Facts of the Case
Anil Kapoor Film Co Pvt Ltd (“Plaintiff”) filed a suit for passing off before the Bombay High Court (“Court”) and sought an injunction against Make My Day Entertainment & Anr (“Defendant”) for pirating the title of its under production and yet to be released movie ‘Veere Di Wedding’.
The Court by its Order dated 4th May 2017 denied the grant of an ad-interim injunction sought for by the Plaintiff.
In furtherance of its case, the Plaintiff contended that it possessed the exclusive rights associated with the title ‘Veere Di Wedding’ in relation to a movie which was still under production, and contended further that the same had been violated by the Defendant’s use of the title ‘Veere Ki Wedding’ for a movie to be released in May/June 2017.
Although, the Plaintiff conceded that there was no question of copyright existing in a movie title, it contended that a cause of action existed based on passing off, and in accordance thereto, the claim for passing off was made exclusively in respect of the title of the movie. Pertinently, no allegations were made with respect to the content/screenplay of the Defendant’s movie.
Evidence in support of the contentions
To support its contentions, the Plaintiff claimed that its script under the name ‘Veere Di Wedding’ had been registered with the Film Writer’s Association and that the title of the movie was registered with the Indian Film and Television Producers Council.
Furthermore, as evidence of considerable reputation and goodwill in the title of the movie ‘Veere Di Wedding’, the Plaintiff relied on several newspaper articles.
The Plaintiff also submitted an Affidavit to show that vast amounts were spent on the production of the movie.
Upon hearing the submissions of the Plaintiffs, the Court stated inter alia that the classical trinity - reputation, misrepresentation or deception and damage was required to be established by the Plaintiff to succeed in a claim for passing off.
The first step would be to prove that it had acquired reputation in its movie title.
The Plaintiff’s movie was yet to be completed and in the Court’s view it would be difficult to assert reputation without there being a product or service to begin with. Furthermore, there was no guarantee that the Plaintiff’s movie would even be completed.
Additionally, the Court commented upon the inherent distinctiveness of the title itself ‘Veere Di Wedding’, which was a commonplace phrase in a vernacular language for ‘my best friend’s wedding’, which made it further difficult for the Plaintiff to establish reputation in the title.
The Court also observed that even if a title was unique, the same would not be sufficient to establish reputation. Although, a unique title may make it easier for the Plaintiff to prove reputation, the Court found it difficult to acknowledge that reputation could have accrued to a non-existent thing i.e. a movie not made or a book not yet written. Accordingly, the Court stated that a commonplace movie title could acquire reputation once it had been released and in support thereto cited iconic movies like ‘Zanjeer’, ‘Anand’ and ‘Sholay’ which had ordinary titles.
The Court also held that the material adduced by the Plaintiff was insufficient to establish reputation, and that the Plaintiff’s reliance on newspaper articles and reports i.e. the Plaintiff proposing to make a movie under the title ‘Veere Di Wedding’ was not adequate evidence of reputation for the purposes of making a claim for passing off. Similarly, the Affidavit annexed by the Plaintiff illustrating the expenditure incurred by the Plaintiff did not establish reputation in the movie title.
The Court also noted that the Plaintiff could not allege misrepresentation and thereby try and establish reputation. Without being able to prove reputation, the Plaintiff’s claim for passing off based on the title of a non-existent movie, divorced from the content of a movie, would fail.
The second necessary ingredient for proving passing off is an attempt to deceive by the Defendant and that the public have been or are likely to be deceived.
In the present case, the Court emphasised that the Plaintiff’s argument on deception appeared to have been constructed on an antiquated idea i.e. a moviegoer would be entirely oblivious to the internet and the plethora of information thrown thereby at the movie goer. Additionally, the Court stated that this information overload in the digital age makes it far more difficult to prove deception and thereby establish passing off. Accordingly, given the proliferation of information in this day/age, and the fact that the actors in the two movies were different, it would be difficult to fathom moviegoers being deceived, and watching the Defendant’s movie instead of that of the Plaintiffs’.
Additionally, the Court held that the mere fact that there was another movie being made by the same title, did not mean that there was a calculation on the part of the Defendant to deceive or pass of its film as that of the Plaintiffs’.
Furthermore, according to the Court, the fact that the Defendant had registered the title of its movie, on a date prior to that of the newspaper reports relied upon by the Plaintiff, was evidence that the Defendant was not attempting to deceive or pass off its film as that of the Plaintiffs’.
Importantly, the Court also took note of the delay of two months by the Plaintiff in approaching the Court for ad-interim relief, following knowledge of the Defendant’s allegedly similar movie title.
The Court’s decision in not recognizing reputation in a movie or product that does not exist, while largely accurate and a step in the right direction, raises the question as to how proprietors can protect name or marks in relation to products and services that are yet to be launched. The answer to this question lies in establishing reputation or goodwill. The Court’s Order seems to suggest that if one can establish sufficient reputation or goodwill in relation to a mark or name of a product or service that is yet to be launched, so much so that consumers and members of the public associate that name or mark only with the proprietor, the name or mark will be protected by Courts. However, proving reputation or goodwill in the name or mark of a product or service which is yet to be launched is likely to be an uphill battle.