This article has been written by Praneel Tupe, pursuing a Certificate Course in Media and Entertainment Law from LawSikho.
Table of Contents
Introduction
A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. It protects a brand by ensuring that nobody else can leech off of the goodwill which gives the brand it’s value. Trademark is defined under Section 2(zb) of the Trade Marks Act, 1999 as, “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.”
This article discusses the role trademarks play when it comes to media and entertainment. In an industry where name is everything, the title can ultimately make or break a film or a song. And yet trademarks are seldom given the importance that they deserve. As the media industry evolves, the manner in which revenue is derived has become more and more complex. This has made the role of trademarks more significant than ever. Reputation or goodwill of an artist or a band is attached to their name and it is something that is built overtime which makes it invaluable. A trademark helps one to protect this reputation from others that seek to tarnish it or take advantage of it. Hence obtaining a registered trademark has now become imperative to build a strong and recognizable brand.
Trademark law In music and film industry
The importance of a distinguishable trademark in the music and film industry cannot be understated. An artist or band’s name is one of the, if not, the most important feature in a musician’s career as it provides a unique identity to the creator of the song. It is this identity that ultimately characterizes the artist in the minds of the people. The association of a song with a particular song title or a band name is what gives that artist or band actual value. Similarly, film titles can also be accorded protection under the Trademark Act. Any cinematographic work is recognized by its title. It helps people to conceptualize the idea associated with the film. In India, film titles can be registered with various societies or associations such as the Indian Motion Pictures Producers Association or the Association of Motion Pictures and Television Programme Producers, etc.
While this procedure does not have legal sanctity, courts may take registration done in this fashion into consideration while ascertaining the first user or adopter of a title. Film titles are accorded protection under class 41, of the fourth schedule of the Trademark Rule, 2001 which includes registration for services that are classified as “entertainment”.
Protecting movie title and India’s Trademark Law
The Indian film industry is one of the largest producers of films in the world. Bollywood produces an average of 1200 movies per year which is more than any other movie industry in the world and generates a box office revenue of 1.8 billion dollars per year. The Indian film industry has been granted the status of “Industry” by the Government of India in 2001. This has resulted in its rapid evolution with the foray of many foreign players and investors including 20th Century Fox, Viacom Motion Pictures, Warner Brothers, etc. This paradigm shift is astounding however IP (Intellectual Property) issues mainly related to controversies over using deceptively similar titles or other ways of unauthorized adoption of titles of films, infringement of copyright and trademarks, and passing off have also cropped up simultaneously.
Protecting “Song Titles” In India Under Trademark Act, 1999
In India, the owner of a song can claim copyright of a song title only if the title is a ‘substantial’ part of the work itself. As the title creates an association with the original work it may also be registered under the Trademark Act. The registration of song titles in India is quite rare. The first song title that was applied to be registered under the Trademark Act in India is the popular 2011 Tamil and English song ‘Why This Kolaveri Di’ by Dhanush.
However, the application was objected and Sony Music Entertainment Pvt Ltd hasn’t been granted protection. Trademark registration under Class 9 and Class 41 will help the proprietor of the Trademark protect the title and exploit it for the purpose of making CD’s, cassettes etc. 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. Also if the nature of the song title in question is generic, it may not be granted protection. While the registration of song titles under the Trademark Act is growing to become more and more popular by the day the law in this regard is still at a nascent stage.
Protecting “Song Titles” In the US
According to American jurisprudence, song titles are not deemed to have a sufficient creative element to merit copyright protection. Although theoretically, a sufficiently long song title should be subject to copyright protection, however, this has never happened in the history of the US. Copyright protection is only granted to the entire work i.e the title and the lyrics combined as opposed to the title by itself.
While Copyright law in the US does not protect band name or song title, such protection can be sought under trademark law. Trademark registration grants the owner mark the exclusive right to commercial exploitation of the brand and allows the owner to differentiate the good or service provided by that individual or business from those provided by another. Trademark protection can be sought for a particular word, phrase, slogan, logo, title, smell, sound or a mixture of any of these when used in relation to specific goods or service. In the US, a trademark can only be registered if it can be considered as distinguishable and not generic for the goods or services provided.
A distinctive trademark is one that is capable of distinguishing the goods or services of the owner from those provided by others. A trademark can be categorized as fanciful, arbitrary, suggestive, descriptive or generic. Fanciful trademarks are those that have no meaning other than acting as an indicator of the source. An arbitrary mark is one that has no relation to the goods being provided. A suggestive trademark is one that is suggestive of the quality of goods provided under its name.
A descriptive describes rather obviously the goods or services provided without requiring any additional imagination or thought on the part of the consumer. A trademark for a song title is not registrable unless it has been used on a series of creative works. Hence a standalone non-series song or album cannot be registered as a trademark.
Scope of protecting trade dress In the Indian context
Trade dress refers to the visual aspect of a product including its packaging, shape, colour combination etc. which may be registered and protected from being used by competitors in relation to their business and services. The purpose of trade dress protection is to protect consumers from intentionally identical-looking products made to deceive consumers by making them believe they are buying a completely different product than the one that they intend to buy. The concept of Trade dress has originated from section 43(a) of the The Lanham Act. In the case of Wal-Mart Stores vs. Samara Bros, trade dress was defined as “a category that originally included only the packaging, or ‘dressing,’ of a product, but in recent years has been expanded by many courts of appeals to encompass the design of a product.”
While trade dress has not been defined specifically in the Trade Marks Act, 1999, Section 2 of the Act provides a statutory framework to protect trade dress by broadening the definition of trademarks to include shape of goods, packaging and colour combination. In India, trade dress protection can be enforced in a similar manner as that of an unregistered trademark i.e by obtaining relief through passing off action against use of similar trade dress. In such a case, to obtain relief the plaintiff will have to prove that their product is distinct and that the third party is trying to capitalize on the goodwill of the plaintiff’s product by exploiting the similarity in packing or look or feel of the two products.
The application Of initial interest confusion doctrine in trademarking a movie title
Consumers are likely to be confused if two more similar goods or services use trademarks of an identical nature. Companies take advantage of this situation and design trademarks reminiscent of a popular brand to exploit its image. This is called Initial Interest Confusion. The term originated in the US in Brookfield Communications v. West Coast Entertainment which is a case involving infringement in the context of the Internet. However the concept of initial interest confusion was acknowledged as early as 1975 by the US Second Circuit Court of Appeals in the case of Grotrian Helfferich Schulz Th. Steinweg Nachf. v. Steinway & Sons in which the Court held that the use of the mark “Grotrian-Steinweg” to sell pianos infringed the trademark rights of Steinway and misappropriated the goodwill Steinway had established in its marks.
The court declined to hold that a plaintiff must show actual or potential confusion at the time of the purchase to establish trademark infringement. Instead the court propounded that even if no one had actually bought a Grotrian-Steinweg piano mistakenly believing that it was a Steinway, Steinway would nevertheless be harmed as a potential consumer would be led to believe that there is some sort of a connection between the two companies.
This doctrine is also relevant when it comes to movie titles as section 29 of the Trademark Act states that a registered trademark is infringed if deceptive similarity between two marks results in the likelihood of confusion with respect to the source of the marks. The Delhi High Court in Warner Bros. Entertainment Inc. v. Harinder Kohli summarily dismissed the claim of infringement for lack of any confusing similarity in the minds of audiences.
In this case, Warner Bros had initiated action against the defendant claiming that his movie titled ‘Hari Puttar’ violated their trademark for the film ‘Harry Potter’. The judgement held that there was no discernible correlation between the audiences of the two films i.e illiterate Punjabi individuals and the other, educated patrons. In this case, while there was no confusion due to similarity between trademarks, the goodwill of the mark however was being appropriated.
According to the doctrine laid down in the Steinway case, to establish infringement under this doctrine, the plaintiff does not need to prove potential confusion at the time of the purchase. The mere fact that the movie title reminds one of a known mark is sufficient for committing infringement. This has some serious implications on freedom of speech especially in the use of a mark in a parody or satirical context.
Conclusion
The title plays a major role in the success of a cinematographic or musical work. As is true for human beings the ‘first impression’ matters a lot when it comes to movies and films as well. This first impression is derived from the title itself. It helps people conceptualize what a movie is all about and gives the user a way to express their brand and by extension the goodwill that goes with it.
Registration of the title therefore is now becoming a norm in the industry in order to preserve the rights derived from the title of the work. Registration with the Trademark Registry grants the owner an exclusive right to use the title and at the same time prevents others from using the same in an unauthorized manner by providing avenues for redressal via a suit for damages. A trademark, therefore, grants its owner protection in areas where copyright cannot.
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