IPR issues at the Central Perk’s
Image source: https://rb.gy/okxwac

This article is written by Ishaan K. Paranjape, pursuing a Diploma in Intellectual Property, Media and Entertainment Laws from LawSikho.com.

Introduction

Irrespective of great love and interest for Game of Thrones, Breaking Bad, etc., we are still relishing our moments of laughter through F.R.I.E.N.D.S. It has been almost two decades since this sitcom has ended, even then we cannot forget Joey’s ‘How you doin’ or Ross’s ‘Unagi’ or ‘Joey doesn’t share food’ or Phoebe’s’ ‘they don’t know that we know they know we know.’ This list is surely a never ending one. Along with dialogues, another thing that the F.R.I.E.N.D.S. fandom truly love, is a place that is 97 steps away from Chandler and Joey’s apartment- THE CENTRAL PERK. From the legendary Orange Sofa to Joey and Chandler’s Pat the Dog, fans crave for living a ‘F.R.I.E.N.D.S. life’ and enjoy the nostalgia of their favourite sitcom at a place similar to, if not, the real Central Perk 

Owing to such massive popularity of Central Perk, several restaurateurs and entrepreneurs have come up with the idea of an F.R.I.E.N.D.S.-themed café or restaurant. Now, as a student of law, the question that comes to my mind is what IPR issues might emerge due to such Central Perk-themed cafes? We can be optimistic and hope that the hotel owners have acquired all the necessary rights for running such a café from NBC (the producer of this sitcom). However, this article shall proceed on the assumption that no rights are acquired by the cafes. Based on this assumption, what trademark, copyright, publicity rights, etc. have been violated by such restaurants is dealt with at length in this article.  

Unagi (state of total awareness) of Copyrights

It is obvious that the theme of the restaurant is based on F.R.I.E.N.D.S.; nevertheless, such a theme merely indicates the idea and concept on which the ambiance, interior, etc. of the restaurant is based upon. Now, let me point out the settled legal position – ideas are not copyrightable entities and the same idea can be developed in different fashions. Taking this argument further, it can be said that café having elements similar to that of the sitcom, without being distinctly identifiable, shall not and cannot amount to copyright infringements.

Now, one has to understand that the main idea of such a café is to be very, very similar to the Central Perk in the sitcom. As a result of which such cafes try to incorporate characters, interiors vis-à-vis a general setup so similar to the show that it can be literally identified as being an imitation of the actual sitcom. This, by definition, is an infringement of NBC’s copyright. To give another example, if one has to open a café based on a Star Trek theme, and they design the interior that is similar to a spaceship, such interior will not amount to copyright violation of Viacom-CBS. However, if such café makes use of distinct visual specifics, like directly using ‘Captain Spock’, ‘USS Enterprise’, ‘Millennium Falcon’ references, it will surely amount to copyright infringement.  

The general trend shows that such hotels do not display a vague similarity to that of the original Central Perk from the sitcom or other characters, instead, these hotels try to resemble the original in such a manner that it can be perceived as a duplicate of the sitcom version. All such cafes show a penchant for including the iconic orange couch, Phoebe’s pink bike that has the learning wheels, Pat the Dog’s ceramic statue, or for that matter the picture of the words ‘the Central Perk’ as it appears on the show, etc. as the interior. Also, several such themed bistros have kept the menu very similar to that of the show (even the prices); they have also included the dishes bearing the character names into the menu. Such hotels give the F.R.I.E.N.D.S. cognoscente a chance to enjoy an unparalleled Central Perk experience, but in absence of licenses, such eateries surely infringe the copyrights of the original copyright holder, meaning thereby, such hotels can be made liable for legal actions by NBC.

NBC doesn’t share Trademarks!

Along with the copyright issues, the sitcom-themed cafes can also land in trouble due to the passing off allegations. Of course, I do understand that the word ‘F.R.I.E.N.D.S.’ or ‘Central Perk’ are not registered as trademarks in India. Irrespective of that, NBC can take recourse of the trans-border recognition and the principle of well-known trademark. Regardless, the show ended a long time ago; beaucoup merchandise is sold by NBC (see here) under the F.R.I.E.N.D.S. mark even today. This strengthens the position of the above-mentioned words (Central Perk, F.R.I.E.N.D.S., etc.) as distinctive marks. 

It has to be understood that when the hotel and the show share the same name, the possibility of people thinking that both are interconnected cannot be neglected in totality. Such same names may also amount to people thinking that the studio has sanctioned the existence of such a restaurant. At this juncture, it is pertinent to note that the term ‘friends’ itself is a common English language word and thus it can be registered as a trademark only when it has certain secondary distinctiveness attached to it. This distinctiveness was attributed to the word only after the show went on air, i.e., the word can be afforded trademark protection only when the word is used as a logo as it appears in the show. This has been elaborated by two pictures given below.

Image source: https://rb.gy/eozmco
Image source: https://rb.gy/ogpjbe

Here, the first picture is that of ‘Friends Bar & Grill’, Georgia. Even though the name of this restaurant is ‘friends’, it will be unfeasible to prove the trademark infringement as in this case, no nexus can be drawn with the actual show. However, that is not the case with the second picture. This is an image of ‘F.R.I.E.N.D.S. Cafe’, Pune. In the latter, it will be relatively easier to establish the passing off case as this café is based entirely on the show and makes use of exact imitation of the logo and the title. Here, one has to understand that NBC can easily demonstrate that these marks (F.R.I.E.N.D.S., Central Perk, etc.) are recognized as well known in at least one relevant section of the society, and this is the basic requirement for obtaining Trademark protection under the Trade Mark Act (see here). This surely implies a strong passing-off of the case against the restaurateurs.

Could there be more rights of publicity?

It is possible to presume that since the actors are not playing themselves, but are playing the role of fictional characters, there exist no rights of publicity with the actors; instead, there are only copyrights of the characters which are owned by NBC itself. Is the above assumption true? This pulls us to the debate whether the actors can claim publicity rights of the fictional characters that they played or play. This debate is answered well by a few judicial precedents.

In the case of McFarland v. Miller, the Third Circuit was of the opinion that when the actor’s screen presence becomes so closely associated with him, that it becomes impossible to separate the fictional character from the actor himself, he (the actor) obtains an interest in the character that gives him standing to forbid interlopers from using such characters without any authority. Also, in the case of Landham v. Lewis Galoob Toys, Inc., the Sixth Circuit adjudged as follows, ‘If the use of a fictional character also evokes the identity of the actor who played that character, he may challenge that use regardless of the fact that the actor’s personal notoriety was gained exclusively through playing that role.’

Another case that warrants due attention is that of Eddie Irvine, a popular Formula-1 driver. Here, an unauthorized, morphed image of the plaintiff holding a radio mike was used as a marketing gimmick by the defendant. In this case, the Australian court held that for bringing action against such instances, the plaintiff needs to establish the following-

  1. The celebrity enjoyed significant reputation and goodwill (the entire F.R.I.E.N.D.S. cast is very, very popular);
  2. The defendant’s action amounts to improper message and misrepresentation that the goods/ services are endorsed by the celebrity (possibility of misrepresentation that the restaurant, the celebs, and the show are intrinsically connected);
  3. As an outcome of this misleading representation, the celebrity has suffered damage to his goodwill and reputation (negative quality of the restaurant means a negative impact on the celebrity’s reputation).

As it has been discussed, the current theme café scenario is a textbook illustration of the aforementioned three-fold test, implying a violation of the celebrity rights along with the rights of NBC. Thus, it is submitted that, along with copyright and trademark infringements, there is big room for violation of publicity rights in such F.R.I.E.N.D.S. themed cafes.

Conclusion

The author has adequately illustrated that there should be no copyright issues till the restaurants do not make use of distinct visual specifics of the show. Nevertheless, the moment the hotels try to imitate the show, it will amount to a potential copyright infringement. Similarly, the words F.R.I.E.N.D.S.’, ‘Central Perk’, etc. are already very popular globally and this strengthens the case of passing off in the trademark infringement claims. Also, there is a great chance of violation of the personality rights of the artists who acted on the show. On a concluding note, if our assumption regarding the restaurateurs not acquiring necessary rights is true, then it is possible to say that if NBC decides to take any IPR infringement action against such hoteliers, they will be prone to severe legal actions worth billions. Could there be any more trouble?

References


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