India - What’s In A Name?
Legal News & Analysis - Asia Pacific - India - Intellectual Property
6 January 2021
Films are an integral part of our daily lives whether it be belting out filmy dialogues or watching films to de-stress and relax. While it is commonly understood that the dialogues, script, music and lyrics forming part of the film are subject matter of copyright protection, the nitty-gritty in relation to intellectual property rights protection of film titles is less discussed. Considering that fact that it is the title of the film that at the first instance catches the attention of the general public, the law governing the protection and enforcement of film titles becomes relevant. In this blog, we have analysed the protection available to film titles under the Indian copyright and trademark regime.
2. Copyright Registrability of Film Titles
Under Section 14 of the Copyright Act, 1957, literary works, musical works, artistic works, sound recordings and cinematograph films are entitled to copyright protection. The question whether copyright protection can be granted to film titles for being literary works has come up several times. The Supreme Court in Krishika Lulla & Ors v. Shyam Vithalrao Devkatta & Anr, while deciding on the issue of copyrightability of the film title ‘Desi Boys’ held that film titles were not copyrightable and did not qualify for protection against copyright infringement. The Court explained, “On a plain reading of Section 13, copyright subsists in inter-alia an original literary work. In the first place, a title does not qualify for being described as a work. It is incomplete in itself and refers to the work that follows.”
3. Registration of Film Titles as Trademarks
As defined under Clause 2(zb) of the Trade Marks Act, 1999 (“TM Act”), a trademark is a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours. A mark may be in the form of a word, logo, colour combination, signature etc.
As per the Nice Classification, the goods and services for which trademark applications may be filed are divided into 45 (forty-five) classes. Class 1 (one) to 34 (thirty-four) cover various goods and Class 35 (thirty-five) to 45 (forty-five) cover different services. Entertainment as a service falls under Class 41 and includes film production (other than advertising films), radio entertainment, movie studios, providing on-line music, not downloadable etc. Film titles are not specifically included as an entry under the list of services stated under Class 41. This may be because a single film title does not per se form a service. However, it has been seen that as a practice, production houses in India are filing applications for trademarks to protect film titles under Class 41.
It is pertinent to note that factors such as distinctiveness of the mark, non-descriptive nature, possibility of causing confusion in the minds of the public, generic nature of the mark are all considered while granting registration to film titles, as under any other category. For instance, In Warner Bros. Entertainment Inc. v. Harinder Kohli, the Delhi High Court inter alia held that there was no likelihood of confusion between ‘Harri Puttar’ and ‘Harry Potter’ as the audience of the latter were elite and educated and would be able to distinguish the former from the latter. The delay in filing the suit by Warner Bros. was also considered as a factor by the court in refusing to grant injunctive relief.
b. Registrability of Single Film Titles vis a vis Series Film Titles
Film titles may be for single films or for a series of films. For example, ‘Shakuntala Devi’ is a single film but ‘Dhamaal’ and ‘Golmaal’ are part of series of films.
The position on the registrability of film titles (single and series) has been clarified by the Delhi High Court in its interim order in Kanungo Media (P) Ltd. v. RGV Film Factory and Ors. In this case, the court classified movie titles in two categories (i) titles of series of literary works (“Series Titles”); and (ii) titles of single literary work (“Single Titles”); and held that Series Titles enjoy trademark protection as the title indicates that each edition/work comes from the same source as the others. However, Single Titles are not entitled to trademark protection except in cases where the applicant is able to prove that the said title has acquired secondary meaning and is capable of associating itself with the particular work or source. The Court further laid down certain parameters which can be used as evidence to determine whether a literary work has acquired secondary meaning. These parameters include: (a) the length and continuity of use; (b) the extent of advertising and promotion and the amount of money spent; (c) the sales figures on purchases or admissions and the number of people who bought or viewed the work; and (d) the closeness of the geographical and product markets of the plaintiff and defendants.
Interestingly, in Sholay Media and Entertainment Pvt. Ltd. and Ors v. Parag Sanghavi and Ors. a trademark and copyright infringement suit was filed in Delhi High Court restraining the broadcast of the film ‘Ram Gopal Verma Ki Aag’ which was similar to the iconic film ‘Sholay’. It was observed that the mark ‘Sholay’ (although not registered under Class 41) had become a well-known mark and the defendants were restrained from using the same.
However, as the practice of registering trademarks is prevalent among production houses, Single Titles such as 3 Idiots (1940729), Padman (Registration No. 3749859), Veere Di Wedding (Registration No. 3548116) are registered as trademarks. Further, some examples of Series Titles for which trademarks are registered/applied for under Class 41 are Harry Potter (Registration No. 1246560), Sacred Games (web-series) (Application No. 3607773), Dhoom (Registration No. 1319835) and Singham (Registration No. 3672533). In addition, film producers/platforms who wish to create merchandise also file trademark applications under the relevant classes for such merchandise (for example, mugs (Class 21), apparel (Class 25), posters (Class 16)). For example, 3 idiots is registered under Class 25 for t-shirts, headgear etc. (Registration No. 1940714), Class 21 for inter alia household or kitchen utensils (Registration No. 1940710), Class 16 for printed paper promotional and packaging materials (Registration No. 1947598); Harry Potter is registered under Class 16 for printed matter and goods (Registration no. 1111703), Class 25 for clothing, footwear (Registration No. 917454); and Dhoom is registered under Class 25 for clothing, footwear, headgear (Registration No. 2474038), Class 21 for household and household utensils including mugs (Registration No. 2474036), Class 16 for stationery, paper articles etc. (Registration No. 1319834).
4. IMPPA and other associations for Registration as Film Titles
Producers, production houses and writers also follow the process of registering their titles with associations such as the Indian Motion Pictures Association and the Indian Film and Television Producers Council (IFTPC). Such registrations help in establishing priority. In addition, once a title is registered with such associations by one entity, registration for the same name is not granted to another entity by the association.
However, mere registration with the associations does not grant legal protection to the title owners and does not permit them to restrain others from using the same title. In Anil Kapoor Film Co Pvt Ltd v. Make My Day Entertainment & Anr, the question that arose was whether the film titled ‘Veere Ki Wedding’ was to be restrained from releasing due to its similarity with the film titled ‘Veere Di Wedding’ which was registered with the IFTPC. While refusing the plaintiff’s application for injunction, the court stated, “the mere fact that there is another film in the making with the same title but a completely different star cast is not necessarily evidence of it being ‘calculated to deceive’, or of the Defendants’ ‘passing off’ their film as having been made by the Plaintiff.. The matter was eventually settled.
While it has been established that copyright protection to film titles is absolutely impermissible, the trademarks regime works differently and grants protection to film titles in certain cases, i.e. for series films or for single film titles with secondary meaning. In addition, trademark applications for film titles are filed where merchandizing is undertaken using the titles as brand names.
For further information, please contact:
Bharat Vasani, Partner, Cyril Amarchand Mangaldas
 (2015) 129 CLA 0001
 Section 2(1)(m) of the Trade Marks Act, 1999
 115 (2008) DLT 56
 138 (2007) DLT 312
 223 (2015) DLT 152