This article is written by Shradha Jain, pursuing a Diploma in Intellectual Property, Media and Entertainment Laws from Lawsikho.com.
Table of Contents
Introduction
Seven best-selling novels translated into 77 languages, eight blockbuster films, eleven video games, and more than 400 licensed products. Who hasn’t heard of Harry Potter, read the books, or seen the movie? By the time the series’ books were released, it garnered so much fan base that it turned into a cult. Since I am a member of the sect myself, today we will analyse Harry Potter from a legal point of view. How the legal professionals needed to forge their magic to shield the trademarks withinside the movie.
Trademarks on the films
Brands are an integral part of any shopping experience, serving the purpose of alluring us, but also serve as a quick and reliable guide to the quality of a particular product or service. A world without brands is difficult to imagine. How can we, as consumers, be sure where the products and services we buy come from? Could companies build their reputation in the marketplace and increase consumer confidence and loyalty to their products and services?
Looking at the definition of the trademark in India and the US
- In India Trademark is defined under the Trademark Act, 1999 as, “Trademark means 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 the shape of goods, their packaging, and combination of colors.”
- In the US it has been defined under 15 U. Code §1127 as
The term “trademark” includes any word, name, symbol, or device, or any combination thereof—
(1) used by a person, or
(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.
From the two definitions above, it can be seen that a word or a combination of words, letters, and numerals can perfectly constitute a trademark. But trademarks may also consist of drawings, symbols, three-dimensional features such as the shape and packaging of goods, non-visible signs such as sounds or fragrances, or color shades used as distinguishing features – the possibilities are almost limitless. Trademarks are typically granted for a period of 10 years, although they might vary from country to country. It allows the owners to fully commercially exploit their brand and build a reputation for the same.
Trademark distribution and implication
Trademarks in Harry Potter are owned by Warner Bros. and JK Rowling. Warner Bros. Entertainment Inc filed HARRY POTTER’s first trademark application with the EUIPO of the European Union in September 1998 (and the trademark remains valid to this day). Warner Bros. has 55 trademarks registered in the United States alone, some of which are pending.
Warner Bros. owns the Harry Potter brands, including characters, themes, and other elements. The company split the rights among its licensees for use in around 400 different products strengthening the brand:
- Toymakers Hasbro, for example, has been licensed to sell Harry Potter sweets such as cockroach clusters, chocolate frogs, and fizzing whizbees since 2011.
- Mattel acquired the right to make Harry Potter action figures, games, and puzzles; and
- Coca-Cola was given the right to market the film along with its products.
- NBC Universal has the right to commercialize the Wizarding World.
- The license for the theme park belongs to Universal City Development Partners, Ltd.
- The Wizarding World Digital, a joint venture between Warner Bros. and Pottermore, has partnered with Wonderbly for character licensing of the movie in the form of a journal.
Warner Bros. Entertainment has recently filed trademark applications for Hufflepuff and Gryffindor Emblems from the hit movie franchise Harry Potter. The applications have been filed under Classes 09,14,16 and 25 on an intent to use basis. Trademarks underpin brands, which are now widely recognized as key factors in creating business value. Strong brands command customer loyalty and premium prices and contribute to healthy profit margins and growth, enabling companies to distinguish themselves and their products and services from those of their competitors. Successful brands underpinned by trademark protection are a key to a company’s sustained financial viability.
Defence against the dark arts
Success in its wake brings several free-riders wanting to exploit it and JK Rowling and Warner Bros don’t seem to be new to this. They have had several cases of infringement of their trademarks and a few of them are mentioned here.
Scholastic v. Stouffer
In 1999, just after the first Harry Potter book was released US author Stouffer in her letters to Scholastic claimed that the book was an infringement on many of her trademarks and copyrights. She also stated one of her books had a race of beings called “Muggles,” and another had a protagonist whose name rhymes with Harry Potter and who wore glasses. Scholastic filed an action in the Southern District of New York, seeking a declaratory judgment of non-infringement. The court however found that the word Muggles used was completely different from that as used by Rowling and the one used by Stouffer as hairless creatures. The court also came to the conclusion that Larry Potter, the copy of the book on which Stouffer claims Harry Potter is based, is falsely dated. Hence the court imposed a fine on Stouffer for fraud and misleading the court. The Second Circuit later affirmed.
Harry Potter Lexicon
For the facts of the case of Warner Bros. Entm’t Inc. v. RDR Books, Lexicon is a free-of-charge website that is a go-to encyclopaedia for Harry Potter facts. Even JK Rowling has explicitly provided her support for the website. But the fact that was printed and published is what went against Rowling as she intends to print a companion book and donate the proceeds. While their main count is on copyright infringement, they also relied on their trademark infringement to win the suit. According to an agreement between Warner Bros. and Rowling, Warner Bros. holds over 15 federal trademark registrations for the HARRY POTTER mark (along with several other registrations and pending applications based on the various titles of the Harry Potter books). The two most relevant registrations are for word mar and stylized, both for “Printed matter and paper goods” which covers books featuring characters from animated, action-adventure, comedy, and/or drama features, comic books, and children’s books. The court held that the unpublished Lexicon infringed Rowling’s right and permanently enjoined its publication.
Potter v Puttar
In the much-talked-about suit Warner Bros. Entertainment Inc. v. Harinder Kohli and Ors. Warner Bros (the ‘Plaintiff’) filed a suit against Harinder Kohli (the ‘defendant’), the producer of the film, Hari Puttar : A Comedy of Terrors for the alleged infringement of their trademark Harry Potter. The plaintiffs contested that the defendants were guilty of infringing their trademark by naming the movie Hari Puttar which is visually and phonetically similar to the plaintiff’s trademark Harry Potter. The Delhi High Court however denied granting plaintiffs relief on the grounds that they were delayed in their application for the infringement suit and also that any illiterate or semi-literate movie viewer, would never be able to relate ‘HARI PUTTAR’ with a Harry Potter film or book. Conversely, an educated person is not likely to be misled.
Notice against a Missouri-based company Starlit
In May 2019, Warner Bros filed a notice of Opposition in the USPTO (the United States Patent and Trademark Office) against a Missouri-based company Starlit for organizing a themed running event, one of which was a wizarding run. The flyer also contained mentions of butterbeer and quidditch. Warner bros claimed that it infringed on their trademark of the wizarding world and wizarding world of harry potter. Starlit was found to be guilty of infringement.
Conclusion
From the above, we can conclude that Warner Bros and JK Rowling vehemently continue to do their best in protecting their brand i.e. Harry Potter. With a brand so big often it becomes difficult to protect it as the laws differ country by country and sometimes it results in absurd results as well, for e.g. a person in Australia was slapped with an infringement notice by Warner Bros for having a Harry Potter-themed party at his house and selling tickets online. Warner Bros in their notice stated that the person was trying to obtain commercial benefit which wasn’t the case. But the person had to drop the idea of the party. It poses a great difficulty of what should be allowed in the public domain and what should be excluded under the law. If the IP rights are not comprehensively protected it leads to a huge loss of revenue and also erodes the brand value with cheap rip-offs and products. With Warner Bros trying their best to protect their IP rights over so many countries shows how important IP rights have become in today’s time and how there is so much to gain and lose associated with their protection
References
- https://www.wipo.int/wipo_magazine/en/2007/05/article_0005.html
- https://www.wipo.int/wipo_magazine/en/2011/02/article_0006.html
- https://www.wipo.int/trademarks/en/
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