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Film Titles And Their Protection

October 15, 2012

Any cinematographic work is recognized for decades by its “Title”. Registration of title by producers and writers is therefore becoming a prerequisite in the industry. Registration of titles with industry associations doesn’t hold water in courts. By contrast, ownership and validity of titles can be established when registered with the Trademark Registry. Registration imparts exclusive right to the person who registers to use the title and restrain unauthorized use or adoption or infringement of the same.

 

The Indian film and entertain- ment industry is one of the largest producers of world class films. It offers a big mar-ket  in  terms  of  consumers  and  has  a significant  growth  potential  with  an expected growth rate of 20% per year. The  grant  of  “Industry”  status  to  the Indian  film  industry  by  the  Govern- ment  of  India  in  2001  resulted  in  its rapid evolution with the foray of many foreign  players  and  investors  includ- ing  20th   Century  Fox,  Viacom  Motion Pictures,  Warner  Brothers  etc.  This paradigm shift is astounding however IP (Intellectual Property) issues main- ly  related  to  controversies  over  using deceptively similar titles or other ways of  unauthorized  adoption  of  titles  of films,  infringement  of  copyright  and trademarks,   passing   off   have   also cropped up simultaneously.

 

Registration with Industry Associations

Indian Motion Picture Producers’ As- sociation (IMPPA), Association of Mo- tion Pictures and Television Program Producers (AMPTPP) and Film and Television Producers’ Guild of India, Film Writers’ Association and West- ern India Film Producers Association (WIFPA) are the Industry associations that are consistently working with the objective of promoting and encourag- ing the production of feature films and protecting the commercial interest of films produced in India. Producers and writers (who are members of these associations) can also get the titles and scripts registered with these organiza- tions. The film industry usually oper- ates through these associations. Before registering the title, the association usually verifies 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 author- ship of the script and has no effect on any legal proceedings in the court.

 

Protecting     the Title under Intellectual Property Laws

US Courts have taken an uniform view that the title alone of a literary work cannot be protected by Copyright Law. Thus copying of a title alone, and not the plot, characterization, dialogue, song etc. is not the subject of Copy- right Law. The same fundamental is followed under Copyright Law in In- dia. Indian Copyright Law offers pro- tection to the original literary work, dramatic, musical and artistic works, cinematographic films and sound re- cording but not to titles alone.

 

Trademark Registration of the Title

The legal protection for literary titles lies in the field of trademark and unfair competition law and is protected un- der the fundamental tenets of the said law. The Delhi High Court has also noted in the famous “Nishabd” case that the title cannot be used in such a way as to create a likelihood of confu- sion of source, affiliation, sponsorship or connection in the minds of potential buyers. For these purposes, titles of lit- erary and entertainment creations and works are treated in much the same way as the trademarks of other com- mercial commodities.

 

 

It is common, rather it is imperative, to give title to literary or entertainment works. The literary work produced by the author or the work of entertain- ment produced by a producer needs a name. It is only then that such work would be identified. The term ‘literary title’ is used to encompass the titles of  books,  periodicals,  newspapers,  plays,  motion pictures, television series, songs, phonograph re- cords, cartoon features and the like. [McCarthy on Trademarks  and  Unfair  Competition,  Third  Edi- tion (1995) Vol. I].

film1

 

Titles may relate to a single literary work or to a series of literary works. The scope, parameters and limitations of both types of works as observed by the Delhi High Court is delineated be- low:

Titles of a series of literary works

Titles of a series of books, periodicals or newspapers function as a trademark to indicate that each edition comes from the same source as the others and can therefore be registered as a trade- mark. Such ‘series titles’ enjoy the same protection as usual trademark.

 

Titles of single literary works

In order to be entitled for trademark protection, it is necessary to establish that the titles of single literary works have acquired secondary meaning. The underlying assumption behind this is that the question of likelihood of confusion of source, affiliation, spon- sorship or connection in the minds of potential buyers/users would arise and can be contended only if the disputed title has acquired the secondary mean-ing 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 pub- licity of the title may cause a title to acquire recognition sufficient for pro- tection. Relevant evidence from which secondary meaning for a literary title may be inferred as a question of fact includes:

  • the length and continuity of use;
  • the extent of advertising and pro- motion and the amount of money spent;
  • the sales figures on purchases or admissions and the number of people who bought or viewed the work; and
  • the closeness of the geographical and product markets

 

Trademark Applications by leading Media and Produc- tion Houses in India:

Leading  production  houses  in  India apply  for  registration  of  movie  titles and labels in Class 41 that encompass a number of services including “enter- tainment”. Phir Hera Pheri (1084237), Munna     Bhai    (1780467,     1780364)

and  Dhoom  (2193798,  2095311  and 1319835) are examples of movie series where  the  producers  have  applied  for registration  of  movie  titles  and  labels in Class 41. On the other hand, as mov- ies are also viewed on storage devices like DVDs, many applications are also filed in Class 9 that provides for, among other goods, “apparatus for recording, transmission or reproduction of sound or images…”. The graph below depicts the  number  of  applications  filed  for registration in Class 41 and Class 9 by some of the media houses in India.

film2

 

Disputes surrounding the Titles of Films registered with Industry Associations

Shortkut: Bikramjeet Singh vs Anil Kapoor

Anil Kapoor, an Indian actor and producer, had registered the title “shortkut” for his production -star- ring Akshaye Khanna, Arshad War- si and Amrita Rao- with IMPPA. Later on, producer Bikramheet Singh Bhullar raised objection with the IMPPA, submitting that the same title has been registered by him prior to Anil Kapoor’s registra- tion. In this Title tussle, Anil Ka-poor had to finally with- draw and change the ti- tle to “Short- kut- The Con Is On”.

Thoda Pyaar, Thoda Magic vs Thoda Life, Thoda Magic

The Yash Raj Films production “Thoda Pyaar, Thoda Magic” came under controversy over the title when opposed by actor- producer Saahil Chadha on the grounds that the title of his film “Thoda Life, Thoda Magic” had already been registered with the Indian Motion Picture Produc- ers Association (IMPPA). Kunal Kohli, Director of “Thoda Pyaar, Thoda Magic” in the counter ar- gument said that the title of his movie was registered with the Film and Television Producers` Guild of India. Sahil later lodged a complaint with IMPAA. Later, both the movies were released without any change in their title.

 

Famous Controversies surrounding movie “Title”

Biswaroop Roy Choudhary vs Karan Johar on 28 July, 2006

Producer Biswaroop Roy filed a suit in the High Court of Delhi seeking permanent injunction to restrain Karan Johar from using his registered ti- tle “Kabhi Alvida Naa Kehna”. The said title had

also been 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 dismissed the petition on the grounds that words or phrases in common parlance are sought to be used with exclusivity and which of the parties has traversed an appreciably longer way in the use of such words as a trademark or as a title.

 

Kanungo Media (P) Ltd. vs RGV Film Factory And Ors. on 27 February, 2007

Kanungo Media (P) Ltd. filed a suit against Ram Gopal Ver- ma in the High Court of Delhi seeking permanent injunc- tion for using the title of their highly acclaimed film title “NISHABD”. The court held that the plaintiff’s film has not acquired secondary meaning and is therefore not likely to cause any confusion in the mind of the public. Also plaintiff delayed in bringing the cause to the court. In view of this injunction, the application of the plaintiff was dismissed.

 

Warner Bros. Entertainment Inc…… vs Harinder Kohli And Ors on 22 September, 2008

Warner Bros. filed a suit for permanent injunc- tion in the High Court of Delhi to restrain pro- ducers of “HARI PUTTAR” from using the title that allegedly infringes their registered trade- mark HARRY POTTER. The Court while dis- missing the suit held that Harry Potter films are targeted to meet the entertainment needs of an elite and exclusive au- dience who can discern the difference between a film based on a Harry Potter book and a film which is a Punjabi comedy.

 

Fish Eye Network Pvt. Ltd. vs Association of Motion Pictures & T.V. Programme Producers and others (SUIT (LODG.) NO.901 OF 2011)

The Application was filed by the Plaintiff   in   the   Bombay   High Court  seeking  ad  interim  relief against the release of the Movie “Thank You” as the said title was registered  with  the  Association of Motion Pictures and T.V. Pro- gram  Producers  by  Plaintiff  in 2005. The Court refused to grant ad interim relief to the Plaintiff and  on  the  basis  that,  “Fisheye was aware since May 2005 that UTV  was  using  the  title  ‘Thank You’ and that prima facie, there was no copyright as such in a ti- tle, hence the Court would not be inclined  to  give  interim  injunc- tion at the stage when the movie was slated for release as the pro- ducers  had  already  spent  `60 crore on the making of the film.

 

Nokia Corporation vs MOVIEEXPRESS (CS(OS)

286/2012 High Court of Delhi, Order dated Febru- ary 6, 2012)

Nokia Corporation filed an ap- plication for grant of ex parte ad interim injunction in the High Court of Delhi against the De- fendants from producing a Telgu movie tiltled ‘Mr. Nokia’ which they alleged was deceptively or phonetically similar to their reg- istered trade mark “Nokia”.

The court passed an order re- straining defendant and its agents from advertising, offering for viewing the movie under the title Mr. Nokia and/or Mr. No. Keyia and/or Mr. Nav-kia and/ or other identical or deceptively similar (phonetically, structur- ally or visually) mark to the plaintiffs registered trade mark Nokia.

Conclusion:

Any cinematographic work is recog- nized for decades by its “Title”. It also helps the people to conceptualize the idea associated with the film. Registra- tion of title by the producers and writ- ers is therefore becoming a prerequi- site and imperative to preserve their commercial rights and interests in the movies. As the registration of title with Industry Associations does not play any vital role in court cases. The own- ership and validity of the title can be easily established in case the marks are registered with Trademark Registry.

 

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 ofsuits of infringement or passing off, the registrant can seek permanent injunctions and damages.

 

Disclaimer – The article intends to provide general information only and should  not be taken as legal advice or opinion related to specific situations. Every possible effort has been made to ensure accuracy of the information contained in the article but the author cannot be held responsible for any misrepresentation or inaccuracy.

Film Titles and Their Protection - Registration of title by producers and writers is therefore becoming

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