Book titles protected under IP ?

Section 13 of the Copyright Act, 1957 defines the categories of works in which a copyright may subsist. A reading of the provision reveals that it talks about protection of the work as a whole and not just for the title or a part of the work. There is no jurisprudence when it comes to copyright of book titles in India. However, plethora of cases available on protection of movie titles provides guidance on the same.

Kanungo Media (P) Ltd. v. RGV Film Factory and Ors.[ MANU/DE/7193/2007]

In the above mentioned case, Delhi High Court deliberated on protection given to literary titles. Plaintiff and Defendant were in a tiff over the title of their films, ‘Nisshabd’ and ‘Nishabd’ respectively. The Plaintiff had produced his movie and won accolades for the same. He claimed copyright over the film title, arguing that the title had acquired distinctiveness over the period of time and would likely cause confusion in the minds of the audience as they might associate the title of the film of the Defendant with his work. The learned judge drew reference from American jurisprudence and precedents and held that the title of the book alone, without the plot, characterisation, song, etc., cannot be the subject of copyright law.

The Kanungo judgment was upheld by the Apex Court in Krishika Lulla and Ors. v. Shyam Vithalrao Devkatta and Ors.[MANU/SC/1174/2015] The Indian Courts are gradually moving towards a more sophisticated and evolved regime of IP rights and there is still a lot to discern and decide when it comes to the grey areas of IP law.

Trademark Protection for Literary Titles

In Kanungo, the Court held that legal protection for literary titles lies in the field of trademark and unfair competition. The Court identified two types of titles:

1. Titles of Series of Literary Works: Titles of series of books, periodicals or newspapers function as a trademark to indicate that each edition comes from the same source as the others and such titles can be registered as trademarks; and
2. Titles of Single Literary Works: Titles of a single literary work which in order to become entitled to trademark protection, it is necessary to prove that: (a) such a title has acquired secondary meaning; and (b) there is likelihood of confusion of source, affiliation, sponsorship or connection of potential buyers/audience/viewers. These two tests are discussed in detail below.

Secondary Meaning

The term ‘secondary meaning’ with respect to literary titles was explained by the Court by quoting McCarthy (Supra): the test for secondary meaning of literary titles requires determining whether, in the minds of a significant number of people, the title is associated with a single source of literary work. In other words, are people likely to assume that the defendant’s work is connected to the plaintiff’s literary effort? The consumer need not know the trade name of the source, but is entitled to assume that all works or goods under that title are controlled by some single source.

The Court also held that even if a work has not released, pre-release publicity of the title might cause that title to acquire recognition sufficient for protection. Further, relevant evidence to determine secondary meaning as a question of fact would be determined by seeing: (a) the length and continuity of use; (b) the extent of advertising and promotion and amount of money spent; (c) sales figures; and (d) the closeness of the geographical and product markets of the plaintiff and the defendant.

Likelihood of Confusion

The second test for claiming trademark protection for a literary title is that of likelihood of confusion to which the same considerations as applied to trademarks in general were applied. The Court held that the total visual impression of the whole item reaching consumers must be considered, and not a meticulous comparison to words letter-by-letter, syllable-by-syllable pronounced, and further that the stress must be laid on common rather than distinctive features.

Kanungo was also followed by the Madras High Court in R. Radha Krishnan vs. Mr. A.R. Murugadoss and the Film and Television Producers Guild of South India [AIR2014Mad25], where the Court held that the words ‘Raja Rani’ are words of common parlance and cannot be protected under copyright law. The Court held that the suit for injunction on a plea of copyright infringement was not justified.

Position of Law Laid Down by the Supreme Court

The decisions in Kanungo and R. Radha Krishnan were upheld by the Supreme Court of India in Krishika Lulla and Ors. Vs. Shyam Vithalrao Devkatta and Ors. [(2016)2SCC521]. In this case, the Plaintiff claimed rights over the title ‘Desi Boys’ and claimed copyright infringement by the Defendants who had released their film titled ‘Desi Boyz’. The Supreme Court held that a title is a name of a work, it is incomplete in itself and does not qualify for being described as a ‘work’. The Supreme Court held that Kanungo and R. Radha Krishnan laid down the correct law, and that while no copyright subsists in the title of a literary work, the remedy available to a complainant would be in an action for passing off or in respect of a registered trademark comprising such titles.

The law laid down by Indian Courts in the above decisions clearly shows that copying the title of a literary work alone will not amount to copyright infringement unless it can be shown that a part of the literary work (such as plot, characterization, dialogue etc.) itself has been copied. However, if the title of the literary work is such that it has been registered as a trademark, or if the title has acquired a secondary meaning, the complainant will have the protections available under Indian trademark law.

Author: Yukta Karnavat