Title of literary work can be protected under trademark law, but not under copyright law

In Krishika Lulla v Shyam Vithalrao Devkatta (Criminal Appeal Nos 258 and 259 of 2013, October 15 2015), the Supreme Court, in quashing a criminal case filed by Shyam Vithalrao Devkatta against Krishika Lulla, has stated that copyright does not subsist in the title of a literary work and that a complainant is not entitled to relief in this regard, except through an action for passing off or in respect of a registered trademark consisting of such title.

The dispute arose when Krishika used the words 'Desi Boyz' in relation to a film title. Shyam contended that such name was identical to the title of a story written by him. According to Shyam, Krishika’s adoption of the film title Desi Boyz amounted to infringement of his copyright in the identical title of his literary work. Shyam filed a criminal complaint against Krishika, based on which the metropolitan magistrate started a process of investigation against Krishika.

Shyam’s case was based on the following alleged facts:

• He had written a story entitled "DesiBoys", the synopsis of which was registered with the Film Writers Association on November 25 2008.
• He had sent the synopsis to a friend by email, who had mentioned that a famous Bollywood director’s son was looking for a story for a comedy film. The friend further forwarded the email to one of his contacts, along with the said title.
• His friend did not receive any reply from his contact and, subsequently, Shyam saw Krishika’s advertisements for the said film under the impugned film title.

Aggrieved by the issuance of process, Krishika approached the High Court of Bombay and filed applications for quashing the criminal complaint. However, the High Court refused to quash the complaint, which resulted in the present criminal appeal before the Supreme Court. 

Krishika contended, among other things, that:

• the film was based on a story created by a writer who had been appointed by agreement and appropriately paid;
• there is no copyright in the title of a story or film and, therefore, no complaint could be filed under Section 63 of the Copyright Act (1957);
• the story of the film bore no similarity whatsoever with Shyam’s story; and
• Shyam had not seen the film so could not comment on it.

After hearing the parties, the Supreme Court quashed the criminal complaint based on the following grounds:

• The title of Shyam’s story did not qualify as a “work”;
• The title contained no original feature that could be attributed to Shyam; and
• Copyright does not subsist in the title of a literary work and Shyam was not entitled to relief in this regard, except through an action for passing off or in respect of a registered trademark consisting of such title.

There have been several trademark cases in the past based on film titles, which Shyam does not appear to have considered. As a practice, most filmmakers apply for registration of the title of their film as a trademark; if distinctive, they can be leveraged for other purposes. Indian courts have granted protection to well-known films and distinctive titles and character names based on trademark law. This case appears to be part of a growing trend in the Bollywood film industry, whereby individual script writers have taken action against filmmakers for usurping their scripts. Shyam probably went too far by claiming copyright in a subject matter protected only under trademark law.

Adheesh Nargolkar, Shailendra Bhandare and Raj Rao, Khaitan & Co, Mumbai