Mrf Limited. vs Metro Tyres Limited. CS(COMM) 753/2017 Delhi HC
- The plaintiff (MRF) is engaged in the business of manufacture, marketing and sale of tyres in about sixty-five countries including India and is widely recognized for its quality and customer satisfaction.
- The plaintiff has been manufacturing and selling a range of tyres and one such series is named as & registered trademarks “MRF NV SERIES” and “REVZ”
- 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 which was first aired in TV media on forty-one television channels & Youtube.
- The plaintiff contended that it is the author of the advertisement which constitutes a cinematograph work under Section 2(f) of the Copyright Act, 1957 and is entitled to protect it under Section 14 of the Copyright Act, 1957.
- Section 2(f) defines cinematograph film as “any work of visual recording and includes a sound recording accompanying such visual recording and cinematograph shall be construed as including any work produced by any process analogous to cinematography including video films”.
- Later in 2016, the plaintiff came to its knowledge that the defendant had produced similar advertisement titled Bazooka Radial Tyre and contended that the defendants advertisement contained material and broad similarities which showed that the defendants intent was to copy the plaintiffs advertisement.
- Whether there is bare perusal of the two advertisements shows that defendants advertisement is nothing but a substantial and material copy of the plaintiffs advertisement?
- 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?
REFERENCES by the Delhi High Court
- A Division Bench of the Calcutta High Court in Shree Venkatesh Films Pvt. Ltd. vs. Vipul Amrutlal Shah & Ors., 2009 SCC OnLine Cal 2113, has treated the so called original underlying works as raw materials from which an entirely different work like a cinematograph film may be created. The Court also gave example- the producer may employ a storywriter or a screenplay writer or a singer under a contract of employment. In that case the employer, subject to contract, is the first owner of the copyright. Otherwise, the author of the work may retain his individual copyright. (Section 17 of the Copyright Act First owner of copyright) Now, when all these works are put together and a cinematography film is made, a new copyright over the film is vested in the maker of the film or its producer. When the film as a whole is exhibited the individual owners of copyright in works who have permitted the film to be made cannot claim copyright but if a part of the film is segregated and the individual work is culled out and exhibited then the individual owner can assert his copyright. Now, suppose the producer of the film without taking permission of the owners of the copyrighted works exhibits the film, the film may not have any copyright at all as a substantial part of the film in infringement of other work or works. (Section 13(3)(a) of the Copyright Act.) “Section 13(3)(a) reads as under: (3) Copyright shall not subsist– (a) in any cinematograph film if a substantial part of the film is an infringement of the copyright in any other work;”
- The Supreme Court has said in Eastern Book Company & Ors. vs. D.B. Modak & Anr., (2008) 1 SCC, that the word original does not mean that the work must be the expression of original or inventive thought. The Copyright Act does not require that the expression must be in an original or novel form, but that the work must not be copied from another work–that it should originate from the author; and as regards compilation, originality is a matter of degree depending on the amount of skill, judgment or labour that has been involved in making the compilation. .
- The judgment of the Apex Court in R.G. Anand v. M/s Deluxe Films and Ors. (1978) 4 SCC 118. laid down the test to determine the violation of copyright and said that one of the surest and the safest test to determine whether or not there has been a violation of copyright is to see if the reader, spectator or the viewer after having read or seen both the works is clearly of the opinion and gets an unmistakable impression that the subsequent work appears to be a copy of the original. Where the theme is the same but is presented and treated differently so that the subsequent work becomes a completely new work, no question of violation of copyright arises
- The Delhi High Court relied on the test laid down in the R.G. Anand v. M/s Deluxe Films and Ors. and agreed 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. After viewing the plaintiffs and defendants advertisements and applying the test stipulated in R.G. Anand v. M/s Deluxe Films and Ors. (supra), this Court is of the prima facie view that the two advertisements are neither substantially nor materially or essentially similar. The plaintiffs advertisement is more futuristic in comparison to the defendants. In fact, the expressions behind both advertisements are different. While the plaintiffs advertisements emphasis is on the manufacturing process of the tyre and its radial design, the defendants advertisement seeks to display the durability of the tyre by showing that it rides well on all terrains.
- Also, The Delhi High Court was of the opinion that the Copyright Act, 1957 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. Therefore, the meaning of the term cinematograph film’ as interpreted by this Court is therefore in consonance with the Article 14 of the Berne Convention. [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. Article 14bis (2), on the other hand, leaves the question of who is the owner of a cinematographic work to domestic legislation.]
Therefore, on the basis of above opinion of the court, application for injunction was dismissed & hence No infringement of copyright (herein means advertisement) by Metro Tyres .