Overview of Indian Law

(c) Trademark And Domain Name Protection

While typically copyright protection receives tremendous importance in the film industry, protection of trademarks associated with the film is often an ignored issue. However, with the globalization of the Indian film industry, this particular intellectual property right will be of immense significance in brand building.

A trademark is a visual symbol, which differentiates the goods manufactured or otherwise dealt with by the proprietor of the trademark from similar goods.¹⁸⁸ In the film industry, trademarks may be relevant in the following instances:

(i) Name of the film, if it is used in merchandising and publicizing the film;

(ii) Logos of the production houses or companies which produce films;

(iii) Logos of the music companies, distributors and exhibitors which distribute films and film music; and

(iv) Logos and trademarks of sponsors and in-film advertising companies;

(v) Characters in films, whose names or visual images readily identify a single source of authorship, who have had significant continued exposure to the general public and function as a form of identification and commands public acceptance and recognition.

In India, trademarks are protected under the Trade and Merchandise Marks Act, 1958 ("Trademarks Act"). Only trademarks, which are registered under the Trademarks Act, are entitled to protection from infringement. Unregistered trademarks are protected under the common law of passing off i.e. if a third person uses such an unregistered trademark on similar goods so that the public can be confused or deceived, the owner of the unregistered trademark can bring an action against such third person.

An important distinction between copyright and trademark protection is that while copyrights are protected only for a particular term after which they can be used by any and everybody, trademarks can be protected in perpetuity or as long as the business exists. Moreover, registration of copyrights is not mandatory and registration does not provide any additional benefits to the owner of copyright in any work. On the other hand, the registration of the trademark gives the registered proprietor the exclusive right to use the trademark in relation to the goods for which it is registered. Violation of these rights can be prevented by an action for infringement. Registration acts as public notice to others that they should not use the trademarks which are registered or pending for registration. However, protection is also granted to trademarks that are not registered in India, in the event that marks, have acquired a substantial reputation in India, through advertising or other means. In such cases, then any person who attempts to use the same trademark on his goods so as to deceive the public into believing that the goods are manufactured by the proprietor of the trademark, can be prevented from do so, under the action of passing off. This common law recourse is intended to protect commercial goodwill and also ensure that business reputation is not exploited.

Moreover, in the Internet arena, domain names have acquired a significant position in brand-building and protecting goodwill. A domain name is the address of a particular website, such as www.bollywood.com. Over the last few years, several Indian films, as well as film companies and distribution companies, have established their presence on the Internet. For example, in order to promote Lagaan, a website www.lagaan.com was developed. Similarly Idream Production Pvt. Ltd., a well-known film production and distribution company, has established its own website www.idreamproduction.com. Protection of these domain names from being taken over by third persons must also be seriously considered and dealt with by the Indian film industry. The World Intellectual Property Organization has formulated a special arbitration center to decide upon disputes concerning domain names. This could be used as an effective medium to protect a domain name.

(d) Content Regulation

Apart from the Cinematograph Act and the Copyright Act, there are certain other prevailing laws that could affect the content of an Indian film.

(i) Constitutional Freedom
The most important and relevant underlying right to the film industry is the freedom of speech and expression guaranteed under the Indian Constitution.¹⁸⁹ The freedom of speech and expression is granted to every citizen of India as a fundamental right. The freedom of expression essentially means the right to express one's opinion, inter alia, byword of mouth, writing, painting, picture and films.¹⁹⁰ However, this fundamental right is subject to certain reasonable restrictions imposed in relation to public order, decency and morality, contempt of court, libel, slander, defamation in the interests of the sovereignty, integrity and security of the State.¹⁹¹

(ii) Defamation
The law of torts recognizes defamation as a civil wrong and imposes civil liability on any person who communicates a false and defamatory statement¹⁹² to the public. Defamation is of two kinds: libel and slander. Libel is the publication of a false and defamatory statement tending to injure the reputation of another person without lawful justification or excuse. Slander, on the other hand, is a false and defamatory statement using spoken words or gestures tending to injure the reputation of another.¹⁹³ In order to remedy an action of defamation, an aggrieved person can file a suit for damages against the person who makes or publishes slander or libel respectively. The publication of defamatory statements may also be restrained by an injunction.

It is advisable that defamation issues be considered prior to producing a film. A defamatory statement in a film could make the producer liable to compensate the aggrieved party. Filmmakers can protect themselves from liability arising from defamation by:

• Changing the names and circumstances so that the people depicted are not identifiable;
• Obtaining an approval from those persons portrayed; or
• Excising any potential defamatory material.

There are certain precautions that one might consider taking while scripting and making the film that might avoid and at least protect the filmmaker if there is a case for defamation filed against the filmmaker.

The most important thing that has to be done is that while writing the script, every potential defamatory point has to be verified and revalidated for its factuality and accuracy. If relying on people, then each person's accounts have to be reduced to writing and that person should sign such an account. Secondly, an important thing to remember is that merely because one might have relied on a published account (like newspapers, books, journals, etc.) to revalidate the script, would not debar a suit from being filed against the filmmaker. Also simply because a suit for defamation was not filed against such a published account also would not debar a fresh suit being filed against the filmmaker.

(iii) Criminal Acts
The Indian Penal Code, 1860 ("IPC") codifies the general penal law of India. The offenses of obscenity and defamation under the IPC would be relevant in the context of films. As per the IPC, a person could be punished if he sells, distributes, publicly exhibits or in any manner puts into circulation, imports, exports, receives profits from any business involved in circulating, importing or exporting of any obscene film.¹⁹⁴ Further, if a film contains any scenes that intend or may cause harm to the reputation of any person, the producer could be punished for defamation.¹⁹⁵ Similarly, if a person sells a film with the knowledge that it contains defamatory matter, he could also be punished under the IPC.¹⁹⁶

(iv) Indecent Representation of Women
The Indecent Representation of Women (Prohibition) Act, 1986 and the Indecent Representation of Women (Prohibition) Rules, 1987 aim at prohibiting the indecent representation of women in publications. The term "indecent representation of women" means the depiction in any manner of the figure of a woman, her form or body or any part thereof in such a way as to have the effect of being indecent or derogatory to or denigrating women, or is likely to deprave, corrupt or injure the public morality or morals.¹⁹⁷ Therefore, any film that portrays women in an "indecent" fashion is prohibited¹⁹⁸ and the producer of the film could be punished for such representation.¹⁹⁹