Usually, disputes over the title of a film crimp around the period when the promotion starts till the launch or release date of the entertainment project. A film maker decides upon a suitable name of their entertainment project and claims exclusivity for viewers to associate with the producers. Filmmakers usually operate through associations and get their title registered with the association such as Indian Motion Picture Producers' Association, Association of Motion Pictures and Television Programme Producers, Film and Television Producers' Guild of India (Guild). Titles are generally not capable of copyright or even trademark protection, except where the title has acquired distinctiveness that is to say that such a title has acquired secondary meaning in India. So when any third party attempts to pass off or infringe their rights over the title of a movie, an action could be brought to restrain such infringers.
Generally, these kinds of litigation are short lived and are concluded with the decision at the interim stage itself being the most crucial stage to take care of the commercial interest underlying the dispute. In a very unusual precedent wherein one such dispute arose on the title of the movie “Nisshabd” directed by Ram Gopal Varma, almost a decade back where despite the failure to snatch a preliminary injunction order from the court in February 2007, the plaintiff carried on with the court battle.
In this case of Kanungo Media Pvt. Ltd. v. RGV Film Factory, when the Single Judge of the Delhi High Court refused to grant an interim injunction in Feb 2007 against the defendants for their upcoming film titled 'Nishabd', which was up for release on March 2, 2007. The Plaintiff had claimed its right over the said title on the ground that it has already produced a Bengali movie with the title 'Nisshabd', which also won various awards. The Single Judge of the Delhi High Court considered the facts of the case including that the movie made by Kanungo Media Pvt. Ltd. was not released commercially, apart from delay in filing the suit, refused to grant any interim injunction against the release and opined that the title has not achieved the level of acquiring secondary meaning for the Plaintiff at that stage. Although this was an interim order based on the prima facie case, the Court while adjudicating upon an interim application also laid down certain guidelines regarding the protection of film titles, which have since been followed on the subject. The Court clarified that in India, similar to the United States, film titles are protected under the Trademark Act rather than the Copyright Act. It was held that only when a film’s title has a secondary meaning, a trademark can be protected and registered in order to get the protection of film titles. The Court also held that the burden of proof lies on the plaintiff to establish that the title of the film has acquired secondary meaning. The Court considered that facts of this particular case dismissed the Plaintiff’s application for interim relief.
The matter was not put to rest there as the Plaintiff continued to pursue the suit filed subsequent to the release of the movie as well. Approaching Division Bench of the Delhi High Court twice over to filing amended plaint invoking infringement of the trademark after the registration. The first appeal was filed against this very order refusing to grant an interim injunction and the second one was filed when the Single Bench rejected the application of the Plaintiff seeking amendment of the plaint subsequent to registration of its trademark ‘Nisshabd’ in the year 2015. Plaintiff examined three witnesses in support during the trial. Although the defendants were being represented though advocates all this while but lost interest and were unrepresented thus proceeded ex-parte after January 2015.
The matter came up in the docket of the Court recently for deciding the long pending suit before the Single Bench of the Delhi High Court. The Court while hearing ex-parte agreed with the ratio of Mahendra & Mahendra Paper Mills Ltd. Vs. Mahindra & Mahindra Ltd. (2002) 2 SCC 147, Larsen & Toubro Vs. Lachmi Narain Trades (2008) 149 DLT 46 (DB) and Staar Surgical Company Vs. Polymer Technologies International 2016 SCC Online Del 4813 in respect of the relevance of the evidence in a trademark infringement suit/passing off. The Court opined that in cases of present nature where evidence mostly comprises of self-serving statements of the witnesses, it is not improper to look at the reasons which prevailed for granting or refusing interim relief and to see whether anything to the contrary has emerged in evidence. The Learned Judge, therefore, proceeded to look into the reasons that prevailed with the Court way back in the year February 2007 at the time of deciding the interim application.
The Court carefully examined the evidence brought before the Court by the Plaintiff and the statement of the Plaintiffs’ witnesses to see if any different opinion from that taken at the stage of interim application is to be taken. The Court took note that the plaintiff has not claimed of any change in the law in the interregnum or there was no dispute left claiming that the application of the law at the interim stage was erroneous. The Court thus found that the plaintiff has not proved anything new in the evidence and there was absolutely no evidence of the title “Nisshabd” of the plaintiff having acquired any distinctiveness or of the viewership of the film of the plaintiff or of the collections from the commercial release which the Plaintiff subsequently claimed in the replication. Looking at the admission the Court was not inclined to grant any relief. Interestingly, the Court also rejected the claim for damages on the grounds that the Plaintiff has itself admitted that the film of the defendants having flopped and being a failure at the box office, and that the defendants have not benefited anything by adopting the name of the film of the plaintiff. The claim of infringement added subsequently was also rejected as the Court pointed out that the plaintiff has not established any use by the defendants of the trade mark post the grant of registration. As regards the old films continue to be screened on television or in some towns or for some other special reason, the court relied upon the interim order passed earlier to say that no infringement is made out.
The Court thus concluded the matter by dismissing the suit of the Plaintiff and in fact expressed an inclination to impose cost where plaintiff had drag the matter in the Court in spite of being unsuccessful in obtaining interim injunction persisted with the suit for the last over ten years, without making any effort to prove its case. However, the court refrained itself from doing so. Thus this long pending saga of litigation on the title of the movie 'Nishabd' casting megastar Amitabh Bachchan came to an end.