41 logo. This helped Sony to launch various products such as compact disks, cassettes, and SD cards, including film and non-film entertainment content and discovery of talented programs called “Why this Kolaveri Di” and also prohibited or limited others from using it. This song, written and sung by Actor Dhanush for Tamil film ‘ 3,’ also shows how viral marketing can change the world within days of Sony Music’s digital release in November’s second week.[8] When the original song is released, a never-before 20 million hits on YouTube, tens of different versions of the song come up every day across the globe.

Salman Khan’s film “Jai Ho”[9] was released in January 2014, giving rise to a legal issues for the title of his film. The internationally recognized blockbuster song “Jai Ho” composed by A.R. Rahman from Slumdog Millionaire (directed by Boyle) made A.R. Rahman marked the title “Jai Ho,” for which he received an Oscar and Grammy award for best song composition. The issue raised in this case about trademarking a song title is:-Who is entitled to register a song title? Is it whether the song’s copyright owner or the first person to register the title? The response is the first person to register the song’s title is entitled to trademark registration and protection under the Indian trademark act. Although a trademark registry has never issued a song title in India, trademarks have been issued for similar items such as advertising punch lines, quotes, and commercial TV jingles.

For example, for their well-known phrases JUST DO IT, Nike International Ltd. obtained an Indian registration. Similarly, the owner of a trademark registration slogan “Writes Smoother, Darker. A competitor, Hindustan Pencils Pvt, was able to stop the infringing use of his slogan by Suneja Products clone. Indian trademark law does not allow trademark registration if the mark remains unused for five years. Therefore, if the claimant does not wish to use the song/title label for certain goods and services but files an application to deter others from receiving a certificate, this could be considered unfair under the Trade Marks Act, 1999. If the party wishes to use a film title as a mark in connection with merchandise, the title may be licensed to protect the merchant’s mark identity. Example: Di Kolaveri. In a very short time, it achieved extensive popularity in India. According to Wikipedia, within a week of the official release of this song’s video, it received over 3.5 million views on YouTube, over 1 million shares on Facebook, and extensive Twitter exposure; became the top downloaded song on mobile devices within the first 18 days of release; and was the first Tamil film song to premiere on MTV India. This extensive exposure suggests that even within a very short time, a song’s title has secondary meaning.

PROTECTING “SONG TITLE” IN US

In the US, unless you demonstrate otherwise that a particular band song is super-hit, a trademark cannot be obtained. For example, “Stand by your man” can be marked as it was done publicly two million times. “Better Class of Losers” a country song cannot be marked as it is performed only 47,000 times in Tree Publishing Co. v. Bros. Warner[10]. Records, the. In EMI Catalog Partnership v. Hill Holiday[11], Connors, the court administered a poll in which Benny Goodman’s “Sing, Sing, Sing” was awarded the 100 most important musical works of the 20th century that gained label rights for a song title. A trademark right in a song always depends on how popular it is.

PROTECTING “MOVIE TITLE” IN INDIAN UNDER TRADEMARK ACT, 1999

Apart from applying for the registration of a film title under the Indian Trademarks Act, there are a variety of industry organizations where filmmakers seek to protect their film titles. The Indian Motion Picture Producers Association (IMPPA), the Association of Motion Pictures and Television Producers (AMPTPP) and the Indian Film and Television Producers Guild, the Film Writers ‘ Association and the Western India Film Producers Association (WIFPA) are associations that play a major role in protecting the commercial interest of films. Producers and film writers can apply for membership of these associations, enabling them to register their titles and scripts with these associations. To check that the same or deceptively similar title was registered with another association, the association usually checks this with others before registering a title. Nevertheless, this registration with these associations does not affect any court proceedings. It can only help prove whether or not you’re a previous title adopter.

In the case of Bikramjeet Singh v. Anil Kapoor[12] an Indian actor and producer, Anil Kapoor had registered the title “shortkut” for his movie – with the IMPPA. Later, Bikramjeet Singh complained about this issue with the IMPPA, stating that he has already got this title registered with IMPPA much before Anil Kapoor. Eventually, Anil Kapoor had to finally withdraw the original title of his movie and amended it to “Shortkut- The Con Is On”.

In Thoda Magic v. Thoda Life[13]– Yash Raj Films had got their film title “Thoda Pyaar, Thoda Magic” registered in the Indian Motion Picture Producers Association (IMPPA). Later on, Indian movie actor/producer Sahil Chadha opposed the makers of the earlier mentioned film as he alleged it to be confusingly similar to his movie “Thoda Magic V. Thoda Life”. Yash Raj Films asserted protection over the said title as it was already registered with the Film and Television Producers’ Guild of India. Sahil Chadha later lodged a complaint with IMPAA. Eventually, both the movies were released without any change in their title.

There have been a number of cases in India of trademark disputes related to movie titles that can be studied to have a better understanding of this issue.

Biswaroop roy choudhary v. Karan johar[14]

In this case, Biswaroop Roy Choudhary had applied for registration of the title ‘Kabhi Alvida Naa Kehna’ under Class 41 of the Trademarks Act, 1999 for movies. The same trademark application had been published in the Indian Trademark Journal. The movie’s inauguration ceremony had also taken place. About 40% of the shooting of the movie had also been completed. Karan Johar later used the name for his movie and produced it. This prompted Biswaroop Roy Choudhary to bring an action of infringement against Karan Johar. The High Court has held that a movie title can be registered as a trademark provided they have achieved secondary meaning. However, in this case, due to delay in filing the suit by Biswaroop Roy Choudhary, the Delhi High Court decided the case in favor of Karan Johar. The Honorable High Court after considering the argument of Karan Johar, that a lot of money and time has been spent on the movie which has made it well known amongst people and changing the name of the movie could be detrimental to him and commercially non-viable, allowed the case in his favor.

Nishabd Case

In another case, a similar battle started when the much talked about a movie starring Amitabh Bachhan and Jiah Khan was released. The title of the movie was ‘Nishabd’ and was made by Ram Gopal Verma, one of the most successful filmmakers in the Industry. This issue was also handled by the Delhi High Court. The case is as follows.

Kanungo Media Pvt. Ltd. v. Rgv film factory[15]

The Kanungo Media Pvt. Ltd. had produced a Bengali movie named ‘Nishabd’. However, due to some financial crunch, the movie could not be released commercially. Later on, Ram Gopal Verma produced a Hindi movie with the same name ‘Nishabd’. Hence, an infringement action was brought against Ram Gopal Verma. The Delhi High Court held that the movie made by Kanungo Media Pvt. Ltd. was not commercially released and hence was not that popular among the public. As per the court, the word “Nishabd” could not achieve secondary meaning. Therefore, the Honorable Court held the case in favor of RGV Film Factory, upholding its decision in Biswaroop Roy Choudhary case.

It is to be noted that both the above judgments of the Delhi High Court were denounced on the point that, “they defeat the basic purpose of Trademarks. Trademarks Act states that for a trademark to be protected it should have a distinctive character. Moreover, generic terms cannot be protected as trademarks. Movie names usually consist of generic terms and phrases. Hence, such movie names cannot be protected as trademarks. Only those movie names which have a distinctive character and which do not contain generic terms can be registered.”

The case of Kanungo Media (P) Ltd v. RGV Film Factory[16] proved important in establishing the position of the film’s single title and its protection under the Trademarks Act. In this case, the court laid down certain guidelines regarding the protection of film titles. As stated earlier, in order to get the protection of film titles, it must be proved that a wide reputation of such title is prevalent among the public at the large, and the secondary meaning of the title is acquired. However, the burden of proof lies on the plaintiff to establish that the title of the film has acquired a secondary meaning and the court concluded by further stating that the trademark law with respect to protecting the title of a movie in India is similar to the US law of trademark. “Nishabd” a Bengali film produced by Kanungo Media Pvt. Ltd won many awards. Due to insufficient funds, it could go on the floors and hence was not popular among the public. The Court held that since the movie was not popular among the general masses, the title “Nishabd” could not acquire any secondary meaning. The Court further held that ‘Only when a film’s title has a secondary meaning, the trademark can be protected and registered’ and ultimately favored RGV Film Factory. This case proved that the secondary meaning of a film title is a fundamental requirement and showed that even though a film title is registered it cannot be guaranteed complete protection unless the title has acquired a secondary meaning.

Sholay Case[17]

The Sholay case[18] was a prime example where registration of title as a trademark proved to be beneficial for its makers. In 2007, Sascha Sippy, grandson of GP Sippy (producer of ‘Sholay’), filed a copyright and trademark infringement case against Ram Gopal Varma in the Delhi High Court. Ram Gopal Varma had not only produced the film by the name of ‘Ram Gopal Varma Ke Sholay’, but also used the name of the characters from the original movie, Sholay. It is notable that Sholay is one of the most popular and highest-grossing Indian movies of all time and it would be justifiable to say that the public associates the title ‘Sholay’ only with the original makers of the movie, thus giving it a secondary meaning. The makers of ‘Sholay’ had not only obtained registration for the title but also for the names of the characters of the movie, namely, ‘Gabbar’ and ‘Gabbar Singh’. Coming back to the legal battle, the infamous controversy carried on for months. However, eventually, Varma agreed to alter his movie’s title to ‘Ram Gopal Varma Ke Aag’ and also to not use any of the character names from the original movie.

Hari Puttar Case

The renowned multinational moviemakers, Warner Bros., had moved the Delhi High Court for an interim restraining order on the release of the Punjabi movie, ‘Hari Puttar: A Comedy of Terrors” alleging that the producers of the Punjabi movie were “guilty of infringing the Warner Brothers Trademarks” due to the phonetic and visual similarity of its title to that of the Harry Potter franchise. The Delhi High Court, however, dismissed the application stating that “a literate or semi-literate viewer could easily discern the two movies on the principle even if there is any structural or phonetic similarity between the competing marks, the real test to determine deceptive similarity is whether the targeted audience is able to discern the difference between the marks”. The Honorable Court also stated that there has been a three months delay in filing the suit on the part of Warner Bros., and cited the principle that “if the plaintiffs stood by knowingly and let the defendants build up their business or venture, then the plaintiffs would be estopped by their acquiescence from claiming equitable relief”. This case also recapitulated that the judicial system in India has been mostly intolerant towards laches and delay in approaching the Court in case of film litigations.

Nokia Corporation v. Movie express[19]

Another interesting issue related to movie titles also came up before the Delhi High Court. Shri Shailendra Cinemas, a Telangana based production house had produced a Telugu action thriller named “Mr. Nookayya” in 2012 which was directed by Anil Kanneganti and the producer being D. S. Rao. It is to be noted that this film was earlier titled “Mr. Nokia and Mr. No Keyia”. When the movie was released worldwide on March 8, 2012, it ran into legal trouble when the telecommunication giant Nokia Inc. sued the filmmakers of “Mr.Nookayya” for infringement of its registered trademark and demanded an interim injunction and ex parte order against the defendants by filing an application in the Delhi High Court. Nokia alleged that “Mr. Nokia” was deceptively and phonetically similar to their registered trademark of the company name “Nokia”. The telecommunication company was able to attain a favorable order from the Court that directed the film producers of “Mr. Nokia” to alter the title of their movie to “Mr. Nookayya Reloaded”. This forced the filmmakers to release an edited version of the movie worldwide just after nine days of the release of the original movie.

Humara Bajaj Case

In 2013, the Indian auto giant Bajaj Auto filed a trademark infringement case against actor and producer John Abraham’s film production house J.A. Entertainment Pvt. Ltd. The case was filed inconsequent to the announcement of an upcoming movie by J.A. Entertainment titled “Humara Bajaj”. The movie producers contended that the title of the movie is derived from the story of the film which was centered on the life of the protagonist in the movie named ‘Sanjay Bajaj’. It is to be noted that Bajaj Auto Ltd. has been consistently using the tagline “Humara Bajaj” as a part of its promotional campaigns in relation to its much popular scooter Bajaj Chetak. Even though the production of Bajaj Chetak stopped in 2009, Bajaj Auto continued using the tagline in its corporate campaigns. As a result, when the automobile giant came to know about the movie title to be confusingly and deceptively similar to their highly commercial tagline, it prompted them to file for a permanent injunction against the production house to stop using the same title for their movie. On Sep 21st, 2013, the Bombay High Court in its order restrained the defendants from using the mark “Bajaj” and “Hamara Bajaj” anywhere in relation to the proposed film as well as its usage in respect to the cinematographic movie production in any manner, hence, granting a permanent injunction against J.A. Entertainment Pvt. Limited from using ‘Hamara Bajaj’ as a movie title. The Court was of the opinion that the title “Humara Bajaj” is used in this case in the descriptive sense and not as a ‘trademark’ as it helps in describing the movie. According to the Court, the goal of trademark law is to prevent confusion, and not to confuse the consumer about the two same titles.

PROTECTING “MOVIE TITLE” IN US

The interests of the American motion picture, television industries, and home videos are safeguarded by the Motion Picture Association of America (MPAA). Since its inception in 1922, it has been playing an important part in protecting the commercial interest of the moviemakers both in the US and internationally. Registering a film title with the United States Patents and Trademark Office (USPTO) is available with respect to movie titles; however, the protection granted is not absolute.

The fundamental requirement of the USPTO with regard to registration of titles as trademarks requires that the cinematographic work represented by the title is not a single film, television show, or book. It is to be noted that in the US a used mark with respect to movie titles has better protection than a proposed mark. Further, a portion of the title of any single creative work is registrable only if the applicant can show that the portion of the title meets the following criteria:

1) Is used on a series of works;

2) A separate commercial impression is created by the portion of the title; and

3) That portion has been promoted as a mark for the series.

If we have a comparison between the law related to trademark protection of movie titles in India and the U.S., we can infer that even a single literary work is eligible to get trademark protection, however, the same may cause confusion in the mind of the consumer as it can result into overlapping. This issue is dealt strictly by USPTO though, which treats all single title works as inherently descriptive unless these have been widely promoted resulting into great recognition.

CONCLUSION

As the famous saying goes, the first impression is the last impression when it comes to film, what’s better for the first impression than a striking word. A title that is memorable and special finds an immediate place in the mind of the viewer. It is therefore one of the critical assets of the film, which draws the attention of the public. This has always been the topic of controversy in the film industry.

Copyright covers the creation of an idea, but a mere idea cannot be protected by the Copyright Act. Titles of books, songs, films, and other copyrightable works tend to be protected by copyright due to their nature of work, but are not due to the lack of creativity required. In addition, copyright preserves the dignity of authorship’s artistic works, and titles do not deserve such rights. This has now been given the status of a settled principle of jurisprudence under Indian law.

In my opinion, a new dimension is liberalized by analyzing the above judgments giving a new interpretation of the Trademarks Act, 1999. The judiciary should be more equipped to deal with such issues relating to India’s entertainment industry and trademark protection, and should also provide appropriate solutions to the issues. Similarly, the slack’s originality sample of the producer applies in the case of song title and lyrics. This should be avoided and a fair compromise should be offered to artists and filmmakers who wanted to protect their work as a trademark because any new concept or idea for a song or a film is directly associated in the minds of the public and trademarks plays a key role in creating brand business products, sound systems by getting music closer.

REFERENCES

[1] Michigan Law Review, Vol. 103, No. 8, 2005 Survey of Books Relating to the Law (Aug., 2005), pp. 2020-2072, accessed on 24.08.2020

[2] Article by Lucy Rana and Pooja Thakur, India: Film Titles and Their Protection, S.S. Rana & Co. Advocateshttp://www.mondaq.com/india/x/455412/Trademark/Film Titles And Their Protection.

[3] Trademark Class 41 pertains to education; providing of training; entertainment; sporting and cultural activities.

[4] Trademark Class 9 pertains to computers and scientific devices.

[5] The trademarks—(a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person
(b) which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service;
(c) which consist exclusively of marks or indications which have become customary in the current language or in the bonafide and established practices of the trade, shall not be registered: Provided that a trademark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trademark.

[6] Vishal Dutta, Sony Music Entertainment files trademark for “Kolaveri Di”, The Economic Times, accessed on 24.08.2020.

[7] Rahul Dev, “Why this Kolaveri Di” Song Lyrics Filed by Sony Music Entertainment India For Trademark Protection in India, https://techpatents.wordpress.com/2012/01/18/kolaveri-di-song-lyrics-trademark-filed-by-sony-slogans-taglines-branding-trademarks-and-viral-marketing-fb, accessed on 25.08.2020.

[8] Anchita Sharma, Trademarks: Case Study – Trademark For Film Titles, accessed on 25.08.2020.

[9] Mehul S Thakkar, Who’s Jai Ho’ is it? The Times of India Entertainment (Mumbai Mirror), accessed on 25.08.2020.

[10] 785 F. Supp. 1272 (M.D Tenn. 1991).

[11] U.S. App. LEXIS 30761 (2nd Cir. 2000).

[12] (CS (OS) 276/2008).

[13] (CS (OS) 266/2008 Delhi HC).

[14] 131 (2006) DLT 458.

[15] 2007(34) PTC 591(Del).

[16] In the Indian film industry titles are obtained from regional film trade associations that maintain records and reserve titles at the request of producers. In the present case, the Delhi High Court addressed the question of whether the title of a literary work can be protected under the Copyright Act 1957 and, if not, whether trademark principles can be used to protect it.

[17] 223(2015) DLT 152

[18] Sholay Media Entertainment pvt ltd. & ors v. Parag shangavi & ors.

[19] CS(OS) 286/2012