Star India Pvt Ltd
Leo Burnett(India) Pvt. Ltd
Plaintiff- Star India Pvt. Ltd
Defendant- Leo Burnett(India) Pvt. Ltd
Decided On: 24.09.2003
The Copyright Act, 1957- Section 2(s), Section 13(1), Section 14, Section 14(d), Section 14(d)(i), Section 17
- Mrf Limited. vs Metro Tyres Limited. on 1 July, 2019
- Shree Venkatesh Films Pvt. Ltd vs Vipul Amrutlal Shah & Ors on 1 September, 2009
- Star India Pvt. Ltd. is doing the business of acquiring copyrights in cinematograph films, television serials, programs, and also producing and commissioning the production of television programmes for various television channels.
- On 9th April, 2000, the plaintiffs entered into an Agreement with Balaji Telefilms Pvt. Ltd., in order to create, compose and produce 262 episodes of a television serial entitled “KYUNKI SAAS BHI KABHI BAHU THI”.
- Since then Balaji has produced episodes of the serial and their services were engaged by way of contract of service and as such the plaintiffs are the first copyright owners under Section 17 of the Copyright Act. Balaji has devised the original artistic work depicting inter alia the logo and the title in a peculiar stylized font and containing as its essential features the words “KYUN KI SAAS BHI KABHI BAHU THI” and as per the agreement plaintiffs have become the owner of the said artistic work.
- The serial had acquired immense goodwill and reputation among viewers in India that they associated the said serial exclusively with Star India Pvt. Ltd. Plaintiffs started endorsing the serial and the characters in form of products and services for a fee.
- In February 2002, the defendants came up with the commercial for a consumer product “TIDE DETERGENT” telecasting it with a title, “KYONKI BAHU BHI KABHI SAAS BANEGI” and characters of a grandmother, mother-in-law and daughter-in-law, similar to the characters of J.D., Savita, Tulsi as in the serial of the plaintiff.
Contentions by Parties:-
- It was the case of the plaintiffs that the comparison of the plaintiffs serial with the commercial would show that there is substantial copying.
- It is then contended that the overall impression of any viewer who sees both the works would be that the subsequent work of the defendants is a copy of the original work of the plaintiffs, authorized by the plaintiffs and/or licensed by the plaintiffs.
- Further an ordinary person would get an impression, that the plaintiffs who are the producers and proprietors of the serial “KYUN KISAAS BHI KABHI BAHU THI” are whole heartedly and unreservedly endorsing the product of the defendant.
- An average viewer would, thus, have an unmistakable impression that there is connection in the course of business and/or trade between the plaintiffs in the said serial and the defendants’ and their commercial.
- The plaintiffs further contended that there has been an infringement of copyright because an average viewer will have an impression that the plaintiffs are endorsing the defendant’s product and there is a connection between plaintiffs in the said serial and the defendants and their product.
- It is contended that the defendants are not entitled to telecast/broadcast the commercial without obtaining the prior consent and/or the permission from the plaintiffs and they have misrepresented the public at large and on account of this plaintiffs have suffered loss due to continuous act of infringement of copyright and passing off of the copy to the defendants.
- The defendants by deliberately and false, representing a connection between the other commercial and the plaintiffs’ serial and passing off and/or attempting to pass off the defendants’ commercial as being authorized and/or licensed by and/or connected with the course of business with the plaintiffs and the plaintiffs’ popular serial. On account of this, plaintiffs contend that considerable loss and/or damage is being occasioned to the plaintiffs due to continuous act of infringement of copyright and passing off of the copy to the defendants.
- The defendant contended that the commercial is not a reproduction or imitation of the plaintiffs’ serial at all and does not infringe any copyright in the serial or any of the plaintiffs’ work.
- They further submitted that there is no copyright in an idea, concept or theme and do not admit that, the work was commissioned by the plaintiffs and made by Balaji pursuant to the Agreement because the title “KYUN KI SAAS BHI KABHI BAHU THI” is a commonly known saying/proverb/creation which has not been devised by the plaintiffs or by Balaji.
- The defendants alleged that the manner in which it is written does not constitute an artistic work and the same is not copyrightable. The depiction of overlapping bonds in the logo is the age old expression of the ‘saas’ handing over the keys to the ‘bahu’. This portrayal is in the public domain and does not constitute an original artistic work.
- The defendants contended that the burden of proof as to advertisement, expenses incurred and the TRP ratings is on the plaintiffs which has not been discharged. Also, the defendants do not admit that the serial has acquired by goodwill and/or reputation in India as is alleged or its popularity on its character and denied that airing of Tide T.V. commercial would require any authorization from the plaintiffs for merchandising purposes.
- Whether the defendants have infringed the plaintiff’s Copyright in the T.V. serial and artistic work by copying their work for making a commercial film?
- Whether there is substantial copying of plaintiff’s film by the defendant?
- Whether the defendants are guilty of passing off their reputation and goodwill by misrepresenting to the public that they are authorized to make use of original artistic and musical work in the serial?
- Whether the defendants have defeated plaintiff’s character merchandising?
- The Bombay High Court while dealing with the first issue denied the contentions of the plaintiffs and coined the term ‘Originality’. Originality merely means effort expanded or that it involves skill, labour and judgment in its creation. Under Section 17 of the Copyright Act, the Author of a work is the owner of the copyright therein. The defendants have contended that the logo consisting of the two hands is a symbol in common use and is in the public domain and open to anyone to use. The holding hands well known form of representing the handing over of something from one to another and is a commonly used symbol and they denied on the fact that the plaintiffs have put any skill, labour or some sort of judgement in its creation but has merely taken the lettering style from a source easily available in public domain. Hence, there is no originality, therefore no copyright.
- The court while dealing with the second issue observed that for the second film to infringe the copyright of the first film it has to be the exact copy of that film which is not the case here. Under Section 14 of the Copyright Act, copy meant a physical copy. However, the plaintiffs in this case made a separate work. This was a material alteration as a completely different. The plaintiff’s film is a work of 262 episodes whereas defendant’s advertisement is a work of 30 seconds in which only for 8 to 10 seconds the characters appear as a prelude to the tide detergent. The major and substantial part consists of tide detergent. Nothing is common between the two scripts. The defendants have put in their own independent skill and labour in making of the advertisement whole sole purpose is to promote the Tide detergent. The models are same in both the film. These models are professional and free to contract. There cannot be, therefore, any act which would amount to infringement by using the same models. Even if the idea is borrowed there, can be no copyright in the idea. Further, the court ruled that anything which is not a substantial copy of the film shall not be held liable for copyright infringement. Therefore, defendants by making the commercial film have not violated and/or infringed the plaintiffs’ copyright.
- The court while dealing with the third issue of passing-off their reputation and goodwill held that the defendants are not guilty of passing off as they do not satisfy the essentials of passing off per se. Plaintiffs’ serial is shown on Star Plus Channel which is not owned by the plaintiffs. Goodwill does not accrue to the plaintiffs. The plaintiffs have no goodwill or reputation. Also, the T.V. commercial will not cause any harm to the plaintiffs’ serial or their reputation because the field which the plaintiffs’ serial occupies as a film/soap opera is different from the field of defendants’ commercial that of an advertisement of detergent Tide. Even the activity area is also not in common, therefore there is no misrepresentation.
- Finally, the court while dealing with the fourth issue of character merchandising held that since the plaintiff have failed to establish anything special in any of the characters of which it can be said that they have gained any public recognition for itself with an independent life outside the serial. And since, it is not a case of one film against another film and therefore, the defendants are not merchandising any character from the serial by means of their T.V. Therefore, the court held that the defendants are just promoting their consumer product “Tide” via a T.V. commercial which in no way is connected to the T.V serial and the field of activity of the plaintiff and defendant are also totally different. Also, no likelihood of damage has been caused to the plaintiff so court decided on behalf on the defendant.
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, passing-off the reputation and goodwill by misrepresentation and character merchandising.
To conclude, it can be said that the court while dismissing the motion and granting no relief to the plaintiff in the present judgment also provided interpretation to the terms like ‘originality, ‘substantive copying’ while determining the extent of copyright infringement of a cinematograph film under Section 2(f) of the Copyright Act, 1957.