PROTECTION OF FILM TITLES AND SONG TITLES UNDER THE INTELLECTUAL PROPERTY LAW IN INDIA
In India, the Media and Entertainment Industry (M&E) has been growing rapidly due to the rise in digitization, widespread access to the internet, content creation and audience demand. The increase in its growth rate has led to an increase in various legal issues as well. There are several instances where dispute between Parties relating to intellectual property rights i.e., related to trademark or copyright matter reaches the court. In this article, we will understand the scope behind the protection of film titles under the intellectual property law in India.
TITLE OF FILM
The title of the Film is the most important part of determining the identity of the Film and making it distinct in the minds of the audience. The Producer/Director of any particular Film goes through a long thought process in deciding what should be the title of the film so that it can create a memorable impression among the audience and bring out a successful film.
Understanding the protection of title under intellectual property law
Copyright Law in India: In India the definition of ‘works’ does not include the film titles under The Indian Copyright Act, 1957 while it gives protection to original literary works, dramatic works, musical works, artistic works, cinematographic films, and sound recordings works. The reason behind not giving film titles protection is that the title of the work is not considered a literary work.
Trademark Law: A trademark according to the Trademark Act, 1999 is a mark that is capable of distinguishing the goods and services of one person from another. So, the filmmakers have resorted to trademark laws for the protection of their title of the Film by safeguarding it as a service mark.
Possible Forms of Protection for Title of Film
In India, there are two forms of protection that can be accorded to the title of a film, which are:
- Registration of Title with various Film Industry Associations
- Registration of the Title as a Trademark
Registration of Title with various Film Industry Associations
In India, it is customary to register film titles with film trade associations. Film titles are usually registered with either of the following associations by the producers, all of which are subsidiaries of Film Makers Combine:
- The Film and Television Producers Guild of India
- Indian Film and Television Producers Council (previously AMPTPP- Association of Motion Pictures & Television Program Producers)
- Indian Motion Picture Producers Association (IMPPA)
- Western India Film Producers’ Association
While title registration with these associations is not mandatory, producers get their titles registered as a customary practice. These trade associations conduct checks with the other associations prior to registering the same to avoid the same title being registered in the name of different producers. Though this sounds simple, the catch is that registration with societies and associations does not have any legal sanctity. However, courts may take cognizance of the registration to ascertain the first user/ adopter of the title, if it came to be part of legal proceedings.
Registration of the Title as a Trademark
As defined under Clause 2(zb) of the Trade Marks Act, 1999 (“TM Act”), a trademark is 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. A mark may be in the form of a word, logo, colour combination, signature etc.
As per the Nice Classification, the goods and services for which trademark applications may be filed are divided into 45 classes. Class 1 to 34 cover various goods and Class 35 to 45 cover different services.
Filmmakers in India can register their film title as a service mark under class 41. Class 41 provides for registration of a trademark under various entertainment services including film production, radio entertainment, Film studios, providing on-line music, entertainment etc. The registration of a trademark constitutes prima facie validity of the mark in legal proceedings.
In addition to Class 41, filmmakers/platforms who wish to create merchandise also file trademark applications under some of the classes relevant to the film like:
Class 9 – cinematographic apparatus and instruments, apparatus for recording and reproduction of sounds and images
Class 16 – printed paper, promotional stationery, packaging materials
Class 25 – Clothing, T shirts
Class 35 – Advertising, marketing services, publicity, business management, and office functions relating to film and music production
Class 38 – telecommunication, Cable Television, broadcasting
Class 41 – entertainment services
Class 42 – software, design and development of video
Under trademark law, the title of a film is protected in two scenarios:
Series of titles: When there are a series of film titles such as the Harry Potter Film franchise, Golmaal Film franchise, Singham Film franchise, Housefull Franshise, Dhoom Franchise i.e., Dhoom, Dhoom 2, Dhoom 3. A series of titles indicates that each Film comes from the same production house and therefore can be registered as a trademark without any difficulty. Such titles have already gained popularity among the public and proving ownership of such trademark is not difficult and registration can be obtained much more easily.
Single film title: There are certain conditions that a single film title has to meet in order to acquire protection as a trademark. The most important requirement is that the title must obtain a secondary meaning in the minds of the public. This means that the Film watching audience must associate the Film title with a particular source or production house. Such secondary meaning is achieved by the promotional activities that are undertaken prior to the release of the film as the public gets exposed to the Film during the promotional events itself. Once such secondary meaning has been achieved, the title acquires the status of a well-known mark and hence can be registered as a trademark as per the provisions of the Act. Whether a title has acquired a secondary meaning is usually inferred from the
- length of time for which it has been used
- the promotional activities surrounding the Film
- the amount of money spent on such promotions.
- continuity of its use (sometimes pre-release promotion may also suffice)
- the extent of advertisement and promotional expenses and its box office collection.
- Sales statistics on ticket transactions and the number of individuals who purchased or watched the work of the owner; and
PROTECTING “SONG TITLES” IN INDIA
Who should be the owner of the song title: owner of the copyright in the song or the first person to file for registration of the title?
The practice of registering song titles was unprecedented in India until the release of the song ‘Why This Kolaveri Di’ in 2011 which became a hugely popular and overnight success. Its owner Sony Music Entertainment Pvt Ltd applied for the registration of the title to restrict others from using it and also as it planned to launch CDs and other non-entertainment merchandise with the said title.
Another legal issue arose in 2013, when Sohail Khan Productions, the banner under which the film “Jai Ho” was set to release, had applied for trademark registration of the mark “Jai Ho” in Class 41, but the application was objected and abandoned. The trademark application was objected to on the relative grounds under Section 11(1) of the Trademark Act, 1999, which deals with refusal of trademark application if the trademark applied for is similar (in visual appearance and resemblance) to an already existing trademark covered under the same class of goods and services, and which could cause confusion among the public regarding the association of it with an existing trademark. Due to which Salman Khan had obtained a license from A.R. Rahman for use of the title “Jai Ho”, the reason being the likelihood of it being associated with the hit song which was also trademarked.
Recent industry trends Film usage of super hit song tracks as movie titles, like Yeh Jawani Hai Deewani, Ramaya Vastavaiiya, Om Shanti Om, Dum Maaro Dum etc. to achieve popularity.
In such cases, first question to be considered is who is entitled to registration of the title – whether the owner of the copyright in the song or the first entity which files for registration of the trademark. The answer is the latter. In the case of ‘Why This Kolaveri Di’ it was the owner of copyright Sony Music Entertainment to file for the trademark. Another condition to be considered is- is the title of an original creation or generic in nature. For example, Why This Kolaveri Di being an original is likely to be granted trademark over Yeh Jawani Hai Deewani which is a generic phrase.
Due to lack of clarity and precedents when it comes to the registration of song titles as Trademarks, there are a lot of questions on which the law is silent. One such question is who should be the owner of the song title, owner of the copyright in the song or the first person to file for registration of the title.
Another issue with the registration of song titles is the lapse of the trademark which occurs if the trademark remains unused for 5 years. Any trademark registered with the sole purpose of restricting others from using it may be deemed unfair under the Trade Marks Act, 1999.
Actors like, Shahrukh Khan, SRK, Amitabh Bachhan has got the trademark of their name registered. Similarly, Akshay Kumar has got “Khiladi” registered on account of his several films with the same name.
Getting a trademark registration allows celebrities to prevent others from using their name for dishonest commercial purposes
TITLES OF FICTITIOUS CHARACTERS
A fictional character’s “name” may be a trademark only when the trademark indicates a particular source of goods and services i.e., if the character’s name is used as a title of a book, film or series or television show. Trademarks such as Sherlock Holmes, James Bond, Harry Potter, and others are all registered. As a result, character commercialization needs a Trademark owner’s permission.
Trademark Registration Process
Trademark infringement/ passing off:
It would be advisable for content owners to not use the names of brands/ logos without permission of the owners as it may amount to trademark infringement/ passing off action. If the brand name used/shown in negative light an additional ground of defamation may arise.
Cases & Judgements
In this post covered here we had discussed the precautions to be taken while making audio-visual content from a trademark and copyright perspective which included registration of film titles and the judgment passed by the Court pertaining to trademarks/title of the film.
The Madras High Court vide its order dated April 19, 2018 refused to grant any interim reliefs in a suit filed by K.S. Rajasekaran seeking to stall the release of the Rajnikanth starrer ‘Kaala’ over a title infringement dispute. The Court reiterated the principle that there is no copyright in a title. [Read detailed post here ]
A suit was filed by Prasar Bharti against Ritu Arya, Sandeep Arya and PVR Limited for permanent injunction to restrain them from using Prasar Bharti’s registered trademark “Doordarsan” as the title of their new film which is produced by Ritu and Sandeep Arya and PVR is the official distributor for the same [Read detailed post here ]
A title of a film does not qualify for being described as a ‘work’ and is not entitled for copyright unless proved that it has acquired any goodwill by itself, this proposition of law is well settled under a catena of judgments, some of them are mentioned in detailed post covered here
Penalties for Trademark Infringement
In India, the infringement of a trademark is a cognizable offence which means that the infringer may also face criminal charges along with civil charges. In the case of trademark infringement, the court may award the following remedies:
- Temporary injunction
- Permanent injunction
- Account of profits (damages in the amount of the profits gained from the infringement)
- Destruction of goods using the infringing mark
- Cost of legal proceedings
Titles are used to recognize and distinguish films from one another. In India, although there is no copyright protection warranted for film titles, the trademark law recognizes the provision of legal protection thereof. Registration of the trademark grants the owners exclusive rights to use such marks in relation to goods and services; acts as a source identifier for goods and services; and also prevent others from using identical or confusingly similar marks.
Trademark registration is very important in the entertainment sector since it protects expensive film productions.
Trademark India Website: link here