Trade marks in the realm of the “Entertainment” industry

“We aren't in an information age, we are in an entertainment age.”

-Tony Robbins, entrepreneur, author, philanthropist, and life and business strategist[1]

The term “entertainment industry” predominantly deals with film, print, radio, and television industry and includes books and novels, journals, magazines, movies, multimedia, music, news and newspapers, periodicals, radio programs, television shows and web series, theatre, video games in its ambit. Owing to the increase in digitisation, consumer demand and widespread reach and access to the internet, the Indian Media and Entertainment (M&E) industry has become one of the fastest-growing industries in India. The Indian M&E industry reached INR1.82 trillion (US$25.7 billion) in 2019, a growth of 9% over 2018 as per the FICCI EY report titled 'The era of consumer A.R.T. - Acquisition Retention and Transaction’.[2] Further, by 2021, the Indian M&E industry is expected to reach Rs 2.35 trillion.[3] Though, various legal issues have come to the fore owing to such mammoth growth. Primarily, the entertainment industry is marred by problems arising out of intellectual property rights, contracts, company law as well as competition faced in the market. However, the grimmest issue faced by the industry is piracy wherein protection is provided under three different laws which go hand in glove - copyright, trade mark and unfair competition. In this article, we will focus on the vital role played by trade marks in some of the aspects of the entertainment industry.

Trade Marks and Celebrities

Owing to the massive influence of celebrities in recent times, celebrity or publicity rights have attracted considerable momentum. In his essay, William McGeveran[4] coined the term “Selfmarks” and stated that ““Selfmarks” are branded personal identifiers that can be protected as trade marks”. These rights relate to the personality of a celebrity and can range from the name of the celebrity to the name of their child, signature, phrases, song lyrics and even their posture! Anything that is capable of being trademarked and which can serve as a source identifier can be trademarked. Celebrity rights are thus, closely linked to property and privacy rights.

Concept of celebrity rights date back to the 1980s atleast to Madonna and the 1998 case between Elvis Presley Enterprises, Inc. and a nightclub in Houston, Texas called "The Velvet Elvis.", which has now been renamed as The Velvet Melvin.[5] Celebrities tend to trade mark their identities for mainly two purposes:

1. As a tactical step to prevent any misuse, exploitation or unauthorised use of their attribute for commercial purposes. For example, climate activist Greta Thunberg has filed applications to register her name and the #FridaysForFuture movement as trade marks, merely to prevent any unauthorised use of the same for commercial purposes.

2. To profit themselves - In this regard, celebrities also file applications on “proposed to be used” basis in case there is a bona fide intent to use the mark in future in respect of the goods or services.

However, the mark to be registered ought to be with respect to a particular class of goods or/and services.

Some of the famous celebrities who have trademarked or attempted to trade mark their name are President Donald Trump, Melania Trump, Beyoncé, Rihanna, Katy Perry, Taylor Swift, Victoria Beckham, Kylie Jenner and Justin Bieber. Latest to jump on the bandwagon is Idris Elba who has filed an application to trade mark his name for a range of health and beauty products. According to an article on Forbes[6], just by a precursory count, the Kardashian family has aggressively filed 716 trade marks “to protect their personal brands and try to freeze out anyone who might want to capitalize on their names”. However, Kylie Jenner’s application for registering “KYLIE JENNER” for clothing was rejected by the USPTO owing to an earlier mark “KYLEE” for clothing.

Professor McGeveran, in his essay[7], has gone on to state that “just as logos, product design, catchphrases, and “look and feel” can be perceived as source indicators and protected as trade marks, so too selfmarks might encompass names, photos, signatures, catch phrases, nicknames, and so forth—whatever causes the public to unmistakably think of the single individual”. American ring announcer for boxing and professional wrestling matches Michael Buffer’s “Let’s get ready to rumble”, Football player Marshawn Terrell Lynch’s “I’m just here so I won’t get fined”, “That’s Hot” of Paris Hilton and Taylor Swift’s “this sick beat” and “party like it’s 1989” are some of the famous examples of catchphrases being registered as trade marks. Emeril Lagasse, a celebrity chef, was even able to trade mark the single word “BAM!,” though only for products relating to cooking.[8] American professional baseball player Tim Tebow has also succeeded in registering his move “Tebowing”.

Closer to home, Kajol, Shah Rukh Khan, Rajnikanth, Sunny Leone, Sanjeev Kapoor and Amitabh Bachchan are few celebrities who have filed applications for registering their names and images. In India specifically, the definition of ‘marks’ includes name as well as signature.[9] Further, Section 14 of the Trade Marks Act[10], which deals with “use of names and representations of living persons or persons recently dead” prevents unauthorised use of the celebrity names and clearly states that consent is necessary for registering such trade marks. Thus, even though Indian celebrities are not as voracious in registering their identities as foreign celebrities, the concept is gaining traction in India.

Trade Marks and Merchandising

Trade marks also feature prominently in films, comics, web series, wherein movie titles, key elements or characters can be protected. Registration of characters or key elements as trade marks and further licensing and merchandizing them proves to be highly lucrative. In 1998, B. Joseph Pine II and James H. Gilmore in an article[11] stated that “from now on, leading-edge companies—whether they sell to consumers or businesses—will find that the next competitive battleground lies in staging experiences.” This is highly relevant from the point of entertainment industry wherein merchandising is a $262 billion-a-year industry[12]. According to a report, entertainment licensing in India was valued at $406 million.[13]

Stewart Goldsmith, Vice-President of Sales for Todson said “Good merchandising will always take the consumer from deciding whether they are going to buy to which are they going to buy”[14]. Since the underlying concept of Merchandising Rights pertains to source identification, prevention of unauthorised use as well as promotion and commercialisation through products or services, the persons, real or fictitious, are protected under Trade Mark law.

Character Merchandising entails using fictitious persons or characters to promote a product or service, in the form of collectibles or depiction on tshirts, mugs, bags, stationery, etc. Ranging from Netflix’s Stranger Things to J.R.R. Tolkein’s Lord of the Rings, Disney’s Mickey Mouse and Star Wars to Warner Bros’ Harry Potter, and Indian superheroes like Ra.One and Krrish, fandom is spending billions to experience the lives of their favourite characters. Thus, to prevent any unauthorised use of a character’s name, image or any attribute which can be traced back to the character, trade mark protection is sought. Trade mark can be granted for protecting the name, appearance or the verbal expressions of the character. For instance, Marvel’s registration of the names and likeness of several of its superheroes has resulted in considerable revenue of the company.

In Star India Private Limited vs Leo Burnett (India),[15] the Court observed that “Character merchandising involves the exploitation of fictional characters or the fame of celebrities by licensing such famous fictional characters to others… It is necessary for character merchandising that the characters to be merchandised must have gained some public recognition, that is, achieved a form of independent life and public recognition for itself independently of the original product or independently of the milieu/area in which it appears. Only then can such character be moved into the area of character merchandising.”

In Disney Enterprises Inc. & Anr. Vs. Santosh Kumar[16], wherein the Defendant was selling products with the images of Hannah Montana, Winnie the Pooh, Donald Duck, Mickey Mouse etc. without authorisation, the court held that the Plaintiff had established the mala fide intent on the part of the Defendant to pass off its goods as those of the Plaintiff. Further, the Court observed that “the degree of association of the DEI materials, such as Character Names, Character Devices or Characters with the Plaintiffs is so intense that any reference to them leads a substantial part of the relevant public to recognize, acknowledge and associate the same exclusively with the Plaintiffs and the Plaintiffs alone.”

Personality Merchandising or Reputation Merchandising, which entails using real persons, which could be famous celebrities from film or music industry or specialists in their field, to promote a product or service, through their name, image, voice or other attributes, which are easily recognisable, is not covered by legislation in India but has evolved through jurisprudence pertaining to Trade Mark laws. It is estimated, for example, that David Beckham earns as much as US$18 million a year from his endorsements for Vodafone, Adidas and Pepsi, among others. He is so popular in Japan that his name is on Meiji candies and a line of health and beauty salons.[17]

In D.M. Entertainment Pvt. Ltd. v. Baby Gift House and Ors.[18], the Court held the Defendant guilty of violation of right of publicity, passing off and false endorsement and granted an ex parte injunction restraining the Defendant from selling dolls which imitated the singer, Daler Mehendi or sang portion of his songs, without his authorisation. The court observed that this unauthorised act of the Defendant would mislead the public into believing that the dolls were sanctioned by Mr. Mehndi and in turn, cause significant loss to him.

In Justice K.S.Puttaswamy(Retd) vs Union Of India[19], the Supreme Court of India upheld the ‘right to privacy’ as a fundamental right and observed that “Every individual should have a right to be able to exercise control over his/her own life and image as portrayed to the world and to control commercial use of his/her identity. This also means that an individual may be permitted to prevent others from using his image, name and other aspects of his/her personal life and identity for commercial purposes without his/her consent.”

Further, there have been other cases as well concerning famous personalities such as Arun Jaitley, Amitabh Bachhan, Gautam Gambhir which have helped in developing the law pertaining to merchandising and trade mark rights in India.

Trade Marks and Titles

In K.Balaji Kumar - vs - M/s. Star Polaris And Another[20], the Court observed that “legal protection for literary titles lies in the field of trademark and unfair competition… For these purposes, titles of literary and entertainment creations and works are treated in much the same way as the trademarks of other commercial commodities.” Hence, titles of movies, songs, shows etc. are registrable as trade marks.

Titles are sought to be registered as service marks under Class 41, which pertains to “entertainment” services as well as under Class 9 for “apparatus for recording, transmission or reproduction of sound or images” which would include compact disks, cassettes, DVDs, SD Cards etc. Registration of a title of a title of a song is a rather young notion in India wherein the title “Why this Kolaveri Di?” was registered by Sony Music Entertainment India Pvt. Ltd.

The jurisprudence regarding protection of movie titles as trade marks has developed basis the following cases:

In Biswaroop Roy Choudhary vs. Karan Johar[21], the Plaintiff’s case seeking permanent injunction restraining the Defendant from using the title "Kabhi Alvida Naa Kehna", which was applied under Class 41, was dismissed on grounds that “the race for the use of words has been won by the Defendant”.

In Kanungo Media (P) Ltd. vs Rgv Film Factory And Ors[22], wherein a suit was filed seeking permanent injunction for using the film title "NISHABD", the Court dismissed the suit on the ground that the Plaintiff's film had not acquired secondary meaning and was unlikely to cause any confusion in the mind of the public. The Court observed that “in general, such titles are protected according to fundamental tenets of trademark and unfair competition law…For these purposes, titles of literary and entertainment creations and works are treated in much the same way as the trademarks of other commercial commodities.”

The Court further went on to state that titles may relate to two types of works, i.e. titles of single literary works and titles of series of literary works. Titles of series of literary works enjoy the same protection as usual trade mark. However, titles of single literary works need to establish that they have acquired secondary meaning.

The Court also stated that “Even if the work has not been released, a sufficient amount of pre-release publicity of the title may cause a title to acquire recognition sufficient for protection. Relevant evidence from which secondary meaning for a literary title may be inferred as a question of fact include:

(1) the length and continuity of use;

(2) the extent of advertising and promotion and the amount of money spent;

(3) the sales figures on purchases or admissions and the number of people who bought or viewed plaintiff's work; and

(4) the closeness of the geographical and product markets of plaintiff and defendant.”

In 2007, Ram Gopal Varma had produced the film titled “Ram Gopal Varma ke Sholay”, which was inspired by the original Sholay. This movie was challenged in the Delhi High Court on grounds of copyright and trade mark infringement of the original movie Sholay. However, while the petition was pending, an arrangement was reached between the parties, wherein the movie was renamed from “Ramgopal Verma Ki Sholay” to “Ramgopal Verma Ki Aag.”

In Warner Bros. Entertainment Inc. v. Harinder Kohli and Ors.[23], the Delhi High Court, observed that “even if there is any structural or phonetic similarity between the competing marks, the real test to determine deceptive similarity is whether the targeted audience is able to discern the difference between the marks”. The Court held that the intended audience for Harry Potter being elite and educated would not be confused. The Court also called out the Plaintiff for the delay in filing and stated that if the Plaintiff knowingly lets the Defendant build up its business or venture and stands by, then the Plaintiff would be estopped by its acquiescence from claiming equitable relief.

In 2013, Salman Khan starrer titled “Jai Ho” also faced a delay as musician A. R. Rahman owned the trade mark rights in the title of his song “Jai Ho”, from the Oscar winning movie Slumdog Millionaire. However, subsequently the movie was released, and it was reported[24] that the parties were making an out-of-court settlement.

In Endemol Shine Nederland Producties B.V. vs Andaman Xtasea Events Private Limited,[25] the Bombay High Court restrained an event management company from using the marks ‘Big Boss’, ‘Big Brother’, ‘Big Boss’ comprising marks, device of the eye or their tagline for its TV show on grounds that such reproduction is not a mere coincidence and was aimed to deceive the public.

In the recent judgement of Parasar Bharati Vs. Ritu Arya & Ors.[26], the Plaintiff sought to restrain the Defendant from passing off the trade mark “DOORDARSHAN” as a title of its movie. The Court granted the injunction and subsequently the movie was renamed.

Conclusion:

Owing to the rapid increase in digitisation and the advancing nature of the Entertainment industry, there has been a definite increase in the legal issues, especially matters relating to trade marks, which consequently play an avid role in the Entertainment industry. The approach of the Courts towards these matters has been dynamic and stringent, adapting to the current scenario. Thus, even though the law in all the above situations is in a relatively nascent stage in India, there has been a paradigm shift in the recent years owing to the spread of awareness regarding Intellectual Property.

[1] https://quotecites.com/search/?s=entertainment

[2] http://www.ficci.in/pressrelease-page.asp?nid=3667

[3] https://www.ibef.org/industry/media-entertainment-india.aspx

[4] https://houstonlawreview.org/article/6777-selfmarks

[5] Elvis Presley Enterprises, Inc. v. Capece, 141 F.3d 188, 191 (5th Cir. 1998)

[6] https://www.forbes.com/sites/lisettevoytko/2019/07/05/kardashian-clans-716-trademarks-how-kim-kanye-kylie-and-kendall-protect-their-brands/#ce2100b4e67d

[7] https://houstonlawreview.org/article/6777-selfmarks

[8] https://blog.jipel.law.nyu.edu/2020/04/Trade Marks-in-the-entertainment-industry/

[9] Section 2(1)(i)(V)(m) in The Trade Marks Act, 1999 - “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof

[10] Section 14 in The Trade Marks Act, 1999 - Use of names and representations of living persons or persons recently dead.—Where an application is made for the registration of a Trade Mark which falsely suggests a connection with any living person, or a person whose death took place within twenty years prior to the date of application for registration of the Trade Mark, the Registrar may, before he proceeds with the application, require the applicant to furnish him with the consent in writing of such living person or, as the case may be, of the legal representative of the deceased person to the connection appearing on the Trade Mark, and may refuse to proceed with the application unless the applicant furnishes the registrar with such consent.

[11] https://hbr.org/1998/07/welcome-to-the-experience-economy

[12] https://hbr.org/2019/07/when-fandom-clashes-with-ip-law

[13] https://www.entrepreneur.com/article/335318

[14]https://www.wipo.int/sme/en/documents/merchandising_fulltext.html

[15] 2003 (2) BomCR 655

[16] CS(OS) 3032/2011

[17] https://www.wipo.int/sme/en/documents/merchandising_fulltext.html - Source: USA TODAY, 5/08/2003.

[18] MANU/DE/2043/2010

[19] (2017) 10 SCC 1

[20] O.S.A. No. 154 of 2019 and C.M.P. No. 13790 of 2019.

[21] 131 (2006) DLT 458

[22] 138 (2007) DLT 312

[23] [IA No.9600/2008 in CS(OS) 1607/2008]

[24]https://timesofindia.indiatimes.com/entertainment/hindi/bollywood/news/Jai-Ho-title-song-to-not-feature-Salman-Khan/articleshow/27680311.cms

[25] (I.A.1/2020)

[26] CS(COMM) 96/2020

The article was originally published on www.lexology.com on June 01, 2020 and can be accessed here.