Protection of advertising campaign and its elements under Intellectual Property Law

The Delhi High Court vide order dated 07.07.2022 concluded on whether an advertising campaign and its various elements be protected under intellectual property law, and if so, in what manner.

I. FACTS OF THE CASE

The Plaintiff is a company engaged in the business of manufacturing and trading of health supplements, nutraceuticals and food products. One of the products of the Plaintiff was sold under the Muscle Blaze (MB) trademark. The Defendant No. 1 is a company involved in the business of manufacturing and merchandising of pharmaceuticals, ayurvedic and cosmetic products under the house mark VINI’, and claims to have a strong presence in the deodorant and perfume segment in the Indian market.

The Plaintiff claims that in March 2018, the Plaintiff launched an advertising campaign in the form of a video titled “ZIDDI HOON MAIN” in Hindi and Tamil on various online platforms including YouTube etc. Similarly, further videos were released in May, 2018 and November, 2018. The videos released by the Plaintiff used various forms of the words ‘ZIDD’ and ‘ZIDDI’. The trademark ‘ZIDD’ and slogans consisting of the mark `ZIDDI’, in various variants and marks associated therewith are also registered in various classes. A few examples of the ‘ZIDDI’ marks and slogans used by the Plaintiff are – ‘ZIDDIS DON’T WAIT’, ‘ZIDDI HOON MAIN’, ‘ZIDD WARS’, ‘NAAM HAI ZIDDI’, ‘PHIR SE ZIDD KAR’.

In January, 2022, the Plaintiff came across advertisements of a defendant of a deodorant product named ‘REALMAN’ which, as per the Plaintiff, were conceptually, visually similar to the Plaintiff’s advertisements. It is also the case of the Plaintiff that for the said advertisement campaign, Defendant No.1 has adopted the mark/tagline ‘ZIDDI PERFUME’ which is deceptively similar to the mark of the Plaintiff.

II. CONTENTIONS  OF THE PLAINTIFF

The Plaintiff claimed that the main elements of its commercials included various slogans/expressions containing the word ‘ZIDDI’, the distinct style of writing the word ‘ZIDDI’ in black and yellow combination, and the portrayal of various characters in a dark gym setting portraying resilience and perseverance and depicting how workout is done.

The Plaintiff claimed that a comparison of the advertisement campaign of the Plaintiff and Defendant No. 1 would show that the entire concept, look and feel of the advertisement as well as the expression ‘ZIDDI’ in a colour combination of black and yellow have been copied by the Defendant No. 1. Even though the goods of the Plaintiff and Defendant are different, the usage of the tagline ‘ZIDDI PERFUME’ by the Defendant No. 1 would create a connection between the two entities in the minds of the consumers.

The Plaintiff relied on decision of the Calcutta High Court in Shree Venkatesh Films Pvt. Ltd. and Ors. v. Vipul Amrutlal Shah (G.A. No. 2153 of 2009) to claim that even if some portion of the film or the idea behind it is lifted, there would be infringement of copyright in the cinematograph films as copyright exists in the script, screenplay, sound track, dialogue video images, lyrics, etc

III. ARGUMENTS OF THE DEFENDANT NO. 1

The Defendant No. 1 argued that the Plaintiff and Defendant No. 1 are not competitors and therefore, there is no account of confusion between people upon seeing the two advertisements. They further claimed that the word ‘ZIDD’ or ‘ZIDDI’ have been used in earlier advertisement campaigns and films such as in the movie ‘Mary Kom’, an advertisement of Parle-G products, etc.

The Defendant No. 1 further claimed that the Plaintiff’s advertisement contained various elements including fitness activities, over which no monopoly can be claimed. Furthermore, the scenes depicting people working out using a rope are common to various advertisements.

The Defendant no. 1 also presented the following dissimilarities between the two advertisement campaigns:

1. The Plaintiff presented the protagonist of the advertisement as ‘ZIDDI’ or adamant/stubborn, etc., whereas the Defendant No. 1 attributed the said quality to the product rather than the protagonist.

2. No similarity in the theme of the two advertisements.

3. The word ‘ZIDDI’ is used in relation to the quality of the perfume which is long lasting despite of a heavy workout, and this descriptive usage is protected under Section 30 of the Trade Marks Act, 1999.

The Defendant No. 1 placed their reliance on ‘R.G. Anand v. Deleux Films [AIR 1978 SC 1613]’ to argue that no copyright subsists in an idea and, unless and until, there is lifting of frames or specific images which form part of the film, there cannot be any violation of the copyright in a cinematograph film.

IV. ANALYSIS OF THE COURT

A. Whether advertisement campaigns are capable of getting protection?

The Court concluded that the present case was based on the following elements:

i. Concept, look and feel of the expression ‘ZIDD’ and ‘ZIDDI’ used by the Plaintiff for its advertising campaigns;

ii. Copying of the few frames from the advertising commercials amounting to copyright infringement in the advertisement campaign; and

iii. Passing off by the Defendant of the expression ‘ZIDDI PERFUME’

The Court observed that while deciding whether the elements of the Plaintiff’s advertisement campaign merely constituted an idea or did they constitute expression of an idea, it is pertinent to note that the manifestation of an idea into an expression in an advertisement is a long process which involves not only ‘sweat of the brow’, but even more. It requires an understanding of the product, its qualities, features, what is to be highlighted, manner of highlighting the product, capturing of the theme, weaving of a story, adding creative elements, deciding on endorsees, how to capture the story, shooting of the video and other imagery, studio set up and finally connecting the entire campaign to the consumer. Thus, the Court decided that an advertising campaign including commercials are undoubtedly protectable under intellectual property law.

B. What is the test for distinctiveness of an advertisement campaign with the goods and services of a proprietor?

The Court applied the principles established in ‘R.G. Anand v. Deleux Films [AIR 1978 SC 1613]’ that in order to prove plagiarism, it must be shown that the Defendant has taken a substantial portion of the matter from the original work and has made unfair use of the protective works.

Applying the same principles in the present case, the Court opined that the Plaintiff had chosen a unique and creative way of using ordinary known words ‘ZIDD’ and ‘ZIDDI’ to portray how people who consume the products of the Plaintiff are able to persevere and face challenges in life, and the words are quite distinctive to the products and business of the Plaintiff. Thus, the Plaintiff’s ‘ZIDDI’ campaign and connected videos are not merely meant for marketing and promoting the product, but in fact denote or connote the Plaintiff’s business itself, and is extremely distinctive of the Plaintiff’s products and business.

The Court concluded that in the case of an advertisement campaign, if it signifies the source and becomes distinctive of the Plaintiff, the distinctive elements of an advertisement campaign can be granted protection. However, the threshold for establishing distinctiveness would be quite high.

C. Whether there is a substantial similarity between the works of the Plaintiff and Defendant No. 1?

The Court perused both the advertisement campaigns of the Plaintiff and the Defendant No. 1 and concluded that that the viewing of the same is likely to give an ordinary viewer an impression that the two commercials are connected or emanating from the same source. The overall theme of dark setting, persons working out, use of ‘ZIDDI’ and ‘ZIDD’ and colour of yellow and black is present in the Plaintiff’s and Defendant No.1’s campaign. The third-party videos relied upon by Defendant No.1 using the mark ‘ZIDDI’ or the concept of ‘ZIDD’ are completely distinct from the Plaintiff’s commercials and Defendant No.1’s impugned commercials.

The Court further opined that though no monopoly can be granted over the concept of ‘ZIDD’, the portrayal of the same by picking almost identical elements cannot be ignored by the Court. There can also be no monopoly or exclusivity on showing a muscular person working out in a gym but the expression of the idea has to be different. The portrayal of a person using a punching bag also cannot be monopolized but the expression has to be different. In the impugned commercials, the Court opined that the expression is a colourable imitation of the Plaintiff’s advertising commercial.

The Court stated that Defendant No.1 is entitled to use the word/expression ‘ZIDDI’ or connote the quality thereof, however, the manner in which it is used in the same colour combination, in the same dark background depicting muscular persons working out in a gym using a rope and punching bag is very evocative of Plaintiff’s advertisement campaign.

Thus, the Court concluded that the Court need not see the individual elements that have been copied or whether they can be monopolized, but attention should be given to the overall effort of the Defendant No. 1’s commercial has on an ordinary viewer. The impact of the Defendant No. 1’s commercial will be in a fleeting moment on a viewer rather than a detailed microscopic analysis, and thus the same may not be conducted by the Court as well.

V. DIRECTIONS OF THE COURT

Based on the above analysis and findings, the Court concluded that there is a considerable chance than an ordinary viewer familiar with the Plaintiff’s advertisements and its products may connect the Defendant No. 1’s products or presume some sort of affiliation with the Plaintiff due to the commercials.

The Court observed that the Plaintiff’s grievance is justified in these facts as the theme, expression, and various distinctive elements of Plaintiff’s advertisement campaign have been imitated by Defendant No.1 in their advertisement campaigns. The similarity in the theme and expression is quite prominent and palpable when one views the Plaintiff’s commercial and thereafter views the Defendant No.1’s commercial, especially owing to the overall look and feel of the two campaigns.

Thus, the Court directed the Defendant to pull down the commercials from all platforms that are available to the public. The Court also gave an option to the Defendant No. 1 to modify the impugned commercials to remove the objectionable frames and re-launch the commercials as long as it is distinct from the campaign of the Plaintiff. The Court also granted the right to the Defendant No. 1 from using the word/expression ‘ZIDD’ or ‘ZIDDI’ in a manner so as to signify or describe long lasting nature of the deodorant/perfume in a manner which is not similar/identical to the Plaintiff.

       VI. CONCLUSION

Vide the above judgment, the Court laid down an important principle that advertising campaign including commercials and their specific elements are undoubtedly protectable under intellectual property law. Furthermore, through this judgment, the Court tried to draw a harmonious conclusion between the principles of copyright and trade mark law, especially in the case of advertisement campaigns wherein a cinematograph work may be used as a source identifier. It laid down that an advertising campaign can become distinctive to a proprietor, however, the threshold for establishing such distinctiveness would be quite high than other conventional intellectual property