With a rise in OTT content and on-demand videos, in this dynamic landscape of entertainment, the convergence between brands and creative content has become a common practice. Movies and TV Shows often incorporate real-world brands as part of their storytelling which adds realism and immersion to the narratives. This practice raises some intriguing legal questions and issues, particularly in the context of the Indian Trademark Law. This article delves into the legal considerations to be undertaken surrounding the use of trademarks in the entertainment industry while exploring some dos and don’ts of using the brands on screen, with some real cases of infringement and examples.
Trademark Law: Guarding Brand Identity.
Section 28 of the Trademarks Act, 1999 (herein referred to as the Act thereafter) gives the exclusive right to the use of the trademark in relation to the goods or services in respect of which the trademark is registered. This exclusive right means that the trademark holder can seek legal remedy in case of an infringement of the trademark and with many other rights like the right to assign, seek correction of the register, and many others. This means trademark law protects the unauthorized use of a trademark in a manner that doesn’t create confusion among consumers about the source or origin of goods or services.
Navigating Trademark Infringement
Using the brands on screen also leads to a threat of trademark dilution for the trademark or brand owners. As in movies, the dilution of a trademark can be by tarnishment, as the term itself suggests it occurs when the mark is portrayed in a poor light which results in lowering the commercial value or reputation of products or services in the public eye. A brand’s reputation may suffer if a trademark is depicted negatively. Because of this, trademark owners frequently actively protect their intellectual property rights in situations when their trademarks are being linked to offensive subjects or actions The film producers must make sure the use of any brand product is not leading to tarnishment. For example, in the suit filed against Karan Johar’s movie, ‘Yeh Jawaani Hai Deewani’ over certain ‘objectionable’ references to ‘Rooh Afza’.
In the suit, Hamdard (Petitioner) claimed that their product is a household name and that “the dialogues in the movie… definitely damage the goodwill and reputation of the plaintiffs and is an actionable wrong in common law as well as statute.” The Delhi High Court held that the product is a household name in and outside India and the film Yeh Jawani Hain Deewani contains objectionable dialogues about the drink. The movie was restrained from releasing on the Television, however, was not restrained from the theatre release and the defendants were at liberty to omit the objectionable content from the film and proceed to release the home video version or any television version of the movie.
Trademark dilution is a well-recognized concept in Trademark law. Section 29(4) of the Act enumerates infringement, if an infringer takes unfair advantage of the well-known mark because it has a distinctive character and when the infringer’s mark may tarnish the image of the well-known mark, it may amount to infringement in the form of dilution, however the word dilution is not mentioned in the same.
Courts while dealing with the cases of dilution may consider factors such as the nature of the use, the prominence of the trademark, and whether it implies an endorsement or sponsorship. Additionally, for the infringement, the Court also analyses the use of the mark, whether the use is incidental to the storyline, or whether it unjustly benefits the trademark owner. If the use falls within the boundaries of the artistic expression and does not mislead consumers, it may be deemed permissible. Again, this is very subjective and depends on a case-to-case basis. There must be a balance between artistic expression and legal compliance when brands are featured on screen. The film and TV programme producers as well as the brand owners must be active and careful. Both must make sure that the use of the brand falls within fair use. For example, if there is a billboard of a famous brand X in the background of a movie scene, it must remain in the background, it should appear that the brand’s appearance is merely incidental.
To prevent infringement claims, filmmakers and producers seek permission or licenses from the trademark owners before featuring their brands in movies or TV shows.
With the result of ad-skipping options in the content, there is a decline in the effectiveness of conventional advertising. There is another interesting concept that has seen a big rise is product placement. Many brands are exploring product placement to see if it is a more effective way to ensure that an audience sees their product. For example, “Munni Badnaam Hui” by the movie Dabbangg included the antiseptic product BoroPlus and the pain reliever Zandu Balm, Hritik Roshan was seen promoting Bourn Vita in Krrish and Koi mil gaya, Tide was placed in Chup Chup ke and many more.
This product placement is a cross-promotion, it is a way for brands to enter the entertainment industry, When products are placed, the brand has a promotion and meanwhile, it adds a realistic effect to the story for the filmmakers. For example, following the release of the movie Chup Chup Ke, Tide’s sales increased significantly. Everyone had fits of laughter at the conclusion of the scene, creating a lasting memory of the brand.
There must be smart brand integration in the films, one cannot protagonist using luxury products while playing the role of the lower middle class. For economies of scale and the overall profitability of the movie, brand integration is crucial, but it shouldn’t be done at the expense of the ultimate creative product. People watch movies for the plot, not the brand advertisements. This has to be kept in mind by the filmmaker while the brand owners must see whether the use of the brand may be considered disparaging, how it is being used and many other factors to be analyzed. The check must be maintained when there is an unpaid product placement.
Defenses and Legal Considerations
When there is product placement, there are some defenses that come into play. Section 30 of the Act is an affirmative defense available against a claim of infringement by the proprietor of a registered trademark. It talks about fair use which includes broadly two types of fair use;
Descriptive fair use [Section 30 (2) (a)]: It relates to the use of the mark when use describes the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services or other characteristics of goods or services.
Normative fair use [Section 30 (2) (d)]: It relates to the use of a mark by a person in relation to goods adapted to form part of, or to be accessory to, other goods or services in relation to which the trademark has been used without infringement of the right. It generally applies to news, commentary, criticism, parody, comparative advertising, and any other non-commercial use of a registered trademark.
While the product placement in films, there can be;
- Descriptive use of the brand without implying endorsement.
- Use in the context where the trademark is fictitious and unrelated to the actual source.
- Consent or licensing from the trademark owners.
- Artistic expression allows the use of the mark, an essential and integral part of the storyline.
The synergy between filmmaking and brand integration with product placement is a dynamic landscape where creativity meets commerce. The product placement in the movies offers a unique avenue for brand visibility and adds realism to the storytelling. However, it comes with the responsibility of navigating the complexities of trademark law. While evolving filmmaking, the rights of trademark owners have to be maintained along with the authenticity of cinematic narratives. There has to be a balance between protecting brands and creative expression. Filmmakers, producers, and brand owners should work in harmony to ensure that product placement enhances storytelling while adhering to trademark law.