Syndicate of the Press of the University of Cambridge v. B.D. Bhandari & Anr.

(RFA (OS) No. 21 of 2009) with The Chancellor, Masters and Scholars of the University of Oxford v. Narendra Publishing House & Ors. (FAO (OS) No. 458 of 2008) High Court of Delhi at New Delhi | Decided: 3 August 2011 Bench: Hon’ble Mr. Justice A.K. Sikri & Hon’ble Mr. Justice Suresh Kait Reportable

Background

This judgment disposes of two intra-court appeals heard together by the Division Bench because they raised common questions on copyright in textbook exercises and the permissibility of “guide books” published by third parties.

RFA (OS) No. 21 of 2009 –  Cambridge v. Bhandari: The appellant, Cambridge University Press, published “Advanced English Grammar” by Martin Hewings   a self-study reference and practice book for advanced South Asian students, prescribed for B.A. Parts I, II and III at Guru Nanak Dev University, Amritsar. The respondents published three “MBD English Guide” books (one each for B.A./B.Sc./B.Com Parts I, II and III of Guru Nanak Dev University), which the appellant alleged contained illegal, unauthorised verbatim reproduction of the grammar exercises and answer keys from Units 1 to 120 of its publication. The appellant filed CS (OS) No. 1274 of 2004, obtained an ex parte ad interim injunction (later confirmed during the suit) and nine issues were framed. The respondents contested up to a point, filing a written statement and contesting interim relief, but stopped appearing from March 1, 2007 and were proceeded ex parte by order dated April 29, 2008. The appellant’s evidence by affidavit of three witnesses went uncontroverted. The respondents had not actually contested the appellant’s copyright; their defence was that they published “guides” (termed “Kunji” or “Dukki”), that their book differed in format (illustrations absent, single rather than double answer choices, different placement of answers) and that since the appellant’s book was a University-prescribed course book, its use fell within “fair use” and the work had entered the public domain. The learned Single Judge dismissed the suit, holding the exercises lacked originality and constituted no original literary work and that since the book was prescribed by the University, the questions/answers became “questions to be answered in an examination,” bringing the respondents’ use within Section 52(1)(h) of the Copyright Act, 1957.

FAO (OS) No. 458 of 2008 – Oxford v. Narendra Publishing House: The appellant, Oxford University Press, published “Oxford Mathematics Part A” and “Part B,” specially adapted editions of CBSE Mathematics XI Part A and Part B authored by Dr. A.K. Roy (Head of the Department of Mathematics, Birla Higher Secondary School, Kolkata), published pursuant to an agreement dated August 26, 2003 with the Jammu & Kashmir State Board of School Education and a copyright assignment from Dr. Roy dated September 10, 2003 and prescribed for Class XI students under the J&K Board. The respondents published “Teach Yourself Mathematics (Fully Solved) Part A” and “Part B,” authored by Prof. Harish Sharma, which the appellant alleged copied in toto the exercises and answers from the appellant’s books without bringing any new problems or making ostensible changes to their order. The appellant issued cease-and-desist notices dated November 5, 2005 and December 10, 2005, then filed CS (OS) No. 1658 of 2005 seeking permanent injunction, delivery up and rendition of accounts, along with applications for ex parte injunction and appointment of a Local Commissioner. The learned Single Judge initially granted an ex parte injunction by order dated December 5, 2005 and appointed a Local Commissioner, finding the questions and answers an exact replica. The respondents filed a written statement on January 2, 2006 pleading fair use and that the appellant’s own book contained at least 101 questions verbatim from earlier works by R.D. Sharma and other publishers (S. Chand, Laxmi Publications) and applied under Order XXXIX Rule 4 for vacation of the injunction. By order dated September 17, 2008, the learned Single Judge vacated the interim injunction, holding prima facie that the subject works lacked the minimum degree of creativity required, that the “learning curve” was dictated by the Board-prescribed syllabus rather than original to the appellant and that the respondents’ step-by-step solutions (absent from the appellant’s books) constituted a “review” amounting to fair dealing under Section 52(1)(a)(ii).

Issues for Determination

1. Whether the grammar exercises and answer keys in Cambridge’s “Advanced English Grammar,” and the mathematics questions and answers in Oxford’s “Oxford Mathematics,” constituted “original literary work” within the meaning of Section 13 of the Copyright Act, 1957, applying the “modicum of creativity” standard rather than the discredited “sweat of the brow” doctrine.
2. Whether the prescription of a textbook by a university or school board for its students has the effect of placing the work or the exercises/questions contained in it, into the “public domain,” and whether “public domain” and “fair use” are distinct legal concepts operating in different fields.
3. Whether Section 52(1)(h) of the Copyright Act, 1957 (reproduction by a teacher or pupil in the course of instruction or as part of examination questions/answers) could be invoked as a defence by commercial publishers who were neither teachers, pupils, nor persons giving or receiving instruction, where the publication was undertaken for commercial gain.
4. What is the correct legal test for determining whether a “guide book” published by a third party, based on a prescribed textbook, constitutes a permissible “derivative work” and “fair use”/”fair dealing,” as opposed to an infringing reproduction of the original textbook   specifically, whether the guide book must be shown to be “transformative” in character.
5. In the Oxford appeal specifically, whether the appellant’s claim to copyright in its mathematics questions was undermined by the respondents’ showing that a substantial number of those questions were themselves verbatim reproductions from earlier, independently authored textbooks (R.D. Sharma, S. Chand Publications, Laxmi Publications).
6. Whether the respective guide books published by the respondents in both appeals were, on the facts, sufficiently different in character, format and purpose from the appellants’ original works so as to qualify as non-infringing “fair use,” applying the transformative-use test.

Key Holdings of the Court

On originality (common to both appeals): The Division Bench held that the test of originality in India, following Eastern Book Company v. D.B. Modak, requires a “modicum of creativity”   more than mere labour, but less than novelty   and that this standard was satisfied in both cases. In the Cambridge appeal, the court held that devising grammar exercises calibrated to a specific pedagogical scheme (with blank-fill exercises, hints and a structured “explanation-then-practice” format across 120 units) involved sufficient skill, judgment and creativity to merit copyright, reversing the Single Judge’s finding to the contrary. In the Oxford appeal, the court similarly held that devising mathematics questions and structuring their sequence and difficulty level to create a “learning curve” was a matter of creativity, rejecting the Single Judge’s view that mathematical questions are mere “expressions of laws of nature” incapable of copyright protection   while nonetheless flagging (see below) a separate, fact-specific doubt about the originality of the particular questions actually copied.

On public domain (Cambridge appeal): The court held that “public domain” and “fair use” are conceptually distinct: public domain means no copyright protection exists at all (arising from non-qualification under Section 13, voluntary relinquishment under Section 21 or expiry of the copyright term under Section 22), whereas fair use presupposes a subsisting copyright that is nonetheless not infringed because the use falls within Section 52. The court held that mere prescription of a book as a university textbook does not amount to relinquishment of copyright under Section 21 and that the appellant’s copyright in “Advanced English Grammar” had neither been relinquished nor expired. The Single Judge’s finding that the book had entered the public domain was therefore reversed.

On Section 52(1)(h) (Cambridge appeal): The court held that Section 52(1)(h) protects only a teacher or pupil reproducing a work in the course of instruction or reproduction as part of examination questions/answers   and is not available to commercial publishers who are neither teachers nor pupils nor persons giving or receiving instruction. Since the respondents published their guides for commercial profit, the court held Section 52(1)(h) had no application, reversing the Single Judge on this point as well.

On the guide-book/transformative-use test (both appeals): The court formulated and applied a single test across both appeals: a guide book is a permissible derivative work and qualifies as fair use if it is “transformative”   i.e., if it serves a purpose substantially different from the original textbook and does not merely supersede or substitute for it, with only superficial changes. The guiding inquiry is whether the guide book provides explanation, step-by-step process or detailed analysis not present in the original, with the objective of assisting weaker students. The court held that both respondents’ guide books met this test:

• In the Cambridge appeal, the respondents’ guide covered English literature, prose, comprehension and letter writing in addition to grammar (unlike the appellant’s grammar-only book), was priced and formatted differently, omitted “purple patches” of the original, included independent introductions to units and did not reproduce the appellant’s theoretical/explanatory content   leading the court to dismiss the appeal and uphold the dismissal of the suit (on this distinct ground from the Single Judge’s reasoning, since the court had already rejected the Single Judge’s public-domain and Section 52(1)(h) reasoning).
• In the Oxford appeal, the respondents’ guide provided step-by-step working for mathematical problems that was entirely absent from the appellant’s textbook (which contained only theory and bare questions), did not copy the appellant’s theoretical content and was therefore held to be “transformative,” amounting to a “review” under Section 52(1)(a)(ii)   affirming the Single Judge’s ultimate conclusion (though via a more extensively reasoned originality analysis) and dismissing the appeal against vacation of the interim injunction.

On originality undermined by prior copying (Oxford appeal only): The court held that the respondents had raised a strong, prima facie unrebutted showing that a significant number of the questions in Oxford’s own textbook were themselves verbatim reproductions from earlier textbooks by other authors (R.D. Sharma, S. Chand Publications, Laxmi Publications)   a fact the appellant did not dispute, offering only the explanation that such instances were “not many.” The court held this raised sufficient doubt, at the interim injunction stage, about the originality of the appellant’s own claimed copyright, to be resolved at trial and treated this as an independent factor supporting refusal of interim injunctive relief.

Final orders: Both appeals were dismissed. In the Cambridge appeal, the dismissal of the suit was upheld (the Single Judge’s reasoning on originality, public domain and Section 52(1)(h) was substantially overturned, but the ultimate result was affirmed on the independent ground that the guide book was a transformative derivative work). In the Oxford appeal, the order vacating the ex parte interim injunction was upheld.

Statutory Provisions Involved

Section 13 of the Copyright Act, 1957 enumerates the classes of works   original literary, dramatic, musical and artistic works, cinematograph films and records   in which copyright subsists. This was the foundational provision in both appeals for assessing whether the grammar exercises and mathematics questions qualified as “original literary work.”

Section 14 of the Copyright Act, 1957 confers upon the copyright owner the exclusive bundle of rights, including reproduction and was invoked alongside Section 13 as confirming that, once a work qualifies for protection, no person may copy it except in accordance with the Act.

Section 21 of the Copyright Act, 1957 permits an author to relinquish copyright by giving notice in the prescribed form to the Registrar of Copyrights, upon which the relinquished rights cease to exist. This provision was central to the court’s rejection of the “public domain” defence in the Cambridge appeal   the court holding that mere university prescription of a textbook, absent a formal notice under this section, does not amount to relinquishment.

Section 22 of the Copyright Act, 1957 provides that copyright subsists for the lifetime of the author and sixty years from the beginning of the calendar year following the author’s death. The court noted that this term had not expired in either case and was therefore not a basis for either work having entered the public domain.

Section 52(1)(a) of the Copyright Act, 1957 protects “fair dealing” with a literary, dramatic, musical or artistic work, including for purposes of criticism or review. This provision was central to the Oxford appeal, where the respondents’ step-by-step problem-solving guide was held to amount to a “review” under sub-clause (ii) of this provision, falling within fair dealing.

Section 52(1)(h) of the Copyright Act, 1957 (the pre-2012 amendment provision, since renumbered, corresponding to present Section 52(1)(i)) excludes from infringement the reproduction of a literary, dramatic, musical or artistic work by a teacher or pupil in the course of instruction or as part of examination questions or answers. This provision was the central focus of the Cambridge appeal; the court held it could not be invoked by commercial publishers who were neither teachers nor pupils nor persons giving or receiving instruction, reversing the Single Judge’s application of this clause to the respondents’ guide books.

Reasoning of the Court

The Division Bench’s reasoning proceeded along parallel but distinct analytical tracks for the two appeals, unified by a common legal framework on originality and the guide-book/transformative-use test.

On originality, the court extensively surveyed Indian and comparative authority   including University of London Press v. University Tutorial Press (the “expression, not idea” test), Ladbroke (Football) v. William Hill (Football) (copyright in compilations involving skill, judgment and labour, illustrated through the football-coupon analogy), Eastern Book Company v. D.B. Modak (the Indian “modicum of creativity” standard, displacing pure “sweat of the brow”) and Feist Publications v. Rural Telephone Service (the U.S. “more than a de minimis quantum of creativity” standard)   concluding in both appeals that devising pedagogically structured exercises and questions, calibrated to a specific learning level and learning curve, involved sufficient skill, judgment and creative selection to meet the modicum-of-creativity threshold, notwithstanding that the underlying subject matter (English grammar rules, mathematical laws) was itself in the public domain or not copyrightable as an “idea.”

On the public domain/fair use distinction in the Cambridge appeal, the court engaged in a detailed conceptual analysis   drawing on Black’s Law Dictionary, the U.S. Court of Appeals decision in Golan v. Gonzales (tracing the “copyright sequence” from creation to copyright to eventual public domain) and Indian precedents on relinquishment under Section 21 (Rupendra Kashyap v. Jiwan Publishing House; Agarwala Publishing House v. Board of Higher Secondary & Intermediate Education; Jagdish Prasad Gupta v. Parmeshwar Prasad Singh)   to hold that these were two analytically separate doctrines that the Single Judge had improperly conflated. The court also distinguished and declined to follow the older view in Mohamed Abdul Jalil v. Ram Dayal and Romesh Chowdhry v. Ali Mahomed Nowsheri (which had suggested that university-prescribed syllabi enter the public domain), holding that those cases, properly understood, supported only the narrower proposition that a prescribed book becomes subject to review or criticism   not that it loses copyright protection altogether.

On the unavailability of Section 52(1)(h) to commercial publishers in the Cambridge appeal, the court reasoned that permitting a publisher to invoke this provision would effectively allow any third party to reproduce textbook content verbatim for commercial gain without compensating the rights holder, defeating the provision’s narrow purpose of protecting genuine instructional reproduction by teachers and pupils and the court drew support from the Federal Court of Australia’s decision in De Garis v. Neville Jeffress Pidler, which similarly declined to extend fair dealing protection to commercial copying.

On the guide-book/transformative-use test applied in both appeals, the court drew heavily on a body of Indian and foreign precedent on derivative works and fair use   including E.M. Forster v. A.N. Parasuram, V. Ramaiah v. K. Lakshmanaiah, Civic Chandran v. Ammini Amma, the U.S. Supreme Court’s decisions in Campbell v. Acuff-Rose Music (the “transformative use” doctrine and its interaction with the four-factor fair use test) and Harper & Row v. Nation Enterprises and the Ninth Circuit’s decision in Perfect 10 v. Amazon.com (applying transformative use to Google’s search thumbnails)   to articulate a unified test: a guide book must add something genuinely new (typically, step-by-step explanatory content absent from the original) and must not be a mere substitute for the original textbook, with only superficial alterations. Applying this test, the court found both respondents’ guide books transformative on their specific facts: the Cambridge respondents’ guide covered a substantially broader subject range (English literature, prose, comprehension, letter writing) beyond grammar alone and omitted significant portions of the original; the Oxford respondents’ guide supplied step-by-step mathematical reasoning entirely absent from the appellant’s textbook, which contained only bare questions without solutions.

On the question of Oxford’s own originality being undermined by prior copying, the court treated the respondents’ documentary showing   an unrebutted list of questions in the appellant’s textbook identical to questions in earlier-published works by other authors   as raising a genuine, unresolved doubt about the scope of the appellant’s claimed copyright, appropriate for determination at trial rather than at the interim stage and treated this finding as reinforcing (independently of the transformative-use analysis) the correctness of vacating the interim injunction.

Doctrinal Significance

This consolidated judgment is among the most extensively reasoned and frequently cited Indian decisions on the intersection of copyright protection for educational/textbook content and the permissibility of third-party “guide books”   a publishing category of considerable commercial significance in the Indian education market.

The judgment’s most enduring contribution is its articulation of a clear, two-part analytical framework for guide-book disputes: first, an assessment of whether the original textbook content (including its constituent exercises, questions and arrangement) meets India’s “modicum of creativity” threshold for copyright protection; and second, an assessment of whether the challenged guide book is “transformative”   adding genuinely new explanatory or analytical content rather than merely reproducing and re-selling the original. This transformative-use framework, adapted from U.S. fair use jurisprudence (Campbell v. Acuff-Rose) but applied within India’s distinct statutory fair-dealing structure under Section 52, has been influential in subsequent Indian decisions assessing the legality of guide books, study aids and commentary publications across various academic subjects.

The judgment’s clarification of the conceptual distinction between “public domain” and “fair use” is doctrinally significant and corrects a recurring confusion in Indian copyright litigation, where defendants frequently conflate the argument that a work has lost copyright protection altogether with the quite different argument that a particular use of a still-protected work is non-infringing under a statutory exception. By holding that the prescription of a book as a university or school textbook does not, without more, place that book in the public domain, the judgment preserves the commercial value of educational copyright even where the underlying institutional adoption is widespread.

The judgment’s holding restricting Section 52(1)(h) (the predecessor to present Section 52(1)(i)) to genuine teacher-pupil instructional reproduction and excluding commercial publishers from its protection, has had significant continuing influence   this very holding was subsequently engaged with and partially distinguished by the Division Bench in the 2016 “DU Photocopy Case” (The Chancellor, Masters & Scholars of the University of Oxford v. Rameshwari Photocopy Services), which clarified that the present judgment’s discussion of “fair use” arose in the specific context of commercial guidebook publishers falling entirely outside the protection of the clause and did not establish a general fair-dealing standard applicable to all of Section 52(1)’s sub-clauses.

Finally, the Oxford appeal’s treatment of the originality-undermining effect of an appellant’s own prior copying from third-party sources is a useful and relatively underexplored aspect of Indian copyright doctrine: it illustrates that a plaintiff’s claim to copyright is not immune from scrutiny merely because the defendant is the party alleged to have infringed and that a defendant may successfully resist interim relief by raising credible, document-backed doubts about the genuine originality of the very work for which the plaintiff claims protection   a principle of practical importance in textbook and compilation copyright litigation, where overlapping content across competing publishers in the same subject area is common.

Full Judgement : https://indiankanoon.org/doc/565788/

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