Written by Gracy Bindra
Co-Founder and Editor-in-Chief, Law & Order
Fifth Year, BA. LLB. Symbiosis Law School, Pune.
Disclaimer: Please note that the views expressed below represent the opinions of the article's author. The following does not necessarily represent the views of Law & Order.
CASE DETAILS [1]
Case name: Star India Pvt. Limited v. Leo Burnett
Date of Judgement: 24 September 2002
Citations: 2003 (2) Bom CR 655, 2003 (27) PTC 81 Bom
Court: Bombay High Court
Bench: F.I. Rebello, J
FACTS
The plaintiffs entered into a contract of service with Balaji Telefilms Pvt. Ltd. for creating, composing and producing episodes of the Indian television drama series, Kyuki Saas Bhi Kabhi Bahu Thi. Along with such engagement of service, the plaintiffs were the first copyright owners of the logo and title in a particular stylized font with certain key features. The serial was well received by the public and in no time, gained the goodwill and reputation of being associated with the plaintiff(s). In February 2002, the defendants coined a new commercial for the detergent brand “Tide", telecasted with similar characters as portrayed in Kyunki Saas Bhi Kabhi Bahu Thi. The plaintiffs contended violation of copyright and the use of their idea without prior consent. They claimed to have suffered losses due to copyright infringement and character merchandising.
Finally, the decision was upheld in favor of the defendants, and the motion of the plaintiffs was dismissed without any relief granted. ISSUES
The issues raised before the Court were:
1. Did the defendants infringe/violate the copyright of the plaintiff's television serial, 'Kyunki Saas Bhi Kabhi Bahu Thi'?
2. Was there a substantial amount of imitation done on the defendants’ part? Were the defendants guilty of exploiting the serial’s reputation and goodwill for their own profit?
3. Were the defendants liable for character merchandising in this scenario?
JUDGMENT
In this case, the Court dismissed the motion without any relief granted to the plaintiff(s) as they failed to make a prima facie case.
The ratio(nes)/reasoning observed in the present case by the single bench is: While deliberating on the first issue of copyright infringement, the court observed that the filming of the Tide detergent advertisement is not a copy of a TV serial. According to Sec 14(d)(i) of the Copyright Act, the author has an exclusive right to make physical copies of the cinematography films by the mechanical process of duplication, and if an unauthorized person makes that copy, it is referred to as infringement. The court interpreted that the TV commercial was an independent act, and had independent production, dialogues, and sequences. Even if it was based on the same idea, it is a fact of law that ‘ideas’ are not protected under copyright law. The court relied on the precedent of Jay music Limited V. Sunday Pictorial Newspapers Limited [2] in order to reason that if there exist certain elements of material alteration or embellishment that deem the entirety of the work original in nature, the act would not amount to infringement. [3] It also relied on Telmak Teleproducts (Aust.) Pty. Limited v. Bond International [4] wherein it was held that just because both parties had the same medium of recording, it does not amount to infringement. [5]
The court held that the allegations of substantial copying and exploitation of the serial’s goodwill and reputation are not maintainable.
The reasoning stated by the Court was that, first, the defendant’s TV commercial was purely a promotion of their product. Second, there was no decipherable intent to harm the reputation of the show. Third, the 30-second Tide commercial was starkly different from the 262-episode TV serial.
The court considered the last issue regarding the quantitative differentiation between the two works to deliberate the question of character merchandising. [6] By this test, it was observed that the scenes, scripts, and dialogues were entirely different. Additionally, the commercial was also launched on other channels besides Star India and the target-audiences were markedly different.
By referring to the case of Aktiebolaget Volvo of Sweden v. Volvo Sheets Limited of Gujarat (India) [7], the court observed that the question of exploiting good-will arises in situations entailing possible deception, where there are common grounds of activity, and reliance is placed on Kirloskar Diesel Recon. (P.) Ltd. and Ors. v. Kirloskar Proprietary Ltd. and Ors [8] , and the present case clearly lacks the common field of activity. [9] In order to pass off as character merchandising, exploitation of any fictional character that has achieved the status of a ‘commodity’ is necessary, for example, “Teletubbies” [10], “Shaktiman”, and “Superman”. [11] In the present case, the plaintiff(s) have failed to establish that the characters of the serial hold independent recognition outside the TV serial and that they have become a ‘commodity.’ There is no material on record to prove this argument.
The obiter dicta to the case that would mark an influential and important point in order to serve as a precedent for future cases, is that the Court held that character merchandising involves the licensing of fictional characters that carry a ‘commodity’ status. Therefore, there must be actual character merchandising, and not just mere potential to be deemed character merchandising. A definite test to determine the threshold of character merchandising is not yet available and differs on a case-to-case basis. Whenever the test is devised, it should be aimed at being clear for a prudent person and not misleading and vague to avoid discrepancies. [12] For establishing the threshold, the court refers to principles applied in Supreme Court cases [13] that check whether the product is misrepresented and whether the public is confused by it. [14].
IMPACT
In my opinion, since 2003, this Bombay High Court case was a benchmark in the jurisprudence of Intellectual Property. It was rightly pronounced in favor of the defendants, and the reasoning applied by the single bench was noteworthy. The most appreciable fact pleaded by the defendants, and subsequently recognized by the court, was that the defendants were promoting a major consumer good (Tide detergent) that is a household name with its own reputation.
According to the Court, no rational person would confuse the advertisement with the serial shown on Star India, and thus there was no substantial copying done. The ‘common field of activity’ was not reached as the characters of the plaintiff were merely adapted by the defendants, who intended to target the audiences of India that can easily relate to household roles in a family arrangement. Further, there was no scope of fraud and/or misrepresentation, as the commercial aired on other channels besides Star India.
Even though the statute does not provide for much clarity and guidance on the existence of independent copyrights in the works, the present case brings clarity to the legal position by interpreting the threshold of character merchandising for other courts to follow as precedence. Independent copyright prohibits reproduction or copying of a pre-existing protected work. [15]
However, the case fails to highlight the process to incorporate the doctrine of independent creation within Indian jurisprudence. Merely citing examples from England does not justify the existence of these laws within the Indian framework, and therefore, their execution could be a problem.
The gap between the theoretical basis of the doctrine could be deemed a lacuna left unanswered by the court. Practically speaking, the doctrine could lead to enormous evidentiary problems as the rules of burden of proof still lie in a grey area. [16]. As much as the defendants in this particular case benefitted from the defense of ‘independent creation’ [17], it may not hold in every case. Proving that the work has actually been independently created may be impossible to conclude. [18]
As per Section 2(1) of the Indian Trademarks Act 2000 [19] any ‘sign capable of distinguishing goods and services of one person from another, any word (including personal names), design, numeral and shape of goods or their packaging’ can be registered as a trademark. Courts in India have accorded protections to film titles, characters, and names under trademark laws. [20]
Unlike action under the tort of passing off or the Trade Practices Act 1974, trademark registration is unique in providing a prospective form of protection for celebrity personalities, and a guard against character merchandising. [21] Star India Private Limited vs Leo Burnett (India) Private, (2003 (27) PTC 81 Bom) was the first case dealt in this area of law in India. Therefore, even though the jurisprudence of character merchandising is still in the process of developing, this case remains a major landmark in Intellectual Property Law.
[1] MANU / MH / 1030 / 2002.
[2] 1960 (1) All E.R. 703.
[3] Star India Private Limited vs Leo Burnett (India) Private, 2003 (27) PTC 81 Bom; ¶7, Pg. 5.
[4] 1985 (5) IPR 203.
[5] Star India Private Limited vs Leo Burnett (India) Private, 2003 (27) PTC 81 Bom; ¶6, Pg. 6.
[6] Ibid, 111-112.
[7] 1998 IPLR 63.
[8] AIR 1996 Bom 149, 1996 (2) BomCR 642, (1996) 98 BOMLR 972.
[9] Star India Private Limited vs Leo Burnett (India) Private, 2003 (27) PTC 81 Bom; ¶12, Pg. 14.
[10] BBC Worldwide Ltd. and Anr. v. Patty Screen Printing Ltd. and Ors., 1998 FSR 665.
[11] Star India Private Limited vs Leo Burnett (India) Private, 2003 (27) PTC 81 Bom; ¶12, Pg. 16.
[12] Star India Private Limited vs Leo Burnett (India) Private, 2003 (27) PTC 81 Bom; ¶14, Pg. 20.
[13] American Home Products Corporation v. MAC Laboratories Private Limited and others, 1986 AIR 137, 1985 SCR Supl. (3) 264; Colgate Palmolive (India) ltd. V. Hindustan Lever Ltd., 1997 (5) CTJ 488.
[14] Colgate Palmolive (India) ltd. V. Hindustan Lever Ltd., 1997 (5) CTJ 488; ¶3,part 409.)(iii), Pg. 4.
[15] IN CONTENT LAW, 15 Dec, 2011; (20 Mar,20), https://copyright.lawmatters.in/2011/12/doctrine-of- independent-creation.html. [16] Vol.1, COPINGER AND SKONE JAMES ON COPYRIGHT, 45-51 ¶7.98 (14 th edition,1998).
[17] Star India Private Limited vs Leo Burnett (India) Private, 2003 (27) PTC 81 Bom
[18] Vol 1 Issue 4, International Journal For Legal Developments and Allied Issues
[19] The Trademarks Act, 2000
[20] Titus & C Advocates 2008, India guide: Character merchandising in India, http://www.asialaw.com/Article/ 1970665/Channel/16681/India-Guide-Character-merchandising- India.html, Last visited on 21 Mar,20
[21] Black Hilary May, The role of trademark law in the protection of celebrity personality, Media & Arts Law Review, 7 (2) (2002) 105, 106.
BIBLIOGRAPHY
1. International Journal For Legal Developments And Allied Issues [Vol 1 Issue 4]
2. Black Hilary May, The role of trademark law in the protection of celebrity personality, Media & Arts Law Review, 7 (2) (2002) 105, 106.
3. Copinger and Skone James on Copyright, 14 th edition, ¶7.98
4. Annual survey of Indian law, “Intellectual property laws”, Indian Law Institute, N.S. Gopalakrishnan, Chapter 16, Pg.502-507, 2003
5. The Trademarks Act,2000; http://www.ipindia.nic.in/writereaddata/Portal/IPoAct/1_43_1_trade-marks-act.pdf, Last visited on 21 Mar,20
6. Titus & C Advocates 2008, India guide: Character merchandising in India, http://www.asialaw.com/Article/ 1970665/Channel/16681/India-Guide-Character- merchandising- India.html, Last visited on 21 Mar,20
7. IN Content Law, 15 Dec, 2011; https://copyright.lawmatters.in/2011/12/doctrine-of- independent-creation.html, Last visited on 20 Mar,20 4. Kyunki Saas Bhi Kabhi Bahu Thi Vs. TIDE- Rights In A Cinematographic Work, post by Bananaip Reporter, 2011, Last visited on 20 Mar,20
8. Star India Private Limited vs Leo Burnett (India) Private, 2003 (27) PTC 81 Bom.
9. Colgate Palmolive (India) ltd. V. Hindustan Lever Ltd., 1997 (5) CTJ 488
10. American Home Products Corporation v. MAC Laboratories Private Limited and others, 1986 AIR 137, 1985 SCR Supl. (3) 264
11. BBC Worldwide Ltd. and Anr. v. Patty Screen Printing Ltd. and Ors., 1998 FSR 665
12. Aktiebolaget Volvo of Sweden v. Volvo Sheets Limited of Gujarat (India), 1998 IPLR 63
13. Kirloskar Diesel Recon. (P.) Ltd. and Ors. v. Kirloskar Proprietary Ltd. and Ors, AIR 1996 Bom 149, 1996 (2) BomCR 642, (1996) 98 BoMLR 972
14. Telmak Teleproducts (Aust.) Pty. Limited v. Bond International, 1985 (5) IPR 203
15. Jay music Limited V. Sunday Pictorial Newspapers Limited, 1960 (1) All E.R. 703