ipr.anumodi.sem6.docx

IN THE HON’BLE SUPREME COURT

OF INDIA

IN THE MATTER OF

Star India Pvt. Ltd.

(Appellant)

v.

Leo Burnett India Pvt. Ltd.

(Respondent)

Counsel for the Appellant – Anushree Modi

Roll no. - 69

Semester: VI

Sec: A

HIDAYATULLAH NATIONAL LAW UNIVERSITY, RAIPUR

MEMORIAL FOR THE APPELLANTS

Star India Pvt. Ltd. v. Leo Burnett India Pvt. Ltd.

TABLE OF CONTENTS

Contents Page

List of Abbreviations 03

Index of Authorities 04

Statement of Facts 07

Issues Raised 09

Written Submission 10

I. Whether the respondents by making the commercial film violated and

infringed the appellants’ copyright in the T.V. serial “Kyun Ki Saas

Bhi Kabhi Bahu Thi”?

10

II. Whether the respondents act has violated appellants’s ownership

rights?12

III. Whether the respondents are guilty of passing off their reputation and

goodwill of the appellants?

13

PRAYER 16

2


3


List of Abbreviations

o & And.

o AIR All India Reporter.

o Anr. Another.

o BomLR Bombay Law Review

o Cir. Circuit.

o Col. Colonel.

o Corp. Corporation.

o Inc. Incorporation.

o Ltd. Limited.

o No. Number.

o Ors. Others.

o PTC Patents and Trademark Cases

o Pvt. Private.

o SCC Supreme Court Cases.

o SCR Supreme Court Reporter.

o U.S. United States.

o v. Versus.

4


INDEX OF AUTHORITIES

List of Cases

Baker v. Selden, 101 U.S. 99 (1879).

Burlington Home Shopping v. Rajnish Chibber. 1995 PTC (15) 278.

CCH Canadian Ltd., v. Law Society of Upper Canada. 2004 (1) SCR 339 (Canada).

Chancellor Masters of Oxford v. Narendra Publishing House

Daimler Benz Aktiogosellschit v. Hybo Hindustan. AIR 1993 Delhi 239.

Dr. Reckeweg and Co. Gmbh. & Anr. v. Adven Biotech Pvt. Ltd. MANU/DE/0961/2008.

Eastern Book Company v. D.B. Modak 2002 PTC 641.

Feist Publications v. Rural Telephone Service. 499 U.S. 340 (1991).

Hexagon Pty. Ltd. v. Australian Broadcasting Commission. 1976 RPC 628.

Kirloskar Diesel Recon. (P.) Ltd. and Ors. v. Kirloskar Proprietary Ltd. 1997 (17) PTC

469.

Lingstad and Ors. v. Anabas Products Ltd. 1997 (17) PTC 469.

Macmillan Co, v. J.K. Cooper. (1924) 26 BomLR 292

Merchandising Corporation of America Inc. v. Harpbond Limited and Ors. 1983 FSR 32.

Mirage Studios and Ors. v. Counter-Feat Clothing Company. 1991 FSR 145.

R.G. Anand v. Delux Films and Ors. [1979] 1 SCR 218 .

Rob Mathys India Pvt. Ltd. v. Synthes Ag. Chur. 1997 PTC 699.

Shaw Brothers (Hong Kong) Ltd. v. Golden Harvest (Hong Kong) Ltd. 1972 RPC 559.

String fellow and Anr. v. McCain Foods (G.B.) Limited. 1984 RPC 501.

University Press of London Press Ltd. v. University Tutorial Press Ltd. [1916] 2 Ch.

601.

5


Statutes:

o The Indian Copyright Act, 1957.

6


List of Books

1. Paul Goldstein, Goldstein on Copyright, Vol.II, 3rd ed., Aspen Publishers. Pvt. Ltd.

2. Copinger and Skone James, Copyright, 13th Edition, Oxford Publication Private

Limited.

3. H.M. Seervai, Constitutional Law of India, Vol. 1, 4th Edition, Universal Law

Publishing Co. Pvt. Ltd.

7


STATEMENT OF FACTS

1. The Appellant has a business of acquiring copyrights in cinematographic films television

serials, programmes etc., and also produce and commission production of television

programmes for various television channels. They entered into an agreement on 9th

April, 2000 with Balaji Telefilms Pvt. Ltd. (hereinafter referred to as Balaji) in order to

create, compose and produce 262 episodes of a television serial entitled "Kyunki Saas Bhi

Kabhi Bahu Thi".

2. The terms and conditions of the serial were clearly set out in the agreement based on

which it is contended that the Appellant owned the copyright of the episodes in the serial.

Since 9th April, 2000, Balaji has produced episodes of this serial in full consideration

and, thus, the Appellant are the exclusive owners of the copyright in this serial. Balaji's

services were engaged by way of contract of service and as such the Appellant are the

first copyright owners under Section 17 of the Copyright Act.

3. The Appellant case is that Balaji for publicizing the title of a film has devised the

original artistic work depicting inter alia the logo and the title in a peculiar stylized font

and containing as its essential features the words "Kyun Ki Saas Bhi Kabhi Baku Thi".

The artistic work was prepared and devised by Balaji under an Agreement and as such

the Appellant have become owners of the said artistic work. The serial has commenced

broadcasting since July, 2000. Before launching the serial, the Appellant had carried out

publicity campaign in the media by inserting advertisements.

4. The Respondents by telecasting and broadcasting the commercial with the title "Kyun Ki

Bahu Bhi Kabhi Saas Banegi" with identical characters i.e., Tulsi, Savita and J.D. are

deliberately and dishonestly seeking to trade upon and misappropriate the reputation and

goodwill of the said serial and its characters. The original artistic work and the central

characters have been used by the Appellant. The serial it is contended has acquired

8


immense goodwill, the Appellant are actively considering using the serial and the

characters therein for the purpose of endorsing products and services for a fee. The

Appellant were, therefore, surprised when some time in the third week of February, 2002,

they came across a television commercial for a consumer product “Tide Detergent”. Thus

Tide Detergent is marketed by Respondent No. 2 and has produced by Respondent No. 1.

Thus it is the case of the Appellant that the comparison of the Appellant serial with the

commercial would show that there is substantial copying and thus an infringement of

their copyright.

9


ISSUES RAISED

I. WHETHER THE RESPONDENTS BY MAKING THE COMMERCIAL FILM

VIOLATED AND INFRINGED THE APPELLANT COPYRIGHT IN THE T.V.

SERIAL “KYUN KI SAAS BHI KABHI BAHU THI”?

II. WHETHER THE RESPONDENTS ACT HAS VIOLATED APPELLANT

OWNERSHIP RIGHTS?

III. WHETHER THE RESPONDENTS ARE GUILTY OF PASSING OFF THEIR

REPUTATION AND GOODWILL OF THE APPELLANT?

10


WRITTEN SUBMISSION

I. THE RESPONDENTS BY MAKING THE COMMERCIAL FILM VIOLATED

AND INFRINGED THE APPELLANTS’ COPYRIGHT IN THE T.V. SERIAL

“KYUN KI SAAS BHI KABHI BAHU THI”?

I.A. The respondents have copied substantial part of the appellants’ serial.

The appellants’ plead that they are the owners of the copyright in the film and considering

Section 14(d)(1) of the Copyright Act, the appellants’, as the owners of the copyright in the film,

have an exclusive right to make a copy of the film including a photograph of any image forming

part thereof.

To understand the term copy one needs to take recourse of the technical meaning of the word

‘copy’, since the Indian Copyright Act is silent about the same. The Act only provides the

meaning of ‘infringing copy’ in Section 2(m)(ii) of the Act i.e., imitating the film or making

another film which bears likeness or striking resemblance to a copyrighted film would amount to

making a copy of the film and, therefore infringement of the copyright in the film.1 The Oxford

dictionary defines copy as a thing made to imitate or be identical to another. 2

Thus to establish infringement, copying should be of a substantial part of the appellants’ film.

Furthermore the test of substantiality must be from the point of view of the infringing work,3

which is seen with regards to the quality and not the quantity of the works.4 Even resemblance

between the appellants’ work, it will play an important role in proving infringement.5

1 The Indian Copyright Act, Section 2(m) infringing copy means-(ii) in relation to a cinematographic film, a copy of the film made on any medium by any means.2 The Oxford English Dictionary provides as to the meaning of the word ‘copy’.3 R.G. Anand v. Delux Films and Ors., [1979]1SCR218 .4 Para 8.26 of Copinger and Skone James on Copyright, Thirteenth Edition.5 Paul Goldstein, Goldstein on Copyright, Vol.II, 3rd ed., Aspen Publishers. p. no. 9.3.

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Copinger and Skone James,6 state that

It is an infringement of the copyright in a film to make a copy of it, or a substantial part of it,

whether directly or indirectly and whether transiently or incidental to some other use. This

includes making a photograph of the whole or any substantial part of any image forming part of

the film.

The opening sequence common to each episode and also the peculiar and dramatic high point of

the appellants’ film is copied and the respondents have saved themselves time, labour and

expense in developing something original.

I.B. The appellants’ claim for violation of copyright is justified by the Doctrine of

Sweat on Brow.

The Law provides a shadow of protection to be cast upon those who work to create something

marked by originality in essence.7 Thus labour or industry even in the absence of creativity,8 may

be sufficient to make out a finding of originality9 for copyright purpose and is thus the essence

underlying the “sweat on the brow theory.10

India being a commonwealth nation has a close link with the “sweat on brow theory”11 but the

Supreme Court has evolved the sweat on brow theory in light of originality.12 The Supreme

6 Copinger and Skone James, Copyright Law, Thirteenth Edition, ¶ 3.29.7 Dr. Reckeweg and Co. Gmbh. & Anr. v. Adven Biotech Pvt. Ltd, MANU/DE/0961/2008.8 Macmillan Co, v. J.K. Cooper, (1924) 26 BomLR 292; University Press of London Press Ltd. v. University Tutorial Press Ltd., [1916] 2 Ch. 601. 9 Feist Publications v. Rural Telephone Service; 499 U.S. 340 (1991).10 Abraham Drassinower’s Sweat of the Brow, Creativity and Authorship: On Originality in Canadian Copyright Law.11 Burlington Home Shopping v. Rajnish Chibber 1995 PTC (15) 278.12 CCH Canadian Ltd., v. Law Society of Upper Canada, 2004 (1) SCR 339 (Canada).

12


Court in the matter of Eastern Book Company v. D.B. Modak13 evolved the notion of flavor of

minimum requirement of creativity. The decision reconciled the sweat on the brow with the

notion of modicum of creativity.14 The Court held:

“The derivative work produced by the author must have some distinguishable features and

flavours to raw text of the judgments delivered by the Court. The trivial variations or inputs put

in the judgment would not satisfy the test of copyright of an author and thus requires a minimal

degree of creativity.”

II. THE RESPONDENTS ACT HAS VIOLATED APPELLANTS OWNERSHIP

RIGHTS

The appellants’ claim copyright in an artistic work based on the contract entered into with Balaji

Films. Under Section 17 subject to the proviso, the Author of a work is the owner of the

copyright therein. In the case of an artistic work made by an Author in the course of his

employment subject to the agreement to the contrary, the person engaging is the first owner of

the copyright. There is nothing on record to show that the Author of the artistic work was

employed by Balaji under contract of service to hold that Balaji were the owners of the

copyright, who have transferred their rights in favour of the appellants. The appellants have had

an agreement dated 9th April, 2000 under which the appellants are claiming right.

Moreover, by virtue of Article 6(a) and Article 8 of the Copyright Act, all rights of Balaji have

been assigned in favour of the appellants. The respondents by exploiting the appellants right

have deprived the appellants of such licence fees and merchandising profits. Due to having

invested in their ownership and the rights in the serial flowing thereafter and its characters the

appellants are entitled exclusively to cash upon its characters commercially and for profits in

13 2002 PTC 641.14 Baker v. Selden, 101 U.S. 99 (1879); Chancellor Masters of Oxford v. Narendra Publishing House,

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various ways and law is not intended to protect a person who deliberately sets out to take

advantage of somebody's reputation.15

III. THE RESPONDENTS ARE GUILTY OF PASSING OFF THEIR

REPUTATION AND GOODWILL OF THE APPELLANT.

The law of passing off requires (a) existence of goodwill or reputation attached to the appellants

serial and characters in the serial in the minds of the public viewers; (b) misrepresentation by the

respondents to the public such as is likely to lead the public to believe that either their is a

business transaction/association between the serial's character or the commercial or that the serial

and the characters in the serial endorse and/or approve the respondents product Tide detergent,

and that the appellants have suffered or are likely to suffer loss or damage by reason of the

respondents appropriation of the appellants goodwill or reputation.

Furthermore, Courts in India have adopted an approach which does not require that the

respondents should be the ones doing the act in fact and thus injunction can be granted in these

cases.16 The Court in the passing off action is concerned with ‘likelihood damages’17 the

appellants have no control of the quality over the respondents product any inadequacy or

shortfall in the same would rub off directly on the appellants.18 The defects in the respondents’s

commercial could in the long run adversely affect the appellants and the appellants’ serial., it is

submitted that there is sufficient cause for loss and damage made out by the appellants.19

It is then submitted that the tort of passing off is wide enough to take within its fold the deceitful

and dishonest action of stealing the goodwill of another for commercial gain so as to mislead the

15 Daimler Benz Aktiogosellschit v. Hybo Hindustan, AIR 1993 Delhi 239.16 Division Bench of the Delhi High Court in Rob Mathys India Pvt. Ltd. v. Synthes Ag. Chur 1997 PTC 699. Lingstad and Ors. v. Anabas Products Ltd., 1997 FSR 62.17 Lingstad and Ors. v. Anabas Products Limited 1977 FSR 62.18 Merchandising Corporation of America Inc. and Ors., v. Harpbond Limited and Ors. 1983 FSR 32; String fellow and Anr. v. McCain Foods (G.B.) Limited 1984 RPC 501.19 Shaw Brothers (Hong Kong) Ltd. v. Golden Harvest (Hong Kong) Ltd. 1972 RPC 559; Hexagon Pty. Ltd. v. Australian Broadcasting Commission 1976 RPC 628 and Mirage Studios and Ors. v. Counter-Feat Clothing Company 1991 FSR 145.

14


public.20 In the Shaw Brothers case the it is contended that the Hong Kong Full Court rightly

drew the law that the principle is applicable that not only must one tell the truth but he must tell

it in a truthful way, that is, so as not to deceive the public. Furthermore a Court of equity should

enjoin any form of passing off which involves fraudulent appropriation, through devices

calculated to deceive or mislead the public, of the business or goodwill which another has built

up.

It is also contended that the respondents conduct is fraudulent in the extreme. The respondents

have not only and deliberately appropriated to itself what is essentially the characters and

symbols of the appellants serial so as to attract the public, but are doing so for commercial gain.

The respondents wish to boost the sale of their products by encashing the goodwill of the

appellants.

Coming to the test of common field of activity, it is contended, that there is no necessity for both

the parties to be in the same field of activity. Reliance is placed on Kirloskar Diesel Recon. (P.)

Ltd. and Ors. v. Kirloskar Proprietary Ltd.21 and Ors., where the Apex Court rejected the

requirement that there should be common field of activity in determining whether there was any

passing off. Reliance is placed on the following observation:

“With the passage of time, law on requirement of common field of activity in a passing off action

has radically changed. There is no requirement for a common field of activity to found a claim in

passing off.”

It is at this point that one needs to apply the test of the state of mind of public an average person

viewing the respondents commercial would immediately notice the glaring identity similarity

between the appellants serial and the respondents’ commercial and such a person would get an

impression that the respondents’ commercial has been authored by the appellants or has been

produced under the permission or licensed by the appellants. Further an ordinary person would

20 Shaw Brothers (Hong Kong) Ltd. v. Golden Harvest (Hong Kong) Ltd. 1972 RPC 55921 1997 (17) PTC 469.

15


get an impression, that the appellants who are the producers and proprietors of the serial and are

whole heartedly and unreservedly endorsing the product of the respondent No. 2.

The public associates the appellants, the said serial, its characters and Channel Star Plus with

each other. It is, therefore, submitted that the appellants have established that fictional characters

can enjoy goodwill and the goodwill in such fictional characters belong to the owner of the

serial.

16


PRAYER

Wherefore in light of the facts given, questions presented, arguments advanced and authorities

cited, this Hon’ble Court may be pleased to adjudge and declare that:

A. To declare the commercial made by the respondents as infringing the copyright of

the appellant;

B. To award compensation for the damage caused to the goodwill of the appellants’;

C. To pass an order to stop the broadcast of the respondents advertisement.

And to pass any other order(s) which this court may deem fit in the light of justice, equity and

good conscience. And for this act of kindness the counsel as in duty bound shall forever pray.

All of which is humbly submitted.

Date: 10/04/2013 Anushree Modi.

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