A trademark registration for a song title in India is unprecedented, however in 2011, Sony Music Entertainment India Pvt. Ltd applied for the registration of the title of its hugely popular song Why This Kolaveri Di ( Application No. 2246257). Sony plans to launch products such as CDs, cassettes and SD cards as well as film and non-film entertainment content and talent discovery programmes branded Why this Kolaveri Di and, more importantly restrict others from using it.
Making movie titles from popular song tracks seems to be the latest trend in Bollywood. Off late many movie makers are using super hit song titles to boost a movie’s popularity before its release ( Ye Jawaani hai Diwaani, Ramaiya Vastavaiya, etc.). Clearly, lyricists are not thrilled about this new fad. According to them, movie dialogues and songs in India become a part of the language of the people and sometimes a few lines acquire a huge reputation and strike an instant connect. The popularity of their creation cannot be up for free for the rest of the world to cash on, and the writer community is entitled to credit and royalty from the industry. The problem gets compounded when titles are used liberally on merchandise products which result in huge revenue losses to the producers.
Presently, any producer may register a title with various film associations which function as registered societies. There is no rule mandating the originality of a film title. While lyricists seem to think that stricter copyright enforcement is a solution, the claim to lawful ownership of song titles hardly lies in copyright law. Copyright laws governing cinema in India only extend to songs, movies and books, and the owner can’t claim copyright of the title unless the title is a ‘substantial’ part of the work itself. Use of a song title often creates an association of the title with the original work(song). Therefore, a title may be registered as a trademark. Movie titles have been registered in India since long as trademarks, the cult movie Sholay enjoys trademark protection with respect to its title, brought into the spotlight by this dispute. Quite some time ago, Shamnad Basheer in this post had brought to us an analysis by Manisha Singh of LexOrbis on the issue of copyrightability of film titles with respect to a Delhi HC decision. The Court had held that title of a copyrighted work ( in this case a movie ) cannot enjoy protection under the Copyright Act. It observed that in case of a single copyrighted work, the title must have acquired a secondary meaning to qualify as registrable trademark; and titles of series of films enjoy standard trademark protection.
There are some legal issues that would likely apply to trademark protection of song titles: Who would be entitled to the registration of the title (owner of the copyright in the song, or the first person to file for registration of the title). In the case of Why This Kolaveri Di, Sony, the owner of the copyrighted song applied for registration. The application is pending with the Registrar and hopefully we’ll have some clarity on this issue soon.
Further, a trademark registration lapses if the mark remains unused for five years. Thus, if the applicant has registered the title with the sole purpose of restricting others from using it, and is not interested in using it commercially, the registration may be deemed unfair under the Trade Marks Act, 1999. This INTA article authored by Jatin Y Trivedi ( IP Attorney at Y J Trivedi and Co.) suggests that it might be appropriate to relax this particular condition for registration in the case of song titles, in order to protect the intellectual property of the song creator. Also, if a title is generic in nature, in theory if it is distinctive or has acquired a secondary meaning in the course of its use as a part of a work, it may be registered as to protect the brand identity. Then, there is also the issue of popular songs sharing a title. For example, Vande Mataram has several popular versions; a trademark registration of the title would preclude artists from giving the song a different creative spin.
However, trademark registration has been granted to advertisement punch lines, quotations and television commercial jingles. Nike has registered its well known punchline Just do it. The issue of registrability of song titles remains blurry. The practice of using song titles is gaining traction, and there ought to be clarity on the kind of protection that Indian law can offer to remedy infringement of these works.