The advent of the digital age and new-age technologies has increased the accessibility of people to films. Movie theaters are longer the only way to release a film for the masses. OTT platforms have been a game changer in the film and visual entertainment industry across the World. And no doubt, India is in no way far behind. The streaming and OTT apps have seen a spurt of growth in the Indian market and with this has come an increase in the amount of content coming from these OTT platforms in the form of movies, web series, and other content. With this comes the question as to how to protect these movie names from being used by someone else.
The title of a film is used to identify the work as a whole. Titles are important, especially from a marketing standpoint, because they capture the audience’s attention, set the tone for movies, and maybe give them a recall factor. The famous Sholay and Avengers are two memorable movie titles. Given the brand and recall value that a title might generate, one may interpret it as his/her intellectual property, making it critical to protect it against unlawful exploitation by others.
The question is, what are the various kinds of protection accessible to a film title in India?
Types of Protection available.
Registering a film title with entities like The Indian Motion Pictures Producers Association (IMPPA), the Film and Television Producers’ Guild of India, the Association of Motion Pictures and Television Programme Producers (AMPTPP), and the Western India Film Producers’ Association(WIFPA) is standard procedure in the film industry. Before registering a title, an association will typically perform a thorough search with other associations to determine if the same or a deceptively similar title has already been registered with one of the other associations. Only members of an association can typically apply for title registration with that association. Though this appears to be straightforward, the problem is that registration with societies and groups is not legally binding.
On the other hand, while the entire production of the movie along with its script, dialogues, songs, and music may be copyrightable under the Indian Copyrights Act, of 1956, such protection is not afforded to the title of a film. Trademark law, however, does offer some protection in this regard. Film titles can be trademarked as service marks under class 41 of the Trademark Rules 2001. Class 41 of the Rules deals with, among other areas, entertainment. This however comes with certain conditions.
Classification of Titles and degree of protection
There can be generally two types of Film Titles, one that is one of a long series of movies, eg. Dhoom, Golmaal, Avengers, etc., and standalone films, eg. Sholay, Swades, Inception, etc. The Indian Judiciary has consistently reiterated that it is much easier to get a registration for movie titles of the former type than of the latter type. Film Titles of series Films become easily eligible for registration as a Series Mark as defined under section 15 of the Trademark Act.
However, things are trickier for the titles of Standalone Films. In such cases, courts have ruled that it is required to demonstrate that such names have acquired secondary meaning. The Delhi High Court highlighted a few elements that would be significant in determining whether secondary meaning may be assigned in the case of Kanungo Media (P) Ltd. v. RGV Film Factory[1], namely:
- Continuity and Length of use
- The degree of advertising and promotion along with the amount of expenditure incurred,
- The sales figures of the number of Theater admissions, sales, and the number of people who purchased or viewed the work.
In the case of Sholay Media and Entertainment Pvt Ltd. v. Parag M. Sanghavi[2], a film by “Ram Gopal Verma by the name “Ram Gopal Verma ke Sholay ” was barred from release by the Delhi High Court due to trademark and copyright infringements in regard to the cult classic Sholay. After a series of hearings, the Delhi High Court granted an ex parte injunction to prevent the defendants from violating the plaintiff’s rights and recognized the rights in the title of the picture, The defendant offered an undertaking that it would not violate the plaintiff’s rights.
In the case of Biswaroop Roy Choudhary v. Karan Johar[3] the court ruled against the plaintiff who had a trademark registration under class 41 by the name “Kabhi Alvida Naa Kehna” and refused an interim injunction against the defendant’s name by the same name. The Delhi High Court opined that the defendant was an actual user of the mark despite of not having a Trademark registration. Thus actual usage along with fame and marketing expenditure was held as more important than mere registration.
Conclusion
From the above discussion, it is clear that getting a registration for a title of a film series is much easier than a standalone film. The court’s behavior, however, in regards to standalone films gives a huge undue advantage to large production houses over small filmmakers as was seen in the “Kabhi Alvida Naa Kehna” case. There should be more consideration put towards the interests of small independent filmmakers so that they are not left in deep water by the court’s decision.
Written By-
Sauradip Mukherjee
2nd Year, LLB
ILS Law College, Pune
[1] 2007 (34) PTC 591 (Del)
[2] CS (OS). 1892/2006
[3] 2006(33)PTC381(Del)