Shashank Mangal, a 4th year student from ILS, Pune, brings us a newsy tidbit relating to a Hollywood-Bollywood movie title clash.
It’s time for Real Action, Jackson
Warner Bros. has sent a legal notice to Baba Films asking them to change the title of their forthcoming movie ‘Action Jackson’ as its use will lead to infringement of their trademark which it claims is also valid in the sub-continent….
On February 4, 2014, Warner Bros. sent a legal notice (click here) to Baba Films (Gordhan Tanwani) and Eros International, the makers of the movie ‘Action Jackson’. The notice requires them to change the title of the movies as it is the title of a 1988 Hollywood movie with the same title which was produced by Warner Bros. It claims to have the registration for the title in the Sub-continent as well.
What des the law say
At the time of writing this post, I have already checked whether ‘Action Jackson’ is a registered trademark under any of the classes through the Public Search of Trademarks Facility but couldn’t find any trademark registered with the Indian Trademark Registry by that name. On the other hand, Baba Arts, the recipients of the notice has also not been granted the trademark for the title yet and the exact stage which the registration process has reached is also not ascertainable. But after searching all the trademark journals published between September, 2013 and January, 2014 and then using the ‘Google advanced search’ feature for the same, it can be concluded that it has still not been published in the Trademark Journal. In such a scenario, if the title is still found out to be registered by Warner Bros., then one of the possible line of action for Baba Arts Ltd. can be filing of an application under S.47 to the appropriate authority (Registrar or the Appellate Board) requesting thereby removal of the trademark from the Trademark Register on the basis of non-use (which at least prima facie seems to be the case).
If an infringement suit is filed by Warner Bros., then the first action by the defendants can be to request the court to grant a stay on proceedings by challenging the validity of trademark under Section 124.
Anyway, it is very early to comment with such limited information in hand. Nonetheless, it will be interesting to see how the matter unfolds…
Whereas Prabhudeva, Gordhan Tanwani and Ajay Devgan can’t afford “Action Jackson’s” ban in North America for alleged copy right infringement of Time Warner’s original intellectual property rights retained in United States in 1988, any judicial remedy for them in India would not give them any relief temporary or permanent in North America because the film in question is likely to be released and screened in United States and Canada by Lulla Brothers under the Banner of Eros International, New Jersey.
Since, Copy Right Violations are dealt by Federal Courts under Title 17 of the United States Code, Time Warner retain their copy rights in alleged infringement for life and another 70 years of the date of death of it’s authors and creators from 1988 under 17 U.S.C. Sec. 302 and 28 years under 17 U.S.C Sec. 304, even if, it was not published as argued.
Time Warner has the remedy to Permanent Injunction, Impounding of entire film articles and objects, Damages in all profits, Infringement Costs and Attorneys Fee, and Criminal Indictment against the violators under 17 U.S.C. Sec. 501 et seq.
Wherefore, the Courts in India would neither have the subject matter jurisdiction, nor the personal jurisdiction in the alarming dispute between Time Warner versus Baba Films (as known as Baba Arts Ltd) et al (and others), and Gordhan Tanwani, Lulla Brothers (Eros International) and Prabhudeva must act cautiously to hire an experienced, seasoned and articulate Attorney of Indian origin having ample criminal, constitutional, Intellectual Property, Media, Entertainment and ethnic laws of India and United States in the Courts of India as well as United States.