Have you wanted to visit the Maclaren’s Pub or Central Perk and live your moment from How I Met Your Mother or Friends? Have you wanted to taste the Bertie Bott’s Every Bean Flavour from the Harry Potter Series or wished the Bat Mobile was real?! I’m sure we all have wanted to live or rather re-live some form of fantasy and in fact, some of it has been made possible! However, as someone working in the field of intellectual property, I’m forced to think of the fictional products in the real world from the IP perspective.

Walt Disney once said that fantasy and reality often overlap and this is rather true in the present day when fantasy characters and products are finding a place in the real world and vice versa. There are a few questions that strike me as important – Would products or services in the real world created from the fictional world amount to copyright infringement? Also, intentionally or otherwise, wouldn’t it create some form of connection with the fantasy world, thus luring consumers?

Fantasy products in the real world

On researching, I was quite amused to find out that the conundrum on fictional products and services in the real world has a technical term and is referred to as Reverse Product Placement. In my opinion, there can be two scenarios; one where the creator/owner of the fictional work replicates the same in the real world and the other where a person other than the maker of such work does so. In the first scenario, all is good because the creator of fictional work is enjoying the benefits of his works in real-life products.

The problem arises in the second case wherein a person is trying to make a commercial gain on the basis of another’s work. The kind of work I’m referring to is limited to books and movies and the only protection that can be sought for these works is under the copyright law. Since the law in India clearly states that the only person who can reproduce the work in any material form is the owner of the work, the law on this point is abundantly clear.

I found some exciting fantasy world products that are actually real – Bertie Bott’s Every Flavor Beans, Duff Beer from Simpsons, Willy Wonka Chocolate Bar, Central Perk was open to fans for a month to celebrate the 20th anniversary of the Friends series and the list goes on!

Real trademarks in the fantasy world

References to real-world trademarks (Starbucks coffee instead of just coffee or iPhone for a phone) in books and movies are not uncommon since it helps people connect or relate to it. Does the trademark law prevent the use of such trademark? With specific reference to India, the law clearly states that registered trademark is infringed by spoken use of the words and also by their visual representation.

Though the law doesn’t provide an exception for cases of infringement where the mark is not used in a context likely to defame or cause harm to the reputation of the trademark, it is for the trademark owner to decide whether the act is an infringing one.

In India, there have been instances of trademark owners filing suits on the grounds that it affects reputation. The manufacturers of Roohafza filed a suit against a movie because the product was shown in poor light, thus damaging their reputation. There are popular Bollywood numbers (Fevicol and Zandu Balm) where registered trademarks have been used and objected to but the parties managed a settlement in these cases.

In the US, there was an interesting case on the use of the registered trademark “Clean state” in The Dark Knight Rises. The actual software product is one that erases all the data on a computer and in the movie, it was used as software that could erase all information about a person’s past. The Court termed this as a case of Reverse Confusion where a later user’s product is assumed to be the products of the prior user and create an impression that they are connected. However, that in order to be able to make a case, the prior user will have to show that there is apparent confusion because of the existence of the product and that wasn’t possible in this case since the software product was merely fictional. The Court was also of the opinion that the use was artistically relevant and thus not misleading.

Though I partly agree with the ruling in this case as far as the non-existence of the other party’s product in the real world and artistic relevance is concerned, one cannot rule out the fact that it is an infringement of a trademark.

There’s one thing that’s common in both these cases, the consumer can easily relate to it and that’s exactly what the makers are targeting! Such issues certainly create challenges and will result in broadening the scope of intellectual property laws. We can only wait for such issues to be brought before the Court to know what lies ahead.

This article has been authored by Nikita, an IP Law practitioner.