Indian film industry runs on creativity and vision of the film makers, from dialogues to cinematography and from song compositions to film titles, Intellectual Property law goes hand in hand with Bollywood.

In this article I am focusing on Film Titles and the IP laws surrounding them. The title of a film plays an important role in the marketing, reception, perception and understanding of a film. A film title is generally the first piece of information that is given to the public. It needs to be catchy, appealing, memorable all at once and hence it is the single most important choice that massively affects the success or failure of a film. It sets the tone for a film’s screenplay and gives viewers a reason to either see or avoid the movie.

Protection of Title

A film title is protected under entertainment services falling under class 41 of Trademarks Act, 1999. In order to accommodate online streaming, the title may also be registered under class 9.

Title of a Series or a Franchise

When the title is of a series of films or a franchise e.g. Housefull, Dhoom, Dabangg , getting a registered trademark is easier in case of a franchise than in the case of title of single film.

Title of a Single Film

For obtaining a trademark registration for a title of a single film , the title needs to pass a qualifying condition of having acquired a secondary meaning.

This means that a viewer would associate that film title with a particular source/ production house etc.The court may decide whether or not a film’s title has acquired a secondary meaning after considering the duration and continuity of its use (sometimes pre release promotion may also suffice), the extent of advertisement and promotional expenses and its box office collection.

The title of a film is not protected under Copyright Law as it does not fall under the ambit of “Literary Work”.

Recent Judgement of Doordarshan

India's largest public broadcasting agency Prasar Bharti recently filed a suit seeking injunction against producers and distributors of a film titled “DOORDARSHAN” to restrain them from passing off their trademark DOORDARSHAN¹ before the Delhi High Court.

The Hon’ble Court granted an interim injunction restraining the defendants from using the mark “DOORDARSHAN” and directed them to make the necessary alterations/modification in the film within two days of the order. The film is now renamed as DOOR KE DARSHAN.

Other important judicial precedents.

Kanungo Media (P) Ltd vs. RGV Film Factory²

Kanungo Media adopted the title Nisshabd for its Bengali documentary film which was presented at various film festivals. However, due to financial issues the film was not released in theatres. Subsequently, Ram Gopal Varma adopted the same title for his Hindi film. Kanungo Media filed a suit seeking permanent injunction for copyright infringement and passing off against RGV Film Factory. Kanungo Media stated that its film has been exhibited at many film festivals and had received awards and accolades and hence it has acquired distinctiveness among the film industry and the public. During the pendency of the suit Kanungo Media applied for registration of the titles Nisshabd and Nishabd as trademarks arguing that the film titles have acquired prior rights over those titles and any subsequent use of an identical or similar title by another party in respect of a film would amount to passing off.

The Hon’ble Court held that the protection under trademark law can be extended to the title of a single copyrighted work if it is proven that such title has acquired a wide reputation among the public and the entertainment industry. Since Kanungo Media’s film wasn’t released whereas RGV Film Factory’s film was everywhere in the news. Therefore Kanungo Media’s film title cannot be held to have acquired any secondary meaning as viewers identified only Ram Gopal Varma’s film by the title and hence plea of injunction was rejected.

The Hon’ble Court mentioned an important observation that is worth mentioning.

“In fact, "any publicity is good publicity" and, therefore, it is not necessary that to acquire secondary meaning, work has to be popular, for even bad reviews and advertisements, public comments may bring about widespread identification of the literary work by its title.”

RGV film factory also raised acquiescence as a ground of defence which was accepted by the Hon’ble Court.

Biswaroop Roy Choudhary v. Karan Johar³

Biswaroop Roy Choudhary registered “ Kabhi Alvida Naa Kehna” as a film title under class 41. The film was 40% complete at the stage of arguments. The Defendant Karan Johar registered the same title with Association of Motion Pictures and Television Program Producers (AMPTPP). Biswaroop Choudhary went on to file a suit seeking injunction against Karan Johar however by the time suit was filed, Karan Johar’s film was already completed and was about to be released.

The Hon’ble Court decided in favour of Karan Johar basing its decision on two important reasons.

● Biswaroop Choudhary may have been first in registration of the mark but Karan Johar has established prior use as his film is complete and is about to be released.

● Plaintiff delayed the filing of the suit . It was held that if Plaintiff was a serious producer of film, he ought not to have ignored gossip within his trade, whether it was in the form of press reports or exchange of communication to the Guild or Association claiming the same title. He could have filed the suit when Karan Johar performed its Mahoorat Shot of the film .

The Hon’ble Court observed “Delay in approaching the Court, so far as grant of equitable relief is concerned, is always fatal. The Plaintiff has waited for the Defendants to expend large sums of money and energy in the completion of the film with the same title, thereby shifting the balance of convenience in favor of the Defendant.”

¹PARASAR BHARATI Vs. RITU ARYA & ORS. CS(COMM) 96/2020

²(2007 (34) PTC 591 (Del)

³2006 VIII AD (Delhi) 351