Parodies and trademarks in India
By the time I’m in the studio recording my parody, 10,000 parodies of that song are on YouTube. – Weird Al Yankovic, a parodist among other things.
The quote above might be a little misplaced since this article is about parodies of trademarks and their position in Indian law but Weird Al’s words reflect certain irrefutable truths about parodies. One such truth is that parodies are an imitation (either comical or satirical) of something famous and well-established which would inevitably be imitated. Parodists walk a thin line. For creating a good parody, a parodist must sufficiently borrow from the original for the audience to recognise it and yet ensure that not too much is borrowed lest it constitute an infringement of the rights in the original.
A parody, in general, falls under the exception of fair use of copyright. In India, the concept of fair dealing (similar but not identical to the doctrine of fair use in the US) in copyrighted works is statutorily recognised. However, it is debatable if the exception of fair dealing extends to parodies like those of Weird Al. With the exception of fair dealing still being explored to the maximum possible extent in the copyright law, the existence of it in the Indian trademarks law is a little obscure.
Parodies and trademarks
A little over three years ago, the “defence of parody” was taken by Greenpeace International when it was sued by Tata Sons for trademark infringement. Interestingly, to date this seems to be the only case which deeply analyses the Indian trademarks law for such a defence.
Briefly, the case deals with an online game created by Greenpeace International called “TATA vs. Turtle”. This game was created to raise awareness regarding the dangers posed to the nesting and breeding of Olive Ridley turtles if a certain port (called the Dhamra Port) was allowed to be constructed. Allegations of malicious intentions flew back and forth with Tata alleging dishonesty, trademark infringement and defamation and Greenpeace claiming insensitivity and lack of proper regulatory compliance, among other things.
The game which was pivotal to the dispute was basically a Pac-Man-inspired game with the four ghosts replaced by Tata’s logo in different colours, named as Ratty (which was presumed to refer to Mr. Ratan Tata who was the Chairman of the TATA group when the case was filed), Natty, Matty and Tinku and Pac-Man replaced by tiny yellow turtles.
Tata also took exception to being called demons in the following message on Greenpeace’s website. they argued that it created a false impression in the minds of the public:
TATA’s Dhamra port could be the beginning of the end for Gahirmatha’s turtles. Your objective is simple – get the turtles to eat as many of the white dots – jellyfish and other sea creatures – while dodging the TATA demons! If you eat a power pill, you will be gifted with super-turtle powers to vanquish the demons of development that are threatening your coastal home!
Naturally, Tata filed a suit in the Delhi High Court (Delhi HC) for injunction (temporary and permanent) against use of Tata’s trademarks and monetary compensation to the tune of INR 10 crores (USD 1.6 million approx) to compensate for alleged defamation. It argued that Greenpeace could have used other methods to raise awareness but the fact that it chose to do so through an online game that derided Tata shows its dishonest intent.
The Delhi HC relied on precedents which uphold the right of free speech or fair criticisms in matters of public concern and precedents which lay down the factors for granting interim injunction in cases alleging defamation. It also referred to how courts around the world viewed parodies of trademarks and how such courts decided in cases where defamatory materials were published online (since online publication translates to wider readership).
For the “defence of parody”, the Delhi HC also looked at Section 29(4) of the Trademarks Act, 1999 which provides the following:
(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which-
(a) is identical with or similar to the registered trade mark; and
(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and
(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.
Finally, taking into account that truth is an exception to defamation and that the goal of Greenpeace was not to make profit out of the game, the Delhi HC ruled that:
- free speech includes caricature, lampoon, mime, parody, drama, poem and other manifestations of wit and therefore the game, which parodies of Tata’s trademark, was an exercise of free speech;
- context was of the essence in cases of defamation and since the trademarks were used in the context of a game to raise awareness regarding the endangerment of Olive Ridley turtles, it was not defamatory;
- the means of conveying a message is not decisive in this case (Greenpeace was trying to raise as much awareness as possible and internet was the likely solution as a medium to convey message quicker and for wider readership). Wider readership however could not be a ground for granting injunction;
- reasonable comment, ridicule or parody of a registered trademark can be made if the intention of the maker is to draw focus on some activity of the proprietor of the trademark;
The judge summarised his rationale in the words borrowed from Walter Lippman:
“The theory of the free press is not that the truth will be presented completely or perfectly in any one instance, but that the truth will emerge from free discussion”
From this ruling it is surmised that the use of a registered trademark would not amount to infringement if it is shown that the mark was used with due cause (like drawing focus on some activity of the proprietor of the trademark) and not for a commercial gain.
While this ruling can be overturned by a larger bench of the Delhi HC or by the Indian Supreme Court, at this point, this is the only case in India that throws sufficient light in this otherwise unclear area of Indian trademarks law.