AN ANALYSIS ON PROTECTION OF FILM TITLES UNDER TRADEMARK LAW
Associate, சுரானா & சுரானா சர்வதேச வழக்கறிஞர்கள் அலுவலகம் (எஸ்.எஸ்.ஐ.ஏ)
Unlike William Shakespeare’s famous quote “What’s in a name? That which we call a rose by any other name would smell as sweet.” names and titles, especially in the entertainment industry have proven to be as important or unique, in line with that bestowed upon the script, the cast and crew or any other aspect of a work. With specific reference to the film industry, the title of a movie is what promotes and popularizes the work to reach the public and its audience, thus holding utmost importance comparative to any other part of a movie, as titles act as identifiers of a film. In this modern space where creators strive with utmost caution to protect their work, be it of any form and intend to prevent the unauthorized usage of even minute parts of their efforts, would the makers of a film not want to protect a frame that associates their work to the public and audience, which in turn generates revenue? The answer here is affirmative, leading us to other questions as to whether titles of films can be legally protected, if so how, under which law and what is the scope of the protection of the same under the Intellectual Property Laws in India, more specifically the Trademark and related legislations?
Above all these questions, one can simply ponder over as to why titles of film require protection and the simple answer to it is that, owing to the developments in technology, trade and commerce, we come across unauthorized usage and ill gaining of strenuous efforts of individuals irrespective of the field of business. As far as films are concerned, the goodwill associated to the particular film solely lies with the title as that directs to market recall. Now it can be stated that titles are the major contributors to commercial viability of a movie and the failure to protect the same would ultimately lead to monetary loss to the creators of the film. Another growing trend, especially in the Indian film industry, is the usage of a movie’s title, be it just the term or the frame as a whole on merchandise which are being purchased by public, which again widens the scope of monetization of the film by its makers. It is pertinent to mention here that, there have been films that have been trademarked for the sole purpose of monetizing the title, when it is used on merchandise products. One great example is the case of the Tamil film MERSAL[i], where the statement provided by the team of the film upon registering the trademark of the title made it to headlines, which mentioned that “If anybody uses the term Mersal for commercial purposes, a part of their revenue should be paid to the team as royalty. For example, if someone decides to come up with a Mersal bubblegum, they will be using our trademark and have to pay us royalty.[ii]”
ARE MOVIE TITLES TRADEMARKABLE SUBJECT MATTERS?
In today’s scenario, a mere public search in the Registry would show major production houses trademarking the titles of almost all of their creation. For example, titles such as Brahmastra, Ae Dil Hai Mushkil, Badrinath Ki Dulhania, Kesari, Drive, Drive 2, Drive 3, Dear Zindagi, 2 States, etc. have been applied for registration by Dharma Productions, most of which have been granted registrations. Similarly, the title for the film Kaala has been registered by Wunderbar Films. Many other film titles including Kaithi, Vikram Vedha, Befikre, The Grey Man, Veere Di Wedding, etc. have been applied for registrations. Thus the answer for the question as to, are titles trademarkable subject matters stays affirmative. But what makes them eligible to be trademarked?
No legislations have explicitly provided the factors to be considered or the eligibility criteria for a title to be considered trademarkable. According to Section 2(zb) of the Trademarks Act, 1999, a trade mark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours. Thus the basic requisites for a mark to be considered eligible of trademark protection can be concluded as follows:
- No conflicts with other trademarks
- Trademark distinctiveness
- Commercial usage
- The capability to be a source/ origin identifier
Now, when the titles are eligible to be registered as a trademark, it should fall under the scope of some specific class. According to the NICE Classification[iii], film titles fall under the scope of Class 41[iv] that identifies a number of services including entertainment, under Class 9[v] in relation to storage devices which specifies apparatus for recording, transmission or reproduction of sound or image and under other relevant class. For instance, if the title of the film is being used on clothing, shall be registered under Class 25[vi], stationery items under Class 16[vii], etc. based on the purpose of usage of the mark.
Films shall be classified on various aspects and as far as trademarks are concerned, it shall be mainly classified on the basis of its type- Single film or Series film, according to the case Kanungo Media (P) Ltd. v. RGV Film Factory[viii], the brief facts of which is elaborated in the latter portion of this article, films shall be classified as Single and Series based on which the registration of its titles as trademarks shall be examined. As the name suggests, Single films are those which does not have any prequel or sequel to it. It basically cannot be associated to any other related work. Whereas in the case of Series film, the same has a prequel or sequel with which it shall be associated. For example, movies such as Harry Potter, the Dhoom series, Kanchana series all shall be associated to its prequels and sequels whereas movies such as Mersal, 2 States, Dear Zindagi, etc. shall be concluded as Single films owing to the fact that there are no following associated parts to the films. But what difference does such a classification make?
According to the judgment, “it is easy to give trademark protection to such titles of series of literary work etc. That is not to say that titles of single literary work do not enjoy trademark protection, but in order to become entitled to this protection, it is necessary to prove that such a title has acquired secondary meaning[ix]”. Thus, it can be concluded that the following factors ought to be considered before a Single film’s title is granted registration:
- Duration of usage to understand if the audience and general public associate the title to that particular film and if there is any scope of confusion.
- Expenses incurred on advertisement & promotion
- Worth of the movie judged based on viewership and sales figures.
But in the case of a Series film, it is natural that the title would automatically refer to its prequel. For instance, in the case of the movie Dhoom 2, when the public hear or see the title, they automatically associate it to the previous part of the film. Thus, it can be concluded that it has already attained and established secondary significance, which makes it easier to get the title registered. An excerpt from the judgment quoting McCarthy explains the same “The law of literary titles is unique in one important respect. That is, the courts have given trademark protection to literary titles of one-shot, single works only upon a showing of secondary meaning, even though the title is not descriptive of the contents of the work. Regardless of the arbitrary or fanciful nature of the title as compared with the contents of the single book, play, movie, record, etc., secondary meaning is required. Thus, unlike ordinary marks, literary titles of single works which are inherently distinctive are not accorded immediate protection, absent proof of secondary meaning and consumer recognition”.
With regards to the brief facts of the case, the court laid down certain factors to be considered or guidelines in relation to registration of film titles as trademarks. The Plaintiff approached the Court for permanent injunction, passing off, compensation and damages in relation to the Bengali film ‘Nishabd’. The Plaintiff had produced the film but due to financial issues the same could not be released. Later a film with the same title was produced by the Defendant following which an action for infringement was brought against the Defendant, Mr. Ram Gopal Verma. The Plaintiff claimed that though the film was not streamed publically for commercial purposes, it was screened in various film festivals, which also won a number of awards and certifications. The Defendant in turn claimed that his film was ready for commercial release and that a huge amount was spent on advertisement and for promotional purposes. Further, it was also claimed that the Plaintiff had approached the Court years later after the knowledge of the Defendant’s production of the film with the title ‘Nishabd’.
The court was of the opinion that there was silence on the part of the Plaintiff after knowledge of the Defendant’s film and that there has been considerable promotional activities undertaken by the Defendant in the meantime. Further when the rival titles are compared, the one of the Plaintiff appeared to be blurred and the Defendant’s was known to the audience and public. The court further opined that in case of unregistered title the following ingredients are to be proved in order to triumph in an injunction suit:
i) Title has acquired the secondary meaning;
ii) There is likelihood of confusion of source, affiliation, sponsorship or connection of potential buyers/audience/viewers.
Thus according to such considerations, the word “Nishabd” could not be associated to the Plaintiff and failed to achieve secondary meaning. Thus, held the case in favor of the Defendant. Thus it can be concluded that secondary meaning and association of a title to the film is the fundamental requirement for it to qualify as a trademarkable subject matter. Another question that arises here is that, when such conflicts in titles takes place, who is responsible for the establishment of secondary significance. It can be simply understood that the burden of proof to establish the same lies on the part of the Plaintiff.
THE CURIOUS CASE OF “KANK”:
This case clearly elaborates the importance of timely action against infringement and answers the question as to does being a prior user really matter. The Plaintiff, under Class 41 had applied for the registration of the mark ‘Kabhe Alvida Naa Kehna[x]’ which is the title of the film produced by him which was published in the Trademarks Journal in February 2006. Following which the Plaintiff came across media reports which stated that Mr. Karan Johar, the Defendant herein was planning to use the same mark as the title for his upcoming film. But the Plaintiff did not initiate a legal action against infringement at that point as he could not rely on such media reports alone for the purpose of initiating action. Later after the announcement of the Defendant’s title a legal notice was sent to the Defendant also informing the Registry about the usage of the Plaintiff’s trademark. The Plaintiff also claims that about 40% of the shooting of the movie had been completed. Delay in approaching the court was considered as a major aspect and a comparison between the marks including factors such as advertisement, promotion and the expenses directed towards the same by both the parties, the association of the title by the audience to KJo’s film, the court concluded that the film title of the Defendant had acquired secondary significance.
Some other interesting cases in relation to infringement and passing off of titles of films are as follows:
Harry Potter v. Hari Puttar[xi]:
Would a literate or a semi-literate viewer be able to differentiate and distinctively identify the above mentioned titles? Is there phonetic or verbal similarities between the term HARRY POTTER and HARI PUTTAR? Well, the opinion of the Delhi High Court is 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” Warner Bros had approached the Court for an interim order restraining the Defendants from releasing the Punjabi film titled HARI PUTTAR- COMEDY OF TERRORS, claiming that the title was phonetically and verbally similar to their prior registered mark HARRY POTTER. The court again in this case viewed the delay of 3 months in initiating action very seriously.
Nokia v. Mr. Nokia[xii] :
A telugu film titled Mr. Nokia was challenged by the telecommunication giant Nokia claiming that the title was infringing its prior used and registered mark NOKIA as there existed phonetic and verbal similarities between the title and the Plaintiff’s mark. The court also opined the same and stated that there were similarities between the rival marks in question. The court further directed the makers of the film to alter their title following which it was changed to Mr. Nookaya Reloaded.
THE SHOLAY BATTLE:
The producers of the film initiated a suit for infringement against the Defendants for registering a domain name containing the term SHOLAY, publishing magazines under the name, printing the same on merchandise and publicly exhibiting the iconic scenes from the film. The Plaintiffs were also the registered proprietors of the mark SHOLAY in various classes including class 3, 9, 14, 16, 18, 21, 25, 28, 29, 30 and 34. The Defendants accept the fact that they have been using the mark SHOLAY and their contentions justifying the same are as follows:
- Film titles are not entitled to protection.
- There is no probability of confusion on the internet and that ‘SHOLAY’ is a dictionary word[xiii].
The court was of the opinion that the word/ mark SHOLAY had carved a space for itself not only through theaters but also by its online presence. It also acknowledged the fact that the title shall be directly associated to the 50 year old movie. The court opined that “the word ‘SHOLAY’, is the title of an iconic film, and consequently, as a mark having been associated with the film, produced and now vesting in the Plaintiffs, cannot be held to be devoid of protection. Certain films cross the boundaries of just being ordinary words and the title of the film ‘SHOLAY’ is one of them. Titles and films are capable of being recognized under trademark law and in India ‘SHOLAY’ would be a classic example of such a case[xiv]”. Thus, the court restricted the Defendants from using any images or scenes from the film in any form including on merchandise and barred the sale of the same. The Court awarded damages of Rs. 25 lakh to the Plaintiff (the Producers) and specifically noted that titles of films are capable of being recognized under the trademark law.
FILM TITLES & COPYRIGHTS:
From the above mentioned cases, it is clearly understood that Film titles can be protected under the trademark law. When it comes to films and IP, one would naturally associate Copyright to movies than trademarks because of the widely known fact that movies are protectable subject matter under Copyright laws. But is it the same case as far as titles of films are concerned? If a film as a whole is protected under Copyright can the holder claim rights over just the title of the film separately?
Firstly, the protectable subject matter under Copyright law can be classified as literary, dramatic, musical and artistic works. From a bare reading of such classifications, it can be understood that literary work means works which are original, in print or writing, which includes a literary skill. Work of drama, not including cinematograph film falls under the scope of dramatic work and musical as the name suggests protects works related to music. Artistic works includes works of art such as paintings, drawings, sculptures, etc. As stated earlier films shall be copyrighted, but what does copyrighting a particular film grant to the holder of such copyright? According to Section 14 of the Copyright Act, 1957, Copyright is the exclusive right to do or authorize someone to do any of the acts related to the original works. One important term to be noticed here is- ORIGINAL, any work to be copyrighted under the act ought to qualify as an original work and one major question that follows is, are titles of films original works?
We have seen a lot of films holding titles which are either commonly used terms or well-known words which can be easily remembered or creates a spark in the minds of the audience. For instance, almost all titles mentioned throughout this article including the titles Mersal, Kaithi, Befikre, Bhramastra, etc. are commonly used or known terms. Thus, can these titles claim to be original works? The Supreme Court answers the question and opines that “The mere use of common words cannot qualify for being described as ‘literary’, thus the title in question cannot be considered to be a ‘literary work’ and, hence, no copyright can be said to subsist in it, vide Section 13; nor can a criminal complaint for infringement be said to be tenable on such basis[xv]” in the case of Krishika Lulla and Ors. v. Shyam Vithalrao Devkatta and Ors[xvi]. Should we thus conclude that titles of films cannot be copyrighted or that film titles are not copyrightable subject matter?
In the case of Gen X Entertainment Ltd. v. Purple Haze Motion Pictures Pvt. Ltd. and Ors., the plaintiff approached the court seeking an injunction for the film “EMOTIONAL ATYACHAAR” claiming that the same was identical to their registered title which is also a trademark “EMOTIONAL ATYACHAAR”. The Court again emphasized that a title alone of a literary work cannot be protected under copyright law as a literary work and copying of the title alone leaving out other aspects such as plot, script, characters, etc. is not the subject of copyright law. A number makers of films including Desi Boyz, Mohenjadaro, etc. have approached the court claiming that they have copyright protection for the film as a whole and usage of the title of the film amounts to infringement and the contentions have been rejected by the court, as it is opined that the title of a film is only a synopsis of its work and is incomplete. Secondly, most titles being common words of expression, and the fact that common terms cannot be considered as original work.
Thus, it can be concluded that titles of films which have been copyrighted cannot be claimed to have separate copyright protection. Alternatively, to protect a film’s title as a whole as a copyright, it can be protected as an artistic work, provided it satisfies the conditions to be classified as an artistic work (including originality of work). Thus, it can be concluded that the best way to protect the title of a movie is to trademark the same and to ensure maximum protection the same shall be protected as an artistic work under Copyright laws.
The title of a film is as important as any other aspect of a film, thus can be considered as one of the most valuable part of a film as it can be considered as a bridge which connects the viewers/ audience to the film. In an era where titles are given prominence and are announced with first look posters, the amount of effort undertaken to popularize the same is notably huge, clearly highlights as to how important it is to protect the same. Another important body involved in the registration of titles of films includes the duly registered film Associations. But if questioned, are such registrations with film Associations sufficient to protect titles as a whole, the answer remains negative. Thus it is pertinent to reiterate that for the purpose of establishing ownership of titles of movies, the same ought to be registered under IP Law, which statutorily grants exclusive rights to the creators to use and enjoy the same, which in turn would sternly ensure prevention of its infringement or unauthorized use, by all or any under the sun.
[i]Vijay’s Mersal first south Indian film to get trademarked, Aug 29, 2017, https://www.hindustantimes.com/regional-movies/vijay-s-mersal-first-south-indian-film-to-get-trademarked/story-0oD9iNJeRyuD2YxlGoAY7J.html
[ii]Mersal: A Trademark Kollywood Masala Movie, Sep 28, 2017, https://spicyip.com/2017/09/mersal-a-trademark-kollywood-masala-movie.html
[iv] Class 41 includes mainly services consisting of all forms of education or training, services having the basic aim of the entertainment, amusement or recreation of people, as well as the presentation of works of visual art or literature to the public for cultural or educational purposes.
[v] Class 9 includes mainly apparatus and instruments for scientific or research purposes, audiovisual and information technology equipment, as well as safety and life-saving equipment.
[vi] Class 25 includes mainly clothing, footwear and headwear for human beings
[vii] Class 16 includes mainly paper, cardboard and certain goods made of those materials, as well as office requisites
[viii] 138 (2007) DLT 312
[xi] Warner Bros. Entertainment Inc. and Anr. Vs. Harinder Kohli and Ors., 155 (2008) DLT 56, https://indiancaselaw.in/warner-bros-entertainment-inc-and-anr-vs-harinder-kohli-and-ors/
[xiii] SHOLAY MEDIA ENTERTAINMENT AND ANR v. YOGESH PATEL & ORS., CS (COMM) 8/2016 & CRLM 1918/2002
[xiv] Delhi HC recognises trade mark rights in film titles: End of 20-year old SHOLAY battle, May 30, 2022, https://www.theippress.com/2022/05/30/delhi-hc-recognises-trade-mark-rights-in-film-titles-end-of-20-year-old-sholay-battle/