We have another guest post for you from Tania Sarcar on the ‘Desiboyz’ title controversy.
DESIBOYZ IN COPYRIGHT CONTROVERSY
by,
Tania Sarcar
Another movie to be engulfed in the battle of registration of titles is debutant director Rohit Dhawan’s movie Desiboyz starring Akshay Kumar, John Abharam and Deepika Padukone. The movie is slated to be released on Novermber 25th and the aggrieved person, pressing for legal action, is Latur-based scriptwriter and director Shyam Devkatte.
Devkatte has claimed copyright over the title of the movie and has filed a petition before the Bombay High Court seeking criminal action against the director under the Copyright Act and sections of the IPC dealing with cheating, fraud and criminal intimidation. Devkatte claimed to have registered the title Desiboyz with the Film Writers Association in September 2009 and had along with the title also written a script which he had forwarded to two associates of Rohit Dhawan. Recently after seeing the promo of the movie, he had tried contacting Rohit Dhawan but was allegedly abused on the phone and also threatened. He claimed that the titles were same and that Rohit Dhawan had just changed one letter in the title.
On October 14, he lodged a complaint with suburban Amboli police and filed a private complaint before a metropolitan magistrate’s court against Rohit Dhawan and the producers of the movie under the Copyright Act. However no action was taken by either. He then filed a petition before the High Court seeking criminal action against Rohit Dhawan and the producers. Through the petition, Devkatte has also asked for a stay on the movie’s release and also reasonable damage and compensation.
Previously there have been many such controversies regarding different producers claiming an exclusive right over the same title. Various such matters have been covered by Spicy IP. One such was the dispute over the title of the movie “Thank You” which has been covered by Suchita Saigal where Justice Chandrachud’s ruling in High Definition Television (P) Ltd. v. Association of Motion Pictures and T.V. Programme Producers and Others has been discussed. This case was regarding the issue of applications for interim injunction on titles of movies and in this case the rules of Association of Motion Pictures regarding registering of titles were discussed. Also another case, Kanungo Media (P) Ltd. v. RGV Film Factory, 2007 (34) PTC 591 (Del) was discussed by Mr. Shamnad Basheer where the Delhi High 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.”
In the present case, the film’s title is in dispute. The title was registered with the Film Writer’s Association which takes care of infringement cases through its Dispute Settlement Committee which takes action provided the member is able give adequate proof of infringement/ theft.
If we apply the decisions in the two previous judgments to the present case, as per Justice Chandrachud, the person who registers the title, has to use it within a period of three years from the date of registration. It has not yet been three years from September 2009 when the film was registered. However it is pertinent to note that this falls under the rules of Association of Motion Pictures.
Applying the judgment in Kanungo Media (P) Ltd. v. RGV Film Factory, we can say that there was no circumstance to prove that title registered by Shyam Devkatte had acquired a wide reputation among the public and the industry and a secondary meaning. It was only after the promos of the film were aired by RohitDhawan, that people started recognizing it.
The matter had been posted for hearing by Justice AM Thipsay on the 28th of this month but was adjourned to the 9th of November. The lawyer of Rohit Dhawan is expected to file a reply to the petition filed by Shyam Devkatte by then.
