Copyright | Intellectual Property Rights | Uncategorized

MRF Limited v. Metro Tyres Limited

MRF Limited v. Metro Tyres Limited

2019 (79) PTC 368 (Del)

Delhi High Court

Brief Facts:

Plaintiff produced an audio-visual advertisement titled as “MRF NV Series present REVZ”. As per the Plaintiff, the Defendant, who was involved in the same business of manufacturing and marketing of tyres, had produced similar advertisement titled “Bazooka Radial Tyres”.

Plaintiff filed the present suit for permanent injunction claiming infringement of Copyright in its Advertisement. The present decision is on the application for interim relief filed by the Plaintiff.

Issues/Questions of Law Involved:

  1. Whether the expression “to make a copy of the film” means just to make a physical copy of the film by a process of duplication or does it refer to another work which substantially, fundamentally, essentially and materially resembles the original film. (It is to be noted that the Hon’ble High Court of Bombay and Hon’ble High Court of Calcutta had taken opposite views on the said issue)
  2. Whether the copyright infringement tests as laid down in R.G. Anand v. M/s Deluxe Films and Ors.; (1978) 4 SCC 118 with regard to literary works is applicable to cinematograph films.

Held:

On Questions of Law:

A. Though the expression ‘original‘ is missing in section 13(1)(b) of the Act, yet the requirement of originality or intellectual creation is brought in through sections 13(3)(a)[1] and 2(d) [2].

  • Section 13(3)(a) of the Act, 1957 implies that a copyright in a film cannot subsist if a substantial or material part of the said film is an infringement of copyright in any other work. This can only happen if a cinematograph film possesses originality greater than the originality of its underlying works.
  • To qualify as original, it is also necessary that the work should be an ‘intellectual creation’.[3] The requirement that a work is supposed to be an intellectual creation does not mean that it should be new according to the concept of “novelty” as used in the field of industrial property.
  • Merely because the producer is the owner of the copyright under the Act, 1957 does not mean that there is no creative input by the Director or that the scope of the copyright protection for a film under the Act, 1957 is in any manner narrower than with respect to other works.
  • Consequently, a cinematograph film is normally an original work as it is an “intellectual creation‟.

B. The expression “to make a copy of the film” in Section 14(d)(i)[4] does not mean just to make a physical copy of the film by a process of duplication.

  • The term ‘Copy’ has not been defined under the Act, 1957. The ordinary, dictionary definition of ‘copy’ is not confined to an ‘actual’ copy made by a process of duplication, but is wider one and includes an imitation or reproduction.
  • No good reason has been indicated to read down the ordinary dictionary meaning of ‘copy’ or for it to mean something narrower under the Act, 1957 in terms of the legislative objective/purpose or keeping with India’s international obligations, both of which are consistent with the ordinary, wider definition of ‘copy’.
  • Further, as the scope of protection of a film is at par with other original works, the test in R.G. Anand’s case would apply.
  • Consequently, this Court is of the view that ‘to make a copy of the film’ does not mean 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. Accordingly, the blatant copying of fundamental /essential/distinctive features of the Plaintiff’s advertisement on purpose would amount to copyright infringement.
  • Accordingly, the court will have to compare “the substance, the foundation, the kernel” of the two films/advertisements to consider whether one was “by and large a copy” of the other.

C. It is settled law that where India is a party to an international treaty, the statute would be given a purposive construction in favour of the treaty. This is for the reason that what is sought to be achieved by the international treaty is a uniform international code of law. Consequently, the Copyright Act is required to be interpreted in consonance with the Berne convention which states that a cinematographic work is to be protected as an original work and that the owner of Copyright in a cinematographic work shall enjoy the same rights as the author of an original work [5]and the meaning of the term cinematograph film as interpreted by this Court is therefore in consonance with the Berne Convention.

Thus, the issues which arose in the decision were answered as follows:

The expression “to make a copy of the film” also includes creation of another work which substantially, fundamentally, essentially and materially resembles the original film and the test for infringement as laid down in R.G. Anand’s case would also be applicable in case of infringement of Cinematograph Films.

On Merits:

Applying the test stipulated in R.G. Anand’s case, the two advertisements are neither substantially nor materially or essentially similar. While the Plaintiff’s advertisement’s emphasis is on the manufacturing process of the tyre and its radial design, the Defendant’s advertisement seeks to display the durability of the tyre.  The similarities are not enough to show that the substance, the foundation and the kernel of the Defendant’s advertisement is by and large a copy of the Plaintiff’s advertisement.

 

[1] Section 13(3) Copyright shall not subsist— (a) in any cinematograph film if a substantial part of the film is an infringement of the copyright in any other work:

[2] Section 2 (d) – an author means, in relation to a cinematograph film, the producer.

[3] The Hon’ble Court placed reliance on Guide to the Copyright and Related Rights Treaties Administered by WIPO and Glossary of Copyright and Related Rights Terms

[4] 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 authorise the doing of any of the following acts in respect of a work or any substantial part thereof, namely:— (d) in the case of a cinematograph film — (i) to make a copy of the film, including— (A) a photograph of any image forming part thereof;or (B) storing of it in any medium by electronic or other means; (ii) to sell or give on commercial rental or offer for sale or for such rental, any copy of the film; (iii) to communicate the film to the public;

[5] Reliance was placed on Article 14bis (1) ―Without prejudice to the copyright in any work which may have been adapted or reproduced, a cinematographic work shall be protected as an original work. The owner of copyright in a cinematographic work shall enjoy the same rights as the author of an original work, including the rights referred to in the preceding Article.

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