Delhi High Court
Frank Educational Aids Pvt. Ltd. vs Fair Deal Marketing on 20 June, 1997
Equivalent citations: 1997(42)DRJ231
Author: S.N. Kapoor
Bench: S.N. Kapoor
JUDGMENT S.N. Kapoor, J.
(1) This order relates to Ia 5075/97 under Order 39 Rules 1 & 2 read with Section 151 Civil Procedure Code seeking ad interim injunction restraining the defendants themselves, their servants, agents, shop-keepers, stockists, representatives & all other persons acting on their behalf, from manufacturing and selling, from printing, publishing, reproducing, circulating or offering for sale or advertising the game entitled, "Funston" (Annex.B in the list of documents) and any other game under the infringing work of plaintiff or any other artistic work which has the substantial reproduction of the plaintiff copyright of the game having title "Whatever Next" thereby infringing the copyright that vests in the said game.
(2) The aforesaid application has been filed in suit No. 1187/97. According to the case of the plaintiff, the plaintiff-company is a part of the Frank group of companies, the flagship company being M/s Frank Bros. & Co. (Publishers Ltd). The plaintiff prides itself in bringing out quality products which help children as well as their parents in realising their hidden talents and interests. It is because of the high quality offered that its products are being exported to South East Asian markets where the products compete with similar products from Europe and elsewhere. The plaintiff has been associated with Walt Disney Co. and Warner Bros. for jigsaw puzzles and educational aids. The plaintiff has a corporate clientele, including Air India, Dabur India Ltd. etc. The plaintiff has also received licences from M/s Living & Learning, United Kingdom, Silver Bear Marketing, United Kingdom and M/s Clementoni, Italy, for manufacturing of games in India. The plaintiff had entered into Memorandum of Agreement with M/s Living & Learning (Cambridge) Ltd., Uk, on 6.11.96, M/s Living & Learning (Cambridge) Ltd. Uk have granted exclusive right to produce and sell in India 2000 copies of the following products owned by M/s Living and Learning:
A.Write Start B.Spell Start C.Number Start D.Read Start E.Never Ending Stories F.I-Spy G.Whatever Next (3) The plaintiff is accordingly supposed to pay royalty for each of the seven products and will originate all films, plates etc. from a sample of each of the products supplied by the aforementioned company and is entitled to take any action legal or otherwise in order to protect its rights. The said artistic work has been designed on the basis of the sample supplied by M/s Living & Learning (Cambridge) Ltd. and manufactured and distributed by the plaintiff for the first time in India and the same are original artistic work within the meaning of Section 2(c) of the Copy Right Act, 1957. The copy right subsists therein of which the plaintiff is the exclusive licensee for the territory of India. Consequently, the plaintiff has the exclusive right to reproduce the game including the above said title as well as colour combination, get up, lay out and posture of characters in a particular manner in material form. Any person, who reproduces in material form, publishes or adopts the said artistic works without the consent or permission of the plaintiff or makes reproduction or sells or offers to sell the same, would infringe the plaintiff's copyright. The "Whatever Next" game is extremely popular with the children due to the fact that it encourages all the members of the family to get involved, develop their communication skills and self-confidence and create a lot of hilarious moments for the participants. It encourages the children to hone their skills in the field of acting, miming, caricaturing etc. The said game is an extremely interesting way in which the children not only discover their hidden skills but also have fun in the process, which is the basic philosophy behind the game, "Whatever Next" series. The fact that the said game is illustrated with picture board, cards of activities, acting, miming etc. also makes it great fun for the children. Seeing the extensive sales and popularity, the defendant No. 1 M/s Fair Deal Marketing, Mumbai is apparently manufacturing all games and defendant No. 2, M/s Olympia Marketing, Khar, Mumbai is the distributor of defendant No. 1. The defendant No. 1 has published a game with the title - "Funston" and said game is identical to the plaintiff's game "Whatever Next" as far as the presentation, drawing, design, colouring pattern of the picture therein are concerned. A bare perusal of the game "Whatever Next" and the game "Funston" shows that the defendant has simply copied the entire lay out including the picture of characters which have been used by the plaintiff in its game. Even the six plastic pawns meant to be used for playing the game, have been copied in their entirely by the defendants. The lay out of the box containing the game is also remarkably similar to that of the plaintiff in design, colour combination and characterisation. Even the words used on the said container and the design of printing them in a bubble, has been copied ditto by the defendants. As for example, on the card board container of the game, the plaintiff has used the following words "the acting, singing, laughing, hopping, crawling, jumping game". The defendants have also copied the said working in their game and used identical terminology to describe it. The posture of the character reproduced on the container and the had shown holding the card and even the description of the game has been copied by the defendants from the game of the plaintiff. Even the age group and the number of players, as described on the container by the plaintiff in its game, has been lifted by the defendants. The defendants have lifted the entire instructions/manner of playing the game from the game of the plaintiff. Similarly, the picture of the characters both animate/inanimate in the playing board including a cat with a curved tail, bespectacled lady with an umbrella and a chequered apron, a worm with drooping eyes, an old man eating a banana, a young man with a long broom in his hand, in a chequered shirt etc. as well as the multi coloured track for throwing the dice, have all been copied by the defendants to the last `T' to the extent that even the number of leaps taken by the frog in the play board are also identical. There can be no plausible explanation for such glaring similarities and the resemblance is more than merely co-incidental. The defendants have made a clear attempt to make the picture game printed by the plaintiff under the title "Whatever Next" resemble with those of the plaintiff. All the aforementioned commonalties clearly lead to the conclusion that the defendants have made a conscious attempt to copy all the important characteristics of the plaintiff's game. The similarities are so obvious to the naked eyes that there cannot be an iota of doubt as to the mala fide intention of the defendant. The plaintiff's works have been substantially reproduced and the acts of the defendants clearly amount to infringement of copyright that vests in the said work in the plaintiff. By lifting the entire game of the plaintiff entitled "Whatever Next" and printing the same in the form of "Funston", the defendants have directly impinged upon the plaintiff's exclusive right to games manufactured and distribute these games thereby causing great harm and injury to it. The plaintiff stands to suffer substantial loss due to the infringement and illegal activities indulged in by the defendants. The defendants are printing/publishing/selling the said material to cause confusion and deception in the minds of unwary purchasers including small children who are thinking that the defendants have some connection with the plaintiff.
(4) The plaintiff in the suit seeks permanent injunction injunction restraining the defendants, their partners/proprietors as the case may be, its printer, publishers, agents, distributors, servants etc from printing publishing, reproducing, circulating or offering for sale or advertising the game entitled, "Funston" (Annex.B in the list of documents) and any other game under the infringing work of plaintiff or any other artistic work which has the substantial reproduction of the plaintiff copyright of the game having title "Whatever Next" thereby infringing the copyright that vests in the said game; an order of permanent injunction restraining the defendants, their partners/proprietors as the case may be, their printer, publishers, agents, distributors, servants from passing off their goods as the goods of the plaintiff; and for rendition of accounts into the profits made by the defendants since the adoption of the said artistic works which is an infringement of the plaintiff on the sae of offending goods and other such goods which are infringement and passing of the goods of the plaintiff.
(5) It is further alleged that the plaintiffs stand to suffer substantial loss due to the infringement and illegal activities indulged by the defendant by printing the said game and by causing confusion and deception in the minds of unwary purchasers. Hence, the prayer for ad interim injunction mentioned herein above.
(6) The defendants are contesting the suit as well as the application on various grounds. One of the preliminary objections taken is that the owner of the copyright has not been made a party to the proceedings. The authorship of the alleged copyright has not been disclosed and author of the work has not been made a party. The plaintiff is not the exclusive licence of the alleged copyright owner and therefore not competent to file the present suit, particularly within the provisions of the Copyright Act. The plaint does not explain the circumstances in which M/s Living and Learning Cambridge) Limited acquired the ownership of the property, if any, in the game "Whatever Next". The plaintiff has failed to disclose the number of games the plaintiff had sold till date. In the absence of the said information, there is no ground of any goodwill and reputation having been acquired and consequently the suit is liable to be dismissed. Plaint has not been signed and verified by proper and competent person. This court has got neither pecuniary nor territorial jurisdiction to try this suit. It is only misconceived as being made without any cause of action. The suit has been instituted solely with a view of pressurising the defendants who are rivals of the plaintiffs to stamp out the fair and legitimate competition. The factual allegations in the plaint have been denied other for want of knowledge or otherwise. It is denied that the plaintiff has already manufactured and distributed for sae the game all over India and the said game which was supplied by way of sample by M/s Living and Learning (Cambridge) Limited, to the plaintiff. It is denied that the plaintiff is exclusive licencee of the said game that M/s Living and Learning (Cambridge) Limited are the owners of the copy right in the said game and has no right to restrain others from using or marketing the game containing similar ideas. It is emphatically denied that the plaintiff has any right to reproduce the game as well as the colour combination, get up and lay out and posture of character in the particular manner as alleged. It is further denied that the game "Whatever Next" is popular for the reasons stated in para 9 of the plaint. Similarities in the game have also been denied and according to the defendants, the plaintiffs are not entitled to any relief whatsoever.
(7) I have heard both the parties' counsel at length and both the parties have also filed written submissions. I express my thanks to both the parties for giving their written submission in brief to appreciate their points of view without leaving specific turns, twists and contours of the matter.
(8) The first point to be considered is the pecuniary and territorial jurisdiction. The plaintiff has valued the suit as under: @SUBPARA = a) For an order of permanent injunction restraining the infringement of copyright, this relief is valued for purposes of Court Fees and jurisdiction at Rs. 200.00 and a court fee of Rs. 20.00 is paid. @SUBPARA = b) For an order of permanent injunction restraining passing off this relief is valued for purposes of court fees and jurisdiction at Rs. 200.00 and a court fee of Rs. 20.00 is paid. @SUBPARA = c) For delivery upon affidavit of the offending material, dies, stationery, stickers, books and all other offending material the plaint is valued for purposes of court fees and jurisdiction at Rs. 200.00 and a court fee of Rs. 20.00 is paid. @SUBPARA = d) For an order of rendition of accounts into profits earned by the defendants on the sae of offending goods the plaint is valued for purposes of court fees and jurisdiction at Rs. 1000.00 and a court fee of Rs. 200.00 is paid. The jurisdictional value of this relief is fixed at Rs. 5 lakhs. The plaintiff undertakes to pay the additional court fee of this relief when the exact amount due to it is ascertained on rendition of accounts. @SUBPARA = The total fee paid is Rs. 210.00 and the jurisdictional value of this suit is Rs. 5,00,600.00 .
(9) There is dispute about the valuation of the rendition of accounts. According to the value mentioned by the plaintiff, the jurisdictional value is fixed at Rs. five lakhs. The plaintiff has not paid and the plaintiff undertakes to pay an additional court fee of this relief when the exact amount due to it is ascertained on rendition of accounts. This submission is assailed by the learned counsel for the defendant Shri Ajay Sawhney. According to him, this court has no jurisdiction to entertain the suit and according to the valuation made by the plaintiff in para 20 of the plaint, the suit amounts to a value of Rs. 1600.00 on which Rs. 208.00 has been paid as court fee. Learned counsel for the defendant in support of his contention relief upon M/s Globe Super Parts, Faridabad Vs. Domestic Appliances & Anr., 1981 Ptc 78; Abdul Hamid Shamai Vs. Abdul Majid & Ors., and M/s Commercial Aviation and Travel Company & Ors. Vs. Mrs. Vimla Pannala, . It is submitted that the jurisdiction value of the relief of the rendition of the accounts fixed at Rs. 5 lakhs by the plaintiff is totally arbitrary, without any reason or justification. The plaintiff is entitled only to manufacture and market 2000 such games. The retail price of the game "Whatever Next" is Rs. 215.00 . Even presuming that the plaintiff earns hundred percent profit and there is no cost of manufacturing and the production of the said game (which is a practical impossibility) then also the maximum damage that the plaintiff would suffer would be well below the jurisdictional value of this court. As there are objective standards available to the plaintiff for the valuation of its suit the present suit is not maintainable.
(10) In response to this objection, the reply of the plaintiff is that pecuniary jurisdiction of the court is to be decided on the basis of the aggregate value of each relief and the plaint has to be read as a whole. Minor curable defects have to be ignored as the court has to impart substantial justice to parties and technicalities cannot stand in the way of imparting such substantial justice. The plaintiff has given an undertaking to pay the court fee at a later stage after the exact amount is ascertained on rendition of accounts. Consequently, the suit has been correctly valued at Rs. 5,00,600.00 .
(11) In State Trading Corporation of India Limited Vs. Government of Peoples Republic of Bangladesh, , a Division Bench of this court comprising of R.C. Lahoti, J and myself, had taken the view in para 10 of the judgment at p.448 as under: its 10."...The court while hearing a prayer for the grant of ad interim injunction would certainly apply court so as to guard itself against likely misuse of its jurisdiction amounting to the abuse of process of the court. Having formed such a prima facie opinion the court may arrive at a finding that the territorial jurisdiction appears to vest in it or it is likely to have jurisdiction to try the suit and there is a likelihood of the plaintiff being bale to substantiate all such averments on the basis whereof it proposes to invoke the territorial jurisdiction of a court then the court shall have the jurisdiction to pass interlocutory orders and granting interim relief so as to protect the interest of the parties."
(12) In the case in hand, it appears that the court virtually does not have any jurisdiction in the matter as would be evident hereinafter.
(13) It appears that there is lot of force in the submissions made by the learned counsel for the defendant. If the defendant is earning hundred per cent profit, which is an impossibility, the loss of 2000 games of "Whatever Next", @ Rs. 215.00 per game comes to Rs. 4,30,000.00 . If one adds in it Rs. 600, the suit could have been valued at the most at Rs. 4,30,600.00 and not more.
(14) In a similar situation and in respect of similarly worded plaint, Hon'ble Mr. Justice D.K. Kapoor in M/s Globe Super Parts, Faridabad Vs. Domestic Appliances & Anr. (supra), took the view that either the suit had to be tried on the basis that value for jurisdiction was Rs. 800 or the suit had to be tried on the basis that the value was Rs. 200,600. If the value for jurisdiction was Rs. 2,00,600.00 , then the court fee was also payable on Rs. 200,600.00 . The rationale is that the value for jurisdiction and the value for court fee can only be altered in certain cases covered by the rules otherwise it has to be the same. It was also observed that the form of pleadings is such that I am not satisfied that this court has jurisdiction. I think, the plaintiff has shown the value for the purpose of court fee and jurisdictional value to be Rs. 800.00 . I accordingly direct the plaint to be returned to the court having jurisdiction for disposing for the same. But, I leave the parties to bear their own costs."
(15) In Abdul Hamid Shamai vs. Abdul Majid & Ors. (supra), the Supreme Court observed that it was true that in a suit for accounts, the plaintiff was not obliged to state the exact amount which would result after taking all the accounts and he might, therefore, put a tentative valuation upon the suit, but he was not permitted to choose an unreasonable and arbitrary figure for that purpose. In a suit for accounts the correct amount payable by one party to the other could be ascertained only when the accounts are examined and it was not possible to give an accurate valuation of the claim at the inception of the suit. The plaintiff was, therefore, allowed to give his own tentative valuation. Ordinarily the Court should not examine the correctness of the valuation chosen, but the plaintiff could not act arbitrarily in this matter. If a plaintiff chose whimsically a ridiculous figure it would be tantamount to not exercising his right in this regard. In such a case it is not only open to the court but its duty to reject such a valuation".
(16) In M/s Commercial Aviation and Travel Company & Ors. Vs. Mrs. Vimla Pannala (supra), the Supreme Court again observed as under: @SUBPARA = Ordinarily, it is not possible for the Court at a preliminary stage to determine the value of the relief in a suit for accounts simpliciter. If the Court is itself unable to say what the correct valuation of the relief is, it cannot require the plaintiff to correct the valuation that has been made by him. Indeed, in a suit for accounts it is also difficult for the court to come to a finding even as to the approximate correct valuation of the relief. In such a case, the court has no other alternative than to accept plaintiff's valuation, tentatively. Of course, when there is an objective standard of valuation, to put valuation on the relief ignoring such objective standard, might be a demonstratively arbitrary and unreasonable valuation and the court would be entitled to interfere in the matter".
(17) In such a case, a court would be in a position to determine the correct valuation with reference to the objective standard or materials available to it. Thus, where there are objective standards of valuation or in other words, the plaintiff or the court can reasonably value the relief correctly, on the basis of certain definite and objective material, the plaintiff will not be permitted to put an arbitrary valuation and such objective standard would decide the valuation.
(18) The question of valuation of the suit for rendition of accounts was considered in Niit Limited Vs. Nitt, 1995 Ii Ad (Delhi) 201. Para 8 of the judgment is relevant for this purpose para 8 reproduced as below:
A suit for accounts governed by Section 7(iv)(f) of the Court Fees Act is included in the category of suits covered by Section 9. In exercise of the power so conferred, the High Court of Lahore has framed rules. Rules 3 and 4 relevant for the purpose at hand are extracted and reproduced hereunder:
3.Suits in which the plaintiff in the plaint asks for accounts only not being -- (i) Suits to recover the amount which may be found due to the plaintiff on taking unsettled accounts between him and the defendants.
(II)Suits of either of the kinds described in Order Xx, Rules 13 of the Code of Civil Procedure.
VALUE--(A)For the purpose of Court Fees Act 1887. ...Rs. 200 (B)For the purposes of the suits valuation Act, 1887 and the Punjab Courts Act, 1981. Rs. 1000 4(I)Suits in which plaintiff in the plaint seeks to recover the amount which may be found due to the plaintiff in taking unsettled accounts between him and the defendants.
(II)Suits of either of the kinds described in Order Xx, Ruled 13 of the Code of Civil Procedure:
VALUE for the purpose of Court fee (A)As determined by the Court Fees Act, 1870.
VALUE for the purpose of jurisdiction (B)FORthe purpose of Suits, Valuation Act, Suits 1887 and 1981, as valued by the plaintiff in the plaint, subject to determination by the Court at any stage of the trial.
THERE is no dispute that the above said rules shall be deemed to have been framed by Delhi High Court and would apply to the suits tried in courts at Delhi.
(19) This matter has been dealt with in great detail and after considering all the facets, the court took the view that the relief for accounts of profits in such suits including a suit in a copy right matter would be based not on contract but on statute and so would be governed not by Rule 4(i) but by Rule 3. Accordingly, for the purpose of jurisdiction valuation of the suit for rendition of account would be only Rs. 1000.00 .
(20) Besides, in view of peculiar circumstances in the present case and having regard to the limited interest in producing 2000 games and the retail price of each game being Rs. 215.00 , the loss could not be more than Rs. 4,30,000.00 in any case with an extreme assumption that such 2000 games would be produced out of blue without spending any money by way of cost of production and marketing the same. In such circumstances, it is not possible to accept the contention that the court has got any pecuniary jurisdiction over the matter I feel that this court should neither entertain the application for relief of granting ad interim injunction nor should it keep this matter pending in this court.
(21) I am not dealing with other points argued by the learned counsel for the parties for I do not wish to prejudice the mind of the District Judge who would be dealing with this matter by giving any tentative opinion.
(22) With these observations, the application is also to be returned along with the plaintiff. The plaint is accordingly directed to be returned to avoid any further loss to the plaintiff on account of the bar of pecuniary jurisdiction for presentation to the learned District Judge, Delhi. The learned counsel for the plaintiff Ms. Hima Kohli has been accordingly informed to take necessary steps as may be required under Order 7 Rule 10A.
(23) As prayed jointly by Ms. Hima Kohli and Shri Ajay Sawhney, the plaint may be presented before the learned District Judge on 25th June 1997 and both the parties are directed to appear before learned District Judge on the said date.