Trademark

Potter/Puttar arguments come to a close


After Prashant’s engaging post on Potter, parodies, and the right to laugh, here’s a quick update on the Hari Puttar case, for those of you who are still keen on following the developments.

Arguments concluded earlier this week, after the defendants (Mirchi Movies et al) attempted to establish that there was evident dissimilarity in the two titles in question. Indeed, the defense argued that there ought to be different tests for film titles and trademarks, especially keeping in mind the different ‘shelf life’ of the two entities.

The plaintiffs (Warner Bros.) rejoinder argued that a film title could be assessed differently only if it was a one off title with no secondary meaning. In such a case, mere similarity would not suffice and there would be likelihood of confusion based on surrounding circumstances. Readers, for example, may find the instant consumer recall value of a title like ‘The Sound of Music’, or ‘Sholay’, much greater than of an insignificant title like ‘There is a Rally’ (which emerged from a random search on imdb.com).

The defendants also sought to take refuge in their title-registration with the Motion Picture Association of America (MPAA), which they had acquired well in advance of release. However, WB countered that an MPAA registration cannot be equated with trademark rights. Such registration means that the filmmakers are seeking to release the movie in the US. And crucially, no cause of action can arise from an MPAA registration in India. On their part, the defence strongly alleged mala fide by the plaintiffs arguing that they (the plaintiffs) had concealed their MPAA registration for Hari Puttar in 2007.

Interestingly, WB produced in court a letter from the MPAA itself, with details of the status of the title in question, as well as detailed information about the rules surrounding registration. This letter was equally objected to on grounds that it was ‘procured’ after the defendants’ reply.

The title registration rules offer an interesting insight into the registration process with the MPAA. A denuded gist of procedures follows: Anyone can register a title, and within ten days of the application, the title appears in a daily publication of the MPAA called the Title Registration Report (TRP). If any member of the MPAA feels this title conflicts with their own, an appropriate submission is made. The new registrant (whose title has been identified as problematic) has to seek arbitration in this matter, and only if the protest has been withdrawn, can the title be pursued.

The defence also repeatedly referred to the issue of delay in filing the case. The petitioners brought up two arguments in their rejoinder. First, there had been no delay in filing, since a lawsuit cannot be filed until the product has come into being. In this case, in 2005 (which is when Mirchi Movies alleged the case should actually have been filed), the product, i.e., the title, was still an idea. The suit eventually was instituted when WB learnt that the movie was being marketed as ‘Hari Puttar – A comedy of Terrors’, which they found infringing. Second, WB pointed out that the test in law in matters of delay in filing was that the plaintiff should have objected and NOT have acquiesced to the infringement. In this matter, WB had lodged its protest against the title in its communication with the filmmakers way back in 2005 when the choice of title had been made public. In subsequent communication, neither party had conceded ground (the filmmakers refused to change title; WB refused to accept standing title), thus establishing both requirements.

The film was supposed to have released yesterday, as some of you may recall. But the Indian box office has other controversies to deal with – Rituparno Ghosh’s The Last Lear, which has not found much cheer despite the free publicity donated by certain Mumbai politicians.

Meanwhile, in developments elsewhere, J K Rowling and WB won a copyright case in the New York Southern District Court, against RDR Books, for publishing the Lexicon, a referencer for the Harry Potter series. The plaintiffs won a princely sum of $6,750 as statutory damages.

Here too, the arguments have gone silent, both parties now keenly await the decision of Justice Reva Khetrapal, which, of course, we shall keep you posted on.

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