Registration of Film Titles under Trademark Law
Registration of Film Titles under Trademark Law
The Indian film and media industry is perhaps the biggest maker of world class films. Any cinematographic work is always known for a long period of time by its ‘Title’. Titles act as the remarkable identifier representing their work. Name and title of the work creates the identity. Movie producers everywhere on the world are specific about picking a restrictive and distinctive name for their movies for viewers to associate with the makers.
Titles are what used to recognize and distinguish films from one and another. This makes it a critical part and consequently requires protection. Titles are not protected under Copyright Law or Trademark Law.
Copyrights only secure the expression of idea and not idea itself. Slogans, Taglines and Titles don't get protection under the copyright law. In the case of Krishika Lulla and Ors. v. Shyam Vithalrao Devkatta and Ors1, the court held that movie titles specifically don’t come under the provisions of copyright law. Trademarks originally protect only distinctive works.
Certain associations have been made where film titles are registered customary, 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).
The associations are continuously and empowering the production of movies and ensuring the business interest of movies produced in India. Before registering the title, the associations validates with different associations concerning whether the same or similar title has been registered with another association. Film titles are also registered as a brand name under the Trademark Act, 1999 under Schedule 4, class 41 with some limitations. Registration with the said associations doesn’t prove ownership of title and prevents proprietors from claiming their rights.
In the case of Fisheye Network Pvt. Ltd. vs. Association of Motion Pictures & T.V. Programme Producers and others2, the plaintiff registered his film name ‘Thank You’ with AMPTPP, where court held and allowed defendant to use same title since plaintiff had no right of ownership.
PROTECTION OF A FILM TITLE UNDER TRADEMARK ACT
Filmmakers register their film title as a service mark under class 41, of the 4th schedule of the Trademark Rule, 2001. Class 41 provides for registration of a trademark. For registration under Trademark Act following condition is required-
Film titles are divided into two categories: 1) Title of series of Films, 2) Title of single Film.
Title of series of films can get a registration and protection easily. For examples -HOUSEFULL franchise i.e., HOUSEFULL, HOUSEFULL II, HOUSEFULL III and HOUSEFULL 4, whereas for title of a single film, registration will not be according to the Trademark Act, it has to pass a second qualifier. In the case of Kanungo Media (P) Ltd. v. RGV Film Factory,3 the Delhi High Court provided the difference between the Title of series of films and single literary work. Kanungo Media filed a suit against Ram Gopal Verma in Delhi High Court for permanent injunction for using the title of their film titled "NISHABD". The court held that the plaintiff's film not acquired secondary meaning and would not cause any confusion in the mind of the public.
Secondary meaning title of single literary work: For this condition to be fulfilled, the title must acquire a secondary meaning, meaning the title should have some source, production house etc and consumer recognition. For Secondary meaning, the Court considers certain factors like- time period and continuity of use, money spent advertising & promotion, people who buy and view the work.
One of the best example of benefits of Trademark Registration of movie title, i.e. Sholay case. In Sholay Media and Entertainment Pvt Ltd. v. Parag M.Sanghav,4 Indian film producer, Ram Gopal Varma, produced a film titled ‘Ram Gopal Varma ke Sholay’, and also used names of character from the original film, Sholay. The most famous film made in 1975 and then became a name with regards to audience, titled ‘The Sippys’, giving it a secondary meaning. Sascha Sippy, grandson of G P Sippy (producer of Sholay), filed a case against Ram Gopal Varma in the Delhi High Court asserting Infringement of Copyright & Trademark. Ram Gopal Varma agreed and changed the title of his film to Ram Gopal Varma ke Aag. The makers of Sholay also registered the character names ‘Gabbar’ and ‘Gabbar Singh’ because of acquiring secondary meanings.
Further, In the case of Biswaroop Roy Choudhary vs Karan Johar,5 Biswaroop Roy filed a suit in the Delhi High Court for permanent injunction to restrain Karan Johar from using his registered title "Kabhi Alvida Naa Kehna". The said title was also filed by Karan Johar with the Association of Motion Pictures and TV Program Producers and the Film and Television Producers Guild of India. The Court held in the favour of Karan Johar, that the title of the single film be registered as a trademark only that they achieve secondary meaning.
Enrollment of Film Title causes individuals to conceptualize the idea related with the film. Registration of title by the producers and writers is in this manner turning into an essential and basic to save their business rights and interests in the films.
The registration not just confers an exclusive right to the registrant to utilize the title and control the unapproved use or encroachment of title but in the case of suits of encroachment or passing off, the registrant can look for permanent injunctions and damages.
To know more about, protection of film title under Trademark Law, see the video below-
1 Criminal Appeal No. 258 & 259 of 2013 SC (Decided on 15.10.2015)
2 SUIT (LODG.) NO.901 OF 2011
3 138 (2007) DLT 312
4 CS (OS) 1892/2006
5 131 (2006) DLT 458, 2006 (33) PTC 381 Del