In the matter of copyright infringement for a film, there has been a mix of decisions by the Indian courts, each presenting a divergent opinion on the point - whether the infringing copy in case of cinematographic film has to be an exact copy made by the process of duplication or whether it refers to another work which substantially, fundamentally, essentially and materially resembles the original film.
The Bombay High Court in 2003 in the case of Star India Private Limited v. Leo Burnett (India) Pvt. Ltd. 1 held that there will be a copyright infringement only if a copy of the copyrighted film is made by duplication by any means. But if a person produces a film which substantially resembles an earlier film in all aspects, it will not be termed as copyright infringement, even if it is apparent that the subsequent film lacks originality. To quote from the judgement, “It is, therefore, clear that production by another person of even the same cinematographic film does not constitute infringement of a copyright in a cinematographic film. It is only when actual copy is made of a film by a process of duplication i.e. by using mechanical contrivance that it falls under section 14(d)(i). The expression to make a copy of the film would mean to make a physical copy of the film itself and not another film which merely resembles the film…Therefore, 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 and, therefore, does not amount to infringement of whole of the copyright of the first film.” The Court further went on to hold that the law accords a narrow copyright protection to cinematographic films, and the position is different from the case of literary, dramatic or artistic works which require originality, whereas the test of originality is absent for claiming copyright in cinematographic films.
The judgement rendered by the Calcutta High Court in 2009 in Shree Venkatesh Films Pvt. Ltd. v. Vipul Amrutlal Shah & Ors. 2 was diametrically opposite to the decision issued by the Bombay High Court. It was held that a cinematographic film is a "collection or collage or ensemble of various works like story, screenplay, dialogue, sound track, video images, lyrics, etc. Each of these works may also enjoy copyright protection. By operation of law or by contract or assignment the producer of the film may be vested copyrights in the above works…Now when all these works are put together However, not each and every work is entitled to copyright protection. In order to claim copyright there must be some originality in the work. The author of the work may obtain raw materials for the work from any or many sources but will only be entitled to copyright if these raw materials are converted, by use of his labour skill, capital and intelligence to create another material or work which is something different from the raw materials and has an element of novelty.”
Recently, both these cases were considered by the Delhi High Court in MRF Limited vs. METRO Tyres Limited, decided on July 01, 2019. The brief facts of the case were that MRF Limited (“MRF”), a known manufacturer of a range of tyres in order to promote a particular product, produced an audio-visual advertisement which was first aired in TV media on June 27, 2015, and posted the same on the Internet on YouTube on June 27, 2015. Subsequently, the same advertisement was played on forty-one television channels. In October, 2016, it came to the notice of MRF that METRO Tyres Limited (“METRO”) had produced an advertisement which the MRF considered to be a substantial and material copy of their advertisement thereby infringing their copyright. Thus, MRF filed a suit before the Delhi High Court for copyright infringement.
It was claimed by MRF’s counsel that the intent of the defendant was clearly to make a “copy” by intending to show a similar sequencing, form, treatment and expression” and the two advertisements when compared has similarities on fundamental and substantial aspect of the mode of expression which evidence clear intent to copy, whereas the differences, if any, were minor and immaterial. It was emphasized that in a suit for copyright infringement of a cinematographic film, the test is of an overall impression of an average consumer and not a microscopic analysis which underscores differences/divergences. The Plaintiff submitted that, in line with India’s obligations under the Berne Convention, a cinematograph work has to be protected as an ‘original’ work and the owner of copyright of cinematograph film enjoys the same rights as the author of original works. Thus, ‘to make a copy of the film’ is not limited to making a physical copy. The Plaintiff also provided a tabular representation for comparison of the illustrations and sequences of advertisements to show the “material similarities” between the two advertisements which couldn’t have occurred by a “mere chance”.
The decision passed by the Supreme Court of India in the case of R.G. Anand v. M/s Delux Films and Ors. 3 was considered important and was relied upon, as it elucidated that in order to be actionable, the copy must be substantial and material one which at once leads to the conclusion that the defendant is guilty of an act of piracy. The test of infringement is of an overall impression of an average viewer and not a microscopic analysis which underscores differences / divergences.
As stated in R.G. Anand 4 – “One of the surest and the safest test to determine whether or not there has been a violation of copyright is to see if the reader, spectator or the viewer after having read or seen both the works is clearly of the opinion and gets an unmistakable impression that the subsequent work appears to be a copy of the original”.
However, in Metro’s defence, it was argued that the case is not one of trademark infringement or passing off and therefore it is not a “confusion” based on action against the defendant. It was stated that in the Copyrights Act 1957, the word ‘original’ in Section 13(1) is not used with respect to a cinematographic film and that the cinematographic film has to be treated differently within the section 13(3) of the Act. It was emphasized that by a conjoint reading of relevant sections of the Act, it had to be shown that the defendant’s advertisement was an actual copy of the copyrighted film which had been made by a process of duplication, i.e. by using mechanical contrivance under Section 14 (d)(i) and that to “make a copy of the film” meant to in fact make a copy of the film and not another film which merely resembled the original film. They relied on the above discussed judgment of Bombay High Court in Star India Private Limited v. Leo Burnett (India) Pvt. Ltd 5.
It was further contended that the reliance placed by MRF on the case of R. G. Anand v. M/s Delux Films and Ors. (1978) 4 SCC 118 was misconstrued as the said judgement was concerned with a script (literary work) and not with a film. The tests for comparison of a literary work and film are completely different, as for a film there had to be an exact copy of the film or portions thereof, whereas for a script or literary work, the Court may examine whether the reader, spectator or viewer got an unmistakable impression that one work was a copy of the other.
The Delhi High Court’s view
The Delhi High Court’s observation was that copyright subsists in a ‘cinematographic film’ as a work independent of underlying works that come together to constitute a film and though the copyright subsists in the constituent parts, yet the copyright vests separately and independently in the composite whole – the film. In fact, a cinematographic film is something more or greater than a sum of its parts. The Court in its decision referred to the above discussed case of Shree Venkatesh Films Pvt. Ltd. v. Vipul Amrutlal Shah & Ors. 6. Regarding the question of originality, the Court held that even though the expression ‘original’ is missing from Section 13(1)(b) (which identifies the works in which copyright shall subsist), Section 13(3) (a) has to be read co-jointly with the definition of “cinematographic film” and “author” under Section 2(f) and 2(d). Section 13(3)(a) stipulates the circumstances in which copyright shall not subsist in certain works. It provides that copyright shall not subsist in a film if substantial part of the film is an infringement of copyright in other works (which would include other films). It has been held that this can only happen if the film possesses originality, greater than the originality of its underlying works. Thus, in terms of Section 13(3)(a), if a film infringes another work / film, it may lack originality. The Court was also of the opinion that the Copyrights Act has to be interpreted in consonance with the Berne Convention which protects the film not merely as a fixation, but also an original work.
The Court further interpreted that to make a copy of the film, does not imply 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/reproduces the original film. The Delhi High Court was of the view that the decision passed by the Bombay High Court was a very restricted and narrow interpretation to the rights of a copyright owner in a cinematographic film. Though this judgement, the Delhi High Court has laid down that the substantiality test stipulated in the Apex Court’s landmark judgement in R.G. Anand’s case with respect to literary works would also apply to cinematograph films. It is altogether a different case that the Court did not consider the advertisements produced by MRF and METRO as substantially or materially or essentially similar.
1 (2003) 27 PTC 81 (Bom)
2 2009 SCC OnLine Cal 2113
3 (1978) 4 SCC 118
4 (1978) 4 SCC 118
5 (2003) 27 PTC 81 (Bom)
6 2009 SCC OnLine Cal 2113