- JUDGMENT SUMMARY: Pepsico Inc. v. Hindustan Coca Cola Ltd.
- DATE OF JUDGMENT: 1 September 2001
- BENCH: C.K. Mahajan, J.
SUBJECT:
In this case, the issue of copyright protection for advertising slogans was examined. The Delhi High Court held in this case that the slogans were prima facie not protectable under the Copyright Act, 1957. However, they could be protected under the Law of Passing-Off.
FACTS:
The plaintiffs, Pepsi Co. alleged that in some of the advertisements of defendants a drink labelled as ‘Pappi’ with a similar to the Pepsi’s globe mark was used in comparison to defendant’s own drink. The plaintiffs claimed to be the registered owners of the mark Pepsi, Pepsi Cola and Globe Device. They were also the registered owners of the copyright in the words 'Yeh Dil Mange More' and also registered the slogan under the Trade Mark Act. Huge advertising was based on this slogan and the plaintiffs alleged that the defendants had infringed upon the trademark and copyright in relation to the phrase 'Yeh Dil Mange More'. The plaintiff argued that the use of the phrase by the defendant in their advertisement violated their copyright while the defendants claimed that the advertisement of the defendants was nothing more than a parody and was intended at poking fun at the advertisement of the plaintiffs. They used the word 'Pappi' which was neither visually nor phonetically identical to the word 'Pepsi'.
The plaintiffs filed a suit for infringement of copyright against the defendants praying for an injunction for restraining the defendant’s advertisements from being telecasted.
IMPORTANT PROVISIONS:
- Section 2(c) and sec 2(o) of the Copyright Act.
- Section 2(c) – definition of artistic work
- Section 2(o) – definition of literary work
ISSUES:
The main issues in question before the court were:
- Whether copyright subsists in slogans or words under the provisions of Copyright Act 1957?
- Whether the defendants have infringed the copyright of the plaintiffs in the work YEH DIL MANGE MORE (phrase and song) and the Globe Device or not?
ANALYSIS OF THE JUDGMENT:
Plaintiff's Contentions:
The plaintiffs contended that the phrase YEH DIL MANGE MORE is an original literary work and is protected as such under the Copyright Act and also under the trademark Act. The said phrase has become distinguishing with the plaintiffs. Hefty sums of money have been spent on the campaign of YEH DIL MANGE MORE for over two years. The registration of copyright is prima-facie evidence of copyright.
The plaintiffs also claimed to be the copyright owner of the Globe Device. They contended that globe Device is an original artistic work under the Copyright Act, 1957 and the use of the device or any other similar device would amount to an infringement of copyright.
The plaintiffs alleged that the use of a competitor's trademark, although not resulting in any deception or confusion, in itself amounts to infringement.
Defendant's Contentions:
The defendants contended that they have neither infringed the trademark or copyright of the plaintiffs nor they disparage the goods of plaintiffs in any manner. It was further contended that the defendants had the freedom to puff and promote their goods. The defendants claimed that there was no presumption on the ownership of the Globe Device infavour of the plaintiffs simply because the work is a registered trademark andthe plaintiffs could not claim copyright in the circular device.They denied that the circular device used by them is identical to the Globe Device of the plaintiffs.
Furthermore, it is contended that mere advertising slogans are not literary work within the meaning of the Copyright Act and therefore, they are not protectable under the said Act.
Court's observations:
The division bench of High Court cited the text of Copinger&Skone James on Copyright 14th Edition, Volume One, para 21.20 and para 21.35 andobserved that even though making advertising slogans requires high skill, they will generally not qualify for copyright protection as original literary works. However, passing off is not restricted to names but is wide enough to include descriptive materials like slogans or visual images only if such descriptive material has now become part goodwill of the product. The test is whether the product has derived from the advertising a distinctive character which the market recognises.
The court also relied on the judgment ofCamlin Pvt. Ltd. Vs National Pencil Industries where it was held that the certificate of registration under the Copyright Act is only prima facie evidence of entries inthe copyright register. It does not however establish that what was registered is in fact and in law subject matter of copyright. Therefore, registration will not be a primafacie evidence of copyright.
The court held that the advertising slogans are prima facie not protectable under the Copyright Act. However, they could be protected under the law of passing off.
Moreover, it was observed that the defendants have used the slogan ‘Yeh Dil Mange More’ in a mocking manner only for the purpose of comparative advertising and not in relation to their products. Therefore, it would not prima facie result in infringement of copyright.
The court dismissed the application for injunction subject to the condition that the defendants were required to furnish an undertaking to pay damages to the plaintiffs within four weeks of the decision of the suit in favour of the plaintiffs and against the defendants.
Conclusion:
It is concluded from the present judgment that slogans used in advertising are prima facie not protectable under the Copyright law. However, they may be protected under the law of passing off.
