India: Mere registration of film title with a Guild does not guarantee right over the name, says Madras High Court

Source: www.hcmadras.tn.nic.in

Copyright is a set of exclusive rights given to the author of original literary, musical or dramatic works for its use and distribution. Indian film and entertainment industry is one field that gets most of its protection from Copyrights. In the past few years, there has been a sudden boost in the number of international players in the industry, thereby adding on to the IP controversies over using deceptively similar titles or other ways of unauthorized adoption of titles of films, infringement of copyright. However, only the title of the film simply cannot get copyright. The reason behind this is that copyright law recognizes the principle of de minimis non curat lex (law does concern itself over trifles), according to which any work which is insufficiently significant is not to be offered copyright protection.

The Madras High Court reestablished the same principle in the case of Lyca Productions v J.Manimaran Ors. The Court specifically stated that, ‘mere registration of a film title will not guarantee right over the name, if the production work has not commenced within one-and-a-half years of the registration.’

Facts of the Case 

• J. Manimaran (hereinafter referred to as ‘Respondent No.1’) claimed to be the sole proprietor of M/S  J.S.Screens that is engaged in the production of Tamil feature films.
• Respondent No.1 stated that it had enrolled as a member of the Film & Television Producers Guild of South India (hereinafter referred to as ‘Respondent No.3’), bearing registration number 9880.
• On September 3, 2011, Respondent No. 1 claimed to have applied for registration of his film titled “KARU” with the Respondent No.3.
• It was further stated that the registration was approved on September 28, 2011 and Respondent No.1 was given Guild Registration No.16530.
• Further, Respondent No. 1 claimed that it is also a member of Tamil Film Producer Council (hereinafter referred to as Respondent No. 2), a society comprising of film producers.
• According to Respondent No. 1, Respondent No. 2 and 3 coordinates and ensures that there is no duplication of registration of film titles. Once a title is registered, none can use it even as prefix or suffix with other words.
• Respondent No. 1 came across hoardings and advertisements in dailies, like ‘Daily Thanthi’, of a film with the same title “KARU”, which is directed by Vijay and produced by Lyca Productions (hereinafter referred to as ‘the Appellant’).
• A suit was thus filed at the Madras High Court claiming relief that Respondent No. 1 is the registered titleholder of the Tamil feature film titled “Karu” and its rights, title, copyright and nomenclature solely and exclusively belongs to the him and to grant permanent injunction against the Appellant.
• The Single Judge Bench of Madras High Court passed an order dated February 2, 2018, in favor of Respondent No. 1. Thus, aggrieved by the order, the Appellant filed the present appeal.

Appellants Contentions 

• The Appellant contended that the film produced is registered as "LYCAVIN KARU" and Censor certificate has also been obtained under the previously mentioned name. Therefore, the title of both the films are different.
•  The Appellant submitted that the content and theme of the film is also different from the one produced by the Respondent No. 1, as the film produced by the Respondent No.1 is a thriller, and the film produced by the Appellant is based on a ghost story.

Respondents Contentions 

• Respondent no 1 argued that it had become an established practice in the Cinema industry for producers to become members of organizations and get the titles of films registered and once a title was registered, no other producer could make a film under a title that had been registered or title similar thereto. The titles which were registered could not even be used with a suffix or prefix.
• Respondent No. 1 claimed that being a member of Respondent No. 3, it is entitled to all protection and privileges as available to the members of the Respondent No. 3.
• Respondent No.1 pleaded that at the time when the registration took place there was no other film with the title “KARU” registered with the Respondent No. 3.
• It was submitted by Respondent No. 1 that the production of the film title “KARU” started immediately after its registration with Respondent No. 3. It claimed making huge investments for its previously mentioned film monetarily as also by way of labor, publicity, etc. However, the film is not yet completed.
• It was contended that the Appellant has reportedly registered the film title “KARU” in 2017, 6 years after the registration of the title by Respondent No.1. This adoption of title by the Appellant was alleged to be unfair in view of the earlier registration to Respondent No.1 in 2011.
• It further claimed that the release of the film "KARU" by the Appellant would put it to loss and prejudice, which cannot be compensated in terms of money.

Court’s Decision 

• Analyzing Sections 13 and 16 of the Copyright Act, 1957, the Court observed that Copyright Act protects work that is the work, which is relatable to a cinematograph film, that is to say, the visual recording, including sound recording, produced by process analogous to cinematography. The title, which may be a commonly used word, cannot be protected under the law of copyright. Section 13 makes it clear that there is no copyright in a title, it is the entire work which is protected by copyright.
• Quoting the judgement of the Hon’ble Supreme Court in the case of Krishika Lulla and others v. Shyam Vithalrao Devkatta and another reaffirmed that a title is not an original literary work. A title does not qualify for being described as work. It is incomplete in itself and refers to the work that follows.
• The Court also observed that Respondent No.3 is not a registered Copyright Society under Section 33 of the Copyright Act, 1957, and thus incompetent to administer any right in any work including cinematograph films.
• Quoting the judgement of Madras High Court in the case of R.Radhakrishnan v. A.R.Murugadoss and the Film and Television Producers Guild of South India held that American Courts have taken uniform view that title alone of a literary work cannot be protected by Copyright Law. Copying of a title alone, and not the plot, characterization, dialogue, song etc. is not the subject of Copyright Law. Thus, a copyright on a literary work would not include exclusive right to use the title on any other work. What, therefore, follows is that if a junior user uses the senior user's literary title as the title of a work that by itself does not infringe the copyright of a senior user's work since there is no copyright infringement merely from the identity or similarity of the titles alone. Same is the position under Copyright Law in India.

• The Court pointed the errors of the Single Judge Bench on two grounds. These are:
1. The Learned Single Bench erred in holding that the judgment of R. Radha Krishnan v. A.R.Murugadoss, was distinguishable on facts. The Court observed that the Learned Single Bench should have appreciated minor differences like one film being a short film and the other film being a feature film.
2. The Learned Single Judge failed to indicate the reasons for its view that the distinguishing features noted in the judgment under appeal render the judgments cited on behalf of the Appellant, holding that there was no copyright in a title, inapplicable.

·   The Court further observed that there are no materials on record, which conclusively establish the existence of a practice in the industry for registration of titles or desisting from using titles registered by others. In addition, it was obvious through the facts and circumstances of the case that it was not mandatory for producers to become members of the Respondent No. 2 or 3. Membership of either society was optional and there were many producers who were not members of either of the Respondents.

Therefore, the Court held that sympathy for a weaker party to a litigation could not outweigh the law pronounced by the Court. Furthermore, the learned Single Bench ignored the fact that the Appellant had also made substantial investments for its film, which had been completed and was due to be released on February 23, 2018. The learned Single Bench, in the Court’s view, erred in law in giving undue importance to the size of depiction of LYCAVIN before KARU since the suit was not one for passing off. Thus, the interim order of the Learned Single Bench was set aside and appeal was allowed.