Copyright Trademark

Guest Post: What’s in a name?


Devika brings us her fourth entry into our SpicyIP Fellowship with this analysis of the IP issues involved in a new legal tangle that’s arisen in Bollywood. You can view Devika’s previous posts here.

WHAT’S IN A NAME?

Salman-Khan-Jai-ho-first-lookSalman Khan starrer ‘Jai Ho’ which is set to release in January next year has run into legal trouble over its film title. It is learnt that following the success of the song ‘Jai Ho’ (featuring in Slumdog Millionaire) music director, A.R. Rehman had trademarked the title ‘Jai Ho’ and the producers of the film ‘Jai Ho’ will now require a license from Mr. Rehman in order to use it as their film’s title.

While it is understood that the producer and Mr. Rehman are looking at settling this amicably, the case involves two major trademark issues- one, are song titles trademark protected and second, can the phrase ‘Jai Ho’ be trademark-protected. We will also explore whether song titles and ‘Jai Ho’, in particular, can be copyright protected.

First, let us address the broader issue of whether song titles in general enjoy trademark protection.

The first time trademark-protection was sought on a song title in India was for the popular Tamil-English mix song Why this Kolaveri Di?’ (Application No. 2246257, filed Dec. 8, 2011- an order on the same is awaited).

Richard Stim in his book ‘Music Law: How to Run Your Band’s Business’ opines that it is difficult to get trademark-protection for song titles unless the song is a big hit like “Sing, sing, sing” by Benny Goodman (Emi Catalogue Partnership v. Hill Holliday, Connors, 2000 U.S. App. LEXIS 30761 (2d Cir. 2000)).

By definition, a “trademark” is a mark which is capable of distinguishing the goods and services of one person from those of another and one might argue that a song’s title does not deserve trademark-protection simply because it does not serve as a source-indictor for any goods/services. This scenario changes when the music composer looks to use the song title commercially or where others want to use the song title on merchandise like coffee mugs, t-shirts etc; in this case, one might argue that it is unfair that commercial exploitation of the song’s title is being allowed without any royalty to the music composer.

Song titles like Beatles’ ‘Yellow Submarine’ and ‘Ziggy Stardust’ are trademark-protected. In my opinion, however, trademark protection for song titles would not be appropriate and a remedy in copyright would suffice. This is because I do not envisage a situation where there is likelihood of confusion in the mind of the consumers that music directors have turned t-shirt manufacturers or have started a side-business of manufacturing coffee-mugs. To illustrate, Ahmedabad-based Havmor Ice Cream advertises its cola-flavoured ice-cream as ‘Kolaberi’. While I admit that the name makes the ice-cream more catchy on the menu, any person who orders ‘Kolaberi’ will have the ice-cream for what it is- a cola-flavoured ice cream with strawberry and black-currant sauce; as a consumer I will never contemplate a situation where Sony Music Entertainment has turned to ice-cream making as a lucrative alternative business. The key test in cases of trademark infringement is whether the use of identical/similar mark creates likelihood of confusion in the mind of consumers.

Take another example of the nukkadwala cigarette shops which started selling a particular type of paan-masala by the name of ‘Dabanng paan-masala’; the move was a clever one given the popularity of the phrase ‘Dabanng’, courtesy the movie ‘Dabanng’. But clearly, no one would ever associate ‘Dabanng paan-masala’ with Arbaaz Khan Productions.

Specifically, can the phrase ‘Jai Ho’ be trademarked? 

For argument’s sake, let us assume that song-titles are indeed capable of being trademarked. If we talk specifically about the trademark-worthiness of the phrase ‘Jai Ho’, the phrase ‘Jai Ho’ is a generic mark, meaning that it is a phrase used in common parlance; this means that trademark protection should not have been granted to the phrase ‘Jai Ho’ in the first place. ‘Jai Ho’ translates to ‘Let victory prevail’ and is a common war-cry; it is a mark which has become “customary in the current language” and such a mark can be registered as trademark only if it has acquired a distinctive character or secondary meaning through use (See proviso to s.9 of The Trade Marks Act, 1999). Clearly, ‘Jai Ho’ always meant ‘Jai Ho’ much before Rehman composed a song with the same title. Therefore, the trademark right of Rehman over the phrase ‘Jai Ho’ is questionable.

Had the song title been a “coined phrase”, Rehman would have a strong case of protecting the same as trademark. For example, it will be easier for Beatles to trademark the song title ‘Lucy in the Sky with Diamonds’ than their song ‘Let it be’ simply for the reason that ‘let it be’ is a dictionary phrase making it a generic mark.

Now let us explore whether the song title can be copyrighted.

A song title falls under the category of ‘literary work’ and according to s.13 of The Copyright Act, 1957 a copyright subsists in a literary work if it is original. ‘Jai Ho’ as a song title is not an original work and cannot be attributed to A.R. Rehman; the phrase was in use prior to it being converted into a popular song. Contrast this with the phrase ‘Why this Kolaveri di’ which falls in the realm of an original literary work (composed of a mix of English-Tamil words). The phrase was coined by the song-composer and is an original phrase.

Finally, what’s in a name? A movie’s appeal lies in the star cast that it ropes in, the trailer and the hype around the film; it is rarely ever the title of the film that goads people to actually watch a film. For example, the movie ‘Jaane Tu..Ya Jaane Na’ which borrows its title from the popular song of the same name would have been just as successful had it been named ‘Barfi’ or ‘Ek Main aur Ek Tu’. Therefore, arguing that a movie is unfairly cashing in on the popularity of a previous song by adopting its title does not hold water.

17 comments.

  1. Avatarpadmaja Khandge

    As righted portrayed by swaraj, registering a title of a song or a movie under the trademark law gives no right to the applicant/ regd. proprietor unless he has an intention to commercially exploit the mark protected under a specific arena. In case there are no intentions of commercial exploitation of the titles, copyright law confers better protection for the titles.

    Reply
  2. AvatarShiw

    Even title of song “ALL IS WELL’ (Film-Three Idiots)has been applied for the trade mark registration under Application No.1940735 and the same has been accepted by the Registrar of Trade Marks and published in the trade marks journal No. 1616 dated 25/11/2013.

    Reply
  3. AvatarYASH SURYAWALA

    Even YASHRAJ FILMS has applied all its title of films for the trademark registration sometime under all the classes or some time randomly associated classes 9, 16, 25, and 41. Does it mean if some one wanted to use or write song which may start from the phrase like ‘JAB TAK HAI JAAN’, need permission and/or pay royalty towards the use of it.?

    Reply
    1. Avatardevika agarwal

      Hi,
      I think that will depend on whether the movie titles have actually been successfully registered-if yes, YRF will have a trademark claim. Also, it is my general observation that in case of movie titles, a title track (a tack having the same name as the movie) also accompanies the film. Therefore, songs with the same name as a previous movie are unlikely (but not impossible)
      and even in a case where a movie title has been registered successfully as a trademark, subsequent users of the phrase may always rebut the trademark on the ground that it is ‘generic’ (for example, a movie titled ‘aankhein’ )

      Reply
    1. Devika AgarwalDevika Agarwal

      Hi,
      I think that celebrity names merit trademark protection..this is to enable a celebrity to be able to commercially exploit his name to his own advantage..for example, by entering into endorsement contracts, the celebrity uses his “image” to sell a product commercially…in a case where the celebrity’s name is used for endorsement/promotion without his permission, his image rights are also being infringed

      p.s.: it will be good if you can provide us with the name of the celebrity so that we might explore the issue in a separate post

      Reply
      1. AvatarAnonymous

        Ok
        As you asked for the name, Ajay Devgan has recently got his name registered across all the classes, surely he will not use his name for all goods and services.
        What’s your take on it? does the situation changes for non-celebrity individuals?

        Reply
        1. Devika AgarwalDevika Agarwal

          Further, in Trademark Journal No. 1619, there is an advertisement of application for trademarking ‘Ajay Devgn Ffilms’..this is not an application for trademarking the actor’s name..rather, it seeks to trademark the name of his production house which is why the application states ‘Ajay Devgn FFilms’ and not ‘Ajay Devgn’

          Reply
  4. Devika AgarwalDevika Agarwal

    I think that the celebrity status of a person will not matter when he wants to get his name trademarked..however, the mark in order to be registered as a trademark must be distinctive…for example, ‘akshay kumar’ is a common name, therefore, one may argue that it is not a registrable trademark..
    however, it is unlikely that a person will get his name registered as a trademark unless he actually intends to use it in connection with goods/services..this is also because a trademark expires if it has not been used for 5 years…

    Reply
  5. AvatarSundakka

    // Contrast this with the phrase ‘Why this Kolaveri di’ which falls in the realm of an original literary work (composed of a mix of English-Tamil words). The phrase was coined by the song-composer and is an original phrase.//

    So mixing couple of words in common use from 2 languages makes a phrase in ‘original’? The word Kolaveri is spoken word comprising of 2 Tamil words which has existed for eons. Who gets the trademark if the word / phrase is present in both English and local language (with different meanings may be) ?

    Reply
  6. Devika AgarwalDevika Agarwal

    Hi,
    Words which exist in the vernacular cannot be trade-marked simply because they are generic marks and others should not be restrained from using them. A coined phrase is ‘unique’ and is therefore capable of distinguishing the mark of one from another’s. ‘Kolaveri’ (being a Tamil word) cannot be trademarked. However, the phrase ‘why this kolaveri di?’ has been coined by the song composer and maybe the combination of words did not ordinarily exist in the common language. Another example that may be cited is that of the movie ‘Jab we Met’ or ‘Love Aaj Kal’- here too, the combination of words used is unique.
    To the extent that the combination of words used is unique (i.e. the resultant phrase formed is unique), the mark may be trademarked.

    Reply
    1. AvatarSundakka

      I understand individual words in common use in any language cannot be trademarked. I was merely extending the same ‘common use’ logic to semi-translated phrases. I am not a native Hindi speaker, so pardon my I cannot explain why ‘Love Aaj Kal’ / ‘Jab We Met’ are not ‘unique’. Let me explain the case with Kolaveri phrase.

      Kolaveri is a very old tamil word. ‘en intha kolaveri’ was a ‘popular speak’ among sections of society in early 2000s. A top tamil comedian picked it up and used (more than once?) in his dialogues, it had become wide spread across the Tamil populace. (http://www.tantrumzz.com/2009/09/war-now-and-then.html?showComment=1253015321750#c3813372779282585914 — casual blog comment in 2009 using the tamil phrase). [Song released in 2011]. — The combination of words ‘ordinarily’ existed in source language – Tamil.

      The composer then semi-translates into mix of Tamil / English. (Tanglish https://en.wikipedia.org/wiki/Tanglish again predates the song, has been a slang for atleast a decade used by few million bilingual speakers). So a common phrase in language X becomes a trademarked phrase when its pseudo/semi translated.

      I am not sure if its healthy when contemporary cultural connotations are taken over by brands through trademark. I am more worried about this when some dish which is common in one culture gets a semi-translated name and becomes trademark of a hotel there by having a monopoly on the dish.

      As for the trademark, Zee Tamil seems to have already ‘infringed’ by creating a reality show with name https://en.wikipedia.org/wiki/Why_This_Kolaveri leaving out the ‘Di’. It will be interesting to know if got rights for use of ‘trademark’ or its a violation.

      Don’t ask me ‘Why this Kolaveri’ on ‘Why this Kolaveri Di’ trademark, I am on a murderous rage against this form of trademark protection.

      Reply
    1. AvatarShahir Muneer

      As such, in case of “Why This Kolveri” song, I personally know Sony has rights only to the soundtrack / sound recording. They do not have rights for usage of the term in context outside of the song/sound recording, whether for tv show titles, ice cream or commercial exploitation, as the producer & lyricist in this case, the singer/actor Dhanush himself & composer Anirudh would have a stake over its IP. Right?

      Reply
  7. Devika AgarwalDevika Agarwal

    Hi,
    A trademark has been sought for the phrase ‘Why This Kolaveri’ (as of 24th December 2013, an order on the same was pending)…in a case where the phrase is used on merchandise or for the purpose of commercial exploitation, Sony will not have the right over use of the phrase…if we assume that the trademark on the phrase has been granted, then the person who applied for the trademark (the trademark applicant) will have the right over the same…

    Copyright over the phrase will subsist in the lyricist [See section 13(1)(a), 13(4) & proviso to s.17 of the Copyright Act]; copyright may also vest in the film producer if there is a contract b/w the lyricist and the film producer to that effect.

    Reply

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