Can Movie Titles be Registered as Trademarks?

Introduction:

One of the famous sayings of William Shakespeare reading as "What’s there in the name?” would fade out once used, referring to the films and entertainment industry. In the entertainment industry, most movies, documentaries, web series, etc., are kept alive for years and decades with their “Title, " making them unique and distinctive from others. The title of a movie correctly describes what could occur in the plot.

India is the largest producer of movies in the world. The producers search for a list of themes and titles for their movies and finally finalise the themes and titles, which seem to be unique and distinct. It is the title of a movie that says it all and/or speaks louder than the film for this sole reason, and since a lot of time, effort and skill is consumed, none of the producers would ever wish that any movie having a similar theme, title and/or concept be produced by some other producer since there are massive chances of the duplicity of the title of a movie. However, no provisions of the Copyright Act protect movie titles. Thus, most producers approach various film associations for the protection of their titles like The Indian Motion Picture Producer’s Association (IMPPA), Association of Motion Pictures and Television Programme Producers (AMPTPP), and Film and Television Producers’ Guild of India to seek the protection of their movie titles, their themes, and concepts. However, this way of barring other producers from using a similar and/or deceptively similar title so registered also did not much work.

REGISTRATION OF MOVIE TITLES WITH THE INDUSTRY ASSOCIATION

Once the producer has already decided on the title of his/her work, they then make an application before the industry associations like the Indian Motion Picture Producers’ Association (IMPPA), Association of Motion Pictures and Television Program Producers (AMPTPP) & Film and Television Producers’ Guild of India, Screen Writers’ Association (SWA) (formerly known as the Film Writers’ Association) & Western India Film Producers Association which deal into the registration of “Titles” and/or “Scripts” of Movies, TV Serials, Plays, Web Series, Documentaries, etc., Though registration of titles with these associations is not mandatory, the producers do this as a way of customary practice. However, before proceeding with the title registration, upon receiving the application for registration of a “Title”, circulate the said application among other associations to verify if there are any matching, same, and/or deceptively similar titles already registered with any of the associations. Though this may sound simple, title registration with these associations does not have any legal sanctity. However, making such registration with the associations would help the courts in a way that they would take cognisance of registration to ascertain and decide by whom the title was first allotted.

THE MOVIE TITLE AND THE COPYRIGHT ACT, 1957

As per the decision reiterated by the Hon’ble Madras High Court in the matter of M/s Lyca Productions & Anr. Vs J. Manimaran CMP.Nos.3492 & 3493 of 2018, it was held by the Court that the provisions of the Indian Copyright Act, 1957 do not protect titles of films, songs, or books. This is particularly so because the title to the work is too short and incapable of being an independent work protectable under the Copyright Act.

Under Section 13 of the Indian Copyright Act, 1957, there is a clear distinction of classes of work in which Copyright subsists, which include the original literary work, dramatic work, musical work, artistic work, cinematographic films, and sound recordings. Under sub-section (3) of the section, it is clearly stated that Copyright shall not exist in any cinematographic film if the substantial part of the film infringes the provisions of the Copyright Act, 1957. Thereafter under Section 16 of the Act, it is enunciated that irrespective of the fact that a work is a published or unpublished work, no person shall be entitled to Copyright any work except for the provisions laid down in this section. Thus, after reading the above two sections in conjunction, it is clearly understood that the Indian Copyright Act, 1957 protects the work relatable to a cinematographic film, i.e., the visual recordings, which include the sound recordings produced by a processed analog to cinematography. Section 13 of the Act clearly states there is no Copyright for a title. It is not just the title that will be protected under the Copyright Act, 1957; the entire work will be considered while seeking protection under the Act.

In other words, it can be stated that the term “Work” as defined under the Indian Copyright Act, 1957 does not include film titles as the same protects original literary, dramatic, musical, artistic works, cinematographic films, and sound recordings. As already dealt with above, the reason behind not giving titles of films, books, or songs protection under the Indian Copyright Act, 1957 is that the title of the work is not considered a literary work.

Recently in the matter of Krishika Lulla and Prs. v/s Shyam Vithalrao Devkutta and Ors. CRIMINAL APPEAL No. 259 OF 2013, the Apex Court held that the Copyright does not exist in the titles of literary works, including movies. The basic facts of the case follow in a way that the respondents claimed to have written a synopsis with the title “Desi Boys”, which was then circulated via email to two other persons. After the movie “Desi Boys” was released, the respondents filed a copyright infringement suit against the appellants. However, the Court believed that the respondent already possessed copyright in the movie title. Therefore, applying the principal laid down under Section 13 of the Copyright Act, 1957, it was held by the Court that the copyright subsists in an original literary work. Therefore, titles cannot be considered as “works” as per the meaning laid down under the Act and the protection of the same can only be granted under trademarks law.

As per the cases listed above, it is clear that the Copyright Act, 1957, has no impact on the plagiarisation of movie titles. The trademark of any corporation protects its brand name. If the movie title is protected under the Trademarks Act of 1999, it can be used without the owner’s express consent. If it isn’t registered, the common law remedy of passing off can be used to protect it. Movie titles can be protected under Class 41 of the Trade Marks classification, which includes entertainment services.

PROTECTION OF MOVIE TITLES UNDER THE TRADE MARKS ACT, 1999

The title of movies/films do not get clear-cut protection under the Trademarks Act, 1999. According to the definition of the trademark under Sect 2(1)zb, Trademarks can be any word, symbol, or combination capable of being represented graphically. Trademark is used to distinguish one person's goods and services from another. As per the Nice Classification, there are forty-five classes of goods and services under which the trademarks are registered. Out of these forty-five Classes, Class 41 deals with entertainment as a service. The movie titles can be protected under the Trademark law under Class 41 under two main categories:

a) Title of a series: The titles of movies under this category are entitled to protection under the Trademarks Act, 1999 because it specifies that the different editions of the literary works are coming from the same source. The series of films come from the same production house; hence, they are eligible for trademark protection. For example, the Golmaal series is made by Shree Ashtavinayak cine-vision, and the Dhoom series is produced by Yash Raj Films.

b) Title of a single movie: The title of movies under this category to get protection under the Trademarks Act, 1999 should have gained secondary meaning. When the title of a movie becomes so well known that people start recognising it with a connection to some producer or production house, the title is said to achieve the secondary meaning of the mark under the Trademarks Act, 1999. Simply put, when a movie title becomes well known, it achieves secondary meaning. There are certain factors, such as the amount of money used for the marketing of the film and the time duration from which the movie title was being used. These factors can be considered by the courts while deciding whether the movie title has achieved a secondary meaning or not.

Factors determining Secondary meaning: Secondary meaning can be determined from factors such as continuity and longevity of use; the extent of promotion and advertising, and money spent on such promotion, etc., even if the movie is yet to be released, in case a significant amount of pre-release publicity and promotion activities have been undertaken by the filmmakers, the title may require sufficient recognition to come under the ambit of trademark protection.

The matter of Kanungo Media (P). Ltd. v/s RGV Film Factory is one of the commendable attempts made by the Court to fill in the gap and establish a position that even a single title of the film can acquire protection under the Trade Marks Act, 1999. In this case, the Court opined that a series of titles, as opposed to a single title, are more easily registered as a trademark as they all come from the same origin or source. Hence, they are already recognised and distinguished in the eyes of the public. Thus, the burden of proving ownership and commercial use is relatively easy compared to single titles. Some common examples of movies which are a part of series titles include the Dhoom trilogy and Golmaal 1, 2 and 3 etc.,

Famous controversies regarding the protection of movie titles

Several cases recognise the registration and/or protection of movie titles under the Trade Marks Act, 1999.

Sholay Media and Entertainment Pvt. Ltd. v/s Parag M. Sanghavi and Ors. 223 (2015) DLT 152, MIPR 2015 (3) 0096

The matter listed before the Hon’ble Delhi High Court in which Ram Gopal Verma’s film “Ram Gopal Verma ke Sholay” was restrained from release due to copyright and trademark infringements concerning the cult film Sholay. One of the basic issues raised was whether trademark protection could be granted to the film's title. The Hon’ble Delhi High Court issued an ex-parte injunction to restrain the defendants from infringing the Plaintiff’s rights, and recognised rights in the film's title after a series of hearings, and the defendant gave an undertaking that it would not infringe the Plaintiff’s rights.

Biswaroop Roy Choudhary v/s Karan Johar 131 (2006) DLT 458, 2006 (33) PTC 381 Del

In this matter, the Plaintiff sought an interim injunction from the Hon’ble Delhi High Court to use the title of the film which the Plaintiff had registered with the Registrar of Trade Marks to restrain the defendant from using the title, “Kabhi Alvida Naa Kehna”, for the defendant’s movie. However, the Hon’ble Delhi High Court believed that although the defendant had not registered the title with the Registrar of the Trade Marks (as was done by the Plaintiff), the defendant was the actual user of the mark and had completed the production of the film which was ready for release. Accordingly, the Hon’ble Delhi High Court further opined that the actual use of the trademark was always a relevant factor that would deter the Court from granting injunction relief. Hence, the Court denied interim relief to Plaintiff that Kabhi Alvida Naa Kehna was a phrase in common parlance and, therefore, could not be used with exclusivity, and there was a delay in approaching the Court.

In the matter of Prasar Bharti v/s Ritu Arya & Ors. CS(COMM) 96/2020, the defendants were making a film titled “Doordarshan”. However, Doordarshan is famous as a channel that Prasar Bharti owns; hence Plaintiff went to Court and alleged passing off by the defendants. The Court then granted an injunction and directed the defendants to refrain from using the word Doordarshan.

PROTECTION OF MOVIE TITLES BEYOND INDIA

In the United States of America, in 1922, the Motion Picture Association of America (MPAA) became the first association to be formed. This organisation was formed to represent the interests of the film industry, home video, and television industries of America both within the country and internationally through MPAA. The Association works to promote and encourage filmmaking and production. Further, it also assists in the protection of the commercial interests of the movies that are to be produced. It aids the protection of the films from any copyright theft. The Trademark protection is also available under MPAA related to the movie title. However, it is subjected to certain limitations, which are listed herewith:

“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 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 likeliness are refused by USPTO.”

However, with a leading case of Paramount Pictures Corporation v/s Pete Gilchrist Administrative Panel Decision Case No. D2007-0128, the Court in the United States of America has given trademark protection to the literary title of single works. However, it will happen only upon a showing of secondary meaning, even in the case where the work’s title may not be merely descriptive of the contents of the work. The Court found that the Respondent registered the disputed domain names primarily intending to take advantage of the Complainant’s Trademark rights. It determined that the use of the Complainant’s trademark is confusingly similar and does not constitute a legitimate non-commercial or fair use of the domain names. Therefore, the respondent was retrained from using the disputed domain name.

In the matter of Warner Bros. Entertainment Inc. & Anr. v/s Harinder Kohli & Ors. 55 (2008) DLT 56, the Plaintiff (W.B.) was the registered owner of the trademark “Harry Potter”, and they brought a suit of infringement, seeking a permanent injunction, against the defendants for a movie released by them by the title of “Hari Puttar” – which had been registered with the Indian Motion Pictures Producers’ Association. The Court dismissed the suit of the Plaintiffs on the ground that the films of the Plaintiffs catered to the entertainment needs of a very exclusive audience, who would be able to make a clear distinction between Harry Potter films and Hari Puttar comedy. Since there was no likelihood of confusion, the Court did not hold in favour of Plaintiff.

In another matter of Warner Brothers Entertainment v/s The Global Asylum, Inc. No. 13-55352 (9th Cir. 2013) the Plaintiff owns trademarks that include the word “Hobbit”, and filed a trademark infringement suit against the defendant seeking a temporary restraining order against the distribution of defendant’s film Age of Hobbits. The Court established a four-factors 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 favouring Plaintiffs; and

4. That an injunction would benefit the public.

Whereby Plaintiff satisfies the four-factor test, and the Court found that Plaintiff had a protectable interest in the HOBBIT mark and that the defendant’s use of the mark would likely cause 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 Rings films, which constituted additional evidence of secondary meaning. The Court found the balance of hardships also weighed in favour of the Plaintiffs, rejecting the defendant’s contention and granting an injunction based on the public interest.

CONCLUSION

Based on the analysis of various cases as dealt with by the Court and associations in the country, it is pertinent to note that the Trademarks Law clearly states that any for every mark to be protected as a trademark under the Trademarks Act, 1999 is a requirement that it must be distinctive. Since some generic terms and phrases cannot be registered or protected as a trademark. Thus, movie titles with a distinctive nature and a secondary meaning are the subject matter and can be protected as a trademark under the Trademarks Act, 1999.

In India, recognition is given to a single literary work to be registered as a trademark under the Trademarks Act, 1999. Thereafter a comparative analysis of law related to trademark registration of a movie title in India and the United States of America provides that, unlike India, US laws grant protection to a series of movie titles, but no such protection is being given to a single literary work since USPTO treats all single title work as inherently descriptive unless the single title has had a wide promotion and great success. The act of getting a title registered as a trademark under the Trademark Act, 1999 does not only grant the right over the title to the registrant but also in the case where there is an infringement of the trademark or in the case of passing off the registrant can claim to apply for permanent injunction and damages over unauthorised use/adoption or infringement of the title.