This article is written by Sonika Kulkarni, pursuing a Certificate Course in Media and Entertainment Law: Contracts, Licensing and Regulations from lawsikho.com.

Introduction 

 “A good trademark, whether a wordmark or symbol, is devoid of fashion or trend, which makes it potentially iconic if it’s seen for long enough in the right places” -Ivan Chermayeff 

Truth is spoken- The Name speaketh the loudest, and the logo shineth the brightest! All products and services offered in the market ought to have a distinct and unique identity in the form of a distinct name, sign, symbol, colour, shape, etc associated with them as they are the eye-catchers. A medium to name a product or service can be called a Trademark. The Trademarks Act, 1999 in Section 2(zb) defines “trademark” as- a mark capable of being represented graphically and which is capable of distinguishing the goods and services of one person from those of others and may include the shape of goods, their packaging and combination of colours. Thus it identifies the source or commercial origin of a product or service. Trademark law serves a two-fold purpose- Trademarks aid their owner to individualise, advertise and sell their products and services and they enable the consumers to make informed choices leaving minimal scope for confusion. A registered trademark enjoys protection for a duration of 10 years, post which registration can be renewed on payment of the prescribed fee.

Trademark law in the music and film industry

The titles of songs, albums, movies, names of bands, famous characters can be accorded protection under the Trademark law subject to certain conditions. The titles, phrases and names need to be original and unique. Titles which are merely descriptive or generic are unlikely to be protected. Another condition is that they must have acquired secondary meaning. In case of film titles, the title of a single film cannot be trademarked, it being a finite and unchangeable work but the title of series like Games of Thrones may be trademarked. These can be registered under Class 41 which includes “entertainment” and Class 9 which includes “apparatus for recording, transmission or reproduction of sound or images” under the international uniform classification standards.

Protecting “song titles” in India under Trademark Act, 1999

The practice of registering song titles was unprecedented in India until the release of the song ‘Why this Kolaveri di’ in 2011 which became a hugely popular and overnight success. Its owner Sony Music Entertainment Pvt Ltd applied for the registration of the title to restrict others from using it and also as it planned to launch CDs and other non-entertainment merchandise with the said title. The status for Kolaveri di stands as of July 2020.

Another legal issue arose in 2014 on the release of Salman Khan’s film titled ‘Jai Ho’ [1]. Following the immense success of the film ‘Slumdog Millionaire’ and winning an Oscar for the song “Jai Ho,” A.R Rehman had applied for registration of the said title ‘Jai Ho’. The use of this title for the film was objected to. It is to be observed here that the phrase ‘Jai Ho’ is not original and very commonly used throughout India for many years. The film anyway was released with the said title.

Recent industry trends show usage of super hit song tracks as movie titles, like Yeh Jawani Hai Deewani, Ramaya Vastavaiiya, etc. to achieve popularity. Also, these popular phrases might be used liberally in the merchandising industry.  In such cases can the rights of the lyricists of these songs be protected? The first question to be considered is who is entitled to registration of the title – whether the owner of the copyright in the song or the first entity which files for registration of the trademark. The answer is the latter. In the case of ‘why this Kolaveri di’ it was the owner of copyright Sony Music Entertainment to file for the trademark. Another condition to be considered is- is the title of an original creation or generic in nature. For example, why this Kolaveri di being an original is likely to be granted trademark over Yeh Jawani Hai Deewani which is a generic phrase.

 Another issue is that registration of a trademark lapse after 5 years if not used. Also if registration is made only with the intent of restricting others for using that name it is considered as an unfair practice. 

Protecting “song titles” in the US

Granting registration for single song titles under the US trademark law largely depends upon the quantum of publicity and popularity a particular song track has garnered. Two noteworthy cases in this regard are as follows-

In Tree Publishing and Co. v. Warner Bros. Records [2], the court stated that the song track ‘Stand by your man’ is eligible for trademark protection given that it has been performed publicly for as much as two million times but the song track ‘Better Class of Losers’ being performed forty-seven thousand times only, cannot be trademarked. 

The Court in EMI Catalogue Partnership v. Hill Holiday Connors [3] had conducted a poll, the result of which showed that Benny Goodman’s ‘Sing, Sing, Sing’ was among the 100 most important works of the century. Thus it was accorded trademark protection.

Also in some cases where the title of the song is unique and is coined by the artist, it implies intellectual effort and such title may be trademarked. For example- David Bowie’s “Ziggy Stardust” may be trademarked being an innovative and self-invented phrase but “Material Girl” by Madonna may not be trademark being very common.

An interesting trademark controversy arose in 2019 regarding the song ‘Hakuna Matata’ used in Disney’s movie ‘Lion King’ [4]. Disney had trademarked the song title ‘Hakuna Matata’ in 2003 for purpose of T-shirt printing. An anti-Disney campaign was launched by Zimbabwean activist Shelton Mpala wherein a petition was signed by 1,80,000 others. This petition states that companies should not be able to get such phrases registered which “they did not Invent” (‘Hakuna Matata ‘is a commonly used Swahili phrase). The intellectual property experts in this case stated that Disney had the right to register the said title as a trademark and which was granted by the US Patent and Trademark Office (USPTO). Disney cannot prevent others from using this phrase except for sale of T-shirts.

Renowned singers like Taylor Swift and Beyonce have been known for getting famous lines from their songs registered to prevent unauthorised use for merchandising.

Protection of sound mark

Sound mark is an unconventional trademark. Sounds have the capacity of influencing consumer perception with respect to a brand. It can function as a source-identifying element for a brand. Sound marks can be registered under Indian trademark law. To register the sound mark, the applicant needs to prove that the tune or sound has acquired ‘Factual Distinctiveness’. This means recall the value of the tune or sound with the associated product or service. ‘Yodel’ of Yahoo was the first sound mark to be granted registration. Also the theme song of National Stock Exchange is registered.  Some of the famous sound marks in the USA include McDonald Corporation’s ‘I’m loving it’ jingle, the lion roar of Metro Goldwyn Mayer (MGM) corporation, Warner Brothers’ ‘Looney tunes’ melody etc. 

In the Indian context some of the famous commercial jingles which would have been worthy of being registered as sound marks are ‘Googly woolly woosh’ of Ponds, ‘Oye bubbly’ of Pepsi, Vodafone’s ‘You and I’ and many more.

As per Trademark Rules, 2017, for registration of sound mark alongside the TM-A form, sound file of length not exceeding 30 seconds must be submitted in MP3 format with the graphical representation of sound notations. 

Scope of protecting trade dress in Indian context

The origin of the concept of Trade dress can be traced to US laws. Trade dress is a subset of trademark law which refers to the overall “look and feel” of a product or service. It is the final visual appeal and appearance of the product or service which aids consumers to identify the source or origin of the product. The Trademarks Act, 1999 brought Indian law of trademarks in level with the international standards. Although it does not provide a separate definition of trade dress, the amended Trademark Act of 1999 widened the scope of trademark definition to include all elements of trade dress as mentioned under the Lanham Act of US- 

Section 2(m) of the Trademark Act, 1999 defines “mark” which includes device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof. [5]

Section 2(q) defines “package” to include any case, box, container, covering, folder, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper, cork. [6]

Section 2(zb) defines “trademark” which includes the shape of goods, their packaging, colour combination, graphical representation of the mark. [7]

“Passing off” is the remedy under common law through which trade dress is accorded protection in India. Passing off means enforcement of unregistered trademark rights.

Trade dress for the music and film industry may be said to include stage design, set design for films, the peculiar way in which a rock band performs, sounds, etc. Following are some of the noteworthy cases in this regard-

In Cesare v. Work [8], the plaintiff a ‘Beatles’ tribute band successfully enjoined the defendants who were former band members from copying the “look and feel” of their stage show. The plaintiff formed ‘Revolver’ which was a stage show that re-enacted the ‘Beatles’ experience of the mid-1960s. Many members left Revolver and began an identical stage show called ‘1964’ which copied Revolver’s style. They also advertised themselves as “formerly Revolver”. The court held that the plaintiff’s show is unique and a protectable trade dress and holding defendants guilty of unfair practices, granted an injunction. 

In Foxworthy v. Custom Tees, Inc [9] the plaintiff, a comedian known for his ‘redneck’ humour successfully prohibited the defendant company from selling T-shirts bearing “you might be a redneck” jokes. The court in this case determined that the phrase “you might be a redneck” and related jokes were inherently distinctive as they had become identifiable with the plaintiff and his style of performing was a protectable trade dress.

The concept of trade dress infringement in India is still in evolving stages and has been applied mostly in product-related issues like pharmaceuticals, FMCG products, toys, etc. The scope has not been widened to cater to the issues of the music and film industry as yet.

Protecting fictional elements

This practice is an interesting and unusual aspect related to trademarks. A few such cases have been seen in the US. 

In Viacom International Inc. v. IJR Capital Investments, LLC  [10] the defendant a restaurant purveyor has named its restaurant ‘Krusty Krab’ which is also the name of the restaurant from Nickelodean’s famous cartoon SpongeBob SquarePants, where SpongeBob works. The Court, in this case, found that Krusty Krab’ has acquired a secondary meaning and dismissed IJR Capitals argument that “it is just a cartoon restaurant” [11]. The defendant was also adjudged guilty of infringement given the likelihood of confusion caused due to similar naming.

The sitcom ‘F.R.I.E.N.D.S’ which concluded in 1997 still remains a favourite series that we all have binge-watched. ‘Central Perk’ the iconic cafe where Rachel, Ross, Joey, Phoebe, Monica and Chandler hangout is a registered trademark owned by Warner Brothers- not only the name but also the logo for potential use in the services “Coffee shop and cafe services, coffee bars, tea bars and snack bars” [12]. It certainly is a dream come true to have Central Perk being recreated for real! Warner Brothers have prevented the opening of a “Central Perk” parody cafe in California by exercising its legitimate rights under the trademark law. 

Names of fictional characters can be registered as trademarks provided that these names are also the names of the movies or series. For example, James Bond, Harry Potter, Sherlock Holmes, etc are registered trademarks. Character merchandising thus requires a licence from the owner of the trademark. 

The estate of Sir Arthur Conan Doyle owns the trademark ‘Sherlock Holmes’. In June 2020 it filed a lawsuit against Netflix and other parties involved in the production of a film ‘Enola Holmes’ for copyright and trademark infringement. Doyle estate had also sued Miramax over the film ‘Mr.Holmes’ in 2015. [13]

This sphere is limitedly explored in the Indian trademark landscape.

Protecting movie titles in India and US

India

General practice in India is to get film titles registered with industrial bodies such as Film and Television Producers’ Guild of India, Indian Motion Pictures Producers Association (IMPPA), and Western India Film Producers’ Association (WIFPA). A thorough search is conducted among these entities to see if a title is similar or deceptively similar to the one already registered. Getting the titles registered with these bodies only establishes priority in using the title of the film and does not affect court proceedings. 

Under the Trademarks Act, 1999 film titles are accorded protection based on certain conditions which are as follows:

1. Title of Series of Films: a film franchise containing more than one parts like Dhoom, Dhoom II and Dhoom III is more likely to be accorded trademark protection under this Act. The reason for this is the content is dynamic and such series will stay in the market for long and the audiences come to associate the film with the source, producer etc.
2. Title of a Single Film: in case of a single film title protection is not accorded unless such title has acquired a secondary meaning. Secondary meaning implies that audiences associate the title not only with the film itself but also with the source. Any publicity is good publicity and if a film acquires such publicity it can be accorded protection under clause (1) of section 9 of the Trademarks Act, 1999 which provides registration to ‘well-known marks’.

The iconic film ‘Sholay’ which was released in 1975 is an example of a single movie title which was granted registration under trademark law. In Sholay Media Pvt. Ltd  v. Parag M. Singhvi [14], the plaintiff sued Ram Gopal Verma for copyright and trademark infringement in the Delhi High Court. Ram Gopal Verma had made a movie titled ‘Ram Gopal Verma ke Sholay’. The court stated that the film ‘Sholay’ of the plaintiff was extremely popular and had come to be associated with the producer GP Sippy and hence has acquired secondary meaning. Following this, the defendant agreed to change the name to ‘Ram Gopal Verma ki Aag’.

In Kanungo Media Pvt. Ltd v. RGV Film Factory [15], the plaintiff had produced a film titled ‘Nisshabd’ which was screened at various international film festivals and bagged many awards. However due to paucity of funds, the film saw no commercial release. In 2007 Ram Gopal Verma produced a film with Amitabh Bacchan and Jiya Khan titled ‘Nishabd’. Kanungo media sued the defendant for infringement in the Delhi High Court. The Court ruled that as there was no commercial release of the plaintiff’s movie, the public hardly would have any idea of the existence of such a film and hence the title ‘Nissabd’ has failed to acquire a secondary meaning. Thus the decision went in favour of the defendant. 

USA

In the USA generally a single movie is not granted trademark protection. The reason behind this practice is that such single work is a one-time static work. Another important rationale behind this doctrine is the clash between copyright law and the trade law. Copyright in a work subsists for a limited duration whereas trademark subsists as long as the mark is put to use. This implies that even when the single literary work in which copyright has expired falls in the public domain, the title enjoying trademarked protection still cannot be used by others. This may compromise the very purpose of the public domain system. 

However, registration of such title may be allowed by The US Patent and Trademark Office if the applicant is able to establish in front from the Trademark Trial Appellate Board (TTAB) that the title has acquired distinctiveness i.e. secondary meaning. 

Film titles can also be registered with the Motion Picture Association of America (MPAA). The members of this association agree to refrain from using movie titles which are already registered. Permission for usage can be acquired and private proceedings are instituted for resolution of disputes. 

Title of a film franchise is likely to be granted trademark registration even though the title is descriptive in nature. For example- ‘The Godfather’, ‘The Matrix’, ‘Kung Fu Panda’ and its subsequent parts wherein the title is the basic plot of the movie may be trademarked but a single word like ‘The Great Gatsby’ may not be trademarked.

Application of initial interest confusion doctrine 

Initial interest confusion doctrine

Developed in the US, this doctrine functions as a tool for ascertaining if the trademark has been infringed. A consumer has to choose from a large variety of goods and services available for sale in the market. One of the essential factors influencing the sale of goods and services is the initial interest of the consumer. The first stage wherein the consumer is searching a particular product or service is considered crucial. The initial interest confusion originates during this stage. This doctrine pertains to the moment before the time of purchase, when a consumer has arrived at a decision that he requires a certain product or service but has not yet reached at the marketplace from where the product or service is to be bought. [16]

While searching for the desired product the consumer may come across products which are similar to the desired one. The deceptively similar method adopted by the other seller might lead to the creation of interest in the mind of the consumer and he ends up buying a similar product instead of the one desired.

Whether this practice of benefitting from the use of others’ mark amounts to infringement or not, it completely varies from case to case.

Application to film titles

Section 29(1) of the Trademark Act, 1999 [17] states- for claiming infringement of trademark, this provision requires that the deceptive similarity between two marks should result in the likelihood of confusion with respect to the source of the marks. The film industry is plagued with issues relating to the use of deceptively similar film titles, copyright and trademark infringement, passing off etc.

In Warner Bros Entertainment Inc v. Harinder Kohli [18], the plaintiff claimed that the title of defendant’s movie ‘Hari Puttar- A comedy of errors’ infringed the plaintiff’s trademark ‘Harry Potter’. The High Court of Delhi observed that infringement can be based upon confusion that creates initial customer interest, even though no actual sale is finally completed as a result of confusion. Justice Khetarpal stated that despite the structural and phonetic similarity between the two titles, both works appealed and were understood by different sets of people- ‘Harry Potter’ to the educated audience and the Punjabi comedy ‘Hari Puttar’ to illiterates. Thus the likelihood of confusion was ruled out and Warner Bros. lost the claim.

In Nokia Corporation v. Movie Express [19], a suit for trademark infringement was filed by Nokia India Inc against the producers of the Telugu film titled ‘Mr. Nookayya’. An orphan boy named ‘Nokia’ is an expert at stealing cell phones- is the basic plot of the film. The producers started promoting the film as ‘Mr. Nokia’ which gave rise to the cause of action. The High Court of Delhi granted an ex parte injunction order restraining the defendants from using any word similar to ‘Nokia’. Following this order, the title was changed to ‘Mr. Nookayya’.

It can be seen from these cases that an attempt to attract audiences was made by riding on the goodwill of famous and known brands. Thus for protection of their trademarks, the holders could use the support of Sections 29(7) and 29(8) which prohibit unfair trade representations [20].

Conclusion

Though Trademark Act, 1999 is at par with international trademark laws it is interpreted less liberally when it comes to the media and entertainment industry. The Judiciary, Producer and Writer bodies need to be better equipped in dealing with this dynamic and heavily growing industry. Originality should be encouraged with regard to song and movie titles and no room must be left for duplicity. Trademarks being the medium for brand building thus must be better protected. 

References

1. www.downtoearth.org.in/blog/trademarks-jai-ho
2. Tree Publishing and Co. v. Warner Bros. Records 785 F. Supp. 1272 (M.D Tenn. 1991)
3. EMI Catalogue Partnership v. Hill Holliday Connors U.S App. LEXIS 30761 (2nd Cir. 2000)
4. www.news.bloomberglaw.com/ip-law/no-legal-worries-for-disney-in-hakuna-matata-trademark-row
5. http://legislative.gov.in/actsofparliamentfromtheyear/trade-marks-act-1999
6. http://legislative.gov.in/actsofparliamentfromtheyear/trade-marks-act-1999
7. http://legislative.gov.in/actsofparliamentfromtheyear/trade-marks-act-1999
8. Cesare v. Work 36 Ohio App. 3d 26 (1987)
9. Foxworthy v. Custom Tees, Inc., 879 F. Supp. 1200 (1995)
10. https://www.trademarknow.com/blog/recent-trademark-cases-you-may-have-missed-in-2018-2019
11. www.trademarkandcopyrightlawblog.com
12. www.foodandwine.com/friends-central-perk-real
13. www.forbes.com/sites/legalentertainment/2020/06/04
14. Sholay Media Pvt. Ltd  v. Parag M. Singhvi  CS (OS). 1892/2006
15. Kanungo Media Pvt. Ltd v. RGV Film Factory 2007(34) PTC 591 (Del)
16. www.mondaq.com/india/trademark/407394/hijacking-of-identity-initial-interest-confusion
17. http://legislative.gov.in/actsofparliamentfromtheyear/trade-marks-act-1999
18. Warner Bros Entertainment Inc v. Harinder Kohli CV 12-9547 PSG (CWx)
19. Corporation v. Movie Express CS (OS) 286/2012
20. http://legislative.gov.in/actsofparliamentfromtheyear/trade-marks-act-1999

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