Krishika Lulla & Ors. v. Shyam Vithalrao Devkatta & Anr.

Supreme Court of India | Decided: 15 October 2015 Criminal Appeal No. 258 of 2013 with Criminal Appeal No. 259 of 2013 Bench: Hon’ble Mr. Justice S.A. Bobde & Hon’ble Mr. Justice Madan B. Lokur Reportable

Background

The respondent No. 1, Shyam Vithalrao Devkatta, claimed copyright in a synopsis of a story he had written titled “Desi Boys”. According to his case, he had got the synopsis of the story registered with the Film Writers Association on November 25, 2008. Subsequently, a friend, Mr. Ramesh Bhatnagar, informed him that the son of film director David Dhawan required a comedy film story. On October 14, 2009, Devkatta emailed the concept of his story in the form of a synopsis as an attachment to Mr. Bhatnagar, with the words “Dear Friend, just see the attachment.” Mr. Bhatnagar, in turn, forwarded the story by email to one Ahsan Sagar on October 15, 2009, describing it as “just an idea.” The material forwarded was, on record, only a short synopsis of the concept titled “Desi Boys” and not the entire story with dialogues and screenplay. Devkatta did not receive any response thereafter, but subsequently saw promotional material for a film bearing the title “Desi Boys”, actually spelt “Desi Boyz”. He alleged that the adoption of this title infringed the copyright in the title of his story synopsis. Devkatta admittedly had not seen the film and stated in his complaint that he could not say whether any part of the story written by him had also been infringed.

The appellants released their film titled “Desi Boyz” worldwide, including in India, on November 25, 2011. According to the appellants, the film was based on a story written by one Milap Zaveri under an agreement dated September 2, 2009, for which the author was paid by cheque. The shooting of the film commenced on November 7, 2010 and Devkatta came to know of the film around October 12, 2011.

Devkatta filed a complaint, Criminal Case No. SW/332 of 2011, under Section 63 of the Copyright Act, 1957, which was later amended to add charges under Sections 406 and 420 read with Section 34 of the Indian Penal Code, 1860, against five persons. The learned Metropolitan Magistrate, upon due verification, issued process against all the accused except the fifth. Four of the accused approached the Bombay High Court by way of two criminal miscellaneous applications under Section 482 of the Code of Criminal Procedure, 1973, seeking quashing of the complaint and the process issued. By judgment and order dated March 22, 2012, the learned Single Judge of the Bombay High Court, while hearing the matter as part of a batch of similar cases, dismissed the applications, observing in paragraph 97 of the judgment that the facts alleged by the appellants that the story converted into the film had been written by an author who was paid for it under an agreement predating the complaint could only be determined at trial and that there was on the face of the record neither abuse of process nor failure of justice. The High Court did not render any decision on the substantive legal issues raised by the appellants.

Aggrieved by the dismissal, the appellants Krishika Lulla and others filed the present appeals before the Supreme Court of India. The central submission advanced by Mr. Raju Ramchandran, learned counsel for the appellants, was that the respondent had claimed infringement of copyright in the mere title of a story synopsis and that no copyright subsists in the title of a literary work standing alone; therefore, no complaint under Section 63 of the Copyright Act, which penalises deliberate infringement of copyright, was tenable. It was submitted that the film “Desi Boyz”, starring Akshay Kumar, John Abraham, Deepika Padukone and Anupam Kher among others, bore no similarity to Devkatta’s story the characters, scenes and settings being entirely different and that the only commonality alleged was the title.

Issues for Determination

1. Whether copyright subsists in the title “Desi Boys” given by the respondent No. 1 to the synopsis of his story, such that its use (in the form “Desi Boyz”) as the title of the appellants’ film would constitute infringement of copyright under the Copyright Act, 1957.
2. Whether a title, standing alone and apart from the work to which it pertains, qualifies as a “literary work” within the meaning of Section 13(1) of the Copyright Act, 1957, so as to be a category of work in which copyright can subsist.
3. Whether the words comprising the title “Desi Boys” possessed the requisite originality to qualify for copyright protection, having regard to the commonplace nature of the two words used.
4. Whether a criminal complaint under Section 63 of the Copyright Act, 1957, read with Sections 406 and 420 of the Indian Penal Code, 1860, was tenable on the basis of an alleged infringement confined solely to the title of a literary work, where the complainant had not seen the impugned film and could not allege similarity in the underlying story.
5. Whether the Bombay High Court was correct in declining to quash the complaint and process under Section 482 of the Code of Criminal Procedure, 1973, on the ground that the question whether the appellants’ story was independently authored could only be determined at trial, without first examining the threshold legal tenability of the complaint based on alleged title infringement.

Key Holdings of the Court

1. The Supreme Court held that no copyright subsists in the title “Desi Boys” of the respondent’s story synopsis. The Court held that a title, by itself, is not a proper subject matter of copyright, being in the nature of a name of a work and incomplete in itself without the work that it denotes.
2. The Court held that a title does not qualify for description as a “work” under Section 13 of the Copyright Act, 1957, since it is incomplete in itself and merely refers to the work that follows. The Court further held that the combination of the two words “Desi” and “Boys” was extremely commonplace in India and could not be said to possess any originality attributable to the respondent and that these words did not even qualify for description as “literary work” within the ordinary meaning of that expression.
3. The Court held that the mere use of common words, such as those comprising the title in question, cannot qualify as “literary” in nature and accordingly no copyright could be said to subsist in the title under Section 13 of the Act, nor could a criminal complaint for infringement be considered tenable on such a basis.
4. The Court held, drawing on a consistent line of English, Privy Council, Madras High Court and Delhi High Court authority, that copyright generally does not subsist in the title of a literary work and that a plaintiff or complainant is not entitled to relief on the basis of title alone, except in an action for passing off or in respect of a registered trademark comprising such a title. The Court clarified that this general principle does not foreclose the possibility that, in exceptional cases, a title of sufficiently extensive scale and important character requiring genuine invention might be a proper subject of protection, though the present case did not fall within any such exception.
5. The Court held that since there was no copyright in the title “Desi Boys”, no question of infringement of such a title could arise and the prosecution founded on allegations of infringement of copyright in the title was untenable as a matter of law.
6. The Court rejected the submission of counsel for the respondents that the applications under Section 482 Cr.P.C. were correctly dismissed because the facts alleged depended on evidence to be led at trial. The Court held that since it had throughout been the respondent’s own case that he claimed copyright only in the title of the synopsis and that he had not even seen the appellants’ film nor knew its story the question of whether copyright subsisted in a mere title was a pure question of law that could and should have been determined at the threshold, without requiring a trial.
7. The Court allowed both criminal appeals and quashed Criminal Case No. SW/332 of 2011 pending before the learned Metropolitan Magistrate, Mumbai.

Statutory Provisions Involved

Section 13 of the Copyright Act, 1957 enumerates the classes of works in which copyright subsists in India, namely original literary, dramatic, musical and artistic works, cinematograph films and sound recordings. Section 13(1) was the central statutory provision examined by the Court, since the entire case turned on whether the title “Desi Boys” could be classified as an “original literary work” within the meaning of this provision so as to attract copyright protection.

Section 63 of the Copyright Act, 1957 makes the deliberate infringement or abetment of infringement, of copyright in a work a punishable criminal offence. This was the primary statutory provision under which the respondent’s complaint was filed and the Court’s finding that no copyright subsisted in the title in question rendered the prosecution under this section untenable.

Section 406 of the Indian Penal Code, 1860 defines the offence of criminal breach of trust and Section 420 defines the offence of cheating and dishonestly inducing delivery of property. These provisions, read with Section 34 IPC (acts done by several persons in furtherance of common intention), were added by amendment to the original complaint, though the Supreme Court’s decision focused principally on the tenability of the copyright infringement allegation under Section 63 of the Copyright Act.

Section 482 of the Code of Criminal Procedure, 1973 preserves the inherent powers of the High Court to make such orders as may be necessary to give effect to any order under the Code, to prevent abuse of the process of any court or otherwise to secure the ends of justice. The appellants’ applications before the Bombay High Court and ultimately the appeals before the Supreme Court, were founded on the exercise of this inherent jurisdiction to quash a criminal complaint that was legally untenable on its face.

Reasoning of the Court

The Supreme Court approached the matter by first isolating the precise nature of the claim made by the respondent. The Court noted that it was the respondent’s own consistent case that he claimed copyright only in the title “Desi Boys” given to the synopsis of his story, that he had not made any film by that name, that he had not seen the appellants’ film and that he could not say whether any part of his story had been used in it. Given this clearly circumscribed claim, the Court held that it was unnecessary to examine whether a mere synopsis or note of a story amounts to a literary work, since the only grievance pressed was infringement of the title itself.

The Court then proceeded to a close textual analysis of Section 13(1) of the Copyright Act, 1957, observing that copyright subsists, among other things, in an “original literary work.” The Court reasoned that a title, in the first place, does not qualify as a “work” at all, since it is incomplete in itself and merely refers to and identifies the work that follows; a title without the underlying work to which it is attached has no independent existence as a creative work. Secondly, the Court found that the title “Desi Boys” itself lacked the originality necessary for copyright protection, since “Desi” and “Boys” are extremely commonplace words in India whose combination could not be said to originate distinctively from the respondent. Applying the Oxford English Dictionary’s definition of “literary” as concerning the writing, study or content of literature, particularly of a kind valued for quality of form, the Court concluded that the mere use of such common words could not be described as “literary” in character.

The Court then surveyed a substantial body of precedent on the question of copyright in titles. It examined the English case of Hogg v. Maxwell (1866-67) L.R. 2 Ch. App. 307, where the court had held that copyright could not be obtained merely by registering a single word as the title of a book or magazine, since copyright contemplated by statute must be in a volume or part of a volume communicated to the public, not in a single word standing alone. The Court next examined the Privy Council’s decision in Francis Day & Hunter Ltd. v. Twentieth Century Fox Corporation Ltd. and Ors., AIR 1940 PC 55, which had considered the alleged infringement of copyright in the title of a song (“Roll Along, Prairie Moon” type case dealing with “the bank at Monte Carlo” theme) when adopted as the title of a film and had held that in general a title alone is not a proper subject matter of copyright since it does not typically involve sufficient literary composition or substance, while leaving open the possibility that a title of unusually extensive scale and character requiring genuine invention might be protectable. The Court found this precedent particularly apposite, since it involved facts closely analogous to the present case a title from one medium (a song) being adopted for the title of a work in a different medium (a film) and the words in question there, like here, were ordinary and commonplace.

The Court further considered the Madras High Court’s decision in E.M. Forster and Anr. v. A.N. Parasuram, AIR 1964 Madras 331, concerning an alleged infringement of copyright in the title of the book “A Passage to India” by its use, with a qualifying sub-title, for a student’s guide, where the court had affirmed that there is no copyright in a title. The Court also considered the Delhi High Court’s decision in Kanungo Media (P) Ltd. v. RGV Film Factory & Ors., (2007) ILR 1 Delhi 1122, where Sikri, J. (as His Lordship then was) had declined an injunction against the use of the title “Nishabd” for a film, holding, with reference to American authority, that a junior user’s use of a senior user’s literary title does not by itself infringe copyright, since copyright infringement cannot arise merely from identity or similarity of titles. The Court additionally relied upon the Madras High Court’s decision in R. Radha Krishnan v. Mr. A.R. Murugadoss & Ors., 2013-5-L.W. 429, which had followed Kanungo Media and held that the words “Raja Rani,” being words of common parlance denoting a king or queen, could not be protected under copyright law.

The Court endorsed the position taken in these decisions as laying down the correct law and additionally drew upon the academic authority of Copinger and Skone James on Copyright (16th Edition), which observed that English courts have been reluctant to confer copyright protection on titles of newspapers, magazines and books, that there is generally no property in a name or title standing alone unless it is the subject of goodwill or a registered trademark and that protection of film titles through copyright infringement actions is particularly difficult given the requirements of originality and substantiality, such that an owner’s remedy for unauthorised use of a well-known film title is more likely to lie in passing off or trademark registration.

Having surveyed this body of authority, the Court concluded that while copyright does not generally subsist in the title of a literary work, this does not foreclose the possibility that in an appropriate case, a title of sufficiently extensive scale and importance, requiring genuine invention, might be a proper subject of copyright protection citing the observation of Jessel, M.R. in Dicks v. Yates, (1881) 18 Ch D 79, that there might be copyright in a title such as “a whole page of title or something of that kind requiring invention.” However, the Court found that the title “Desi Boys” did not fall within any such exceptional category, comprising as it did two extremely commonplace words bearing no mark of originality or invention. Accordingly, the Court held that no copyright subsisted in the title and that the prosecution founded on its alleged infringement was untenable as a matter of law, requiring no further factual inquiry or trial.

On the question of whether the High Court was correct to leave the matter to trial, the Court rejected the respondent’s submission that the appellants’ defence that their film was based on an independently authored story raised disputed questions of fact requiring evidence. The Court reasoned that this missed the point entirely: the respondent’s own case, throughout, was confined to an allegation of title infringement, divorced from any claim regarding the underlying story (which the respondent admittedly had not even compared with the film). Since the legal question of whether copyright could subsist in a title at all was a pure question of law capable of determination without any evidence, the High Court ought to have addressed and resolved this threshold legal issue rather than deferring the entire matter to trial.

Doctrinal Significance

The judgment in Krishika Lulla & Ors. v. Shyam Vithalrao Devkatta & Anr. is a landmark and frequently cited authority in Indian copyright law for the settled proposition that copyright does not subsist in the title of a literary, dramatic, musical or artistic work, standing alone and apart from the work itself. The Supreme Court’s pronouncement on this issue, being the first occasion on which the apex court directly addressed the question, brought authoritative finality to a position that had previously been recognised only by High Courts in India and by English and Privy Council precedent.

The judgment’s doctrinal core lies in its textual reasoning under Section 13(1) of the Copyright Act, 1957: a title is not a “work” in itself because it is incomplete without the underlying creative content it denotes and even where a title comprises words capable of being described as literary in some general sense, the requirement of originality under copyright law demands more than the mere combination of commonplace words. This two-pronged reasoning incompleteness as a “work” and want of originality provides a durable analytical framework for future courts confronted with similar claims of title infringement.

The judgment also performs an important function in clarifying the boundary between copyright law and the law of passing off (and trademark law) in relation to titles, names and similar short expressions. By expressly noting that a complainant or plaintiff aggrieved by the unauthorised use of a title is not without remedy, but must pursue that remedy through an action for passing off or through registration and enforcement of a trademark rather than through copyright infringement, the Court provided important guidance on the correct legal characterisation and pathway for such disputes, particularly significant in the Indian film industry where disputes over film titles are frequent and where bodies such as the Indian Motion Picture Producers’ Association maintain title registration systems that operate independently of the copyright regime.

The Court’s careful preservation of a narrow exception that a title of sufficiently extensive scale and character requiring genuine invention might, in principle, be a proper subject of copyright protection ensures that the judgment does not operate as an absolute and inflexible rule, while making clear that this exception is to be applied only in truly exceptional cases and not to ordinary, commonplace titles such as the one at issue in this case.

Finally, the judgment is significant for its procedural guidance on the exercise of the inherent jurisdiction under Section 482 of the Code of Criminal Procedure, 1973. The Court’s holding that a complaint founded entirely on a legally untenable premise here, the non-existence of copyright in a title should be quashed at the threshold rather than relegated to trial reinforces the principle that criminal process ought not to be permitted to continue where the complaint, even taken at its highest and assuming all factual allegations to be true, discloses no offence as a matter of law. This aspect of the judgment has continuing relevance beyond copyright law, as a reminder to courts exercising quashing jurisdiction to distinguish between genuine factual disputes requiring trial and pure questions of law that are capable of resolution at the preliminary stage, thereby preventing the misuse of criminal process to pursue claims that cannot, in law, succeed.

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