Intellectual Property Rights on Film Title

Intellectual property rights provides exclusivity to the creator. For some forms of Intellectual
Property like copyright and trademark, the right begins the very moment the work is made or
created in these types of intellectual property, registration may not compulsory or mandatory but
registration provides the creator or the author certain and advantages and benefits like proof of the
ownership in prima facie. Registration of intellectual property make it easier for the creator to
enforce their Intellectual Property Rights in the court, if not registered then the creator will have
to prove his case in the court that the Intellectual Property belongs to the creator when the
intellectual property is infringed by any third party (infringer).

Under The Trademark’s Act, 1999 a Trademark can be claimed only by a registered proprietor of
that particular trademark and only he can sue the infringer for infringement.

Title or a name of any work creates an identity for that particular work. “Under Indian Copyright
Act, protection is conferred on literary works, dramatic works, musical works, artistic works,
cinematograph films and sound recording but not to titles alone. Thus copying of a title alone and
not the plot of the movie, the characters, songs etc does not fall under the ambit of copyright
protection. Initially, neither copyright nor trademark law may protect titles of a film. Copyrights
protects the originality of creativity by protecting its expression and to qualify to be protected
under copyright law, a work must have some amount of “authorship”. On the other hand, trademark
act intends to distinguish and identify the origin of a product. A mark has to be distinctive to
qualify under trademark and a mark cannot be generic or descriptive. Therefore the need of
registration of movie titles rose.

In India, a film title is registered with any authorized associations such as the Association of
Motion Pictures and Television Programme Producers (AMPTTP), the Film and Television
Producers’ Guild of India (Guild) and Indian Motion Picture Producers’ Association (IMPPA).
The procedure to register a particular film title involves the association substantiating with the
remaining associations to find out whether a film with the same or deceptively similar title has
been registered with any another association. The producers seeks or apply for registration of film
titles under Schedule 4, class 41 of Trademarks Act, 1999 that incorporates number of services
including entertainment.

The title of single literary work where in order to be entitled to the protection of trademark, the
title need to have acquired secondary meaning to qualify as registrable trademark. The
fundamental assumption behind this is that the question of likelihood of confusion of source,
affiliation, sponsorship or connection in the minds of potential buyers/users would arise and can
be contended only if the disputed title has acquired the secondary meaning 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 publicity of the title may cause a title to acquire recognition,
sufficient for protection under the proviso clause stated under clause (1) of Section 9 of Trademark
Act, 1999 which specifically gives trademark registration to well-known mark or mark which
acquired distinctive character as a result of the use made of it.

Case Laws
Krishika Lulla and Ors. vs. Shyam Vithalrao Devkutta and Ors1

Supreme Court held that copyright protection do not subsist in the title of the literary work,
Including Movies, protection for the same can be granted only by the Trademark. The fact of the
case is that the respondents claimed to have written a synopsis with the title ‘Desi Boys’ and the
same was forwarded via email to two other persons. On release of the movie ‘Desi Boyz’, the
respondents filed a suit against the appellants for the infringement of the copyright. The issue in
hand before Court of law was whether the respondents had a copyright ownership in the title of
the said movie. The Court stated that as per Section 13 of the Copyright Act, 1957, titles cannot
be considered as ‘works’ for the purpose of copyrights.

Sholay Media and Entertainment Pvt Ltd. v. Parag M. Sanghavi2

The High Court of Delhi granted trademark protection and issued an ex parte injunction for title
of the famous film ‘Sholay’ released in 1975. This led to the change of title of ‘Ram Gopal Verma
ki Sholay’ to ‘Ram Gopal Verma ki Aag’.

1
ILC-2015-SC-CRL-Oct-9
2
CS (OS). 1892/2006
It was stated by the Court that since the title ‘Sholay’ had acquired the status of honor amongst
other movies, the defendants were made to refrain from using trademarks that were same or
deceptively similar to that of the plaintiffs.

Biswaroop Roy Choudhary v. Karan Johar3

An interim injunction was sought by the plaintiff from the Delhi High Court to use title of film
which plaintiff had registered with Registrar of Trademarks to restrain the defendant from using
the tile “Kabhi Alvida Naa Kehna” for the defendant’s movie. The Court, however, was of the
view that although the defendant had not registered the title with the Registrar of Trademarks
contrary of what was done by the plaintiff, the defendant was the actual user of the mark, and had
also completed the production of the film which was ready for release. Thus, the Delhi High Court
further stated that the actual use of the trademark was always a relevant factor which would deter
the Court from granting injunctory relief. Hence, the Court resulted in denial of interim relief to
the plaintiff were that Kabhi Alvida Naa Kehna was a phrase in common parlance and therefore
could not be used with exclusivity and furthermore there was delay in approaching the Court.

Kanungo Media (P) Ltd v RGV Film Factory4

The above mention case is an appraisable attempt by the judiciary to establish a position that
even a single title of the film can acquire trademark protection under the Trademark Act, 1999.
The court stated that “title of the film fall into two categories firstly, titles of series of films and
secondly titles of single copyrighted work. Protection is certain as regards titles of series of film,
and such titles enjoy standard trademark protection. However, the court found that in order to
extend this protection to the title of a single copyrighted work, it must be proven that such title
has acquired a wide reputation among the public and the industry that is, has acquired secondary
meaning. Therefore, in order to obtain an injunction, the onus is on the plaintiff to establish that
its film title has acquired secondary meaning.

3
2006(33)PTC381(Del)
4
2007(34)PTC591(Del)