This article is written by Mayura Shetty, pursuing a Certificate Course in Media and Entertainment Law: Contracts, Licensing and Regulations from LawSikho.com. Here she discusses “Registration of Film Titles Under Trademark Law”.

Introduction

India is a nation obsessed with movies and, in fact, it is the largest producer of movies in the entire world. As a result, it is no wonder that film makers seek to protect every aspect of their films from infringement including the title. The title of a film is selected with great care to capture the essence of the movie and to arouse interest among moviegoers. The title is what primarily distinguishes one film from another and creates an identity for the movie. Hence, it is imperative for a film maker to protect his movie title and ensure that no other person uses a title similar to his. 

It is for this reason that producers or script writers seek to protect the title of their film under the intellectual property laws of the land. In India, copyright law does not afford protection to film titles as they are not considered “works” within the meaning of the Copyright Act, 1957. Copyright protection is given to original literary, dramatic, musical and artistic works, cinematographic films and sound recordings1. This means that the work as a whole is protected under copyright law but such protection is not given only to the title of a work. This is rational as a title cannot be considered as a literary work by any stretch of imagination. As a result, film makers have to resort to protection under trademark law. A trademark has been defined in the Trademark Act, 1999 (hereinafter referred to as “the Act”) as “a mark which is capable of distinguishing the goods and services of one person from those of others2”. A film title can be registered as a service mark under the provisions of the Act after it has met certain pre-conditions that have been further elaborated hereinbelow.  

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Process of Registration of a Film Title as a Trademark

Under the Act, a movie title can be registered as a service mark under Class 41 of the Fourth Schedule of the Trademark Rules, 1991. This class includes a number of services one of which is “entertainment”. Hence, film makers usually apply for registration of the film titles under this category. They can also apply for registration under Class 9. This class provides for “apparatus for recording, transmission or reproduction of sound or images” and film titles can be protected under this class as movies can be viewed on devices such as DVDs. 

Registering Movie Titles with Film Industry Associations

Apart from registering the title as a trademark under the Act, film makers also choose to register their movie titles with certain industry associations. Indian Motion Picture Producers’ Associations (IMPPA), Association of Motion Pictures and Television Program Producers (AMPTPP) and Film and Television Producers’ Guild of India, Film Writers’ Association and Western India Film Producers Association (WIFPA) are examples of associations wherein producers and writers can enrol as members and thereafter register their movie titles and scripts with such associations. The association authenticates the title before registering it to ensure that it is not similar to any formerly registered title. However, registering a title with such associations doesn’t amount to ownership of the title. These associations are not recognized by law. Hence in order to obtain ownership of a title, it is recommended to register it as a trademark. 

• Under trademark law, the title of a film is protected in two scenarios:

1. Series of titles: When there are a series of film titles such as the Singham franchise, the Dhoom franshise or the Golmaal franchise, trademark protection can be obtained much more easily. A series of titles indicates that each movie comes from the same production house and therefore can be registered as a trademark without any difficulty. Such titles have already gained popularity among the public and proving ownership of such trademark is not difficult.  
2. Single film title: There are certain conditions that a single film title has to meet in order to acquire protection as a trademark. The most important requirement is that the title must obtain a secondary meaning in the minds of the public. This means that the movie watching audience must associate the movie title with a particular source or production house. Such secondary meaning is achieved by the promotional activities that are undertaken prior to the release of the film as the public gets exposed to the movie during the promotional events itself. Once such secondary meaning has been achieved, the title acquires the status of a well-known mark and hence can be registered as a trademark as per the provisions of the Act3. Whether a title has acquired a secondary meaning is usually inferred from the length of time for which it has been used, the promotional activities surrounding the movie and the amount of money spent on such promotions. 

• This test of secondary meaning was laid down by the Delhi High Court in Kanungo Media Ltd. Vs RGV Film Factory and Ors4. In this case, the plaintiff has produced a documentary in Bengali titled “Nisshabd”. This film was not released commercially as the plaintiffs did not have adequate resources but had won awards at certain film festivals. The plaintiffs sought to prevent the defendant from using a similar title for a Hindi movie by claiming that they held a copyright over the title. The Delhi High Court held that film titles can be protected under trademark law but not under copyright law. This is the position under US laws as well. The court also stated for trademark protection, the title should have acquired a secondary meaning. It was held by the court that the plaintiff’s movie had not acquired a secondary meaning in the eyes of the public. Hence the defendant could not be prevented from using the title as they had already spent a huge amount of money to promote the movie and the public was acquainted with the movie. 

In Biswaroop Roy Choudhary vs. Karan Johar5, the plaintiffs had registered the title “Kabhi Alvida Naa Kehna” under Class 41 of the Act. The defendants had registered the title with Association of Motion Pictures and Television Program Producers (AMPTPP), a film association. The court held that the defendant was the actual user of the mark, he had produced a movie using such title and had spent a huge sum of money for advertising and promoting the film. This decision has been widely criticised as the plaintiffs had registered the title as a trademark and still lost the case only because Karan Johar’s movie was widely publicised.

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• This leads us to the conclusion that the court always places precedence on the popularity achieved by a movie and not on first use of the title. The court also takes into account commercial usage of the title. A party that has not used the mark commercially is more likely to lose out on protection to a party that has actually made such commercial use. Registration of a title as a trademark or with any film association as mentioned above is not adequate to protect one’s rights in a title. A party has to show that he has actually used the trademark in a commercial manner and that the public recognises it. 

• The test of secondary meaning can sometimes tend to be unfair as a party who does not have the financial resources to promote his movie may lose out on trademark protection to a party who has the means to promote his movie and create a secondary meaning of the same. While it is understandable that the court would want to protect a trademark that the public easily identifies with, some consideration must also be given to small movies and small producers who simply do not have the resources to undertake large scale promotions of their movies. Otherwise, it results in only large and rich production houses enjoying trademark protection for their movie titles. A balance has to be achieved as there are certain movies made only for digital platforms that may not achieve the fame of a big-budget movie that has a theatrical release. 

Conclusion

As has been stated in the beginning, the title of a movie holds a lot of significance. Hence it is imperative that two similar sounding titles are not used by film makers as this may cause some confusion among the public and in some cases may also lead to losses for a particular film maker. The available decisions of courts that deal with trademark protection of movie titles have tended to favour the movie that is more well-known among the movie watching public. This is because secondary meaning is a basic tenet of trademark law. While this may tend to undermine movies made by small producers, it also can help in situations where a person may register a title as a trademark only to prevent others from using it. In such a case, protection will be awarded to the person who shows he has used the mark extensively and that this has been recognised by the public as well. 

Endnotes

1. The Copyright Act 1957, s. 13 
2. The Trademark Act, s. 2 (zb)
3. The Trademark Act, s. 9(1) 
4. 2007 (34) PTC 591 (Del) 
5. 2006 (33) PTC 381 (Del) 

Students of Lawsikho courses regularly produce writing assignments and work on practical exercises as a part of their coursework and develop themselves in real-life practical skill.