- JUDGMENT SUMMARY: Star India Pvt. Ltd. v. Leo Burnett (India) Private Ltd.
- DATE OF JUDGMENT: 24 September 2002
- BENCH: F Rebello, J.
SUBJECT:
The present case deals with the question of what constitutes making of copies under Section 14(d)(i) of the Copyright Act.
FACTS:
The plaintiff, Star India Pvt. Ltd. was the copyright owner in the serial titled “KYUNKI SAAS BHI KABHI BAHU THI's” theme and artistic work with which the title appeared on TV according to Clause 6 of the agreement between the plaintiff and Balaji Telefilms. The defendants came up with the advertisement of Tide Detergent for P & G showing a scene similar to climax of the TV show and displaying the artistic work appearing on TV with the words "KYUNKI BAHU BHI KABHI SAAS BANEGI". The plaintiff brought an action against the defendant alleging infringement of its copyright in the serial by the defendants.
IMPORTANT PROVISIONS: section 14(d) of the Copyright Act.
Section 14(d)- cinematograph film
ISSUES:
The main issues in question before the court were:
- Whether the defendants by making the commercial film, infringed the plaintiff’s copyright in the T.V. serial "KYUN KI SAAS BHI KABHI BAHU THI"?
- Whether there is substantial copying of plaintiff’s film by the defendant?
- Whether the defendants defeated plaintiff’s character merchandising?
ANALYSIS OF THE JUDGMENT:
Plaintiff’s Contentions: The plaintiff alleged that people will think that the plaintiff licensed or produced the advertisement. Also, the plaintiff paid a sum of money to acquire the copyright and the defendants were alleged to be trying to encash upon the plaintiff’s goodwill.
The plaintiff contended that as owners of the copyright in the film under Section 14(d)(i) of the Copyright Act, the plaintiff, being the copyright owners, have an exclusive right to make a copy of the film which includes a photograph of any image forming part thereof.
The plaintiff also argued that the future potential of character merchandising concerning the characters in the serial was affected by the defendants' actions of making the commercial.
Defendant's Contentions: the defendants submitted that the Tide T.V. commercial was an independent creation made at the instance of and for and behalf of defendants for valuable consideration and independent copyrights therein vested in defendants. The commercial was not a reproduction or imitation of the plaintiff’s serial at all and did not infringe any copyright in the serial or any of the plaintiff’s work. Furthermore, it was the idea that was used and ideas are not copyrightable. No average person would make the connection between the serial and the commercial. Lastly, they argued that even if it is a copy, it is not a substantial copy.
Court's observations:
The Bombay High Court observed that the expression 'to make a copy of the film' means making a physical copy of the film itself and not another film which only resembles the film. The making of another film was not included under Section 14(d)(i) and such other film, even though completely resembling the copyrighted film, does not fall within the expression 'to make a copy of the film'. Therefore, a film recorded or shot separately by a person resembling the earlier film, the subsequent film would not be a copy of the first film and, therefore, does not amount to infringement of the copyright of the first film. However, the position in the case of literary, dramatic or artistic work is different. Narrow copyright protection has been granted to a film/sound recordings than for literary, dramatic or artistic work. The reason possibly could be that they need to be original to satisfy the test of copyrightability, whereas the requirement of originality is missing for claiming copyright in cinematograph films/sound recordings.
The court held the commercial film of the defendants was not a copy and, therefore, would not amount to an infringement of the plaintiff’s copyright in its serial taking into consideration the language of Section 14(d) of the Copyright Act.
After applying both the tests quantitatively and qualitatively and comparing the two works, the court concluded that both the works are prima facie different from each other as the plaintiff’ss work is a film of 262 episodes having a duration of about 87 hours while the defendant’s work is only a commercial advertisement for promotion and merchandising of Tide product having a duration of only 30 seconds approx. The scripts of both the works were wholly different and no portions of dialogues or scenes were familiar. Therefore, there is no substantial copying by the defendants and they are not liable for infringement of plaintiff’s copyright in the said serial.
The work in question was held to be a "cinematographic film" under the Copyright Act. Any sensible person will not baffle between the two. Further, there was no scope for misrepresentation as the commercial film was aired on channels different from where Kyunki the serial was telecasted. So there was no effect of the commercial film on the serial and the likelihood of damage was too remote.
On the issue of character merchandising, the court held that none of the characters in the serial has acquired such fame or has become identifiable in the minds of the public. They only represent the main characters in the serial. There is also nothing to show that the characters Tulsi, Savita or J.D. are capable of marketable independently or jointly. Therefore this issue is also not maintainable.
The Honourable Court dismissed the Motion and no relief was granted to the plaintiff.
Conclusion:
It is concluded from the present judgment that the exclusive right available to the copyright owner under Section 14(d) of the Act is to copy the recording of a film. It is, therefore, clear that the expression ‘to make a copy of the film’ means making a physical copy of the film itself and not another film which only resembles the film.
