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An Analysis:Trademark Law in Music and Film Industry

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 passing off.

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 conditions:

  1. 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.
     
  2. Single Film Title:
    This condition of single film title has to pass the second qualification in order to acquire trademark protection and registration.

Secondary meaning of the Single Film Title –Single literary work's title:
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 using it.

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 utmost importance.

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 to Monroe.

The Application of Initial Interest Confusion Doctrine In Trademarking A Movie Tile.

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 Naa Kehna" 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.

Conclusion
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 music closer.

References:
  • 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. 1991).
  • 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. 2005).
  • A.V.E.L.A Inc., V. The Estate of Marilyn Monroe, LLC, et al.,12 Civ. 4828 (KPF) (Date filed Sep 18, 2015)

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