Nowadays, trademarks have become money makers in the music and film business.
The two main sectors music and film are the emerging big markets globally which
gives huge profits to the entertainment industry. The paradigm shift surrounding
the intellectual property issues plays a significant role surrounding various
controversies relating to trademark issues such as deceptively similar song,
film title, unauthorized use of film titles falling within the ambit of
infringement of trademarks and remedy of passing off. This paper explores the
potential application of the Indian and US Trademark Law in relation to music
and film industry focusing on the contemporary legal issues.
Trademark Law in Music and Film Industry: A Critical Analysis
A trademark means a mark which uniquely identifies the commercial origin of a
product and service. Nowadays, trademarks have become money makers in the music
and film business.
The two main sectors - music and film are the emerging big markets globally
which gives huge profits to the entertainment industry. Protection of commercial
rights and interest for a song and film title plays a vital role when an legal
issue arise. The paradigm shift surrounding the intellectual property issues
plays a significant role surrounding various controversies relating to trademark
issues such as deceptively similar song / film title, unauthorized use of film
titles falling within the ambit of infringement of trademarks and remedy of
A trademark or service mark, is a sign that distinguishes the goods and services
produced and provided by one company from those of another. In the world of
music, a band's name is its brand, and as such, can be protected as a service
mark. Examples of bands with trademarks include The Grateful Dead, Aerosmith and
REM. Bands can also register trademarks in relation to their albums, t-shirts or
any other merchandize they produce.
With a trademark a band acquires the exclusive right to use its name,
entertainment services and gains greater control over its identity. Acquiring a
trademark can help secure additional sources of revenue, through licensing and
merchandizing deals. Titles of songs are not normally eligible for trademark
protection but may be so in relation to associated merchandize or if part of a
series of works. An Asian-American rock-band (the Slants) with an
eyebrow-raising name has scored a big victory in the Court of Appeals for the
Federal Circuit. The court ruled that their name- The Slants- is private speech
and therefore protected by the First Amendment.
The government, the court writes, has no business trying to regulate it by
denying the band a trademark. At issue in the case was Section 2(a) of the
Lanham Act, which allows the U.S. Patent and Trademark Office (PTO) to deny or
cancel a trademark if it is "disparaging" of persons, institutions or national
symbols. In a 10-2 decision, the court decided parts of that section were
unconstitutional. Conferring a trademark, the court argues, does not make the
band's name government speech.
The name or title creates a sense of identity for a film among audience. All
over the world, the makers of a film takes utmost care and importance in
choosing an unique exclusively associated distinct title or name for their film
to get popular & blockbuster hit among the all classes of audience. This
association brings the audience to watch the film in theatres with their
families as well as associate it with producers. Under Indian Trademark Act,
1999 the title of a film can be registered and protected in Class 41 of the
fourth schedule of Trademark Rule, 2001.
The title of a cinematographic film is protected in Trademark Law under two
Secondary meaning of the Single Film Title –Single literary work's title:
- Series of Film Title:
This series of film title can get easy trademark protection and registration
when compared to the single film title. Examples of Series of Film Title
include Singham franchise i.e., Singham, Singham II and Singham III.
- Single Film Title:
This condition of single film title has to pass the second qualification in
order to acquire trademark protection and registration.
To satisfy or fulfil this condition of trademark protection, a secondary meaning
of the title must have been acquired. Secondary meaning means, "The association
of the title of the film with certain source, production house etc. by the movie
goer or audience."
Even before the movie gets officially released in theatres, the pre-release
publicity, promotions of the title of the film is sufficient for trademark
protection under the proviso clause stated under clause (1) of Section 9 of the
Trademark Act, 1999 which specifically gives Trademark registration to a
well-known mark or a mark which acquired distinctive character as a result of
the use made of it.
The court may take into considerations certain factors which decide the
secondary meaning of the title of the film as listed below:
- Continued Use and its Duration;
- The amount of money spent on extent of advertisement & promotion;
- The number of people who bought or viewed the owner's work its Sales
figures on purchase of tickets;
- Plaintiff and Defendant's closeness of the geographical and product mark
Protecting "Song Titles" In India Under Trademark Act, 1999
The song title as a registered trademark in India was unprecedented for many
years. The first song to acquire trademark protection on a song title in India
is "Why this Kolaveri Di?" a viral blockbuster hit song. This Tamil-English mix
song became an international youtube, facebook and twitter hit as it gained 4.10
million views in just 4 days of its official release.
Sony music Entertainment India one of the biggest revenue generating music
company in India recorded this song and filed for registration of a trademark
(Application No. 2246257, Dec. 8, 2011) "Why this Kolaveri Di?" (the first line
of the song).
An application for trademark was sought under Class 9 and Class 41 logo was word
mark respectively for protection of song lyrics. This allowed the launch of
various products by Sony such as compact disks, cassettes and SD Cards including
film and non-film entertainment content and discovery of talented programmes
branded "Why this Kolaveri Di" and also prevented or restricted others from
This "Kolaveri di" song, written and sung by Actor Dhanush for the Tamil film
'3', also shows how viral marketing can change the world within days of its
digital release by Sony Music in the second week of November. When the original
song has released, a never-before 20 million hits on YouTube, tens of different
versions of the song in
In Gibson Guitar Corp V. Paul Reed Smith Guitars, the court emphasised the
importance of the concept of "trade dress" and "initial interest confusion"
doctrine. Plaintiff Gibson stated that the defendant Paul Reed Smith had copied
the exact same trade dress in the shape of Gibson guitar model where an normal
consumer who fails to take a closer look on the Gibson guitar believed it to be
Paul Reed Smith's guitar has many chances for likelihood of confusion occurring
in his minds and believes it to be true. The panel dismissed this theory by
stating that Guitar shapes included many standards, elements, and so many of
these conditions looks the same when viewed from far.
There are lots of stores while display by them and consumer viewing will be
difficult to fit into the ambit of "initial interest confusion" which is
unworkable and complicated in court's view. In the most controversial landmark
case A.V.E.L.A Inc., V. The Estate of Marilyn Monroe,
LLC, et al.,
"Publicity or Celebrity rights" concept has been elaborated and emphasized with
AVELA is a company where nostalgia merchandise are specialised and produced.
AVELA made images of Monroe by violating trademarks. For long time it was said
that Monroe Estate, Monroe did not reside in California and for evasion of tax
payment suddenly the statement was reversed and claimed that California was
Monroe's home. By this rule, the court held publicity rights is not applicable
The Application of Initial Interest Confusion Doctrine In Trademarking A Movie
Sholay Media and Entertainment Pvt Ltd. V. Parag M. Sanghavi, Ram Gopal Verma's
film "Ram Gopal Verma Ke Sholay" was restrained by an ex parte injunction in
Delhi high court from release due to trademark infringements in relation to the
cult film Sholay. The issue in this case was whether for a film title, trademark
protection could be granted.
In Biswaroop Roy Choudhary V. Karan Johar
, The plaintiff acquired an
interim injunction for using the film's title and registered it with Registrar
of Trade marks to restrain the defendant from using the tile "Kabhi Alvida
" for their movie. But the court held that even though the
defendant did not register the title he was the actual user of the trademark as
he has completed the film production and ready for release of the film.
The court further stated that 'the actual use of the trademark was always a
relevant factor which would deter the court from granting injunction as relief.
Hence there was denial to the plaintiff about the interim relief and held that
Kabhi Alvida Naa Kehna was a common phrase, it cannot be used exclusively and
the plaintiff approached the court in a delayed manner. These are the factors
taken into account by the court for its denial of relief to the plaintiff.
In my opinion a new dimension is liberalised by analysing the aforesaid
judgments which gives a new interpretation of the Trademarks Act, 1999. The
judiciary should equip itself more to deal with such issues pertaining the
entertainment industry and trademark protection in India and also should provide
appropriate solution to the issues.
Similarly, while naming a film the producer' slacks originality sample applies
in case of song title and lyrics too. This should be avoided and a right balance
should be accorded for musicians and film makers who wanted to protect their
work as trademark because any new concept or idea for a song or a film is
directly associated in the minds of the audience & trademarks plays a key role
in brand building business on developing instruments, sound systems by bringing
- Anchita Sharma, Trademarks: Case Study – Trademark For Film Titles,
(last updated June 27, 2014).
- Vishal Dutta, Sony Music Entertainment files trademark for "Kolaveri Di",
The Economic Times, Jan 13, 2012
- Rahul Dev, "Why this Kolaveri Di" Song Lyrics Filed by Sony Music
Entertainment India For Trademark Protection in India, https://techpatents.wordpress.com/2012/01/18/kolaveri-di-song-lyrics-trademark-filed-by-sony-slogans-taglines-branding-trademarks-and-viral-marketing-fb/
(last updated Jan 18, 2012).
- Mehul S Thakkar, Who's Jai Ho' is it? The Times of India Entertainment
(Mumbai Mirror), Dec 19, 2013, 12.00 AM IST
- Tree Publishing Co. V. Warner Bros. Records 785 F. Supp. 1272 (M.D Tenn.
- EMI Catalogue Partnership V. Hill Holiday, Connors, U.S. App. LEXIS
30761 (2nd Cir. 2000)
- Gibson Guitar Corp V. Paul Reed Smith GuitarsLP, 423 F.3d 539 (6th Cir.
- A.V.E.L.A Inc., V. The Estate of Marilyn Monroe, LLC, et al.,12 Civ.
4828 (KPF) (Date filed Sep 18, 2015)