COPYRIGHT OVER FILM TITLES?

An excellent summary of a recent decision dealing with copyrights over film titles from Manisha Singh, Partner at Lex Orbis, one of the prominent IP law firms from India (as extracted from an IBA newsletter). The decision seems a sound one–as I can’t imagine a court protecting a mere new title as a “literary work” or as operating as a trademark (particularly when it is a new film that hasn’t been advertised for long or is not part of a “series”). Anyway, here goes:

“The recent decision in Kanungo Media (P) Ltd v RGV Film Factory (2007 (34) PTC 591 (Del)) considered the use of identical titles for two films released at around the same time. In the Indian film industry titles are obtained from regional film trade associations that maintain records and reserve titles at the request of producers. In the present case the Delhi High Court addressed the question of whether the title of a literary work can be protected under the Copyright Act 1957 and, if not, whether trademark principles can be used to protect it.

Facts

Kanungo Media (P) Ltd had adopted the title Nisshabd for its Bengali film and had exhibited the film at several film festivals, However, the film was not released publicly. Subsequently, the producer of the film learnt that RGV Film Factory had adopted the same title for its forthcoming film in Hindi. Kanungo filed suit for a permanent injunction for copyright infringement and passing off by RGV. Kanungo stated that its film had been shown at many film festivals and had received awards and accolades; thus, it had acquired distinctiveness among the film industry and the public. It further claimed that use of the word ‘nisshabd’ or a word deceptively similar to it was bound to cause confusion among the film industry and the public, and would imply an association with Kanungo. In addition, Kanungo claimed that the title was aesthetically and philosophically connected with the key theme of the film, and thus it held copyright in the title. Kanungo stated that during the pendency of the suit it had applied for registration of the titles Nisshabd and Nishabd as trademarks. It argued that it had acquired prior rights over those titles and that subsequent use of an identical or similar title by another party in respect of a film would amount to passing off. It sought relief in the form of a permanent injunction for copyright infringement and passing off, as well as damages and costs. In addition to the suit, Kanungo filed an interlocutory application for an interim injunction.

Kanungo contended that RGV’s use of the title was carried out in bad faith. It also alleged that RGV learnt of the film title at a film festival where Nisshabd was shown, and within a short time of the screening RGV had applied to the Western India Film Producers Association to reserve the similar title Nishabd. It further contended that its financial position had prevented it from taking court action earlier, and that it had believed in good faith that once the Central Board of Film Certification had issued a release certificate for its film, it would not grant certification for a film with a similar title to RGV. As soon as Kanungo learnt that the board had awarded a release certificate to RGV, it applied to the court for relief.

RGV argued that Kanungo had approached the court in a belated manner as RGV’s film had already been completed and was about to be released. RGV also contended that it had already invested a large sum in the promotion of the film. Accordingly, it noted that the delay in filing the suit was fatal since Kanungo had been aware for some time of the adoption of the title and forthcoming release of RGV’s film. RGV claimed that the delay in filing implied that Kanungo consented to the use of its title by RGV and therefore the grant of an injunction could not be justified.

Decision

The Delhi High Court addressed the question of whether the provisions of the Copyright Act could be extended to protect film titles as literary works. The court observed that in the United States, film titles are protected under the Trademark Act rather than the Copyright Act. It held that in India, the legal position in respect of film titles is the same as in the United States. The court observed that film titles fall into two categories: titles of series of film and titles of single copyrighted works. 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.

The court also addressed the impact of the delay in bringing the suit before the court. Based on the documents on record, the court held that Kanungo was aware of the adoption of the title and the making of the film under that title by RGV. However, Kanungo refrained from legal action and RGV proceeded with the production and release of its film. Kanungo’s silence was fatal and amounted to a waiver of its rights. The court also cited the decision in Ramdev Food Products (P) Ltd v Arvindbhai Rambhai Patel ((2006) 8 SCC 726), which held that delay in taking action implies acquiescence. Therefore, the court dismissed the suit.

Comment

India faces a lack of judicial precedent in such cases. This case is a commendable attempt by the judiciary to fill the gap. The court’s decision reinforces the established position that the title of a copyrighted work cannot on its own enjoy protection under the Copyright Act.”