Abstract
The title is recognised as the primary distinguishable feature of a movie, and the revenue that accrues from a movie can be principally be identified with its title. For the same reasons, the protection of the title is vital for any person receiving benefits out of the creation. Contrary to common understanding, the trademark law in India is the legislation which protects the title of a movie. This article aims at providing an insight into the registration of films under the Trademark Act, and landmark cases associated with it.
Keywords: Registration, protection, film title, Trademark law.
Introduction
Indians are known for their extreme interest in following every movie, and the profit gained from successful movies is immense. Because of the same, the makers of a movie are careful enough to protect everything that is covered under a certain movie. The title or the name is absolutely one of the central aspects of a movie. It becomes one of the key factors by which the audience recognise a movie or distinguishes it from any other movie. There is a lot of thought and effort that goes into the creation of a movie title. The director, producer and many other persons brainstorm in order to select an apt title for a movie. They keep in mind that their movie’s name should be distinct and creative so that it could be identified and chosen by the audience from a group of listed movies. It is important that the movie makers while choosing the title of the film, choose it with extreme care, cautiousness, and thoughtful choice which will connect to the thoughts, and interests of the prospective audience, because of the sole reason that the title plays an important role in attracting the audience to the movie theatres.
The Trademark Act and Registration of films
The Trademark Act of 1999, defines a trademark as “a mark which is capable of distinguishing the goods and services of one person from those of others”[1]. The title of a movie can be registered as a service mark under the Trademark Act. However, for the same, there are certain conditions that have to be met. The same can be explained as given below:
1) Registration of a movie title as a Trademark:
a) A movie title can be registered as a service mark under Class 41 of the 4th Schedule of the 1991 Trademark Rules. This class comprises of a number of services, and among those services is the provision for entertainment. Thus, the filmmakers apply for registering the film titles under the same.
b) The makers of the movie can also apply for registration under Class 9 of the 4th Schedule of the Trademark Rules, which provides for “apparatus for recording, transmission or reproduction of sound or images”. The film titles can be protected as an Intellectual Property under this class because movies can also be viewed on devices like DVDs.
2) Registration of the title of a movie under Film Industry Associations:
a) Additionally, the filmmakers may also choose to register their movie titles under specific film industry associations like the Association of Motion Pictures and Television Program Producers (AMPTPP), Indian Motion Picture Producers’ Associations (IMPPA), Western India Film Producers Association (WIFPA) and the like. A film industry association are associations where writers and producers can enrol themselves as members. Under this membership, they can register their movie titles as well as scripts with such associations. The association verifies the title before it registers the same in order to confirm that it is not similar to any other movie title that has been registered before. Nevertheless, it is important to note that registering a title with such associations does not amount to the ownership in the title, as these associations are not recognized by law.
Therefore, in order to obtain ownership in the title, it is recommended to register it as a trademark.
1) Single film title: There are some conditions that a single film title (no sequel) has to meet so that it can acquire protection under the trademark law as a trademark. The most vital prerequisite is that the title must acquire a secondary meaning in the minds of the audience. This means that the audience who watch the movie must connect the title of the movie with a specific source or production house. Such secondary meaning can be achieved by the promotional events that are carried out before the release of the film so that the prospective audience gets to know about the movie during the promotional events. When such a secondary meaning is obtained, the title of the movie attains the status of a well-known mark and thus can be registered under the trademark Act as a trademark. Whether a title has attained a secondary meaning is ordinarily contingent to the time period for which it has been used, the promotional events of the movie, the total expense on such promotions and collection from the movie, and the like.
2) Series of titles: In the presence of a series of film titles like Dabangg, Dhoom, Golmaal, Bhaagi, etc. the series of film titles can get trademark protection and registration more easily that those compared to a single film title. This is because a series of the title implies that each movie is the result of the work of the same production house and thus can be registered as a trademark without any complex issues. Also, the titles of the same have also gained immense popularity among the audience, thus ascertaining that the ownership of such a trademark is not challenging.
Landmark cases
1) In the case of Sholay Media and Entertainment Pvt Ltd. v. Parag M.Sanghavi[2], the Delhi High Court restrained the release of Ram Gopal Verma’s film “Ram Gopal Verma Ke Sholay” due to copyright and trademark infringements with respect to the famous film Sholay. One of the issues raised in this care was whether trademark protection could be granted to the title of the film. The High Court of Delhi ordered an ex parte injunction in order to restrain the defendants from infringing the rights of the plaintiff, and also recognised the rights in the title of the film. Additionally, the defendant also gave an undertaking that it will not infringe the rights of the plaintiff.
2) Kanungo Media (P) Ltd v RGV Film Factory[3]
This case is an important case with respect to trademarks, as the judiciary made a great attempt in order to fill the gap and establish a position wherein even a single title of a film can obtain trademark protection under the 1999 Act. The Court observed that a film title falls under two categories:
i) Titles of series of film and
ii) Titles of single copyrighted works.
As discussed before, the protection is certain in regards to the titles of a series of film, and such titles have standard trademark protection. Additionally, the Court observed that for this protection to extend to the title of a single copyrighted work, it must be proven that the title has acquired a distinct reputation among the audience or public and the industry that is, has acquired secondary meaning. Consequently, for obtaining an injunction, the plaintiff has to establish that their film title has attained secondary meaning. The Court had also concluded that the Indian law of trademark in regards to the protection of a movie title is similar to the trademark law in the United States.
3) In the case of Warner Bros. Entertainment Inc. and Anr v. Harinder Kohli and Ors.[4], the plaintiffs are well known for the registered Trademark ‘HARRY POTTER’ and they alleged infringement of Trademark and prayed for a permanent injunction from the use of the title ‘Hari Puttar’, that was registered with Indian Motion Picture Producers’ Association and the Association and was ready for the movie’s commercial release. However, the Court dismissed the case stating that the Harry Potter films can be distinguished by the public and the audience can understand the difference between films based on a Harry Potter book and a movie which is a Punjabi comedy. It was observed that confusion of Hari Puttar with the plaintiff’s popular trademark Harry Potter was unlikely.
Conclusion
Thus, it can be concluded that each and every cinematographic work is identified by its title. People connect with the idea behind the cinema by linking it with the title and therefore, it is becoming an advantage to register it under the Trademark law to protect the commercial interest in the film.
Disclaimer: Kindly note that the views and opinions expressed are of the author, and not Law Colloquy.
