Regular readers of this blog may recall that we had blogged about the legal controversy surrounding the use of the word ‘Republic’ as the title of Arnab Goswami’s new show earlier this year. That controversy, which arose out of Subramanian Swamy’s assertion that the commercial use of the word ‘Republic’ is prohibited by the Emblems and Names Act can best be described as a ‘dog that did not bark’, inasmuch as Goswami decided to rename the show Republic TV to put its legal validity beyond any pale of doubt.
In an interesting development, the show and its founder have yet again found themselves at the centre of a legal controversy which our readers would definitely want to know about. (Alright, playing with words is really not my thing – back to the legal analysis of this controversy).
According to news reports, Goswami has been served a legal notice by his former employer, the Times Group, which contends that he is not entitled to use the phrase ‘Nation Wants to Know’ in connection with his new show. The gravamen of the Times Group’s claim appears to be that the Times Group is exclusively entitled to use this phrase, so Goswami’s use is unauthorized and violative of the Group’s rights.
In a video message released last week, Goswami characterized the actions of the Times Group as ‘nervous antics’ and described this move as nothing more than a component of a broader strategy by the Times Group to delay/stall the launch of Republic TV.
In his message, goswami is heard saying: “To them (the Times Group), I say: The threat of imprisonment will not deter me. Bring your moneybags and your lawyers, file the criminal case against me for using the phrase “Nation Wants to Know”. Do everything you can, spend all the money you have and arrest me. I am waiting right now in my studio floor.”
Asserting that this phrase comes from the heart, he goes on to state with pride that he has been using it for the last 20 years.
Goswami’s team also recently launched a marketing campaign titled ‘the Nation Still Wants to Know’ – no doubt a jibe on the Times Group.
Notwithstanding the hyperbolic tone of Goswami’s message, I think his use of the phrase is perfectly justified and there is, and indeed cannot be, a legal embargo on the use of short phrases such as the one at issue in this case. This assertion is based on at least two important reasons.
First, a search of the trademark registry clearly reveals that Bennett, Coleman and Company does not currently own a trademark over this phrase. More specifically, when one searches for this phrase in the relevant class i.e. class 41, only two search results appear which relate to applications that have been filed by Bennett Coleman. The first relates to the use of the mark simpliciter and the second relates to the use of a logo containing this phrase. Both these applications were filed on 17.12.2016 and their current status is shown as ‘objected’.
While this article indicates that Goswami’s company, ARG Outlier, also filed an application for registering the aforesaid phrase as a trademark in January 2017, I have not been able to locate any such application despite punctiliously scrutinizing the relevant entries in classes 35 and 41(I’d be very grateful if our readers could direct me to this application if it has indeed been filed). Be that as it may, since the Times Group has not yet been granted the legal imprimatur to exclusively use this phrase by the Trademark Registry, their claim lacks a legal basis.
Second, it is a well settled principle that a party cannot monopolize the use of common expressions and thereby rob a language of its vitality and richness. This proposition was accepted by the Bombay High Court in a case involving the use of the Marathi phrase ‘Lai Bharri’ which Gopika covered here; the Madras High Court relating to the use of the Tamil word Aachi covered here; and the Delhi High Court relating to the use of the phrase ‘Yen Dil Maange More’, albeit in the context of copyright law.
Similarly, in a landmark 2015 ruling that Gopika covered here, the Supreme Court held that the phrase ‘Desi Boys’ cannot be copyrighted, in light of its brevity and lack of distinctiveness. While it can be argued that the same principle would not apply in the context of trademark law, given that its fundamental aim is to grant legal protection to anything capable of distinguishing the goods/services of one trader from those of others, irrespective of its size, I would submit that this argument would not hold good in this case. While it would be correct to state that, as a matter of first principles, such a phrase is more likely to be granted trademark protection than copyright protection, I would submit that, in cases such as the one at hand in which legal protection is sought for the use of a phrase that does not serve a distinguishing function, the branch of IP law in which protection is being sought would not have a material bearing.
In this respect, it would be instructive to quote an illuminating extract from Justice Patel’s ‘Lai Bherri’ judgment:
“Every title of every work of literature, theater or cinema, every piece of dialogue in a film would, conceivably, be hit with claims of trade mark (or copyright) infringement. What Mr. Dewani’s [counsel for the plaintiff] submissions postulate, in the context of this claim, is the beginning of the end: a form of censorship and the gagging of speech and expression. If this claim is allowed, there is absolutely no limit to what will then be prohibited… Trademark infringement claims cannot be allowed to still the tongue of an entire populace, even in the slightest.”
Therefore, as Professor Basheer notes, the threshold that must be crossed by the Times Group for monopolizing the use of a phrase is very high and cannot be crossed absent a showing that the phrase is exceptionally distinctive and unique. Given the widespread use of this phrase, coupled with the fact that it lacks any sui generis features, I would submit that it would be extremely difficult for either party to cross that threshold in this case.