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 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.