PRECAUTIONS TO BE TAKEN WHILE MAKING AN AUDIO-VISUAL CONTENT: PART 1- TRADEMARK AND COPYRIGHT

With the rising number of litigations on audio-visual content, it has become supremely important for content owners to be vigilant about the existing legal framework surrounding audio-visual content.

Through this post, I intend to cover the do’s and don’ts which content owners should be wary about.

The first part of my post shall be dealing with precautions which should be taken from an IPR perspective.

• Title Registration:

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:

1. The Film and Television Producers Guild of India
2. Indian Film and Television Producers Council (previously AMPTPP- Association of Motion Pictures & Television Program Producers)
3. Indian Motion Picture Producers Association (IMPPA)
4. Westers 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.

There have been several disputes in relation to film titles. However, that would be the subject matter of another post.

Registration of film titles with either of these associations has evidentiary value in determining first user of the title and has been recognized by the courts.

Even though film titles are technically not applied on any goods or services, film titles are accorded protection under trademark law.

The Delhi High Court in the landmark judgement of Kanungo Media Private Limited vs RGV Film Factory [read order here] had held that:

“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:

i) Title has acquired the secondary meaning;

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.”

Titles are usually registered under classes 9 which, inter alia, deals with goods such as cinematographic film apparatus, 35 which, inter alia, deals with services in relation to advertising and class 41 which, inter alia, deals with entertainment services.

• 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.

Few examples:

1. Rubiks Brand Ltd & Anr v/s Mahesh Vaman Manjrekar & Ors (Rubiks Cube)- Rubiks Brand Limited had filed a suit in the Bombay High Court against Mr. Mahesh Manjrekar for using the term ‘Rubik’s Cube’ for his film. The court held that an irreparable harm would be caused to Rubiks Brand Ltd if the injunction was not granted and thereby restrained Mr. Manjrekar from working on any film or other material bearing the title ‘Rubik’s Cube’ or the term ‘Rubik’ therein. (Read order here )
2. Nokia Corporation and Ors vs Movieexpress and Ors- The Plaintiff has sought a decree of permanent injunction restraining the defendants, their directors, partners, proprietors, distributors, agents etc. from advertising, airing songs, publishing, publicizing, offering for viewing, the impugned movie under the title Mr.NOKIA and/or Mr. NO.KEYIA and/or Mr. NA-VKIA and/or offering the songs containing the reference to the mark NOKIA and/or NO.KEYIA and/or any other identical or deceptively similar to the Plaintiffs registered trade mark ‘NOKIA’ amounting to infringement or amounting to passing off their services as for the services of the plaintiff or amounting to dilution thereof. The Delhi High Court recently in its judgement pronounced on November 3, 2017 decreed in favour of the plaintiff. The interim order and final judgement can be read here and here.
3. Bajaj Auto Limited and Anr V/s JA Entertainment Private Limited and Anr (Hamara Bajaj)- Bajaj Auto had filed a suit against J.A. Entertainment Pvt. Ltd over the alleged infringement of their trademark “Hamara Bajaj” following the announcement of the film’s title. The Bombay High Court ruled in favour of Bajaj and granted injunction against J.A. Entertainment. (Read order here)
4. Sholay Media and Entertainment Pvt. Ltd and Anr v/s Parag Sanghavi And Ors (Ram Gopal Verma Ki Sholay)- The Plaintiffs had filed a suit before the Delhi High Court against director Ram Gopal Verma and others in respect of the film ‘Ram Gopal Verma ki Sholay’, alleging infringement of trademark, copyright, passing off, damage, rendition of accounts, etc. The Plaintiff alleged breach of its proprietary rights in its registered trademark, Sholay, Gabbar and Gabbar Singh. The Court held in favour of the plaintiffs and further granted a sum of Rs. 10 Lacs as punitive damages against the defendants. (Read order here)
5. PepsiCo vs. MSM Motion Pictures & Ors (Youngistaan)- Pepsico filed a suit in the Delhi High Court against the producers of ‘Youngistaan’ seeking a permanent injunction against the release of the movie and preventing the defendants from blatantly imitating PepsiCo’s registered trademark “Youngistaan” as a part of their movie title. The Parties however eventually agreed to settle the matter with the Defendants agreeing to provide a disclaimer to the effect that the movie was not related/ associated with/ sponsored or promoted by Pepsi’s Youngistaan campaign. (Read order here)
6. Hamdard National Foundation and Anr v/s Hussain Dalal and Ors (Yeh Jawaani Hai Deewani)-The Plaintiffs, proprietor of the trade mark “Roohafza” had filed this suit before the Delhi High Court for infringement of trademark, passing off, commercial disparagement and tarnishing of goodwill and damages against the Defendants for releasing their film “Yeh Jawaani Hai Deewani” containing some dialogues showing their product “Roohafza” in a manner detrimental to the interests of the Plaintiffs as a proprietor. The Court directed the Defendants to restrain from releasing the home video version of the film “Yeh Jawaani Hai Deewani” or any other version of the film on cable television or television which contained the objectionable dialogue. (Read order here)
7. Zandu Balm had issued a notice with respect to use of its brand name in the song ‘Munni Badnam Hui’ in the film Dabangg. The matter was eventually settled. [ Source: here]
8. UK based Murphy Radiosued UTV over its production, Barfi, for depicting their mark ‘Murphy’ in poor light. [Source: here]
9. Bata India Ltd had filed a suit against AM Turaz, Prakash Jha & Ors with respect to use of their trademark “Bata” in the song “Mehangai” of the film Chakravyuh [Read orders here, here, here and here].
10. Britannia Industries Ltd had issued a legal notice to Vikram Bhatt for showing their product in poor light in a trailer of their film, ‘Ankur Arora Murder Case’. The biscuit manufacturer claimed 1 crore rupees as damages and an unconditional apology for loss of reputation and unauthorized visual representation of their mark. [Source: here ]

• Registration of script: Film and television writers may choose to register their script with the Film Writers Association (FWA) which is a registered trade union and provides for registration of the works of its members to provide protection against copyright violations.

Literary works such as script, screenplay, dialogues may also be registered with the Copyright Office. While registration of copyright is not mandatory, it has evidentiary value.

• Copyright infringement:

Worldwide perpetual licenses should be obtained from right holders while using third party content such as songs, clippings, etc.

In the event any assignment / license of rights is being taken, adequate due diligence should be carried out to ensure that the link documents are in order.

Section 19(4) waiver- Care should be taken to observe that Section 19(4) of Copyright Act, 1957 waiver is present in assignment agreements. Such waiver protects the rights from not lapsing in case the same are not exercised within one year of assignment.

Instances of litigations, where trivial portions of copyrighted content were taken without authorization, however were dismissed under the principle of ‘De minimis non curat lex’ (the law does not take any account of the trivial matters):

Saregama India Limited v/s Viacom 18 Motion Pictures and Ors (Special 26)- The Plaintiff Saregama had filed the suit against Viacom 18 on the grounds that its film ‘Special 26’, had infringed the Plaintiff’s copyright in the lyrics and music of the song ‘Mere Sapno Ki Rani’, which featured in the film Aaradhana due to a scene where one of the lead actors Anupam Kher, uttered about 4-5 words from ‘Mere Sapno Ki Rani’, over a period of less than 7 seconds. The Court denied relief to Saregama firstly on the ground that there was no infringement in the music since the words were not narrated in the particular melody of the original; second, there was no originality in just the words ‘Mere Sapno Ki Rani’ and third, the use of less than 7 seconds was de minimis and not worthy of a legal claim. [Read order here]

The Calcutta High Court relied on the judgment of the Delhi High Court in the case of India TV Independent News Service Private Limited & Others v. Yashraj Films Private Limited.  The Learned Judge further observed “Let us assume that the rendition of those four words was infringement of the plaintiff’s copyright in the lyrics. It has no impact, no effect and causes no loss to anybody. It is trifling. It is minimal.” The application was accordingly disposed of.

India TV Independent News Service Pvt. Ltd. & Ors. v/s Yashraj Films Pvt. Ltd- In this judgement, the Delhi High Court observed that that small amount of usage of songs in a programme by India TV did not amount to any infringement as it amounted to ‘fair use’, as the same is de minimis, that is, very little usage compared to the whole programme. [Read order: here]

P.S. The list of precautions are not exhaustive and only illustrative.

 Image source: here