I’m assuming that most of our readers are familiar with the Harry Potter vs Hari Puttar controversy before the Delhi High Court. Justice Reva Khetrapal is expected to issue her decision any day now. For those that came in late, do check out Sumathi’s well researched posts on this big ticket litigation, that is expected to delineate the scope of “trademark” rights over movie titles.
Prashant also raised a very interesting “free speech” issue in his post here. Article 19(1) of the Constitution of India guarantees the fundamental right to free speech and expression to every citizen of India (subject to reasonable restrictions of course). Therefore, any use of a film title ought not be seen from the pure commercial perspective of trademark law (or copyright law, as often movie titles (long ones…) might merit copyright protection as well), but ought to be balanced against competing concerns of free speech enshrined in the Constitution of India.
Given that the defendants have claimed that their name has no relation whatsoever with “Harry Potter”, they may not be in a position to now advance a free speech defence. As Prashant rightly stressed, such a defence is normally invoked by defendants (particularly in the US) who actively conjure up an association with a film title/script in their quest to parody such copyrighted works of art.
Therefore, in the context of the Hari Puttar case, the issue of Article 19(1) (a) and the fundamental right to free speech/expression may, at best, be academic. But there is no reason why such a free speech argument cannot be taken up in a future Indian case. Particularly since Indian courts have been renowned for their rather “activist” jurisprudence when it comes to protecting fundamental rights.
For the moment, we wish to harness the power of the internet to solicit public opinion on a very important issue:
“Does the Name “Hari Puttar” Make You Think of “Harry Potter”?”
The defendants(Times Group) in the Harry Potter vs Hari Puttar case have argued that the name “Hari Puttar” has absolutely no connection with Harry Potter. And that the average indian consumer will never think of “Harry Potter” when hearing the name “Hari Puttar”. What do our readers think?
Please see our blog home page and express your views on this very interesting issue. Click on either “yes” or “no” in the poll button on the top left hand corner of the home page of our blog. So far, we have two “ayes” and one “nay”.
Incidentally, the poll button is just below our SpicyIP logo. We wish to heartily thank our numerous readers who congratulated us on the new logo. Interestingly, one of our readers thought that we could have made it spicier. He writes:
“Dear Shamnad,
Logo is great. May taste spicier if you invert the chilli.
If it passes for a finger so much the better !”
We may be spicy, but we still have our manners! But perhaps, given that our mission is to increase transparency in IP policy and institutions in India, a task that often entails taking on the establishment, a “giving the bird” logo might seem appropriate after all….
Dear Shamnad,
An interesting issue that has been arisen in registration of film titles as trademarks in the US- can titles of single literary works be registered as trademarks?
Surprisingly, the USPTO has held repeatedly that titles of single literary works cannot be registered as trademarks even upon showing secondary meaning.
Courts have viewed each literary work as an independent commercial item and not as one product among others, in considering the registrability of titles.
Of course, this does not affect the Plaintiff’s rights under unfair competition law, which is the basis for most title-related actions.
But the issue of registrability is an interesting one–especially considering that the Indian Trademark Office has granted registrations to several movie titles including Toy Story, Pirates of the Caribbean and Blairwitch Project. This is an argument that Courts in India have not ruled on so far, though it has been fleetingly raised in the course of some film-related litigation.
Movie titles pose a challenge to the conventional notion of “goods” under Trademark law.
It would be worthwhile to have a closer look at this issue- What do you think?
Anon.
LOL!!!
Thanks Anon,
You raise a very interesting question. I wish I had such interesting and deep questions raised in the context of my posts on patent law and innovation–which incidentally is more of my focus area. Perhaps I ought to blog more on trademark issues–as it is a sheer delight to address such fine queries.
You’re right that the US does not permit registration of one off film titles, unless they’re a ‘series” etc. This stems more from their “assumption” that such one off titles are inherently descriptive and incapable of trademark protection. Of course, many have critiqued this rather deeming provision, particularly since the “trademarkability” or otherwise of film titles ought to be determined on a case by case basis. And at times, even one off titles could have such strong secondary associations that it might serve a trademark function.
I wasn’t aware of Indian TM registration practices on this count–thanks so much for bringing it to my attention. Someone should challenge one of these registrations and see how the courts/TM office responds to it. We’ll have better jurisprudence that way.
As for movie titles not being “goods” etc, I think in todays context, the goods might just be any material on which such titles could be placed (T shirts etc).
Even if Harry Potter and Hari Puttar sound similar..and the later instantly reminds me of the former..does it result in a situation where Hari Puttar should be injuncted? Will anybody wanting to buy Harry Potter get confused with Hari Puttar?
1. the plot is different
2. its a vernacular version of a very Indian way of addressing someone. It definitely derives some humour thanks to its similarity with the hugely famous Harry Potter..so why cant it be use in good faith?
3. what about artistic license?
Even if on first impression i am reminded of Harry Potter when i hear Hari puttar so what..
Thanks Shamnad. I’m grateful to the blog for offering such an effective platform for discussion.
On the issue of registrability of movie titles in India- India has adopted the International Classification of Goods and Services.
An argument that has been raised is that “cinematographic films” mentioned in Class 9 of the Classfication refers to the physical film, or the medium on which the images are recorded, and not to the movie.
Countries like UK have particularised Class 9 to include “Films for cinematographic exhibition”, “Cinema films for exhibition” and “Animated cartoons in the form of cinematographic films”.
The argument is that the absence of an express inclusion of such goods in India, should lead to the inference that titles of movies are not in fact registrable.
This is far-fetched because Classification of Goods is only an administrative tool. Yet it does effectively lead back to the notion of movies as goods, absent proof of merchandising efforts.
It will be interesting to take a look at the practice in other countries. I believe Australia and New Zealand have developed some norms on this issue.
Anon.
I am a regular reader of your blog and find them quite informative to keep me up-to-date with the latest happenings in the field of IPR. As far a this issue is concerned I must say a regular reader of “Harry Potter” and a die hard fan of Harry Potter movies can never never be illusioned by its Indian look alike title ‘Hari Puttar”. More over whenever a Harry Potter movie is launched it is launched with a huge marketing and pomp and show and even a person who has never heard or read about the subject comes to know that this movie is going to release soon. So my point is that there is no scope of confusion among ordinary public with regard to the title “Hari Puttar” as such..
Dear Anon and Anita
Both of you have really hit the nail on the head by asking: would the average consumer be confused about an association with Harry Potter when hearing the term Hari Puttar? I’m not entirely sure I have the answer, but here is one factor that you might want to consider:
Does the very name Hari Puttar make you think of Harry Potter (the question that we asked in the poll)?
If it does, then the plaintiffs may be able to make out a case for initial interest confusion. I’m not sure if Indian courts have adopted the concept of initial interest confusion (my understanding is that they haven’t) and if so, would this case squarely fit within that doctrine. Eg, would an average consumer actually purchase a ticket and watch the movie thinking that it is connected with harry potter. Of course, he/she will find out it has no bearing once he/she he watches movie–but he/she has already purchased the ticket and seen the movie before so realising–which is actually what the concept of initial interest confusion is all about. Such confusion could perhaps be avoided by the defendants by categorically asserting in their adverts and other promotional material that the movie has no connection with Harry Potter. Or even advertising their movie as a spoof of Harry Potter. From the available facts so far, they do not seem to have done either.
We’ll have to wait and watch how these factors play out in the mind of the judge. My own view is that the plaintiffs have to really peg their case on initial interest confusion to succeed. I don’t think they have a great case under normal principles of consumer confusion. The question really is: will Indian courts accept this doctrine of initial interest confusion?
Dear Anon,
Thanks so much for your well thought out comments on the registrability of film titles. Lets wait for the first case that challenges the current practice of granting such registrations in India.
Thanks for the interesting posts.
As regards the confusion amongst the masses being created is concerned, I am sure that none of the audience watching Hari Puttar shall be watching the movie thinking that it is somewhat related to Harry Potter. This is more so for reasons that any person knowing and understanding the character and movies of Harry Potter shall be eductaed enough to understand that Hari Puttar is not connected to Harry Potter.
Having said that, the initial interest doctrine has not been accepted very well in UK and Australia and is more used in cases related to the internet in the US.
I think its the dilution aspect of the brand Harry Potter which should be jealously protected. The mere fact that Mirchi was not ready to change the name from Hari Puttar to Puttar Hari, (I read this on the blog itself) goes a long way to show that somewhere they want to be associated with the brand Harry Potter but are smart enough to ensure that the association is not as close as to be considered as blatant voilation. Confusion does not exist, diultion of the brand does.
hi,
very honestly.. when i heard of “Hari Puttar”.. i went like.. “what is this??? When will we stop ripping off??”
I think the question on the “test of the average consumer’s intelligence and recognition”… here would deal with the origin of the masses.. for an English speaking cosmopolitan person, i think the similarity is obvious instantaneously.. but for my grandmother and mother.. in whose times.. Hari was only associated with God.. and stretching it really far.. to Sanjeev Kumar’s charecter in Koshish(where Sanjeev Kumar is named HAri Charan.. he is mute.. and remember how he expresses his name???.. i think any one who keeps his eyes and ears even slightly open.. might not have gone amiss of Rowling’ genius!
and as regards someone’s qn if an average person would mistake it to have something to do with Harry Porter and hence buy a ticket??? i think Nah!!! if he would.. he might jus to have a peek at how much it is like (or not) Harry Porter..
or else.. he might jus watch it (or sleep through) to get some respite from a kid’ tantrum spree.. jus like a frnd mine did!!!!