By Bijit Das and Meril Mathew Joy
Plaintiff, MRF Limited is engaged in the business of manufacturing, marketing and sale of a series of tyres in India. One such series is known as MRF NV series “REVZ”. In order to publicize their goods, the plaintiff produced an advertisement; and under the copyright regime of India, Plaintiff is the author of said advertisement.
In October 2016, it came into knowledge of plaintiff that the defendant, who is engaged in the same business has produced a similar advertisement. Plaintiff contended that by bare perusal, it can be clearly seen that the defendant’s advertisement is nothing but a substantial copy of the plaintiff’s advertisement.
Plaintiff immediately filed a complaint with the Advertising Standards Council of India (ASCI). ASCI forwarded the complaint of plaintiff to defendant. On receipt of the complaint the defendant filed a suit to restrain the plaintiff from issuing threats and to restrain the ASCI from proceeding with the said complaint. This suit of defendant was dismissed by the Court.
After this the plaintiff filed the suit before the Hon’ble Delhi High Court.
In this case the issues before the Court were:
1. Whether in a suit for copyright infringement of a cinematograph film, the infringing copy has to be an exact copy made by a process of duplication or a substantial/material copy.
2. Whether the copyright infringement test as laid down in R.G. Anand v. M/s Deluxe Films and Ors. with regard to literary works is applicable to cinematograph films.
3. Whether the expression ‘to make a copy of the film’ means just to make a physical copy of the film by a process of duplication or does it refer to another work which substantially, fundamentally, essentially and materially resembles the original film.
4. Whether the word ‘original’ used in Section 13(1) of the Copyright Act, 1957 cover cinematograph films.
In this case, while arguing before Hon’ble Delhi High Court, plaintiff contended that:
(i) The defendant’s advertisement contain material similarities with the plaintiff’s advertisement and these similarities show that defendant’s intent was to copy the advertisement.
(ii) The coincidences which appeared in the two advertisements were neither incidental nor based on mere chance.
(iii) Though plaintiff admitted that there are some minor differences between both the advertisements but the same were minor and immaterial as an infringing copy need not be an exact copy but a substantial and material one.
(iv) Plaintiff relied on the test laid down in case of R.G. Anand v. M/s Deluxe films and Ors, and contended that in a suit for copyright infringement of a cinematograph film the test is of an overall impression of an average viewer and not a microscopic analysis which underscores differences/divergences.
The defendant while arguing before Hon’ble Delhi High Court contended that:
(i) The case in hand is not a case of trademark infringement or passing off and therefore it is not a “confusion‟ based action against the defendant.
(ii) The word ‘original’ used in Section 13(1) of the Copyright Act, 1957 is not with respect to cinematograph film.
(iii) The cinematograph film is treated differently under Section 13(3) of the Copyright Act, 1957 as all the underlying works which contribute to the making of a film are protected independently.
(iv) To establish copyright infringement in a cinematograph film, it is essential to show that the impugned work is an actual copy of the plaintiff’s advertisement/cinematograph film and it has to be shown that an actual copy of the copyrighted film has been made by a process of duplication.
(v) The expression ‘to make a copy of the film’ means to make a physical copy of the film itself and not another film which merely resembled the original film.
(vi) Furthermore, Defendant contended that plaintiff’s reliance on the judgment of the Apex Court in R.G. Anand v. Deluxe Films, is misconceived as the said judgment is concerned with a script (literary work) and not with a cinematograph (film).
The Hon’ble Delhi High Court, while discussing the issues made the following observations respectively:
1. Hon’ble Court while discussing the issue of copying the material and substantial part of the cinematograph, observed that the definition of copying is not limited to making an actual copy of cinematograph film, but it also includes imitation and reproduction of that cinematograph, Hon’ble High Court stated “The ordinary, dictionary definition of copy is not confined to an actual copy made by a process of duplication, but is wider one and includes an imitation or reproduction.”
Further, Court relied on the case of Shree Venkatesh Films Pvt. Ltd. vs. Vipul Amrutlal Shah & Ors. , and observed that ‘to make a copy of the film’ does not mean just to make a physical copy of the film by a process of duplication, but it also refers to another film which substantially, fundamentally, essentially and materially resembles the original film. Hence while dealing with such cases the Court will have to compare the substance, the foundation, the kernel‖ of the cinematographs 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.
2. Hon’ble High Court while discussing the issue of can the copyright infringement test laid down in the case of R.G. Anand v. M/s Deluxe Films and Ors. be applied to cinematograph, stated that “the scope of protection of a film is at par with other original works” and hence the test laid down in the R.G Anand case would also apply in cases of cinematographs. Hon’ble High Court further stated that the test laid down in R.G. Anand case is of general application and not confined/limited to literary work only.
3. Further, Hon’ble High Court while dealing with the issue that whether the word ‘original’, used in section 13(1) of the Copyright Act cover cinematograph observed that Though the expression “original‟ is missing in Section 13(1)(b) of the Act, 1957, yet 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) of the Copyright Act, 1957. Court observed that in terms of Section 13(3)(a), a film must not be a copy of any other work, including any other film. Section 13(3)(a) of the Act, 1957 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. In the opinion of the Court, this can only happen if a cinematograph film possesses originality greater than the originality of its underlying works. Court held that a cinematograph film is an original work as it is an “intellectual creation”.
Hon’ble High Court also relied on Berne Convention and observed that the Berne Convention expressly states that a cinematographic work is to be protected as an original work and that the owner of a copyright in a cinematographic work shall enjoy the same rights as the author of an original work. Further, Hon’ble Court stated that “Article 14bis (1) of the Berne Convention talks about that the width, 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”
4. Hon’ble High Court also observed that copyright in a cinematograph film vests on the whole work, Court stated that “though the copyright subsists in the constituent parts, yet the copyright vests separately and independently in the composite whole – the film.”
Although, the Hon’ble High Court of Delhi after viewing the plaintiff’s and defendant’s advertisements and applying the test given in the R.G. Anand case, prima facie opined that the two advertisements were neither substantially nor materially similar but, this judgment has answered some important questions in the copyright regime of India, and the Hon’ble Court in its judgment made it clear that:
• The definition of copying is not limited to an actual copy made by the process of duplication but it is wider than that, and includes an imitation or reproduction in it.
• The copyright infringement test laid down in the case of R.G Anand v. M/s Deluxe Films and Ors. can be applied not only on literary works but also applicable to cinematograph films.
• The word ‘original’ in section 13(1) is not limited to literary, dramatic, musical and artistic works but also covers cinematograph films in it.
At the outset, although the cases did share an intricate similarity as to the object of the law, their applicability to the scenarios mentioned was different, in so far as the proof required to invoke infringement provisions were not met. The Courts though did a meticulous job at defining the spheres of what situations can petition the provisions of the copyright regime in case of ‘copying’ of a work and at defining the scope of ‘copying’. Further the Court settled a long-standing discrepancy as to the applications of the word ‘original’ to copyrighted or copyrightable work which is going to lay a precedent to settle future matters which includes similar questions of law.
 (1978) 4 SCC 118
 , 2009 SCC OnLine Cal 2113