'Registration Of Film Title With Producers' Association Doesn't Create Exclusive Right Of Use': Bombay HC Dismisses Injunction Plea By 'Lootere' Producers
The Bombay High Court has held that registration of a film title with a producers' association does not, by itself, create any enforceable exclusive right against third parties, and cannot be the basis for an injunction. The Court clarified that such registrations are only for internal regulation among members of the association and have no statutory authority under the Trade Marks Act or...
The Bombay High Court has held that registration of a film title with a producers' association does not, by itself, create any enforceable exclusive right against third parties, and cannot be the basis for an injunction. The Court clarified that such registrations are only for internal regulation among members of the association and have no statutory authority under the Trade Marks Act or the Copyright Act.
Justice Sandeep V. Marne was hearing an interim application in a commercial IP suit filed by Sunil, who claimed priority over the title “Lootere” on the basis of registration with a film producers' association and asserted that Defendant Nos.1 and 2 cannot make or produce any film or web series by unlawfully exploiting Plaintiff's rights in the said title.
On the allegation of the violation of copyright, the Court noted that Plaintiff alone is entitled to exploit the copyright in that film to the exclusion of others. However, there is no claim by Plaintiff of infringement of copyright in the literary work of the film 'LOOTERE'. Hence, the Court observed:
“… except similarity in the title, Plaintiff's cinematograph film 'LOOTERE' admittedly does not have any similarity in terms of story with the web series of Defendant No.1. There is thus no allegation of infringement of Plaintiff's copyright either in the story or in the cinematograph film on the part of Defendant No.1.”
On the issue of copyright in the title, the Court reiterated that there cannot be a copyright in the mere title of a film. Therefore, Plaintiff cannot claim any rights in the mere title of the film 'LOOTERE'.
With respect to the plaintiff's registration of the title with the association of producers, the Court held that the association is an internal contractual arrangement between the members and has no sanctity in law.
“… violation of registration granted by any Association would not give rise to any statutory right. The contractual right created by an internal arrangement between the Association and its members can be enforced only qua the members of the Association. Such a contractual right cannot be enforced against an entity that is not a member of the Association. In the present case, Defendant No.1 is not a member of Defendant No.4 Association,” the Court observed.
The Court also refuted the argument of the plaintiff that the very factum of Defendant No.2 making such an enquiry would indicate that it is impermissible to use the title without securing a license from the owner thereof. The Court said that any correspondence made by Defendant No.2 with an Association enquiring about the title 'LOOTERE' would not bind the producer of the web-series.
Accordingly, the Court held that the plaintiff thus failed to satisfy the triple tests of prima facie case, irreparable loss and balance of convenience, and hence, the interim application for injunction was dismissed.
Case Title: Sunil v. Star India Pvt. Ltd. & Ors. [INTERIM APPLICATION NO. 3347 OF 2024 IN COMMERCIAL IPR SUIT NO. 236 OF 2024]