This piece has been authored by Apoorva Singh Rathaur , Dharmashastra National Law University, Jabalpur
Introduction
Taglines, also known as slogans, are a form of advertising that is used to create a memorable phrase that represents a product or brand. Taglines are regarded as an essential component of a business’s marketing plan; they are used to leave a lasting impression on customers and are a crucial part of a company’s brand identity. Some examples of taglines include “Just Do It” for Nike, “Think Different” for Apple, and “Because You’re Worth It” for L’Oréal.
In India, taglines are subject to protection under the Trademarks Act, 1999. To be eligible for trademark protection, the tagline must be distinctive and not descriptive of the goods or services it represents. Even though there has been an inclination for the inclusion of taglines under the definition of “literary works,” as stated in Section 2(o) of the Indian Copyright Act, 1957, the courts have been hesitant towards such an inclination, for a simple reason: The quest for copyright protection often brings taglines into a delicate balance with the principles of freedom of speech and expression As businesses and brands invest significant resources in crafting memorable taglines to define their identity and engage consumers, a pivotal question arises: Can the protection of taglines under copyright law inadvertently stifle the free exchange of ideas and expression? This article delves into the heart of this conundrum, exploring the delicate balance between protecting the intellectual property of taglines and preserving the unfettered exchange of ideas that underpins democratic societies.
Judicial Assessment
In Pepsi Co. Inc. And Ors. Vs. Hindustan Coca Cola Ltd. and Anr., ., the Delhi High Court, while deciding whether distinctive slogans used by companies could be protected under the Indian Copyright Act, observed and held that no protection could be granted to taglines under the Copyrights Act, 1957, because they fail to satisfy the standards for originality required to qualify as “literary works.” Alternatively, the court observed that protection could instead be granted under the Trademarks Act, 1999, for an action of passing-off under section 27.
A similar opinion was adopted by the “Delhi High Cour” in Godfrey Phillips India Ltd. Vs. Dharampal Satyapal Ltd. And Anr.. Herein, the Court stated that since taglines are merely a combination of common words, devoid of any unique literary or artistic creation, therefore they do not fall under the ambit of “literary works” as defined in Section 2(o) of the Copyrights Act, 1957.
Trademark v/s Copyright
Trademark protection in India is regulated by the Trademarks Act, 1999, and is available for individuals and businesses to register their names, logos, or symbols for the purpose of securing exclusivity and distinctiveness for their goods or services. Trademark registration is initially valid for 10 years from the application date and can be renewed every 10 years. On the other hand, copyright protection in India is governed by the Copyright Act, 1957, and safeguards original creative expressions like artistic, literary, and dramatic works. Its primary aim is to protect the interests of creators by granting them exclusive rights to use and distribute their creations. Copyright registrations are valid for the entire lifetime of the creator and extend for 60 years after their death, requiring no renewal.
Therefore, this lack of renewal requirements may make copyright protection an attractive option for safeguarding taglines and other creative works in India.
Arguments against such Protection
Opponents of extending copyright protection to taglines argue that taglines lack the necessary creativity and are essentially concise advertising phrases. They contend that such protection could stifle free speech and expression because it may discourage the use of common phrases and expressions to avoid potential copyright infringement. Copyright laws grant exclusive rights to copyright holders,potentially limiting others’ use of the copyrighted material. This concern arises from the fear that people may be hesitant to employ commonplace phrases and expressions, which could impede the open exchange of ideas, information, and creativity.
The Chilling Effect
The chilling effect refers to the stifling of legitimate speech through excessively broad laws. It does not directly affect free speech but has an impact on self-censorship. Therefore, the restriction imposed by the legislation must be given the narrowest possible form. Overbreadth and vagueness together give rise to the problem of the chilling effect. The concept of the chilling effect was first conceived in 1965 by Justice William Brennan in Lamont v. Postmaster General, where it was referred to as a deterrent effect on freedom of expression. The Supreme Court of India recognised this concept in the case of R. Rajagopal v. State of Tamil Nadu which is considered to be a landmark case on freedom of expression and right to privacy. Additionally, in the case of S. Khushboo v. Kanniamal, the Supreme Court of India held that laws should be construed in such a manner as to avoid chilling effects on freedom of speech and expression.
The opponents of extending copyright protection to taglines contend that such protection may have a chilling effect on the free speech. For instance, if a social or political activist wants to use a famous tagline, like “Think Different” by Apple, to promote unconventional thinking, but Apple owns the copyright, they could stop its use. This fear of legal action might lead the activist to self-censor, potentially suppressing their freedom of speech.
Safeguards against Copyright Protection
Providing tagline protection under the Copyright Law may not necessarily lead to a chilling effect on freedom of speech and expression because copyright protection is not absolute. There are ample safeguards provided by judicial pronouncements as well as the Copyright Act, 1957.
The first such safeguard is the idea-expression dichotomy. By keeping ideas out of the scope of copyright protection, each individual is given the freedom to develop their ideas through independent modes of expression. The Bombay High Court in Indian Express Newspapers (Bombay) Pvt. Ltd. v. Jagmohan Mundhara held that ideas, information, natural phenomena, and events on which an author expends their skill, labour, capital, judgement, and literary talent are common property and are not subject to copyright.[Editor5]
The second such safeguard is the merger doctrine. This doctrine provides that when the expression is the idea, and vice-versa, and there is only one way to express the underlying idea, the idea will merge with the expression to make them indistinguishable. Consequently, the expression becomes non-copyrightable. In Mattel, Inc. &Ors. v. Jayant Aggarwala & Ors., the Delhi High Court explained this doctrine in the following words:
“In the realm of copyright law, the doctrine of merger postulates that where the idea and expression are inextricably connected, it would not be possible to distinguish between the two. In other words, the expression should be such that it is the idea and vice-versa, resulting in an inseparable merger of the two. Applying this doctrine, courts have refused to protect (through copyright) the expression of an idea, which can be expressed only in a very limited manner, because doing so would confer a monopoly on the idea itself.”
Therefore, the courts have used this doctrine as a tool to protect the expression of ideas that can only be expressed in a limited manner from being monopolised.
Additionally, Section 52 of the Copyright Act, 1957, prescribes the idea of fair dealing. The section enumerates certain specific activities or works that are excluded from the scope of copyright infringement. It allows for the use of copyrighted works for purposes such as criticism, commentary, news reporting, teaching, scholarship, or research.This means that individuals and organizations may use copyrighted taglines for these purposes without permission from the owner of the copyright. The Kerala High Court, in Civic Chandran v. Ammini Amma held that even extensive copying of copyrighted material is permitted under the fair dealing exemption if the copying serves the public interest.
International Perspective on protecting Taglines under Copyright Law
Even though the laws governing intellectual property vary substantially from one country to another, a trend of similar opinions has been observed in the judicial pronouncements of many courts, including those in the USA, the UK, and other countries in the matter of granting copyright protection to taglines. The US Patent Trademark Office (USPTO) has stated that slogans cannot be copyrighted because they lack originality, and therefore, the USPTO will not approve the registration of any slogans, even if they are unique, memorable, or have clever wordplay. However, taglines can claim protection under US trademark law, given that they are either inherently distinctive or creative or have developed enough secondary meaning to immediately bring a product or service to mind. A similar position exists in the United Kingdom where taglines are protected under trademark law instead of copyright law. However, the courts in Italy have a slightly different stance on granting copyright protection to taglines. According to the Italian Supreme Court, in order to trigger copyright protection a tagline should be able to convey an easily recognizable and immediately understandable message capable of capturing consumers’ attention and strengthening or modifying their opinions – without relying on the evocative power of the name and/or the trademark of the advertised product and/or its manufacturer.
Conclusion
The aforementioned judicial pronouncements and statutory provisions have acted and continue to act as a shield, protecting and promoting speech and expression. Furthermore, copyright protection only applies to the specific creative work that is copyrighted. For example, if a company copyrights its tagline “Think Different,” it only has protection for that specific tagline. If another company uses a similar tagline such as “Think Differently,” the copyright protection will not apply. Therefore, while it is important to be mindful of the potential risks associated with copyright protection of taglines such as the proliferation of frivolous copyright infringement lawsuits, etc., it is unlikely that it would have a significant impact on freedom of speech and expression, and in fact, as reasoned by the US Supreme Court in Harper & Row v Nation Enterprises copyright is also an “engine of free expression”: it may even encourage greater creativity and innovation in the realm of branding and marketing. Ultimately, the key is to strike a balance between protecting intellectual property rights and ensuring that the public can freely express themselves.