In my view, this doctrine greatly reduces the threshold for establishing confusion to the extent of treading on free speech and expression in few circumstances. This doctrine could prohibit mere reference to a registered mark parodically or satirically, which is indispensible for free speech and expression. For instance, a wino would recognize the image (above) which pokes fun at Absolut, producer of vodka. The artist herein is conveying that consuming Vodka leads to impotency. If the doctrine were to apply, the artist could be liable for infringement even though there is no misrepresentation of the mark. Therefore, it is unreasonable to prohibit such expressions for merely generating initial interest using a known mark. Image from here.
If readers can recollect, majority of us agreed that the title ‘Hari Puttar’ makes one think of J.K. Rowling’s ‘Harry Potter’ according to a poll we ran on the blog four years ago. If not anything, that’s the first impression. Although the rhyming similarity with Harry Potter might have aroused initial consumer interest in the Punjabi comedy, this is not to say that moviegoers would think of the movie as an Indian version of the English novel. Warner Bros. claimed an equitable remedy against the moviemakers for riding on their goodwill for generating consumer interest.
In the same vein, Nokia India Inc. filed a suit against the producers of the Telugu movie, ‘Mr. Nookayya’ for infringement of its mark before the Delhi High Court earlier this year. The movie is about an orphan boy ‘Nokia’, who is an expert at stealing cell phones. The cause of action arose when the producers started promotions as ‘Mr. Nokia’ named after the protagonist in the film. Following an ex parte injunction order dated February 06, 2012 restraining the use of any word similar to ‘Nokia’, the title was subsequently changed to ‘Mr. Nookayya’. Coincidentally, there is another Telugu movie titled ‘Facebook’ themed on social networking, which is gearing for release soon.
Setting up the debate
The Delhi High Court in Warner Bros. Entertainment Inc. v. Harinder Kohli summarily dismissed the claim of infringement for lack of any confusing similarity in the minds of audiences. The reason Justice Reva Khetrapal states (paragraph 33) that a cognoscente can easily discern the distinction between the Punjabi comedy movie and the English novel and an illiterate can never draw a link between the two. This reasoning is problematic because it limits the class of consumers to educated readers and illiterate movie lovers leaving out a majority of viewers who are merely aware of Harry Potter but with little or zero knowledge on the subject matter.
That apart, it fails to account for the fact that an average moviegoer in normal circumstances would not confuse or associate any movie merely because the title resembles a well-known mark. The similarity at best gives a thematic indication of the film. For instance, it is highly improbable for an average internet user to think of the Telugu movie ‘Facebook’ as a creative work of Mark Zuckerberg. Nevertheless, the choice of the title is undoubtedly deliberate and intended at connecting with the audiences. In terms of trademark law, there is no likelihood of confusion among consumers due to the similarity between the title and the registered mark, however, the goodwill of the mark is being used to generate initial consumer interest.
Legality of ‘Initial Interest Confusion’ Doctrine
Warner Bros. constructed their around the initial interest confusion doctrine which is a determinate tool for ascertaining infringement in the U.S. The International Trademark Association (INTA) states that the doctrine allows for finding of liability where a plaintiff can demonstrate that a consumer was confused by a defendant’s conduct at the time of interest in a product or service, even if that initial confusion is corrected by the time of purchase. Here’s a hypothetical situation: Apple successfully bids for the word ‘Microsoft’ as a keyword for triggering ads on Google. Apple’s ad shows up as a sponsored link when someone queries for Microsoft. Microsoft accuses Apple for misappropriating their goodwill.
Section 29(1) of the Trade Marks Act, 1999 requires the similarity of the title to result in likelihood of confusion for claiming infringement. For sake of brevity, the similarity should result in confusion about the origin of the product or service, i.e. a consumer is likely to confuse the film as a creative work of the registered mark. On the other hand, there is no need to establish any source confusion at the time of purchase under the initial interest confusion doctrine. The mere fact that the movie title reminds one a known mark is sufficient for committing infringement under the doctrine.
What about dilution of the trade name?
It is obnoxious that these producers have brazenly used known marks with a clear intent to commercial gain. To my mind, this can also trivialize the services the holder provides and hence harm their reputation. In this regard, the trademark holders could take support of Sections 29(7) and (8) which prohibits unfair trade representations. The Sections reads as follows:
(7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labeling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorized by the proprietor or a licensee.
(8) A registered trade mark is infringed by any advertising of that trade mark if such advertising:
(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or
(b) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark.
Needless to elaborate, a movie title does constitute a trade representation and also qualifies as an advertisement. From a plain reading of these provisions, the movie makers could be liable if the proprietors establish that the title has contributed to their commercial gain or has affected their reputation. Surprisingly, Warner Bros. did not raise any claim under these provisions before the Delhi High Court.
As a general rule, parodies are exempted from trademark infringement as they constitute a fair use of the mark. This is because a parody constitutes an original work independent of any connection to the mark. In other words, a parodical use of the mark should result in something new. This requirement of originality ensures that the goodwill of the registered is not misappropriated.
The moviemakers have all the right to produce a film on a theme of their choice. The naming of the film after a known mark, however, indicates a clear intent to gain from their goodwill and lacks any originality. In this regard, Sections 29(7) and (8) adequately protects the proprietors from any misappropriation of their mark. In light of this, the initial interest confusion doctrine should be discarded because the above framework adequately balances the rights of the trademark holders and moviemakers.