This article is written by Anu Saharan who is pursuing a Diploma in Intellectual Property, Media and Entertainment Laws from LawSikho.
Table of Contents
Introduction
Every beautiful and original piece of art is created by skillful hands and at every instance of its use, some sort of recognition and reward should be given to the authors and owners of such an art. Moreover, no one should be allowed to ride on the success of such works. Unlike other works, a song is not an outcome of individual labor, but it is a collective result of various individuals i.e. lyricist, composer, singer, sound recorder, and producer.
Intellectual property rights, especially copyrights and trademarks are very closely connected with musicians. The music encompasses within itself copyrights in underlying works comprising of literary works (lyrics/songwriting) and musical works (composition, notation, tune, melody, instruments) on one side, and sound recording (entire song as a whole) on the other side and copyright law affords exclusive rights to authors and/owners of underlying works and sound recording separately, which they can monetize upon, and also provides protection against unfair/ unauthorized use.
The moment an underlying work of a song and sound recording is created, automatic protection is accorded to such work as per the copyright law. Having said that, the protection to such works is only given if it possesses sufficient originality and creative elements. It is generally seen that the title of songs lacks sufficient originality and creativity when it is sliced off from the song lyrics, due to which we find many songs and films with the same title. In such unusual situations, the title of the song can be protected under trademark law. In this article, we will discuss how and why A. R. Rahman “Jai Ho!” impacted Salman Khan’s “Jai Ho”. In 2014, A. R. Rahman had held off Salman Khan from using “Jai Ho” as his film title, it being a famous oscar-winning song composed by him which was featured in oscar-winning film Slumdog Millionaire, and it is his registered copyright and trademark, and accordingly anyone using it in any manner had to take a license from him.
Copyright protection to “Jai Ho”
“Jai Ho” is one of the most famous songs in the world and has received several awards including an Oscar for best original score, composed by A.R. Rahman in 2008 for the Hollywood movie Slumdog Millionaire.
As earlier mentioned, copyright subsists in the literary and musical works and sound recording, and Section 14(a) and Section 14(e) of the Copyright Act, 1957 lists the exclusive rights that can be exercised by the owners of the copyright in such works. The owner of the copyrights can further license/assign such right(s) for use to others, for a limited or perpetual period in lieu of money. Apart from automatic protection which is granted under Copyright Act, 1957, the sound recording “Jai Ho”- Slumdog Millionaire (Diary No. 3382/2009-CO/SR) was also registered with the registrar of copyrights in the name of Super Cassettes Industries Limited in 2013.
Not only that, following the massive praise of the song “Jai Ho”, A.R. Rahman had applied for copyright registration of the song title “Jai Ho”. A title is basically a form of “literary work” and as per Section 13 of the Indian Copyright Act, copyright subsists in a literary work, if it is original. There have been many copyright battles in respect of the title of works and very rarely it seems that copyright protection has been afforded to a title of any work, the reason being lack of originality and creativity. It is actually next to impossible to get copyright protection extended to a title alone, unless it’s a long and unique phrase, as most titles are made up of generic words. In India, the practice of registering song titles is unprecedented.
“Jai Ho” as a song title which means “victory be there”, is a generic word widely used in India while greeting and addressing/worshipping god in religious or spiritual ceremonies. Despite lacking originality and creativity, “Jai Ho” was registered (Registration Number PA0001656246) by the US Copyright Office due to the oscar award and immense popularity that the song has gained all over the world. The concept of copyright is territorial and national in scope, however, India being a signatory to the International Conventions through International Copyright Order, 1999, has to give protection to foreign works of contracting countries in India as if such works are Indian works without any conditions/formality and irrespective of the nationality of the author/owner of such works.
As per the International Copyright Order, 1999, such benefits shall be given on a reciprocal basis by the contracting countries to each other, however, the term of copyright of such foreign works shall not be extended beyond what is accorded by its home country. Thus, copyright protection is available to the title “Jai Ho” beyond the limits of the US. This is one of the legal reasons as to the objection to using “Jai Ho” as the title of Salman Khan’s Film.
Trademark protection for “Jai Ho!”
Unquestionably, trademarks play an important role in the creation of a unique identity in relation to goods and services of one from another. Trademark is a type of intellectual property right consisting of a symbol, word, or phrase/logo that associates a business with its products and services. A registered trademark owner possesses statutory remedy in case of infringement/ dispute relating to the mark or its validity under the Trademark Act, unlike an unregistered trademark which is only protected under common law tort of passing off. Registration of the trademark grants the owners exclusive rights to use such marks in relation to goods and services; acts as a source identifier for goods and services; and also prevents others from using identical or confusingly similar marks. In particular to the music industry, the title of a song or a film undoubtedly allures the audience to watch or listen to it, thereby making it a commercial success. Thus, every business must be cautious while selecting a trademark.
Like copyrights, trademark registration of titles is not that simple. Only original and distinctive titles and phrases can be accorded protection under Trademark law rather than a descriptive or generic ones. Moreover, it must have gained secondary meaning through use in trade. In India, not many song titles are trademarked. In the year 2017, for the first time trademark registration was sought by the owner Music Entertainment India Pvt. Ltd. in respect of its song title – Why this Kolaveri Di? that is not only a unique phrase but also has acquired a secondary meaning, in other words, due to the song being viewed more than 265M on online platforms, it has got a significant recognition in relation to the song. This is similar to what had happened with the song title “Jai Ho!”.
In the US, where the song was released, the title “Jai Ho” is considered as unique as “Why this Kolaveri Di?” is considered in India. Moreover, it being an oscar-winning song had acquired immense recognition to be eligible for protection under copyright law, therefore, after the success of the song, A.R. Rahman got the mark “Jai Ho!” registered internationally, thus bestowing protection to the mark in other contracting countries, and an authorization is required from A.R. Rahman for the use of the trademark “Jai Ho!”
In 2013, Sohail Khan Productions, the banner under which the film “Jai Ho” was set to release, had applied for trademark registration of the mark “Jai Ho” (Application No. 2647201 in Class 41), but the application was objected to and thus, abandoned. The trademark application was objected to on the relative grounds under Section 11(1) of the Trademark Act, 1999, which deals with refusal of trademark application if the trademark applied for is similar (in visual appearance and resemblance) to an already existing trademark covered under the same class of goods and services, and which could cause confusion among the public regarding the association of it with an existing trademark. This is another legal reason due to which Salman Khan had obtained a license from A.R. Rahman for use of the title “Jai Ho”, the reason being the likelihood of it being associated with the hit song which is also trademarked.
Conclusion
Originality is a common factor in all kinds of IP protection. If we make a summary of the above, the song “Jai Ho” composed by A. R. Rahman unarguably has made a big success and has made India proud, but the title of the song omits elements of originality and creativity, the phrase being a common phrase in Indian context as it is generally used for greeting and while worshipping god. It could also be argued that it is a bit tough to say that Salman Khan’s film title “Jai Ho” could have created any confusion in the mind of the public that A. R. Rahman has produced the film or the film has any association or connection with the A. R. Rahman. Also, it is difficult to conceive that the film producer is trying to ride on the success of A.R. Rahman’s Oscar-winning “Jai Ho!”. The film industry is highly capital intensive and probably it was not worth the time and effort that Sohail Khan Productions wanted to spend litigating over a title, which might be the reason why a license from A. R. Rahman was sought for using the title “Jai Ho”.
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