19 七月 2019

Contradiction & consensus: Mode of infringement of a cinematograph film

By Saksham Garg


In MRF Limited v. Metro Tyres Limited,[Endnote 1] many important issues of law arose before the Delhi High Court regarding the extent of copyright infringement of cinematograph films under the Copyright Act, 1957 (the Act). While the interim application filed by the Plaintiff was dismissed, the learned single judge, after discussing the legal issues at length, attempted to minimize the contradiction created by the diametrically opposite views of the Bombay and Calcutta High Courts on the interpretation of the expression ‘to make a copy of the film’.
The issue at hand arose out of an interim application[Endnote 2] filed by the Plaintiff for the grant of an injunction under Order XXXIX and Rules 1 and 2 of the Code of Civil Procedure, 1908 on infringement by the Defendant. Specifically, the copyright alleged to have been infringed was of the plaintiff’s advertisement on the manufacturing of tyres which was first aired in 2015, by the defendant airing an allegedly ‘similar’ advertisement in 2016 for its tyres. While, the Delhi High Court decided the matter in favor of the defendant due to lack of ‘similar’ substance and foundation in both the advertisements and dismissed the present application without an order as to the costs, the Ld. Judge has given a reasoned and detailed ruling as to the scope of copyright infringement in respect of a cinematographic work such as a film or an advertisement.

Facts of the case
Plaintiff produced an audio-visual advertisement titled as ‘MRF NV Series present REVZ’ for its specific range of tyres, which was first aired on 27th June 2015 on TV media and was posted on the internet by 29th June 2015. In October 2016 plaintiff claimed to have knowledge that defendant, who is also involved in the business of manufacturing and marketing tyres, had produced an allegedly ‘similar’ advertisement entitled ‘Bazooka Radial Tyres’.
As a result, plaintiff filed intra-industry complaint with the Advertising Standards Council of India (‘ASCI’) upon which no substantial action was claimed to have been undertaken by the ASCI, who forwarded the complaint to the defendant. Defendant did not reply to the complaint and filed a suit before the Delhi High Court seeking an order to restrain the plaintiff from issuing groundless threats and to restrain the ASCI from proceeding with the said complaint. However, the suit was dismissed in limine, and an appeal is pending before the Division Bench of the Delhi High Court.

Thereafter, plaintiff filed the present suit before the Delhi High Court with an application seeking an interim injunction against the defendant for using the alleged infringing advertisement.

Contentions of the parties
To prove copyright infringement of its advertisement, plaintiff contended that a comparison of its advertisement with that of defendant’s advertisement showed a similar sequencing, form, treatment and expression, and contained material and broad similarities which indicates that defendant’s intent was to copy its advertisement. It was further argued by the plaintiff that the “coincidences” which appeared in the two advertisements were neither incidental nor based on mere chance, as there were numerous instances of copying including a similar spaceship like gate/door which opens to take the viewer into a futuristic chamber and a similar looking motorcycle with the same color combination.
Plaintiff argued that the similarities between the advertisements were on fundamental and substantial aspects of the mode of expression adopted in the copyrights works. As for a suit of copyright infringement of a cinematograph film, plaintiff argued that the test is of an overall impression of an average viewer and not a microscopic analysis which underscores differences/divergences, the immaterial differences between the two advertisements being unimportant. Reliance was placed by the plaintiff on the findings in the case of R.G. Anand v. M/s Deluxe Films[Endnote 3] to elucidate that in order to be actionable, the copy must be a substantial and material one which at once leads to the conclusion that the defendant is guilty of an act of piracy.[Endnote 4] Further, plaintiff provided a tabular comparison of the illustrations and sequence of events of both the advertisements to show the “material similarities” between them.
On the other hand, the defendant contended that the non-use of the word ‘original’ in Section 13(1) of the Copyright Act, 1957 with respect to a cinematograph film and that cinematograph film is to be treated differently under Section 13(3) of the Act. It was also argued that by a joint reading of Sections 2(m)(ii), 14(d)(i) and 51 of the Act it was apparent that to establish copyright infringement in a cinematograph film, it was essential to show that the impugned work was an actual copy of the advertisement by the process of duplication. Thus, according to the defendant the Copyright Act granted a very limited protection to a cinematographic film.
Reliance was placed on the Bombay High Court judgment of Star India Private Limited v. Leo Burnett (India) Pvt. Ltd.[Endnote 5] by the defendant to establish that copyright infringement of a cinematograph film can ensue only when an actual copy is made of a film by the process of duplication i.e. by using mechanical contrivance that falls under Section 14(d)(i). Therefore, if the film has been filmed or shot separately by a person and it resembles the copyrighted film, the subsequent film is not a copy of the first film and, therefore, does not amount to infringement of whole of the copyright of the first film.[Endnote 6] Defendant also extensively referred to the judgment in Norowzian v. Arks Ltd and Others[Endnote 7] which was also relied upon heavily by the Bombay High Court in the aforesaid judgment. The defendant also provided a tabular comparison of the two advertisements highlighting the differences between the two advertisements.
In rejoinder, the plaintiff argued that the concept of dual protection provided to a cinematographic film in India and certain European countries, meant that the Berne Convention of 1908 provided an owner of the cinematographic work with the same rights as the author of an original work under Article 14. Additionally, plaintiff argued that the right to reproduce the work provided under Article 9 also extended to a cinematograph film under Article 14. The counsel for the plaintiff also informed that the judgment in Norowzian v. Arks Ltd and Others relied upon by the Bombay High Court in Star India Private Limited case had been specifically overruled in an appeal on the question of law[Endnote 8].

In sur-rejoinder, counsel for the defendant submitted that under the Copyright Act, 1957 a different usage has been allotted to ‘copy’ and ‘reproduce’ denoting distinct meanings to both the terminologies.

Observations of the Court
The Court, after hearing both the parties, held that a copyright subsists in a cinematograph film as a work independent of underlying works that come together to constitute it. Although the copyright subsists in the constituent parts, yet the copyright vests separately and independently in the composite whole – the film. The Court arrived at this decision by a joint reading of Sections 2(f), 2(y), 13(1) and 13(4) with the Report of the Joint Committee for the Copyright Bill, 1955 which stated that cinematograph film is an independent work which will enjoy copyright apart from its component parts. The meaning of the term ‘cinematograph film’ was also interpreted, for this purpose, in consonance with the Berne Convention.
In addition to that, the Court observed that a cinematograph film is recognized as, greater than the sum of its parts, which has been subsisting as being held by Justice V.R. Krishna Iyer in the case of Indian Performing Right Society Ltd. v. Eastern Indian Motion Pictures Association.[Endnote 9] The Hon’ble Court also observed that even the Calcutta High Court in Shree Venkatesh Films Pvt. Ltd. v. Vipul Amrutlal Shah,[Endnote 10] has taken a similar view by  treating the original underlying works as raw materials from which an entirely different work like a cinematograph film may be created.
On the question of originality of a cinematograph film, the Court held that even though the expression ‘original’ is missing in Section 13(1)(b), still the requirement of originality is brought in through Section 13(3)(a) which has to be read with the definitions of ‘cinematograph film’ and ‘author’ under Sections 2(f) and 2(d). Section 13(3)(a) implies that a copyright in a film cannot subsist if a substantial or material part of the said film is an infringement of copyright in any other work. It was held that the Act does not require that the expression must be in an original or novel form, but that the work must not be copied from another work.[Endnote 11] Thus, a cinematograph film is held to be an original work as it is an intellectual creation.
On the main issue in the case, the Court observed that the expression ‘to make a copy of the film’ in Section 14(d)(i) does not mean just to make a physical copy of the film by the process of duplication. As the scope of protection of a film was held to be at par with other original works, the Hon’ble Court opined that the test laid down in R.G. Anand v. Deluxe Films[Endnote 12] would apply as it is not confined to a literary work and is of general application. Furthermore, the Ld. Judge observed that this test of ‘substantiality’ is found in the opening words of Section 14 and therefore it applies equally to Section 14(d).
While substantiating its observations, the Hon’ble Court, in agreement with the decision of the Calcutta High Court, affirmed that where there is substantial similarity in the film taken as a whole with another film,  then there is infringement of the copyright in the film.[Endnote 13] It rejected the view  held by the Bombay High Court in Star India Private Limited[Endnote 14] case as being narrow and restricted and not in consonance with the Berne Convention inasmuch as it does not protect a cinematograph work as an original work; and as it was not brought to the notice of the Bombay High Court that the judgment in the case of Norowzian v. Arks Ltd and Others,  upon which extensive reliance was placed while deciding said case, had been overruled on the issue of law by the Court of Appeal[Endnote 15]. Thus, the Hon’ble Court stipulated that the Court will have to compare ‘the substance, the foundation, the kernel’ of the two advertisements in question to consider whether one was by and large a copy of the other and whether an average viewer would get an unmistakable impression that one work was a copy of the other.
The Court further elucidated that Article 14(1) of the Berne Convention stipulates the width and scope and extent of copyright protection in a film. It expressly provides that a cinematographic work shall be protected as an original work and that the owner of such a work shall enjoy the same rights as the author of an original work and since, it is a settled law under Article 51(c) of the Constitution of India that India is obligated to foster respect for international law and treaty obligations, it is essential to follow the Berne Convention in the present matter. It also observed that it was settled that where India is a signatory to international treaty, the statue would be given a ‘purposive’ construction in favor of the international obligation. Consequently, it was held that the Copyright Act, 1957 is required to be interpreted in consonance with the Berne Convention which protects the film not merely as a fixation, but also as an original work.

Although the Court applied the test laid down in R.G. Anand v. Deluxe Films[Endnote 16] in the present case, it was still of the prima facie view that the two advertisements were neither substantially nor materially or essentially similar. It held that expressions behind both the advertisements are different as the Plaintiff’s advertisement lays emphasis on the manufacturing process of the tyre while the Defendant’s advertisement was to display the durability of the tyre. It held that there was no copyright infringement as the substance and foundation of both the advertisements were different. Moreover, since the present suit was filed more than one year after Metro’s advertisement was first aired in September 2016, the Court held that the plaintiff was not entitled to any interim order. Thus, the application for interim injunction was dismissed.
The present judgment has provided interpretation to the term ‘original’ while determining the extent of copyright infringement of a cinematograph film under the Copyright Act, 1957. It has widened the scope of the ‘substantiality’ test and has provided a definite foundation to the purposive construction to be applied to the Copyright Act, 1957 in consonance with the Berne Convention. The judgment has laid out the test of fundamentally similar substance and foundation of a cinematograph film to determine any copyright infringement while at the same time cured the contradiction created by the judgments of Calcutta and Bombay High Court by forming a consensus with the former.

[The author is a Senior Associate, IPR practice, in Lakshmikumaran & Sridharan, New Delhi]

  1. CS (COMM) 753/2017.
  2. I.A. 12770/2017.
  3. (1978) 4 SCC 118.
  4. R.G. Anand v. Deluxe Films, (1978) 4 SCC 118.
  5. (2003) 27 PTC 81 (Bom).
  6. Star India Private Limited v. Leo Burnett (India) Pvt. Ltd, (2003) 27 PTC 81 (Bom).
  7. 1996 FSR 394
  8. Norowzian v. Arks Ltd. & Ors., (2000) FSR 363
  9. (1977) 2 SCC 820.
  10. 2009 SCC OnLine (Cal.) 2113.
  11. Eastern Book Company v. D.B. Modak, (2008) 1 SCC 1.
  12.  (1978) 4 SCC 118.
  13. Shree Venkatesh Films Pvt. Ltd. v. Vipul Amrutlal Shah, 2009 SCC OnLine (Cal.) 2113.
  14. Star India Private Limited v. Leo Burneet (India) Pvt. Ltd, (2003) 27 PTC 81 (Bom).
  15. (2000) FSR 363
  16. (1978) 4 SCC 118.

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