MRF Limited vs. Metro Tyres Limited

CASE BRIEF

MRF Limited

vs.

Metro Tyres Limited

Plaintiff- MRF Limited

Defendant- Metro Tyres Limited

Decided On: 1.07.2019

Statues Referred:-

Section 2(f), Section 13(1), Section 14 of Copyright Act, 1957

Case Referred:-

1. Venkatesh Films Pvt. Ltd. vs. Vipul Amrutlal Shah & Ors.

2. R.G. Anand v. M/s Deluxe Films and Ors

Facts:-

1. In this case, the plaintiff, that is MRF Limited is engaged in the business of manufacture, marketing and sale of tyres in about sixty-five countries including India and is widely recognized for its quality and customer satisfaction.
2. During the course of its business, the plaintiff has been manufacturing and selling a range of tyres and one such series is named as MRF NV Series “REVZ”.
3. In order to publicize and advertise the MRF NV Series “REVZ” range of tyres, the plaintiff produced an audio-visual advertisement titled as “MRF NV Series present REVZ” which was first aired in TV media on 27th June, 2015 and posted on the internet on 29th June, 2015.
4. Under the copyright regime of India, Plaintiff is the author of said advertisement which constitutes a ‘cinematograph work’ under Section 2(f) of the Copyright Act, 1957 and is entitled to protect it under Section 14 of the Act, 1957.
5. In October 2016, it came into knowledge of plaintiff that the defendant, who is engaged in the same business has produced a similar advertisement titled ‘Bazooka Radial Tyres’.
6. The plaintiff thus averred that it can be clearly seen that the defendant’s advertisement is nothing but a substantial and material copy of the plaintiff’s advertisement and further alleged that due to the similarities between the plaintiff’s and defendant’s advertisement, the copyright of the plaintiff has been infringed by the defendant.
7. After this, the plaintiff immediately filed a complaint with the Advertising Standards Council of India (ASCI). ASCI forwarded the complaint of plaintiff to defendant. On receipt of the complaint the defendant filed a suit to restrain the plaintiff from issuing threats and to restrain the ASCI from proceeding with the said complaint. This suit of defendant was dismissed by the Court. After this the plaintiff filed the suit before the Hon’ble Delhi High Court.

Contentions by Parties:-

Plaintiff’s Arguments

1. The plaintiff contended that the defendant’s advertisement contain material similarities with the plaintiff’s advertisement and these similarities show that defendant’s intent was to copy the advertisement.
2. The plaintiff also stated that the coincidences which appeared in the two advertisements were neither incidental nor based on mere chance.
3. Though plaintiff admitted that there are some minor differences between both the advertisements but the same were minor and immaterial as an infringing copy need not be an exact copy but a substantial and material one.
4. Plaintiff relied on the test laid down in case of R.G. Anand v. M/s Deluxe films and Ors, and further contended that in a suit for copyright infringement of a cinematograph film the test is of an overall impression of an average viewer and not a microscopic analysis which underscores differences/divergences.

Defendant’s Arguments

1. The defendant contended that the case in hand is not a case of trademark infringement or passing off and therefore it is not a “confusion‟ based action against the defendant.
2. The word ‘original’ used in Section 13(1) of the Copyright Act, 1957 is not with respect to cinematograph film. The cinematograph film is treated differently under Section 13(3) of the Copyright Act, 1957 as all the underlying works which contribute to the making of a film are protected independently.
3. To establish copyright infringement in a cinematograph film, it is essential to show that the impugned work is an actual copy of the plaintiff’s advertisement/cinematograph film and it has to be shown that an actual copy of the copyrighted film has been made by a process of duplication.
4. The expression ‘to make a copy of the film’ means to make a physical copy of the film itself and not another film which merely resembled the original film. Furthermore, Defendant contended that plaintiff’s reliance on the judgment of the Apex Court in R.G. Anand v. Deluxe Films, is misconceived as the said judgment is concerned with a script (literary work) and not with a cinematograph (film).

Issue:-

1. Whether in a suit for copyright infringement of a cinematograph film, the infringing copy has to be an exact copy made by a process of duplication or a substantial/material copy.
2. Whether the copyright infringement test as laid down in R.G. Anand v. M/s Deluxe Films and Ors. with regard to literary works is applicable to cinematograph films.
3. Whether the word ‘original’ used in Section 13(1) of the Copyright Act, 1957 cover cinematograph films.

Judgment:-

The Hon’ble Delhi High Court, while dealing with the issues made the following observations respectively:-

1. The court while addressing the issue of copying the material and substantial part of the cinematograph, observed that the definition of copying is not limited to making an actual copy or physical copies of cinematograph film, but it also includes imitation and reproduction of that cinematograph. Further, the Hon’ble High Court stated “The ordinary, dictionary definition of copy is not confined to an actual copy made by a process of duplication, but is wider one and includes an imitation or reproduction.” The Court relied on the case of Shree Venkatesh Films Pvt. Ltd. vs. Vipul Amrutlal Shah & Ors., and observed that ‘to make a copy of the film’ does not mean just to make a physical copy of the film by a process of duplication, but it also refers to another film which substantially, fundamentally, essentially and materially resembles the original film.
2. The court while discussing the issue of copyright infringement, laid downa test in the case of R.G. Anand v. M/s Deluxe Films and Ors. to be applied to cinematograph, and stated that “the scope of protection of a film is at par with other original works” and hence the test laid down in the R.G Anand case would also apply in cases of cinematographs. Hon’ble High Court further stated that the test laid down in R.G. Anand case is of general application and not confined/limited to literary work only.
3. The court while dealing with the issue that whether the word ‘original’, used in section 13(1) of the Copyright Act cover cinematograph observed that ‘Though the expression “original‟ is missing in Section 13(1)(b) of the Act, 1957, yet the requirement of originality is brought in through Section 13(3)(a) which has to be read with the definitions of “cinematograph film” and “author” under Sections 2(f) and 2(d) of the Copyright Act, 1957’. Court observed that in terms of Section 13(3)(a), a film must not be a copy of any other work, including any other film. Section 13(3)(a) of the Act, 1957 implies that a copyright in a film cannot subsist if a substantial or material part of the said film is an infringement of copyright in any other work. Court held that a cinematograph film is an original work as it is an “intellectual creation”. So, the court in simple terms observed that the word ‘original’ in section 13(1) is not limited to literary, dramatic, musical and artistic works but also covers cinematograph films in it.
4. The court further relied on Berne Convention and observed that the Berne Convention expressly states that a cinematographic work is to be protected as an original work and that the owner of a copyright in a cinematographic work shall enjoy the same rights as the author of an original work. Further, Hon’ble Court stated that “Article 14bis (1) of the Berne Convention talks about that the width, scope and extent of copyright protection in a film. It expressly provides that a cinematographic work shall be protected as an original work and that the owner of such a work shall enjoy the same rights as the author of an original work”.
5. Therefore, the court in the present case ruled that there was no substantial similarity between the advertisements therefore no interim injunction was granted.

Rule of Law:-

The provision of the law which was under scrutiny by the Hon’ble High Court of India was the infringement of copyright law due to substantive copying and the originality of the work under Section 13 of Copyright Act, 1957.

Conclusion:-

To conclude, it can be said that in the present case the scope of protection for cinematograph film was at par with other original works under the Act and therefore the test of substantial and material similarity would have to be applied to ascertain copyright infringement. Also it can be said that in the present case the court’s conclusion is contrary to the Bombay High Court’s earlier decision in the case of Star India Private Limited vs Leo Burnett (India) Private Limited [2003 (2) BomCR 655] wherein it was held that the term ‘copy’ with respect to cinematograph film would only refer to an act of making physical copy of the film by duplication.