The Story Mark
Infopreneurship is the new buzz word and means creating original content information products then monetizing it in entrepreneurial ways. These infopreneurs, or entrepreneurs who sell information, leverage information in public domain extensively to reach mass audiences. Infopreneurship is one of a kind and an evolving business concept based on a title of a creative work.
It is common, rather imperative, to give title to literary or entertainment works. Like human beings, literary work produced by the author or the work of entertainment produced by a producer needs a name. It is only then such work would be identified. The term ‘literary title’ is used to encompass titles of books, periodicals, newspapers, plays, motion pictures, television series, sings, phonograph records, cartoon features and the like.
Nowadays, a Novel is more than a mere novel, for example Harry Potter covers a major part of entertainment industry such as animated movies, motion pictures games and much more. The aim of the present article is to explore the area of protecting a single creative work title in trademark.
Constitution enables citizens to practice any profession in the form of Article 19 (1) (g), and one such celebrated profession is authorship. Though Copyright Law protects the expression part of such literary work, the titles of a novel are not protected by copyright. The Trademarks Act, 1999, Hereinafter the ACT, enables protection of a trade name defined as “a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of the others”. The objective of the Act is to provide for registration and better protection of trademarks along with prevention of fraudulent marks. Section 7 of the ACT enables the Register of Trademarks to classify the goods and services in accordance with the international classification for the purpose of registration. Rule 22(2) of the Trademark Rules, 2002, Hereinafter the Rules, provides that
The goods and services specified in the Fourth Schedule only provide a means by which the general content of numbered international classes can be quickly identified. They correspond to the major content of each class and are not intended to be exhaustive in accordance with the international classification of goods and services. For determining the classification of particular goods and services and for full disclosure of the content of international classification, the applicant may refer to the alphabetical index of goods and services, if any, published by the Registrar under section 8 or the current edition of the International Classification of Goods and Services for the purpose of registration of trade mark published by the World Intellectual Property Organization or subsequent edition as may be published.
However Class 16 of the international goods classification includes books and Class 41 of the international services classification includes book publication. The mark is protected only in the class claimed if an application of registration of made.
One more condition to gain Trademark protection is that the mark should be distinct and not descriptive as enabled in Section 9 of the ACT.
For the sake of an experiment based on this concept, we take an Indian bestseller titled as “The White Tiger” written by Aravind Adiga. This book is a single creative work and its title is capable of graphical representation and can be quite distinguishable from other novels. With respect to the trademark act provisions, the following elements are satisfied.
The title is first of its kind and distinctive.
The novel has nothing to do with the title of the book and hence not descriptive.
The title also comes within the class 16 of the goods being a book which is distinct from books form other publishers and under class 41 of the services under entertainment and book publishing.
Now the question is the title “The White tiger” protectable as a trademark?
The major cases decided in United States have set down the precedent that titles of a single copyrightable work is “Inherently Generic” or “Inherently Descriptive” and title of a single work cannot be a source identifier being the essential object of US trademark Act not protected by Trademark law.
Even if the name is unique, it cannot be registered under trademark registry of United States Patent and Trademark office. But the single title is protected under common law or unfair competition law if a secondary meaning is shown.
Even for protection under common law and unfair competition the test for finding if there is a secondary meaning is given in International Film Service Co. Ltd. v. Associated Producers Inc., the Judge Learned Hand observed as under:
A title is, if not strictly descriptive, at least suggestive and not an arbitrary sign. The question is said to be of secondary meaning, following the long line of decisions in the Webster Dictionary cases. The plaintiff succeeds as soon as he shows an audience educated to understand that the title means his play…the title is the proper name of a specific thing, not the differential of a species, as in the case of fungibles.
It is in the case of Kanugo Media (P) Ltd. v. RGV Film Factory & Ors. that the Honourable Delhi court first differentiated the titles as “Titles may relate to two types of works, i.e. titles of single literary works and titles of series of literary works”. Titles of series of books, periodicals or newspapers do function as a trademark to indicate that each edition comes from the same source as the others and, therefore, such titles are even registrable as trademark. Where a term has been used in the title of a series of books, it may come to identify and distinguish a source to buyers. If so, it is a trademark for a series of books and is registrable as such.
This trend is picked up even in television serials which run into hundreds of episodes and motion pictures in Hollywood like ‘The Godfather’, ‘Rocky’, ‘Die Hard’, ‘Mission Impossible’, ‘The Matrix’, ‘Jurrasic Park’ etc. This idea has percolated in Indian film industry as well with the movies ‘Hera Pheri – Phir Hera Pheri’, ‘Dhoom – Dhoom II’ and ‘Munna Bhai MBBS – Lage Raho Munna Bhai’. It is easy to give trademark protection to such titles of series of literary work etc.
The test for protecting the title is given by McCarthy:
The law of literary titles is unique in one important respect. That is, the courts have given trademark protection to literary titles of one-shot, single works only upon showing of secondary meaning, even though the title is not descriptive of the contents of the work. Regardless of the arbitrary or fanciful nature of the title as compared with the contents of the single book, play, movie, record, etc., secondary meaning is required. Thus, unlike ordinary marks, literary titles of single works which are inherently distinctive are not accorded immediate protection, absent proof of secondary meaning and consumer recognition.
The Learned Judge, while determining whether “Nishabd” (a Bengali film) has got a secondary meaning or not didn’t really comment on the aforesaid issue but said that
However, it may be added that the principles on which law in US on the subject has developed are the same as applicable in the Indian law of passing off. The only difference is that where as there is a paucity of case law in India, in America, over a period of time law has sufficiently been evolved.
Hence it can be comfortably stated that as of now the protection of trademark with or without being registered depends on the user date as well as getting a secondary meaning other than just being a title.
The test of acquiring a secondary meaning as cited in the Kanugo’s case is given by Justice learned Hand in the following way, “The plaintiff succeeds as soon as he shows as audience educated to understand that the title means his play.”Proposed to be Used Trademark application with regard to user date is of two types one is “with prior user date” and other is “proposed to be used”. The former mentioning the date from which the mark has been used in the application and the latter being applying for registration before actually using it. According to the Trademarks Act, the mark is protected from the user date. As decided in Biswaroop Roy Choudhary v. Karan Johar, where the Plaintiff had a registered mark with application number 1357637 on 17th May 2005, the Court gave the verdict in favour of the defendant, one of the causes being that the user date of the defendants was earlier than that of the plaintiff. The mark in dispute was KABHI ALVIDA NA KEHNA. It has to be noted that the plaintiff used the „propose to be used‟ type of trademark application. Even if the provisions are there to protect a title that is going to be used in future, it should not have been used by anyone before the application date.
Answering the question asked before, the title “The White Tiger” is well within the protection of trademarks as people relate to the novel after hearing the name even though it will be on the person defending the case to prove that it has got a secondary meaning.
Advantages of Registration
Some of the main advantages of registration are:
• The automatic right to sue
• Right to assign to different entities throughout India
• Right to sell
In addition as opined by Justice A.K Sikri
that injunction could not be refused only on the ground of delay and laches. It has to be borne in mind, in the first place, that it would be a principle applicable in the case of registered trade mark.
Recent trends in Trademark office. The following are some of the applications pending in the trademark office which are titles of single literary works BRUTAL SIMPLICITY OF THOUGHT (1863330) and MUGHAL HOUSE (1453096) Other than these which are published before acceptance many TV shows, Cartoon shows are being registered and applied for trade mark.
As we were struggling to find a title for this very article, we realized what magic a correct title can cast. It is like hidden gold. Properly selected and maintained, your book’s title can be your most valuable intellectual property asset.
Trademark law is the reason consumers can distinguish between different forms of entertainment and information and decide properly. Imagine what would happen if an author is not allowed to write a sequel to his book or a producer is denied adaptation rights in a sequel movie! Although some may say that world would be better without ‘Twilight 3’, Trademark law will empower us to tap into the goodwill, glamour and appeal of a bestselling series title.
This article has been authored by Narayanan H, and Vighnesh Kamat who are pursuing law at Rajiv Gandhi School of Intellectual Property Law (IIT-Kharagpur)