Calcutta High Court
Ht Media Limited vs Utv News Limited & Another on 31 August, 2010
Author: Sanjib Banerjee
Bench: Sanjib Banerjee
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GA No. 2003 of 2010
GA No. 2038 of 2010
CS No. 162 of 2010
IN THE HIGH COURT AT CALCUTTA
ORDINARY ORIGINAL CIVIL JURISDICTION
HT MEDIA LIMITED
-Versus-
UTV NEWS LIMITED & ANOTHER
For the Plaintiff: Mr Ranjan Bachawat, Adv.,
Mr Rudraman Bhattacharya, Adv.,
Mr Debnath Ghosh, Adv.,
Mr Prithviraj Sinha, Adv.,
Mr Sayan Roy Chowdhury, Adv.,
Mr S.K. Bajoria, Adv.,
Mr K. Chatterjee, Adv.
For the Defendants: Mr S.N. Mookerjee, Sr. Adv.,
Mr Abhrajit Mitra, Adv.,
Mr Ratnanko Banerjee, Adv.,
Mr Anirban Roy, Adv.,
Mr Sarathi Dasgupta, Adv.,
Ms Anshumala Bansal, Adv.,
Mr Nikhil Jhunjhunwala, Adv.
Hearing concluded on: August 25, 2010.
BEFORE
The Hon'ble Justice
SANJIB BANERJEE
Date: August 31, 2010.
SANJIB BANERJEE, J. : -
The plaintiff is a leading media house and it has added to its original
business of publishing a well-known newspaper by the name of Hindustan Times
by making forays into radio and the internet. The plaintiff's flagship publication
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has wide acceptability and the newspaper, originally a leading daily in Delhi, has
also a Calcutta edition. A few years back the plaintiff launched a business daily
by the name of Mint in collaboration with a reputed international business
newspaper. The plaintiff claims that Mint has gained wide circulation over a short
span of time and owes much of its phenomenal success to its readers having
access to the worldwide business news covered by the much acclaimed Wall
Street Journal. The plaintiff says that Mint has an impressive circulation of over
120,000 copies daily in six cities in the country, including Calcutta, and counts
reputed commercial institutions and entrepreneurs in its list of annual
subscribers.
The story unfolds with the plaintiff releasing a series of advertisements in
May, 2009 where there is an announcement in the form of a sentence with only
some of the words in English; the other apparent words are made up of Greek
letters that may or may not constitute words in that language. The plaintiff
embarked on a high-profile publicity drive by launching the advertisement
campaign in the print media, the essential message whereof was contained in the
following slogan appearing at the foot of each advertisement: "Presenting Mint,
refreshing clarity in business news." Below such slogan there are two further
lines in smaller print to the following effect:
■ Clear and well-analysed business minus the jargon.
■ Global perspective with an exclusive section from The Wall Street
Journal. Everyday.
The USP, to borrow a jargon from the parties' line of business, of the print
advertisements was undoubtedly this unintelligible message screaming out partly
in English and partly in gibberish in a strange alphabet. To the top right corner
of the advertisement there is the Mint logo with the name in unspectacular lower
case printed in white against a yellow rectangular background. Above the yellow
rectangular patch, the name of the plaintiff's foreign collaborator's paper Wall
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Street Journal is written in block letters but in much smaller size. The
announcement in English and Greek is in black capital letters against a white
background that is in larger size than anything else written in the advertisement.
At the bottom right of the advertisement there is a picture of the Mint newspaper
with the section dedicated to Wall Street Journal on an inside page clearly visible.
The plaintiff says that the concept of incorporating the notion that ordinary
business news as it is presented may be Greek to the audience not versed in that
old and rich language first dawned on the plaintiff and was expressed in the use
of the English words interspersed with Greek alphabets for conveying the
message that the plaintiff's publication was different and the news that it
communicated was lucid and graspable by its readers. The plaintiff insists that in
its conceptualisation of the idea and the expression thereof in tangible form, the
plaintiff is entitled to the exclusive use of the manner of expression thereof and
any variant of such expression would amount to infringement of its copyright
therein. The plaintiff has also pleaded a cause of action in passing-off, though the
relief claimed therefor is an injunction on the defendant from "passing off or
attempting to pass off its advertisements as that of the plaintiff." The claim in
passing-off is not in the trade mark sense of the cause of action; the plaintiff
restricts the cause of action to its advertisements and does not relate it to the
plaintiff's product.
The English and Greek writings are different in the several advertisements
and immediately below the main announcement that is the striking feature of
each advertisement, there is a question posed. In one, the question is: "Is this
how you get your business news?" In another the advertisement asks: "Tired of
complicated business news?" The announcement in every case contains one or
two English words relating to business or the commercial world. The
predominant sense of the advertisement is that business news is generally
incomprehensible, so much so that even parts of solitary sentences used in the
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dissemination thereof may be beyond the audience, but the plaintiff's newspaper
presents it in a lucid, simple manner.
The plaintiff complains of a rival series of advertisements issued by the
defendants, which are in a related line of business. The defendants broadcast
business news on their television channel, Bloomberg UTV. The plaintiff says
that it noticed the first of the defendants' series of advertisements early in June,
2010 when it was published in the Delhi and Calcutta editions of a newspaper.
The plaintiff suggests that its advertisements and the exclusive campaign have
been blatantly copied by the defendants. The plaintiff issued a legal notice on
June 11, 2010 which referred to the plaintiff's advertisement campaign and
claimed that its advertisements had, "achieved a trademark signification, thereby
making it exclusively associated with" the plaintiff. The notice referred to the
distinctiveness of the plaintiff's campaign having been acknowledged at an
advertisements awards ceremony and complained that the defendants' similar
advertising and marketing programme had copied the plaintiff's campaign in
"slavishly and unimaginatively ... depicting Greek words between English
expressions ..." The cease and desist notice complained of the defendants
creating "(c)onfusion and deception in the minds of the public who may presume
a connection, collaboration or association with our Client" that would prejudice
the plaintiff's interest. The letter signed off by alleging that the defendants'
conduct amounted not only to unfair trade practice but also to "infringement of
intellectual property rights of our Client."
The defendants' series of print advertisements show the announcement in
larger front than elsewhere in the advertisements against the backdrop of a
bemused human face. The message in the defendants' advertisements starts with
four or five English words and the rest of the sentence is in Greek language.
A sample each from either set of the rival advertisements may first be seen:
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Towards the bottom of the defendants' advertisements, the literature reads
as follows:
"Let's face it. Business channels actually sound Greek to most of us. Which
raises a rather interesting question. Why is it harder to understand money
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than to earn it? To be honest, it's not. At least not on Bloomberg UTV. We
tell you things like they are. Straight, simple and uncomplicated."
The name of the product or service advertised appears either below the
literature or to the right of it. The logo of the channel is printed above the
following puff as to its efficacy: "Blunt. And sharp."
From the literature in either set of advertisements to the colour,
composition, background and even artistic content, they are different. The
plaintiff does not claim the defendants' series of advertisements to have
physically copied the plaintiff's. The substance of the plaintiff's grievance is that
it was the first to conceptualise the fact that business news may be
incomprehensible to the reader or audience and it expressed the general
sentiment of business news being "all Greek" in its use of English words
interspersed with Greek letters or words to convey the essence of its campaign
that its product was different from others. It says that in the defendants' copy of
the principal feature of the expression, notwithstanding the ostensible use of
different English words and Greek letters or words, is the theft of the concept as
reduced to a tangible form. This, the plaintiff says, amounts to an actionable
wrong and entitles it to an injunction to arrest the copycat advertisement
campaign. The plaintiff traces the history of the copyright law from its genesis to
allow and protect copies of the literary works embodied in books to its expansion
in artistic, musical and other works and says that the "idea-expression
dichotomy" is much misunderstood in this branch of law when it is expressed
simply as, there may be a copyright over an expression but not over an idea. The
plaintiff says that it does not seek protection of any intangible idea but it asserts
its exclusivity in the manner of expression of the concept that essentially involves
English words to be juxtaposed against Greek letters or words to convey the
sense that though business news may generally be perceived as being strange
and incomprehensible, its product is distinctive in its clarity of presentation. The
plaintiff argues that the law in this branch would scarcely have developed if every
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action had to be assessed on the strength of precedents. Paradoxically, the
plaintiff has relied on authorities dating back to more than a century and
commentaries from a venerable textbook to not only justify its claim but to seek
an immediate order to stop the defendants' continuation of their similar
campaign.
The fundamental basis to the plaintiff's claim is that for a work to be a
copy of another in the sense of copyright infringement it need not be an identical
copy but even a substantial reproduction would violate the rights of the original
publisher. The plaintiff contends that what is of significance in an action of the
present kind is as to whether the manner of expression of the concept of which
protection is sought is the only form in which it may be expressed or as to
whether the form of expression would be entitled to protection under any law
other than the Copyright Act. The plaintiff makes a refreshing argument that it is
not necessary to see the bundle of rights that make up copyright in a printed
work comprising of letters and figures in distinct literary and artistic
compartments.
The plaintiff refers to the meaning in the Copyright Act, 1957 of various
words and expressions used in such statute, including the definition of "work" in
Section 2(y); of "artistic work" in Section 2(c); of "dramatic work" in Section 2(h);
of "literary work" in Section 2(o); and, in particular, of "adaptation" in Section 2(a)
that has been substantially enlarged by the 1994 Amendment to include the
residuary clause which implies that adaption in relation to any work would mean
any use of such work including its rearrangement or alteration. The plaintiff
refers to Section 14 of the Act and to clauses (a)(vi) and (c)(v) thereof to
emphasise that in case of both literary and artistic works, the bundle of rights
that makes up the copyright therein includes the right to make any adaptation of
such literary or artistic work. The plaintiff says that the law in this country as to
adaptation is quite distinct from the English Act of 1988 where the wide import of
the residuary clause in the definition of "adaptation" is confined to computer
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programmes and databases. The plaintiff refers to a Division Bench judgment of
this Court reported at 2004 (1) CHN 448 (Barbara Taylor Bradford v. Sahara
Media Entertainment Ltd.) and places paragraphs 133 to 140 of the report in such
context. The plaintiff contends that, without going into the question as to
whether the plaintiff claims copyright in a literary or an artistic work in this case,
if the plaintiff's copyright in its advertisements permitted it to make any
adaptation - which would include alteration - of the work to the exclusion of any
other, the defendants' adaptation of the plaintiff's advertisement in the present
form would be in breach of the exclusivity conferred on the plaintiff by statute.
The plaintiff has emphasised on the inclusive definition of "literary work" in
Section 2(o) of the Act and has relied on the judgments reported at (1960) 2 SCR
866 (State of Bombay v. The Hospital Mazdoor Sabha) and (2005) 1 SCC 308 (Tata
Consultancy Services v. State of A.P.) for the proposition that an inclusive
definition will always denote extension and cannot be treated as restricted in any
sense.
The plaintiff says that the charge against the defendants that the plaintiff
has carried to court is that in publishing the offending advertisements, the
defendants have grabbed the substance or the theme of the plaintiff's
advertisement campaign as expressed in a unique manner. The plaintiff argues
that literary works may be those which convey a meaning without being of high
literary value in the sense of literature. It is submitted that the fact that the
plaintiff has used Greek letters that do not make up meaningful words in that
language is completely irrelevant in the context; even if the defendant had used
Hebrew script, it would make no difference and still be a substantial copy of the
plaintiff's work. The plaintiff says that its advertisements have developed a
secondary significance and in its uniqueness of presentation considerable
goodwill has been generated to which the plaintiff is exclusively entitled. The
plaintiff suggests that the defendants have attempted to appropriate the goodwill
associated with the plaintiff's advertisements and dilute the secondary
significance that associates the campaign with the plaintiff's product. The
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plaintiff concedes that though the first defendant is in a related line of business,
the plaintiff cannot say yet with certainty that there is actual or likely injury
caused to it by the defendant since the first defendant disseminates business
news and views through the electronic medium and the plaintiff by the print
medium. The plaintiff says that at least there would be some similarity in the
area of business since the plaintiff and the first defendant also carry business
news on their respective websites.
The plaintiff submits that for it to succeed in this motion it must dispel the
doubts cast on such right as the plaintiff asserts by the celebrated judgment in
R.G. Anand v. Delux Films reported at (1978) 4 SCC 118. The appellant before the
Supreme Court in that case had written a play in Hindi. The second respondent
before the Supreme Court, a film director, produced a motion picture a few years after the appellant's play was published. The appellant complained that the film was based entirely on his play and sued for damages on account of infringement of copyright. The action was dismissed and the decree was affirmed by the High Court. The leading opinion in the report held that there could be no copyright in the theme of the work in such context when the presentation and treatment of the subsequent work was different. The plaintiff here says that the primary consideration in the Supreme Court rejecting the appeal was that there was concurrent finding by the trial court and the High Court which the Supreme Court was reluctant to interfere with in appeal. The plaintiff suggests that apart from the fact that copyright law has changed substantially over the last 30-odd years, the Supreme Court's endorsement of the view expressed by Copinger on Copyright (11th Ed.) that what is protected is not the original thought but the expression of thought in a concrete form, is a much misconstrued line. As to the idea-expression dichotomy the plaintiff relies on paragraph 24 of the report to say that the meaning of an idea in such context is one which has not been put into any form of words or any other form of expression. It is then, the plaintiff says, that the idea which has not been reflected in any tangible form will command no copyright. The plaintiff asserts that an idea would be that which is in the head 10 but it would take a tangible form and be entitled to protection once it is expressed; the suggestion is that when an idea is not expressed there is no evidence of it for a meaningful right being canvassed in respect thereof, but once the idea has been expressed the expression qualifies for protection. What the plaintiff intends to urge appears to be that the plaintiff cannot claim exclusivity over the underlying thought in its advertisement campaign that business news other than that served by the plaintiff is unintelligible in the sense that the phrase "it's all Greek" implies unintelligibility. What the plaintiff further seeks to emphasise on appears to be that if something else conveying the same sense of unintelligibility captured in the phrase "it's all Greek" was also the underlying thought of the defendants' advertisements, the plaintiff may not have had a cause to come to court; but it is in the defendants' copying the plaintiff's use of English words with Greek letters and words to convey the same sense of "it's all Greek" that gives the plaintiff a reason to complain. What the plaintiff appears to imply is that it has no monopoly over the theme "it's all Greek to" but it can assert exclusivity over its reduction of this theme in English words interspersed with Greek letters and words.
That is the most substantial argument put forth by the plaintiff and it has endeavoured to demonstrate on the strength of several authorities that neither would such cause of action be precluded nor would it be far-fetched for it to seek an immediate arrest of the copycat expression of the same theme in the defendants' advertisements.
The plaintiff has returned to the Barbara Taylor Bradford decision and the discussion at paragraphs 123 to 132 of the report on the idea-expression dichotomy. That matter involved the author of a best-seller seeking to stop a television serial for infringement of copyright in her novel. The law as recognised in the decision applies generally to all facets of copyright as would be evident from paragraph 123 of the report. On the aspect of whether the expression of an idea had been imitated, the Division Bench opined that if the viewer of a 11 television serial got the sense of the same idea which was created by the original work, it would not be enough to establish infringement.
The plaintiff relies on a judgment reported at 1994 FSR 275 (Ibcos Computers Ltd. v. Barclays Mercantile Highland Finance Ltd.) in furtherance of its argument that there is serious criticism of the broad proposition that copyright does not exist in ideas but only in the expression of them. Stemming from this principle, there is a line of authorities that says that if there is only one way of expressing an idea that way cannot be the subject of copyright. It was such line of thought that was criticised in Ibcos Computers Ltd. in the context of a computer programme. The court held that while it was true that copyright could not protect any sort of general principle, but it could protect a detailed literary or artistic expression. The following passage from the report is apposite:
"It should be noted that the aphorism "there is no copyright in an idea" is likely to lead to confusion of thought. Sometimes it is applied to the question of subsistence of copyright (is there a "work" and if there is, is it "original"?). Sometimes it is applied to the different question of infringement (has a substantial part been taken?). That is not to say that the expression has no use: for instance if all a defendant has done is to copy a general idea then it does not matter whether there is copyright in the plaintiff's work, or whether the plaintiff owns that copyright."
The next feature that the plaintiff dwells on is that claims in copyright have generally succeeded when the claimant has been able to establish that the offender had access to the original work. Indeed, a number of decisions cited on both sides reveal that where the defendant had access to the original work or the original work had been communicated in confidence to the defendant, there is an element of presumption of wrongdoing that the defendant was burdened with. The plaintiff here says that a representative of the defendants or of the defendants' advertising agency had picked up a minor award at the same Goa ceremony where the plaintiff's advertisement campaign had been awarded a prize and it must have been there that the unique expression of the simple message 12 conveyed in the plaintiff's advertisements captured the imagination of the defendants' representative and prompted the copy.
The plaintiff has relied on a judgment reported at 1980 RPC 539 (William Hill (Football) Ltd v. Ladbroke (Football) Ltd) where a betting form was found to have been substantially copied. The plaintiff emphasises that there would be hardly any literary content that a betting form would carry yet the original was found to be entitled to protection. The plaintiff has relied on the following passage from the report, in particular:
"Before parting with the case, I must deal with a point specially made by Mr. Bevan. He said these 16 "lists" represented only good ideas of the wagers which might be laid and that it was open to Ladbrokes to take those ideas without infringing copyright, because there is no copyright in an idea. This argument contains a fallacy. True it is that there is no copyright in an idea but that is only true so long as the idea remains in the mind and is not put down on paper. But once it is written down, the writing is the subject of copyright. No one is entitled to copy it on the plea that it was only an idea. Here the ideas were written down in the coupon and, when so written down, became the subject of copyright.
In support of his argument Mr. Bevan relied on Purefoy Engineering Co. Ltd. v. Sykes Boxall & Co. Ltd. (1955) 72 R.P.C. 89 at 98-99. In that case the Purefoy Company made metal parts for jigs. They had no monopoly in them. It was quite open to anyone to copy those parts and the Sykes Company did so. The Purefoy Company made a catalogue of the parts they made. The Sykes Company in turn made a catalogue of the similar parts which they made: but they did not use Purefoy's catalogue. They simply listed their own parts. Inevitably the two catalogues were very alike because the parts listed in them were so much alike. But Sykes had no infringed copyright because they had no copied any of Purefoy's catalogue. They had only listed their own parts as they were entitled to do. I do not think that case has any application here. Ladbrokes have not merely taken the ideas underlying these lists. They have taken the selection as expressed in writing in the headings and notes. They had Hills' coupon before them and took their selection from it. By so doing they infringed the copyright in the coupon." (From pages 546-547) The test, the plaintiff says, is not in carrying a magnifying glass to count the differences between the original and the offending copy but in assessing as to 13 whether the later work is substantially similar to the earlier. The plaintiff relies on the decision reported at 1941 AC 417 (King Features Syndicate, Incorporated v. O. And M. Kleeman, Ltd) and the following passage thereon:
"... The test to be applied is purely visual, the sketch and the brooch being compared oculis subjecta fidelibus. It is not material that the respondents were stealing the idea of "Popeye, the Sailor," or availing themselves for commercial profit of the popularity acquired by that figure. The appellants' copyright is in the actual sketch, not in the idea. There would be no infringement if the respondents had independently produced a similar figure without copying the sketch directly or indirectly. The question is whether there was copying of the actual sketch. Here the only evidence of actual copying, direct or indirect, is similarity with regard to the figure, which is a substantial part of the sketch, between the copyright work and the alleged infringement. I think, however, that, where there is substantial similarity, that similarity is prima facie evidence of copying which the party charged may refute by evidence that, notwithstanding the similarity, there was no copying but independent creation. ..." (From pages 435-436) The plaintiff has relied on passages from Copinger and Skone James on Copyright (15th Ed., South Asian Edition, 2008) to urge that simply to say that there is no copyright in ideas without any further explanation would be dangerous. The plaintiff says that even an idea is deserving of protection provided it has found expression in the form of a work of a category recognised in law. The same exposition on copyright law has been placed by the plaintiff in support of its assertion that copyright will often subsist in press and poster advertisements, either as artistic or literary works (including compilations) or both. Though the revered text says that copyright does not subsist in advertisement slogans, the plaintiff claims that it has not come to protect any slogan but to guard against the copying of the literary and artistic content of the expression of the theme "it's all Greek" in its advertisements. The plaintiff relies on the following passage from the book, on passing-off in advertisements, though it is not a case pleaded in the plaint:
"27-313 Passing off. Similarities between the campaigns of competing advertisers may give rise to a passing-off claim. The tort of passing off is 14 wide enough to encompass slogans or visual material associated with an advertiser's product by means of an advertising campaign. The product must have derived from the advertising a distinctive character recognised by the market. An advertisement which makes use of a competitor's brand name in such a manner as to give rise to confusion as to the source or origin from which that product may be obtained may also amount to a passing off."
A judgment reported at 2003 (27) PTC 457 (Zee Telefilms Ltd. v. Sundial Communications Pvt. Ltd.) is next cited by the plaintiff where the claim was that the plaintiff's work had been wrongly represented as that of the defendants in a television serial. The Division Bench of the Bombay High Court saw through the laboured attempt to create minor dissimilarities in the offending work and inferred that the defendants' effort was a colourable imitation of the plaintiff's work and amounted to appropriation of the labour of the plaintiff that had gone into the production of the original work. It is of no mean importance that the court found that the defendants had access to the plaintiff's work which had been submitted to them in confidence.
The plaintiff has cited another judgment reported at 2002 (25) PTC 1 (Anil Gupta v. Kunal Dasgupta) where the charge of plagiarism was in respect of another television serial. A Single Judge of the Delhi High Court held that though an idea per se had no copyright, but if it was sufficiently developed and fleshed out with adequate details it could claim copyright. In the matter covered by the judgment reported at 2003 (27) PTC 305 (Pepsi Co., Inc. v. Hindustan Coca Cola Ltd.), Pepsi Cola and Coca Cola were at it again. The complaint was one of trade disparagement where the plaintiff claimed copyright in its commercial and the slogan "Yeh Dil Maange More." The commercial complained against was a parody of the plaintiff's commercial and the claim included one for copying the theme of the plaintiff's commercial. At paragraph 35 of the report, the Division Bench of the Delhi High Court found that one of the defendant's commercials was a copy of the plaintiff's commercial with some minor variations incorporated therein and it was on such appreciation that a limited interlocutory order was granted in the 15 appeal. The plaintiff has relied on several judgments where copyright in works such as examination question papers [(1916) 2 Ch 601 (University of London Press, Ltd v. University Tutorial Press, Ltd) and cardboard pattern sleeves [(1894) 3 Ch 420 (Hollinrake v. Truswell)] were the subject-matter of the actions. Papers set by examiners were found to be literary work within the meaning of the statute governing the action. The cardboard pattern sleeve was found to be a mere idea and copyright was found "not to extend to ideas, or schemes, or systems or methods; it is confined to their expression; and if their expression is not copied the copyright is not infringed."
The plaintiff argues that the general trend in copyright law has been to accord increased protection and infringement of copyright is no longer assessed on the basis of an exact copy of the original work but on the application of the substantial similarity test. The plaintiff says the fact that it has used some alphabets from the Greek script in its advertisements and the defendants have used some other Greek alphabets would not amount to any more distinction than between Tweedledum and Tweedledee. The plaintiff places a judgment of a district court of Oregon in the United States delivered on November 16, 2004 (Dunn & Fenley, LLC v. Ronald L. Allen). The plaintiff in such case provided marketing and consulting services to professionals including optometrists and ophthalmologists who wished to develop laser surgery practices. The parties entered into a limited licence by which the plaintiff permitted the defendants to use the plaintiff's work entitled "Lasik Seminar Ad with Eyes" in a number of advertisements in local newspapers. The defendants terminated the agreement and acknowledged that they could not use the plaintiff's material but continued to hold free "lasik" seminars thereafter. The court found that the similarities in the offending work when compared to the plaintiff's work were striking and obvious and held that where a defendant had access to the original work which was claimed to have been infringed, a lower standard of proof of substantial similarity was required to establish the claim. The judgment acknowledged that though copyright law does not protect ideas themselves but protects their 16 expression, when the expression of the idea in the offending copy is found to be substantially similar to the expression of the idea in the original work the claimant was entitled to protection.
In another decision cited by the plaintiff reported at 113 ALR 487 (R & C Products Pty Ltd v. S C Johnson & Sons Pty Ltd) the facts were interesting. Both the opposing parties sold insecticide products for household use. The claimant sought an injunction in respect of the defendant's television commercials on the ground that the publication of such commercials would give rise to passing off of the defendant's products as goods with which the claimant was associated. Though such cause of action is not pleaded by the plaintiff in the present case, the plaintiff here relies on the finding by the Australian Federal Court that if an advertisement had acquired special significance then the adoption of elements of the advertisement by another trader may give rise to a claim of misrepresentation. In that case the claimant's advertisement had been in use from 1968 till 1981 and featured a prominent media personality as the central figure in the series of commercials extolling the virtues of the claimant's product. The catch-line in the claimant's campaign was "When you are on a good thing, stick to it" or "When you are on Mortein, stick to it." The defendant's later commercials featured the same celebrity and it had an exit line that "When you find a better thing switch to it." The court found that the essential elements of Mortein's advertisements, which were the use of the celebrity as the presenter and its catch-line, had been substantially copied in the defendant's slogan presented by the same gentleman. The court found that the intent of the defendant was not to portray its product as the claimant's, but to use elements of the claimant's commercial to cause the public to transfer its loyalty from the claimant's product to the defendant's and thereby damage the claimant's business and goodwill to the advantage of the defendant's business and goodwill.
The defendants begin by defining the limited ambit of the action. They say that it is not for the court, at least at the interlocutory stage, to see what wrong 17 may have been done to the plaintiff; the court has only to make a prima facie assessment of the claim of the plaintiff. Such claim, the defendants say, is confined to the protection of the plaintiff's copyright in its series of advertisements and a charge in the nature of infringement of the plaintiff's copyright by the defendants in the perceived colourable imitation of the plaintiff's campaign in the defendants' advertisements. The defendants refer to the plaint to show that the plaintiff has claimed protection in its literary work and does not proclaim any artistic distinctiveness in its advertisements. The defendants contend that the plaintiff's use of English words juxtaposed against Greek letters or words would not elevate it to the status of a literary work. They rely on the meaning of the word "literary" in the Shorter Oxford English Dictionary (6th Ed.) where the second definition suggests that 'literary' would connote something "having the characteristics of that kind of written composition valued on account of its qualities of form or emotional effect."
While the plaintiff has chartered a course through examination question papers, lady's dress sleeve pattern and even Popeye the sailor in support of its claim, the defence is spun around, inter alia, Jabberwocky, Through the Looking Glass and Mary Poppins that find mention in the authorities cited by the defendants. The defendants say that there is considerable doubt, on the basis of the documents carried to court by the plaintiff, in the plaintiff's assertion of being the owner of the copyright in the work, assuming that there is a possible copyright. They begin by assuming that the plaintiff is the owner of the work but contend that it is not a work in which any copyright may subsist. The defendants submit that on the basis of the pleadings they are not called upon to meet a case of passing-off in the trade mark sense of the expression or of any wrong other than alleged infringement of copyright.
The defendants refer to a judgment reported at 139 LT 365 (Sinanide v. La Maison Kosmeo) where an electrotherapist, in course of treatment of the human face, had advertised extensively with the invented catchphrase, "Beauty is a 18 social necessity, not a luxury," and claimed a copyright in the line as being an original literary work. The grievance was against the defendant's advertisement which contained the line "A youthful appearance is a social necessity." The action succeeded with an injunction and nominal damages. In appeal, the defendant contended that there could be no copyright in a part of a sentence in a work. The leading judgment began by appreciating that the dispute was between two beauty specialists who traded "on the knowledge that there are people who have plenty of money and no brains who are prepared to spend that money in trying to improve the faces which Providence has given them." The leading opinion found that such a catchphrase may have been cited in an action for passing off the defendant's goods as those of the plaintiff, but not by way of a copyright action though there could be copyright in an advertisement.
The defendant next relies on a judgment reported at 98 F 2d 872 (Dorsey v. Old Surety Life Ins. Co.) where the copyright claim was in respect of forms of insurance policies. The court held that a work would not violate the copyright in another simply because there was a similarity between the two if the similarity resulted from the fact that both works dealt with the same subject or had the same common source. The defendants rely on the principle in the present context to suggest that the common source of the two sets of advertisements here is in the sense conveyed by the expression "it's all Greek to" over which the plaintiff cannot claim any exclusivity.
The defendants rely on a judgment reported at 1982 RPC 69 (Exxon Corporation v. Exxon Insurance Consultants International Ltd) where the plaintiff claimed copyright in its coined word "Exxon" which formed part of its corporate name. The plaintiff had also made out a case of passing-off. The trial court held that although the plaintiff was entitled to injunctive and ancillary relief to restrain passing-off, "Exxon" was not an original literary work despite the fact that research and labour had been shown to have been expended in its selection. The appellate court agreed with the trial Judge that the word was not an "original 19 literary work" within the meaning of the relevant statute. The court held that though such name had a denominative characteristic as denoting the plaintiff company, "a literary work would be something which was intended to afford either information and instruction, or pleasure in the form of literary enjoyment."
The defendants say that the form of expression in their advertisements is altogether different. They suggest that apart from the fact that the plaintiff may not have any copyright in the underlying theme that all business news other than the advertisers' were all Greek to the reader or the viewer, the plaintiff's expression is in its choice of random Greek alphabets that do not make any sense; whereas the defendants have chosen a complete sentence in each case and have expressed the same theme by beginning the sentence in English and finishing it in Greek. They refer to the English version of the sentences used in their advertisements. They say that they translated a part of the sentence in Greek and presented their advertisements with a sentence partly in English and the remainder in Greek. The principal distinction, according to the defendants, in their expression of the similar theme as the plaintiff's is that a person versed in English and Greek would make perfect sense of the sentences used in the defendants' advertisements, but the Greek part of the plaintiff's sentences would be "Greek" even to the readers versed in Greek.
The defendants submit that though the plaintiff may have pursued a different line, as the one recognised in the judgment reported at (1981) 1 All ER 213 (Cadbury Schweppes Pty Ltd v. Pub Squash Co Pty Ltd) and a judgment of this Court reported at 2008 (4) CHN 344 (Glaxosmithkline Consumer Healthcare Ltd v. Abbott Healthcare Pvt Ltd.), such a case has not been run in the plaint. In the first of the two cases, known as the Pub Squash case, it was held that the tort of passing-off was wide enough to encompass other descriptive material, such as slogans or visual images associated with the plaintiff's product by means of an advertisement campaign, if that material had become part of the goodwill of the plaintiff's product. The Privy Council, however, found that the themes used by 20 the appellants, although descriptive of the type of the product advertised had never become a distinguishing feature of the appellants' product or generally associated with it. In Glaxosmithkline Consumer Healthcare Ltd it was held as follows:
"18. As much as the intangible property right that a suitor asserts may require protection, unless a more comprehensive case of exclusivity is established at the interlocutory stage, the Court would be loath to hand the plaintiff a ticket to monopoly. If in puffing its product, the plaintiff and the first defendant hit upon features that are generic to the nature of the product, the earlier user or the bigger player or the larger spender cannot claim exclusivity on the epithets. ..."
The defendants have relied on a judgment reported at (1985) 3 All ER 680 (Express Newspapers plc v. Liverpool Daily Post and Echo plc) where a promotional scheme devised by the plaintiffs for their newspaper was alleged to have been copied by the defendants. The plaintiffs prepared a large number of cards which were distributed at random. Each card carried a five-letter code. In each issue of the plaintiffs' newspapers a grid of 25 letters arranged in a square of five rows and five columns were published. The grids and the five-letter sequences were produced by a computer programme specially devised for the purpose. The court found that the computer programme involved a great deal of skill and labour to ensure that there were sufficient winning combinations to make the game attractive but not so many as to make it uneconomic for the plaintiffs. The defendants, also in the newspaper business, copied the grid and five-letter sequences in their publications. On the complaint of infringement of copyright, the defendants argued that the grid and the five-letter sequences were not a literary work within the meaning of the 1956 English Act. The interlocutory injunction was granted.
The law of copyright generally protects the expression of creative authorship. The fundamental purpose of the law in this branch is to encourage creativity born of human endeavour and to reward it. The public interest 21 rationale for copyright is to stimulate creativity and as much as there is a right to protection in works, there is a need to balance conflict in interests. An author has an inherent right of property in the result of his labour and the law gives the author the control over the publication of the work as well as the right to object to a copy or unauthorised modification or other attack on the integrity of his work. It also recognises the economic basis for the investment required to create some works. In substance, copyright law is the negative right of preventing the copying of a work in which copyright subsists. If the idea embodied in the plaintiff's copyright is sufficiently general, the mere taking of that idea will not infringe; if, however, the idea is worked out in some detail in the plaintiff's work and the defendant reproduces the expression of that idea, it may amount to infringement. In such a case, according to Copinger, it is not the idea which has been copied but its detailed expression.
The plaintiff is right when the plaintiff says that far too much may have been made of the proposition that copyright does not subsist in an idea but only in the expression thereof. The word 'idea' in such proposition will imply both the idea which is in the head and not expressed and also the underlying thought embodied in an expression. The underlying thought in the present case is not only the sense that "it's all Greek" conveys but also the plan to capture the essence of the concept by using English words with Greek words or letters which collectively render the seemingly constructed sentence unintelligible. The 'idea' in such context is a combination of wanting to convey the sense of "it's all Greek"
and using a few English words interspersed with Greek words or alphabets to form a meaningless sentence. The expression of the sense of "it's all Greek" and how English and Greek alphabets would be used to convey such sense, collectively forms the idea or the theme of the plaintiff's advertisement campaign. The reduction of this collective idea into an appearance which is apparently spectacular is not so distinctive for the plaintiff to claim exclusivity in the use of English words with words or alphabets of another foreign script not generally understood by the target audience. It is not necessary to consider what would 22 have been if the defendants had used the same English words interspersed with the same Greek words or alphabets as the plaintiff had used. The right that the plaintiff canvasses is not so useless that the relevant English-Greek combination of words used in the several announcements that form part of the plaintiff's advertisement campaign cannot be regarded as literary work. Yet, the plaintiff cannot claim any copyright in its plan to communicate the sense of "it's all Greek" by using a few English words around words or letters of another script that is not easily understood by persons to whom the message is intended to be conveyed.
The matter may be seen from another perspective. There is no doubt that there may be copyright in the dramatic work or representation in a cinematograph film. Equally, there may not be any copyright in respect of the broad theme of a film. There have been many films in many languages where a boy meets a girl, then they drift apart or there are impediments created to their being together and ultimately they come through to live happily ever after. Surely, there would be no copyright in such broad theme; indeed, it is banal and commonplace unless fleshed out with greater detail and even then it may still remain just a theme incapable of being conferred any benefit of exclusivity. If then, the expression of the girl and the boy being in love is in the form of the two running around trees and singing songs: that would also be part of the theme. If the producer who first expressed the idea of a boy and a girl in love in the form of their running around trees and singing songs had been conferred exclusivity over such expression it would have, well, stymied the industry that spawns Hindi films. That a boy and a girl fall in love and that the producer of the film wishes to convey to the viewer that they are in love by making them run around trees and sing, would be part of the theme or the plot.
In R.G. Anand the general enunciation of the law holds good notwithstanding the definition of "adaptation" having been substantially enlarged by the 1994 Amendment to the statute in India. The theme of both campaigns in 23 the present case may be the same but they are presented and treated differently and even if the defendants' campaign appears to be inspired by the plaintiff's, the plaintiff seeks exclusivity over something which is far too nebulous. The adage, what is worth copying is worth protecting, has to be confined to the manner of expression of the work and not necessarily applied to the underlying suggestion. It is not the province of copyright law to protect ideas unless they have found expression in the form of a work of a category recognised as deserving of protection. When the idea is expressed in the form of a work it is the form of expression which is protected but the idea may be freely extracted from the work and used by others to produce their own works so long as the form of expression is not repeated.
In Ibcos Computers Ltd it was held that where an 'idea' is sufficiently general, then even if an original work embodies it, the mere taking of that idea will not infringe the original work; but if the 'idea' is detailed the copy might amount to infringement. In the present plaintiff's case, if the sense of the expression "it's all Greek" and the plaintiff's intention to convey such sense by using English words along with Greek letters and words are not together seen to be the idea behind the expression, but the use of the English words with Greek letters and words seen as the expression - it would be far to general for any copyright to be claimed therein unless the copy is an imitation of the same English words with identical words or letters from an unintelligible script. The substantial similarity test that the plaintiff refers to would not allow the plaintiff to a monopoly over the English vocabulary when used in conjunction with another foreign language to convey the sense of "it's all Greek."
The case of passing-off that the plaintiff makes is restricted to the advertisements and no passing off of the defendants' product as the plaintiff's is claimed. Passing-off is wide enough to encompass advertising campaigns but the fundamental basis of such action is that the advertising campaign has developed a goodwill that would lead the market to associate it with the plaintiff's product.
24Passing-off would involve an underlying injury to the plaintiff's trade or its product but a mere claim of passing-off relating to a plaintiff's advertisement, without claiming any damage to the plaintiff's trade or product, may be a difficult case to establish. The Australian judgment in the matter relating to the Mortein and Raid brands did not involve a claim of copyright but the action was for the tort of deceit in the defendant using elements of the claimant's advertisement to further the defendant's trade to the detriment of the claimant.
The copywriter may cringe at the thought that her concept is not protected, but since it is creativity that copyright law nurtures it leaves the concept to be differently, and may be uniquely, expressed by another. The plaintiff has to rest at this stage with the consolation that its theme may have been reproduced in the defendants' advertisement campaign, but since it is only the theme and not the manner of expression thereof which has been copied it cannot obtain an interlocutory injunction in any of the forms that it seeks. GA No. 2003 of 2010, which is the plaintiff's application, fails. GA No. 2038 of 2010, which is the defendants' application on which the initial order that the plaintiff obtained on June 16, 2010 was dislodged on June 18, 2010, is disposed of. There will be no order as to costs in either case.
Urgent certified photocopies of this judgment, if applied for, be supplied to the parties subject to compliance with all requisite formalities.
(Sanjib Banerjee, J.)