2002 Supreme(Bom) 1035

IN THE HIGH COURT OF BOMBAY
F.I. Rebello, J.
Star India Private Limited .... Plaintiffs.
Versus
Leo Burnett (India) Private Limited.... Defendants.
Notice of Motion No. 903 of 2002 in Suit No. 1008 of 2002, decided on 24-9-2002.
Advocates appeared :
Ravi Kadam, i/b. Kadam Co., for plaintiffs.
Virag V. Tulzapurkar with Mustafa Safuddin, Ms. Suzan Homah Harish Dugar i/b. Lex Inde, for defendant Nos. 1 2.

Headnote:Civil Procedure Code, 1908 - Order XXXIX, Rules 1 and 2 - Passing off action - Allegation that detergent powder ad-film was based on a popular T.V. serial - Allegation that characters of serial were being used by defendant - Real likelihood of damage or probability of damage has not been proved - Purpose of ad-film is to promote its product - Plaintiffs have not been able to establish balance of convenience - At any rate plaintiffs can always be compensated by way of damage if they are successful. - In the instant case, the defendants are merely promoting their own product, that is, Tide detergent. Can it be said that the defendants act of promoting their product Tide would in any manner affect the plaintiffs future potential of merchandising the character in their serial. There is, no material of real likelihood of damage being caused to the plaintiffs by the acts of the defendants. The mere act of T.V. advertisement by the defendants cannot prejudice the plaintiffs chances of exploiting their merchandising rights if any in respect of the characters in the serial. The fields of activity of the plaintiffs and of the defendants are totally different. As noted this is a relevant consideration in passing off action. When the fields of activity are different, the stronger is the evidence necessary to establish misrepresentation and the real likelihood of damage. To succeed in a case of character merchandising the plaintiffs must establish as a fact, by material and evidence, that the public would look at the character and consider it to represent the plaintiffs or to consider the product in relation in which it is used as has been made with the plaintiffs approval. On material on record the plaintiffs have failed to establish this. The plaintiffs cannot establish it as they have not even begun character merchandising in respect of the characters in the serial. On the contrary, members of the public viewing the T.V. commercial will in all probability associate with the product Tide of the defendants and not with the plaintiffs serial or character therein. The defendants have pleaded, and rightly, that they are a major consumer goods company, well known in their own right and their products including Tide have their own reputation amongst the public. Tide will be associated with the defendants and not with the plaintiffs. The issue of misrepresentation is a question of fact which in the instant case the plaintiffs have failed to discharge.

       Even assuming otherwise, the material on record and the contentions advanced would only show that what the plaintiffs are pleading by way of passing off action/character merchandising as a future potential. Real likelihood of damage or probability of damage has not been established. The defendants commercial is meant to promote their product. Tide in these circumstances, it is clear that the plaintiffs have not been able to satisfy, at this stage, that the balance of convenience is in their favour and/or irreparable injury would be caused to them, if the defendants are allowed to air their T.V. commercial. At any rate, the plaintiffs can always be compensated by way of damages if they succeed as if the plaintiffs case themselves, that the defendants are a financially sound company

       Copyright Act, 1957 - Section 14(d)(i) - Copying of film in an advertisement film - Test of substantiability - Film of 262 episodes and other of 30 records only - These can never be copies of each other - Defendants have placed on record material to show that number of characters in film are different - Models are free and can sign contract for business - A borrowed idea cannot be an infringement of copy right - Both the works are quite different quantitatively and qualitatively - No case of infringement made out. - The defendants have placed on record material to show that the number of the characters in the film are different. The young lady whose remarriage is proposed is present in the defendants commercial but is absent in the corresponding part of the plaintiffs film. The script of the two films is different. No portion of the dialogues or scenes are common. In the defendant s commercial the other family members present are opposed to the proposal of remarriage and the elderly lady raises the hand to strike the person making such proposal. In this segment of the plaintiffs film the family members present all support the proposal of remarriage. In the defendants commercial the young lady, whose marriage is proposed is already married with a child and whose husband is alive. She is wearing a mangalsutra and has a bindi and sindoor on her forehead which are well established and recognised symbols and signs that she is not a widow. In the plaintiffs film on the other hand, she is believed to be a widow and does not wear such symbols/signs. The defendants in their commercial seek to create an impact of the Tide product. The defendants therefore have expended their own independent skill, labour and effort in making the TV commercial. Insofar as models are concerned, they are the same in both the films. These models are professionals and are free to contract. There cannot be therefore, any act which would amount to infringement by using the same models. Even if the idea is borrowed there can be no copyright in the idea. The test is to compare the two rival works. Thus seen and compared and applying both the tests quantitatively and qualitatively the two works prima facie are different and there is no work of substantial copying or similarity between the two. See (Jay Music Limited v. Sunday Pictorial Newspapers Limited), 1960 (1) All ER 703. Copinger also sets out that 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. The issue then is whether if the whole of the respective works is compared and not only parts, factually or materially as it stands, is there copying or substantial copying. Court is not considering whether the "work" as an episode or all the episodes which have to be considered in totality. Even for arguments sake if an episode is concerned as a work , still what is to be compared is the whole work as a single entity. It is not permissible to split or compartmentalize or dissect the plaintiffs work into parts, then seek to compare such parts against the alleged infringed work. What is to be seen is the entirety of each work. It may be made clear that Court is not considering an issue whether a particular part of the film or a scene in the film which may have a striking resemblance, if copied, would amount to a substantial copying of the film.

       Copyright Act, 1957 - Section 14(d)(i) - Infringement of copyright - Alleged copying of character names in ad film - From a popular T.V. serial - Allegation that it caused damage to them - Real likelihood of damage or probability of damage has not been proved - Purpose of ad film is to promote its product - Plaintiff has not been able to establish balance of convenience against themselves - At any rate plaintiff can get damage if they establish infringement. - In the instant case, the defendants are merely promoting their own product, that is, Tide detergent. Can it be said that the defendants act of promoting their product Tide would in any manner affect the plaintiffs future potential of merchandising the character in their serial. There is, no material of real likelihood of damage being caused to the plaintiffs by the acts of the defendants. The mere act of T.V. advertisement by the defendants cannot prejudice the plaintiffs chances of exploiting their merchandising rights if any in respect of the characters in the serial. The fields of activity of the plaintiffs and of the defendants are totally different. As noted this is a relevant consideration in passing off action. When the fields of activity are different, the stronger is the evidence necessary to establish misrepresentation and the real likelihood of damage. To succeed in a case of character merchandising the plaintiffs must establish as a fact, by material and evidence, that the public would look at the character and consider it to represent the plaintiffs or to consider the product in relation in which it is used as has been made with the plaintiffs approval. On material on record the plaintiffs have failed to establish this. The plaintiffs cannot establish it as they have not even begun character merchandising in respect of the characters in the serial. On the contrary, members of the public viewing the T.V. commercial will in all probability associate with the product Tide of the defendants and not with the plaintiffs serial or character therein. The defendants have pleaded, and rightly, that they are a major consumer goods company, well-known in their own right and their products including Tide have their own reputation amongst the public. Tide will be associated with the defendants and not with the plaintiffs. The issue of misrepresentation is a question of fact which in the instant case the plaintiffs have failed to discharge. Even assuming otherwise, the material on record and the contentions advanced would only show that what the plaintiffs are pleading by way of passing off action/character merchandising as a future potential. Real likelihood of damage or probability of damage has not been established. The defendants commercial is meant to promote their product. Tide in these circumstances, it is clear that the plaintiffs have not been able to satisfy, at this stage, that the balance of convenience is in their favour and/or irreparable injury would be caused to them, if the defendants are allowed to air their T.V. commercial. At any rate, the plaintiffs can always be compensated by way of damages if they succeed as if the plaintiffs case themselves, that the defendants are a financially sound company.

       Copyright Act, 1957- Section 14(d)(i) - Infringement of copyright - Giving rise to a case of breach of trust of passing off - Three pre-conditions need to be fulfilled - (1) Plaintiff s goodwill and reputation of mark amongst public - (2) Dependents misrepresentation that article is of plaintiffs - (3) Actual damage or real likelihood of damage to plaintiffs - Serial shown on Star Plus Channel - Advertisement shown on other channels - There is no material to hold public associates the commercial as coming from plaintiffs - Necessary ingredient of reputation is not proved. - The plaintiffs claim to reputation is a reputation in the film/serial as a film/serial. It is no doubt true that, according to the plaintiffs own averment, it is linked to the Star Plus Channel. Assuming it not to be so, the burden lies on the plaintiffs that they have a reputation which exists. The plaintiffs claim to reputation is based on the film and characters. The reputation does not extend to or separately exist in any particular person or dialogue in or part of a serial so that any particular incident or script or word or sentence or scene in the film with the plaintiffs alone. There is no such material on record. It is not the plaintiffs case that a member of the public on seeing elsewhere a scene or incident similar to one in the plaintiffs film will think that what he has seen elsewhere is the plaintiffs film or is necessarily associated with the plaintiffs serial or is put out by the plaintiffs. The plaintiffs have no monopoly over such incidents/scenes and at least no evidence has been produced to establish this, which is purely a question of fact. The entire case of plaintiffs is based on an incident in one of the episodes of the film. The incident is an ordinary social one in a family. It is not exclusive or particular to the plaintiffs film. Probably the public will view the scene without any regard to its source and purely as a part of the defendants work promoting the product Tide . At any rate, there is no material, at this stage, to hold that the public associates the defendants commercial Tide detergent as coming from or by the plaintiffs. The case of the plaintiffs is, as of today, that they have not endorsed any product based on the serial or its characters. The necessary element of reputation required has, therefore, not been established and, as such, the plaintiffs would not be entitled to the reliefs as prayed.

       Copyright Act, 1957 - Section 14(d)(i) - Infringement of copyright - Contention - Copying of popular T.V. Serial - Held - Owner has exclusive right to reproduce his work - Case in hand holds issue of exclusive right - Production by other person does not constitute infringement of copyright - Making copy of film would mean to make a copy in material - Totally resembling copy does not mean a copy of film if not produced validly - From records it is clear that film was made independently - It is not just a copy and not an infringement of copyright.