Important RulingsRulings

HC holds that advertisement of MRF & Metro Tyres is neither substantially nor materially similar, denies interim relief

MRF Ltd. vs. Metro Tyres Ltd.

HC holds that MRF is not entitled to relief as the similarities pointed out between its advertisement and the defendant’s advertisements aren’t enough to establish infringement. 

In the matter of MRF Ltd. (Plaintiff) vs. Metro Tyres Ltd. (Defendant), the issues of law arise for consideration is whether in a suit for copyright infringement of a cinematograph film, the infringing copy has to be an exact copy made by a process of duplication or a substantial/material copy.

Further, whether the copyright infringement test 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 and 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.  Bombay and Calcutta High Courts, by way of reasoned orders, have taken diametrically opposite views. Plaintiff avers that it is the proprietor of the registered trademarks “MRF NV SERIES” and “REVZ”. Plaintiff submits that in order to widely publicise and advertise the MRF NV Series “REVZ” range of tyres, the plaintiff produced an audio-visual advertisement titled as “MRF NV Series present REVZ” (‘plaintiff’s advertisement’) which was first aired in TV media and on the internet. Plaintiff further submits that it is the author of the aforesaid advertisement which constitutes a “cinematograph work‟ under Section 2(f) of the Copyright Act, 1957 (Act) and is entitled to protect it under Section 14 of the Act. Plaintiff avers that the defendant, who is involved in the same business of manufacturing and marketing of tyres, had produced similar advertisement titled “Bazooka Radial Tyres” (‘defendant’s advertisement’) which is nothing but a substantial and material copy of the plaintiff’s advertisement and whereby the plaintiff’s copyright in its advertisement has been infringed. Defendant filed a suit against Metro Tyres Ltd. vs. The Advertising Standards Council of India & Anr. inter alia seeking to restrain the plaintiff herein from issuing groundless threats to the defendants and for restraining the ASCI from proceeding with complaint, but the same was dismissed. Further, the defendant appealed against the aforesaid judgement which is pending before the Division Bench.

HC observes that the Act confers a bundle of exclusive rights on the owner of a “work” and provides for remedies in case the copyright is infringed and under the Act  a “cinematograph film” is protected as a “work” and not merely as a tangible recording. Further, Section 13(4) of the Act stipulates that copyright in underlying works like literary, dramatic and musical are separate, independent and in addition to the rights vested in the owner of a “cinematograph film”. Further, HC is of the view that Section 13(1)(b) refers to the “superstructure” built on the “foundation” of the “original underlying work” and this aspect was recognized by Justice V.R. Krishna Iyer in the footnote in Indian Performing Right Society Ltd. v. Eastern Indian Motion Pictures Association and Others, (1977) 2 SCC 820. HC observes that although, there may be techniques used in films which are protected under Patent law; however, a cinematograph film is greater than the sum of its component parts and enjoys the full protection under copyright law as other works. HC states that in terms of Section 13(3)(a), a film must not be a copy of any other work, including any other film, similar view has been taken by a Division Bench of the Calcutta High Court in Shree Venkatesh Films Pvt. Ltd. vs. Vipul Amrutlal Shah & Ors., 2009 SCC OnLine Cal 2113.

HC observes that 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 and opines that this can only happen if a cinematograph film possesses originality greater than the originality of its underlying works.

HC observes that 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 and Supreme Court has taken a similar view in Eastern Book Company & Ors. vs. D.B. Modak & Anr., (2008) 1 SCC 1. HC opines that that the context in which the words “work” and “author” are used indicates that films normally qualify as ‘intellectual creations‘. HC observes that as the scope of protection of a film is at par with other original works the test laid down in R.G. Anand’s (supra) case would apply. HC notes that it is clear from a reading of the test laid down in R.G. Anand’s (supra) that, 

“it is not confined to a literary work and is of general application and has been applied as such since then.  Significantly, the “substantiality” test is found in the opening words of Section 14 and therefore applies equally to Section 14(d) of the Act. HC 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. Consequently, the Court will have to compare “the substance, the foundation, the kernel” of the two advertisements to consider whether one was “by and large a copy” of the other and whether an average viewer would get an unmistakable impression that one work was a copy of the other”. 

HC is of the opinion that the Bombay High Court judgment in Star India Private Limited v. Leo Burneet (India) Pvt. Ltd. gives a very restricted and narrow interpretation to the rights of the copyright owner in a cinematograph film. With respect, the interpretation of the Bombay High Court in Star India Private Limited v. Leo Burneet (India) Pvt. Ltd. (supra) is not warranted on the natural and ordinary meaning of the statutory provision in Act.. HC states that the Bombay High Court’s view in Star India Private Limited v. Leo Burneet (India) Pvt. Ltd. (supra) is also not in consonance with the Berne Convention in as much as it does not protect a cinematograph work as an original work. 

HC observes it was not brought to the attention of the Bombay High Court that the judgment in the case of Norowzian v. Arks Ltd and Others, 1996 FSR 394 [extensively relied upon in the case of Star India Private Limited v. Leo Burneet (India) Pvt. Ltd. (supra) rendered on 24th September, 2002] had been overruled on the issue of law. The Court of Appeal in Norowzian v. Arks Ltd. & Ors., (2000) FSR 363 [ “Norowzian (No.2) (appeal)”] had held that a film is entitled to protection as an original work. 

HC observes that the defendant’s reliance on the judgment of Madras High Court in Thiagarajan Kumararaja vs. Capital Film Works (India) Pvt. Ltd. & Ors., MANU/TN/3844/2017 is misconceived in law as it deals with the issue of infringement of copyright in a script, while the present suit is with regard to infringement of copyright in a film. HC observes that, 

 “the Berne Convention expressly states that a cinematographic work is to be protected as an original work and that the owner of a copyright in a cinematographic work shall enjoy the same rights as the author of an original work.” 

HC is of the opinion that Article 14bis (1) of the Berne Convention stipulates the width and scope and extent of copyright protection in a film. It expressly provides that a cinematographic work shall be protected as an original work and that the owner of such a work shall enjoy the same rights as the author of an original work while Article 14bis (2) leaves the question of who is the “owner” of a cinematographic work to domestic legislation.  HC observes that in SC in Vishaka and Others Vs. State of Rajasthan and Others, (1997) 6 SCC 241 held that in the absence of a suitable legislation in any sphere, international convention and norms so far as they are consistent with constitutional spirit, can be relied upon. Hence, even where India is not a party to an international treaty, rules of international law which are not contrary to domestic law are followed by the courts in this country.  Further, where India is signatory, the statue would be given a “purposive” construction in favour of the treaty. Even if there is a difference between the language in the statute and the corresponding provision of the treaty, the statutory language should be construed in the same sense as in the treaty.

HC is of the opinion that the Act is required to be interpreted in consonance with the Berne Convention which protects the film not merely as a fixation, but also as an original work.  The meaning of the term ‘cinematograph film’ as interpreted by this Court is therefore in consonance with the Berne Convention. 

HC, after viewing the plaintiff’s and defendant’s advertisements and applying the test stipulated in R.G. Anand v. M/s Deluxe Films and Ors. (supra), is of the prima facie view that the two advertisements are neither substantially nor materially or essentially similar. The plaintiff’s advertisement is more futuristic in comparison to the defendant’s. In fact, the expressions behind both advertisements are different. 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 by showing that it rides well on all terrains.HC states that the similarities pointed out by learned senior counsel for the plaintiff such as the presence of a robotic arm or a red motorbike 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 and holds that the plaintiff is not entitled to any interim relief.

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