Name and title of the work creates the sense of identity. Film makers all over the world are specific about choosing an exclusive and distinctive name for their movies for viewers to associate with the producers. One of the issues under the ambit of trademark protection is the subject related to the protection granted to the title of cinematographic film. Consequently, registration of title turns out to be prerequisite for every producer.
Before discussing about any case laws it is necessary to highlight about how film titles are protected in India. Customary way of getting the film title registered is with the association such as Indian Motion Picture Producers' Association (IMPPA), the Association of Motion Pictures and Television Programme Producers (AMPTTP) and the Film and Television Producers' Guild of India (Guild). These associations are constantly working with the purpose of endorsing and encouraging the production of films and protecting the commercial interest of films produced in India. The film industries customarily functions through these associations. Before registering the title, the association generally substantiates with other associations as to whether the same or deceptively similar title has been registered with another association. However such registration only establishes priority in the adoption of title of film and authorship of the script.
Moreover, film titles are also registered as a trademark under the Trademark Act, 1999 with limitations.
LIMITATION ON THE PROTECTION OF TITLE OF CINEMATOGRAPHIC FILM UNDER THE LAW OF TRADEMARK IN INDIA
Under two main circumstances Trademark Law protects the title of the cinematographic film:
Firstly, 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.
Secondly, with respect to the title of single literary work where in order to be entitle 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.
SEVERAL CASE LAWS WHERE TRADEMARK LAW RECOGNIZES THE REGISTRATION OF MOVIE TITLE IN INDIA
Sholay Media and Entertainment Pvt Ltd. v. Parag M. Sanghavi2 before the Delhi High Court in which the Ram Gopal Verma's film "Ram Gopal Verma Ke Sholay" was restrained from release due to copyright and trademark infringements in relation to the cult film Sholay. One of the basic issues raised was whether trademark protection could be granted to the title of the film. The Delhi High Court issued an ex parte injunction to restrain the defendants from infringing the plaintiff's rights and recognised rights in the title of the film after a series of hearings and the defendant gave an undertaking that it would not infringe the plaintiff's rights.
Biswaroop Roy Choudhary v. Karan Johar3
Under this case the plaintiff sought an interim injunction from the Delhi High Court to use title of film which plaintiff had registered with Registrar of Trade marks to restrain the defendant from using the tile "Kabhi Alvida Naa Kehna" for the defendant's movie. However, Delhi High Court was of the opinion that although the defendant had not registered the title with the Registrar of Trademarks (as was done by the plaintiff ), the defendant was the actual user of the mark, and in fact had completed the production of the film which was ready for release. Accordingly, Delhi High Court further opined 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 Factory4
This case is a commendable attempt by the judiciary to fill the gap and establish a position that even a single title of the film can acquire trademark protection under the Trademark Act, 1999. The court opined that film titles 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
THE UNITED STATES TRADEMARK LAW ON THE PROTECTION OF MOVIE TITLE
Motion Picture Association of America (MPAA) is first and foremost association introduced in 1922; the organization represents the interests of the American motion picture, home video and television industries both in the US and internationally through Motion Picture Association (MPA). The organization works with the purpose of endorsing and encouraging the production of films, protecting the commercial interest of films produced and protection from any copyright theft. However, the trademark protection is also available related to movie title subjected to limitations stated below.
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.5
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:6
a) creates a separate commercial impression apart from the complete title;
b) is used on series of works; and
c) is promoted or recognized as a mark for the series.
Therefore the law of trademark under USPTO implements the refusal to register titles of a single work regardless of whether it is a book, television program or a movie.
In Paramount Pictures Corporation v. Pete Gilchrist7 the Courts in the United States of America uniformly have given trademark protection to literary title of single works only upon a showing of secondary meaning, even where the title may not be merely descriptive of the contents of the work. The Panel finds that the Respondent registered the disputed domain names primarily with the intention of taking advantage of the Complainant's trademark rights. The panel determine that the movie title acquired secondary meaning and thus the use of complainant's trademark is confusingly similar does not constitute a legitimate noncommercial or fair use of the domain names. Accordingly respondent was restrained from using the disputed domain name.
In Warner Brothers Entertainment v. The Global Asylum, Inc8
Plaintiff owns various trademarks that include the word "Hobbit," filed a trademark infringement suit against defendant seeking a temporary restraining 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.
Whereby the plaintiff satisfies the four factor test and the court found that plaintiff had protectable interest in the HOBBIT mark and that the defendant's use of the mark was likely to cause consumer confusion. The court also explored whether the "Hobbit" mark had gained secondary meaning in the marketplace, and concluded that plaintiffs had extensively used the word "Hobbit," including in three prior series of Lord of the Rings films, constituted additional evidence of secondary meaning. The court found the balance of hardships also weighed in favor of plaintiffs, rejecting defendant's contention and granted injunction on the basis of public interest.
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. The comparative analysis of law related to trademark protection in India and U.S. provides that unlike India, U.S. laws grant protection to series of movie title but no such protections are being given to the single literary work. Where, USPTO treats all single title work as inherently descriptive unless the single title has had wide promotion and great success. The registration not only imparts an exclusive right to the registrant to use the title and restrain the unauthorized use/ adoption or infringement of title but also in case of suits of infringement or passing off, the registrant can seek permanent injunctions and damages
1 Student of final year in KIIT Law School, Bhubaneswar
2 CS (OS). 1892/2006
6. http://www.uspto.gov/trademarks/resources/exam/ examguide4-06.jsp
7 Administrative Panel Decision Case No. D2007-0128
8 CV 12-9547 PSG (CWx) decided on 12 December, 2012
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