This post was first published on October 4th, 2011.
Star India Private Limited v. Leo Burnett (India) Private Limited
Facts:
Star India Pvt. Ltd. (plaintiff) 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. These programs enjoy tremendous popularity amongst viewers in India and abroad. Star India Pvt. Ltd. also had acquired the copyright of famous T.V. serial produced by Balaji Telefilms Pvt. Ltd., named, “KUNKI SAAS BHI KABHI BAHU THI” to create, compose and produce 262 episodes of it and became exclusive owners of the copyright in that serial. The serial had acquired immense goodwill and reputation among viewers in India that they associated the said serial exclusively with Star India Pvt. Ltd. It was contended by the plaintiff that when they saw a Television commercial for merchandising of Consumer product called, “Tide Detergent” they were surprised to see that the T.V. Commercial was very much similar to their serial. On enquiring it was found that one P&G group of companies (defendant no.2 ) involved in production of Tide together with an advertising agency(defendant no. 1) has infringed the plaintiffs’ copyright in the above said T.V. serial and artistic work and are guilty of the same as the defendant’s commercial for promotion and merchandising of tide, is a copy of the plaintiff’s T.V. serial, therefore they are liable for continuous act of infringement and violation of their copyright in their famous serial KUNKI SAAS BHI KABHI BAHU THI. They contended that defendants have telecasted /broadcasted the commercial with the title of their serial KUNKI SAAS BHI KABHI BAHU THI with identical characters of the serial viz. Tulsi, Savita and J.D. and the overall impression of the commercial seem to be a copy of the original work of the plaintiff. They also contended that P& G Company together with Leo Burnett (India) Pvt Ltd is also guilty of passing off their reputation and goodwill in the T.V. serial by misrepresenting their association with Star India Pvt. Ltd to make use of original artistic, musical work and the cinematograph film of Star India Pvt. Ltd as they have caused confusion in the minds of people that their commercial for promotion and merchandising of Tide is associated with the famous T.V. Serial KUNKI SAAS BHI KABHI BAHU THI. Thus they had filed an appeal in the present case in High Court of Bombay against P& G Company (defendant no.1) and the advertising agency (defendant no.2). However, the defendants contended that the Tide T.V. commercial was an independent creation and not the reproduction or imitation of the plaintiff’s serial. The overall idea, concept, story, and format of the commercial were discussed and developed by the representatives of the defendants from the creative team, together. Therefore they had not infringed any copyright in the serial. The defendants also contended that there is no copyright existed in plaintiff’s work as the title, “KYUNKI SAAS BHI KABHI BAHU THI” is a commonly used proverb and the logo of “Saas handling keys to bahu” is the age-old expression.
Issues Involved:
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?
Holding:
The defendants are not liable for infringement of plaintiff’s copyright in its film.
The claim of the plaintiff of passing off is failed.
The very element of Character merchandising in the serial is missing thus the claim of the plaintiff, on this point is failed.
Motion stand dismissed.
Rule of Law:
Sec 2(f) “cinematograph film” means any work of visual recording on any medium produced through a process from which a moving image may be produced by any means and includes a sound recording accompanying such visual recording and “cinematograph” shall be construed as including any work produced by any process analogous to cinematography including video films;
Sec 2(m) (ii) “infringing copy” means,-
In relation to a cinematographic film, a copy of the film made on any medium by any means;
Sec 14 Meaning of copyright.-For the purposes of this Act, “copyright” means the exclusive right subject to the provisions of this Act, to do or authorize the doing of any of the following acts in respect of a work or any substantial part thereof, namely:-
(a) In the case of a literary, dramatic or musical work, not being a computer programme, –
(i) to reproduce the work in any material form including the storing of it in any medium by electronic means;
(ii) to issue copies of the work to the public not being copies already in circulation;
(iii) to perform the work in public, or communicate it to the public;
(iv) to make any cinematograph film or sound recording in respect of the work;
(v) to make any translation of the work;
(vi) to make an adaptation of the work;
(vii) to do, in relation to a translation or an adaptation of the work, any of the acts specified in relation to the work in sub-clauses (i) to (vi);
(b) in the case of a computer programme,-
(i) to do any of the acts specified in clause (a);
(ii) to sell or give on commercial rental or offer for sale or for commercial rental any copy of the computer programme.
“Provided that such commercial rental does not apply in respect of computer programmes where the programme itself is not the essential object of the rental.”
(c) in the case of an artistic work,-
(i) to reproduce the work in any material form including depiction in three dimensions of a two-dimensional work or in two dimensions of a three-dimensional work;
(ii) to communicate the work to the public;
(iii) to issue copies of the work to the public not being copies already in circulation;
(iv) to include the work in any cinematograph film;
(v) to make an adaptation of the work;
(vi) to do in relation to an adaptation of the work any of the acts specified in relation to the work in sub-clauses (i) to (iv);
(d) In the case of a cinematograph film, –
(i) to make a copy of the film, including a photograph of an image forming a part thereof;
(ii) to sell or give on hire, or offer for sale or hire, any copy of the film, regardless of whether such copy has been sold or given on hire on earlier occasions;
(iii) to communicate the film to the public;
(e) In the case of sound recording, –
(i) to make any other sound recording embodying it;
(ii) to sell or give on hire, or offer for sale or hire, any copy of the sound recording regardless of whether such copy has been sold or given on hire on earlier occasions;
(iii) to communicate the sound recording to the public.
Explanation: For the purposes of this section, a copy which has been sold once shall be deemed to be a copy already in circulation.
Case Analysis:
In the present case, the Honourable Court dismissed the Motion and no relief is granted to the plaintiff. While deciding the case the Honourable court has referred to a number of relevant cases.
While considering the first issue the Honourable Court held that if the film has been filmed or shot separately by a person and it resembles the earlier film, the subsequent film is not a copy of the first film. Since it is clear that defendants have not copied the film but made a new film and therefore they have not infringed the copyright of the appellant/plaintiff’s film and artistic work. While reaching such a decision, the court interpreted sec 14(a), (b), (c), (d) (1) together; Specially According to sec 14(d) (i) copyright gives exclusive right to the author to make actual physical copy of a cinematograph film by a process of duplication i.e., by using mechanical process and if that copy is made by some unauthorized person then it means infringement of copyright. But in the present case making of T.V. commercial was an independent act. The dialogues, the sequence, everything was shot and recorded by the defendants separately and not copied or edited from a film already made. Therefore the defendants are not liable for infringement of plaintiff’s copyright in its film. For reaching such a decision the Honourable Court has given reasoning that the independent production by another person or even the same cinematograph film does not constitute an infringement of a copyright in a cinematograph film.
On this point, the Honourable court has referred the following cases:
Jay music Limited v. Sunday Pictorial Newspapers Limited, 1960 (1) All E.R. 703. Accordingly where there is some element of material alteration or embellishment which makes the totality of the work an original work it will not be an infringement.
Telmark Teleproducts (Aust.) Pty. Limited v. Bond International 1985 (5) IPR 203 in which defendants had made an advertising film for the same products as were contained in the plaintiff’s advertising film and the Court found that the products of the rivals (which were advertised) and the films were also similar. However since the defendants had made their own film the court held that the defendants film was not an act within the categories of exclusive rights conferred on the copyright owner of the plaintiff’s film because defendant’s film was not copied from the recorded medium of the plaintiff’s film but had been shot by the defendants own agents. Thus defendants are not held to be liable for copyright infringement.
On the issue of substantial copying by the defendant of plaintiff’s film, the Court has held that the work of defendant is purely a commercial add for promotion of Tide product only and the work of plaintiff is different from it. Thus the question of substantial copying does not arise here.
Here the court has also applied a test of comparing both the works in qualitative and quantitative terms and has concluded that both the works are completely different from each other as the plaintiff’s work is a film of 262 episodes having duration of about 87 hours whereas the defendant’s work is merely a commercial advertisement for promotion and merchandising of TIDE having duration of only 30 seconds approx. Thus, in the present case the scripts of both the works are entirely different and no portions of dialogues or scenes are common.
Applying such test and comparing both the works as a whole, it stands that there is no substantial copying on facts. Hence the defendants are not liable for infringement of the copyright of the plaintiff in the said serial.
On issue of passing off the court has held that Plaintiff would have threatened if both the works would be related to common fields but in the present case, while comparing the defendants work with plaintiff’s work, the Court has come to the conclusion that a 30 seconds commercial with Tide detergent as a prime focus and dominant part thereof has never been shown on exclusively on star plus channel.
Also referring to the decision taken in the case of Aktiebolaget Volvo of Sweden v. Volvo Sheets Limited of Gujarat (India), 1998 IPLR 63 in which it was observed that the crux of passing off action lies in possible deception. The existence of a common field of activity is always relevant consideration. If there is a common field of activity, the possibility of deception is high but if the fields are different then possibilities of the same are less.
Thus in present case question of misleading public or causing confusion to them in any manner that defendants commercial is associated with the plaintiff’s cinematograph film, does not arise and the defendants commercial cannot in anyway affect the viewership of the plaintiff’s film or potential TRP’s or sponsorship value/possibilities, therefore, there is no possibility of causing damages to the plaintiff’s reputation.
Since it has already proved that both the works are different from each other, the point of deception does not arise. Hence claim off passing off of the plaintiff on this point is failed.
In deciding the issue of character merchandising, the Honourable court has held that character merchandizing involves the exploitation of fictional characters or the frames of celebrities by licensing such famous fictional characters to others means when the character has developed commodity value of itself, and there is no alike situation present here. Neither of the characters in the serial has become a commodity in its own right, independently of the film/serial. They represent the common people 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.
Since the plaintiff has failed to establish any claim alleged by them, no relief is granted.
Author: Neeru Vohra
