Madras High Court restrains Lyca Productions from using the title ‘Karu’ for its film [READ ORDER]

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In a suit filed by J. Manimaran (proprietor of M/s. J.S. Screens), the Madras High Court vide its order dated February 19, 2018 restrained M/s. Lyca Productions from using the title ‘Karu’ with any other suffix or prefix or other word in connection to this title, pending disposal of the suit. [Read order here]

The Court observed that ‘Incidentally / Ironically, ‘KARU’ in Tamil in the abstract / metaphysical sense translates to mean ‘theme’. However, for a man of science translates to mean ‘foetus’.

The plaintiff’s case was that he has been making a Tamil cinematographic film with title ‘KARU’ from 2013 and that it is in the final stage (almost 90% of the film has been finished) and the first defendant has commenced making a Tamil film with the same title ‘KARU’ in 2017. The Plaintiff contended that it has registered the title ‘KARU’ with third defendant i.e. Film and Television Producers Guild of South India in 2011 itself and such registration is subsisting. The Plaintiff claimed that he came to know some time in May 2017 that the first defendant is intending to make / is making a Tamil film with the same title ‘KARU’.

The Plaintiff summarized its submissions as under:

(i)There is a trade practice regarding registration of title for Tamil movies (to be noted, this trade practice has been alluded to supra);

(ii)Copyright does exist in a title to a movie also and no registration is required to exercise or enforce such copyright;

(iii)The plaintiff’s movie is 90% complete and can be released very shortly (to be noted, the plaintiff has got Censor Board certificate on 11.8.2017 for its movie ‘KARU’ for the teaser);

(iv)While the plaintiff has registered and got approval for his film from third defendant Guild on 28.9.2011 itself (to be noted, the Executive committee registered and approved the title of plaintiff on 28.9.2011 and it was communicated vide proceedings/certificate dated 30.9.2011 and for the sake of uniformity, the date of registration of plaintiff’s title ‘KARU’ is hereinafter referred to as 28.9.2011) , the first defendant has admittedly got registration from the second defendant Council at best only on 26.4.2017. (To be noted, first defendant got registration and approval of title from second defendant Council only on 28.9.2017 and it is first defendant’s case that Think Big Studios got registration from second defendant Council on 26.4.2017).

Lyca Productions contended that it is a big production house and that it had agreed to produce a Tamil film ‘KARU’ originally registered by one Think Big Studios and that Lycaa Productions  has  registered the film as Lyca’s KARU (in Tamil)  with the second defendant, i.e., Tamil Film Producer Council on 28.9.2017. Lycaa Productions also contended that originally Think Big Studios had registered the title ‘KARU’ with second defendant Council on 26.4.2017 and as the first defendant is producing the Tamil film ‘Lycavin KARU’ on the basis of an agreement with Think Big Studios, the registration of the title ‘Lycavin Karu’ dates back to 26.4.2017.

The first defendant summarized its submissions as under:

(i)There is no industry practice as alleged / claimed by the plaintiff;

(ii)No one can claim copyright in a title to a cinematographic film;

(iii)The second defendant Council and third defendant Guild being registered societies have no statutory authority to grant registrations for title;

(iv)The copyright in a cinematographic film is judged by viewers only from its content and not from its title.

The Court observed that it is an industry practice that producer registers his title with either second or third defendant ( Tamil Film Producer Council/ Film and Television Producers Guild of South India) and that the arrangement is such that before issuing registration certificate of a title to a producer, the Guild or the Council makes sure that same/ similar name has not been registered with the other and the certificate of registration of title is issued only thereafter. Even if a title, which has already been registered, is being sought to be registered with a prefix or suffix or some minor variation, the same is treated as an objection and registration of title is not granted.

The Court further observed that from the undisputed advertisement of the movie it is clear that ‘Lycavian’ is absolutely miniscule and infinitesimally small compared to the depiction of ‘Karu’.

The court referred to the ex-parte interim order which it has granted on January 30, 2018 in favour of the Plaintiff [Read order here].

The Court considered on the issue of whether there can be copyright in title of a cinematographic film:

While arguing that there is no copyright in a title, the counsel for the first defendant relied on the following judgements:

  • Pandiyan Arivali Vs. Kamal Hassan– The court found this case to be clearly distinguishable on facts as that judgment pertains to title in a book and title in a movie and the instant case pertained to title in two movies scheduled to release almost simultaneously.
  • Kanungo Media (P) Ltd. Vs. Rgv Film Factory and others– The Court did not find this judgement relevant as it pertains to two movies with title ‘Nisshabd’ where one movie is in Bengali and the other in Hindi and hence found the facts to be different.’
  • An unreported judgement of a single judge of Madras High Court where the title of two films- ‘Joot’ and ‘Jhoot- Are you Ready’ were in dispute. The Court found this case to be irrelevant since the title was very different and facts of the case were also very different.
  • R.Chinna Krishna Chettiar Vs. Sri Ambal and Co.class of end users should be looked into. The Court was of the view that this case again does not apply since the ‘Ambal Andal’ judgement arose under the Trademarks Act.

The counsel for the plaintiff referred to the judgement of the Delhi High Court in Sholay Media and Entertainment Private Limited vs Parag Sanghvi & Ors and J.K Rowling and others vs City Publication & Anr. However, the Court agreed that both these judgements pertain to infringement in work post trial and not at an interlocutory stage where a prima facie view is to be taken.

Reliance was also placed on the judgement of R.Radha Krishnan Vs. A.R.Murugadoss. However, this was also found by the court to be distinguishable on facts since the dispute in the case pertained to a short film produced by the plaintiff and a regular feature film produced by the defendant.

The learned judge’s conclusion was that the title forms part of the film and the film is identified by its title. The judge suggested in being inclined on the view that there is copyright in the title. Reproducing the relevant extracts:

“33 In my considered opinion, a combined reading of the aforesaid three provisions in the Copyright Act, 1957, i.e, Sections 14(1)(d), 13(1)(b) and 2(y)(ii) in that order clearly reveals that copyright subsists in a cinematographic film and the cinematographic film in turn includes even photograph of any image forming part thereof. More importantly, meaning of copyright (as would be evident from Section 14(1)(d)(iii)), is essentially / primarily for communicating the film into public. Therefore, the title would definitely form part of the film, when even a photograph of any image forming part of the film is copyright. More importantly, the first point of communication of a film to public is the title. The film itself is identified only by its title. This proposition in my considered view follows as an indisputable sequitur. In this context, the submission of Mr.P.L.Narayanan that copyright is judged by viewers on the basis of the film and not by the title is an argument which will arise only post viewing.

34 On a demurrer, assuming that the title does not form part of the copyright of the film, it is still the only tag by which the copyright in the movie is identified. ‘Don’t Judge a book by its cover’ is a famous adage. Even if a book is not judged by its’ cover, it is certainly identified only by the title, which in other words is cover.

35 On a further demurrer, even if it is assumed that there can be no copyright in the title to a cinematographic film, the producer of the movie has certainly a legal right in the title to a movie particularly in the light of industry practice which has been alluded to supra.

36 Therefore, for the purpose of disposal of this application, it can be safely construed that the producer of the movie certainly has a right in the title, even if it is not copyright.

 The Court found the balance of convenience in favour of the Plaintiff and held that release of two cinematographic films in the same language with same title in quick succession (2 to 3 months) which is almost simultaneous will certainly cause a sea of confusion and accordingly interim injunction was granted in favour of the Plaintiff.

While, I agree with the final decision of the Madras High Court, I do not agree with the view taken by the Learned Judge on the issue of copyright in a title. The Supreme Court in the case of Krishika Lulla & Ors. V/s Shyam Vithalrao Devkatta & Anr while deciding on the issue of the title ‘Desi Boyz’ had held that just the title of a work is not considered to be fit to be the subject of copyright law. A title by itself is in the nature of a work and is not complete by itself, without the work. And since Section 13(1) of the Copyright Act, 1957 protects only (a) original literary, dramatic and artistic works; (b) cinematograph films; and (c) sound recordings, the mere use of common words such as ‘Desi’ and ‘Boys’ in a title cannot qualify to be described as ‘literary’, without any claim for the work itself. The Supreme Court was of the view that no copyright subsists in the title of a literary work and a plaintiff or a complainant is not entitled to relief on such basis except in an action for passing off or in respect of a registered trademark comprising of such titles.

Further, the Madras High Court was wrong in not relying on the principle laid down in the case of Kanungo Media (P) Ltd. Vs. Rgv Film Factory and others which is the landmark case on trademark protection of titles. Relevant extracts:

“American Courts have taken uniform view that title alone of a literary work cannot be protected by Copyright Law. Copying of a title alone, and not the plot, characterization, dialogue, song etc. is not the subject of Copyright Law. Thus, a copyright on a literary work would not include exclusive right to use the title on any other work. What, therefore, follows is that if a junior user uses the senior user’s literary title as the title of a work that by itself does not infringe the copyright of a senior user’s work since there is no copyright infringement merely from the identity or similarity of the titles alone. Same is the position under Copyright Law in India.

However, legal protection for literary titles lies in the field of trademark and unfair competition. In general, such titles are protected according to the fundamental tenets of trademark and unfair competition law.

Whether titles of single literary works can be registered as trademark or not has itself become debatable in the US, though in the case of titles of series of literary work, judicial opinion is that they are registrable. However, it is not necessary to go into this debate in as much as the plaintiff’s title ‘Nisshabd’ for its film is not registered as a trademark. The case at hand is, therefore, while applying the legal protection given to such titles under the Trade Marks Act is to be considered on the principle applicable in the cases of passing off of such trademarks. In passing off, necessary ingredient to be established is the likelihood of confusion and for establishing this ingredient it becomes necessary to prove that the title has acquired secondary meaning. Thus, in case of unregistered title following ingredients are to be proved in order to triumph in an injunction suit:

  1. i) Title has acquired the secondary meaning;
  2. ii) There is likelihood of confusion of source, affiliation, sponsorship or connection of potential buyers/audience/viewers.

The test of secondary meaning in respect of literary titles is explained in the following manner by McCarthy (supra):

The test of secondary meaning for literary titles is essentially one of determining whether, in the minds of a significant number of people, the title in question is associated with a single source of the literary work. That is, are people likely to assume that defendant’s work is connected in some way with the producers of plaintiff’s literary effort? The association need be only with a single, anonymous source. That is, the consumer need not know the trade name of the source, but is entitled to assume that all works or goods under that title are controlled by some single source.”

A list of cases on title of films can be viewed in the judgement section here.

The Bombay High Court last year refused to grant injunction in a case filed by Anil Kapoor Film Company Pvt. Ltd against Make My Day Entertainment & Ors with respect to the film ‘Veere Ki Wedding’ of the defendant. The plaintiff’s film is titled ‘Veere Di Wedding’. Justice Patel had relied on the Krishika Lulla case and had observed that the case can be successful only if classical trinity of “reputation/goodwill, misrepresentation and damage” is satisfied. Justice Patel had relied on  K.M. Multani v. Paramount Talkies and the Privy Council decision of Francis Day & Hunter v. 20th Century Fox, and held that the plaintiff’s film in this case had not evidenced reputation to satisfy a claim of passing off. Not only was the title (“Veere Di wedding” translating into “My best friend’s wedding”) extremely common, it needed to prove reputation through consumer recognition – i.e. the title should be associated with the public mind as referring only to the plaintiff’s work. The matter is now pending before the Supreme Court.

Image source: here

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