“The Dirty Picture” litigation on brand name exclusivity is an interesting example of intellectual property dispute within Entertainment Industry.
The dispute primarily pertained to the secondary meaning and brand value which Film Title “The Dirty Picture” has acquired because of the immense popularity and goodwill it achieved for the film makers Balaji Motion Pictures Limited. A Kannada Film Producer used it as part of the Title of its film for encasing the brand, goodwill and popularity which “The Dirty Picture” had created.
The Parties to the litigation were “Balaji Motion Pictures Limited” (“Plaintiff”), M/s. Akshaya Productions (“Defendant No. 1”) and The Karnataka Film Chamber of Commerce (“Defendant No. 2”). Plaintiff and Defendant No. 1 are involved in Production of Films and Defendant No. 2 is a Film Association based in Karnataka.
Plaintiff has produced many renowned and commercially successful films. One of such films was titled “The Dirty Picture” which stars the leading actress Vidya Balan, and it was directed by one of the top-notch Director Milan Luthria.
The Plaintiff registered the title ‘The Dirty Picture’ with the Association of Motion Pictures and Television Programme Producers (“AMPTPP”) in Hindi, Tamil and Telugu languages in June, 2010. Realizing the popularity of the Plaintiff’s film and the potential for merchandizing its title in relation to various goods / services including films, the Plaintiff applied for registration of the title “The Dirty Picture’’ as a trademark under several classes under the Trademark Act. The Plaintiff had been using the trademark “The Dirty Picture” since the year 2011 in relation to cinematograph film, vinyl records, audio tapes etc. during pre-release phase which also included cost of production.
The Plaintiff spent an enormous amount for making of said film and promotion thereof by all forms of media including print, television, radio, hoardings, digital media, live shows and miscellaneous promotions etc. Due to the extent of the promotion and publicity received for the said film, even before the said film was released, the title “The Dirty Picture” garnered tremendous interest in the minds of the audience and became very popular with the public at large.
Thus, even before the release thereof, the said film came to be identified with the Plaintiff and the public at large associated the said film with the Plaintiff exclusively and the said title acquired a secondary meaning
Upon release, the film achieved stupendous commercial and critical success and became one of the highest grossing films of the year 2011. Further, the film was ranked among the 10 most successful brands of 2011 by Business Standard.
Defendant No. 1 has been involved into film production and was producing a film whose title was similar to Plaintiff’s film. Plaintiff was shocked and surprised to read suggestive articles in media stating that the Defendant No. 1 was proposing to produce a film in Kannada language titled ‘Dirty Picture: Silk Sakkath Hot Maga’. Defendant No.2 being the local film association had already registered that title and hence the Plaintiff filed the suit against Defendant No. 1 and Defendant No. 2 restraining Defendant No. 1 from proceeding with the aforesaid title and also preventing any possible copyright infringement by analyzing the script and other relevant material.
Hon’ble Mr. Justice S. J. Kathawala of the Hon’ble Bombay High Court supported Plaintiff’s contentions on the issue of passing off and held that:
Balaji Motion Pictures Limited created history from this Landmark judgment which now secures a popular and wellknown title of the film as brand name associated with the maker of the film and restricted a third party from commercially exploiting the brand name and image which is created by the popularity and publicity of the title of the film and is a boon to the film industry for years to come.
Thanks to Mr. Zameer Nathani (Head – Legal, Balaji Telefilms Limited and Balaji Motion Pictures Limited) and his Team Member Mr. Onkar Savarkar for taking this case as a challenge and gather evidence from the perspective of showing “The Dirty Picture” as having acquired secondary meaning and goodwill to become a brand, since Film Titles like Don of Shri. Amitabh Bachchan, Don of Shri. SRK and Don No. 1 of Shri. Nagarjuna were glaring examples of Film Titles which were not till date declared as exclusive brand name in India.
Sincere thanks to Senior Counsel Mr. Ravi Kadam Sir for an in-depth and meritorious arguments and case laws citations and Mr. Ameet Naik (Managing Partner of Naik Naik & Co.) and his Team Members for the immense contributions
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