In view of Section 13 of Act, copyright subsists in, original works including original literary, dramatic and artistic works and cinematograph films. A title is not an original literary work, as held by Supreme Court in case of Krishika Lulla and Ors. v. Shyam Vithalrao Devkatta and Anr. A title does not qualify for being described as work. There is no originality in adoption of title “KARU”, which is a common Tamil word, which means “foetus” and figuratively “concept” and/or “theme”.

IPR 2018 (1) 0391= MANU/TN/0926/2018 (DB)

IN THE HIGH COURT OF MADRAS

 

Lyca Productions, Chennai

v.

Manimaran, Chennai and Ors.

 

O.S.A. NO. 63 OF 2018 AND C.M.P. NOS. 3492 & 3493 OF 2018 DECIDED ON: 22.02.2018

Judge

Indira Banerjee, C.J. and Abdul Quddhose, J.

Counsel

For Appellant/Petitioner/Plaintiff: P.L. Narayanan, Adv.

For Respondents/Defendant: V. Raghavachari, Adv. for R. Veeramani & V. Easwaran, Advs. for Respondent No. 1 and K. Saravanan, Adv. for Respondent No. 3

Treatises:::

Copinger and Skone James on Copyright, 16th Edition

Me Carthy on Trade marks and Unfair Competition, Third Edition (1995) Vol. I

 

 

Cases referred:::

British Railways Board v. Herrington                                                  

Herrington v. British Railways Board MANU/UKHL/0014/1972: (1972) 2 WLR 537:

1972 AC 877: (1972) 1 All ER 749 (HL)

Biswaroop Roy Choudhary v. Karan Johar MANU/DE/2753/2006: 2006 (33) PTC 381
(Del): 131 (2006) DLT 458

 

  1. Forster v. A.N. Parasuram MANU/TN/0016/1964: AIR 1964 Mad 331: (1964)
    ILR 2 Mad 258: 1964-77-LW 228

 

Executive Engineer, Dhenkanal Minor Irrigation Division v. N.C. Budharaj MANU/SC/
0016/2001: (2001) 2 SCC 721: AIR 2001 SC 626: 2001 (2) ALLMR (SC) 260: (2001)
3 CALLT 1 (SC): 2001 (1) CGLJ 261: 91 (2001) CLT 754 (SC): JT 2001 (1) SC 486:
(2001) 2 MLJ 128 (SC): 2001 (1) MPHT 526: 2001 (1) RCR (Civil) 613: 2001 (1)
SCALE 109: (2001) 1 SCR 264

 

General Electric Co. v. Renusagar Power Co. MANU/SC/0007/1987: (1987) 4 SCC 137:
JT 1987 (3) SC 277: 1987 (2) SCALE 257: (1987) 3 SCR 858: 1987 (2) UJ 410
 

Haryana Financial Corpn. v. Jagdamba Oil Mills MANU/SC/0056/2002: (2002) 3 SCC 496: AIR 2002 SC 834: 2002 (2) ALD 89 (SC): 2003 (4) ALLMR (SC) 808: 2002 (46) ALR 717: I (2002) BC 568 (SC): (2002) 110 CompCas 20 (SC): (2002) 3 CompLJ 8 (SC): (2002 (2) JCR 53 (SC)): JT 2002 (1) SC 482: 2002-3-LW 196: (2002) 2 MLJ 75 (SC): 2002 (3) PLJR 13: (2002) 1 PLR 475: 2002 (1) RCR (Civil) 794: 2002 (1) SCALE 481: (2002) 1 SCR 621: (2002) 1 UPLBEC 937

 

 

 

Islamic Academy of Education v. State of Karnataka MANU/SC/0580/2003: (2003) 6 SCC 697: AIR 2003 SC 3724: 2003 (5) ALD 1 (SC): 2003 (4) AWC 3119 (SC): 2003 (3) CTC 719: 2004 (1) KarLJ 1: 2004 (1) PLJR 176: 2003 (6) SCALE 325: (2004) 13 SCC 3: (2003) Supp 2 SCR 474: 2004 (1) SCT 714 (SC): (2003) 3 UPLBEC 2424

 

Kanugo Media (P) Ltd. v. RGV Film Factory and Ors. MANU/DE/7193/2007: 2007 (34) PTC 591 (Del): 138 (2007) DLT 312: (2007) ILR 1 Delhi 1122

 

Krishika Lulla and Ors. v. Shyam Vithalrao Devkatta and Am.MANU/SC/1174/2015: (6) ABR 745: 2015 XII AD (S.C.) 158: 2016 (1) ALD (Crl.) 254 (SC): 2016 (92)
ALLCC 438: 2015 ALLMR (Cri) 4545: 2016 (1) BomCR 167 (SC): (2015) 129 CLA 1
(SC): 121 (2016) CLT 494: 2016 CriLJ 160: 2015 (4) Crimes 311 (SC): 2016 (154) DRJ
15: 2016 (1) J.L.J.R.39: 2016 (1) JCC 229 (SC): 2016-4-LW 587: 2015 (3) N.C.C.483:

  • (1) PLJR 189: 2016 (65) PTC 312 (SC): 2015 (4) RCR (Civil) 865: 2015 (4) RCR
    (Criminal) 793: 2015 (10) SCALE 718: 2016 (4) SC J 498: 2015 (4) WLN 228 (SC)

Padma Sundara Rao v. State of T.N. MANU/SC/0182/2002: (2002) 3 SCC 533: AIR 2002 SC 1334: 2002 (3) ALD 12 (SC): 2002 (3) ALT 27 (SC): 2002 (2) AWC 1163 (SC):

(2002)  176 CTR (SC) 104: (2002) 255 ITR 147 (SC): JT 2002 (3) SC 1: 2002-3-LW 427:

2002 (2) RCR (Civil) 373: RLW 2002 (3) SC 353: 2002 (2) SCALE 580: (2002) 37 SCL
425 (SC): (2002) 2 SCR 383: (2002) 170 TAXMAN 303 (SC): 2002 (1) UC 726: (2002)
2 UPLBEC 1189

 

  1. Radhakrishnan v. A.R. Murugadoss and the Film and Television Producers Guild of
    South India MANU/TN/2085/2013: AIR 2014 Mad 25: 2013-5-LW 429: (2013) 8
    MLJ

 

  1. Pandiyan Arivali v. Kamal Hassan MANU/TN/1027/1994

 

Union of India v. Chajju Ram MANU/SC/0322/2003: (2003) 5 SCC 568: AIR 2003 SC 2339: 2003 (3) ALLMR (SC) 766: 2003 (3) AWC 2333 (SC): 2003 (2) CTC 626: JT

2003  (4) SC 161: 2003-4-LW 6: 2003 (2) RCR (Civil) 682: 2003 (4) SCALE 155:

(2003)  3 SCR 647: (2003) 2 UPLBEC 1797

 

Copyright Act, 1957

Section 2(c)

Section 2(d)

Section 2(f)

Section 2(h)

Section 2(m)

Section 2(m)(ii)

Section 2(o)

Section 2(y)

Section 2(z)

Section 2(xxa)

Section 13

Section 14

 

Section 16 Section 33 Section 40 Section 41 Trade Marks Act, 1999

HEAD NOTE

Copyright – Infringement – Interim relief regarding grant injunction relating to film title   – HELD, in view of Section 13 of Act, copyright subsists in, original works including original literary, dramatic and artistic works and cinematograph films. A title is not an original literary work, as held by Supreme Court in case of Krishika Lulla and Ors. v. Shyam Vithalrao Devkatta and Anr. A title does not qualify for being described as work. There is no originality in adoption of title “KARU”, which is a common Tamil word, which means “foetus” and figuratively “concept” and/or “theme”. In proceedings, it was specific case of Plaintiff/Respondent No. 1 that Second and Third Defendants/Respondents were two entities with which producers of Tamil films register title of films they intend to make. Third Defendant/Respondent is not a registered Copyright Society under Section 33 of Act, and thus incompetent to administer any right in any work including cinematograph films. There is also no statutory basis for alleged trade practice on basis of which Plaintiff/Respondent No. 1 has claimed relief in suit, which is admitted. There is no copyright in a mere title. Appellant/First Defendant is not a member of Third Defendant/Respondent with whom Plaintiff/Respondent No. 1 has registered title “KARU”. Appellant/First Defendant is, therefore, not bound by rules and regulations of Third Defendant/Respondent, and has no contractual obligation not to produce a film with a title which is same as, or similar to title registered by Plaintiff/Respondent No. 1 with Third Defendant/Respondent. Moreover film of Plaintiff/Respondent No. 1 has not even been completed or released. It is nobody’s case that, title has acquired any goodwill or reputation. On other hand, film of Appellant/First Defendant has been completed and is due to be released. Hence, balance of convenience must weigh against grant of an injunction in favour of Plaintiff/Respondent No. 1. Ratio decidendi in case of R. Radha Krishnan v. A.R. Murugadoss is that, there is no copyright in title of a literary work or a cinematograph film. This proposition of law operates as a precedent to be followed by Bench of co-ordinate strength. Single Bench erred in holding that, judgment of Single Bench in R. Radha Krishnan was distinguishable on facts. Single Judge has not indicated reasons for his view that, distinguishing features noted in judgment under appeal render judgments cited on behalf of Appellant/Defendant No. 1, holding that there was no copyright in a title, inapplicable. Provisions of Act and in particular, wide definition of “infringing copy” in relation to cinematograph film in Section 2(m) (ii) of Act, to mean a copy of film made on any medium, by any means, makes it clear that proposition laid down in judgment of this Court in R. Radhakrishnan, and judgment of Supreme Court in Krishika Lulla, that there is no copyright in a title, would apply to all feature films. Earlier registration by Plaintiff/Respondent No. 1 of title “KARU” with Third Defendant/Respondent does not confer any right to

 

Plain tiff/Respondent No. 1 to exclusive use of title so registered, to exclusion of other producers. Single Bench erred in arriving at conclusion that Plaintiff/Respondent No. 1 had prima facie case as Plaintiff/Respondent No. 1 had registered title “KARU” for motion picture as early as on 3rd September, 2011 and had renewed same from time to time. Interim order of Single Bench cannot be sustained and same was set aside. Appeal allowed.

JUDGMENT                                                                     l

Indira Banerjee, CJ.

  1. This appeal is against a judgment and order dated 19th February, 2018 passed by
    the learned Single Bench allowing the application being O.A. No. 72 of 2018, of the
    Plaintiff, impleaded as Respondent No. 1 in this appeal, for interlocutory injunction (
    in the suit being C.S. No. 65 of 2018.
  2. The Plaintiff/Respondent No. 1 claims to be the sole proprietor of M/s. J.S. Screens,
    engaged in production of Tamil feature films. According to the Plain tiff/Respondent
    1, the Plaintiff/Respondent No. 1 has enrolled as a member of the Respondent
    No. 3, Film and Television Producers Guild of South India, a registered society
    impleaded as the Third Defendant in the suit. The Registration Number of the c
    Plaintiff/Respondent No. 1 is 9880.
  3. The Plaintiff/Respondent No. 1, claims to have applied for registration of his film
    titled “KARU”   with   the   Respondent/Defendant      3   on   or   about
    3rd September, 2011. It has been stated that the application for registration was
    approved with effect from 28th September, 2011 and the Plaintiff/Respondent No. 1     (
    was given Guild Registration No. 16530. The Plaintiff/Respondent No. 1 has pleaded
    that, at the material time there was no other film with the title “KARU” registered
    with the Second or the Third Defendant/Respondent.
  4. In the plaint, it is pleaded that the Third Defendant/Respondent is the oldest
    organisation of its kind and its members comprise, inter alia, film producers spread
    across South India. The Third Defendant/Respondent safeguards the interest of its
    members and acts strictly in terms of its bye-laws. As a member of the Third
    Defendant/Respondent, the Plaintiff/Respondent No. 1 claims entitlement to all
    protection and   privileges   as   available   to   the   members   of   the   Third
    Respondent/Defendant. The Appellant/Defendant No. 1, however, is not a member
    of the Third Respondent/Defendant.
  5. The Second Defendant/Respondent, M/s. Tamil Film Producer Council, is also a
    society similar to the Third Respondent/Defendant, comprising, inter alia, of film
    The Appellant/Defendant No. 1 is a member of the Second
    Respondent / Defendant.
  6. According to the Plaintiff/Respondent No. 1, the Second and the Third ,
    Defendants/Respondents coordinate with each other to ensure that there is no
    duplication of registration of film titles. The registered title holders alone are entitled

to use the titles registered with the Second and Third Defendants/Respondents to the exclusion of other members. The titles so registered by members cannot be used by others, even as prefix or suffix with other words.

  1. In paragraph (5) of the plaint, it is pleaded that after registration of the film title :
    “KARU” with the Third Defendant/Respondent, the Plaintiff/Respondent No. 1

 

started production of a film titled “KARU”. The Plaintiff/Respondent No. 1 claims to have made huge investments for his aforesaid film monetarily as also by way of labour, publicity etc. It is, however, not in dispute that the film has not yet been completed and the same is not ready for release.

  1. The Plaintiff/Respondent No. 1 has stated that the Plaintiff/Respondent No. 1
    was shocked and surprised to come across hoardings and advertisements in dailies,
    including “Daily Thanthi” of a film produced by the Appellant/First Defendant
    under the same title “KARU”, which is directed by one Vijay.
  2. In the plaint, it is pleaded that the Appellant/First Defendant is reported to have
    registered its film title “KARU” with the Second Defendant/Respondent in 2017,
    six years after the Plaintiff/Respondent No. 1 registered the said title with the Third
    Defendant/Respondent.

 

  1. The Plaintiff/Respondent No. 1 contends that adoption by the Appellant/First
    Defendant of the title “KARU” is unfair in view of the earlier registration by the
    Plaintiff/Respondent No. 1 in 2011, of the film titled “KARU” with the Third
    Defendant / Respondent.
  2. According to the Plaintiff/Respondent No. 1, he adopted the tile “KARU” for his
    film in tune with the theme of the film. The title is most apt and appropriate having
    regard to the story of the film. The title was, according the Plaintiff/Respondent
    1, chosen after long deliberation. The Plaintiff/Respondent No. 1 has, in the
    plaint, claimed that 90 per cent of the production has been completed and the
    remaining part is likely to be completed within a short time.
  3. The Plaintiff/Respondent No. 1 has alleged that after advertisement of the film
    of the Appellant/First Defendant and the release of hoardings and official teasers
    in internet websites, friends, well-wishers, co-producers and financiers of the
    Plaintiff/Respondent    1   have   started   making   queries   from   the
    Plaintiff/Respondent No. 1 as to whether the Plaintiff/Respondent No. 1 has sold
    the film “KARU” to the Appellant/First Defendant, thereby causing untold
    embarrassment and loss of name and reputation to the Plaintiff/Respondent No. 1.
    By a letter dated 6th May, 2017, addressed to the Third Defendant/Respondent, the
    Plaintiff/Respondent No. 1 requested the Third Defendant/Respondent to take
    steps to protect the interest of the Plaintiff/Respondent No. 1. The Third
    Defendant/Respondent, in its turn, addressed a letter dated 26th May, 2017 to the
    Second Defendant/Respondent, of which the Appellant/First Defendant is a member.
  4. The Plaintiff/Respondent No. 1 has claimed that release of the film “KARU” by
    the Appellant/First Defendant will put the Plaintiff/Respondent No. 1 to loss and
    prejudice, which cannot be compensated in terms of money. The name and reputation
    of the Plaintiff/Respondent No. 1 as also financial investments made by the
    Plaintiff/Respondent No. 1 for his film “KARU” are in deep peril.
  5. The Plaintiff/Respondent No. 1 filed C.S. No. 65 of 2018 in this Court claiming
    the following reliefs:

(i) declaring that the Plaintiff is the prior and registered title holder of the Tamil feature film titled “Karu” and its rights, title, Copyright and nomenclature solely and exclusively belongs to the Plaintiff;

(ii) grant permanent injunction, restraining Defendant Nos. 1, 5, 6 and 7, their men agents and/or anybody claiming or acting through or under them, from

 

in any manner imitating and infringing Plaintiff’s Copyrights over its original motion film titled “KARU” (Tamil) with any other suffix or prefix or other word in connection to this title either in theatres, Qube, UFO, PXD or any other mode of exhibition;

(iii) award cost of suit, and

(iv) grant such further or other relief.

  1. The Plaintiff/Respondent No. 1 filed an interlocutory application, being O.A.
    72 of 2018 in the said suit, praying for ad interim injunction restraining Defendant
    Nos. 1, 5, 6 and 7 in the suit, i.e., the Appellant and Respondent Nos. 5, 6 and 7 in
    this appeal, their men, agents or anybody claiming or acting through or under them
    from imitating   and   infringing   in   any   manner,   the   Copyright   of   the
    Plaintiff/Respondent No. 1 over its original motion film titled “KARU” (Tamil) with
    any other suffix or prefix or any other word joined to the title “KARU”.
  2. The Appellant/First Defendant affirmed a counter-affidavit to the Interlocutory
    Application contending that the film produced by the Appellant/First Defendant is
    registered as “LYCAVIN KARU” and Censor certificate has also been obtained under
    the aforesaid name. The Appellant/First Defendant contends that the title of the
    film of the Appellant/First Defendant is different from the title “KARU” of the film,
    which is being produced by the Plaintiff/Respondent No. 1. The Appellant/First
    Defendant further contends that while the film produced by the Plaintiff/Respondent
    1 is a thriller, the film “LYCAVIN KARU” of the Appellant/First Defendant is
    based on a ghost story. There is no similarity between the two films.
  3. According to the Appellant/First Defendant, initially on 26th April, 2017, the
    Second Defendant/Respondent had registered the title “KARU” in the name of
    M/s. Think Big Studios, represented by its Partner Mr. A.L. Azhagappan.
  4. PL. Narayanan appearing on behalf of the Appellant/First Defendant
    submitted that the Appellant/First Defendant modified the title of the film after
    obtaining ‘No objection’ from M/s. Think Big Studios and registered the title of its
    film as “LYCAVIN KARU” on 28lh September, 2017.
  5. The suit filed by the Plaintiff/Respondent No. 1 is for an injunction restraining,
    inter alia, the  Appellant/First Defendant  from  imitating  or  infringing
    Plaintiff/Respondent No. 1’s Copyrights over its original motion film titled “KARU”
    (Tamil) with any other suffix or prefix or any other word. The Plaintiff/Respondent
    1 has also sought a declaration that the Plaintiff/Respondent No. 1 is the prior
    and registered title holder of the Tamil feature film “KARU” and its rights, title,
    copyright and nomenclature.
  6. It is well settled that interim orders can only be claimed in aid of the final reliefs
    in the suit. The prayer in the application was for an order restraining the
    Appellant/First Defendant and Defendants 5, 6 and 7/Respondents 5, 6 and 7 from
    from imitating and infringing Plaintiff/Respondent No. 1’s Copyrights over its
    original motion film titled “KARU”.
  7. Admittedly, the disputes relate only to the title “KARU”. It is nobody’s case that
    the film of the Appellant/First Defendant is a copy of the film that is being produced
    by the Plaintiff/Respondent No. 1. The themes of the two films are admittedly

 

  1. In India, Copyright is a statutory right recognised and protected by the Copyright Act, 1957. Sections 13 and 14 of the Copyright Act, 1957 provide as follows:

Section 13. Works in which copyright subsists.-

(1)  Subject to the provisions of this section and the other provisions of
this Act, Copyright shall subsist throughout India in the following classes
of works, that is to say,—

  • original literary, dramatic, musical and artistic works;
  • cinematograph films; and
  • sound recording.

(2)  Copyright shall not subsist in any work specified in Sub-section (1),
other than a work to which the provisions of Section 40 or Section 41
apply, unless,-

(i) in the case of a published work, the work is first published in India, or where the work is first published outside India, the author is at the date of such publication, or in a case where the author was dead at that date, was at the time of his death, a citizen of India;

(ii) in the case of an unpublished work other than a work of architecture, the author is at the date of the making of the work a citizen of India or domiciled in India; and

(iii) in the case of work of architecture, the work is located in India.

Explanation.- In the case of a work of joint authorship, the conditions conferring Copyright specified in this Sub-section shall be satisfied by all the authors of the work.

(3)  Copyright shall not subsist-

  • in any cinematograph film if a substantial part of the film is an
    infringement of the copyright in any other work;
  • in any sound recording made in respect of a literary, dramatic or
    musical work, if in making the sound recording, copyright in such
    work has been infringed.

 

  • The copyright in a cinematograph film or a sound recording shall not
    affect the separate copyright in any work in respect of which or a
    substantial part of which, the film, or, as the case may be, the sound
    recording is made.
  • In the case of work of architecture, copyright shall subsist only in the
    artistic character and design and shall not extend to processes or methods
    of construction.

Section 14. Meaning of Copyright.-

(1) 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:-

 

(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 any 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-

  • the storing of it in any medium by electronic or other
    means; or
  • depiction in three-dimensions of a two-dimensional
    work; or

(C) depiction 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 any adaptation of the work;

(vi) to do in relation to 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) 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; (e) in the case of a sound recording,—

(i) to make any other sound recording embodying it including 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 sound recording;

(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.

  1. The expressions “infringing copy”; “artistic work”; “cinematograph film”; “dramatic work”; “literary work”; “visual recording”; “work”; “work of joint authorship” and “author” have been defined in Section 2(m), (c), (f), (h), (o), (xxa), (y), (z) and (d) of the Copyright Act, 1957 as follows:

“infringing copy” means,-

(i) in relation to a literary, dramatic, musical or artistic work, a reproduction thereof otherwise than in the form of a cinematographic film;

(ii) in relation to a cinematographic film, a copy of the film made on any medium by any means;

(iii) in relation to a sound recording, any other recording embodying the same sound recording, made by any means;

(iv) in relation to a programme or performance in which such a broadcast reproduction right or a performer’s right subsists under the provisions of this Act, the sound recording or a cinematographic film of such programme or performance,

if such reproduction, copy or sound recording is made or imported in contravention of the provisions of this Act;

“artistic work” means,-

(i) a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a photograph, whether or not any such work possesses artistic quality;

(ii) an work of architecture; and

(iii) any other work of artistic craftsmanship;

“cinematograph film” means any work of visual recording 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;

 

“dramatic work” includes any piece for recitation, choreographic work or entertainment in dumb show, the scenic arrangement or acting, form of which is fixed in writing or otherwise but does not include a cinematograph film;

“literary work” includes computer programmes, tables and compilations including computer databases;

“visual recording” means the recording in any medium, by any method including the storing of it by any electronic means, of moving images or of the representations thereof, from which they can be perceived, reproduced or communicated by any method.

“work” means any of the following works, namely:-(i) a literary, dramatic, musical or artistic work; (ii) a cinematograph film; (iii) a sound recording;

“work of joint authorship” means a work produced by the collaboration of two or more authors in which the contribution of one author is not distinct from the contribution of the other author or authors;

“author” means,-

(i) in relation to a literary or dramatic work, the author of the work; (ii) in relation to a musical work, the composer;

(iii) in relation to an artistic work other than a photograph, the artist;

(iv) in relation to a photograph, the person taking the photograph;

(v) in relation to a cinematograph film or sound recording, the producer; and

in relation to any literary, dramatic, musical or artistic work which is computer-generated, the person who causes the work to be created.

  1. Section 16 of the Copyright Act, 1957 provides that no person shall be entitled to
    Copyright or any similar right in any work, whether published or unpublished,
    otherwise than under and in accordance with the provisions of the said Act or of
    any other law for the time being in force. But nothing in Section 16 of the Act is to be
    construed as abrogating any right or jurisdiction to restrain a breach of trust or
  2. A conjoint reading of Sections 13 and 16 of the Copyright Act makes it clear that
    what is protected under the Copyright Act is the work which is relatable to a
    cinematograph film, that is to say, the visual recording, including sound recording,
    produced by process analogous to cinematography. The title, which may be a
    commonly used word, cannot be protected under the law of Copyright. Section 13
    makes it clear that there is no Copyright in a title, it is the entire work which is
    protected by Copyright.
  3. On a plain reading of Section 13 of the Copyright Act, 1957, Copyright subsists
    in, inter alia, original works including original literary, dramatic and artistic works

 

and cinematograph films. A title is not an original literary work, as held by the Supreme Court in Krishika Lulla and Ors. v. Shyam Vithalmo Devkatta and Anr.1 reported in (2016) 2 SCC 521. A title does not qualify for being described as work. It is incomplete in itself and refers to the work that follows.

  1. In Krishika Lulla,, the Supreme Court was considering the title “Desi Boyz” of
    the film released by the Appellants on a story written by Milap Zaveri. The Supreme
    Court observed that the words “Desi” and “Boys” were quite common in India and
    their combination also produced a commonly understood expression. The words
    were, therefore, not protectable either on the basis of Copyright or Trade mark, or in
    passing off action.
  2. In Krishika Lulla,, the Supreme Court quoted and approved the principle
    enunciated in the following passage from Copinger and Skone James on
    Copyright, 16th Edition:

Names and titles as literary works.-In the same vein is the reluctance of English Courts to confer Copyright protection on titles of newspapers, magazines, books and the like. In relation to books in particular, the title normally forms part of a Copyright work consisting of the book as a whole and the issue here may be whether the copying of the title amounts to the taking of a substantial part of the whole work. General statements can nevertheless be found in non-copyright cases to the effect that there is no property in a name or title standing alone unless it is the subject of goodwill or a registered Trade mark.

  1. In EM. Forster v. A.N. Parasuram2, reported in AIR 1964 Mad 331, a suit filed by
    E.M. Forster for alleged infringement of Copyright in the title of his book “A Passage
    to India”, the adoption of the title “E.M. Forster, A Passage to India, Everyman’s
    Guide” by the Defendants was held not to infringe Copyright as there was no
    Copyright in respect of the title. This Court held thus:

…As we have earlier affirmed, there is no Copyright in the title and purchasers, whether of the original work or of the guide, are most unlikely to be illiterate, or unacquainted with English. It will be perfectly clear to them, from the words enclosed in brackets as a subtitle, that they were acquiring, not the original work, but a ‘guide for university students’.

  1. In Kanungo Media (P) Limited v. RGV Film Factory3, reported in (2007) 1 Del 1122,
    A.K. Sikri, J, held as under:
  2. …What, therefore, follows is that if a junior user uses the senior user’s literary title as the title of a work that by itself does not infringe the Copyright of a senior user’s work since there is no Copyright Infringement merely from the identity or similarity of the titles alone.

 

  1. In the instant case, it is not in dispute that there is no originality in adoption of
    the title “KARU”, which is a common Tamil word, which means “foetus” and
    figuratively “concept” and/or “theme”.
  2. In the proceedings before the learned Single Bench and before us, it was the
    specific case of the Plaintiff/Respondent No. 1 that the Second and Third
    Defendants/Respondents were two entities with which producers of Tamil films
    register the title of the films they intend to make.
  3. V. Raghavachari argued that a producer registers the title of a film either with
    the Second Defendant/Respondent or with the Third Defendant/Respondent. It is
    the practice for the Second and Third Defendants/Respondents to exchange the
    names which are registered with them and to ensure that the same title or similar
    titles with minor variations and/or prefix and/or suffix are not registered by more
    than one    producer.    Mr.    Raghavachari    submitted    that    the    Second
    Defendant/Respondent and the Third Defendant/Respondent do not issue title
    registration certificates without getting clearance from each other.
  4. Raghavachari further argued that it had become an established practice in
    the Cinema industry for producers to become members of organisations such as the
    Second and the Third Defendant/Respondent and get the titles of films registered
    and once a title was registered, no other producer could make a film under a title
    that had been registered or title similar thereto. The titles which were registered
    could not even be used with a suffix or prefix.
  5. PL. Narayanan appearing on behalf of the Appellant/First Defendant,
    however, took the stand that there was no such practice in the industry. The learned
    Single Bench, however, took note of the fact that the Appellant/First Defendant also
    claimed that it had registered its title with the Second Defendant/Respondent to
    arrive at the primafade finding that there was a practice in the industry, as contended
    on behalf of the Plaintiff/Respondent No. 1
  6. Admittedly, the Third Defendant/Respondent is not a registered Copyright
    Society under Section 33 of the Copyright Act, 1957 and thus incompetent to
    administer any right in any work including cinematograph films. There is also no
    statutory basis for the alleged trade practice on the basis of which the Plaintiff/
    Respondent No. 1 has claimed relief in the suit, which is admitted. As observed
    above, there is no Copyright in a mere title.
  7. As argued by Mr. PL. Narayanan, the Appellant/First Defendant is not a member
    of the Third Defendant/Respondent with whom the Plaintiff/Respondent No. 1
    has registered the title “KARU”. The Appellant/First Defendant is, therefore, not
    bound by the rules and regulations of the Third Defendant/Respondent, and has
    no contractual obligation not to produce a film with a title which is the same as, or
    similar to the title registered by the Plaintiff/Respondent No. 1 with the Third
    Defendant / Respondent.
  8. In the plaint and in the application for interim relief, the Plain tiff/Respondent
    1 claimed that the Plaintiff/Respondent No. 1 was entitled to the protection
    available under the rules of the Third Defendant/Respondent. However,
    entitlements, if any, of the Plaintiff/Respondent No. 1 under the rules of the Third
    Defendant/Respondent cannot be enforced against third persons who are not
    members of the Third Defendant/Respondent.

 

  1. The film of the Plaintiff/Respondent No. 1 has not even been completed or
    It is nobody’s case that the title has acquired any goodwill or reputation.
    On the other hand, the film of the Appellant/First Defendant has been completed
    and is due to be released. In our considered view, the balance of convenience must
    weigh against the grant of an injunction in favour of the Plain tiff/Respondent No. 1.
  2. The judgment of the Delhi High Court in Biswaroop Roy Choudhary v. Kamn Johar4,
    reported in 2006 (33) PTC 381 (Del.), cited by Mr. PL. Narayanan, pertains to the
    Trade Marks Act, 1999, and thus clearly distinguishable. However, we approve the
    principle that Courts should be wary to injunct use of words or phrases in common
    parlance in respect of which a claim for exclusive use is staked by an applicant for
    In the aforesaid case, the Delhi High Court refused injunction to restrain
    use of the title “Kabhi Alvida Naa Kehna” in a passing off action, with the observation
    that neither of the parties had authored or conceived the catchy phrase which was
    on the lips of any number of persons on any given day, throughout India, by reason
    of popularity of a song “Kabhi Alvida Naa Kehna”. In this case, “KARU”, as observed
    above, is a common Tamil word which literally or scientifically means “foetus” and
    figuratively means “concept” and/or “theme”.
  3. In Pandiyan Arivali v. Kamal Hassan5, reported in 1995 (2) LW 347, a Division
    Bench of this Court declined to grant injunction sought by the Plaintiff claiming
    Copyright in the title of a book “Magalir Mattum” in Tamil, which he had got
    registered with the Registrar of Copyright. The Division Bench held:
  4. It is generally acknowledged by the Court in India that the definitions in Sections 13 and 14 of the Copyright Act, 1957, do not go beyond the literary work or musical work and the title ordinarily of any such work is not a part of composition or work of the author or the composer. His workmanship is confined to the work and not to the title. It is indeed the law that there is no property in the name which is the term of description used to identify the work and any other person can, with impunity, adopt it.
  5. Judicial discipline demands consistency in rendering judgments. A Bench of the
    High Court cannot take a view contrary from the one taken by another Bench of
    co-ordinate strength of the same High Court.
  6. It is true that not everything said by a Judge in his judgment constitutes a
    What is binding is the principle on which a case is decided. It is, therefore,
    important to analyse a decision and segregate the ration decidendi, which is to be
    followed as a precedent.
  7. In Islamic Academy of Education State ofKarnataka6, reported in (2003) 6 SCC 697,
    the Supreme Court held:
  8. A judgment, it is trite, is not to be read as a statute. The ratio decidendi of a judgment is its reasoning which can be deciphered only upon reading the same in its entirety. The ratio decidendi of a case or the principles and reasons on which it is based is distinct from the relief finally granted or the manner

 

adopted for its disposal. (See Executive Engineer, Dhenkanal Minor Irrigation Division v. N.C. Budharaj7 [(2001) 2 SCC 721].)

  1. In Padma Sundara Rao v. State o/T.N.8 [(2002) 3 SCC 533] it is stated: (SCC p.
    540, paragraph 9)

There is always peril in treating the words of a speech or judgment as though they are words in a legislative enactment, and it is to be remembered that judicial utterances are made in the setting of the facts of a particular case, said Lord Morris in Herrington v. British Railways Board [(1972) 2 WLR 537: 1972 AC 877: (1972) 1 All ER 749 (HL)] (Sub nom British Railways Board v. Herrington). Circumstantial flexibility, one additional or different fact may make a world of difference between conclusions in two cases.

(See also Han/ana Financial Corpn. v. Jagdamba Oil Mills9 [(2002) 3 SCC 496].)

  1. In General Electric Co. v. Renusagar Power Co.10 [(1987) 4 SCC 137] it was
    held: (SCC p. 157, paragraph 20)

As often enough pointed out by us, words and expressions used in a judgment are not to be construed in the same manner as statutes or as words and expressions defined in statutes.

  1. According to settled theory of precedents, every decision contains three basic
    postulates,- (i) finding of facts, direct and inferential; (ii) statements of the principles
    of law applicable to the legal problems that arise in the facts of the case; and (iiii
    judgment based on the combined effect of the above.
  2. As held by the Supreme Court in Union of India Chajju Ram11, reported in (2003)
    5 SCC 568, a judgment and/or decision is an Authority for what it actually decides.
    What is of essence is its ratio, which is the issue raised and decided, and not every
    observation made in the judgment, or what logically follows therefrom. Every
    judgment must be read as applicable to the particular facts proved, or assumed to be
    proved. The enunciation of the reason or principle on which a question has been
    decided is alone binding as a precedent.

 

2018]

Lyca Productions, Chennai v. f. Manimaran, Chennai and Ors. (Indira Banerjee, C.J.)

0405

 

 

 

  1. Therefore, in order to understand and appreciate the binding force of a decision,
    fl it may be necessary to see what were the facts in the case in which the decision was

given, and what was the point which had to be decided.

  1. In R. Radhakrishnan v. A.R. Mnrugadoss and the Film and Television Producers Guild
    of South India12, reported in AIR 2014 Mad 25, the question was whether the
    Respondent could be injuncted from using the title of the applicant’s film. The

b learned Single Bench quoted with approval the decision of the Delhi High Court in Kanugo Media (P) Ltd. v. RGV Film Factory and Ors.”, reported in (2007) 34 PTC 591 (Delhi), which is as follows:

  1. It is common, rather imperative, to give title to literary or entertainment
    works. Like human beings, literary work produced by the author or the work
    of entertainment produced by a producer needs a name. It is only then such
    work would be identified. The term ‘literary title’ is used to encompass titles of
    books, periodicals, newspapers, plays, motion pictures, television series, signs,
    phonograph records, cartoon features and the like (Me Carthy on Trade marks
    and Unfair Competition, Third Edition (1995) Vol. I)
  2. American Courts have taken uniform view that title alone of a literary work
    cannot be protected by Copyright Law. Copying of a title alone, and not the

plot, characterization, dialogure, song etc. is not the subject of Copyright Law. Thus, a Copyright on a literary work would not include exclusive right to use the title on any other work. What, therefore, follows is that if a junior user uses the senior user’s literary title as the title of a work that by itself does not infringe the Copyright of a senior user’s work since there is no Copyright Infringement merely from the identity or similarity of the titles alone. Same is the position under Copyright Law in India.

  1. Relying on the aforesaid judgment, the Single Bench of this Court held that the
    applicant had no case on the Copyright in respect of the title “Raja Rani”.

r 50. The ratio decidendi in R. Radhakrishnan, is that there is no Copyright in the title of a literary work or a cinematograph film. This proposition of law operates as a precedent to be followed by Bench of co-ordinate strength.

  1. In our view, judicial propriety demands that a Single Bench should follow the verdict of the other Single Bench and if it is unable to agree, the Single Bench should refer the matter to the Chief Justice for constitution of a Division Bench. The learned 8 Single Bench fell in error in holding that the judgment of the Single Bench in R. Radha Krishnan v. A.R. Murugadoss, reported in 2013 (5) LW 429 was distinguishable on facts. The learned Single Bench should have appreciated minor differences like one film being a short film and the other film being a feature film could not make any difference to the proposition that there was no Copyright to a title.

h 52. A judicial decision is often read by a process of reasoning on the basis of material facts under immediate consideration. The conclusion is the decision. In the vast majority of cases, it will be the application of the existing law to the facts judicially asserted. However, facts in different cases are seldom identical. Minor differences in

 

 

 

  • : MANU/TN/2085/2013: 2013-5-LW 429: (2013) 8 MLJ 574
  • : MANU/DE/7193/2007: 138 (2007) DLT 312: (2007) ILR 1 Delhi 1122

Manupatra Intellectual Property Reports * April 2018

97

 

 

 

 

 

facts would not denude a decision of its precedential value and in distinguishing a precedent on the ground of factual differences, it would be necessary to clearly indicate the distinguishing features and how the distinguishing features could have rendered the proposition of law enunciated and/or re-enunciated in the decision inapplicable. The learned Judge has, with the greatest of respect, not indicated the reasons for his view that the distinguishing features noted in the judgment under appeal render the judgments cited on behalf of the Appellant/Defendant No. 1, holding that there was no Copyright in a title, inapplicable.

  1. The provisions of the Copyright Act, 1957 and in particular, the wide definition
    of “infringing copy” in relation to cinematograph film in Section 2(m)(ii), to mean a
    copy of the film made on any medium, by any means, makes it clear that the
    proposition laid down in the judgment of this Court in R. Radhakrishnan, and the
    judgment of the Supreme Court in Krishika Lulla, that there is no Copyright in a title,
    would apply to all feature films.
  2. While it is correct to say that a judgment is to be construed and interpreted in the
    background of the facts in which the judgment is rendered and a judgment may not
    operate as a precedent in an altogether different factual setting, at the same time, no
    two cases can be identical. Minor differences in facts do not denude a judgment of
    its precedential value.
  3. A perusal of the plaint and the interlocutory application and particularly the
    prayers made therein clearly indicate that the claim of the Plaintiff/First Respondent
    was mainly based on his claim to Copyright in his film, of which the title “KARU”
    was an integral part. The plea of existence of an established trade/industry practice
    was raised as an alternative contention.
  4. We are also unable to agree with the conclusion of the learned Single Bench
    that there is certainly a trade practice with regard to registration of title for a
    movie in the Tamil cinema industry, as claimed by the Plaintiff/Respondent
    1. There are no materials on record which conclusively establish the existence
    of a practice in the industry for registration of titles or desisting from using titles
    registered by others.
  5. In course of arguments, it transpired that it was not mandatory for producers to
    become members   of  the   Second  Defendant/Respondent   or   the   Third
    Defendant/Respondent. Membership of either society was entirely optional and
    there were many producers who were not members either of the Second or of the
    Third Defendant/Respondent.
  6. In this context, it would be pertinent to refer to the rules and regulations for
    registration of  motion  picture  titles/video/film/album  under  Titles
    Registration Scheme of the Third Defendant/Respondent and in particular the
    following rules:
  7. If production work has not commenced during the year i.e. during the registration period of One Year of title then renewal for another (six) 6 months only will be considered by the Executive Committee, on furnishing satisfactory reasons, for delay in starting the production.

 

  1. In registering any title for a film of Guild takes no responsibility whatsoever in regard to and infringement of Copyright or any other legal right and Titles Registration is done purely on “Self Regulation Scheme”, Guild does not take any legal responsibilities pertaining to Titles Registration.
  2. From the materials disclosed before us, it has not appear that the
    Plaintiff/Respondent No. 1 commenced production within one year from the date
    of registration. The materials show that film pooja was performed by the
    Plaintiff/Respondent No. 1 on 9th September, 2013, even though the title was
    registered on 3rd November, 2011. More over, as per the rules, if production work
    does not commence during the year of registration, then renewal for another six
    months only was to be considered by the Executive Committee on furnishing
    satisfactory reasons. In any event, the Third Defendant/Respondent takes no
    responsibility whatsoever with regard to infringement of Copyright or any other
    legal right and title registration was done purely on “Self Regulation Scheme”.
  3. Admittedly, there is no statute, rule or regulation which at all requires the
    registration of a title for production of a film. Had the Appellant/First Defendant
    and the Plaintiff/Respondent No. 1 been members of the same organisation, they
    may have contractually been bound by the internal rules and regulations of the
    However, the Plaintiff/Respondent No. 1 is not bound by the rules of
    the Second Defendant/Respondent and the Appellant/First Defendant is not bound
    by the rules of the Third Defendant/Respondent.
  4. The earlier registration by the Plaintiff/Respondent No. 1 of the title “KARU”
    with the Third Defendant/Respondent does not confer any right to the
    Plaintiff/Respondent No. 1 to exclusive use of the title so registered, to the exclusion
    of other producers. Whether or not there is any dispute with regard to the dates of
    registration of the respective titles of the Plaintiff/Respondent No. 1 and the
    Appellant/First Defendant, is in our view, not material.
  5. The learned Single Bench fell in error of law in arriving at the conclusion that the
    Plaintiff/Respondent No. 1 had prima facie case as the Plain tiff/Respondent No. 1
    had registered the title “KARU” for the motion picture as early as on
    3rd September, 2011 and had renewed the same from time to time.
  6. The learned Single Bench has apparently been swayed by the fact that the
    Appellant/Defendant    1  was  a  large  production  house  unlike  the
    Plaintiff /Respondent No. 1 and that the Plaintiff/Respondent No. 1 had made
    huge investments for production of the film “KARU” which was almost 90 per cent
    complete. Sympathy for a weaker party to a litigation cannot outweigh the law
    pronounced by the Court. Furthermore, the learned Single Bench ignored the fact
    that the Appellant/First Defendant had also made substantial investments for its
    film which had been completed and was due to be released on 23rd February, 2018.
    The learned Single Bench, in our view, also erred in law in giving undue importance
    to the size of depiction of LYCAVIN before KARU since the suit was not one for
    passing off.
  7. It is true that simultaneous release of cinematographic films of the same title is
    likely to cause confusion in the mind of the viewers. However, in this case the
    release is not simultaneous. The Plaintiff/Respondent No. 1’s film has not been
    In   the   absence   of   any   statutory   or   contractual   right,   the

 

Plaintiff/Respondent No. 1 cannot injunct others from using a title. In any case, the title is different preceded by “LYCAVIN KARU”. Even assuming that the cinematographic film of the Plaintiff/Respondent No. 1 is 90 per cent complete as claimed, the film of the Appellant/First Defendant is complete and scheduled to be released on 23rd February, 2018, which is tomorrow. We are informed that the date of the release has likely been postponed by reason of the interim injunction passed by the learned Single Bench. The interim order of the learned Single Bench cannot be sustained and the same is set aside.

The appeal is, accordingly, allowed. No costs. Consequently, CMP. Nos. 3492 and 3493 of 2018 are closed.

Add a Comment

Your email address will not be published. Required fields are marked *