This Article is written by Ambika Chaudhary, a 2nd-year law Student pursuing B.B.A LLB  (Hons.) from Symbiosis Law School, Pune. In this Article, she has discussed the interesting question of protection available to Film Titles under Copyright Law.

Introduction

The ‘title’ of a movie is a very essential part of the identity of the cinematographic work. It is what is used to recognise and distinguish movies from one and another. This makes it a very critical part of the movie and hence requires protection. However, they are not protected unreservedly under either the Copyright law or the Trademark law.

Copyrights only protect the expression of the idea and not the idea itself. Work has to have a substantive matter to come under the ambit of the copyright laws, and that means taglines, slogans and titles don’t get protection under the same. The same doesn’t come within the definition of literary work under S.2(o) and S.13 of the Act of 1957. It was also pronounced in Krishika Lulla and Ors. v. Shyam Vithalrao Devkatta and Ors that movie titles explicitly don’t come within the ambit of the Copyright law. The paper will, therefore, deal with protection for titles under the Trademark law.

Trademarks only protect really distinctive works. They aim to establish the connection between the work and the owner, to ensure that people can relate to the creator at a single glance and distinguish it from other works in the same field.

Movies titles, under the Trademarks Act, can be registered under Schedule 4, class 41 which includes a number of services including entertainment. To qualify, the director has to show that his movie acquired a secondary meaning amongst the masses and that is to say that it was popular enough to be recognised as a distinctive work, same being borrowed from America. This gives unreasonable advantage to the famous movies over the ones that did not do well or were comparatively newer along with other reasons such as the financial strength of the production house. This is why the criteria to register a work under trademark law has been criticised by a majority of people and therefore it has been a major debate in India for a fair period of time.   

This paper is going to analyse the lacunae in the laws seeking to protect movie titles. The paper will be divided into 3 parts. The first part will elaborate on the current situation with reference to Indian judgements on the law protecting movie titles and their insufficiency in doing the same. The second part will analyse the author’s stance against the present setting.

The third part will elucidate a few problems that might arise in the future and will analyse a solution to prevent the same.

Protection Of  Movie Titles Under the Trademark Law

Background Naming a movie or any work is the most tedious and challenging part of the process, as the name has to embody the story, and is the way the movie is recognised. However, since they do not come within the ambit of copyright protection, registering them under trademark law is becoming necessary in the industry. But it is only on registration that the ownership is valid in the eyes of law. Unregistered work such as most of the movie titles can be protected under the ‘passing off’ law. This varies from the protection given under the Intellectual Property laws. Passing off is a tort, actionable in India which can be used if another owner creates something deceptively similar to the original work. Essentially, it is a remedy available in case of infringement as opposed to protection under trademark law. The latter protects the work even before the harm is done, by informing the public that the work is exclusively owned by the creator and no one can misuse it.

Practice to register the titles with Film Industry Associations

In India, the practice that is followed is that, typically, titles are registered with industry associations like Indian Motion Picture Producers’ Association (IMPPA), Association of Motion Pictures and Television Program Producers (AMPTPP) or Film Writers’ Association. The movie owners do this because this reassures them that their titles are being registered and another party will be stopped from using it in future. But these associations don’t have any holding in the eyes of law. Registration with these associations doesn’t prove the ownership of the title and hence prevents the owners from claiming their rights.

This was seen in the case of Fisheye Network Pvt. Ltd. vs Association of Motion Pictures & T.V. Programme Producers and others, where the plaintiff had registered his movie’s name ‘Thank You’ with AMPTPP. However, the Court allowed the defendant no 5 to use the same title as the plaintiffs had no right of ownership over it.  

The Criteria For The Title To be Registered Under the Trademark Act

Higher chance of registration of a title of a series v. an individual movie

The Delhi High Court in Kanungo Media (P) Ltd. v. RGV Film Factory distinguished between two kinds of works in relation to titles which are the ‘titles of series of literary work’ and ‘titles of single literary works’. The former type of works can be easily registered as trademarks and this because they are coming from the same sources as their prequels. For example movies like Hera Pheri and Phir Hera Pheri, Dhoom and Dhoom II so on. In this case, there is no criterion to fulfil as the source is already recognised in the eyes of the public and hence the burden of proving the work’s ownership along with its commercial use is not an issue.

Secondary meaning and the case study of Nisshabd

In the case of single literary works, it has to be proved that the title has acquired a secondary meaning and consumer recognition. The plaintiff thereunder has to show that his movie is well distinguished in society. This condition acts as a barrier for most owners because it becomes very hard to prove that the movie has acquired secondary meaning. It also adds an advantage to the very popular or well-publicised movies. This criterion is applied very strictly and that’s where most of the problems arise.  

In the current case of Kanungo Media Ltd., the main issue was based on the principle of secondary meaning. The plaintiffs had produced a film by the title of ‘Nisshabd’. Though the movie wasn’t released commercially due to a shortage of funds, it was screened in various film festivals and also won a few awards. This, the plaintiffs contended had earned their movie a secondary meaning as their movie was known amongst the masses. The defendants used the same title for their movie, which was complete and very well advertised. The Court gave the case in favour of the defendants only because they managed to promote the movie on a larger scale and it had earned recognition more than the plaintiff’s movie.  

There was no consideration given to the rights of the plaintiffs on the title primarily because they were on a paucity of funds and could not advertise it well even though they were the first to acquire that title. Thereby ignoring the concept of the ‘first user’ as well.

Concept of achieving secondary meaning via publicity

The decision of Biswaroop Roy Choudhary v. Karan Johar had also been quite criticised in the film industry. In this case, the plaintiffs had applied for registration for their title ‘Kabhi Alvida Naa Kehna’ under class 41 of the Trademarks act. Whereas, the defendants applied for registration with AMPTPP, a film association which led to a controversy. Even though in the primary decision the Court has mainly considered the delay in filing on behalf of the plaintiffs, there are, however, some interesting observations in the dicta. The Court applied the principle of secondary meaning and held that the defendant, Karan Johar had spent a good amount of money in advertising the movie and hence it was better known in the masses as compared to the plaintiff’s movie. This shows that even though plaintiffs applied for registration, just because they fell short on the publicity they lost the case to the defendants. The Court also mentioned the method of pre-release publicity in cases where the movie hasn’t released but has applied for registration.

How the principle fails and subsequent shortcomings

This is where the principle fails. Its rigid enforcement deprives a lot of individuals of their rights on a particular title. It is very rare that movie titles fulfil this criterion and in most cases, no party is allowed to claim rights on a title. This allows more than one movie to have similar titles, thus reducing innovation and creativity.

For instance, in the title controversy of Thoda Pyaar, Thoda Magic v. Thodi Life, Thoda Magic, the two titles were very similar and were both approved by two different film associations which led to both of them claiming the rights. However, in the end, there was held to be no infringement and both were released without any changes. This shows that even though the titles were very similar there was held to be no infringement. This encourages the production houses to borrow names of other movies and discourages innovation.

Similar was the situation in the case of Warner Bros. Entertainment Inc. & Anr. v. Harinder Kohli & Ors. Wherein the plaintiff corporation claimed ownership on the title of ‘Harry Potter’ and the defendants produced a movie named ‘Harri Puttar’. The plaintiffs contended that both the titles are deceptively similar and will lead to confusion in the minds of the public. The Court held it not to be infringement but this case is sighted primarily to show how on many occasions people are inspired to name their work after already existing movies. Here, too it is very clear that the name ‘Harri Puttar’ is somewhere inspired by ‘Harry Potter’. Initially, it did confuse the public especially those who had already watched the ‘Harry Potter’ series. But the Court applied the ‘reasonable person’ principle and held that it does not lead to confusing the common man. Thus, it is quite evident that the difficulty in getting one’s title registered hampers individuality in the industry.

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Principle of Commercial use and its relevance

Another criterion that has been observed by the Court in a few cases is that of commercial use. This primarily states that protection can be given to only those titles that are being used commercially. Now, even though this is a reasonable ground but there are judgements in which the applicability of this principle in the case of movie titles seems to still be ambiguous. In both the cases of Kanungo Media Ltd. and Biswaroop Roy Choudhary the Court did take cognizance of this principle as well even though it wasn’t the deciding factor behind the ratio. In the former case, the Court observed that the plaintiff also failed to prove the commercial use of their film since it wasn’t released and had just participated in film festivals. The defendants, however, had advertised it well and were due for release soon and hence fulfilling commercial use. In the second case too, the Court observed that the plaintiff’s movie was only 40% complete as in contrast to that of the defendant’s, and thus, there was no commercial use.

Such a ground could be relaxed in certain scenarios like these.

Unfair advantage to blockbuster movies

The protection has worked in favour of the aggrieved in sparse instances. This case is indeed an outlier and is entitled Sholay Media Entertainment Pvt. Ltd. & Ors. v. Parag Sanghavi & Ors. The plaintiffs were allowed to register and claim protection on the titles of their movie along with the names of a few characters such as ‘Gabbar Singh’. Here too, the principle of secondary meaning was applied but what is to be seen is that the movie ‘Sholay’ was one of the most renowned movies of its time and hence could claim protection.

This raises a few questions. Firstly, in such a case what happens to newer movies? Or what about the movies that didn’t well? Why such stringent laws?

Challenges that may be faced in future and Suggestions

After analysing both these principles in the cases of movie titles, it can easily be inferred that even though there are laws to protect them, it is very rare that they are actually protected. The criterion that has been laid down is applied so rigidity that it becomes hard for the movie owners to claim their rights in the title. Titles are also basically literary work but because some of them are generic, the laws are inflexible. It is suggested that clear guidelines be given by the Courts in the manner such cases are decided.

Criteria for acquisition/application of secondary meaning

Secondary meaning is achieved when a person going to watch a movie, recognises the production house to which the movie belongs. This can be achieved by pre-release publicity as well or the recognition it attracts after the release of the movie. This is, no doubt a very important aspect to prove, however, the scope of its application remains very broad. That is to say that since there are no clear demarcations as to how secondary meaning needs to be proved, one may use any mode necessary.

Analysis with respect to the case of Kanungo Media Ltd.

For example, in Kanungo Media ltd. since the production house did not have enough funds for the movie, they went ahead for film festivals. This action of theirs was a step made towards making the movie known in public and hence attempting to fulfil the criteria under the secondary meaning principle. But this was a futile action since the Court held that screening it in a film festival was nowhere close to commercially publicizing it.

For such a situation there need to be clear cut criteria and differentiation between the advertisements for the various kinds of movies. There are times when a movie is only made for film festivals or for being uploaded on a platform such as the YouTube and these may not be viewed by as many people as compared to a movie which is released commercially. That is to say, that different types of media work like short films, feature films, documentaries etc. should have different criteria according to the purpose of their existence. The need for the same has been observed in this present case too.

Analysis with respect to the case of Biswaroop Roy Choudhary

The Courts have clarified on the topic of released and unreleased movies by saying in the case of the latter the owners can work towards creating a secondary meaning under the principle by pre-release publicity methods. But in the case of Biswaroop Roy Choudhary wherein their movie was only 40% made, it couldn’t match up to the promotion done by the defendant. It surely does make a difference if one director’s movie is 9 days from release and ones who are done with less than 50% of the shoot. In such a case too, some leverage should be given to the efforts made by the latter and especially if they have already applied for the registration. The ‘first time’ use principle may be applied in the case of movie titles which would allow the first production house to claim rights on a title wherein they were the first to use it.

Clarity and distinctions in the application of commercial use principles are necessary

Analysiseven though this principle is applied universally in the case of trademarks, its application in the case of movie titles is wide and vague. As already stated there are films that are not made for commercial use, and hence this principle fails short on them. It becomes unfair for such work. There have to be different criteria set for such kind of movies. It is well understood that such principles are not well developed yet in India. Production houses are not well versed with the conditions under the Trademark Act for the protection of their movie titles. The principles that are being followed are those which have descended upon our Courts from those in the US. For example, it was held in International Film Service Co Ltd. v. Associated Producers Inc. “that a plaintiff succeeds as soon as he shows that an audience educated to understand that the title means his play.” This statement in itself is very generic and has been applied in most cases. However, there fails to be a provision for the genres of films being made in today’s world. This decision was laid down in 1921 and it is still being followed without any changes in the same as required by the current scenario. In the case of Kanungo Media Ltd. even though it was observed by the judge that “the plaintiff is a small filmmaker and  though he couldn’t release his movie earlier wants to do it now but at a disadvantage just because the defendants were mighty in the film industry.” But the same wasn’t enough to protect the rights of the plaintiff just because he did not sufficiently fulfil the laid down criteria.

Conclusion

It is very evident that there are very few cases in India in this particular field. It is due to various reasons. Most of the times in such cases, the matters are settled outside the court i.e. through compromise. Whenever it has reached the Court, the matter is decided based on the principles set long ago. There are no clarifications or guidelines regarding the classifications. This paper primarily aimed to focus on the limitations in the principles that are applied to decide the issues on film titles. To conclude, the paper has outlined how the solution is to provide a clear cut classification of movies, encompassing all the varieties of film thereunder. Thus, to reiterate, the need of the hour is for the Courts to provide the production houses with some classifications which are best suited according to the kind of media work that is being created in the film industry.

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