MRF Limited vs. Metro Tyres Limited

Delhi High Court | Manmohan J. | 1 July 2019 AIRONLINE 2019 DEL 972 | (2019) 262 DLT 734 | CS(COMM) 753/2017

Background

MRF Limited (plaintiff), a leading tyre manufacturer operating in approximately sixty-five countries, launched a tyre series called MRF NV Series “REVZ” in June 2015. To promote this product, the plaintiff produced an audio-visual advertisement titled “MRF NV Series present REVZ” which was first aired on television on 27 June 2015 and posted on YouTube on 29 June 2015. It was subsequently broadcast on forty-one television channels. The plaintiff claimed authorship of this advertisement as a cinematograph work under Section 2(f) of the Copyright Act, 1957 and claimed entitlement to its protection under Section 14 of the Act.

In October 2016, the plaintiff came to know that Metro Tyres Limited (defendant), a competitor also engaged in the manufacture and marketing of tyres, had produced and aired an advertisement titled “Bazooka Radial Tyres.” The plaintiff alleged that the defendant’s advertisement was a substantial and material copy of its own advertisement, sharing similar sequencing, form, treatment and expression including a spaceship-like gate opening into a futuristic chamber, a robotic arm manipulating an electronic panel, a robotic arm etching grooves with a red laser beam onto tyres and a similarly coloured motorcycle.

The plaintiff filed a complaint with the Advertising Standards Council of India (ASCI) in October 2016. The defendant responded by filing a suit before the Delhi High Court seeking to restrain the plaintiff from issuing groundless threats and to restrain ASCI from proceeding with the complaint a suit that was dismissed in limine in March 2017. The plaintiff thereafter filed the present suit for copyright infringement and sought an interim injunction under Order XXXIX Rules 1 and 2 CPC restraining the defendant from airing its advertisement.

The case raised a significant conflict between two High Courts: the Bombay High Court in Star India Private Limited v. Leo Burnett (India) Pvt. Ltd. (2003) had held that copyright infringement of a cinematograph film requires an actual physical copy made by a process of duplication; the Calcutta High Court in Shree Venkatesh Films Pvt. Ltd. v. Vipul Amrutlal Shah (2009) had taken the contrary view that substantial similarity suffices.

Issues for Determination

Whether copyright subsists in a cinematograph film as an independent work separate from and in addition to the underlying works that constitute it.
Whether a cinematograph film qualifies as an original work requiring intellectual creation, notwithstanding the absence of the word “original” in Section 13(1)(b) of the Copyright Act, 1957.
Whether the expression “to make a copy of the film” in Section 14(d)(i) of the Copyright Act, 1957 means only making a physical/mechanical duplicate of the film by a process of duplication or whether it extends to another film which substantially, fundamentally, essentially and materially resembles the original.
Whether the test for copyright infringement laid down by the Supreme Court in R.G. Anand v. M/s Deluxe Films and Ors. the “totality of impression” and “substance, foundation, kernel” test applies to cinematograph films or is confined to literary works.
Whether the Bombay High Court’s view in Star India Private Limited v. Leo Burnett (India) Pvt. Ltd. correctly states the law on infringement of copyright in a cinematograph film under Indian law and the Berne Convention.
Whether the plaintiff’s and defendant’s advertisements were substantially or materially similar so as to warrant the grant of an interim injunction.

Key Holdings of the Court

Copyright subsists in a cinematograph film as a work independent of its underlying components. The court held that under Section 2(y) read with Section 13(1)(b) of the Copyright Act, 1957, a cinematograph film is expressly recognized as a “work” in which copyright subsists, independently of the underlying literary, dramatic, musical or artistic works that constitute it. Section 13(4) preserves the separate, independent copyright in those underlying works. The Parliamentary Joint Committee on the Copyright Bill, 1955 had specifically stated that a cinematograph film is an independent work enjoying copyright apart from its component parts.
A cinematograph film is more than the sum of its parts. Relying on Justice V.R. Krishna Iyer’s observations in Indian Performing Right Society Ltd. v. Eastern India Motion Pictures Association, the court held that a film is a felicitous blend a composite work that is more than its constituent literary, dramatic, musical or visual elements taken individually. The film as the “superstructure” enjoys copyright separate from the “foundation” of the original underlying works.
Originality is a requirement for cinematograph films, brought in through Sections 13(3)(a) and 2(d). Though the word “original” does not appear in Section 13(1)(b), the court held that the requirement of originality is brought in through Section 13(3)(a) which denies copyright to a film of which a substantial part is an infringement of copyright in any other work and through Section 2(d), which designates the producer as the “author.” Authorship necessarily entails originality. The court held that originality in this context means “intellectual creation” the work must not be copied but must originate from its author; it does not require novelty in the patent law sense.
“To make a copy of the film” in Section 14(d)(i) is not confined to physical duplication. The court rejected the narrow interpretation adopted by the Bombay High Court in Star India. It held that the ordinary dictionary meaning of “copy” to imitate or reproduce is wider than a physical mechanical duplicate and that the term “copy” is not defined restrictively under the Copyright Act, 1957 (unlike the UK Act, 1988). Drawing on the WIPO Guide which uses “copying” as a synonym for “reproduction” covering any manner or form, the court held that “to make a copy of the film” includes another film which substantially, fundamentally, essentially and materially resembles/reproduces the original.
The R.G. Anand test applies to cinematograph films. The court held that the test of “substance, foundation, kernel” and the “totality of impression of an average viewer” laid down in R.G. Anand v. M/s Deluxe Films is not confined to literary works and is of general application. The “substantiality” test is found in the opening words of Section 14 and therefore applies equally to Section 14(d). Accordingly, blatant copying of the fundamental, essential and distinctive features of a cinematograph film constitutes copyright infringement.
The Bombay High Court decision in Star India is incorrect in law. The court respectfully disagreed with Star India on two grounds: first, it gives a restricted and narrow interpretation not warranted by the natural and ordinary meaning of the statutory provisions of the Copyright Act, 1957; second, it is not in consonance with Article 14bis(1) of the Berne Convention, which expressly provides that a cinematographic work shall be protected as an original work and that its owner shall enjoy the same rights as the author of an original work. The court further noted that Star India had relied extensively on Norowzian v. Arks Ltd. (1996), which had been overruled on the point of law by the Court of Appeal in Norowzian (No. 2) (2000) a fact not brought to the Bombay High Court’s attention.
The Copyright Act, 1957 must be interpreted in consonance with the Berne Convention. India became party to the Berne Convention on 1 April 1928. The Copyright Act, 1957 was enacted to comply with India’s international obligations. Under Article 14bis(1) of the Berne Convention, a cinematographic work is to be protected as an original work. Following Commissioner of Customs v. G.M. Exports, the court held that where India is a signatory to an international treaty and a statute is enacted in furtherance of it, a purposive construction consistent with the treaty is preferred and any difference between statutory language and the treaty is to be resolved in favour of treaty-consistency.
Interim injunction refused on facts. Despite laying down the broader legal test, the court found after viewing both advertisements that the two were neither substantially, materially, nor essentially similar on the R.G. Anand test. The plaintiff’s advertisement emphasised the manufacturing process of the tyre and its radial design in a highly futuristic setting; the defendant’s advertisement focused on the tyre’s durability across different terrains. The common elements robotic arm, red motorbike did not constitute the “substance, foundation or kernel” of the plaintiff’s work. The court also noted that the suit had been filed more than one year after the defendant’s advertisement was first aired, which disentitled the plaintiff to interim relief.

Statutory Provisions Involved

Section 2(f), Copyright Act, 1957 defines “cinematograph film” as any work of visual recording (including sound recording accompanying such visual recording), with “cinematograph” construed to include any work produced by any process analogous to cinematography including video films. The evolution of this definition through the amendments of 1984, 1994 and 2012 was traced by the court.
Section 2(y), Copyright Act, 1957 defines “work” to include a cinematograph film, a literary, dramatic, musical or artistic work and a sound recording.
Section 2(d), Copyright Act, 1957 defines “author” in relation to a cinematograph film as the producer.
Section 13(1)(b), Copyright Act, 1957 provides that copyright subsists in cinematograph films as a class of “works.”
Section 13(3)(a), Copyright Act, 1957 provides that copyright shall not subsist in a cinematograph film if a substantial part of the film is an infringement of copyright in any other work. The court used this to imply the requirement of originality in films.
Section 13(4), Copyright Act, 1957 provides that copyright in a cinematograph film shall not affect the separate copyright in any underlying work.
Section 14(d)(i), Copyright Act, 1957 defines copyright in a cinematograph film as including the exclusive right to make a copy of the film, including a photograph of any image forming part thereof or storing it in any medium. The central interpretive dispute in the case turned on the meaning of “to make a copy of the film.”
Articles 2, 9(1), 14 and 14bis(1), Berne Convention invoked by the court to give a purposive and treaty-consistent interpretation to the Copyright Act, 1957. Article 14bis(1) was particularly central: it expressly provides that a cinematographic work shall be protected as an original work and that its owner shall enjoy the same rights as the author of an original work.
Article 51(c), Constitution of India the Directive Principle directing the State to foster respect for international law and treaty obligations, relied upon to support the treaty-consistent purposive interpretation of the Act.

Reasoning of the Court

The court’s reasoning operated on three distinct planes structural analysis of the Act, treaty obligations under the Berne Convention and application of the legal test to the facts.

On the structural analysis, the court observed that the Copyright Act, 1957 is materially different from the UK Copyright Act, 1988 and the Australian Copyright Act, 1968. Under both the latter statutes, a film is protected as a “recording” a tangible object rather than as a “work.” The Indian Act, however, expressly defines a cinematograph film as a “work of visual recording” and includes it within the definition of “work” under Section 2(y), conferring on it the same structural status as literary, dramatic, musical and artistic works. Further, Section 2(d) designates the producer as the “author” a concept that is inseparable from originality and intellectual creation. Section 13(3)(a), by denying copyright to a film that substantially infringes another work, implicitly demands that the film itself must not be a copy it must possess originality greater than its constituent parts.

The court next reasoned that the ordinary, dictionary meaning of “copy” to imitate or reproduce is wider than a mechanical duplicate and there was no good reason under Indian law to read down this term to mean only physical duplication. The term “copy” is used without restrictive definition in the Copyright Act, 1957, unlike the UK Act, 1988. The WIPO Guide and international copyright practice use “copying” and “reproduction” interchangeably and define “copy” to include any manner or form of reproduction whether tangible or intangible. The substantiality qualifier in the opening words of Section 14 “to do or authorise the doing of any of the following acts in respect of a work or any substantial part thereof” applies to Section 14(d) no less than to other sub-sections, confirming that protection extends to substantial reproduction.

On the Berne Convention, the court held that Article 14bis(1) is clear and unequivocal: a cinematographic work shall be protected as an original work and its owner shall enjoy the same rights as the author of an original work. Since India is a signatory to the Berne Convention and the Copyright Act, 1957 was enacted to fulfil India’s international obligations, a purposive interpretation consistent with the treaty was mandated. The Bombay High Court’s narrow interpretation confining infringement to physical duplication was inconsistent with this treaty obligation. It was further flawed because it relied on Norowzian (1996), which had been overruled on this precise point of law by the Court of Appeal in Norowzian (No. 2) (2000).

On the facts, the court applied the R.G. Anand test and viewed both advertisements carefully. It concluded that the overall expression, emphasis and treatment of the two advertisements were different: the plaintiff’s focused on the futuristic manufacturing process and radial design, while the defendant’s focused on terrain durability. Common elements such as robotic arms and a red motorcycle did not constitute the “substance, foundation or kernel” of the plaintiff’s advertisement. No average viewer would get an unmistakable impression that the defendant’s work was a copy of the plaintiff’s.

Doctrinal Significance

Resolving a High Court conflict on the scope of copyright in cinematograph films. The case directly addresses and resolves at least at the Delhi High Court level the conflict between Star India (Bombay) and Shree Venkatesh Films (Calcutta). The Delhi High Court’s holding that infringement of copyright in a cinematograph film does not require physical duplication but extends to substantial reproduction represents a significant expansion of film copyright protection in India.
R.G. Anand test applied to cinematograph films. The extension of the “totality of impression” test and the “substance, foundation, kernel” test from literary works to cinematograph films is a major doctrinal contribution. It means that copyright in an advertisement, film or other cinematograph work can be infringed by a separately produced work that is substantially similar without any literal copying of frames or footage.
Cinematograph film protected as an original intellectual creation, not merely as a recording. The court’s holding that a film is a “work of visual recording” as opposed to a mere “recording” as under UK law and that it must satisfy the requirement of originality as an intellectual creation, places Indian copyright law in alignment with the civil law tradition and with the Berne Convention, rather than with the narrower common law tradition of the UK and Australia.
Treaty-consistent purposive interpretation of the Copyright Act. The court’s holding that the Copyright Act, 1957 must be interpreted purposively and in consonance with the Berne Convention particularly where statutory language is potentially ambiguous is an important methodological principle for intellectual property jurisprudence in India. It extends the Supreme Court’s approach in Commissioner of Customs v. G.M. Exports to copyright law.
Bombay High Court’s Star India decision declared not to state the law correctly. The Delhi High Court’s express disagreement with Star India grounded both in statutory interpretation and in treaty obligations creates a significant jurisprudential divide between two High Courts on a question of enormous importance to the Indian entertainment and advertising industries. The question remains open for authoritative resolution by the Supreme Court.
Delay as a bar to interim injunction in copyright cases. The court’s refusal of interim injunction partly on the ground of more than one year’s delay in filing suit reinforces the principle that a plaintiff who sits on its rights while the defendant continues to air the allegedly infringing work disentitles itself to urgent interim relief applicable across intellectual property law.

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