This article has been written by Indulekha T M, a 5th-year student of SDM Law College, Mangalore
ABSTRACT
A band gains more control over their image and the exclusive right to use its name and entertainment services when it registers a trademark. Securing new revenue streams through licensing and merchandising agreements can be facilitated by obtaining a trademark. Generally speaking, song titles are not protected by trademarks, but they might be if they are associated with products or if they are a part of a body of work. Asian-American rock group The Slants, who go by an odd moniker, have achieved a significant victory at the Federal Circuit Court of Appeals
INTRODUCTION
A word, phrase, design or symbol that distinguishes and identifies the source of a product from those of other parties on the market is called a trademark. By making sure that the goodwill that gives a brand its value cannot be taken away, it protects a brand. A mark that can be graphically represented is what is meant to be registered under Section 2(ZB) of the Trademarks Act,1999. The trademark should be able to distinguish one party’s goods or services from those of other parties. It may include the product’s shape, packaging, or colour scheme. In India, media and entertainment industries need to register their trademarks.
WHAT IS A TRADEMARK?
A trademark can be any combination of letters, numbers, symbols, or designs that uniquely identifies your products or services. Customers use it to identify you in the marketplace and set you apart from your rivals.
Trademarks and services marks are both included under the umbrella term “trademark”. Products are identified by a service mark.
A trademark:
- Identifies the source of your goods or services
- Provides legal protection for your brand
- Helps you guard against counterfeiting and fraud
TRADEMARK LAW IN THE MEDIA AND ENTERTAINMENT INDUSTRY
- It is indisputable that a distinctive trademark is important in the media and entertainment sector. The name of a band or artist is one of the most important aspects of a musician’s career because it gives the songwriter a distinct identity. People’s primary perception of artists is based on this identity. What gives a band or artist their value is when a song is associated with a specific song title or brand name. The movie titles are likewise protected in this way. Movie titles can be registered with various organizations or societies, such as the Indian Motion Picture Producers Association, the Motion Picture and Television Programme Producers Association, and so on.
- A rise in trademark infringement has forced the entertainment industry to choose trademark protection. It provides artists with peace of mind because it is crucial for safeguarding intangible assets like song titles, movie titles, motion pictures, and brand names.
- A trademark’s importance in the entertainment industry cannot be emphasised. The most important feature is the artist or band name, which gives the original author a unique identity. In the public’s perception, an artist’s name is the only characteristic that defines them, making it an unusual form of identification.
- Although such registration is invalid, the applicant may still be permitted to submit it in the event of an official disagreement, according to the court. The Trademark Rule, 2001’s fourth schedule, Trademark Class 41, requires that services classified as entertainment be covered, and this includes motion picture tiles.
- An artist or band gains original value when they connect a song with a specific brand name or song title.
- Several groups, including the Association of Television Programs and Motion Pictures and any Indian motion picture producer’s alliance, provide film titles with registration-based reasonable protection against infringement under the Infringement Act.
- There is no doubt that trademark registration is critical for musicians and filmmakers in the entertainment sector.
THE INDIAN TRADEMARK LAW AND ITS PROTECTION OF MOVIE TITLES
The global media and entertainment sector is a prominent global producer of motion pictures. Bollywood produces almost 1200 films a year, more than any other film industry in the world, and brings in almost $1.8 billion at the box office each year. In 2001 the Gol granted the Indian film industry status. Due to the entry of numerous foreign players and investors, such as Viacom Motion Pictures, 20th Century Fox, Warner Brothers, and others, it has quickly evolved. Although there has been a significant shift, intellectual property issues have also increased. These issues mainly involve disputes over the use of misleadingly similar titles or other unauthorised methods of adopting movie titles, as well as trademark and copyright infringement and bypassing.
TRADEMARK ACT,1999: PROTECTING “SONG TITLES”
Until the song “Why this Kolaveri di” was released in 2011 and became an overnight sensation, song title registration was not a common practice in India. Its owner, Sony Music Entertainment Pvt Ltd, intended to release CDs and other non-entertainment merchandise under the title, so it applied for registration to prevent others from using it. As of July 2020, Kolaveri di’s situation is as follows.
Another legal issue arose when Salman Khan’s movie “Jai Ho” was released in 2014. After the song “Jai Ho” from the movie “Slumdog Millionaire “won an Oscar and became an enormous hit, A R Rahman applied to register the song’s rights. There were objections to the movie’s use of this title. It should be noted that the expression “Jai Ho” is not new and has been used extensively throughout India for a long time. Nevertheless, the movie was released under that name.
PROTECTION OF SOUND MARK
Sound mark is an unconventional trademark. Sounds have the power to change how a brand is perceived by consumers. It can serve as a component that helps a brand identify its source. Indian trademark law permits the registration of sound marks. The applicant must demonstrate that the song or sound has achieved “Factual Distinctiveness” for the sound mark to be registered. This means to keep in mind the significance of the song or sound about the related good or service. The first sound mark to be approved for registration was Yahoo’s “Yodel.” The National Stock Exchange’s theme song is also registered. The “I’m Loving It” jingle from McDonald Corporation, the “Looney Tunes” melody from Warner Brothers, and the “lion roar” from Metro Goldwyn Mayer (MGM) Corporation are a few of the well-known sound marks in the USA.
Within the Indian context, several well-known commercial jingles, such as “Googly woolly woosh” from Ponds, “Oye bubbly” from Pepsi, “You and I” from Vodafone, and many more, would have qualified as sound marks.
CASE ANALYSIS
Shield Mark BV v. Kist
The European Court of Justice(ECJ) ruled in this case that a sound could be trademarked as long as it was distinguishing and could be visually represented.
Furthermore, the court has ruled that a written description of a sound trademark—using terms like onomatopoeia—does not qualify as a graphical representation because it lacks precision and clarity. This severely limited the ability to register sound trademarks, particularly non-musical ones.
PROTECTIVE MEASURES FOR TRADE DRESS IN INDIA
US laws are where the idea of trade dress first emerged. A product or service’s overall “look and feel” is referred to as trade dress, which is a subset of trademark law. The ultimate aesthetic appeal and presentation of the good or service helps customers determine the product’s origin. The Trademarks Act of 1999 brought Indian trademark law up to par with global norms. The amended Trademark Act of 1999 expanded the definition of trademark to include all elements of trade dress specified under the US Lanham Act, although it does not provide a separate definition of trade dress.
Section 2(m) of the Trademark Act,1999 defines “mark” which includes device, brand, heading, label, ticket, name, signature, word etc.
Section 2(q) defines “package” to include any case, box, container, covering, folder, receptacle, vessel, casket, bottle etc.
Section 2(Zb) defines “trademark” which includes the shape of goods, their packaging, colour combination, and graphical representation of the mark.
PROTECTING FICTIONAL ELEMENTS
This trademark-related practice is an intriguing and unique feature. The US has seen a small number of these cases.
In Viacom International Inc. v.IJR Capital Investments, LLC, the defendant, a restaurant purveyor, named their eatery the Krusty Krab, which is also the name of the eatery from Nickelodeon’s well-known cartoon SpongeBob SquarePants, where SpongeBob works. In this instance, the Court rejected IJR Capital’s contention that Krusty Krab is “just a cartoon restaurant, “conducting instead that the brand has taken on a deeper significance. In addition, the defendant was found guilty of infringement because of the possibility of confusion resulting from similar names.
PROTECTING MOVIE TITLES
In India, it is customary to register titles with trade associations like the Western India Film Producers Association (WIFPA), the Indian Motion Pictures Producers Association (IMPPA), and the Film and Television Producers Guild of India. To find out if a title is identical to or confusingly similar to one that has already been registered, a comprehensive search is done across these entities. Registering the titles with these organisations merely gives you first dibs on using the movie’s title; it has no bearing on how the legal process is carried out.
Under the Trademarks Act,1999 movie titles are protected under the Trademarks Act subject to the following requirements:
- TITLE OF FILM SERIES: Under this Act, trademark protection is more likely to be granted to a film franchise with multiple instalments, such as Dhoom, Dhoom 2 and Dhoom 3. This is because the content is dynamic, these kinds of series have a long shelf life, and viewers start to identify the movie with its producer, source, and other details.
- TITLE OR A SINGLE FILM: Unless the title of a single film has taken on a secondary meaning, no title protection is granted. It is implied by the secondary meaning that viewers identify the title meaning with both the source and the movie itself. Any publicity is good publicity, and under Section 9(1) of the Trademarks Act,1999 which permits the registration of “well-known marks”, a movie that receives such publicity may be granted protection.
CASE ANALYSIS
Kanungo Media Pvt.Ltd v.RGV Film Factory
In this case, the plaintiff had created a movie called “Nisshabd” which won numerous accolades and was screened at numerous international film festivals. However, the movie was never released in theatres due to financial difficulties.
“Nishabd”, a movie starring Amitabh Bachchan and Jiya Khan was produced by Ram Gopal Verma in 2007. The defendant was sued by Kanungo Media in the Delhi High Court for infringement. The Court determined that the title “Nisshabd” has failed to acquire a secondary meaning because the public would not be aware of the existence of the plaintiff’s film. After all, it was not released commercially. Consequently, the defendant won the case.
INITIAL INTEREST CONFUSION DOCTRINE
INITIAL INTEREST CONFUSION DOCTRINE’S APPLICATION IN TRADEMARKING A MOVIE TITLE;
If a similar trademark is used by two or more identical goods or services, consumers are likely to be confused. Utilising this, media and entertainment companies create trademarks that mimic well-known brands to capitalise on their reputation. We call it confusion about initial interest. This theory comes into play when it comes to movie titles because, according to section 29 of the Trademark Act of 1999, a registered trademark is violated if there is a possibility that two marks will be confused for one another.
CONCLUSION
In the entertainment industry, trademark registration is crucial since it safeguards priceless video and audio recordings. The entertainment industry receives less lenient application of the Trademark Act,1999 which is comparable to international trademark laws. The should be no room for duplicity when it comes to song titles or the titles of movies or pictures. Trademarks should have sufficient protection since they are tools for building brands. Therefore, seeking advice and counsel from an online legal agency or speaking with a company attorney may be advantageous if you have questions concerning your legal rights or how to register a trademark.
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