India: Simmba vs Simba: A Trademark Tussle

Last Updated: 20 February 2019
Article by Lokesh Vyas

Context

Before the release date, Rohit Shetty's much-appreciated film 'Simmba' got into trademark squabble with 'Sona Beverages Co. Ltd'. In November, the makers of Simmba were slammed with the allegation of trademark infringement of a beverage company in Delhi High Court.

Chhattisgarh-based Company named Sona Beverages Co. Ltd owned the trademark 'SIMBA' for selling a variety of drinks, sent a notice to Rohit Shetty Picturez LLP [production house of SIMMBA] and thereafter filed a suit against the Defendant.1 Justice Pratibha M Singh asked the production house to respond to the plaintiff within the stipulated time and encouraged both the parties to reach to a mutual settlement.

Settlement

On 10th December 2018, both the parties entered into a Trademark License Agreement. In addition with consent terms that were placed by the parties on 19th December 2018 and signed by the representatives of both the parties. As per the agreement, a disclaimer had to be shown in the title slides/credits of the film that the trademark 'SIMBA' actually belongs to 'Sona Beverages Co. Ltd' and the production house is using it under a trademark licensing agreement between both the parties. Furthermore, the order stated that the Censor Board shall ensure that the disclaimer has been appropriately been added in the title slides/Credits of the feature film 'SIMMBA'. Thus, the suit was decreed and all the other interim applications are disposed of.

Movie: A hub of Intellectual Property Rights

In the figurative sense, a movie (film) is a voyage which starts from the script and ends with the final screening of the movie. Thus, it is apt to call Script to Screen journey. A movie entails a mélange of Intellectual property Rights [IPR] such as Copyright, Actor protection

Trademarks, Technical innovation, etc. Primarily, movies are protected by accrediting copyright to the movie. In the IP language, a movie comes under the purview of cinematography work but a film cannot be seen in isolation only as a cinematography work. Although the producer is the author of cinematography work yet there are other stakeholders as well who are associated with a movie and play a pivotal role in the production of a movie. Such stakeholders are the lyricists [who write songs for the movie], scriptwriter, performers, composers, singers etc. and all of them get certain right on the work they contribute. It starts with a script which constitutes a literary work, lyrics in the songs of a movie are again a literary work, music used in the film is musical work and entitles the composer to claim right over it. Furthermore, the name of the movie gets a trademark [Provided it is distinctive all the essential elements are proved], if such name is written such a way that it qualifies for artistic work then it authorizes its author to claim copyright on such work. In furtherance of the same, actors in the movie are accredited with performers rights. Moreover, photographs taken in the movie entitle the photographer to claim copyright on such photographs, similarly, the poster of a movie contains copyright if it entails some artistic work. Thus, a movie is a collection of rights. Without copyright, the producers would have no distribution rights to sell in the first place, and without distribution deals, many producers wouldn't be able to secure the funding necessary to make their movies, hence IP rights are very pivotal for a movie.

The famous movie 'Harry Potter' is an apt example to understand the above proposition 'Movie: A hub of Intellectual Property Rights'. The film Harry Potter is a derivative work of J. K. Rowling's novel Harry Potter. On the movie, Warner Bros. Entertainment Inc. owns the copyright as the cinematography work. Similarly, actors in the movie like Daniel Radcliffe, Rupert Grint, Emma Watson etc. own performers rights. Music in the movie was composed by John Williams, Patrick Doyle, Nicholas Hooper, and Alexandre Desplat, therefore, they own the copyright on their musical work. The title of the movie contains trademark as it individualises this from other movies.

In the present case, if the defendant had not filed a suit against Rohit Shetty Picturez, trademark title 'SIMMBA' would have gone to Rohit Shetty Picturez LLP. [after satisfying all the other requirements].

Other issues involved with the title of a Movie

The prima facie identity of any film is its title; therefore, the producer of the film should protect the title. However, the Apex Court has clarified that the title of a movie is not copyrightable per se unless it contains an original literary or artistic work [Krishika Lulla v. Shyam Vithalrao Devkatta, (2016) 2 SCC 521]. However, it does not deprive the producer of right on the title of a film. Trademark Act, 1999 allows a person to get the title registered and protected under Class 41 of the Fourth Schedule of Trademark Rules, 2001. In India, major production houses apply for registration of movie titles and labels under Class 41 that embrace a number of services including "entertainment". On the other hand, these applications are also filed in Class 9 as movies can also be viewed on storage devices like DVDs that provides for, among other goods. Thus, under Trademark Law, the title of a cinematographic film can be protected under two conditions: Firstly, Series of Film Title– they are easier to get trademark protection and registration than the single film title. E.g. Dhoom franchise viz. Dhoom, Dhoom 2, Dhoom 3. Secondly, Single Film Title:- A single film title has to satisfy certain requirements to get trademark protection and registration.

Requirements

The title needs to have acquired secondary meaning to qualify as a registrable trademark.

The underlying assumption behind such requirement is that the question of likelihood of confusion of source, affiliation, sponsorship or connection among potential buyers/users would arise. It can only be overruled 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.

Conclusion

This is not the first time when a movie got into troubled waters with respect to IP law. There have been movies in the past like Rockstar, Om Shanti Om, Ra.One, Desi Boys etc which faced allegations against copyright infringement.

Footnotes

1 M/s Sona Beverages Pvt. Ltd. vs Rohit Shetty Picturez LLP [CS(COMM) 1224/2018]

2https://barandbench.com/wp-content/uploads/2018/12/Sona-Breweries-vs-Rohit-Shetty-watermark.pdf

3https://www.bananaip.com/ip-news-center/indian-trademark-law-on-protection-of-movie-title-part-1/

4https://spicyip.com/2018/03/film-title-protection-madras-high-court-rejects-copyright-claim-over-film-title-holds-trade-association-rules-not-binding-on-non-members.html

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