In this article, Nidhi Shetty who is currently pursuing M.A. IN BUSINESS LAWS, from NUJS, Kolkata, discusses Protection of movie titles through Intellectual Property laws.

Introduction to Intellectual Property Laws

• Right from pre-historic era, man has made his way through the fight of survival. This fight eventually turned into a ‘competition’ to survive amongst the other survivals. Evolution of humankind bought various developments and innovations. It became a need for every person to secure their innovations in order protect their credit.
• Thus, Intellectual Property became a key element to maintain the competitiveness in the market. It became an integral and core part of almost all business process as for every business growth, protection of their business idea, mark, design, procedure or any other intellectual property related to their business is necessary. It ensures that their intellectual property is secure from any infringement from a third party. Intellectual property rights gained substantial importance with the onset of the knowledge and era of information technology.
• Eventually, Intellectual Property on its own and the various rights attached to it have become extremely important commodities and thus are being protected. India is a signatory to the Agreement on Trade-Related Intellectual Property Rights (“TRIPS”) The Indian Constitution has no mention of Intellectual Property.

However, it deals with just the word ‘property’ in following Articles:

1. Article 19: Freedom to acquire, hold and dispose off property
2. Article 31: Protection from deprivation of property
3. Article 32: Property could be possessed or acquired for public purpose only by law and only on payment of compensation.

Intellectual Property Rights is a collective term and it can be protected under different acts, depending on its type. IPRs is an umbrella term. IPRs consists of the following,

• Patents
• Trademarks
• Copyright
• Geographical Indications
• Design or Industrial Designs

Protection of movie titles through Intellectual Property laws

An Introduction to Media and Films

Communication is the name we give” [1], to the countless ways that humans have of keeping in touch- not just words and music, pictures and print, nods and becks, postures and plumages; to every move that catches someone’s eye and every sound that resonates upon another’s ear. The need for communication is as basic as the hunger for drink and food. Media is a source of such communication. Films are considered a major mass medium because of their mass appeal and influence on society. ‘Film is a term that encompasses motion pictures as individual projects, as well as the field in general. [2]

Importance of Registration under Intellectual Property Laws:

1. Developments and inventions of new products its techniques and processes, names of the brands, the matter and the content, etc. are a process or set of related processes that requires significant system resources or time, or requires exclusive access to large amount of data. They usually require large investments.
2. Thus, an individuals or entities expectation of creating them have the want that they become the sole and exclusive owners and have exclusive rights over their invention or creation, such that it does not bestow rights over any other person. Intellectual Property rights majorly provides such exclusivity to the creators. For some forms of Intellectual Property like copyright and trademark, the right begins the very moment the work is made or created in these types of intellectual property, registration may not compulsory or mandatory but registration provides the creator or the author certain and advantages and benefits like proof of the ownership in prima facie.
3. It makes it easier for the creator to enforce their Intellectual Property right in the court of law. In the event, where the Intellectual Property is not registered, the creator will have to prove his case in the court that the Intellectual Property belongs to the creator when the intellectual property is infringed by any third party (infringer).
4. Under The Trademark’s Act, 1999 a Trademark can be claimed only by a registered proprietor of that particular trademark and only he can sue the infringer for infringement. Therefore, it can be concluded that Intellectual Property Rights are made to protect and help the true registered creator or owners to get the benefits of the returns of their knowledge and investments by preventing any other person from infringing or using the creation without the registered owner’s permission.

Protection of Film Titles under Intellectual Property Laws

• Title or a name of any work creates an identity for that particular work. On the onset of every film the makers of that film strive to choose an exclusive and distinctive title or a name for their movies. This helps the film makers to associate the audience to their film. It becomes utmost important for the film makers to protect their movie titles to protect the distinctiveness.
• “Under Indian Copyright Act, protection is conferred on literary works, dramatic works, musical works, artistic works, cinematograph films and sound recording but not to titles alone. Thus copying of a title alone and not the plot of the movie, the characters, songs etc does not fall under the ambit of copyright protection.
• It is common, rather it is imperative, to give title to literary or entertainment works. The literary work produced by the author or the work of entertainment produced by a producer needs a name. It is only then that such work would be identified. The term ‘literary title’ is used to encompass the titles of books, periodicals, newspapers, plays, motion pictures, television series, songs, phonograph records, cartoon features and the like.”[3]
• Initially, neither copyright nor trademark law may protect titles of a film. Copyrights secure the originality of creativity by protecting its original expression. Therefore, to qualify to be protected under copyright law, a work must have some amount of “authorship”.
• On the other hand, trademark act intends to distinguish and identify the origin of a product. A mark has to be distinctive to qualify under trademark. It means that a mark cannot be generic or descriptive. Therefore the need of registration of movie titles rose.
• In India, a film title is registered with any authorized associations such as the Association of Motion Pictures and Television Programme Producers (AMPTTP), the Film and Television Producers’ Guild of India (Guild) and Indian Motion Picture Producers’ Association (IMPPA).
• The aforementioned associations work constantly with the motive of encouraging and motivating the film productions and eventually protecting the monetary and commercial interest of the movies that are produced in India.
• These associations regulate the Indian Film Industry. The procedure to register a particular film title involves the association substantiating with the remaining associations to find out whether a film with the same or deceptively similar title has been registered with any another association.
• It is very important for a film maker to be creative and innovative in choosing a title of their film as a unique and catchy title can instantly make the viewers and the audience relate to the film making the first and lasting impression on such audience.

Titles of cinematographic films in India shall be registered under Class 41 of NICE Classification of the Trademarks Act 1999. Film titles can be further divided into two heads, that is, titles of series of movies, like for instance ‘Once upon a time in Mumbai ’ and ‘Once upon a time in Mumbai Dobaara’ and title of a single movie. In case of a movie with single title, it is necessary to establish that the title has acquired secondary meaning amongst the mass at large. The test of secondary meaning for literary titles is basically to determine whether in the memories of a large significant number of viewers, the title in question is set with a single source of the literary work.

Limitations on registration of film titles

Registration of every Cinematography film title has a set of limitations involved under the Trademark Act, 1999.

The Trademark Law protects the title of a film under two instances[4]:

1. The title of the series of literary work where the title of the series of the film enjoys standard trademark protection to indicate that each edition comes from the same source as the others and can, therefore, be registered as a trademark. Therefore, in India, the producers seeks or apply for registration of film titles under Schedule 4, class 41 of Trademarks Act, 1999 that incorporates number of services including entertainment.
2. The title of single literary work where in order to be entitled to the protection of trademark, the title need to have acquired secondary meaning to qualify as registrable trademark. The fundamental assumption behind this is that the question of likelihood of confusion of source, affiliation, sponsorship or connection in the minds of potential buyers/users would arise and can be contended only if the disputed title has acquired the secondary meaning and is capable of associating itself with the particular work or source. Even if the work has not been released, a sufficient amount of pre-release publicity of the title may cause a title to acquire recognition, sufficient for protection under the proviso clause stated under clause (1) of Section 9 of Trademark Act, 1999 which specifically gives trademark registration to well-known mark or mark which acquired distinctive character as a result of the use made of it.

Case study of important judicial pronouncements

Krishika Lulla and Ors. vs. Shyam Vithalrao Devkutta and Ors[5]

The Honourable Supreme Court held in the above-mentioned case that copyrights do not subsist in the titles of literary works, including movies. Protection for the same can be granted only by trademarks. The facts of the said case is that the respondents claimed to have written a synopsis with the title ‘Desi Boys’ and the same was forwarded via email to two other persons. On release of the movie ‘Desi Boyz’, the respondents filed a suit against the appellants for the infringement of the copyright. The issue in hand before Court of law was whether the respondents had a copyright ownership in the title of the said movie. The Court stated that as per Section 13 of the Copyright Act, 1957[6], titles cannot be considered as ‘works’ for the purpose of copyrights.

Sholay Media and Entertainment Pvt Ltd. v. Parag M. Sanghavi[7]

The High Court of Delhi granted trademark protection and issued an ex parte injunction for title of the famous film ‘Sholay’ released in 1975. This led to the change of title of ‘Ram Gopal Verma ki Sholay’ to ‘Ram Gopal Verma ki Aag’.

It was stated by the Court that since the title ‘Sholay’ had acquired the status of honor amongst other movies, the defendants were made to refrain from using trademarks that were same or deceptively similar to that of the plaintiffs.

Biswaroop Roy Choudhary v. Karan Johar[8]

An interim injunction was sought by the plaintiff from the Delhi High Court to use title of film which plaintiff had registered with Registrar of Trademarks to restrain the defendant from using the tile “Kabhi Alvida Naa Kehna” for the defendant’s movie. The Court, however,  was of the view that although the defendant had not registered the title with the Registrar of Trademarks contrary of what was done by the plaintiff, the defendant was the actual user of the mark, and had also completed the production of the film which was ready for release. Thus, the Delhi High Court further stated that the actual use of the trademark was always a relevant factor which would deter the Court from granting injunctory relief. Hence, the Court resulted in denial of interim relief to the plaintiff were that Kabhi Alvida Naa Kehna was a phrase in common parlance and therefore could not be used with exclusivity and furthermore there was delay in approaching the Court.

Kanungo Media (P) Ltd v RGV Film Factory[9]

The above-mentioned case is an appraisable attempt by the judiciary to establish a position that even a single title of the film can acquire trademark protection under the Trademark Act, 1999. The court stated that “title of the film fall into two categories firstly, titles of series of film and secondly titles of single copyrighted works. Protection is certain as regards titles of series of film, and such titles enjoy standard trademark protection. However, the court found that in order to extend this protection to the title of a single copyrighted work, it must be proven that such title has acquired a wide reputation among the public and the industry that is, has acquired secondary meaning. Therefore, in order to obtain an injunction, the onus is on the plaintiff to establish that its film title has acquired secondary meaning. And had also concluded that the law with respect to the protection of move title under trademark in India is similar to the law of trademark in United States”.

Movie Title Protection beyond India

United States of America: in the year 1922, Motion Picture Association of America (MPAA) became the first association to be formed. This organization was formed to represent the interests of the film industry, home video and television industries of America both within the country and internationally through MPAA. The Association works with the purpose of promoting and encouraging the film making and production. It also helps in protection of commercial interest of the movies that are to be produced. It aids protection of the films from any copyright theft. The Trademark protection is also available under MPAA related to movie title. However, it is subjected to certain limitations. The limitations are as follows:

“Registration of titles as trademarks with the United States Patent and Trademark Office requires that the work designated by the title is not a single film, television show, or book. If it is being used on a television series, book series or other continuing work, registration is possible and recommended. The USPTO refuses registration of a proposed mark related to the title of a single book and/or movie including marks being: a surname; geographically descriptive of the origin of the goods/ services; disparaging or offensive; a foreign term that translates to a descriptive or generic term; an individual’s name or likeness”[10]

A portion of the title of any single creative work is registrable only if the applicant can show that the portion of the title meets the following criteria[11]:

1. It creates a separate commercial impression apart from the complete title;
2. It is used on series of works; and
3. It is promoted or recognized as a mark for the series.

Thus, the law of trademark under USPTO marks the refusal to register titles of a single work regardless of whether it is a television program, a movie or a book.

In the case of Paramount Pictures Corporation v. Pete Gilchrist[12], the Courts in the United States of America have given trademark protection to literary title of single works. However, it will happen only upon a showing of secondary meaning, even in the case where the work’s title may not be merely descriptive of the contents of the work. The Court found that the Respondent registered the disputed domain names primarily with the intention of taking advantage of the Complainant’s trademark rights. It determined that the use of complainant’s trademark is confusingly similar does not constitute a legitimate non – commercial or fair use of the domain names. Therefore the restrained the respondent from using the disputed domain name.

Warner Brothers Entertainment v. The Global Asylum, Inc[13]:

The plaintiff who owned several trademarks that included the word “Hobbit,” filed a trademark infringement suit against the defendant to seek a temporary injunction order against the distribution of defendant’s film “Age of Hobbits”.

The court established four-factor test for injunctive relief that is:

1. likelihood of success on the merits,
2. likelihood of irreparable harm to them if the injunction were not granted,
3. a balance of hardships favoring plaintiffs and
4. that an injunction would benefit the public.

The plaintiff satisfied all the four-factor test and the court held that plaintiff had an interest that had to be protected in the mark “HOBBIT” and that the defendant’s use of the mark was likely to cause consumer confusion. The court rejected the defendant’s contention and granted an injunction on the basis of public interest.

Conclusion

• Copyright laws can protect the expression of an idea but a simple mere idea cannot come under the ambit of the Copyright Act. Titles of books, songs, movies and other copyrightable works although appear to be protectable under copyright is given their nature of works; yet are not due to the lack of requisite creativity[14].
• Also, copyrights laws are made to protect the honesty and nobility of creative works of ownership and authorship, and movie or book titles do not warrant such a protection. It is only now that this principle has gained a place jurisprudence under the Indian Law. Any cinematographic film or any such work is remembered by the audience and the viewers by its title and name for a very long period.
• The viewers are ought to associate the concept and the idea behind the work by associating it with the  film title and therefore it is becoming an obvious first step of all the film makers to first register the title of the film with association in order to protect and preserve the monetary and other commercial interest in the film.
• Such registration simply protects the work and rights of the owner and it also aids the owner with such copyrights, an exclusive and sole right over the title of such work. Moreover, registering the title of film helps to restrain the unfair and unauthorized use or adoption by another.
• In case of any infringement, registration of titles help the owner to knock the doors of the judiciary for relief that are justified and righteous. Such suits can also help the registered owner to get compensation for any kind of loss occurred or a royalty(if applied) can be collected by the infringer. “India recognizes trademark rights to the title of the movie even in case of single literary work under the Trademark protection in India. The title that acquires secondary meaning and the use of the same by another may cause overlapping of the source and likely to create confusion in the mind of the consumer.”[15]

That was all on  Protection of movie titles through Intellectual Property laws. What are your views on  Protection of movie titles through Intellectual Property laws? Please comment below and let us know.

References

[1]Äshley Montagu and Floyd Matson, The Human Connection (McGraw Hill, 1979).

[2]Media Law, Dr. S.R. Myneni

[3]McCarthy on Trademarks and Unfair Competition, Third Edition (1995) Vol. I

[4]http://www.mondaq.com/india/x/295382/Trademark/MOVIE+TITLE+PROTECTION+UNDER+LAW+OF+TRADEMARK

[5] ILC-2015-SC-CRL-Oct-9

[6] Section 13- Works in which copyright subsists.- (1) Subject to the provisions of this section and the other provisions of this Act, copyright shall subsist throughout India in the following classes of works.

[7] CS (OS). 1892/2006

[8] 2006(33)PTC381(Del)

[9] 2007(34)PTC591(Del)

[10] http://www.uspto.gov/trademarks/basics/BasicFacts.pdf

[11] http://www.uspto.gov/trademarks/resources/exam/ examguide4-06.jsp

[12] Administrative Panel Decision Case No. D2007-0128

[13] CV 12-9547 PSG (CWx) decided on 12 December, 2012

[14] http://www.mondaq.com/india/x/463448/Copyright/Movie+Titles+Entitled+To+IP+Protection

[15]http://www.mondaq.com/india/x/295382/Trademark/MOVIE+TITLE+PROTECTION+UNDER+LAW+OF+TRADEMARK