One of the most popular and effective marketing strategy for advertising and promoting brands is “Product placement in films” i.e. integrating a brand into a film by strategically placing the brand or the brand message within the storyline of the film, coupled with the lead actors’ association with the brand. This arrangement tends to benefit both the producer of the film and the brand-owner. For producers this is an additional source of finance for their film, in addition to enhancing the authenticity of the characters and storyline of the film due to the relatability of the audience with the brand used in the film. For brand owners, the reach and impact that films can have with the audiences is tremendous. Placing the brand in the film can sometimes exponentially increase the brand value of a product. Hollywood has utilised product placements for the longest time and certain brands have left a lasting impression in the minds of the consumer. The iconic James Bond movies are indelibly linked with Aston Martin cars and similarly FedEx played a very important silentbut important role in the film Cast Away (2000). In Bollywood too, one of the earliest examples of product placement is the launch of the Rajdoot motorbike of Enfield Motors in the film Bobby (1973), and more recently, the film Bang Bang(2015) featured multiple brands such as as Pizza Hut, Mountain Dew, Volvo, Johnson Tiles etc.

However, there have been instances when brands have been used in a film without authorisation, in a negative light, thereby leading to claims of commercial disparagement, infringement of registered trademarks, dilution and tarnishment of trademark, damage to reputation, passing off, etc.

The Supreme Court in the case of Bata India Ltd. Vs. Prakash Jha Productions and Ors.,(2013) 1 SCC 729dealt with a song titled “Mehangai” in the film Chakravyuh. The movie was based on the issue of Naxalism and in that context the lyrics of the song contained the names of some of the biggest companies in India and implied that such businesses run on the blood of the common man. The court of first instance, in this case was the Delhi High Court which granted an injunction restraining further screening of the movie until such time as the objectionable content was removed. An appeal was then filed before the Apex Court. The Supreme Court stated that the lyrics of the song ‘is in poor taste and the wordings indicating the names of certain business houses could have been avoided’, however clarifying that ‘there does not appear to be any intention in the song to besmirch the reputation of any particular business house or commercial enterprise and that the entire song has been written in a manner which attempts to depict the producer’s view of the state of society today’. The court directed whenever the song is played, a disclaimer should also run alongside the song stating that the names mentioned in the song are mere examples and no injury or disrespect is intended to any particular person or brand.

Taking what appears to be a contrary line, the Delhi High Court case of Hamdard National Foundation & Anr Vs. Hussain Dalal&Ors., 2013 (55) PTC 216 (Del), dealt with a specific dialogue in the film Yeh Jawaani Hai Deewani wherein the drink was being portrayed in a disparaging manner and was detrimental to the interests of the plaintiffs as a proprietor. The court examined Section 2 (2) and Section 29 (9) of the Trademarks Act, 1999 and stated that “What is an infringement is not merely visual representation of the product in the bad light under the provision of Section 29(9) of the Act but it is the infringement of the trade mark if the same is caused by way of spoken use of the words and the visual representation of the said words.” The court also said that the present case differed from the Chakravyuh case because the song in question was penned down keeping in mind the theme of the film and was targeted towards a certain class of the society. However in the present case the objectionable dialogue categorically targeted a single brand with impeccable reputation. The Delhi High court further opined on the constitutional right of freedom of speech and expression by stating:

“A conjoint reading of the Article 19(1)(a) and Article 19(2) of the Act, would make it clear that the state is within its power to make any law in so far as it imposes the reasonable restrictions on the exercise of the right conferred by the said sub-clause in the in relation to defamation etc. the law preventing the infringement of trade mark by way of spoken words is a commercial law preventing unfair or untrue commercial speech which may cause injury to the proprietor which is included within the ambit of the infringement in order to prevent disparagement. The said law prevent disparagement is one of the facet of the tort of the defamation and is thus an excepted matter under Article 19(2) and the state is within its power to make such law.”

Considering the fact that the movie had already released and that removing the objectionable content from the released versions wasn’t possible, the court directed that, to prevent future commission and continuance of the objectionable acts or dialogue, the said dialogue be omitted from any and all future versions of the movie.

In the case of ICICI Bank Ltd Vs. Ashok Thakeria & Ors., 2014 (58) PTC 258 (Del), an ex-parte interim injunction was passed by the Delhi High Court against the Defendants. Unlike other cases the plaintiff had approached the court, prior to the release of the concerned film Grand Masti, basis the trailer of the film, which depicts the plaintiff’s bank in bad light. The trailer depicts a robbery which appears to be taking place in a bank carrying the banner/poster ‘IBIBI’ containing a message, and the said poster along with the message is a verbatim replica of the plaintiff’s poster, carrying the same font, layout and colour scheme, barring the term IBIBI which is used in place of ICICI. The court ordered:

“in light of the aforesaid observations, I hereby grant an ex parte injunction in favour of the Plaintiff, directing the Defendants to blur/censor the disparaging font/content of the movie carrying the marks IBIBI, the logo similar to the “i” device, and the banner/poster regarding the ‘Most Trusted Brand Award’ in an identical font, layout and colour scheme as that of the Plaintiff’s, in its bank robbery scene and/or any other part/scene of the movie ‘Grand Masti’.”

The above mentioned cases do not seem to elaborate upon the issue that the use of such brands in films would not amount to a “use in the course of trade”, which is a necessary criterion for trademark infringement, and hence an instance of trademark infringement would not arise. The aspect of disparagement on the other hand, is a species of trade libel and defamation, and requires careful consideration before such brands are used in a film. While courts, as in the Chakravyuh case and even before that in the Mangal Pandey case, have allowed a leeway to the producers in the context of poetic license, a baldly disparaging depiction of a brand which lacks any justification either in terms of poetic license or the standard defences available under defamation, will lead to an actionable claim. As far as brand owners are concerned, they must proceed with abundant caution before entering into an agreement for “product placement” in a film, by making sure that the brand is being depicted in a manner that is not disparaging and at the same time helps in promoting the business.