Bombay Stock Exchange’s trademark claim against comedian Kunal Kamra violates freedom of speech

The Bombay Stock Exchange (BSE) has warned that it will take legal action against comedian, Kunal Kamra, for using a morphed image of BSE’s building (the iconic Phiroze Jeejeebhoy Towers in Mumbai). Kamra had used morphed images of a few buildings in India including Phiroze Jeejeebhoy Towers in his social media post, dissuading citizens from voting for Prime Minister Narendra Modi.

A fake morphed photo against a political party using BSE building has been shared by @kunalkamra88.BSE is extremely disappointed at unfortunate,unauthorized & illegal use of BSE buildg fr nefarious activities.BSE reserves right to take appropriate legal action agnst @kunalkamra88

— BSE India (@BSEIndia) April 19, 2019

The BSE’s claim is that by using the morphed image of BSE’s building, Kamra has infringed BSE’s trademark over the building. Given that buildings have recently been conferred trademark protection in India, it is important to determine the limits of the exercise of a trademark where it risks violating freedom of speech. Trademark protection for architecture Trademark protection for buildings in India was unheard of until June 2017, when Mumbai’s Taj Mahal Palace obtained trademark registration over its building. A year later, BSE became the second building in India to be granted a trademark over its building. Trademark protection for buildings is common in countries abroad where trademark claims have been made on Chrysler Building and Flatiron Building in New York City as early as the 20th century. Other landmark buildings which are trademark protected include Sydney Opera House ( Trademark 1577707) in Australia and Eiffel Tower in Paris. Under Indian Trade Marks Act, 1999 a mark can be registered as a trademark if it fulfills the following conditions: It is capable of being represented graphically and it is capable of acting as a source indicator, i.e. it can distinguish the goods and services of one person from those of others. The design of a building is generally protected under copyright law as copyright protects an underlying artistic work which includes work of architecture. While the objective of copyright is to protect a ‘creative expression’, be it a poem, drawing or song; the idea behind a trademark is that it indicates the origin of goods/services. For instance, the Whatsapp logo and the word ‘Whatsapp’ used by the popular messaging app distinguishes the service from other messaging apps like Telegram and Hike. While one might argue that BSE would have the right to prevent unauthorised use of the image of the BSE building under copyright law (even in the absence of a trademark on its building), the exercise of such a right is not permitted in cases which are covered by the exceptions in Indian copyright law. [caption id=“attachment_4214725” align=“alignleft” width=“380”]  Representational image. Reuters.[/caption] Under section 52(1)(s) of Indian Copyright Act, 1957 the making or publishing of a painting/drawing/engraving/photograph of a work of architecture is a copyright exemption; the reason behind this exception is not clear. Under this exception, if an artist were to make a postcard with the image of the Phiroze Jeejeebhoy Towers, this would not be treated as copyright infringement as paintings of a work of architecture are specifically exempt from copyright infringement claims. Section 52(1)(u) treats the inclusion (in any cinematographic film) of any artistic work which is permanently situated in a public place or where the inclusion is only by way of background/incidental to the principal matters represented in the film, as a copyright exception. Therefore, the inclusion of the Phiroze Jeejeebhoy Towers in a film like Wake Up Sid (the script of which is not related to the building in any way) will not attract copyright infringement claims. By contrast, trademark law does not incorporate these exceptions, probably because trademark over architecture was not contemplated under the Indian Trademarks Act at the time it was enacted. Therefore, where an artist paints the image of the Phiroze Jeejeebhoy Towers on a postcard or a film producer films a scene with the Jeeejeebhoy Towers in the background, these may prima facie be trademark infringement. Another important consequence of a trademark is that a trademark right can be exercised in perpetuity, whereas, copyright can be exercised during the life of the author and for sixty years after the death of the author (‘author’ in the context of an artistic work refers to the artist). Did Kamra’s use of the image of Phiroze Jeejeebhoy Towers infringe BSE’s trademark? In determining whether BSE has a valid claim against Kamra, various issues arise—for instance, was the use commercial or non-commercial. Generally in cases concerning intellectual property (IP), limited non-commercial use is permitted. For instance, photocopying a copyrighted research article for one’s personal use is not considered copyright infringement. On the other hand, if someone were to make several photocopies of the research article and sell them to the public, the use would be commercial and copyright infringement.

Kamra used the image of the Phiroze Jeejeebhoy Towers in his Twitter post, which is not a commercial use of the image. Interestingly, in cases of trademark infringement, the implications of the distinction between commercial and non-commercial uses are not clear and even non-commercial use of a trademark may be prohibited on grounds that the use tarnishes the reputation of the mark.

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However, irrespective of whether the use is commercial or not, I would argue that a trademark can be enforced only when it is used by an unauthorised person “in the course of trade” (section 29 of Indian Trade Marks Act). In the instant case, the use of the image of the trademarked building cannot be considered “in the course of trade”. One may argue that Kamra used the image in a satirical post which was part of his trade, i.e. occupation as a stand-up comedian. This is a far-fetched argument since the post could very well have been written by an ordinary internet user in light of the ongoing election season in the country. BSE claims that its trademark was infringed by Kamra as the comedian had used the trademark for “nefarious activities”. If BSE’s claim is considered valid, it will severely restrain citizens from exercising their right to freedom of speech and expression under Article 19(1)(a) of the Constitution of India, a right which may be restricted only on specified grounds under Article 19(2). The consequence of upholding BSE’s claim is that it will also affect other forms of speech and expression; for instance, memes which carry the image of trademarked buildings and used to convey an idea, can also be similarly prohibited. BSE is yet to frame guidelines for the use of the trademarked building in non-commercial contexts. The BSE should note that legally it cannot restrain people from using its trademark on the Phiroze Jeejeebhoy Towers when the use is not in the course of trade. While framing guidelines, BSE should take into account the terms relating to the use of the image of trademarked buildings such as Eiffel Tower which allows views of the building “taken by private individuals for private use” without requiring prior consent. Similarly, Sydney Opera House requires prior permission for any image or film of the building only when such use is ‘commercial’ (i.e. used to advertise any products or services). With trademarks over buildings being granted in India, it may be only a matter of time before legal disputes involving the use of such marks become common. It may, therefore, be prudent for law-makers in India to contemplate amendments in the trademark legislation to build fair use exceptions (similar to the copyright law) to deal with such cases. (The writer is an intellectual property rights lawyer.)