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'What a catch!' BUT CAN YOU COPYRIGHT THAT PHRASE?

"There's great power in words if you don't hitch too many of them together" – Josh Billings.


Introduction

The effect that even a few words have – often referred to as 'slogans,' ‘catchphrases,’ ‘titles,’ etc. – is undeniable. A group of words can provoke thought and steer impressions. For instance, eccentric or bizarre phrases, catchy titles of a song or movie, an intriguing title of a book, etc. – all tend to catch one’s attention. Thus, it can prove to be a key promotional tool for various businesses. However, being inherently short, they are easily severable and, consequently, a common subject of theft. Despite this vulnerability, courts across jurisdictions have abstained from granting copyright protection to such a short combination of words. This is contrary to the general expectation that phrases or slogans would receive copyright protection as ‘literary works’.

Furthermore, it is only in rare instances that even trademark protection has been granted to short phrases. In this light, the article analyses the protection of short phrases vis-à-vis copyright law. The author investigates the position under Indian law, followed by a brief reference to the judicial position in the USA and UK. The article determines this position through a series of case laws. It concludes by examining the jurisprudence that governs the present day scenario.

Copyright Protection Under Indian Law

Indian copyright law does not ordinarily grant protection to titles by themselves or names, short word combinations, slogans, short phrases, methods, plots, or factual information. They are not afforded protection as a ‘literary work’ under Section 2(o) of the Copyright Act, 1957. This is based on the consideration that two or three sentences on their own do not afford sufficient information, instruction, or literary enjoyment to qualify as a literary work. With respect to copyright protection, this can be analyzed under two heads, i.e., where the short phrase is a ‘slogan’ and a ‘title’.

Where The Phrase Is A Slogan

The consensus has been that slogans are not literary works and constitute a non-copyrightable subject matter. In Pepsico Inc vs. Hindustan coca-cola, the court held that advertising slogans were prima facie not protectable under the copyright act. They could be protected under the law of passing off if the plaintiff has made out a case, i.e., the plaintiff could move the court to remedy misrepresentation of his goodwill based on the common law remedy of passing off. In an appeal to the division bench, the judge found that advertisement slogans did not fall under the Copyright Act was not overturned. The division bench, however, granted an injunction against the respondent’s advertisement and held that the respondent had copied the theme of the appellant’s advertisement. The Delhi High Court basing itself on the de minimis rule, held that advertising slogans are prima facie not protectable under the Copyright Act. They are not substantial literary works.

This was reiterated in Godfrey Phillips India Ltd. v Dharampal Satyapal Ltd., where the court held that the slogan ‘Shauq Badi Cheez Hai’ does not fall within the scope of artistic or literary work under the Copyright Act. It is a wholly and totally common phrase and embodies commonly used words in the Hindi language. It is, therefore, not copyrightable.

Where The Phrase Is A Title

In the most recent case of K. Balaji Kumar vs. M/S. Star Polaris and Anr[i], the court acknowledged that it is common, rather imperative, to give the title to literary or entertainment works. Like human beings, literary work produced by the author or the work of entertainment produced by a producer needs a name. It is only then such work would be identified. It, however, relied on the uniform view taken by American Courts that Copyright Law cannot protect the title alone of a literary work. Copying of a title alone and not the plot, characterization, dialogue, song, etc. is not the subject of Copyright Law. Thus, a copyright on a literary work would not include the exclusive right to use the title on any other work. The Hon'ble Division Bench of the Madras High Court thus observed that the title alone of literary works could not be protected under copyright law. It was further opined that legal protection for literary titles lies in trademark and unfair competition law.

In the case of M/s Lyca Productions & Anr. vs. J. Manimaran, the court examined the reason for the uncopyrightability of titles of work. It was observed, through a conjoint reading of Sections 13 and 16 of the Copyright Act, that what is protected under the Copyright Act is the work that is relatable to a cinematograph film. This implies that the visual recordings, including sound recording, produced by a process analogous to cinematography would receive copyright protection. The title, however, which may be a commonly used word, was held to be un-copyrightable under the Act. Further, Section 13 makes it clear that there is no copyright in a title; it is the entire work that is protected by copyright.

The Division Bench held that the registration of title of works with film guilds, which were not recognized copyright societies, cannot result in preventing a third party, which is not a member of such council from using the title. This is because such a third party is not bound by the internal rules and regulations of such a guild. Furthermore, such guilds were incompetent to administer rights in cinematographic works because they are not registered as copyright societies under the Act. The court further recognized that the simultaneous release of cinematographic films of the same title is likely to confuse the mind of the viewers. In the instant case, however, the court found that the release was not simultaneous. The plaintiff’s film has not been completed. In the absence of any statutory or contractual rights, the plaintiff cannot injunct others from using a title.

It was held by the Supreme Court in Krishika Lulla v. Shyam Vithalrao Devkatta and Anr., that the title of the works cannot be protected under copyright. The main issue that arose for determination was copyright in the title “Desi Boys”.The court observed that in the first place, a title does not qualify for being described as “work”. It is incomplete in itself and refers to the work that follows. Secondly, combining the two words “Desi” and “Boys” cannot be said to have anything original in it. They were identified as extremely commonplace words in India. Therefore, the title “Desi Boys”, assuming it to be a work, has nothing original in it in the sense that its origin cannot be attributed to someone. In the present case, the title of a mere synopsis of a story is said to have been used for the title of a film. The title in question cannot, therefore, be considered to be a ‘literary work’ and, hence, no copyright can be said to exist in it.

International Approach To Copyright Protection In Phrases

Examining Uk’s Stance

Under UK law as well, there exists no copyright in a name, title, slogan, or phrase names since they are not considered ‘unique’ or ‘substantial enough’ to be covered. These may, however, be eligible for registration as a trademark. In Exxon Corp. v. Exxon Insurance Consultants Ltd[ii]., the plaintiff, a multinational oil company ‘Exxon Corporation,’ sued the defendants for passing off and infringing copyright in the word “Exxon” by using it as part of their corporate name. The passing-off claim succeeded and an injunction issued against the defendant’s use of the word in its name. The copyright claim, however, failed. The Court of Appeal affirmed the High Court’s judgment on copyright

Graham J., in the High Court, observed that if the plaintiffs are right, it would have extremely inconvenient consequences as far as the public are concerned, in that no one could refer to any of the plaintiff companies or to any of their goods bearing the name Exxon, without having the plaintiffs’ license expressly or impliedly to do so. The question was whether Exxon is an “original literary work” within section 2. It is a word which, though invented and therefore original, has no meaning and suggests nothing in itself. The court opined that a single word being invented through research or labor does not, in itself, necessarily enable it to qualify as an ‘original literary work’. Thus, copyright protection cannot be afforded in the first instance.

Examining USA’s Stance

Under USA copyright law, names, titles, and short phrases do not qualify for copyright protection because they contain an insufficient amount of authorship. The Office will not register individual words or brief combinations of words, even if the word or short phrase is novel, distinctive, or lends itself to a play on words. However, it has been provided that under certain circumstances, names, titles, or short phrases may be protectable under federal or state trademark laws. Examples of uncopyrightable works include names of individuals, title or subtitle of a work, name of a business or organization, etc.

In the case of Hall v. Swift[iii], the Ninth Circuit reversed the district court’s dismissal of the plaintiffs’ infringement claim on short phrases in musical compositions. Plaintiffs were the authors of the musical composition “Playas Gon’ Play,” whose chorus includes the lyrics “Playas, they gonna play / And haters, they gonna hate.” Plaintiffs alleged that the chorus of the song “Shake it Off” by Taylor Swift et al.—specifically the lyrics “Cause the players gonna play, play, play, play, play / And haters gonna hate, hate, hate, hate, hate”—infringed their work. In sum, the district court found the relevant portion of the plaintiffs’ lyrics “too brief, unoriginal, and uncreative to warrant protection.” It granted the defendants’ motion to dismiss.

In the case of Pickett v. Migos Touring, Inc[iv]., the plaintiff, who was the author of the musical composition “Walk It Like I Talk It,” alleged that the defendants’ composition “Walk It Talk It” used his phrase and infringed his work. The court noted that the lower courts had found that “short and commonplace phrases” are not protectable. This was because 32 instances of “walk it as I talk it” in slight variations were used in literature, music, and movies, with numerous examples dating from before the plaintiff recorded his work. Concluding that the sole similarity between the plaintiff’s and defendants’ works Kindly was not original to the plaintiff, and therefore not protectable, the court granted the defendants’ motion to dismiss.

Critique And Conclusion

Upon deliberating upon the legal jurisprudence of the copyrightability of phrases in India, the UK, and the USA, it is fairly clear that phrases are unlikely to receive protection. Courts have generally suggested seeking protection under trademark law or via the common law remedy of passing-off. It is, however, interesting to note that a literary work, despite being the expression of creative thought, is not accorded this protection. While justification is placed on the fact that it is merely a combination of generic words and copyrighting, it would monopolise usage - this would be the consequence of the trademark. To deny short phrases, copyright protection implies a minimum word or character requirement as proof of time and effort that an author put into its creation. However, there does not exist such limitation or restriction in the concerned legislations! Thus, denying copyright protection is a judicial construct based on the ‘substantiveness’, or lack thereof, of phrases. Copyright laws disfavour protection for short phrases. These rules are premised on two tenets of copyright law. First, copyright will not protect an idea. Phrases conveying an idea are typically expressed in a limited number of ways and are not subject to copyright protection. Second, phrases are considered as common idioms of the English language and are therefore free to all. Granting a monopoly would eventually lead to the public being ‘checkmated’. The purpose of a copyright clause to encourage creativity-would be defeated.

The courts have, however, been careful not to rule out the possibility of protection altogether. Inappropriate circumstances, the remedy of passing off or protection under trademark stands available. Keeping aside the lack of copyright protection, it is pertinent to comprehend why trademark protection becomes significant to creators of such phrases. The reason why trademark protection is afforded to phrases is thatthat a trademark, among other things, essentially aims at protecting the representation of a brand. It is under this context that most enterprises seek to protect their textual representation. But where a phrase does not conform to the standard of representation, i.e., it is only a title or slogan of an article, for instance, it will remain unprotected. This not only dilutes the idea behind intellectual property protection but also leaves the area of protection of phrases rather unreliable and uncertain. Thus, going ahead, either a way around the current provisions or a separate alternative, is to be devised – which will encourage and protect creativity in this realm.

[i] O.S.A. No. 154 of 2019 and C.M.P. No. 13790 of 2019 [ii] [1982] Ch. 119 (U.K) [iii] No. 18-55426 (9th Cir. Oct. 28, 2019) [iv] 18 Civ. 9775 (AT) (S.D.N.Y. Nov. 12, 2019)



Title Image Source: Legal Zoom


This article has been written by Manvee Kumar Saidha. Manvee is a 4th year law student at School of Law, Christ University, Bangalore