In light of the ongoing dispute between the makers of the motion picture “Main Ladega” and the National Boxing Championship over the alleged use of the latter’s logo in the film, SpicyIP intern Sumedh Gadham discusses whether such use would amount to trademark or copyright infringement. Sumedh is a second-year law student enrolled at the National University of Juridical Sciences (NUJS). He is interested in intellectual property, tech law, and policy.

“Main Ladega”-The Fight Between Protection of Intellectual Property and Expressive Content

By Sumedh Gadham

A division bench of the Delhi High Court heard an appeal (on 27th May) against an interim injunction restraining the appellants (Kathakaar Films) from publishing the feature film ‘Main Ladega’. The order was passed against an application alleging that the movie featured  a similar logo to that of the National Boxing Championship (NBC) without any authorization from its proprietors. The proprietors of the NBC logo allege not only infringement of the registered trademark, but surprisingly, also their registered copyright in the logo. These allegations were met with the defence that the trademark was never used as a mark and that the use of copyrighted content was incidental and does not violate the copyright as per Section 52 (1) (u)(ii) of the Copyright Act, 1957. The Delhi High Court accepted the appeal, without passing any ad interim orders and has listed the matter for further consideration on July 15. While this is not the first time such claims have arisen before Indian courts (for instance see here, here), the present claims are interesting for it raises three questions we must consider: i) what really constitutes use of a trademark, ii) whether the objectives of trademark law are in harmony with unauthorized trademark use in expressive works, and iii) the applicability of De Minimis as a defence for copyright infringement.

What Constitutes ‘use’ of a Trademark

While the Commercial Court appears to have sided with the respondents (Shane Ali) after prima facie finding the mark used in the film to be deceptively similar to the NBC logo, what appears to have been overlooked, is that there was no ‘use’ of trademark in the first place. The ‘use’ of the registered trademark ‘in the course of trade’ is an essential prerequisite for a case of trademark infringement. 

Section 29 (6) of the Trade Marks Act, 1999 in particular provides a non-exhaustive but indicative list of circumstances where a trademark is considered to be ‘used,’ such as:

1. affixing the registered mark on goods or packaging;
2. Offering to sell or stock goods under the registered mark or offering or supplying services under the registered mark;
3. Importing or exporting goods under the registered mark; 
4. Using the registered trademark on business papers or in advertising.

As suggested by the circumstances mentioned above and the judgement of the Delhi High Court in Pepsi Co Inc. & Ors. v. Hindustan Coca Cola Ltd. & Anr., usage should be in relation to the goods of the appellant and in a manner such that it would render confusion to the consumer. In the present case, neither is the mark used in relation to the goods of the appellant nor in any manner takes undue advantage of association with the NBC like in circumstances illustrated above.

Objectives of Trademark Law and Unauthorised Use in Expressive Work

While a claim for infringement of trademark by ‘use in the course of trade’ will likely not sustain, owners of trademarks may also bring an action for trademark dilution (under s. 29(4), Trade Marks Act, 1999) which may be brought against both word marks and logos where usage in the course of trade is not a prerequisite. In claims of trademark dilution it is the onus of the plaintiff to establish that because of the defendant’s usage of a deceptively similar mark, the value of the plaintiff’s registered trademark has diminished. Here the courts must look to balance the rights of the trademark holder along with the rights of those creating expressive work that has unauthorized use of trademarks. 

The conventional objectives of trademark law are largely twofold, to protect the interests of trademark owners and well as consumers The protection accorded to trademark owners is justified on a “labour-reward” basis. It is considered appropriate for businesses to treat trademarks as property they can protect since they have invested labour into generating goodwill and reputation associated with a certain mark which should not be appropriated by those using deceptively similar marks. 

However, as Pratheepan Gulasekaram argues here, on occasions where there is unauthorized use of trademarks in expressive works (as in the case of ‘Main Ladega’), it is necessary to not protect trademarks like private property in order to make room for free speech and expression. Since trademarks also carry symbolic and cultural meaning in a consumerist society, it is only expected and appropriate for artists and creators to incorporate trademarks into their work. Insistence on affording trademark owners the right to prevent their trademark from being incorporated in expressive work must be seen as an unreasonable limitation on free speech and expression, especially since neither of the two above mentioned objectives of trademark law are being violated. The same idea has been echoed in the Tata Turtles case, where Justice Ravindra Bhat found that while attempting to balance the right to free speech and expression with intellectual property rights, factors like whether the expressive content was commercial in nature must be considered. Heavy emphasis was laid on understanding the context in which there was unauthorised use of the trademark, hence the mere fact that the trademark was used (like in the present case) is not sufficient to trump the interests of freedom of speech. Even apart from the Tata Turtles Case, courts have on many occasions opined that a trademark owner’s right to protect against dilution cannot encroach on expressive content. For example, see Prateek Surisetti’s analysis of mattel’s claim that portrayal of barbie in a “risque” song amounts to trademark dilution here. 

Without a differential standard for claims of trademark dilution in expressive works, dilution laws could allow trademark owners to sue for reputational damage, potentially extending trademark law beyond its intended scope. For instance, in the case of Hamdard National Foundation v. Hussain Dalal, the Delhi High Court held that a dialogue in the movie ‘Yeh Jawaani Hai Deewani’ which incidentally comments on Roohafza has the potential to tarnish the reputation of the Roohafza brand and hence must be edited out before releasing the home video version. It might be reasonable to prevent commercial rivals from disparaging a brand or using a deceptively similar mark in bad light leading to brand dilution. However, what is reasonable for competitors can be arbitrary and oppressive when applied to artists. As a potential alternative to courts granting injunctive relief on occasions where unauthorized use has resulted in disparagement, courts may consider mandating a disclaimer as done in the Prakash Jha case.

Applicability of De Minimis as a Defence against Copyright Infringement

The appellants in the present case claim protection under Section 52 (1) (u)(ii) of the Copyright Act, 1957, (which states that inclusion of artistic work in a film if incidental does not amount to copyright infringement) while asserting that the use of NBC’s logo is merely incidental. The Courts in the cases of India TV Independent News Service v. Yashraj Films Pvt. Ltd. and Shemaroo Entertainment Ltd. v. News Nation Network Pvt. Ltd. have established the defence of De Minimis Non Curat Lex (the law cares not for small things) where minor and often short references to copyrighted works used in for-profit but expressive content is excused. The Delhi High Court in the India TV case also laid down a 5 factors to consider when applying the defence of De Minimis, they are:

1. The size and type of harm;
2. The cost of adjudication;
3. The purpose of the violated legal obligation;
4. The effect on the legal rights of the third party; and,
5. The intent of the wrongdoer.

While the above necessarily must be considered when evaluating the applicability of De Minimis, it is only appropriate for the Court to place the onus on the aggrieved party to demonstrate the extent of harm caused to be unjustified. This must especially be the case when copyrighted content is used in a minimal and incidental manner. In the present instance, the claim for infringement arises as the design of the NBC logo contains copyrighted content. Hence, since the usage is minimal and an inadvertent result of using the trademarked logo, the defence of De Minimis ought to apply.

Conclusion

Claims that expressive works infringe intellectual property rights are not new. However they do seem to be on the uptick considering the recent case where Karan Johar claimed his personality rights were infringed by the movie “Shaadi ke director, Karan aur Johar.” 

On all occasions where expressive content is challenged on grounds of protecting intellectual property, a context specific balancing of rights must be arrived at. Mere unauthorized use is often insufficient to eclipse the concerns of free speech. Further, in instances like there present case where usage of copyrighted content and registered trademark is merely incidental, an injunction against release of expressive content is an unreasonable restriction on freedom of speech and expression.