Intellectual Property Protection and Theme Based Food Businesses

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The significance of protection of Intellectual Property Rights in business has been recognized for a long time. The food industry, especially restaurants and cafes have been striving to give utmost importance to their IP alongside their attempts to build their business and reputation worldwide. However, there are a lot of cafes and restaurants which have come into the limelight on account of the themes they represent. Many food businesses have recently been using names or themes of different Movies, TV shows, books, or brands, to attract consumers. Some well-known cafes include the Hello Kitty Café in Sydney, the Harry Potter-inspired café in Australia and Philippines, the Pokémon-themed café and DC Comics Super Heroes Café in Singapore.

However, it is important to note that the business of running a popular themed café is not easy as it sounds, and that it comes with a lot of hurdles like possible Intellectual Property violation suits. Recently, in the case of Warner Bros Entertainment Inc. v. Ishant Kashiwal trading as the Hogwarts Kafe & Ors., the plaintiffs had filed a suit against the defendant for injunction and damages for infringement of Registered Trademarks, passing off and unfair competition under Section 134(1) read with Sections 27 and 29 of the Trade Marks Act of 1999. The Plaintiff, Warner Bros. Entertainment is well recognized in the field of entertainment; and is also the prior adopter, user and registered proprietor of the well-known trademarks “Hogwarts”, “The Wizarding World” and “Harry Potter” in relation to various goods and services since the year 1997. The Defendant on the other hand, started a restaurant by the name “The Hogwarts Kafe ” which was identical to the plaintiff’s well-known trademark, and had also used a key element of “The Wizarding World” properties. The Delhi High Court, before which the suit has been filed, has now restrained the defendants from using the infringing marks at their restaurant. While this is an interim injunction pending the trial, and the final outcome is to be decided, it is unlikely that it would go against the plaintiff.

The work of well-known, globally reputed companies in protecting their IP does not end here. Another example of a similar situation is the massive number restaurateurs and businesspersons who have come forward with the idea of a F.R.I.E.N.D.S.-themed café and restaurants, owing to the immense popularity of the show as well as the café in the show- the Central Perk. As discussed in the case above, it is indeed an infringement when a registered trademark is used without a license or is copied. However, it is important to discuss as to whether a theme can be copied, or whether it is entitled to protection under the Copyright Act of India.

The Copyright Act of 1957 does not protect ideas. The Law only protects expressions. The TRIPS Agreement also stands on the same line while granting protection to expression only, and not ideas, methods or concepts. The World Intellectual Property Organization (WIPO), in consonance with TRIPS Agreement, also lays down that it is the expression which is protected under Copyright laws and not ideas or concepts. The separation of ideas from its expression has also been effectively discussed in various judicial pronouncements in India like that of the case R.G. Anand v. Deluxe Films (AIR 1978 SC 1613), where the Supreme Court laid down the following propositions in consonance with idea-expression dichotomy:

i.                There can be no copyright in an idea, subject matter, themes, plots or historical or legendary facts.

ii.              Where the same idea is being developed in a different manner, it is evident that the source being common, similarities are bound to occur. In such a case the courts should determine whether or not the similarities are fundamental or substantial with respect to the aspects adopted in the copyrighted work.

iii.             One of the certain and the efficient tests to determine whether or not there is a copyright infringement is to observe as whether the reader, spectator or the viewer after having read or seen both the works is clearly of the opinion and gets an obvious impression that the subsequent work seems to be a copy of the original.

iv.             Where the theme is the same but has been presented and treated in a different way so that the subsequent work becomes a completely new work, there can be no question of violation of copyright.

v.              Since a copyright violation amounts to an act of piracy it must be proved by clear and persuasive evidence after applying various relevant tests.

vi.             Even though the work appears to be similar and the intention to copy the original is quite evident, the coincidences appears that the two works are clearly incidental so no question of infringement of the copyright comes into existence.

It is also pertinent to note that such adoption of themes by cafes or restaurants can also come under the concept of “Adaptation” under the Copyright Act. Section 2(a) of the Copyright Act defines Adaptation, and it basically means the modification made to an original work so as to create a new work or the process of reorganizing. According to the act, adaptation is one of the exclusive rights of the Author of the original work, which he alone is entitled to, unless and until he licenses the same to others for recreation of his original work. Therefore, if the person recreating or creating an adaptation does not have the authorization to do so, it would infringe the copyright vested in the author of the original work.

In the instance of the TV show F.R.I.E.N.D.S, the word mark “FRIENDS & THE TELEVISION SERIES” has been registered by Warner Bros under the Trademark registry, and therefore, any similar trademark would be a trademark infringement. Additionally, even if it was not registered, the court might take into consideration that the mark is well-known and that it has a trans-border goodwill and reputation and even though the show went off-air a long time back, the popularity in the usage of the F.R.I.E.N.D.S merchandise by the public worldwide, has further strengthened it as a distinctive mark. It is also important to note that the trademark registry has refused the registration of the FRIENDS Café, which used an identical logo as that registered by the Warner Bros., and the latter has also opposed another trademark “F.R.I.E.N.D.S Frankies” as it is identical to their registered trademark.

It is though valuable to note that as the word ‘FRIENDS’ is in itself a common dictionary term, and there are several registrations under the word mark or logo for “FRIENDS” including those for catering services, sandwich corners as well as food courts. Therefore, it is the use of the word as a ‘logo’ in the specific style that it appears on the show and its titles that would render it really sensible to pursue the claim as the business is trying to ride on the reputation of the show to profit from its business. The intention of the owners of such cafes would be to offer an ardent fan of the show to have a good time and live life in the coffee shop like the characters of the series but such an intention does not hold water if there is no license that has been received to so from the IP owners.

There are unfortunately several ways in which entrepreneurs unknowingly infringe upon someone else’s intellectual property. However, the infringement would not be deemed as innocent infringement when it comes to the use of well-known copyrighted works or marks as themes in businesses. The failure to respect Intellectual Property rights can have steep consequences for the businesses, including reputational and economic damage. Therefore, it is important that such businesses like cafes obtain licenses from the respective IP owners if they choose to rely on an existing or fan-based concept. Here, it is pertinent to note that the idea to give a wholesome experience to the public is always welcomed, but such ideas should not be utilized to infringe upon the IP of other creators. 

This article has been authored by Ms. Anjana Gopinath.

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