In the realm of entertainment, names and titles hold a significance akin to that of the script, cast, and crew. Particularly in the film industry, a movie’s title serves as a key promotional tool, playing a vital role in reaching and engaging audiences. As creators, in today’s vigilant landscape seek to safeguard their intellectual works, including even the minutest elements.  The reason to emphasize the protection of film titles stems from the pervasive unauthorized usage and exploitation of individuals’ hard work, fueled by advancements in technology, trade, and commerce. In the context of films, the title holds an unique position as the primary driver of market recall, representing the goodwill associated with that  film. Undoubtedly, titles play a pivotal role in the commercial success of a movie, and the lack of protection could result in substantial financial losses for the creators. Therefore, safeguarding film titles becomes not only a legal necessity but also a crucial measure to preserve the economic interests of those behind the creative endeavor.

In a film-obsessed country like India, the issue of Trademark rights for film titles and signs associated with the film has been an important issue that has been long considered by the court. Film titles in India are not protected under Copyright law in India as they form an exception whereas its protects artistic creations like music , songs story script and  that includes the entire films.  As held in the Judgement of the Supreme Court in the case of Krishika Lulla & Ors. V. Shyam Vithalrao Devkatta, that film titles lack the minimum amount of authorship required for protection under Copyright law. Thus, Trademarks are used to protect film titles in the country.

Films titles are thus protected under the Trademark Act, of 1999 under Class 41 of Nice Classification of Trademarks provides for the registration of a trademark connected with entertainment services, other classes protect things that are ancillary to the production and promotion of the movie. These include Class 09 (Cinematography films, vinyl records, and audio tapes), Class 16 (promotional stationery), Class 25 (for clothing), and Class 35 (for advertising, marketing, and publicity) etc. Thus, the Trademark Act and rules framed in furtherance of it lay provisions for the protection of signs associated with films.

A movie title duly registered as a Trademark is under the ownership of the producer of the film and he has complete rights over it, this has been upheld by in many cases including Biswaroop Roy Choudhary v. Karan Johar. In this case, the court also held that a film title can be registered provided that the title has acquired a ‘secondary meaning’.  The case of Kanungo Media (P) Ltd. v. RGV Film Factory also dealt with the issue of trademarks of unregistered movie titles in India. Here, the plaintiff produced a film that they were not able to release because of some financial difficulties, later the defendant produced and released a movie in the same title name. The court rules in favor of the defendants, stating that the unrealized film failed to be popular among the public and consequently to acquire a secondary meaning.

In the Kanungi Media case, the court laid down the framework for Trademark rights for unregistered titles. The court  recognized trademark rights over an unregistered movie title. Such a title could acquire trademark rights provided that i) The movie title has acquired a secondary meaning ii)  There is a likelihood of confusion of source, affiliation, or connection on the part of the potential audience, if the second user uses the movie title.

THE SHOLEY CASE

The case of Sholay Media Entertainment and Anr. vs. Yogesh Patel  which involves a dispute over the registration of the domain name ‘www.sholay.com’ by the defendants. Sholay Media and Entertainment (P) Ltd and Sippy Films (P) Ltd filed a lawsuit against the defendants, who not only registered the domain but also submitted a trademark application for the mark ‘SHOLAY’ with the United States Patent and Trademark Office and in India.

Defendant No.5 Company, Netangle.com Pvt. Ltd., based in Hyderabad, submitted the trademark application with Mr. Jayesh Patel, Ms. Bhavna Patel, and Mr. Yogesh Patel as its directors. Sholay Media and Entertainment (P) Ltd. raised concerns, leading to an order by the registrar of companies directing the removal of the word “Sholay” from the company’s records.

The defendants challenged this order in the Madras High Court, which ruled in their favor, overturning the regional director’s decision. Sholay Media and Entertainment (P) Ltd, along with Sippy Films (P), argued that the use of “Sholay” on the internet causes actual confusion, with searches for the term leading to the defendant’s website, creating genuine confusion.

The plaintiffs assert that such use constitutes infringement, passing off, dilution, and tarnishment of their well-known trademark “Sholay.” Therefore, they sought for  a permanent injunction to restrain the infringement of their registered trademark. Sholay Media and Entertainment (P) Ltd acknowledged that the defendants have various names registered under different domains but argues that the defendants use “Sholay” prominently in their identity. The defendants counter that film titles are not entitled to protection, citing their earlier registration and asserting that there is no potential for confusion as “Sholay” is a dictionary word.

ANALYSIS OF THE CASE

Due to the apparent trademark infringement, the right holders- Sippy Films Pvt. Ltd. and Sholay Media and Entertainment Pvt. Ltd approached the court. The defendant’s argument focused on the supposed ‘generality’ of the word Sholay and the fact that a film title is not afforded any trademark protection thus negating an element of ‘deception’ that the plaintiffs argued was intrinsic in the creation and broadcasting of the website.

Furthermore, the term “Sholay,” defined as “burning coal” in a regular dictionary, does not qualify for protection under the Trademarks Act. Section 9 and 11 of the Trademarks Act, 1999 mentions the grounds on which Trademark protection may be denied, and the crucial factor is the want of distinctiveness. Therefore, to secure trademark registration for a movie title or character, it must be demonstrated that it has gained a distinctive quality through the establishment of a secondary meaning, achieved through widespread popularity among the general public.

Thus, the main factor that facilitated the registration of the trademarks by the defendants was not the inherent distinctiveness of the words ‘Sholay’ and ‘Gabbar’ but the acquired distinctiveness of the terms that emerged from the movie and its makers and that which has been used in common parlance throughout the decades since the movie was released. In previous cases of infringement, it has been crucial to establish that the infringement would lead to some sort of connection or association with some other trademark by the reasonable person. Though in this case, the Delhi High Court emphasised that Sholay has transcended any ordinary motion picture and is beyond an ordinary word. Additionally, the court settled that characters, dialogues and titles in a movie are capable of being trademarked. In the case of Sholay Media Entertainment Pvt.Ltd and Anr vs Parag Sanghavi the court has thus established that the film Sholay has IP rights and the domain name Sholay registered by the defendants connotes an immediate association with the movie and its makers.

The Sholay case has cleared up certain ambiguities with regard to film titled as registered trademarks as enumerated in the former part of this article, however the absence of a dedicated framework with regard to cybersquatting leads to a string of precedents and piecemeal solutions that have only persuasive value.

SUGGESTIONS AND CONCLUSION

In India, movie titles are protected under the Trademarks Act, 1999. A movie title that has been duly registered as a trademark is under the absolute ownership of the producer of such film. An unregistered film title is given protection under trademark law provided that the title acquires a ‘secondary meaning’ and in such a case the producer continues to have absolute right over it.  In the case of Sholay Media Entertainment vs. Yogesh Patel, the court rejected the arguments of the defendants on the generality of the words. As the the court said that film title and dialogues, though had general Hindi words and phrases, it  acquired a distinct identity and ‘secondary meaning’.  Hence this Judgement is a precedent of the  much-required clarification on the scope of ‘secondary meaning’ in relation to trademark law. 

In conclusion, this case highlights the intricate intersection of intellectual property, specifically trademarks, with the digital realm, emphasizing the challenges posed. The Sholay paradigm illuminates the pivotal role of acquired distinctiveness and ‘secondary meaning’ in establishing trademark rights for movie titles, emphasizing the need for a nuanced approach in the protection of film related trademarks and cinematic legacies in the digital age.