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Protecting trademarks and copyright in the fast-paced Bollywood movie industry requires careful planning, as Ed Conlon finds out.
The success of Bollywood, India’s Hindi-language film industry, has helped Indian cinema become the global powerhouse it is today. According to a March 2018 report by Deloitte, Economic Contribution of the Indian Motion Picture and Television Industry, 2017, India’s film and television sector contributed US $33.3 billion to the economy and supported more than 2.36 million jobs in 2017.
"INdia’s film and television sector contributed US $33.3 billion to the economy and supported more than 2.36 million jobs in 2017."
Protecting the copyright underlying this content is no mean feat. One of the major players in this crusade is the Motion Picture Distributors Association (India) Pvt. Ltd. (MPDA), a wholly-owned subsidiary of the Motion Picture Association (MPA) which represents Paramount Pictures, Sony Pictures Entertainment Inc., Twentieth Century Fox, Universal City Studios LLC, Walt Disney Studios Motion Pictures, and Warner Bros.
Uday Singh, Managing Director at MPDA, says that as the legitimate film industry continues to contribute significantly to the country’s economy, the sector continues to battle with online piracy.
“The growth of the Internet has created new benefits and opportunities for society at large, but it has also facilitated growth of online copyright infringement by wholesale sharing of digital content through mass file sharing, including through illegal/rogue websites,” he says.
Mr. Singh explains that while stakeholders seek judicial relief by filing “John Doe” orders to block websites, this is “a tedious and onerous process.”
These traditional routes are typically inefficient, time-consuming, and expensive, given that the illegal sites are based overseas, he says.
“The success, or failure, of a film is highly dependent on the opening weekend attendance numbers and, given the speed of distribution of illegitimate content online, the current procedures under Section 52(1)(c) of the Copyright Act, 1957 do not serve the purpose of deterring piracy or protecting the film effectively,” he explains.
In order to combat rogue sites, Mr. Singh says there needs to be an administrative procedure that would offer a fast and effective method for preventing Internet users from accessing illegal content, especially if such sites are not based in India.
“An amendment to Section 69A of the Information Technology Act should therefore be considered, in order to allow for an effective administrative remedy against online piracy by denying access to rogue piracy sites.”
One of the MPA’s member studios is Viacom18 Motion Pictures, which is the motion pictures arm of the company Viacom18 Media Private Limited—a joint venture between TV18 (51 percent) and Viacom (49 percent). Viacom18 has a portfolio of more than 1,000 trademarks, and the task of managing these falls to a team led by Thomas George, Senior Vice President, Head-Litigation, IP & Regulatory at Viacom18 (India). Mr. George says the large number of trademarks reflects the creativity and growth of the network, with new shows and films being churned out on a regular basis.
The company’s biggest brand is Colors, which was the network’s first general entertainment channel and is among the top channels and brands in India. Viacom18 also operates several regional channels under the brand Colors. A range of trademark protection is required across all formats.
“For us, even our character names (for our children’s channels) and the characters themselves form an important part of our protection strategy and efforts,” says Mr. George.
“We are now seeking to protect certain sound marks for the signature tune of Colors, variations of which are used for the network,” he adds.
Mr. George notes that in India, clearing a trademark in the film industry can be a major challenge. This is because the majority of Indian production houses and studios are members of industry bodies, including the Indian Motion Picture Producers’ Association, with which titles of films and TV shows are also registered.
While these associations do not grant legal trademark rights, the names registered with the bodies go a long way to proving prior adoption and use. Therefore, he says, at the trademark clearance stage, a thorough search needs to be conducted with the associations as well as the Trade Marks Registry to ensure that the title is not identical and/or deceptively similar to any other.
“Members follow a rule of not using titles of films which would be rejected by these associations since they would not want to infringe the rights of a fellow member. However, with the multiplicity of these industry bodies, it can sometimes lead to a title being registered by one association despite the title being previously registered in favor of another association,” he explains.
“We apply for titles of all our shows and films with the associations. For key names, we simultaneously apply for titles with the associations and for trademarks as an added layer of protection to ensure that we have priority in adoption at both places,” he says.
Another hurdle is convincing the Trade Marks Registry about use and acquired distinctiveness of a title for a standalone film. As title protection is sought mostly during the making of the film, proving acquired distinctiveness on the basis of its publicity and marketing can be difficult, he says.
“However, the timelines between application and registration of the mark allow us time to file the appropriate documents to prove distinctiveness of the mark and, until such time, we ensure that we are represented properly and make appropriate submissions to allow the mark to proceed.”
Mr. George ends with a lesson about appropriate trademark clearance, one that could be applied to any industry or jurisdiction. Last year, the company faced a challenge to a trademark for one of its TV shows just a few days before the show went to air.
“Even though the opponent unsuccessfully sought an injunction and the case was strongly in our favor, it caused a lot of stress and simply reinforced that a thorough clearance can greatly mitigate the risks involved and keep you prepared for the worst,” he concludes.
INTA, INTA18, Bollywood, entertainment industry, copyright, online piracy, Motion Picture Association, MPDA, illegal internet use, illicit content