Arnab Goswami has recently been threatened with legal action by Times Now over the use of the phrase, '"nation wants to know". Times Now, where Goswami worked in the capacity of the editor-in-chief, has asked the journalist not to use the phrase on his upcoming news channel Republic TV, which is expected to be launched shortly.
Times Now's contention that it owns the phrase, "nation wants to know", was refuted by Goswami who argued that the phrase belongs to "every citizen of the country" and cannot be trademarked. The controversy has raised an interesting issue of ownership over catch-phrases.
A trademark protects marks (such as symbols, signs and logos) which are capable of distinguishing the goods/services of an individual/company from those of others. The function of a trademark is to act as a source-indicator since it identifies the origin (source) of a particular good/service. Catchphrases, such as slogans, can be registered as trademark when used 'in the course of business', i.e. in the sale of goods or provision of services. An example of a popular catchphrase is 'Just do it' by Nike. The phrase, 'Just do it', by itself is an expression used commonly by people but through its exclusive use in business by the popular sports company, the phrase has come to be associated with brand Nike. A catchphrase can be trademarked when it has acquired distinctiveness in the mind of the public such that people would associate it with a particular individual/company.
Times Group filed for trademark registration over nation wants to know in November 2016, this was around the time when Goswami was leaving the channel, owned by the Times Group, to run Republic TV owned by Goswami's company, ARG Outliers. While the trademark registration by Times Group was pending, ARG Outliers also sought to trademark the same phrase, in response to which Times sent a legal notice to Goswami. Before determining who owns trademark over nation wants to know, it is worth exploring whether the phrase is capable of being registered as a trademark.
An absolute ground to refuse registration of a particular mark under Indian Trademarks Act is that the mark has become "customary" in the "established practices of the trade" (in this case, the journalism sector). Some argue that the phrase, nation wants to know, is a phrase employed by journalists and cannot be trademarked by any media house in particular. Going by this interpretation, neither Times Group nor Goswami can register the phrase as trademark and consequently, any journalist may use this phrase. This interpretation will also provide an effective remedy to Goswami, since Times Group cannot restrain Goswami from using this phrase in future. The only way for Times to rebut this argument is to claim that Nation Wants to Know is in fact not a customary usage in trade and the phrase has been popularised in the journalism industry through its use on Times Now by Arnab Goswami. Times could reason that it was only after the phrase was made popular on Times Now that other journalists started using the phrase. This argument could possibly fly because there is no denying the journalistic appeal of the phrase which could have led other media-houses to use it to create an impact in their reporting, especially after seeing the success which Goswami had with the phrase. In this case, Times might succeed in getting trademark registration over the phrase.
However, there is another aspect to be considered. If Times were to argue that the phrase was popularised by Goswami while he was employed with Times, Goswami may be able to fight for proprietorship of the phrase on grounds that it was he (Goswami) who made the phrase what it is today in the field of journalism and therefore, trademark over the phrase should belong to him.
Times Now claims that its contracts with employees (including journalists) incorporate a clause that all intellectual property created during the course of employment would vest with Times Now. Such terms in employment contracts are not uncommon and exist undoubtedly to protect the employers' interests. Therefore, it would seem that even if nation wants to know was indeed brought into vogue by Goswami, it is Times Now which would have ownership rights over usage of the phrase.
A possible line of argument which Goswami could then take is that the phrase is part of Goswami's image rights.
Image rights (also known as personality rights) refer to the rights of a person (generally, a public figure) over the commercial use of their name, image, likeness and aspects of one's personality.
For instance, Goswami could argue that the public associates nation wants to know not with brand Times Now but with brand Arnab Goswami, and that use of the phrase by anyone other than Arnab Goswami violates Goswami's image rights. In order to successfully claim image rights over the phrase, Goswami would have to prove that the phrase, nation wants to know, is an aspect of his personality. If this argument were accepted by Indian courts, Goswami could not only continue to use the phrase, but would also be able to restrain others from using it without his consent.
What could work against Goswami is the fact that his own company, ARG Outliers, tried to trademark the phrase in January 2017. If Arnab Goswami honestly believed that the phrase belonged to the people, then why would he try to assert a trademark over the phrase? And if Goswami's application was retaliation against the trademark application filed by Times, a better approach for Goswami would have been to instead oppose Times' application, on grounds that the phrase forms part of journalism lingo. As an opponent, Goswami could have also relied on Section 11 (10) of the Trademarks Act, which states that the Registrar shall take into consideration "bad faith" of the applicant when registering a mark; Goswami could have argued that the fact that Times' trademark application coincided with Goswami's resignation from Times Now is indicative of bad faith on the part of Times Now.
Interestingly, this is not the first time that a TV channel has attempted to prevent former employees from using their signature gestures/lines upon termination of employment. When famous comedian, Kapil Sharma, left Colors for a new show on Sony, Colors sent Sharma a legal notice restraining him from using 'Babaji ka Thullu' (Kapil's signature snake-hood gesture) on his new show. It is unclear how the matter was resolved between Kapil Sharma and Colors; in this case, however, the best way forward for Arnab Goswami would be to lend distinction to another phrase, thereby giving Indian journalism another literary gem in the process.
Devika Agarwal is a Delhi-based lawyer who focuses on Intellectual Property Rights.
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Updated Date: Apr 21, 2017 10:15:53 IST