Madras High Court
N.Sathish vs Mr.C.Murali Kannan on 10 November, 2019
Author: N.Sathish Kumar
Bench: N.Sathish Kumar
C.S.No.73 of 2017
Reserved on : 07.11.2019
Pronounced on : 10.11.2019
IN THE HIGH COURT OF JUDICATURE AT MADRAS
CORAM
THE HONOURABLE MR.JUSTICE N.SATHISH KUMAR
Civil Suit No.73 of 2017
N.Sathish
Proprietor
Om Tech Plastics,
No.16, 1st Main Road,
Ram Nagar, Peravallur,
Chennai – 600 082. ... Plaintiff
Vs
1. Mr.C.Murali Kannan,
2. Mr.M.Srinivasan
3. B.Ramachandran ... Defendants
Prayer :- Suit filed under Order VII Rule 1 CPC read with Sections 55 & 62 of
the Copyright Act, 1957 for the following reliefs :
a. Granting permanent injunction restraining the defendants, by
themselves, their servants, licences, agents and distributors or any one claiming
through them in any manner from committing 'passing off' their goods 'plastic
water taps and shower taps' and other bathroom fittings as and for or being
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C.S.No.73 of 2017
connected with the business of the plaintiff's mark 'SIVA' by using the deceptively
similar mark either 'MSR SIVA'.
b. Directing the defendants to surrender to the plaintiff all the unsold
goods of plastic water taps and shower taps under the deceptively similar mark
'SIVA' or 'MSR SIVA' containing or consisting of the offending packages together
with the blocks or dyes used for the purpose of printing the same for destruction;
c. Directing the defendants to pay the plaintiff the cost of the suit.
For Plaintiff : Mr.R.Sathish Kumar
For Defendants : Mr.A.Thiyagarajan (SC)
for Mr.D.Senthil Kumar
JUDGMENT
This suit has been filed for permanent injunction restraining the defendants and their men from committing 'passing off' their goods 'plastic water taps and shower taps' and other bathroom fittings as and for or being connected with the business of the plaintiff's mark 'SIVA' by using the deceptively similar mark either 'MSR SIVA' and to direct the defendants to surrender to the plaintiff all the unsold goods of plastic water taps and shower taps under the deceptively similar mark 'SIVA' or 'MSR SIVA' containing or consisting of the offending 2/20 http://www.judis.nic.in C.S.No.73 of 2017 packages together with the blocks or dyes used for the purpose of printing the same for destruction and for cost.
2. The brief facts of the plaintiffs case is as follows :
2.1. It is the case of the plaintiff that the he is a manufacturer of 'Plastics Taps and Bathroom Fittings' including water taps under the Trade Mark 'SIVA' which is being continuously from 01.01.1994, viz., from the days of predecessors-in-title and gained reputation and goodwill attached to the said trade mark and his products mainly plastic water taps. The plaintiff has acquired a right of property in the said trade mark 'SIVA' by such continuous user from the days of predecessors-in-title. Originally the trade mark 'SIVA' in respect of goods water taps was adopted by the plaintiff's father S.Narendran from 11.04.1994 carrying on business under the name and style of Sri Murugan Plastics The plaintiff's father had obtained trade mark registration in wrong class under the Trade Mark No.757539 dated 16.06.1997. Since the trade mark 'SIVA' was registered wrongly in class 2, the plaintiff's father has not renewed the said trademark. The plaintiff has assigned the mark in favour of the plaintiff. The plaintiff started to carry on the business under the name and style 'Om Tech Plastics' from the year 2013. The defendants are known to the plaintiff's family and to some extent, they participated in the business of plaintiff's father in one 3/20 http://www.judis.nic.in C.S.No.73 of 2017 way or other by procuring raw materials for plaintiff's father business 'Sri Murugan Plastics' or rendering assistance in the administration of the said business in all these years or doing the job work by manufacturing water taps both for the plaintiff and his father. Since their relationship were strained during the last month of 2015, the defendants have started to market the plastic water taps under the deceptive mark 'MSR SIVA'. The defendants have jointly filed one trade mark registration application No.3092920 dated 03.11.2015 in relation to goods taps, bath taps, water taps, shower taps ect., by claiming user from the 05.09.1995. The plaintiff is having 22 years longer user of the mark 'SIVA' in respect of the above said goods till this date. The plaintiff gained popularity during the last 22 years. The conduct of the defendants amount to 'passing off' their goods like that of goods of the plaintiff. Hence, the suit.
2.2.
3. Brief contentions of the defendants are as follows :
3.1 It is the contention of the defendants that the plaintiff has not established the alleged right and interest over the trademark. Neither the plaintiff nor his predecessor is the prior exclusively user of the said Mark of 'SIVA' and the Trade Mark Application No.22877584 as invalied and abandoned one. The 4/20 http://www.judis.nic.in C.S.No.73 of 2017 said Narendran, father of the plaintiff was a part of the defendants business during the year 1994 and he never involved in manufacturing activities of taps and the said Narendran was only utilized by the defendants to market 'SIVA Taps' which are manufactured by them. The defendants were engaged in manufacturing of the taps, moulds and dyes in the name and style of 'SIVA'. Since, the defendants found the said Narendran was paying some fraud, avoided him in their business. Thereafter, the said Narendran fraudulently took away the dyes which were utilized by the defendants for manufacturing of taps in the name of 'SIVA'. Thereby, the defendants have lodged a police complaint, wherein the plaintiff has admitted the theft of dyes. It is further stated that only the defendants were manufacturing plastic taps in the name and style of 'SIVA' and father of the plaintiff had earned his entire livelihood through the defendants business and in order to reciprocate his well being the said Narendran had mentioned the defendants name in the invitation card. The plaintiff's father indirectly admitted that the defendants are having right over the trade mark of 'SIVA' and they are protected under Section 54 of the Trade Mark Act. The plaintiff and his father colluded together and filed the present suit. The alleged assignment deed dated 06.12.2015 is created for the purpose of the suit. The application filed for registration of the trademark is also pending before the Trade Mark Registrar. The plaintiff has not come to the Court with clean hands. It is 5/20 http://www.judis.nic.in C.S.No.73 of 2017 their further contention that the trade mark 'SIVA' is not absolutely belong to the plaintiff's father and the defendants were using the mark concurrent from 1994. The trade mark 'MSR SIVA' absolutely belongs to the defendants and the said mark is not a deceptive mark. The defendants have not committed act of 'passing off'.
3.2 Dr.Omkarnath's publication had come out in the year 1985 and the plaintiffs' work had been released only in the year 1989. The plaintiffs' work was one of mere compilation whereas the defendants have expended expertise and labour in classifying them and arranging them under various sub heads in an user friendly manner. The work of the defendants is not only dissimilar but has no connection with the work of the plaintiffs. In fact the answering defendant's book is very distinct and carries a stamp of specialty in that. It sub divides each subject to various sub topics which are easy for students for reference and study. The total number of questions have been picked up from out of about one lakh questions spreading over 25 years. In printing about 16,000 questions and answers, if there is overlapping of questions and answers even in about 50%, it cannot mean copying. It is the further case of the defendants that in 2001 edition, out of 483 questions in Orthopaedics which find place in the plaintiffs book, 315 questions are the same as those found in Dr.Omkarnath's book. Thus 6/20 http://www.judis.nic.in C.S.No.73 of 2017 65% of the questions are common to both the books. Hence, it is contention of the defendants that the plaintiff has no copyright over the compilation of questions.
4. Based on the above pleading, the following issues have been framed :
1. Whether the plaintiffs can claim copyright in their book containing compilation of questions from various university papers, claiming it to be a literary or artistic work within the meaning of copyright under the copyright Act, 1957?
2. Whether the book of the defendants in arraning the questions topic-wise and year-wise culled out from old questions is totally in contract with the plaintiffs' books, which, according to the defendants is a mere compilation of the questions found in the data bank?
3. Whether the books published by the defendants infringe the purported copyright of the plaintiffs?
4. Are there different books published by several publishers similar in general but different in its presentation than the book of the plaintiffs? If so, can the plaintiffs claim copyright 7/20 http://www.judis.nic.in C.S.No.73 of 2017 in their work?
5. Whether the plaintiffs are entitled to the reliefs of permanent injunction as prayed for?
6. Whether the plaintiffs are entitled to claim damages for infringement of copyright? If so, to what extent?
7. Whether the plaintiffs are entitled to a direction against the defendants to surrender books 'PG Plus' and 'PG Plus 2003'?
8. To what relief, the plaintiffs are entitled?
5. On the side of the plaintiff, P.W.1 was examined and Ex.P.1 to Ex.P.12 were marked. On side of the defendants, D.W.1 has been examined and Ex.D.1 to Ex.D.6 were marked.
Witnesses examined on the side of the plaintiffs :
P.W.1. - Dr.Salgunan Witnesses examined on the side of the defendants:
D.W.1 – Dr.Rama Gupta'Edara 8/20 http://www.judis.nic.in C.S.No.73 of 2017 Exhibits produced on the side of the plaintiffs:
S.No Date Description of documents Exhibit
.
1. -- Photocopies of of letters P-1
2. -- The second edition of the book published in 1989 P-2
by the plaintiff
3. -- The fifth edition of the book published in 1992 by P-3
the plaintiff
4. -- The tenth edition of the book published in 1997 P-4
by the plaintiff
5. -- The fourtheenth edition of the book published in P-5
2001 by the plaintiff
6. -- The fifteenth edition of the book published in P-6
2002 by the plaintiff
7. -- The book of the defendants published in 2002 P-7
8. -- The book of the defendants published in 2003 P-8
9. -- Question paper for the examination conducted in P-9
the year 2009
10. -- Question paper for the examination conducted in P-10
the year 2012
11. -- Post Graduate Entrance Test 2011 by Karnataka P-11
State
12. -- Post Graduate Entrance Test in the year 2012 P-12
Exhibits produced on the side of the defendants:
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S.No Date Description of documents
.
1. -- Dr.Omkarnath's Second edition on all India Post Graduate
Medical Entrance Examination
2. -- Dr.Omkarnath's 2001 Edition
3. -- Review of Post Graduate Medical Entrance Examination (3
Volumes)
4. -- Questions from various University question papers covering
19 subjects (3 volumes)
5. -- Ninth Edition of book titled PG Plus published in March
2012 (2 volumes)
6. -- Page No.10 of Ex.D.1
6. The learned counsel appearing for the plaintiffs would submit that the plaintiff is a Senior Consultant, Cardio Thoracic Surgeon. With a view to help candidates preparing for post graduate medical entrance examination, by great physical efforts skill, labour, time and by expending huge money, collected almost all question papers in the Post Graduate Entrance Examination conducted by various institutions and organizations and compiled them in topic order and first published the compilation in the year 1988 under the title “Review of Post Graduate Entrance Examination” and the second plaintiff is the publisher.
It is the further contention of the learned counsel that the questions are arranged and grouped topic-wise for easy reading and coverage by the users and the answers are given for the questions at the bottom of the respective pages for 10/20 http://www.judis.nic.in C.S.No.73 of 2017 easy reference instead of giving at the end of the book or at the end of each topic. The questions are selected from the examinations conducted right from the year 1978. Continuing the efforts in acquiring materials in updating at huge capital, skill, labour and expenses the number of questions in the plaintiffs' publications greatly increased from 3000 in 1988 to 18000 in 2002. Whereas, the defendants without any effort, labour, capital, expertise or skill had merely copied questions from the compilations of the plaintiffs and published under the title PG Plus. Hence, it is his contention that the defendants almost lifted all the questions from the plaintiffs book and published. Even the mistakes found in the plaintiffs questions were copied by the defendants. Hence, it is his contention that the compilation even derived from the common source also falls within the ambit of literary work protected under the Copyright Act, 1957. The plaintiff has published their compilation first. Hence, submitted that the plaintiff is certainly entitled to permanent injunction against the defendants. In support of his contentions, he also relied on the following judgments :
Eastern Book Company and others Vs. D.B.Modak and another reported in 2008 (1) SCC 1 Burlington Home Shopping Pvt. Ltd. Vs. Rajnish Chibbar reported in 1995 (35) DRJ 335 V. Govindan Vs. E.M.Gopalakrishna Kone reported in A.I.R. 1955 11/20 http://www.judis.nic.in C.S.No.73 of 2017 Madras 391 Shyam Lal Paharia Vs. Gaya Prasad Gupta 'Rasal reported in AIR 1971 Allahabad 1992
7. The learned Senior Counsel appearing for the defendants would submit that the plaintiffs cannot claim any copyright over the question papers compiled in his book. The plaintiff himself has copied the question papers of various other books. Mere collection of questions published various universities will not amount to creativity. The plaintiffs had stopped publishing books for 6 years on account of his pre-ccupation with medical work. He also feigned ignorance to contents of various websites containing questions to various medical entrance examinations. However, he could not deny the fact that other publishers had come out with similar books as brought by the plaintiffs having similar contents. Ex.D.1 and Ex.D.5 being books in the public domain 60% viz., Dr.Omkarnath's Vikas Bharathi prior to the plaintiff and those books also have similar content. The plaintiffs have also admitted that it would be possible for others to come out with similar books once the questions and answers became available in public domain. Importantly, the mistakes pointed out by the plaintiffs in their plaint which the plaintiffs claim have been lifted from their book without the defendants even correcting them were also present in Dr.Omkarnath's book. 12/20
http://www.judis.nic.in C.S.No.73 of 2017 These facts clearly indicate that the plaintiff himself copied the questions from Dr.Omkarnath's book. Therefore, there is no copyright for the alleged creativity. Hence, it is his contention that there is no copyright in an idea but only the expression of an idea in the form of a literary, musical, artistic or dramatic work, cinematograph film or sound recording. The test of minimum skill and judgment would be the factor in deciding whether the copyright subsists in any derivative work. Hence, submitted that the plaintiff's suit has to fail. In support of his contentions, he relied on the judgment in Eastern Book Company and others Vs. D.B.Modak and another reported in 2008 (1) Supreme Cout Cases 1.
8. Issue Nos.1 to 8.
On a perusal of the entire plaint, the same indicate that the plaintiff book contain questions from various question paper from various universities from the year 1978. What the plaintiff primarily done is that he compiled the multiple choices of the questions and answers. A perusal of the entire evidence of P.W.1 clearly indicate that much prior to the compilation made by the plaintiff, Dr.Omkarnath Vikas Bharathi and several others also compiled several questions from the very inception. Ex.D.1 to Ex.D.5 also filed to prove the above facts. In the cross examination of P.W.1 also he has not disputed the question bank available in the form of various books and also on online platform. He 13/20 http://www.judis.nic.in C.S.No.73 of 2017 could not deny the fact that the other publishers have also come out with similar books. Therefore, this Court is of the view that when the question papers are available in the public domain, merely arranging the question papers topic wise cannot be said that the plaintiff has acquired copyright in the work.
9. The another contention of the plaintiff is that the defendants have copied some 5 questions from the plaintiffs book with similar mistakes. Whereas, the evidence of P.W.1 clearly indicate that such mistakes are also very much found in the earlier books published by Dr.Omkarnath Ex.D.2. These facts clearly indicate that the plaintiff is not the author of questions published in his book and infact he himself has copied from some other compilations. The entire cross examination of P.W.1, when carefully seen the same reveals that the plaintiff had stopped publishing books for 6 years on account of his preoccupation with medical work on the date of evidence. It is also admitted the availability of question bank in the public domain. Section 13 of the Copyright Act deals with copyright subsists. As per Section 13 of the Copyright Act, the copyright shall subsist in
(a) Original, literary, dramatic, musical and artistic works
(b) cinematograph films and
(c) Sound recording 14/20 http://www.judis.nic.in C.S.No.73 of 2017 It is also well settled that there is no copyright in an idea but only the expression of an idea in the form of a literary, musical, artistic or dramatic work, cinematograph film or sound recording. In the judgment in Eastern Book Company and others Vs. D.B.Modak and another reported in 2008 (1) Supreme Court Cases 1, the Apex Court has held that test of minimum skill and judgment would be the factor in deciding whether the copyright subsists in any derivative work. While tracing the march of copyright law, the Apex Court considered certain English judgments viz., University of London Press Ltd. V. University Tutorial Press Ltd. 1916 (2) Ch 601 which had enunciated the “sweat of the brow doctrine” where the emphasis was the labour expended on a project it also considered the decisions of the American Court in Feist Publications Inc. v Rural Telephone Service Co. Inc. in 499 U.S. 340 where the “Sweat of the brow” doctrine was rejected in favour of the test of minimal degree of creativity reasoning that copyright protection could not apply to facts per se, that choices as to sequencing and arrangements of facts so long as they were compiled independently and entailed a modicum of creativity would pass the test of being original.
10. In Dr.Reckeweg & Co. GMBH Vs. Adven Biotech P. Ltd. reported 15/20 http://www.judis.nic.in C.S.No.73 of 2017 in the Delhi High Court has held as follows :
“To this end, copyright assures authors the right to their original expression, but encourages others to build freely upon the ideas and information conveyed by a work. The principle known as the idea expression or fact expression dichtomy, applies to all works or authorship. As applied to a factual compilation, assuming the absence of original written expression, only the compiler's selection and arrangement may be protected; the raw material may be copied at will.”
11. In Govindan Vs. E.M.Gopalakrishna Kone and another reported in AIR 1955 Madras 391, this Court has held that
10. Exhibit A. 7 shows that even errors were carried over, from Ex. A. 1 and the other dictionaries consulted by D. W. 1, into Ex. A. 2. Exhibit A. 8 shows the sequence of words in Ex. A. 1 being slavishly copied in Ex. A. 2. The matter is important because Subbier had only chosen certain words considered by him to be suitable for students of the first to sixth forms in the dictionary, Ex. A. 1, which did not, therefore, purport to be a complete dictionary of all English words. The words in Ex. A. 8 are not such as would commend universal acceptance or approval as words suitable for high school boys. Words like Apostrophizs, aperture, apothecary are not quite the words one would think suitable for such students, but even they were copied, like the errors, by D. W. 1, in Ex. A. 2, 16/20 http://www.judis.nic.in C.S.No.73 of 2017 in his haste' to produce his dictionary, Ex'. A. 2, from Ex. A. I.
11. Some words like cadence, macrocosm, etc., not likely to be of much use to such high school-boys, in Ex. A. 1 were copied out with indefatigable fidelity by D. W. 1, in Ex. A. 2. The meaning of most of the words were copied out from Ex. A. 1, and. even the sequence of the Tamil words given as meanings is the same. Many peculiar idioms were taken over bodily from Ex. A. I to A. 2. There is absolutely no doubt that D. W. 1, in compiling Ex. A. 2, bad as his main quarry Ex, A. 1, with minor quarries like Percival's dictionary and Swaminatha Aiyar's dictionary. It was finally admitted by appellant's counsel 'that D. W, 1 copied everything in Ex. A. 2 from some dictionary or other. He Is said to have copied from 12 dictionaries.
12. The next contention was that no originality can be claimed in Dictionaries compilations, guide books, maps etc., as they involve no brains, skill and labour, and the compilation by one man will be exactly the same as the compilation by any other man. I cannot agree. Many men have not got the brains, skill and labour to compile dictionaries, gazetteers, grammars, maps, almanacs, encyclopaedias and guide books. Nor are all of such compilations of the same nature. Then it will be obvious that only one dictionary gazetteer, grammar, map, almanac, encyclopaedia or guide book will, sell, and not the rest. Any man who refers to the Oxford Dictionary, Webster dictionary and Chambers dictionary can easily find out the difference between these dictionaries. There is considerable difference in dealing with the subject-matter. That, will be specially so when the dictionary is not of all the words in the 17/20 http://www.judis.nic.in C.S.No.73 of 2017 language, but of 'select words' considered suitable for high school boys,' where the very same words in one dictionary being taken over to another and later dictionary will certainly prove piracy.
13. In Copinger and James on Law of Copyright, 8th Edn., at page 124, the law has been neatly summarised as follows:
"In the case of compilations such as dictionaries, gazetteers, grammars, maps, arithmetics, almanacs, encyclopaedias and guide books, new publications dealing with similar subject-matter must of necessity resemble existing publications, and the defence of 'common source' is frequently made where the new publication is alleged to constitute an infringement of an earlier one."
It is clearly recognised that all these books are capable of having copyright in them. In law books and books of" the above description, the amount of 'originality' will be very small," but that small amount is 'protected by law', and no man is entitled to steal or appropriate for himself the result of another's brain, skill or labour even in such works.” But in the present case, as already discussed, even the mistakes were infact copied by the plaintiff from the earlier books released by Dr.Omkarnath. All these facts clearly indicate that the plaintiff himself has copied the compilations of various books. Therefore, it cannot be said that the defendants had infringed the copyrights of the plaintiffs. Hence, this Court is of the view that the plaintiff is not entitled to any relief in this suit.
18. Accordingly, the suit is dismissed. No cost.
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vrc Judgment in Civil Suit No.73 of 2017 10.11.2019 20/20 http://www.judis.nic.in