Case Study – Trademark for Film Titles
This post was first published on June 27th, 2014.
What’s in a name? – This question of William Shakespeare’s would probably fade away into the background when it comes to the Entertainment Industry. The importance given to a name seems like just about everything in the context of the Entertainment Industry, since it creates an identity and makers of a film all over the world are choosy to the point of being cranky when it comes to giving their film a suitable title. Titles act as the unique identifier representing their work. So, can titles be protected, and if yes, how can they be protected, is a million dollar question.
Standard practice in the industry is to register titles with societies or associations such as the Indian Motion Pictures Producers Association (IMPPA), the Film and Television Producers’ Guild of India, the Association of Motion Pictures and Television Programme Producers (AMPTPP) and the Western India Film Producers’ Association (WIFPA). Before registering a title, an association generally conducts a thorough check with other associations to see if the same or deceptively similar title has been registered with any of the other associations. Usually, only the members of an association can apply for title registration with that association. 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.
Protection of a Film Title under the Indian Trademark Act:
Film titles are accorded registration and protection under the Trademark Act, 1999. Filmmakers in India can register their film title as a service mark under class 41, of the fourth schedule of the Trademark Rule, 2001. Class 41 provides for registration of a trademark under various services including entertainment. The registration of a trademark constitutes prima facie validity of the mark in legal proceedings. However, it is to be noted that registration under the Trademark Act is available only under two important conditions:
1. Film titles can be divided into two categories: a) Title of series of Films, b) Title of single Film. Title of series of films can get a trademark registration and protection easily when compared to the title of a single film. Examples of the title of series of films include Dhoom franchise i.e., Dhoom, Dhoom II, and Dhoom III. However, when it comes to the title of a single film, registration will not be accorded under the Trademark Act. For a title of single a film to obtain trademark registration, it has to pass a second qualifier.
2. Secondary meaning title of single literary work: According to this condition, in order to be entitled to trademark protection, the title needs to have acquired a secondary meaning. The secondary meaning implies that a moviegoer associates the title with a certain source, production house etc. Even a pre-release publicity of the title may cause a title to acquire recognition, sufficient for protection under the proviso clause stated under clause (1) of Section 9 of the Trademark Act, 1999 which specifically gives trademark registration to a well known mark or a mark which acquired distinctive character as a result of the use made of it.
While deciding on secondary meaning, the court may take into consideration, the factors listed below:
• duration and continuity of use;
• extent of advertisement & promotion and the amount of money spent;
• sales figures on the purchase of tickets and the number of people who bought or viewed the owner’s work; and
• closeness of the geographical and product markets of the Plaintiff and Defendant.
Decided cases on trademark registration of movie title in India
An example of the benefit of trademark registration in India is the Sholay case. Ram Gopal Varma, a renowned Indian film producer, had produced a film titled Ram Gopal Varma ke Sholay, and also used the character names from the original film, Sholay. Sholay was released in the year 1975 and was one of the most popular movies made in India during its time and since then became a household name with the audience associating the title with the Sippys, thereby giving it a secondary meaning. In 2007, Sascha Sippy, grandson of G P Sippy (producer of the 1975 blockbuster film), successfully sued Ram Gopal Varma in the Delhi High Court alleging Copyright and Trademark Infringement. Ram Gopal Varma agreed to change the title of his film to Ram Gopal Varma ke Aag. The makers of Sholay have also registered the character names ‘Gabbar’ and ‘Gabbar Singh’ as they have successfully acquired secondary meanings.
Now, let us consider cases where titles of a single film, accorded trademark registrations were not recognized by the court. An example is ‘Biswaroop Roy Choudhary vs. Karan Johar’.
Biswaroop Roy Choudhary had applied for registration of the trademark or title ‘Kabhi Alvida Naa Kehna’ under Class 41 of the Trademarks Act, 1999 for movies. The application for registration had been published. 40% of the shooting of the movie was complete. Karan Johar later used the name for his movie and produced it. An action of infringement was brought against Karan Johar. The High Court of Delhi, while deciding the case, held that the title of the single film can be registered as a trademark provided only that they achieve a secondary meaning. Yet, due to delay in filing the suit, the court decided in favor of Karan Johar. The court also considered the argument of Karan Johar that, for the release of the movie he had spent a lot of money and the movie was well known as a movie produced by Karan Johar, and therefore, changing the name of the movie will be detrimental to him and will not be commercially viable.
Another example of a case where titles of single Film accorded trademark registration was not recognized by the court is ‘Kanungo Media (P) Ltd vs. RGV Film Factory’.
Ram Gopal Verma produced a Hindi movie ‘Nishabd‘, starring Amitabh Bachan and Jiya khan, which was released in the year 2007. However, Kanungo Media Pvt. Ltd. had produced a movie named “Nishabd” in Bengali and had won many awards for the same. However, due to financial reasons, the movie could not be released commercially. An action was brought against Ram Gopal Verma before the Delhi High Court. The Hon’ble Court held that the movie “Nishabd” made by Kanungo Media Pvt. Ltd. was not commercially released and hence was not popular among the public. Hence the word Nishabd had failed to achieve secondary meaning. Upholding the judgment in the case of Biswaroop Roy Choudhary vs. Karan Johar, the High Court held that trademark for movie titles can be registered or protected only if they had achieved secondary meaning. The court, therefore, decided in favor of RGV Film Factory.
Both these judgments, though on the face of it seem to undermine the purpose of Trademarks, send out a strong message that even though a title of single film title is registered, it cannot be enforced unless the same has acquired secondary meaning, which in fact is a fundamental requirement of trademark law.