Search in selected Domain

Print this page || Email this page

MANU/DE/1377/2008

Equivalent Citation: 2008(106)DRJ482, MIPR2008(3)402, 2008(38)PTC385(Del)

IN THE HIGH COURT OF DELHI

I.A. 9823/2005, 51/2006 and 647/2006 in CS(OS) 1656/2005

Decided On: 17.09.2008

Appellants: The Chancellor Masters and Scholars of The University of Oxford

Vs.
Respondent: Narendera Publishing House and Ors.

Hon'ble Judges:
S. Ravindra Bhat, J.

Counsels:
For Appellant/Petitioner/Plaintiff: Rajiv Bansal, Adv

For Respondents/Defendant: Pratibha Singh and Sudeep Chatterjee, Advs.

Subject: Intellectual Property Rights

Catch Words

Mentioned IN

Acts/Rules/Orders:
Copyright Act, 1957 - Sections 2, 13, 14, 52 and 52(1); Patents Act, 1970 - Section 3; Civil
Procedure Code (CPC), 1908 - Order 39, Rules 1, 2 and 4

Cases Referred:
University London Press v. University Tutorial Press [1916] 2 Ch. 601; University of
Cambridge v. BD Bhandari 2005 (31) PTC 58 (Del); Mishra Bandhu Karyalaya v. S Koshal
AIR 1970 MP 261; Agarwala Publishing House v. Board of High School and Intermediate
Education AIR 1967 All 91; Jadish Prasad v. Parmeshwar Prasad AIR 1966 Pat 33;
Blackwood & Sons v. Parasuraman AIR 1959 Mad 410; Eastern Book Company v. Modak
(2008) 1 SCC 1; RG Anand v. Delux Films (1978) 4 SCC 118; V Ramaiah v. K Lakshmaiah
(1989) PTC 137; EM Forster v. AN Parasuraman AIR 1964 Mad 331; Kartar Singh Giani v.
Ladha Singh AIR 1934 Lah 777; Romesh Chowdhry v. Ali Mohamad Nowsheri AIR 1965
J&K 101; Baker v. Seldon 101 US 99 [1879]; Nichols v. Universal Pictures Corp. 45 F.2d
(2d Cir. 1930); Fiest Publication Inc. v. Rural Telephone Service 199 US 340 (1991); CCH
Canadian Ltd., v. Law Society of Upper Canada (2004) SCC 13; Herbert Rosenthal Jewelry
Corporation v. Kalpakian 446 F.2d 738 (1971); Folsom et al. v. Marsh et al, 9 F. Cas. 342,
1841; Harper & Row v. Nation Enterprises 471 US 539 (1985); Sony Corp. of America v.
Universal City Studios, Inc., 464 US 417 (1984); Campbell v. Accuff-Rose Music 510 US
569 (1994); Sun Trust Bank v. Houghton Mifflin 268 F.3d 1257 (11th Cir.2001); Bill
Graham Archives v. Dorling Kindersley 2006 US App LEXIS 11593; Peter Letterese &
Associates v. World Institute of Scientology Enterprises, D.C. Docket No. 04-61178-CV-
PCH; Hubbard v. Vosper (1972) 2 WLR 389; Civic Chandran v. Ammini Amma 1996(16)
PTC 670

Citing Reference:

University London Press v. University Tutorial Press

Mentioned

University of Cambridge v. BD Bhandari

Discussed

Mishra Bandhu Karyalaya v. S Koshal

Mentioned

Agarwala Publishing House v. Board of High School and Intermediate Education

Mentioned

Jadish Prasad v. Parmeshwar Prasad

Mentioned

Blackwood & Sons v. Parasuraman

Distinguished

Eastern Book Company v. Modak

Discussed

RG Anand v. Delux Films

Discussed

V Ramaiah v. K Lakshmaiah
Mentioned

EM Forster v. AN Parasuraman
Discussed

Kartar Singh Giani v. Ladha Singh

Discussed

Romesh Chowdhry v. Ali Mohamad Nowsheri

Discussed
Baker v. Seldon
Mentioned

Nichols v. Universal Pictures Corp.

Mentioned

Fiest Publication Inc. v. Rural Telephone Service

Mentioned

CCH Canadian Ltd., v. Law Society of Upper Canada

Discussed

Herbert Rosenthal Jewelry Corporation v. Kalpakian

Discussed

Folsom et al. v. Marsh et al

Discussed

Harper & Row v. Nation Enterprises

Discussed

Sony Corp. of America v. Universal City Studios, Inc.

Discussed

Campbell v. Accuff-Rose Music

Discussed

Sun Trust Bank v. Houghton Mifflin

Discussed

Bill Graham Archives v. Dorling Kindersley

Discussed

Peter Letterese & Associates v.

World Institute of Scientology Enterprises, D.C.
Mentioned

Hubbard v. Vosper
Discussed

Civic Chandran v. Ammini Amma

Discussed

Case Note:
Intellectual Property Rights — Copyright — Literary works — Infringement of
copyright — Section 13 of Copyright Act, 1957 — Plaintiff filed present suit alleging
violation of copyright in its literary work by Defendant and seeks an order restraining
the Defendant from infringing its copyright — Whether Plaintiff is entitled to copyright
protection in its literary work — Held, not every effort or industry, or expending of
skill, results in copyrightable work, but only those which create works that are
somewhat different in character, involve some intellectual effort, and involve a certain
degree of creativity — In the instant case, the Plaintiffs have made no attempt to show
this creativity — Therefore, Plaintiffs cannot claim copyright
Intellectual Property Rights — Copyright — Literary works — Infringement of
copyright — Defence of fair use — Section 52 of Copyright Act, 1957 — Defendant
claimed that its alleged copying of Plaintiff’s literary work would come within the
purview of defence of fair use and therefore, contended that there was no copyright
infringement in Plaintiff’s literary work by Defendant — Held, the doctrine of fair use,
legitimizes the reproduction of a copyrightable work provided the purpose served by
the subsequent or infringing work is substantially different from the purpose served by
the prior work — In the present case, the purpose and manner of use of the questions
found in the Plaintiff’s textbooks, by the Defendants is different — Therefore, Plaintiffs
cannot claim copyright

Ratio Decidendi:
“Law mandates that not every effort or industry, or expending of skill, results in
copyrightable work, but only those which create works that are somewhat different in
character, involve some intellectual effort, and involve a certain degree of creativity.”

“The doctrine of fair use legitimizes the reproduction of a copyrightable work provided the
purpose served by the subsequent or infringing work is substantially different from the
purpose served by the prior work.”

JUDGMENT

S. Ravindra Bhat, J.

1. This order will dispose of IA No. 9823/2005, IA No. 647/2006, IA No.51/2006 preferred
under Order 39 Rule 1 & 2 and Order 39 Rule 4 of the Code of Civil Procedure, 1908,
respectively. The plaintiff allegs violation of copyright in its literary work and seeks an order
restraining the defendants from infringing its copyright.

2. The plaintiff is a well-known publisher of academic books, and started publishing in India
in 1912. It has established show rooms in different places of India. The plaintiff avers to
publishing substantial number of school books for use from Kindergarten to the twelfth
standard, with the help of a team of highly trained and committed editorial, research,
production and marketing professionals. These books cover most disciplines including
science, mathematics, languages, humanities and economics, for most Educational Boards
including CBSE and ICSE.

3. The plaintiff has published, in two parts, a text book for the students of Class XI, following
the course structure prescribed by the Jammu & Kashmir State Board of School Education,
i.e. "Oxford Mathematics Part A" and "Oxford Mathematics Part B" (herein after referred to
as 'the textbooks'). The plaintiff published them in collaboration with the Jammu and
Kashmir State Board of School Education (hereafter 'the Board'). The plaintiff and the Board
entered into an agreement on 26.08.03 for such purpose, and the copyright in the said
textbooks vested with the former. The textbooks are specially adapted editions of books
authored by one Dr. A.K. Roy of which the copyright vests in the plaintiff through an
agreement. It is averred that the said Dr. Roy has employed great efforts and research in the
books so that they are effective in the study and understanding of mathematics.
4. It is further averred that the exercises, their scheme, the answers, placement of topics in the
textbooks are unique to the plaintiff and are a result of years of research, hard work, practice
and the standard followed by reputed institutions the world over. Every unit in a chapter is so
arranged that it is integral and complimentary to others. The contents of the textbooks, it is
averred, involve application of substantial skill, judgment, labour and investment of time and
money. The units are streamlined for faster progress. The textbooks have maximum clarity
with fresh modern designs. The key features of the textbooks are that they have been
designed to enable the learner to develop a thorough understanding of basic mathematical
principal and processes. Introductions to each chapter reviews the concepts learnt earlier.
Graded solved examples develop problem- solving techniques. Short exercise drills are
interspersed within a chapter after each major topic. Miscellaneous exercises have been
provided at the end of each chapter. Even model test papers have been provided at the end of
the book to provide the students a feel of the examination. All this, the plaintiffs claim, make
each textbook an original literary work within the meaning of the Copyright Act, 1957
(hereafter 'the Act'). It is also averred that the author by a memorandum of Agreement has
assigned to the plaintiff the entire copyright in the subject work during the legal term of
copyright and the renewals thereof. All rights in the subject work are reserved in favour of
the plaintiff. Further, it is claimed that no part of the textbooks can stored in a retrieval
system or transmitted in any form or by any means without the prior permission in writing
given by the plaintiff, or as expressly permitted by law.

5. The plaintiffs allege that in 2005 they came to know about the existence of guide books
entitled "Teach yourself mathematics (Fully Solved) Part A" and "Teach yourself
mathematics (Fully Solved) Part B" published by the defendants (hereafter 'the guides'), in
which the latter have, brazenly violated plaintiff's copyright, and reproduced contents of the
plaintiff's books. The infringing books, it is stated, has been published, "to help those students
who prefer to mug up the solutions/answers rather than seriously taking the course through
text books". It is further claimed that the defendants books have immensely hampered not
only the sale of the plaintiff's subject work but has also "gravely prejudiced the interest of the
students at large". The Plaintiffs aver that the defendants have slavishly reproduced the
exercises and their solutions/answers from the subject work and thus made their infringing
publication a poor and degrading substitute to the plaintiff's subject work. It is also alleged
that such reproduction by the defendants shows a deliberate and malicious intent and design
on their part to misappropriate, trade upon and derive benefit from its reputation and goodwill
and the copyright in the subject work, enjoyed exclusively by them, worldwide The plaintiffs,
therefore, seek an order of interim injunction restraining the defendants from infringing the
copyright of the plaintiffs in relation to the textbooks. This Court had, granted an ex-parte
injunction; the defendants move for its vacation.

6. Mr. Rajiv Bansal, learned Counsel appearing on behalf of the plaintiff, contends that the
defendants have indulged in a brazen word-to-word copying of the questions, in the
textbooks. The plaintiff, it was urged, had given answers to the questions in the exercises, but
did not provide the detailed step-by-step process to arrive such answers. The questions, their
arrangement and the sequencing, in the defendants' guides are identical to the plaintiff's
textbooks. He argued that the questions form a valuable and central part of the work, and
their substantial copying by the defendants amounts to violation of the plaintiff's copyright.
He submitted that authors of the guides have saved time and money by relying on the
plaintiff's work and their use of the 'original' questions is not incidental. He further argued
that guides compete with the original textbooks for market share, and are prepared and sold
for commercial purposes. Therefore, he contended that in the absence of a restraint order, the
guides would gravely injure the plaintiff's commercial interest.

7. Learned Counsel next contended that questions, their arrangement and their selection
should be considered original literary works under the Act, and therefore, are entitled to
copyright protection. He placed reliance on the oft quoted University London Press v.
University Tutorial Press [1916] 2 Ch. 601, to assert that question papers are literary works
and that copyright could vest in questions. He argued that though there can be a pool of
common knowledge and questions from which the questions are drawn, the fact that the
questions were not copied and emanated from the author is sufficient enough for the grant of
copyright protection. He placed reliance on the judgment reported as Syndicate Press of the
University of Cambridge v. BD Bhandari MANU/DE/0983/2005, to assert that the defense of
fair use under Section 52 cannot be extended to cases where there is verbatim copy of the
questions and the answer key. Further, it was held that guide books like the ones in that case,
could not be categorized as reviews and criticism of the original work. Also, the exception
under Section 52(1)(h) applied only if the reproduction is made as a part of the questions and
answers in an examination. Reliance was placed on Mishra Bandhu Karyalaya v. S Koshal
MANU/MP/0046/1970 : AIR1970MP261 ; Agarwala Publishing House v. Board of High
School and Intermediate Education, MANU/UP/0031/1967 : AIR1967All91 and Jadish
Prasad v. Parmeshwar Prasad MANU/BH/0011/1966 : AIR1966Pat33 to contend that
questions are original literary works and copyright can subsist even if such questions are part
of a prescribed syllabus, so long the author employed labour and skill in their publication.
Lastly, reliance was also placed on Blackwood & Sons v. Parasuraman
MANU/TN/0233/1959 : AIR1959Mad410 , to contend that the plaintiff need not prove any
oblique motive or intention to copy on the part of the defendants, so long the copying
involved substantial and vital portions, that is the copying was both quantitative and
qualitative.

8. The defendants contend that the present case is a one of fair use. It is averred that
preparation of a guide book, which independently contains the working of every
mathematical problem and steps for solving them, cannot be termed an infringement of the
textbook. The plaintiff's books do not have any step-by-step working for the various sums at
the end of each chapter. It is also averred that the defendants have not copied the contents of
each lesson or chapter. Further, it is averred that all students are well aware that the
defendant's publications are guide books whereas the plaintiff's publications are textbooks.

9. It is averred that the defendants' books are an independent creation by Prof. Harish Sharma
who is a known Mathematics teacher. He has solved the sums that are contained at the end of
each lessons of the plaintiff's prescribed textbook. The guide does not infringe the copyright
of the plaintiff in any manner whatsoever. The defendants' books are not a substantial
reproduction of the plaintiff's textbooks. A mere comparison of the two in terms of
appearance, contents etc., clearly establishes this. The defendant, relying on Section 52 of the
Act, aver that since their books are in the form of answers to questions contained in the
plaintiff's prescribed text book for the purposes of education, no copyright can be claimed nor
infringed. They aver that various State Boards prescribe textbooks of publishers for students
and there is possibility of existence of several Guide Books for the same textbook. They only
facilitate students' preparation for examinations. If such guide books are not permitted to be
published the result would be contrary to public interest and interest of the student
community.
10. Ms. Pratibha Singh learned Counsel appearing for the defendants, argued that at least 101
questions appearing in the plaintiff's books are copied or reproduced from the work another
well-known author-Mr. RD Sharma. She drew the attention of this Court in this regard to the
amended written statement and a comparative table of questions common to the plaintiffs
books and the book authored by the said Mr. RD Sharma. She contended that the questions
appearing in the plaintiff books from part of the common pool of questions used by authors,
schools, guides and students in India, and contended that the nature of the subject is such that
it would be impossible for one author to claim copyright over a set of questions. She
categorized the questions in the plaintiff's books, their selection and the manner of
arrangement as derivative works, for which a higher standard of creativity must be proved in
order for them to copyrightable. In this regard she relied on Eastern Book Company v. Modak
MANU/SC/4476/2007 : MIPR2008(1)56 . It was argued that since the plaintiff's work cannot
demand any copyright protection, no question of infringement arises.

11. It was contended that the plaintiff's books have not been pirated or reproduced
verbatim/completely, and therefore, the defendants' actions do not amount infringement
within Section 14(a) (v) and (vii). The defendants' contend that their books would not
constitute adaptation under Section 2(a), and therefore, cannot be violative of Section 14(a)
(vi).

12. Ms. Pratibha Singh next argued that the such use by the defendants of the Plaintiff's
questions of the plaintiff amounts to fair use under Section 52(1)(a) and 52(1)(h) of the Act,
assuming, arguendo, that there is copyright infringement. She contended that in relation
mathematical works, publication of a guide to solve questions in the plaintiff's work amount
to "review", of the plaintiff's literary work and therefore covered by Section 52(1)(a).
Furthermore, the present case also falls under Section 52(1)(h) as the reproduction of the
literary work was as a part of answers to those questions. She argued that while deciding
whether the defendants' books amounted fair use, one cannot lose sight of the fact that the
books are based on the Board's Syllabi which prescribed the plaintiff's books as exclusive
textbooks. She argued that once the book is declared a part of a syllabus, then, students are
free to use the questions in it any manner and therefore, guide books that help students solve
these questions will also be covered under the fair use exception to copyright.

13. Counsel argued, placing reliance on RG Anand v. Delux Films MANU/SC/0256/1978 :

[1979]1SCR218 that there can be no copyright in ideas and therefore, the questions per se are
not subject matter of copyright. She contended that if the same ideas were being presented in
different manner, even though both the works are based on the same source, then too it would
not amount to infringement. She submitted that the surest way to find out infringement is to
see if the reader having read both the works is clearly of the opinion that the subsequent work
appears to be a copy of the original.

14. Learned Counsel placed reliance on the various judgments to assert that the publication of
guide books to help students study and answer questions amounts to fair use under the Act;
(Ref. V Ramaiah v. K Lakshmaiah (1989) PTC 137; EM Forster v. AN Parasuraman
MANU/TN/0016/1964 : AIR1964Mad331 ; Kartar Singh Giani v. Ladha Singh AIR 1934 Lah
777 and Romesh Chowdhry v. Ali Mohamad Nowsheri AIR 1965 J&K 101). Therefore, she
argued that such use by the defendants of the questions that appear in the plaintiffs books,
constitute fair dealing under Section 52 and the injunction must be vacated.
15. Two primary issues need to be gone into at this stage. First is whether that part of the
work of the plaintiff, which the defendants have reproduced, prima facie merits copyright
protection. Secondly, if it does, have the defendants sufficiently made out a 'fair dealing' or a
'fair use' defence at this stage.

I. The Idea-Expression Dichotomy and the Doctrine of 'Merger'

16. A foundational element of copyright law is that it does not grant the author of a literary
work protection on ideas and facts. (Baker v. Seldon [1879] 101 US 99, Nichols v. Universal
Pictures Corp. 45 F.2d (2d Cir. 1930), RG Anand v. Delux Films MANU/SC/0256/1978 :
[1979]1SCR218 ) It is only the creative expression of such ideas and facts that is rewarded by
law, by conferring a privilege to exclusively exploit such expression for a limited time. Law
does not protect every such expression. The law affords protection to expressions that are
fixed in a medium and are "original". In India Section 13 of the Copyright Act states that
only "original" literary, artistic, dramatic and musical works are subject matter of copyright.
A literary work, in order to qualify as work in which copyright can subsist, must therefore be
original.

17. The content of what is meant by 'originality' has undergone a paradigm shift from the
days of "sweat of the brow' doctrine enunciated in University of London Press (supra) to the
'modicum of creativity' standard put forth in Fiest Publication Inc. v. Rural Telephone Service
(1991) 199 US 340 . The Supreme Court too recognized this shift and in Eastern Book
Company v. DB Modak (supra), following the approach laid down by the Canadian Supreme
Court in CCH Canadian Ltd. v. Law Society of Upper Canada (2004) SCC 13, rejected the
sweat of the brow doctrine, (which conferred copyright on works merely because time,
energy, skill and labour was expended, that is, originality of skill and labour), and held that
the work must be original "in the sense that by virtue of selection, co-ordination or
arrangement of pre-existing data contained in the work, a work somewhat different in
character is produced by the author". It is noteworthy that our Supreme Court noticed that the
two positions i.e. the sweat of the brow on the one hand, and "modicum of creativity" were
extreme positions; it preferred a higher threshold than the doctrine of "sweat of the brow" but
not as high as "modicum of creativity". Thus, our law too has recognized the shift, and
mandates that not every effort or industry, or expending of skill, results in copyrightable
work, but only those which create works that are somewhat different in character, involve
some intellectual effort, and involve a certain degree of creativity. It is in the light of this
standard of originality, that the plaintiffs claim to copyright in the questions as well the
copyright in the arrangement of the exercises in each chapter and the internal arrangement of
questions therein, needs closer scrutiny.

18. An aspect peculiar to copyright law, is the 'doctrine of merger,' is involved in this case.
This doctrine posits that where the idea and expression are intrinsically connected, and that
the expression is indistinguishable from the idea, copyright protection cannot be granted.
Applying this doctrine courts have refused to protect the expression of an idea that can be
expressed only one manner, or in a very restricted manner, because doing so would confer
monopoly on the idea itself. The decision in Herbert Rosenthal Jewelry Corporation v.
Kalpakian 446 F.2d 738(1971) is illustrative in this regard. In that case the plaintiffs sued the
defendants asking them to refrain from manufacturing bee shaped jewel pins. The Court held
that the jewel shaped bee pin was a an idea that anyone was free to copy, the expression of
which could be possible only in a few ways, therefore, no copyright could subsist in it.
19. The decisions relied on by the plaintiff [Mishra Bandhu (supra) & Agarwala Publishing
House (supra)] to assert that copyright can vest in questions and question papers too, are all
prior to the decision in Eastern Book Company (supra). Besides the fact the standard for
conferring copyright protection since University of London (supra) has undergone dramatic
transformation, the facts of that case in relation to the doctrine of fair dealing can be
distinguished on the ground that the allegedly infringing work in that case contained merely
the answers and not the solutions to the questions. This fact was noted and emphasized by
that Court also.

20. In the present case, the plaintiff's claim concerns mathematical questions and answers.
Besides asserting the work put in by Dr. Roy, and the effort in arranging such questions at
appropriate stages, chapters or units in the textbooks, the plaintiff do not show how such
effort is original to conform to the minimum degree of creativity mandated by Indian law,
post Eastern Book Company (supra). Mathematical questions are expression of laws of
nature. The "discovery" of such laws cannot confer monopoly to those who describe it. The
reason is that language is a limited medium, which enables description of such laws of nature
- in only a few ways. Recognition of copyright as inhering in the questions themselves (as the
plaintiff suggest the court to do), without existence of the "creative" element of originality
would deny access to ideas, thus robbing one of the primary objectives of copyright law
(promotion of creativity) of vitality, thereby stifling intellectual growth. Interestingly, Section
3(k) of the Patents Act, 1970 explicitly denies any form of patent protection to a
mathematical method or algorithms. Prima facie, Parliament could not have intended that
innovations such as new mathematical questions, denied benefit of patent protection-which if
granted is of restricted duration-could be refused, but a wider protection in time, by way of
copyright, could have been granted.

21. As far as the sequencing and schematic arrangement of the questions - in the various
chapters is concerned - the plaintiff say that the textbook conforms to the specifications and
requirements of the J& K Board. Here, the plaintiffs had to show original effort, unique to
their schematic arrangement or sequencing. In education, the dictates of the "learning
content" are such that each level demands a "curve". These "learning content" and "learning
curve" elements are inherent in the syllabi evolved by examination bodies such as J & K
Board or the CBSE. The plaintiff therefore, had to show how it evolved an arrangement so
unique that the scheme is entitled to copyright protection, independent of the dictates of the
Board. The involvement of the Board, in the creation of the syllabus, negates such originality.
This is not to suggest that there can be no creativity the such schematic arrangement; the
court merely infers that prima facie there is no material in support of it; the plaintiff have
made no attempt to show this creativity, apart from placing the textbooks on the record. For
those reasons, this Court prima facie is of the opinion that the plaintiffs' claim of copyright in
questions, answers, and their requiring or arrangement, is insubstantial.

II. The Fair Use defense

22. The next question is whether such copying will be covered under the fair use exemption
provided under Section 52 of the Act, assuming that the plaintiffs prima facie have
established a copyright claim. Relevant parts of Section 52 of the Act are extracted below:

Section 52 - Certain acts not to be infringement of copyright

The following acts shall not constitute an infringement of copyright, namely:

(a) a fair dealing with a literary, dramatic, musical or artistic work not being a computer
programme] for the purposes of-

(i) Private use including research;

(ii) criticism or review, whether of that work or of any other work;

XXXXXXXXXX

(h) the reproduction of a literary, dramatic, musical or artistic work-

(i) by a teacher or a pupil in the course of instruction; or

(ii) as part of the questions to be answered in an examination; or

(iii) in answers, to such questions;

23. The doctrine of fair use or fair dealing is an integral part of copyright law. It permits
reproduction of the copyrighted work or use in a manner, which, but for the exception carved
out would have amounted to infringement of the copyright. In a seminal article published in
1990 Judge Pierre N Leval, wrote:

The doctrine of fair use need not be so mysterious or dependent on intuitive judgments. Fair
use should be perceived not as a disorderly basket of exceptions to the rules of copyright, nor
as a departure from the principles governing that body of law, but rather as a rational, integral
part of copyright, whose observance is necessary to achieve the objectives of that law.... Fair
use should not be considered a bizarre, occasionally tolerated departure from the grand
conception of the copyright monopoly. To the contrary, it is a necessary part of the overall
design. Briefly stated, the use must be of a character that serves the copyright objective of
stimulating productive thought and public instruction without excessively diminishing the
incentives for creativity.

(TOWARD A FAIR USE STANDARD (1990) 103 HLR 1105 )

One of the earliest decisions to deal with the doctrine of fair use was Folsom et al. v. Marsh
et al 1841 9 US A 342, where the Supreme Court laid down the following:

In short, we must often, in deciding questions of this sort, look to the nature and objects of
the selections made, the quantity and value of the materials used, and the degree in which the
use may prejudice the sale, or diminish the profits, or supersede the objects, of the original
work. Many mixed ingredients enter into the discussion of such questions. In some cases, a
considerable portion of the materials of the original work may be fused, if I may use such an
expression, into another work, so as to be undistinguishable in the mass of the latter, which
has other professed and obvious objects, and cannot fairly be treated as a piracy; or they may
be inserted as a sort of distinct and mosaic work, into the general texture of the second work,
and constitute the peculiar excellence thereof, and then it may be a clear piracy.

24. The breadth of the fair use doctrine use was put to test in Harper & Row v. Nation
Enterprises 471 US 539 (1985). Harper had contracted to publish Presidents Ford's memoirs.
In exchange for $ 25,000, Harper allowed Time Magazine to extract 7500 word passage from
the book, which dealt with the pardon to President Nixon. The Editor of "Nation" Magazine
wrote an article relying on an unauthorized version of the memoir, which reproduced 300 to
400 words of the passage contracted to the "Time" Magazine. The article in "Nation"
appeared before the article in Times and the latter refused to pay up the balance money to
Harper. Harper brought an action for infringement of copyright, and "Nation" put up a fair
use defense. The Court noted that the four factors identified by Congress 17 U. S. C. 107 as
especially relevant in determining whether the use was fair were: (1) the purpose and
character of the use; (2) the nature of the copyrighted work; (3) the substantiality of the
portion used in relation to the copyrighted work as a whole; (4) the effect on the potential
market for or value of the copyrighted work and proceeded to test the facts on each of these
grounds. In its analysis, the Court applied much emphasis on the commercial character of the
defendant's use and its implication on the potential market of the copyrighted work. While
doing so it recalled the observations made in Sony Corp. of America v. Universal City
Studios, Inc. 464 US 417 (1984), that "every commercial use of copyrighted material is
presumptively an unfair exploitation of the monopoly privilege that belongs to the owner of
the copyright". The Court, while fortifying the commercial-non-commercial divide, held that
the fourth factor was the single most important factor while determining fair use. It is
however, important to note the dissenting opinion of Justice Brennan in this regard. He
regarded the majority opinion as conferring monopoly on historical facts and not merely on
the exception. He cautioned that this approach would prove counter- productive to the very
end of granting copyright protection and observed that:

In my judgment, the Court's fair use analysis has fallen to the temptation to find copyright
violation based on a minimal use of literary form in order to provide compensation for the
appropriation of information from a work of history. The failure to distinguish between
information and literary form permeates every aspect of the Court's fair use analysis, and
leads the Court to the wrong result in this case. Application of the statutorily prescribed
analysis with attention to the distinction between information and literary form leads to a
straightforward finding of fair use....

25. The contours of the fair use standard shifted somewhat with the decision in Campbell v.
Accuff- Rose Music 510 US 569 (1994). The Supreme Court unanimously upheld the claim
of the defendants that their parody to the plaintiff's song "Oh, Pretty Woman" was covered by
the fair use exception. It was uncontested that the defendant's song amounted infringement
but for the "fair use" exception. The Court held that all the traditional four factors employed
to reach a conclusion of fair use are to be treated together, not in isolation and no undue
preference can be given to any one of them. In relation to the first factor, it was held that
Court must look into the nature of the use, i.e. whether it was for educational purposes or for
review or criticism. The central enquiry (according to the Court) is to see if the work merely
supercedes and supplants the original work or instead adds something new, with a further
purpose or different character, altering the first with new expression, meaning, or message; in
other words, whether and to what extent the new work is 'transformative'. The Court
borrowed the latter expression from Judge Pierre Leval (supra). Transformative works, the
Court held, have a greater chance of falling within the fair use defense and such 'works thus
lie at the heart of the fair use doctrine's guarantee of breathing space within the confines of
copyright'. If one may put it differently, the question to be addressed would be is there a
value addition, which alters the original work in a not insignificant measure. The second
factor, which evaluates the nature of the copyrighted work, is intended to find out if the work
actually merits copyright, that is, whether copyright law was intended, at its core, to cover
such works. However, the Court cautioned that this factor is not likely 'to help much in
separating the fair use sheep from the infringing goats', in cases where the subsequent work is
transformative. The third factor, which deals with the extent of copying, the Court explained
citing Sony (supra), does not entail that the reproduction of the entire work would militate
against the finding of fair use. There could be cases where the copying could be substantial
and the courts finds fair use, at the same time there could be cases where the copying though
insubstantial could be held as infringement. Lastly, the court observed that the fourth factor,
where the market harm to the copyrighted work had to be assessed, could not be the sole
determinative factor. The Courts have to "consider not only the extent of market harm caused
by the particular actions of the alleged infringer, but also whether unrestricted and
widespread conduct of the sort engaged in by the defendant would result in a substantially
adverse impact on the potential market". The Court went on to hold that the defendants use,
was covered by the doctrine of fair use and did not amount to infringement.

26. The Court's holding in Campbell, has been followed in Sun Trust Bank v. Houghton
Mifflin 268 F.3d 1257 (vacating the injunction on 'The Wind Done Gone' a fictional work
based on Margaret Mitchell's Gone With the Wind); Bill Graham Archives v. Dorling
Kindersley 2006 US A L 11593 (holding that reproduction of images appearing in posters
and tickets, in a coffee table biography fall within the fair use exception) and very recently in
Peter Letterese & Associates v. World Institute of Scientology Enterprises, D.C. Docket No.
04-61178-CV-PCH (July 8, 2008).

27. In the United Kingdom, in Hubbard v. Vosper (1972) 2 WLR 389, the Court while
dealing with the question of what amounts to fair use observed as follows:

It is impossible to define what is 'fair dealing'. It must be a question of degree. You must
consider first the number and extent of the quotations and extracts. Are they altogether too
many and too long to be fair? Then you must consider the use made of them. If they are used
as a basis for comment, criticism or review, that may be a fair dealing. If they are used to
convey the same information as the author, for a rival purpose, that may be unfair. Next, you
must consider the proportions.

To take long extracts and attach short comments may be unfair. But, short extracts and long
comments may be fair. Other considerations may come to mind also. But, after all is said and
done, it must be a matter of impression. As with fair comment in the law of libel, so with fair
dealing in the law of copyright. The tribunal of fact must decide.

28. Indian law too, in relation to copyright infringement is interesting. The Supreme Court in
RG Anand (supra) had to adjudicate whether the film produced by the defendant had in any
manner infringed the copyright held by the plaintiff in his play. The Court after referring to a
number of authorities on the subject observed that the same idea might be developed in
different ways and is the defendants work is nothing but a colourable imitation of the
plaintiffs work, then it would amount to infringement. It set out the following as the test for
determining infringement:

One of the surest and the safest test to determine whether or not there has been a violation of
copyright is to see if the reader, spectator or the viewer after having read or seen both the
works is clearly of the opinion and gets an unmistakable impression that the subsequent work
appears to be a copy of the original.
Remarkably, the court, presciently in its judgment propounded a principle resembling the
'transformative work' doctrine developed in the United States much later. It held that:

Where the theme is the same but is presented and treated differently so that the subsequent
work becomes a completely new work, no question of violation of copyright arises.

29. In Ramaiah (supra), the Andhra Pradesh High Court had to consider whether a guide
book prepared to help students understand and study a text called 'Girija Kalyanam' amounted
to infringement. The Court took note of the fact that the guide consisted of three portions, the
first of which gave meanings to the text. The second portion contained annotations and
illustrations of the meanings and the third portion consisted of probable questions and
answers. The Court distinguished the facts from that in Blackwood and Sons v. AN
Parasuraman (supra), where the infringing work merely eliminated certain passages from the
original work and retained the essential part of the narration in substantial form. Since, the
guide was found to be much more than a mere replication of the earlier work, incorporating
questions and answers, analysis etc, the injunction was refused.

30. In EM Forster (supra), the Court had to determine whether a guide published for the novel
'A Passage to India' violated the copyright in the original novel. Here again, the Court noted
that there was no verbatim reproduction of the entire novel. The guide was divided into
different portions, which consisted of an introduction to the characters, the life and
philosophy of EM Forster, a brief introduction to the works of EM Forster and of course an
abridged version of the novel; though not chronological. The Court observed, referring to
Kartar Singh Giani v. Ladha Singh AIR 1934 Lah 777 that in the guise of copyright law the
plaintiff cannot ask the courts to close all the avenues of research, scholarship and all
frontiers of human knowledge. The court found that the guide did not constitute an
infringement and therefore, did not go into the question of fair dealing. In Romesh Chowdhry
(supra) too, the facts involved publication of guide books to books published by the
University in accordance with its syllabi. The Court found that the guides were not colourable
imitations of the University publications and amounted to criticism and review of those
books. It also observed that since the University in their syllabus published these books for
the students, "the matter had gone into the hands of the students and no copyrights on the
strict sense of the term remained with the complainant".

31. The question of fair dealing came up for consideration in Civic Chandran v. Ammini
Amma 1996(16) PTC 670. The defendants had published a play 'Ningal Are Communistakki',
that was intended to be a critique of a famous play 'Ningal Enna Communistakki'. The court
referred to Hubbard v. Vosper (supra) and RG Anand and concluded that the play was meant
to be a critique and therefore, constituted fair dealing under Section 52. It observed that the
latter work was not market competitor to the prior work, and by itself constituted a literary
work with some amount of originality. Moreover, the Court held that the nature of the work,
that is to criticize the social structures in Kerala, by itself meant that certain sequences, events
and incidents would be common to both the prior and the subsequent work, and that the latter
was not meant to imitate the former. Injunction was therefore, denied.

32. Copyright law is premised on the promotion of creativity through sufficient protection.
On the other hand, various exemptions and doctrines in copyright law, whether statutorily
embedded or judicially innovated, recognize the equally compelling need to promote creative
activity and ensure that the privileges granted by copyright do not stifle dissemination of
information. Two doctrines that could be immediately be summoned are the idea-expression
dichotomy and the doctrine of "fair use" or fair dealing. Public interest in the free flow of
information is ensured through the idea-expression dichotomy, which ensures that no
copyright is granted in ideas, facts or information. This creates a public pool of information
and idea from which everyone can draw. At the same time, as Judge Leval observes, all
creativity is in part derivative, in that, no creativity is completely original; "each advance
stands on building blocks fashioned by prior thinkers" (Bernard Shaw expressed it by saying
that Shakespeare was a "tall man", but he (Shaw) was taller as he stood Shakespeare's
shoulders). Judge Leval further observed that most important areas of intellectual creativity
like philosophy, literature and sciences are referential, and require continuous reexamination
of existing theses.

33. The doctrine of fair use then, legitimizes the reproduction of a copyrightable work.
Coupled with a limited copyright term, it guarantees not only a public pool of ideas and
information, but also a vibrant public domain in expression, from which an individual can
draw as well as replenish. Fair use provisions, then must be interpreted so as to strike a
balance between the exclusive rights granted to the copyright holder, and the often competing
interest of enriching the public domain. Section 52 therefore cannot be interpreted to stifle
creativity, and the same time must discourage blatant plagiarism. It, therefore, must receive a
liberal construction in harmony with the objectives of copyright law. Section 52 of the Act
only details the broad heads, use under which would not amount to infringement. Resort,
must, therefore be made to the principles enunciated by the courts to identify fair use.

34. One crucial test, of the four-factor test, as developed by the American courts, is the
transformative character of the use. The Courts should in cases like the present ask whether
the purpose served by the subsequent (or infringing) work is substantially different (or is the
same) from the purpose served by the prior work. The subsequent work must be different in
character; it must not be a mere substitute, in that, it not sufficient that only superficial
changes are made, the basic character remaining the same, to be called transformative. This
determination, according to the Court is closely knit with the other three factors, and
therefore, central to the determination of fair use. If the work is transformative, then it might
not matter that the copying is whole or substantial. Again, if it is transformative, it may not
act as a market substitute and consequently, will not affect the market share of the prior work.

35. In the present case, this Court has considered the plaintiff's textbooks, as well as the
defendant works. The following aspects stand out;

(a) The plaintiff's textbooks, so far as they contain the "theory" portions, have not been
copied;

(b) The plaintiff's books do not contain the steps, or process aiding the solutions (or answers)
to the questions/ problems, in each chapter. The learner is expected, on the basis of the text
and the theory, to apply his mind, and solve such problems

(c) The defendants' copies do not contain the text and the theory portions, analyzing the
problems;

(d) The defendants' copies contain the questions as well as answers, which are found in the
plaintiffs' textbooks;
(e) The defendants provide the problem solving "step-by-step" method to arrive at answers to
the questions.

36. A careful analysis of the above would show that whereas the plaintiffs' texts do not
contain or describe the step-by-step process of arriving at solutions (answers), the defendants'
books provide them. The defendants' books do not contain the theoretical or explanatory
content- they are present in the plaintiffs' textbooks. The use of questions and answers by the
defendants, who provide the step-by-step process of reasoning, is for a different purpose.
Though to a purist or one who delights in intellectual pursuits, such works may be distasteful,
- even offensive - there is no gainsaying that they neither pretend to be textbooks, nor
reproduce all that are contained in them. They are designed to cater to a category of student
"weak" in their understanding of the subject.

37. The purpose and manner of use of the questions found in the plaintiff's textbooks, by the
defendants is thus different; additionally, in their books, missing in the plaintiff's works are
the steps or process of problem solving. Thus, the defendants' works can be said to be
'transformative', amounting to "review" under Section 52(1)(a)(ii) of the Act. Here, the term
"review" has to be interpreted in the context. The plaintiffs claim to copyright is premised the
work being a "literary" one. The review - or commentary, of a part of such mathematical
work - too would have to be seen in the background of this claim.

38. "Review" according to the Shorter Oxford Dictionary (Fifth edition) means "view, inspect
or examine a second time or again." In the context of a mathematical work a review could
involve re-examination or a treatise on the subject. In that sense, the defendants' revisiting the
questions, and assisting the students to solve then, by providing the "step by step" reasoning
prima facie amounts to a review, thus falling within the "fair dealing" provision of Section
52(1)(a)(ii) of the Act.

39. For the above reasons, the interim injunction granted is hereby vacated. IA No.
9823/2005 and IA No.51/2006 are accordingly disposed off.

CS(OS) 1656/2005

List before the Joint Registrar on 22nd October, 2008.

|| Email this page

Print this page
© Manupatra Information Solutions Pvt. Ltd.
Search in selected Domain

Print this page || Email this page

MANU/MH/0315/2007

Equivalent Citation: 2007(4)ALLMR617, 2008(2)BomCR400, (2007)109BOMLR981,

MIPR2007(2)223, 2008(36)PTC377(Bom)

IN THE HIGH COURT OF BOMBAY

Notice of motion No. (sic) of 007 in Suit (Lodging) No. 1467 of 2007

Decided On: 07.06.2007

Appellants: Urmi Juvekar Chiang

Vs.
Respondent: Global Broadcast News Limited, a Company incorporated under the
Companies Act, 1956 and Network 18 Fincap Private Limited, a Company
incorporation under the Companies Act, 1956

Hon'ble Judges:
A.M. Khanwilkar, J.

Counsels:
For Appellant/Petitioner/Plaintiff: Navroz Seervai, Sr. Counsel, Rahul Chitnis and Nishad
Nadkarni, Advs., i/b., DSK Legal

For Respondents/Defendant: Virendra Tulzapurkar, Sr. Counsel, Amit Jamsandekar and Arun
Siwach, Advs., i/b., Amarchand and Mangaldas and S.A. Shroff and Co.

Subject: Intellectual Property Rights

Catch Words

Mentioned IN
Acts/Rules/Orders:
Copyright Act, 1957 - Sections 2, 14 and 51; Right to Information Act

Cases Referred:
Fraser v. Thames Television Ltd. 1983(2) All.E.R. 101; The Daily Calendar Supplying
Bureau, Sivakasi v. The United Concern AIR 1967 Mad.381; Midas Hygiene Industries
P.Ltd. and Anr. v. Sudhir Bhatia and Ors. 2004 (28) PTC 121 (SC); Zee Telefilms Ltd. and
Anr. v. Sundial Communication Pvt.Ltd. and Ors. 2003 (5) Bom.C.R.404; CMI Centers for
Medical Innovation GMBH and Anr. v. Phytopharm PLC 1999 Fleet Street Reports 235; Anil
Gupta and Anr. v. Kunal Das Gupta and Ors. of the Delhi High Court 2002 (97) Delhi Law
Times 257; Talbot v. General Television Corpn. Pvt. Ltd. 1981 R.P.C. 1; Terrapin v. Builder
Supply Company; R.G. Anand v. Delux Films and Ors. AIR 1978 SC 1613; Sheldon v.
Metro Goldwyn Pictures Corporation 1993 (81) F 2nd 49; Star India Pvt. Ltd. v. Leo Burnett
(India) Pvt. Ltd. 2003 (27) PTC 81 (Bom.); Green v. Broadcasting Corporation of New
Zealand (1989) RPC (No.16) 469

Citing Reference:

*                Mentioned

***            Discussed

Fraser v. Thames Television Ltd. ***

The Daily Calendar Supplying Bureau, Sivakasi v. The United Concern *

Midas Hygiene Industries P.Ltd. and Anr. v. Sudhir Bhatia and Ors. ***

Zee Telefilms Ltd. and Anr. v. Sundial Communication Pvt.Ltd. and Ors. ***

CMI Centers for Medical Innovation GMBH and Anr. v. Phytopharm ***

Anil Gupta and Anr. v. Kunal Das Gupta and Ors. ***

Talbot v. General Television Corpn. Pvt. Ltd. ***

R.G. Anand v. Delux Films and Ors. ***

Sheldon v. Metro Goldwyn Pictures Corporation ***

Star India Pvt. Ltd. v. Leo Burnett (India) Pvt. Ltd. ***

Green v. Broadcasting Corporation of New Zealand *

Case Note:
Intellectual Property Rights - Copyright - Literary work - Infringement - Reproduction
and adaptation of Plaintiff’s proposed television programme, by the Defendants -
Plaintiff filed suit against Defendants claiming interim relief on grounds of breach of
confidentiality and infringement of copyright of Plaintiff - Held, facts shows that
treatment, format, structure, expression and presentation of the Defendants programme
was similar to the literary work of the Plaintiff - Further, the Plaintiff also got
registered its work and concept with the Film Writers’ Association and have copyright
in the same - Defendants have indulged in infringement of copyright of Plaintiff in
relation to her original literary work of programme - Interim relief granted

Intellectual Property Rights - Breach of Confidence - Principles of - Literary work -

Breach of confidentiality in relation to “concept” and the “concept note” regarding
Plaintiffs programme, originally conceived and articulated by Plaintiff - Held, action of
breach of confidence succeeds only if Plaintiff could identify clearly what was the
information he was relying on - It has to be shown that it was handed over in the
circumstances of confidence and could be treated as confidential - Further information
was used without licence or there was threat to use it - In the present case, action of
breach of confidence succeeded as Plaintiff passed on information regarding “her
concept” and the format of the programme in “concept notes” to the Defendants in
confidence and same was used without the licence of the Plaintiff

Intellectual Property Rights - Copyright - Interim relief - Grant of - Grounds - Held, for
grant of ad-interim relief, it has to be ascertained whether work of Defendants similar
in material and substantial aspects with that of Plaintiff - Standard to be applied is not
to compare two works with hypercritical and meticulous scrutiny but from standpoint
of observations and impressions of an average viewer - If substantial parts of work were
lifted then there is violation warranting grant of interim relief - In the present case
there were striking similarities in the work of Plaintiff as that of the Defendants -
Interim relief granted

Ratio Decidendi:
“Action of breach of confidence succeeds only if Plaintiff could identify clearly what was
the information he was relying on and has to be shown that it was handed over in the
circumstances of confidence and could be treated as confidential.”

“For grant of ad-interim relief, it has to be ascertained whether work of Defendants

similar in material and substantial aspects with that of Plaintiff.”

ORDER

A.M. Khanwilkar, J.

1. Heard Counsel for both the sides at length. Perused all the relevant documents and
pleadings on record.

2. This order will dispose of prayer for ad-interim relief claimed by the Plaintiff during the
pendency of the Motion.

3. The Plaintiff claims to be a reputed script-writer having scripted various films and various
television serials. She also claims to have authored and/or directed and/or produced various
documentary films. In substance, the grievance of the Plaintiff against the Defendants, on the
basis of which, interim relief is claimed against them is on two grounds

(a) Breach of Confidentiality by the Defendants.

(b) Infringement of copyright of the Plaintiff.

Both these causes are in relation to reproduction and adaptation in the format of the proposed
television programme created by the Plaintiff titled "Work in Progress", by the Defendants by
making the television programme by title "Summer Showdown" and proposing to broadcast
the same on the CNN-IBN television news channel.

4. Some of the facts common to both these grounds as asserted in the Plaint are that, in or
about November 2005, the Plaintiff conceived an idea of a reality television programme,
which would follow citizens from different parts of the Country as they took the initiative and
set out to solve a civic problem of their choice in their locality. The Plaintiff asserts that the
programme would follow the chosen protagonists through the quagmire of bureaucracy and
conflicting interests and destructive attitudes as they tried to solve a civic problem of their
choice. That the programme would highlight the fight of the protagonists on many fronts and
in the end, even if the protagonists failed to solve the problem, the programme would
highlight that the protagonists had tried to solve the civic problem. The Plaintiff transformed
her idea into a concept and prepared a detailed concept note containing the concept, the form,
the treatment, the problems, etc. (Exhibit A to the Plaint). The said concept note prepared by
the Plaintiff of the television programme titled Work in Progress was registered with the Film
Writers Association, Mumbai on 9th November 2005. The Plaintiff asserts that the concept
note is a literary work within the meaning of Section 2(o) of the Copyright Act, 1957
(hereinafter referred to as the Act); and that the Plaintiff has the exclusive right to reproduce
the said literary work and to make a television programme based on the same in terms of
Section 14(c) of the Act. Insofar as the interaction with the Defendants, it is stated that in or
about March 2006, the Plaintiff first approached Ms.Rasika Tyagi of the Defendants and on
10th March 2006 sent an e-mail thanking Ms.Rasika Tyagi for agreeing to look at the
Plaintiffs concept. In the said communication, Plaintiff has recorded that the proposed
programme was a news based television show titled Work in Progress. In response to this
communication, Ms.Rasika Tyagi vide her e-mail dated 21st March 2006 replied to the
Plaintiff that she has gone through the concept and the same sounds interesting. She further
informed the Plaintiff to make it convenient to meet her whenever she is in Delhi to discuss
the concept further. On the basis of this representation, the Plaintiff contacted one Mr.Arjun
Gaurisaria, the Managing Director of Black Magic Movies Private Limited, who agreed to act
as a producer of the television programme titled Work in Progress. Besides, the Plaintiff
visited Ms.Rasika Tyagi of the Defendants and had a detailed discussion with her and also
made a detailed presentation of her concept as further developed and also the production
plan. The Plaintiff asserts that the further developed concept note and the production plan
(Exhibit D) were also her "literary work". The same were discussed threadbare with the
Defendants, but the Plaintiff was informed that the budget proposed by her for the proposed
television programme was on the higher side. Thereafter, Plaintiff discussed with Mr.Arjun
Gaurisaria on the budget of the proposed television programme titled "Work in Progress" and
the same was revised. Accordingly, Mr.Arjun Gaurisaria on behalf of Plaintiff, on 19th April
2006 sent an e-mail to Ms.Rasika Tyagi of the Defendants informing her that the cost of the
programme has been reworked and the budget has been brought down to Rs.10,50,000/-
(Rupees Ten Lakhs Fifty Thousand) per week, which seems to be a manageable figure. It is
recorded in the said communication that in case of any issue on the budget, that can be
discussed in a meeting, for which he would come down to Delhi on the given date. It is stated
that there was no reply to this communication from Ms.Rasika Tyagi, as a result, on 16th
May 2006, Arjun Gaurisaria sent another e-mail to Ms.Rasika Tyagi of the Defendants
stating that if the budget of the proposed programme is found expensive, other alternatives
could be explored. In the meantime, the Plaintiff had also discussed the production plan with
one Mr.Ramchandran Srinivasan, the Executive Producer. It is stated that the said
Ramchandran Srinivasan was intimately known to Mr.Rajdeep Sardesai, Editor-in-chief of
the Defendants. Accordingly, said Ramchandran Srinivasan on behalf of the Plaintiff sent an
e-mail on 24th July 2006 referring to the Plaintiffs proposal and mentioning that the budget
of the proposed programme can be cut down. He also forwarded the budget as well as the
original concept of the Plaintiff to Rajdeep Sardesai of the Defendants on e-mail. It is then
stated that Arjun Gaurisaria happened to meet Rajdeep Sardesai of the Defendants on a flight
and took that opportunity to discuss about the proposed programme and the effectiveness of
the programme "Work in Progress". Apropos the said discussion, on 3rd February 2007,
Arjun Gaurisaria again e-mailed the developed concept note and the production plan of the
television programme Work in Progress to Rajdeep Sardesai of the Defendants. As no reply
was received to this e-mail communication, Arjun Gaurisaria sent another reminder on 15th
February 2007 to Rajdeep Sardesai enquiring as to whether he could find time to go through
the material sent earlier. This was followed by another e-mail communication dated 17th
February 2007 sent by Arjun Gaurisaria to Rasika Tyagi of the Defendants enquiring with her
whether they can start discussing and doing initial ground work for programme Work in
Progress. Thereafter, Arjun Gaurisaria sent another e-mail on 14th April 2007, both to
Rajdeep Sardesai and Rasika Tyagi of the Defendants pointedly asking them whether they
were interested in taking the programme Work in Progress. Plaintiff asserts that instead of
receiving any response from the Defendants, the Plaintiff was shocked to see promotion of a
programme titled "Summer Showdown" on the CNN-IBN Television Channel, which
attempts to showcase five families across five cities, trying to find solutions to civic woes that
come with Summer. This came to the knowledge of the Plaintiff on 19th May 2007, although
the said programme titled "Summer Showdown" was already being aired from 14th May
2007. To know about more details of the said programme, the Plaintiff visited the website of
the Defendants and viewed the promotional videos promoting the television programme
"Summer Showdown" that were available on the website "ibnlive.com" of the Defendants.

5. It is stated that the Defendants television programme "Summer Showdown" also follows
citizens from different parts of the country as they take the initiative and set out to solve a
civic problem of their choice in their locality. It is further stated in Para 15 of the Plaint that
the videos suggest that the television programme "Summer Showdown" follows the chosen
protagonists through the quagmire of bureaucracy and conflicting interests and destructive
attitudes as they try to solve a civic problem of their choice. It is further stated that the videos
suggest that the television programme "Summer Showdown" also highlights the fight of the
protagonists on many fronts. In Para 16 of the Plaint, it is then stated that on comparison of
the Plaintiffs developed concept note of the television programme "Work in Progress" with
the Defendants television programme "Summer Showdown", clearly indicates that the
Defendants have copied the television programme of the Plaintiff in all material aspects. It is
also asserted that the changes made by the Defendants such as having five families as
protagonists instead of four individual protagonists, is a cosmetic change. Further, the basic
idea and the format of the Plaintiffs television programme have been slavishly and flagrantly
copied and/or reproduced by the Defendants. The Plaintiff asserts that this has been done
with dishonest and fraudulent intention and that the Plaintiff had not granted any licence to
the Defendants to make any television programme using her concept note. This clearly
amounts to infringement of copyright of the Plaintiff in the literary work being the concept
note of the television programme Work in Progress within the meaning of Section 51 of the
Act.

6. The Plaintiff then asserts that inspite of the exclusive right of the Plaintiff in her literary
work being the concept note (original and developed) and production plan of the television
programme "Work in Progress" , which was disclosed in confidence to the Defendants, who
thereupon used it to develop it for their own commercial exploitation, de hors the Plaintiff,
being the originator of the concept. It is stated that when the Plaintiff had submitted her
concept note of the production plan to the Defendants, it was done with specific
understanding that the Defendants would either accept or reject it. Instead, the Defendants by
using the information imparted to them in strict confidence by the Plaintiff, breached the
confidence reposed by her in them, by misappropriating the concept of the Plaintiffs
television programme and by announcing the launch of the television programme on similar
lines, which has resulted in inflicting huge loss and damage to the Plaintiffs television
programme by luring away the potential sponsors. In substance, the Plaintiff asserts that the
concept note and the production plan of the television programme "Work in Progress" was
information of the type that could be treated as confidential and could not have been used by
the Defendants without the Plaintiffs licence.

7. Having considered the rival submissions and the pleadings and documents on record, I
shall consider the points in issue in the context of the rival submissions and pleadings
hereinafter. The principles relating to the action of breach of confidence have been subject
matter of catena of decisions. The Division Bench of our High Court in the case of Zee
Telefilms Ltd. and Anr. v. Sundial Communication Pvt. Ltd. and Ors. reported in
MANU/MH/0243/2003 : 2003(5)BomCR404 , on analysing the decisions on the subject has
expounded that the law of breach of confidence is different from law of copyright. The law of
breach of confidence, is of breach of trust or confidence-"is a broader right" than proprietary
right of copyright. In para 10 of this decision, the Court went on to observe as follows:

10. The law of confidence is different from law of copyright. In paragraph 21.2 (page 721),
the learned author has pointed out that right to restrain publication of work upon the grounds,
that to do so would be breach of trust or confidence, is a broader right than proprietary right
of copyright. There can be no copyright of ideas or information and it is not infringement of
copyright to adopt or appropriate ideas of another or to publish information received from
another, provided there is no substantial copying of the form in which those ideas have, or
that information has, been previously embodies. But if the ideas or information have been
acquired by a person under such circumstances that it would be a breach of good faith to
publish them and he has no just case or excuses for doing so, the Court may grant injunction
against him. The distinction between the copyright and confidence may be of considerable
importance with regard to unpublished manuscripts/works submitted, and not accepted, for
publication or use. Whereas copyright protects material that has been reduced to permanent
form, the general law of confidence may protect either written or oral confidential
communication. Copyright is good against the world generally while confidence operates
against those who receive information or ideas in confidence. Copyright has a fixed statutory
time limit which does not apply to confidential information, though in practice application of
confidence usually ceases when the information or ideas becomes public knowledge. Further
the obligation of confidence rests not only on the original recipient, but also on any person
who received the information with knowledge acquired at the time or subsequently that it was
originally given in confidence.

8. The principles on which the action of breach of confidence can succeed, have been culled
out as

(i) he (Plaintiff) had to identify clearly what was the information he was relying on;
(ii) he (Plaintiff) had to show that it was handed over in the circumstances of confidence;

(iii) he (Plaintiff) had to show that it was information of the type which could be treated as
confidential; and

(iv) he (Plaintiff) had to show that it was used without licence or there was threat to use it.
The Division Bench in Para 13 of the same decision has culled out the above said principles
relying on the decision in the case of CMI Centers for Medical Innovation GMBH and Anr.
v. Phytopharm PLC reported in 1999 Fleet Street Reports 235. It is further noted that at
interlocutory stage, the Plaintiff does not have to prove (iii) and (iv) referred to above, as he
will at the trial. But the Plaintiff must address them and show that he has atleast seriously
arguable case in relation to each of them.

9. There can be no doubt that the Plaintiff in this case would be entitled for grant of ad-
interim relief, if the Plaintiff were to make good the abovesaid requirements in relation to the
action of breach of confidence. As is mentioned earlier, the cause set out in the Plaint is
founded on two grounds. Firstly, on the breach of confidentiality and secondly, on
infringement of copyright of the Plaintiff. The distinction between the two actions has been
expounded by the Division Bench of this Court in Para 10 in the case of Zee Telefilms
(supra) reproduced above. To put it differently, even if the Plaintiff were to make out
arguable case in relation to the claim of breach of confidentiality, she may succeed in getting
the interim relief. For that, we will have to bear in mind four principles referred to earlier. As
observed by the Division Bench, at the interlocutory stage, the Plaintiff will not be required
to prove (iii) and (iv) as she will at the trial. But it will be sufficient if she is able to address
them and show that at least seriously arguable case in relation to each of them exist.
Indubitably, this principle will have to be borne in mind moreso for considering the prayer for
grant of "ad-interim relief" during the pendency of the Motion for interim relief.

10. The first aspect is to ascertain whether the Plaintiff has identified clearly what was the
information she was relying on. Going by the averments in the Plaint, there can be no doubt
as to the nature of information in relation to which breach of confidentiality is alleged. The
Plaintiff has made it clear more than once that she was alleging breach of confidentiality in
relation to "her concept" and the "concept note" regarding programme titled "Work in
Progress", which was originally conceived and articulated by her in the initial concept note
and also the further developed concept notes and the production plan thereof. Indeed, the
issue of civic woes may be in public domain, but the concept developed by the Plaintiff for a
reality show on the subject of the programme "Work in Progress" is a novel one. Besides,
going by the averments in the Plaint and the contemporaneous record, there is no doubt that
the Plaintiff passed on information regarding "her concept" and the format of the programme
in "concept notes" to the Defendants in confidence. The case made out in the Plaint in this
behalf is substantiated by contemporaneous record such as the communication exchanged in
this behalf between the parties. The Plaintiff was interacting with the Defendants with clear
assumption that they would either accept or reject the proposed programme or work of the
Plaintiff titled "Work in Progress". In no case, the Defendants would use the said information
themselves or allow the same to be used without the licence of the Plaintiff.

11. The next question is: whether the Plaintiff has shown that the subject information was of
such type which could be treated as confidential? Even on this issue, there should be no
difficulty in accepting the claim of the Plaintiff. Indeed, the Defendants would contend that
no confidentiality can be claimed in relation to matters in public domain. For, the issue of
civic woes was in public domain and no confidentiality can be claimed in respect of the idea
to solve the same. Moreover, the breach of confidentiality can be invoked only if it is a case
of use of a script, characterisation, sequences, dialogues. The argument though attractive,
clearly overlooks the principle expounded by the Division Bench of our High Court in the
case of Zee Telefilms (supra). In the first place, the Plaintiff is not claiming confidentiality in
relation to the issue of civic woes as such, but the claim in confidentiality is in relation to "her
concept -of the programme" and the manner of spreading awareness of the civic problems.
The Plaintiff is claiming confidentiality also in relation to her "concept notes and production
plan" pertaining to programme "Work in Progress". For the purpose of action in breach of
confidentiality, it is well established position that a party can claim confidentiality even in
relation to a "concept or idea", unlike in a claim or action in infringement of copyright - if the
Plaintiff were to satisfy the specified parameters to succeed in such action. In Para 16 of the
decision, the Division Bench went on to advert to the exposition in the case of Fraser v.
Thames Television Ltd. reported in 1983(2) All.E.R. 101. In that case, breach of confidence
was claimed in relation to an idea of a television series and which idea was "disclosed orally"
and in confidence to the Defendants. The Defendants used that idea to create television series
with other actresses. The Court held that the Court would prevent person who had received
idea expressed "in oral" or written form from disclosing it for an unlimited period or until that
idea becomes general public knowledge. In the present case, the grievance of the Plaintiff is
not confined to exploitation of her concept or idea of staging a television reality show to
highlight the woes of a common man in respect of civic problem, but also in relation to the
format, the treatment, the problems and the production plan articulated by the Plaintiff in the
original concept note and further developed concept notes and production plan for the
programme "Work in Progress". All these matters were undoubtedly of the type which ought
to be treated as confidential. The fact that such information was received by the Defendants is
not in dispute. It is also evident that the Plaintiff has not given licence to the Defendants to
use the said information in any manner. It is also not possible to assume or infer that the said
concept and the production plan of programme "Work in Progress" had become a general
public knowledge. Even in a case where there is threat to use such information passed on in
confidence, the Plaintiff would be entitled for protection. The Plaintiff would surely be
entitled to protection even where the same (information) in fact has been used wholly or in
part, with a threat of continued user thereof but also in case of threat to use it in posterity by
the person to whom such information is given.

12. Incidentally, it is not the case of the Defendants that the information made available to
them by the Plaintiff was not handed over in the circumstances of confidence as such. No
such plea can be countenanced in the fact situation of the present case. The argument of the
Defendants that the Plaintiff cannot succeed unless they were to assert and prove that the
concept note was handed over by the Plaintiff to Defendant No.1 with any express or implied
term for the confidentiality of the Agreement. This argument will have to be stated to be
rejected in the fact situation of the present case. In my opinion, from the materials on record,
the Plaintiff has succeeded in making good all the four criteria for considering grant of ad-
interim relief in relation to the action of breach of confidentiality. The Plaintiff has also relied
on another decision which has bearing on the issue relating to action of breach of
confidentiality. That decision is, in the case of Anil Gupta and Anr. v. Kunal Das Gupta &
Ors. of the Delhi High Court reported in MANU/DE/0183/2002 : AIR2002Delhi379 . In
fact, Paragraphs 27 and 29 of this decision have been extracted with approval in the Judgment
of Zee Telefilms (supra) of the Division Bench of our High Court with approval. In Anil
Guptas case (supra), the Court has adverted to the decision in Talbot v. General Television
Corporation Pvt. Ltd. reported in 1981 R.P.C. 1, and then went on to observe that the Law of
Trade Secrets by Robert Dean take into consideration that the word novel is sometimes used
simply to mean previously unknown but its more common meaning is that of inventiveness,
or that of the information is unique, akin to "manner of manufacture". It has further observed
that whether it is described as originality or novelty or ingenuity or otherwise, there must be
some product of the human brain which suffices to confer a confidential nature upon the
information. The Court then referred to the exposition in the case of Fraser v. Thames
Television (supra), which reads thus:

Clearly a claim that the disclosure of some information would be a breach of confidence is
not to be defeated simply by proving that there are other people in the world who know the
facts in question besides the man as to whom it is said that his disclosure would be a breach
of confidence and those to whom he has disclosed them.

The Court then extracted the dictum in the case of Terrapin v. Builder Supply Company,
which postulates that the essence of law on breach of confidentiality is that whatever the
origin of it may be, is that a person who has obtained information in confidence is not
allowed to use it as a spring-board for activities detrimental to the person who made the
confidential communication, and spring-board it remains even when all the features have
been published or can be ascertained by actual inspection by any member of the public. The
Court also went on to observe in Para 39 that if such confidential information is going to be
used in competition with the Plaintiff, it is not merely a matter of compensation in terms of
money. It is useful to reproduce Para 27 of the decision which reads thus:

27. In the modern day, when the small screen has taken over the earlier means of mass
communication like radio, idea/concept/script of a broadcaster has wider potentiality of
capitalising revenue and if that idea/concept or script is not protected then in a given case, a
person who has conceived an idea to be translated into the reality TV show which could be
key to its success with audience then channels with their enormous resources could always be
in a better position to take the idea/theme/concept from any author and then develop at their
own end and the original author of the concept will be left high and dry. In appropriate cases
interlocutory injunction may be issued restraining such breach of confidentiality of the theme,
concept or scripts otherwise it would be catastrophic for the television industry. One has to
bear in mind that persons who create an idea/concept or theme which is original, laws must
ensure that such like people are rewarded for their labour. A concept for reality show on
television was given to the company, which in this case is the defendants. Creator provides
raw material to the entertainment industry, themes or concepts originates from the person
who has conceived the same, protection is vital for the functioning of the industry. Otherwise
authors of the ideas who are individuals, their ideas can be taken by the broadcasting
companies or channels owning companies and the persons who has conceived the same,
would be robbed of its labour....

13. Reliance was also placed by the Plaintiff on the decision of the Madras High Court in the
case of The Daily Calendar Supplying Bureau, Sivakasi v. The United Concern reported in
MANU/TN/0256/1967 : AIR1967Mad381 and lastly, on the decision of the Apex Court in the
case of Midas Hygiene Industries P.Ltd. and Anr. v. Sudhir Bhatia and Ors. reported in
MANU/SC/0186/2004 : 2004(28)PTC121(SC) . In Para 5 of this decision, the Apex Court
has observed that the law on the subject is well settled. In that, in case of infringement either
of Trade Mark or of Copyright, normally, an injunction must follow. Mere delay in bringing
action is not sufficient to defeat grant of injunction in such cases. It is further observed that
the grant of injunction also becomes necessary if it prima facie appears that the adoption of
the Mark was itself dishonest. In the fact situation of the present case, if the Plaintiff were to
succeed in establishing the fact that the Defendants have misused the information made over
to them in confidence without the licence of the Plaintiff, it would necessarily follow that the
attempt of the Defendants was nothing but dishonest. Suffice it to observe that the Plaintiff
has made out more than seriously arguable case in relation to the ground of breach of
confidentiality and would therefore, be entitled for the ad-interim relief in terms of prayer
clauses (a) and (b) of the Motion.

14. That takes me to the second ground on which the Plaintiff is claiming order of injunction
against the Defendants. It is the case of the Plaintiff that the Defendants by their act of
commission and omission have infringed the copyright of the Plaintiff relating to her
television programme "Work in Progress". Going by the pleadings, it is not possible to accept
the argument of the Defendants that the Plaintiff was claiming infringement of copyright in
relation to the abstract concept or idea of the programme as such. However, on fair reading of
the Plaint as a whole, it is seen that the grievance of the Plaintiff is of infringement of
copyright in relation to the original concept note articulated by her and the further developed
concept note and the production plan of the stated programme. Those were the literary work
of the Plaintiff in relation to the television programme "Work in Progress". It is seen that the
concept of Plaintiff in relation to television programme titled "Work in Progress" has been
registered with the Film Writers Association, Mumbai as back as on 9th November 2005. The
Plaintiff made over said concept note to the Defendants. In fact, it cannot be disputed that the
Plaintiff made over further developed concept note of the said programme and the production
plan detailing the format, the treatment, the problems, etc. to the Defendants in or about
March-April 2006. In such a situation, the question that will arise for consideration is:
whether the Defendants have copied or reproduced the said work in any material form to
make any film in respect of that work (Plaintiffs work) or have done adaptation thereof? The
concept note as well as the further developed concept note and the production plan, it cannot
be disputed, can be described as literary work of the Plaintiff in relation to which there was
existing copyright in her favour. Reproduction or adaptation of that work in any material
form or any substantial part thereof by the Defendants would clearly attract the action of
infringement of copyright. For considering such claim, it is well established that the Court will not
enter into hypercritical and meticulous scrutiny but go by the broad observations and impressions of
an average viewer. The Court will have to ascertain whether there has been reproduction, copy or
adaptation of the work of the Plaintiff or any substantial part thereof. For that, the striking
similarities in the two works will have to be examined. According to the Defendants, the programme
aired by the Defendants tilted as "Summer Showdown" is in no way comparable to the work of the
Plaintiff. There are marked dissimilarities in both the works. Those dissimilarities articulated in the
reply affidavit filed before this Court reads thus:

S.No. Summer Showdown: Work in progress:

1 Families facing essentially summerThe concept note visualizes individuals
related problems are featured. having faced a civic problem and taking
initiative to resolve it.
2. The families do not necessarily haveThe individuals should already have a
a solution to their problem. proposed solution.
3. The selection of the families wasThe selection of individuals is on the basis
done on the basis of already of whether the individual has sufficient
existing contacts of reporters andinitiative to resolve a civil issue and
through research. The families needwhether he already has a reasonable plan
not meet any criteria, except for for resolving the issue.
facing a civic problem. The families
 were put through a simple
screening test before being
selected.
4. The civic problem is required to be The individual need not necessarily
brought to the attention of theapproach the civic authority for resolution
concerned civic authority. of his problems. He or she may resolve the
problem by approaching local resident's
welfare association, industrial house, etc.
5. The civic authority's responsivenessThe civic authority is presumed to be an
plays a crucial role in this show andantagonist to the initiative of the
is continuously being monitored. individual. The individual's actions and
reactions to various antagonistic agents is
crucial to the show.
6. Reaction of civic authority has not The text of the Plaintiff's concept note very
been dramatized in its series. We clearly lays down the script of what will
are doing it in reality and will see happen in an ANTAGONIST
the reaction of the authority. Not-PROTAGONIST fashion. This already
presume them as antagonistic and predicts, in writing, the reaction of the
find its own solution, like 'Work in civic authority and people with conflicting
Progress' will do. So, the claim ofinterests as being antagonistic.
alleged literary work of the Plaintiff
being copied has not been made
out.
7. Aired 5 days in a week. 2-3 minutes Conceived to be aired once a week - 60
story on one family from one city on minutes episode (Week that was)
one day of the week.
8. Each day assigned to a differentEach episode features the four individuals
city.
9. Macro level problems of the kind Micro-level problems and tackle them not
that plague the entire city. only with authorities but also with other
Addressing broader infrastructuralcitizens, local associations, etc. EG: not
issues. One family facing a civichaving a zebra-crossing at the main-road,
problem and approaching thestray dogs. So the specific solution being
concerned civic authority forproposed is at the level of that locality for
resolution of the problem. Thus, thethat particular problem.
solution is likely to affect the city at
that macro level. Perhaps even at
the level of the whole city. EG:
power, flooding, sound pollution,
etc.
10. No screening of participants forScreening of participants for
intention/sincerity. intention/sincerity.
11. The 'Summer Showdown' show just The concept note visualizes a show being
brings to light a real incident with high on building drama and tension,
minimum interference by thecontinuously assessing the trials and
channel. CNN-IBN is trying to show tribulations of the individual as well as the
how easy or hard it is in this day antagonistic agents.
and age to get your problem
resolved through a civic body. No
coverage of the families' emotions,
no interviews of their friends and
family members to find out what
they are going through.
12. If unsuccessful, the concerned civicEven if unsuccessful, no concept of having
 authority' head is proposed to belost. Each individual is to be appreciated
brought to task. No chance to keep on the basis of the efforts made. There is
working at it and come back later no spirit of competition, and no
on the show. comparison, conscious or unconscious,
proposed to be made between the
participants. It is a collective loss or a
collective victory.

15. On the other hand, the Plaintiff has asserted in the Plaint to which reference has already been
made in the earlier part of this Order that the Defendants television programme "Summer
Showdown" also follows citizens from different parts of the country as they take the initiative and
set out to solve the civic problems of their choice in their locality. Besides, the programme of the
Defendants even follow the chosen protagonists through the quagmire of bureaucracy and
conflicting interests and destructive attitudes as they try to solve civic problem of their choice.
Similarly, the programme of the Defendants also highlights fight of the protagonists on many fronts.
According to the Plaintiff, on comparison of the developed concept note of the television
programme "Work in Progress" with the Defendants television programme "Summer Showdown", it
definitely shows that Defendants have copied the programme of the Plaintiff in all material aspects.
The changes brought about in the programme of the Defendants are only cosmetic ones. The
Plaintiff asserts that the television programme of the Defendants has slavishly and flagrantly copied
and/or reproduced the Plaintiffs work without licence of the Plaintiff and that conduct of the
Defendants was clearly dishonest and fraudulent. In the Exhibit appended to the rejoinder affidavit
filed before this Court, the Plaintiff has articulated the striking similarities in the two works in
following terms:

S.No. Work in Progress: Summer Showdown:  

1. The program is not news. The program is not news.  
2. It is a pre-recorded programIt is a pre-recorded program where there
where there may be off the may be off the screen interference. The
 
screen interference. The show isshow is therefore not live either.
therefore not live either.
3. Participants are screened as setParticipants are screened (However, the
out in the concept note. details of such screening are deliberately  
not disclosed by the defendants)
4. Concept: A reality show in which Concept: CNN IBN showcases in a reality
across the country in four citiesshow five families (instead of four
one individual each try to solve aindividuals) across five cities who have
civic problem of their choice. Thisresolved to solve a civic problem of their  
effort is captured on camera. Achoice.
reality show. The emphasis on
participating in the civic process.
5. The individuals interact with civic The families interact with civic authorities
 
authorities as well
  whilst finding a solution for thewhilst finding a solution for the civic
civic problem chosen by them.problem chosen by them.
The civic authorities are
 
described as antagonists since
they are on the other side
required to address the problems.
6. Suggested Problems to be dealt Problems being dealt with: Though the  
with: Roads, drainage, water,program states that the problems being
health, protection of monuments, dealt with are related to the summer,
 education, animal protection.surprisingly the problems dealt with are
Sample episodes for the purposeswater (Bangalore), drainage/flooding
of understanding also set out in(Bombay), traffic/roads (Kolkatta) health
the concept note. and garbage (Chennai)
7. Episode 1: Introduction ofEpisode 1: Introduction of the
protagonists and the civicprotagonists and the family. The reasons
problem they decide to try andbehind taking up the issue. The episode
solve. This episode highlights the urges viewers to watch the following
reasons (emotional, personal) forepisode to see what happens next.
choosing that particular civic
 
problem and introduces the
family members as well as
friends. The episode urges
viewers to watch the following
episode to see what happens
next.
8. The duration of this effort is 30 The duration is four weeks i.e. 28 to 30
 
days i.e. about four weeks. days.
9. Episode 2: Shows what theEpisode 2 : Protagonists begins his effort.
protagonists journey is going toHis actions.
be. Details of the forces against  
solving of the issue and actions
taken are shown.
10. The ticking clock is uses The ticking clock is used to  
  as a motif to show that the time show that the time is running out.
 
is running out.
11. Identification of the week andDay and week label appears on screen.
day for the viewer to capture the  
sense of time.
12. The concept of using daily 2/3The show is a daily 2/3 minutes capsule.
minutes segment. These daily
capsules were to deal with
individual protagonist's course of
 
action on a daily basis. Mentioned
in all written concept notes as
well as the visual presentation
and correspondence.
13. Anchor based show at the end ofAn anchor introduces each episode after
the week for 60 minutes . giving a recap and ends the show after
the clipping of what the family has done.
Program though is just the daily capsule  
aforementioned with a proposed end of
the month live show with all the families
and civic authorities.
14. .Discussed the possibility ofUsed part of the format. Only daily
changing the number ofcapsules and not the weekly show.
protagonists as well as the
 
program duration to make it
financially viable until the concept
picks up.
15. No spy/hidden cameras are usedNo spy/hidden cameras are used and  
and wherever the camera cannotwherever the camera cannot be taken
be taken into a civic authorityinto a civic authority office (for example)
office (for example) thethe cameraman waits outside.
 cameraman waits outside.
16. Voice over are used forVoice over are used for commenting on
commenting on the proceedings the proceedings of the day.  
of the day.
17. The assistance of an NGO though For eg.: The assistance of an NGO was
not mandatory was possible to beproposed in Chennai. (As set out in the  
sought. First Affidavit on page 105)
18. At the end of four weeks a final At the end of four weeks a final show
show featuring all participants. featuring all participants.
19. Broadcasting platformsBroadcasting platforms: Broadband, blogs.
suggested: Web (which includes
Broadband), Blogs, Newspaper,
Radio.

16. Suffice it to observe that in the present case in relation to the ground under consideration,
the grievance is not one of infringement of mere idea or an abstract thought. On the other
hand, the Plaintiff asserts that she had developed or expressed her idea into various concept
notes, including production plan which are appended to the Plaint. In other words, the
grievance of the Plaintiff was one of infringement of such literary work of the Plaintiff by the
Defendants in respect of the programme titled "Work in Progress". Here, it may be useful to
advert to the exposition in Copinger and Skone James on Copyright, 14th edition. In Para 2-
05, it is observed as follows:

No copyright in ideas. Copyright is a property right, but copyright law is concerned, in

essence, with the negative right of preventing the copying of material. It is not concerned
with the reproduction of ideas, but with the reproduction of the form in which ideas are
expressed. "Ideas, it has always been admitted,... are free as air." Copyright is not a
monopoly, unlike patents and registered designs, which are. Thus, if it can be shown that two
precisely similar works were in fact produced wholly independently of one another, there can
be no infringement of copyright by one of the other. The position is that, if the idea embodied
in the plaintiffs work is sufficiently general, the mere taking of that idea will not infringe. If,
however, the idea is worked out in some detail in the plaintiffs work and the defendant
reproduces the expression of that idea, then there may be an infringement. In such a case, it is
not the idea which has been copied but its detailed expression.

17. Reliance is also placed by the Defendants on the exposition in Paragraphs 3-10 of the
same book, which read thus:

Protection afforded by copyright in a literary work. It is often stated that there is no copyright
in ideas. There are two aspects to this statement, the first of which has been discussed above,
namely that it is not the concern of copyright enactments to protect ideas unless and until the
ideas have found expression in the form of a work of a category recognised as deserving of
protection. The second aspect is the corollary of the first, that once the ideas have been
expressed in the form of a work, it is the form of expression which is the subject of
protection, not the ideas, which themselves may be freely extracted from the work and
absorbed and used by others to produce their own works, so long as the form of expression of
the work is not also taken. In this respect, however, it is to be noted that the form of
expression of a literary work does not mean only the text in which that work is written; it may
include the selection and arrangement in a particular order of incidents, whether factual or
fictional.
The same considerations apply to literary works whose principal purpose is to communicate
news, and indeed it is often stated that there is no copyright in news. This is perhaps not an
accurate way of applying the general principle referred to above. The fact that the content of
a literary work is news does not prevent that work from being capable of protection by
copyright. But again, what is protected is the form of expression of that content. The
information itself, as information stripped of its particular form of expression, may be freely
used, as with any other literary work.

18. In the first place, the two works are not news items but reality shows. More over, in the
present case, the Plaintiff is questioning the action of the Defendants of reproduction of the
"format" in which the ideas were expressed by the Plaintiff in her concept notes articulated
from time to time and the production plan in relation to programme titled "Work in Progress".
It is not the case of the Plaintiff that mere idea of the Plaintiff has been infringed, but it is the
specific case of the Plaintiff that her idea had found expression in the form of detailed
concept notes and the production plan relating to the programme "Work in Progress". That
has been substantially reproduced by the Defendants in material form in several aspects
which results in infringement of her copyright in that programme. It will be useful to
straightaway advert to the leading decision of the Apex Court in the case of R.G.Anand v.
Delux Films and Ors. reported in MANU/SC/0256/1978 : [1979]1SCR218 . In Paragraph 46
of this decision, after considering the gamut of the case law on the subject, the Apex Court
elucidated the propositions emerging from different authorities as follows:

46. Thus, on a careful consideration and elucidation of the various authorities and the case
law on the subject discussed above, the following propositions emerge:

1. There can be no copyright in an idea, subject-matter, themes, plots or historical or legendry

facts and violation of the copyright in such cases is confined to the form, manner and
arrangement and expression of the idea by the author of the copyrighted work.

2. Where the same idea is being developed in a different manner, it is manifest that the source
being common, similarities are bound to occur. In such a case the courts should determine
whether or not the similarities are on fundamental or substantial aspects of the mode of
expression adopted in the copyrighted work. If the defendants work is nothing but a literal
imitation of the copyrighted work with some variations here and there it would amount to
violation of the copyright. In other words, in order to be actionable the copy must be a
substantial and material one which at once leads to the conclusion that the defendant is guilty
of an act of piracy.

3. One of the surest and the safest test to determine whether or not there has been a violation
of copyright is to see if the reader, spectator or the viewer after having read or seen both the
works is clearly of the opinion and gets an unmistakable impression that the subsequent work
appears to be a copy of the original.

4. Where the theme is the same but is presented and treated differently so that the subsequent
work becomes a completely new work, no question of violation of copyright arises.

5. Where however apart from the similarities appearing in the two works there are also
material and broad dissimilarities which negative the intention to copy the original and the
coincidences appearing in the two works are clearly incidental no infringement of the
copyright comes into existence.
6. As a violation of copyright amounts to an act of piracy it must be proved by clear and
cogent evidence after applying the various tests laid down by the case law discussed above.

7. Where, however, the question is of the violation of the copyright of stage play by a film
producer or a Director the task of the plaintiff becomes more difficult to prove piracy. It is
manifest that unlike a stage play a film has a much broader perspective, wider field and a
bigger background where the defendants can by introducing a variety of incidents vie a
colour and complexion different from the manner in which the copyrighted work has
expressed the idea. Even so, if the viewer after seeing the film gets a totality of impression
that the film is by and large a copy of the original play, violation of the copyright may be said
to be proved.

19. Thus understood, to answer the claim of the Plaintiff for grant of ad-interim relief, it will
have to be ascertained whether the work of the Defendants is similar in material and
substantial aspects with that of the Plaintiff. While examining this, as noted by the Division
Bench of our High Court in Zee Telefilms (supra), it will have to be borne in mind that "it is
enough that substantial parts were lifted; no play right can excuse wrong for showing how
much of his work he did not pirate". This quotation is extracted from the case of Sheldon v.
Metro Goldwyn Pictures Corporation reported in 1993 (81) F 2nd 49. The standard to be
applied, therefore, is not to compare the two works with hypercritical and meticulous scrutiny
but from the stand point of the observations and impressions of an average viewer. As
presently advised, there are striking similarities in the work of the Plaintiff as that of the work
of the Defendants. The programme is not news, it is a reality show (programme). That is the
stand now taken by the Defendants on affidavit.

20. It is a different matter that when the Notice of Motion was moved before the Vacation
Judge of this Court on 23rd May 2007, representation was made on behalf of the Defendants
through their Counsel that the Defendants were displaying a three minute "news clipping"
which can neither be termed as reality show nor the same is based upon the concept note of
the Plaintiff. The Defendants informed this Court that, in fact, their programme was a live
programme. Indeed, a precise was moved on behalf of the Defendants immediately on 24th
May 2007, calling upon the same Vacation Judge to clarify the statement of the Counsel of
the Defendants recorded in the order dated 23rd May 2007. The Defendants wanted it to be
clarified that the Defendants had submitted that their programme was not a reality show
based upon the concept of the Plaintiffs claim in the Suit, inasmuch as the term reality show
is a very wide generic term. With regard to the other statement of the Defendants recorded in
the same order (dated 23rd May 2007) that, in fact the programme telecast by the Defendants
was a live programme; the Defendants wanted even that statement to be changed to be read as
their programme was in fact an earlier recording of events. This precise was considered by
the same Vacation Judge on 24th May 2007 and the Court has noted that there was no
ambiguity or any clerical error in its earlier order which required to be corrected. The request
of the Defendants of speaking to the minutes of the earlier order was expressly rejected by
observing that there was no merit in the application. It follows that, an incorrect statement
was made on behalf of the Defendants before the Court in relation to the material facts, on
23rd May 2007. Nevertheless, the Court went on to observe that the earlier order was without
prejudice to the rights and contentions of both the parties. In this backdrop, grievance was
rightly made on behalf of the Plaintiff that because of such incorrect statement of fact made
on behalf of the Defendants, the Court did not grant any ad-interim relief on 23rd May 2007
itself. That was the negative injunction secured by the Defendants from the Court by
misrepresentation of material facts. According to the Plaintiff, although the Defendants
programme "Summer Showdown" was aired on and from 14th May 2007, Plaintiff became
aware about the infringement and breach on 19th May 2007, and immediately rushed to file
the present suit which, in turn, was prepared on 21st May 2007 after collecting the basic
documents, which became available to the Plaintiff and it was moved for ad-interim relief on
23rd May 2007. It is not necessary for me to elaborate on this matter any further for the
present. Suffice it to observe that the programme which is being telecast by the Defendants is
not a news item but a reality show, which is strikingly comparable with the work of the
Plaintiff.

21. Indeed, the Defendants have stated that the programme "Summer Showdown" was
conceived in-house around March-April 2007 as a reality show comprising families in metros
dealing with problems related to Summer, but was later on modified to a certain extent. The
Defendants may be given benefit of having conceived an in-house programme "Summer
Showdown" around March-April 2007 as a reality show comprising families in metros
dealing with "problems related to Summer". However, if they intended to modify that
programme, the modification ought to be in the context of the original theme of problems
during Summer. Whereas, the form and contents of programme "Summer Showdown" which
has been relayed by the Defendants, as is rightly pointed out by the Plaintiff, is the same as
the programme of the Plaintiff "Work in Progress"; namely, a reality show in which across
the country in four cities, one individual each try to solve a civic problem of his/her choice.
The emphasis of the reality show was on participating in civic process. Whereas, the
modified programme "Summer Showdown" showcases a reality show in which five families
(instead of four individuals) across five cities, who have resolved to solve a civic problem of
their choice. There is only a cosmetic change brought about. For, instead of individuals in
four cities, it is five families across five cities. The Plaintiffs work focussed on problems such
as roads, drainage, water, health, protection of monuments, education, animal protection, etc.
The Defendants programme though titled as "Summer Showdown", also relates to the civic
problems such as water, drainage/flooding, traffic/roads, health and garbage. The striking
similarities in the two works have been elaborated by the Plaintiff in the rejoinder affidavit to
which reference has already been made in the earlier part of this Order. What is noticed is
that substantial part of the work of the Plaintiff has been lifted in the programme of the
Defendants titled "Summer Showdown". The argument of the Defendants of the
dissimilarities pointed out by them, to borrow the words of the learned Judge Hand in his
Judgment in the case of Sheldon (supra), is only an excuse for showing how much of
Plaintiffs work Defendants did not pirate. Although the first point noted by the Defendants is
that the families facing essentially summer related problems are shown in their programme.
However, from the material available on record, it is seen that the main theme of the Plaintiff
in her work relating to programme "Work in Progress" has been substantially lifted and
borrowed. The matters such as difference in selection process, the families or for that matter
of period of airing the programme during the week or a given date, or screening of
participants or that it is not anchor-based and the like highlighted by the Defendants are of no
avail. Those changes are only cosmetic ones.

22. To get over this position, it was argued on behalf of the Defendants that in fact, the
assertion in the Plaint do not spell out material facts to maintain action of infringement of
copyright against Defendants. In any case, there is no cause of action to proceed against the
Defendants. This technical arguments will have to be stated to be rejected. I have already
observed in the earlier part of this Order that the Plaintiff has spelt out the relevant facts
which, result in infringement of copyright. The Plaint will have to be read as a whole. In any
case, the Plaintiff has brought on record in Paragraphs 15 and 16 how the Defendants have
fraudulently copied the work of the Plaintiff. Assuming that the specific case regarding
similarities of the two works has not been spelt out by the Plaintiff in the Plaint, the
Defendants have no manner of doubt about the case made out by the Plaintiff against them.
Obviously, therefore, in the reply affidavit filed to oppose the Motion, the Defendants have
meticulously dealt with several aspects on the merits of the work and highlighted the
dissimilarities in the two works. The Plaintiff on the other hand in the rejoinder has re-
iterated the position stated in the Plaint and has also elaborated on how and in what manner
the Defendants have indulged in reproduction and adaptation of the Plaintiffs programme
"Work in Progress". The similarities pointed out by the Plaintiff are more striking. The
dissimilarities pointed out by the Defendants are trivial and insignificant to answer the point
in issue. It is apparent that the theme in the Plaintiffs work in material form and substantial
part thereof has been lifted and reproduced and adapted in the work of the Defendants.
Suffice it to observe that the impression after going through both the works, viewed in the
perception of an average viewer, is that, the Defendants work is based or taken from the
original work of the Plaintiff though titled as "Summer Showdown".

23. Counsel for the Defendants would rely upon the decision of our High Court in the case of
Star India Pvt. Ltd. v. Leo Burnett (India) Pvt. Ltd. reported in 2003 (27) PTC 81 (Bom.).
The exposition in this decision is in the context of the script of two films which were
different. No portion of the dialogues or scenes were common. Suffice it to observe that the
Court was considering the claim of copyright in relation to the film/sound recordings and not
of literary, dramatic or artistic work. In that case, the learned Judge was conscious of this
position and has thus observed at Page 94 that ".....A narrow copyright protection is accorded
to a film/sound recordings than for literary, dramatic or artistic work. The reason perhaps
could be that they have to be original to satisfy the test of copyrightability, whereas the
requirement of originality is absent for claiming copyright in cinematograph films/sound
recordings". In the present case, however, the grievance is that the concept note, further
developed concept note and the production plan which spell out the format, the treatment, the
problems, etc., articulated by the Plaintiff which was her original literary work in relation to
programme "Work in Progress", have been lifted and substantial part thereof has been
reproduced and adapted by the Defendants in their programme titled "Summer Showdown".

24. Counsel for the Defendants would then rely on the decision of the Court of Appeal of
Newzealand in the case of Green v. Broadcasting Corporation of New Zealand reported in
(1989) RPC 469. For the factual matrix of the present case and view that I have already
expressed in the earlier part of this Order, which is following the exposition of our Apex
Court and the Division Bench of our High Court including the decision of the Delhi High
Court, it is not necessary to elaborate further on this decision.

25. The argument of the Defendants that there can be no copyright in the theme of citizen
activism towards civic problems and the said theme cannot be considered to be original or
entitled to copyright protection in favour of the Plaintiff exclusively, would have been valid
only if this Court were to find that treatment, format, structure, expression and presentation of
the programme "Summer Showdown" was materially dissimilar and do not resemble to the
literary work of the Plaintiff. However, on the finding recorded earlier, this argument will not
take the matter any further for the Defendants. Similarly, the argument of the Defendants that
they were already running a show titled "Citizen Journalist" since December 2005. The said
show covered stories where citizens have raised their concern and voice for bringing about
positive change through their efforts, such as through making an application under the Right
to Information Act or by making a film or by gathering support from his neighbourhood
towards addressing a common cause. Even this claim of the Defendants will be of no avail on
the finding recorded that the programme tilted "Summer Showdown" has striking similarities
with the literary work of the Plaintiff in relation to programme "Work in Progress".

26. There is substance in the argument of the Plaintiff that the plea taken by the Defendants in
the reply affidavit is, to say the least, afterthought and to create gloss so as to mislead the
Court. There is substance in the argument of the Plaintiff that at no stage Rasika Tyagi had
conveyed to the Plaintiff that the Defendants were already broadcasting similar show in the
name of Citizen Journalist. There is no contemporaneous record to support this position. On
the other hand, the response of Rasika Tyagi to the Plaintiff belies this position. Rasika Tyagi
in her communication showed interest in the concept of the programme of the Plaintiff. There
is also substance in the argument of the Plaintiff that nothing prevented the Defendants to file
affidavit of Rasika Tyagi or for that matter, of Rajdeep Sardesai to dispute the factual matrix
indicating their involvement during negotiations as stated by the Plaintiff before this Court. It
is not the case of the Defendants that their abovesaid two representatives were not available
for affidavit. In such a case, adverse inference should be drawn against the Defendants. In
Paragraph (b)(v) of the reply affidavit, it is asserted that Rasika Tyagi had communicated to
the Plaintiff that her proposal is rejected. There is nothing to support this position. This claim
of the Defendants, to say the least, is afterthought. In fact, the claim of the Defendants is
belied by the subsequent conduct of the Defendants representative Rajdeep Sardesai who
entertained the request of considering the Plaintiffs proposal which was much latter in point
of time. Rajdeep Sardesai is the editor-in-chief of the Defendants. If the Defendant had
already rejected the proposal of the Plaintiff, there was no reason for the Defendants
representative to entertain the proposal of the Plaintiff. In Paragraph b(ix) of the reply
affidavit, it is asserted that Rajdeep Sardesai was not aware of Ramchandran Srinivasan
connection with the Plaintiff. In the first place, affidavit of Rajdeep Sardesai is not filed. In
any case, this plea is in utter disregard of the contents of the communication sent by
Ramchandran Srinivasan to Rajdeep Sardesai which clearly mentions that the Plaintiff was
his friend and had pursued proposal through Rasika Tyagi earlier. In fact, Rajdeep Sardesai
entertained the more detailed concept note and the production programme titled "Work in
Progress" as recently till February 2007. The claim of the Defendants that they have
conceived in-house programme "Summer Showdown" around March-April 2007 as a reality
show comprising families in metros dealing with problems related to summer, even if
accepted, that does not take the matter any further. For, the Defendants have eventually come
out with the programme which departs from the theme of the title "Summer Showdown" but
is ascribable to the theme of the programme of the Plaintiff titled "Work in Progress". The
Defendants have advisedly stated in Paragraph c(viii) of the reply affidavit that the original
theme of the programme "Summer Showdown" was subsequently modified to certain extent
based on the research of the reporters. This excuse does not take the matter any further for the
Defendants.

27. The Counsel for the Defendants had argued that it is not possible to discern the actual
grievance of the Plaintiff whether it is in relation to infringement of concept or of literary
work or artistic work. This argument is canvassed in the context of the comparison made by
the Plaintiff regarding the appearance of Clock. According to the Defendants, reproduction or
copying of clock, at best, would be infringement of artistic work and not of literary work.
This argument is devoid of any substance. As has been mentioned earlier, the grievance of
the Plaintiff is not one of infringement of idea or concept, nor is that of infringement of
artistic work. The complaint of the Plaintiff is specific to infringement of copyright in
relation to her literary work of concept notes articulated by her from time to time and the
production plan in relation to programme titled "Work in Progress".

28. Taking overall view of the matter, I have no hesitation in accepting the argument of the
Plaintiff that the Defendants have indulged in infringement of copyright of the Plaintiff in
relation to her original literary work of programme titled "Work in Progress".

29. Accordingly, in my view, Plaintiff is entitled to ad-interim relief also on the ground of
infringement of copyright of Plaintiffs literary work in relation to programme titled "Work in
Progress".

30. In the circumstances, ad-interim relief in terms of prayer clauses (a) and (b) of the Notice
of Motion as prayed for is granted which read thus:

a. That pending the hearing and final disposal of the suit it is absolutely just, necessary and
proper that the Plaintiff is entitled to an order and injunction of this Honble Court restraining
the Defendants by themselves, its Directors, servants, agents and associate concerns/firms
from in any manner whatsoever infringing the copyright of the Plaintiffs in the original
literary work being the concept note of the television programme Work in Progress, by
directing or making or copying or reproducing the same or publishing or broadcasting or
otherwise exploiting the work by making and broadcasting the television programme
Summer Showdown, without the Plaintiffs consent so as to infringe the copyright of the
Plaintiffs in the original literary work being the concept note of the television programme
Work in Progress;

b.That pending the hearing and final disposal of the suit it is absolutely just, necessary and
proper that the Plaintiff is entitled to an order and injunction of this Honble Court restraining
the Defendants by themselves, its Directors, servants, agents and associate concerns/firms
from in any manner whatsoever breaching the confidential information imparted by the
Plaintiff and contained in the concept note of the television programme Work in Progress, by
directing or making or copying or reproducing the same or publishing or broadcasting or
otherwise exploiting the work by making and broadcasting the television programme
Summer Showdown, without the Plaintiffs consent and/or license, so as to breach the
confidential information imparted by the Plaintiff and contained in the concept note of the
television programme Work in Progress.

31. The above relief will operate till the disposal of the Notice of Motion. Notice of Motion
be placed for hearing on 23rd July 2007. In the meantime, it will be open to the parties to
exchange pleadings and file the same in the Registry not later than 16th July 2007. Needless
to observe that the Motion will be considered on its own merits in accordance with the law.

32. After the operative order was pronounced in Court, Counsel for the Defendants submits
that this Court be kind enough to grant limited stay of operation of this order to facilitate the
Defendants to take the matter in appeal or for that matter to issue instructions to all concerned
for abiding by the ad-interim order passed today as the show is going on day-to-day basis. It
is not possible to accede to this request in view of the detailed reasons recorded above. If the
request was to be accepted, the Motion will become infructuous inasmuch as the programme
that is going to be telecast by the Defendants is only limited till 10th June 2007 as per the
statement made in the affidavit. Besides, the programme displayed by the Defendants is only
for two to three minutes on any given day. Thus understood, no prejudice would be caused to
the Defendants if the stay is refused. On the other hand, if stay as prayed for is granted,
nothing would survive in the Notice of Motion though I have granted ad-interim relief in
terms of prayer clauses (a) and (b) for reasons already recorded above. Hence, request for
grant of stay is rejected.

33. All concerned to act on an ordinary copy of this order, duly authenticated by the Office.

Print this page || Email this page

© Manupatra Information Solutions Pvt. Ltd.
Search in selected Domain

Print this page || Email this page

MANU/DE/0745/1996

Equivalent Citation: 1997(1)ARBLR30(Delhi), 64(1996)DLT539

IN THE HIGH COURT OF DELHI

Interim Application No. 1072 of 1994 and Suit No. 2814 of 1994

Decided On: 20.05.1996

Appellants: Ratna Sagar Pvt. Ltd.

Vs.
Respondent: Trisea Publications and Ors.

Hon'ble Judges:
K. Ramamoorthy, J.

Counsels:
Ajay Sawhney, K.G. Bansal and S.K. Bansal, Advs

Subject: Media and Communication

Subject: Intellectual Property Rights

Catch Words

Mentioned IN

Acts/Rules/Orders:
Civil Procedure Code, 1908 - Order 39, Rule 1

Cases Referred:
Shyam Lal Paharia and Anr. v. Gaya Prasad Gupta 'Rasal', AIR 1971 All 192; Michael Heath
Nathan Johnson v. Subhash Chandra and Ors., 1995 PTC 15 300; R.C. Anand v. Delux Films
and Ors., AIR 1978 SC 1613; K.A. Venugopala Setty v. Suryakantha U. Kamath, AIR 1992
Kar 1; Eagle Potteries Private Ltd. v. Eagle Flask Industries Pvt. Ltd., AIR 1993 Bom 185;
West Bengal v. Nitya Gopal Basak and Ors., 1985 ALR 137; Tomlin and Thankerton
Florence A. Deeks v. H.G. Wells and Ors., AIR 1933 Privy Council 26 AIR V34 Lahore 777;
Camlin Private Ltd. v. National Pencil Industries, AIR 1986 Delhi 444

Case Note:
The case examined the considerations for protection of copy right under Order 39,
Rules 1 & 2 of the Civil Procedure Code, 1908 – The earlier publication of work was
required to be protected – The fact of the right of the party to such work on account of
assignment by author was not proved and was not relevant at this stage – thereforee,
the Court restrained the infringement of copy right under Sections 14 & 19 of the Act.

JUDGMENT

K. Ramamoorthy, J.

(1) The Applicant M/s. Ratna Sagar Private Limited has filed the suit claiming the following
reliefs :

"(i) For an order for perpetual injunction restraining the defendants, their agents, assigns,
employees, successors, servants, etc. from publishing, printing, selling, offering for sale,
and/or otherwise dealing with or disposing, or causing or permitting to be published, printed,
sold, delivered or otherwise disposing of any copies or copy of the book titled " Unique
SCIENCE" Volumes-111, Iv and V, published by defendant No. I and edited by Defendants 2
and 3 or publishing and/ or offering for sale any other book which is an infringement of the
copyright of the plaintiff in its books titled "LIVING SCIENCE" Volumes-111, Iv and V. (ii)
For an order for permanent injunction directing the defendants to withdraw all copies of the
work/books titled "UNIQUE SCIENCE" Volumes Iii, Iv and V and destroy the same Along
with all stocks, proofs, negatives, publicity materials, plates and blocks thereof before this
Hon'ble Court. (iii) For an order for rendition of accounts of all sales affected in respect of
the infringing books "UNIQUE SCIENCE" Volumes Iii, Iv and V and pay the entire
consideration received/receivable to the plaintiff Along with interests @ 18% (iv) For costs in
the proceedings. (v) For such further relief/ reliefs to which the plaintiff may be entitled
looking into the facts and circumstances of the case."

(2) The plaintiff has filed I.A. No. 1072/94 under Order 39 Rules I and 2 read with Section
151, Civil Procedure Code for the following reliefs :

"It is, thereforee, prayed that the defendants, their servants, stockists, distributors, agents,
retailers, etc. be restrained by an interim injunction from printing, publishing, selling, and/or
offering for sale, advertising, directly or indirectly dealing in the infringing literary works
titled "UNIQUE SCIENCE" Volumes Iii, Iv and V which works are an infringement of the
registered copyright of the plaintiff and the defendants be further restrained from printing,
publishing, selling and/or offering for sale any other infringing work similar to the
abovementioned literary works of the plaintiff. It is further prayed that an exparte ad-interim
injunction be granted in view of the present facts and circumstances of the case. Such further
relief/relief which the plaintiff may be entitled looking into the facts and circumstances of the
case may also be granted."

(3) The case of the plaintiff briefly stated is this: The plaintiff commenced its business of
publication in the year 1982 and it is one of the leading publishers in the country and its
business mainly is publication of educational books including those for the young children
and only for the purpose of education. One of the plaintiff's series of educational publications
is "LIVING SCIENCE". Volumes 3 and 4 of "LIVING SCIENCE" were published in 1986
and Volume 5 was published for the first time in the year 1988. This subject presented by the
plaintiff is to enable the teachers to teach the children about the basic features of nature
relating to plants and animals. In para 6 of the plaint the plaintiffs puts its case thus :
"THAT apart from the common law rights which vest in the plaintiff by virtue of prior
publication, the plaintiff is also the assignee of the Literary works titled "LIVING SCIENCE"
Volumes I to V having purchased for valuable consideration vide a written document the
copyright in the said work from its author(s). Apart from the above assignment the plaintiff is
also the registered owner of the copyright in respect of its abovementioned literary works
registered under Nos. L-13519/93, L-13390/92, L-13392/92, L-13393/92 respectively with
the office of the Registrar of Copyright, New Delhi. Copies of the Registration Certificates in
respect of Volumes Iii, Iv & V of "LIVING SCIENCE" published by the plaintiff are
annexed to the plaint as Annexures A, B and C respectively."

(4) The plaintiff claim to be the owner of the copyright in these series of books and the
literary works contained in Volumes 1 to 5 published by the plaintiffs under the caption
"LIVING SCIENCE" and according to the plain tiff cannot be used by any third parties.

(5) The first defendant is the publisher of series of books under the caption " UNIQUE:
SCIENCE", Volume Iii, Iv, and V, and defendants 2 and 3 are the Editors of the said works.

(6) According to the plaintiff, the Volume published by the first defendant as "UNIQUE
SCIENCE" are exactly identical to the publications made by the plaintiffs. According to the
plaintiff they are zerox copies, as it were, of the plaintiff's books.

(7) The plaintiff came to know about the activities of the defendants in or around the month
of March 1994. Immediately on coming to know of it, on the 24th of March, 1994 the
plaintiffs issued notice to defendants 2 and 3 which are the Annexures D & E to the plaint,
requesting them to withdraw the infringing copies from the market. It is the case of the
plaintiffs that defendants 2 and 3 stopped publishing the work. In the third week of
September, 1994 the plaintiff was surprised to see that the revised edition of infringing works
had again surfaced in the market. thereforee, on 19th of September, 1994 the plaintiffs issued
notice through its Counsel to the defendants stating that the books bearing the title "UNIQUE
SCIENCE" published by the defendants was infringement of literary work of the plaintiff.
The first defendant sent his reply through his Lawyer on the 7th October of 1994 refuting the
case of the plaintiff. Hence this suit.

(8) ANNEXURE-A filed along with the plaint is an Extract from the Register of Copyrights.
It is stated in Annexure -A in Seriall No. 5 "Title of the work; Living Science BOOK-3".
Annexure-B is again an extract from the Register of Copyrights Government of India, in
which similar Seriall No. 5 "Title of the work Living Science Book 4", showing the
registration Annexure-C is again an extract from the Register of Copyrights, Government of
India, in Seriall No. 5 "Title -of the work- Living Science BOOK-5", showing the
registration.

(9) The defendants 1 to 3 have filed a joint written statement contending, inter alia, that the
work of the plaintiff and of the defendants were derived from common sources and the works
are different in and they are dissimilar, and thereforee, there is no question of any
infringement of Copyright. The plaintiff had acquiesced in the publication made by the
defendants and thereforee, the plaintiff cannot seek any relief. The defendants generally
denied the claim of the plaintiff about the publication in 1986 and 1988. The defendants
denied also the registration of the work of the plaintiff under the Copyrights Act. It is stated
in para 6 of the written statement in the following terms:
"WHAT is protected under the Copyright Act is not the original thought or information or
expression of thought in a concrete form. The alleged literally work of the plaintiffs
contained in the alleged mentioned and impugned series entitled Living Science totally lacks
in contents, spirit and climax in newness and originality. One is entitled to develop the idea
derived from the common source. The work of the defendant, though derived from the
common source, is not in any way similar to the alleged work of the plaintiff on fundamental
and substantial aspects of the mode of expression, where the same idea being taken from
common source is developed in a different manner, similarities are bound to occur. Despite
being the development of the same idea by the defendants is not similar on fundamental and
substantial aspects of the mode of expression. Defendants presented and treated the same
subject differently and that the work of the defendants has become a completely new, novel
and protective work. There are material and broad dissimilarities between the literary work of
the defendants and those of plaintiffs."

Again in para 10 of the written statement it is stated :

"In order to constitute infringement of copyright in any literary work, it is well established
that there must be present two elements. First there must be sufficient objective similarity
between the infringing work and the copyright work or a substantial part thereof. Secondly,
the copyright work must be the source from which the infringing work is derived. The work
of the plaintiff and that of the defendants is from a common source but the defendants has
given it a new embodiment in a tangible form not in any way substantially or otherwise
similar to that of the plaintiff in any manner whatsoever. Defendants are not guilty of
infringement of copyright."

According to the defendants the plaintiffs issued notices only to cover up the delay
acquiescence and estoppel, by the defendants.

(10) The learned Counsel for the plaintiff Mr. Ajay Sahni brought to my notice the claims in
the plaint and also the claims in the written statement. He referred to Section 2(0) of the
Copyrights Act, 1957. He made a close comparative study of Volume Iv and Living Science
and Volume Iv of Human Science and the other Volumes of the plaintiffs and the defendants.
He relied upon the judgment of this Court in Burlington Home Shopping Pvt. Ltd. v. Rajnish
Chibber & Anr." in 1995 Ptc (15) 1995,279 at page 283 in para 11.3 which reads as follows:

"11.3 Govindan v. Gopalakrishna, MANU/TN/0165/1955 : AIR1955Mad391 was a case of

compilation. It was held that though in the case of "compilation" the amount of originality
will be very small but even 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. On the defense plea of common source it was held : "A person relying on it must
show that he went to the common source from which he borrowed, employing his skill,
labour and brains and that he did not merely do the work of the copyist, by copying away
from another work".

He also referred to the decision of the Allahabad High Court in Shyam Lal Paharia $ Am. v.
Gaya Prasad Gupta 'Rasal', MANU/UP/0040/1971 : AIR1971All192 .

(11) Per contra Mr. K.G. Bansal learned Counsel for the defendants contended that the
plaintiff has not proved its rights in the Copyrights. The work was done by somebody. The
plaintiff claims only an assignment and the assignment has not been proved by the plaintiff.
The matter dealt with by the books of the plaintiff and the defendants are known to the people
as they are very from the common source which is nature and thereforee, the plaintiff cannot
claims any copyright and as a matter of fact, no infringement of the rights of the plaintiff by
the defendants. He brought to my notice the judgment of this Court reported in Michael
Heath Nathan Johnson v. Subhash Chandra & Ors. 1995 (15) Ptc 300. He referred to para 96
wherein the proposition of law laid down by the Supreme Court in R.C. Anand v. M/s. Delux
Films and Ors. MANU/SC/0256/1978 : [1979]1SCR218 are extracted by me. Mr. Bansal
learned Counsel for the defendants referred to Section 19 of the Copyright Act, 1957. That
Section reads as under:

"19.Mode of assignment-(1) No assignment of the copyright in any work shall be valid unless
it is in writing signed by the assignor or by his duly authorised agent. (2) The assignment of
copyright in any work shall identify such work and shall specify the rights assigned and the
duration and territorial extent of such assignment. (3) The assignment of copyright in any
work shall also specify the amount of royalty payable, if any, to the author or his legal heirs
during the currency of the assignment and the assignment shall be subject to revision,
extension or termination on terms mutually agreed upon by the parties. (4) Where the
assignee does not excise the rights assigned to him under any of the other sub-sections of this
section within period of one year from the date of assignment, the assignment in respect of
such rights shall be deemed to have lapsed after the expiry of the said period unless otherwise
specified in the assignment. (5) If the period of assignment is not stated, it shall be deemed to
be five years from the date of assignment. (6) If the territorial extent of assignment of the
rights is not specified, it shall be presumed to extend within India. (7) Nothing in Sub-section
(2) or Sub-section (3) or Sub-section (4) or Sub section (5) or Sub-section (6) shall be
applicable to assignments made before the coming into force of the Copyright (Amendments)
Act, 1994. 19-A. Disputes with respect to assignment of copyright-(1) If an assignee fails to
make sufficient exercise of the rights assigned to him, and such failure is not attributable to
any act or omission of the assignor, then, the copyright Board may, on receipt of a complaint
from the assigner and after holding such inquiry as it may deem necessary, revoke such
assignment. (2) If any dispute arises with respect to the assignment of any copyright, the
Copyright Board may, on receipt of a complaint from the aggrieved party and after holding
such inquiry as it considers necessary, pass such order as it may deem fit including an order
for the recovery of any royalty payable : Provided that the Copyright Board shall not pass any
order under this subsection to revoke the assignment unless it is satisfied that the terms of
assignment are harsh to the assigner in case the assigner is also the author. Provided further
that no order of revocation of assignment under this subsection, shall be made within a period
of five years from the date of such assignment. He referred to the decision of the Karnataka
High Court in K.A Venugopala Setty v. Dr. Suryakantha U. Kamath, MANU/KA/0001/1992
: AIR1992Kant1 . He also referred to the decision of the Bombay High Court in M/s. Eagle
Potteries Private Ltd. v. Mis. Eagle Flask Industries Pvt. Ltd. MANU/MH/0029/1993 :
AIR1993Bom185 . He placed reliance on para 30 of the judgment. Learned Counsel also
referred to the decision of the Calcutta High Court reported in Govt. of West Bengal v. Nitya
Gopal Basak and Ors., 1985 A L R137. I do not find anything helpful to the defendants in
those cases. The Karnataka High Court, Bombay High Court and the Calcutta High Court
dealt with different situations altogether and those cases do not resemble the facts of the case.

(12) Learned Counsel Mr. Bansal referred to the decision of the Privy Council in Lords
Atkin, Tomlin and Thankerton Florence A. Deeks v. H.G. Wells and Others Air 1933 P C 26.
The facts briefly stated are these : One Miss Florence Deeks, sued Mr. H.G. Wells for breach
of copyright but the action really was for breach of confidence in permitting the plaintiff's
unpublished manuscript to be used without the plaintiff's consent. It was her case that Mr.
H.G. Wells used the manuscript of the plaintiff improperly as the foundation of his book. The
Outline of History. Upon those questions whether the book was used or not, the Courts below
come to the conclusion against the plaintiff. It maybe noticed that the matter came before the
Privy Council after a full fledged trial. The Privy Council noted that on evidence the Courts
below were right in holding that the plaintiff's case was quite unfounded and the manuscript
of the plaintiff was not handed over to Mr. H.G. Wells and Mr. Wells never used it. While
referring to the ultimate decision of two literary works the Privy Council posited :

"Now their Lordships are not prepared to say that in the case of two literary works intrinsic
evidence of that kind may not be sufficient to establish a case of copying, even if the direct
evidence is all the other way and appears to be evidence that can be accepted; but such
evidence must be of the most cogent force before it can be accepted as against the oath of
respectable and responsible people whose evidence otherwise would be believed by the
Court".

About the evidence by the expertise the Privy Council observed :

"Now the points upon which the experts rely have been correctly summarised by Miss Deeks
in this respect. She says that the copying took place as is shown by similarities with regard to
the plan - that means the plan of the books, the scheme of the book; that the opening chapters
and various passages appearing in Mr. Well's book are mere colourable alterations of "The
Web;" that there are certain phrasal identities and similarities, and there are certain mistakes;
that the similarities, though trifling in some instances, are so numerous that an accumulation
of them afford the strongest evidence of copying; and that there were common sources used
for both works which could be shown to have been used in both cases together with the
original additions made by Miss Deeks, so that when you compared the two, you found that
Mr .Wells had used not only the common source, but had also modified it by using in
addition to that the original manuscript of Miss Deeks. She relied on the choice and the
sequence of the order of details, and she relied on the emphasis and proportion given to
certain topics, those matters were carefully discussed in the Courts below: they have been
dealt with by the judgments in both Courts, and they have been very fully discussed before
their Lordships by Miss Deeks who in the course of her case has given every assistance to the
Board and made it quite plain that the whole strength of the case has been put forward upon
this appeal. Their Lordships wish to repeat what was said in the Courts below that Miss
Deeks has argued the case with great can dour and with great force."

thereforee, the Privy Council was not considering the case similar to one those before me.
Here we are concerned with the picture and the nature of Explanationn given by the Author.

(13) Mr. Bansal referred to the decision of the Lahore High Court in Kartar Singh Giani v.
Ladha Singh and Ors., Air 1934 Lah 777. Here also a few facts have to be noticed. The first
defendant Kartar Singh Giani was a Granthi of the Darbar Sahib at Amritsar. He had written
a life sketch of Sri Guru Govind Singh Ji in Punjabee poetry and had given it the name of
Dashmesh Parkash. On 6th July, 1915 which is called a deed of transfer, the first defendant
conveyed to the plaintiff his copyright in the book for Rs. 500.00 . The first defendant
undertook that in future he and his heirs shall have no right to get the above mentioned book
printed in any language or to alter its subject matter or to change its name. In 1917 the first
defendant began to write a series of books containing the lives of this various Sikh Gums
calling it Akali Jot. Dashmesh Parkash is one of the series published by the first defendant. It
appears in 1930 the publisher of the first defendant was having this matter Dashmesh Parkash
through a third party publisher had infringed the plaintiff copyright.

(14) The first defendant admitting the document called a deed of transfer contended that he
did not agree that he would never in future publish any life sketch of Sri Guru Govind Singh
Ji. What he was seeking to publish through the third party publisher was entirely different
from Dashmesh Parkash, in volume size, material, language and form of verse. The trial
Judge decreed the suit. The first defendant filed an appeal. The High Court observed that
after studying the two works of the first defendant "there cannot be any manner of doubt that
the later work represents a mature art and a greater wealth of details in depicting the various
incidents. The imagery of the later work is of a superior type when compared with Dashmesh
Parkash. There are fresh incidents and details which are the result of researches made by the
author into works which had existed before as well as those which came into existence after
Ex. P-1 had been written and published". Referring to the view taken by the Courts below the
Court observed :

"IT was alleged that the defendant had copied that list and had thereby infringed the plaintiff's
copyright. The Court however, held that all human events were equally open to all who
wished to add to or improve the materials, already collected by others, thus making an
original work, and no man could monopolise such a subject. The judgment goes on to say that
every man can take what is useful from the original work, improve, add and give to the public
the whole, comprising the original work, with the additions and improvements; and in such a
case there is no invasion of any right. But a copy much less a servile copy, of a work cannot
be allowed. In the present case defendant No. I had used certain historical works while
writing Ex. P-1. He carried on his researches afterwards and found out some of his mistakes
and tapped other sources of knowledge and eventually embodied the result of his labour, skill
and judgment in Ex. D-1. There are undoubtedly common incidents, but they are clothed in a
different poetical garb and it cannot be said that the one is a copy, much less a servile copy of
the other. I have studied the case reported as (1905) 1 Ch. 519 . The learned Judge in that
case had adopted the definition of a "copy from an earlier decision which runs as follows: A
copy is that which comes so near to the original as to give to every person seeing it the idea
created by the original. He has quoted the following passage from the House of Lords case:
(1895) A C. 20: The question may be solved by taking each of the works to the compared as a
whole and determining whether there is not merely a similarity or resemblance in some
leading feature or in certain of the details, but whether keeping in view the idea and general
effect created by the original, there is such a degree of similarity as would lead one to say that
the alleged infringement is a copy or reproduction of the original. in my opinion after
carefully following the lengthy quotations read out and translated in Court by the parties from
the two works it cannot be said that Ex. D-1 is a "copy of Ex. P-1. As I have already said
certain historical or legendary incidents to be found in the earlier work are sure to be
portrayed in the later work but they are far from being copies from the original work, and the
introduction of a number of entirely new incidents, of course, further strengthens the
defendant's case that the two works are substantially different from 'each other. The test laid
down in 18 W R 279(4); lends support to the defendant's contention. The dispute was in
respect of certain scientific books. The plaintiffs alleged that the defendant's books had been
copies from their books, while the defendant pleaded that his books were the result of his
individual labour and skill. The principle enunciated by the learned Judge was as follows: If
any part of a work complained of is a transcript of another work of with colourable additions
and variations and prepared without any real independent literary labour such portion of the
work is piratical. But it is impossible to establish a charge of piracy when i t is necessary to
track mere passages and lines through hundreds of pages or when the authors of a work
challenged as piratical have honestly applied their labour to various sources of information.
This is precisely the case before us. A few lines here and there in Ex. D-1, might be
reminiscent of similar lines in Ex. P-1, but, as already observed, the sources made use of by
the author being in some cases common, such a result was inevitable. Students of
Shakespeare are a ware that in his Roman plays there are passages which seem to have been
bodily taken from North's Translation of Plutarch lives. The same may be the case with
certain passages in Dashmesh Parkash, Ex. P-1, and Dashmesh Partap, Ex-D-1, which bear
resemblance to each other on account of their common origin. All laws which put a restraint
upon human activity and enterprise must be construed in a reasonable and generous spirit.
Under the guise of the copyright, a plaintiff cannot ask the Court to close all the avenues of
research and scholarship and all frontiers of human knowledge. In my opinion, interpreting
the law in a just and liberal spirit, Dashmesh Partap, Ex. D-1, is quite a distinct work from
Dashmesh Parkash, Ex. P-1 and the plaintiff cannot obtain the injunction prayed for. But, as
frankly admitted by defendant I Dashmesh Parkash and Dashmesh Partap practically mean
the same thing and as there is a considerable phonetic similarity between the two titles, in my
judgment the word Dashmesh Partap, Ex. D-1, might mislead the public and easily pass off as
Dashmesh Parkash Ex. P-1. This naturally reduce the sale of the plaintiff's book in the book
market. Defendant No. I, very properly admitted that he was prepared to change the name of
the book Ex. D-1 so that the plaintiff may not suffer any loss by the purchasers buying Ex. D-
1,mistakingitforEx. P-1. would accordingly accept the appeal in the main and, setting aside
the decree of the Additional District Judge, Lahore, grant an injunction to the plaintiff merely
restraining defendant I from using the name Dashmesh Partap for Ex. D-1."

(15) Mr. Ajay Sahni in reply to the arguments of Mr. Bansal brought to my notice Section 48
of the Copyright Act,1957. Section 48 reads as follows :

"REGISTER of Copyrights to be prima facie evidence of particulars entered therein. The

Register of Copyrights shall be prima faice evidence of the particulars entered therein and
documents purporting to be copies of any entries therein, or extracts there from certified by
the Registrar of Copyrights and sealed with the seal of the Copyright Office shall be
admissible in evidence in all Courts without further proof or production of the original."

(16) Learned Counsel submitted that the entire book itself is registered under the Copyright
Act and that will include the artist work as otherwise there is no purpose is getting the entire
book registered.

(17) Learned Counsel Mr. S.K. Bansal relied upon the decision of this Court in Camlin
Private Ltd. v. M/s. National Pencil Industries, MANU/DE/0365/1985 : AIR1986Delhi444 ,
and he summed up his submission in the following manners : (1) The plaintiff in para 6 relied
upon the work prior to publishing; (2) The plaintiff claims rights by assignment; and (3) By
virtue of registration the plaintiffs cannot claim any rights involved in the original work. He
does not dispute the prior publication but would submit that assignment must be in writing
and no document to show the assignment of the original work from the author has been filed
by the plaintiff. He also contended that the affidavit from the author has been filed.
According to him regarding the first work from Laxmi Menon, 171, Double Storey, New
Rajinder Nagar, is the author and there is no affidavit. Regarding the second work Volume Iv,
no affidavit from the author is filed. Regarding third work Volume V there is no affidavit
from the author. He vehemently urged that all the materials used by the plaintiff and the
defendants are derived from the common source and the plaintiff cannot be heard to be
contended that the defendants had infringed the rights of the plaintiff. Nowhere in the plaint it
is stated that the defendants have copied the artist work of the plaintiff. As I had already
noticed the book is registered and that will include the artist work and that were the
arguments of the learned Counsel for the plaintiff.

(18) I had considered the materials produced by the parties and also the arguments of the
learned Counsel for the parties on the basis of the good research. I had seen the books of the
plaintiff and also the books of the defendants and on a close examination of the books one
cannot resist impression that the defendants had copied the work of the plaintiff. No doubt the
ideas for books both of the plaintiff and the defendants would come from nature but what we
are concerned here is, how the things existing in nature were presented by the plaintiff and
the defendants. The idea of the configuration of the ideas into the picture and words would
form the fulcrum of the work done by any person. thereforee, when it is admitted that the
plaintiff had published the work earlier its right must be protected. The argument of Mr.
Bansal that the plaintiff has not proved the assignment is not a matter before this Court at this
stage and the person aggrieved in the absence of assignment may be the original author, but
the defendants cannot be heard to be contended that the plaintiffs have not proved the
assignment and, thereforee, the defendants are free to infringe the copyright of the plaintiff.
Their case on the other hand, in the absence of the assignment as contended by the learned
Counsel Mr. Bansal should be that the original authors had concluded to the act of the
defendants and, thereforee, the plaintiff cannot seek to espouse the cause of the author. The
plaintiff claims absolute right in the copyright, by virtue of the assignment and also as
registered owner after the assignment. thereforee, on the facts and in the circumstances of the
case, I have no hesitation in coming to the conclusion that the defendants are guilty of
infringing the copyright of the plaintiff in the books and the plaintiff has made out a prima
facie strong case for granting injunction. The balance of convenience is also in favor of the
plaintiff.

(19) Accordingly, there shall be an injunction restraining the defendants, their servants,
stockists, distributors, agents, and retailers from printing, publishing, selling, and/or offering
for sale, advertising, directly or indirectly dealing in the infringing literary works titled
"UNIQUE SCIENCE" Volumes Iii, Iv and V which works are an infringement of the
registered copyright of the plaintiff the defendants are further restrained from printing,
publishing, selling and/or offering for sale any other infringing work similar to the above
mentioned literary works of the plaintiff till the disposal of the suit. Post the matter for further
proceeding on 26th of September 1996. Injunction granted.

|| Email this page

Print this page
© Manupatra Information Solutions Pvt. Ltd.