Moreover, it was till recent time supposed by various people including law practitioners that the title of the said works is covered under copyright law. The judgment of Hon'ble Delhi High Court in Kanungo Media (P) Ltd. v. RGV Film Factory and Ors., popularly known as the Nishabd case has completely changed the scenario. The court held that, in America the title of a literary work is not protected by copyright law, but it is given protection under the trademark law and same is the position in India.
It is common, rather imperative, to give title to literary or entertainment works. Like human beings, literary work produced by the author or the work of entertainment produced by a producer needs a name. It is only then such work would be identified. The term ‘literary title' is used to encompass title of books, periodicals, newspaper, plays, motion pictures, television series, songs, phonograph records, cartoon features and the like [McCarthy on Trademark and Unfair Competition, Third Edition(1995)Vol.1].
Reasons for supposition of protection of title under copyright law(i) Under section 13 of the Copyright Act, 1957 the works which are given protection under the copyright law include- original literary, dramatic, musical and artistic works, cinematograph films and sound recording. In furtherance, under section 44 the particulars which are entered on the register of copyright include- the title of the work, the work itself and the names and addresses of the authors, publishers and owners of copyright. A large number of people are under a deception that the copyright extends to the title along with the work.
(ii) In India the issues before the courts so far pertained to substantial copying of a work. But a case where, the issue is not the copying of a work but is rather the common title is altogether a new issue.
Legal position before the judgmentThough the issue regarding the title of the said works is recent, there was a provision in the Trade Marks Act, 1999 relating to title of films and books prior to the judgment of Nishabd case, and the judgment thus has not brought any amendment in the IP laws but has certainly given a better meaning to the existing law (the cases further discussed will make it clear). The provision regarding the trademark of the said works is found in schedule 4, class 41 of the Trade Marks Act, 1999 (Entertainment Services). Also, before the judgment, the right owners of the said works were filing a Trademark application for protection of their titles. Mainly the entertainment law practitioners were aware of the legal position for protection of titles of the said works in India. Even in Nishabd case, a contention of the plaintiffs counsel was that the plaintiff enjoys copyright in the title of the film.
Popular instances of disputes on common titles(i) Kabhi Alvida Naa Kehna - Biswaroop Roy Choudhary v. Karan Johar: Where the Plaintiff had filed a suit before the release of Defendants film to restrain the Defendant from using the trademark/ title- Kabhi Alvida Naa Kehna. Plaintiff asserted that he had applied for a registration of the said trademark in class 41 on May 17, 2005. The registrar had ordered its publication on June 20, 2005 which occurred on the journal on February 15, 2006.The Mahoorat of Plaintiffs film took place on September 23, 2005.
In September 2005, the Defendants Mahoorat took place and immediately thereafter Plaintiff issued a notice on October 13, 2005 and also made a communication in that regard to the Registrar of Trade Marks. Defendants assertion was that he had approached the Secretary, Association of Motion Pictures and TV Programme Producers for the title on January 13, 2005 and later on approached Film and Television Producers Guild of India. Both associations recorded registration of the said title in his favour. And that he had incurred expenses of Rs 45 crores , the music rights were already sold to Sony BMG Music Entertainment India Pvt. Ltd. for Rs 5 crores and over 1 million copies had already been sold. Moreover, the film was ready for its release.
The Ld. Judge opined that the title has not been authored by either parties and is a part of the lyrics of an extremely popular film song. And prima facie it appears that the Defendant adopted the title prior to the Plaintiff and that the Plaintiff in the courts view is a person to profit from the controversy.
Held: Plaintiff not entitled to injunction. Application dismissed without costs.
(ii) Nisshabd (Bengali film) and Nishabd (Hindi film) [Kanungo Media (P) Ltd. (Appellant) v. RGV Film Factory and Ors. (Respondent)] Where the defendants film ‘Nishabd' was all set to release, plaintiff filed a suit for permanent injunction claiming damages. Plaintiff asserted that he had first adopted the title ‘Nisshabd' and his film had won various prestigious awards. Plaintiff had applied for CBFC clearance on June 8, 2005 and on June 17, 2005 was given a clearance. Though the film was not commercially screened due to paucity of funds, it had won many awards worldwide and thus it had acquired distinctiveness. The fact that a film festival organized by Zee cinema in association with M/s Adlabs (herein defendant no 2) where the plaintiffs film was screened and brochure was made available which gave full details of the awards won by plaintiffs film, makes it very clear that the defendants were aware of the plaintiffs film though it was not commercially released. Also, the certification by CBFC to the defendants was contrary to the Cinematograph (Certification) Rules, 1983 and the defendants must not be allowed to take an advantage out of that. Moreover, the plaintiff had applied for a trademark protection and was enjoying a copyright on the title.
The defendants argued that the plaintiff has approached the court much belatedly when the defendants film is about to release. If at this juncture an injunction is granted, an irreparable loss will be caused to them as Rs 8 crores was spent in its making and Rs 1.5 crores spent in its promotion. The plaintiff knowingly remained silent and allowed things to happen and thus has waived his right, if any. Also the plaintiff has no merits in the case as the Plaintiffs film is a documentary film in Bengali, not commercially released and thus has only a limited number of viewers. Whereas the defendants film was in Hindi, commercially released and having entirely a different storyline. So the question of confusion does not arise at all. The storyline of the defendants is such that no other title was meaningful other than ‘Nishabd'.
In the courts opinion, the plaintiff lost the chance in not approaching the court earlier. Also because of publicity of extravagant nature, the defendants film is more known than that of the plaintiff and the title of plaintiffs film prima-facie seems to be blurred as compared to defendants film.
Held: Plaintiff not entitled to injunction on the ground of delay. Application dismissed.
Since the title of the said works are given protection under the Trade Marks Act, 1999 it may after a couple of years lead to pandemonium. Under section 25 of the Trade Marks Act, 1999 the registration of a trademark remains in force for a period of ten years from the date of filing and can be renewed again and again. In such a case, there is a threat that after a period the industry will hardly be left with a title to give to its works. Where the title of such work is authored by a person, it must be given protection. But, where such title is common, there must be some limitations to this effect.
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