What’s in a name? Trademarks for film titles

By Manisha Singh and Divya Srinivasan, LexOrbis
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India’s film Industry is booming, known to deliver world class films. Every film gets recognition from its name, giving it a sense of identity for the public to relate to or recognize.

Manisha Singh is a founding partner of LexOrbis, where Divya Srinivasan is an associate.
Manisha Singh is a founding partner of LexOrbis, where Divya Srinivasan is an associate.

In 2001, the Indian government accorded “Bollywood” the status of “industry”. This eventually led to film industry giants such as Disney, Warner Brothers and Twentieth Century Fox venturing onto the Indian film scene. Their foray into Bollywood has revved up intellectual property (IP) in the country, boosting the economy. It has also increased IP litigation over the use of deceptively similar titles and other unauthorized adoption of film titles, including suits for infringement of copyright and trademarks, and passing off actions.

Since the title is one of a film’s most important features, emphasis is put on choosing exclusive and distinctive names for films, in order to enable the viewing audience to associate the film with its producers or makers.

All films come under the ambit of IP laws of India. While a “cinematographic film” is defined and protected under the Copyright Act, 1957, the film name or title is accorded protection under the Trade Marks Act, 1999, under class 41 for “entertainment services”. Hence registering a film title is a necessity for every film producer and filmmaker. Watching films on storage devices such as DVDs and VCDs is also popular and therefore applications are also filed under class 9 for “apparatus for recording, transmission or reproduction of sound or images”.

While film titles are given legal protection under India’s IP laws, a precondition is first to get the film title registered with the Indian Motion Picture Producers’ Association (IMPPA), the Association of Motion Pictures and Television Programme Producers (AMPTPP) and the Film and Television Producers’ Guild of India (the Guild). These associations aim at not only endorsing and encouraging film production but also protecting the commercial interests of the films produced in the country.

The film industry usually functions through these associations. Before any association registers a film title, the association ascertains whether an identical or deceptively similar title has been registered with any concurrent association. Registration with the association establishes priority in adoption of the film title as well as authorship of the script.

Under Indian law, copyright does not subsist in film titles. This was held by the Supreme Court in Krishika Lulla & Ors v Shyam Vithalrao Devkatta & Anr (2015). This case concerned the comedy film titled Desi Boyz, in which the court found that the word “work” in the term “literary work” signified the main content of the literary work in question and not merely the title.

Legal disputes are lined up in the film industry in spite of registration of the title as a trademark or registration with the associations mentioned above. In Warner Bros Entertainment Inc & Anr v Harinder Kohli & Ors (2008), before Delhi High Court, the plaintiffs contended trademark infringement and sought a permanent injunction to restrain the defendants from using the title Hari Puttar, which was registered with IMPPA and the Guild and was ready for commercial release. While the court dismissed the case on grounds of delay, it noted that the public was unlikely to confuse Hari Puttar, a Punjabi comedy, with the plaintiff’s popular trademark Harry Potter, as the titles were not deceptively similar and the targeted audiences were segregated.

In Biswaroop Roy Choudhary v Karan Johar (2006), also before Delhi High Court, the plaintiff sought an interim injunction to restrain the defendant from using the title Kabhi Alvida Naa Kehna for the defendant’s film. The plaintiff had registered the disputed title under the Trade Marks Act, while the defendant had registered it with AMPTPP and the Guild. The court dismissed the suit, holding that the defendant was the actual user of the mark, and had also completed the production of the film, which was due for release. It further held that actual use of the trademark was always a relevant factor when considering an interim injunction. The court also stated that the title in dispute was used in common parlance and so could not be used with exclusivity. Moreover, the plaintiff had delayed in approaching the court.

From the above cases it seems that mere registration of a film title as a trademark or with the associations is not enough to protect one’s rights in the title. While registration of a film title is prudent, in order to establish a likelihood of confusion in the marketplace it is important to prove consumer recognition and secondary meaning, thereby implying that a trademark is necessary. Actual use of the trademark can be proved by providing evidence as to the measures taken for film completion, expenses incurred, contractual agreements entered into with third parties, music and distribution rights, marketing strategy, etc.

Delay in approaching courts to protect or enforce one’s rights in film titles could be disastrous. Producers seeking restraint should take legal action as soon as they gain awareness of the potential infringing use.

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