By, Nidhisha Garg
On July 1, 2019, the High Court of Delhi delivered a significant ruling in the case of MRF Limited v. Metro Tyres Limited which has reconsidered the position with respect to the test for identifying copyright infringement for cinematographic work as defined under Section 2 (f) of the Copyright Act, 1957 (hereinafter the Act). The Delhi High Court disturbed the position that had so far been maintained by virtue of the ruling given by the Bombay High Court in Star India Private Limited v. Leo Burnett in 2003 and which has been reiterated in several judgements thereafter. The underlying point of conflict between the ratios of the two judgments is that while the Bombay High Court was of the view that only physical copying would constitute an infringement of copyright vested in that film, the Delhi High Court has, on the other hand, opined that proving substantial or material copying is necessary for a claim of infringement of copyright in films to succeed.
Both the rulings seem to have statutory backing. Section 2 (m) (ii) read with Section 14 (d) of the Act provides that, “An infringing copy, in relation to a cinematographic film, means a copy of the film made on any medium” and “storing it in any medium by electronic or other means”, which supports the ratio in Star India.. On the other hand, Section 13 (a) expressly provides that, “copyright shall not subsist in any work if a substantial part of the film is an infringement of the copyright in any other work”.
Both judgments have different sets of persuasive reasons for the decision made. The Bombay High Court differentiated between literary, dramatic and musical works on the one hand, and sound recordings and cinematographic works on the other hand. According to it, the threshold for proving copyright infringement in the former class of works is lower than that required for the latter class of works. According to the Bombay High Court, “it is only when actual copy is made by process of duplication, that is, by using mechanical contrivance” that infringement can be satisfactorily proved for sound recordings and films. Resultantly, the court held that “production by another person of even the same film, therefore, does not constitute infringement”. In furtherance of the same, it also held that since the test of substantial similarity as laid down in R.G. Anand v. Deluxe Films relates to artistic, literary and dramatic works, the same cannot be extended for testing infringement is films and sound recordings.
The Delhi High Court emphasized on the point that cinematographic works are ‘original’ or in other words, they are ‘intellectual creations’. The copyright subsists, not in the idea or the concept, but, in the execution and presentation of that idea on screen. Moreover, this principle is also in consonance with the Berne Convention.
It further held that a film as a whole was different from its constituent parts. Also, while referring to the idea-expression dichotomy, which has been well established by several Supreme Court precedents, the Court said that originality must be with respect to the expression, that is, the way in which the work has been compiled, the order in which it has been arranged and finally executed for presentation to the audience.
However, one of the major criticisms of the ratio of the Delhi High Court is that under Section 13, unlike the words, ‘literary, dramatic or musical works’; the words, ‘cinematographic works and sound recordings’ are not preceded by the term, ‘original’. However, the Delhi High Court has tackled this objection by stating that the requirement of originality, though not present in Section 13 (1)(b), can be inferred from Section 13 (3) (a) when read with Section 2 (b). It, therefore, held that the test evolved in R.G. Anand would indeed be applicable in the instant case as well.
The ramifications of the two judgements would be different for different stakeholders. While the ruling in Star India tends to be more in favour of subsequent authors, the ratio in MRF inclines more towards the original author. The implication of the ruling in Star India(and what has also been subsequently relied upon in many judgments including the 2009 judgment of the Calcutta High Court in Shree Venkatesh Films Private Limited v. Vipul Amrutlal Shah & Ors.) is that the onus on the person alleging the infringement is higher. He/She must prove the existence of the factum of actual copying and the mere fact that the two works resemble each other significantly has no bearing on the success of the claim. On the contrary, the far-fetched bearing of the ruling in MRF is to grant to the first author, monopoly in the concept/idea that he has made. As a result, authors who set to create works which are later in point of time, shall have to be extra cautious so as make sure their works do not appear to be substantially copied from the prior lest they shall have to face consequences in the form liability for infringement.
Considering the history of judicial precedents in India on the subject matter, the Bombay High Court’s ruling seems to be more persuasive. Apart from simple the fact that the number of other high court rulings in consonance with Star India is higher than those resonating with MRF, the arguments with carry more weight are that Star India actually furthers the basic purpose for why copyright, or for that matter, any Intellectual Property Rights Statutes are enacted, and that is to promote creativity. For the progress of society, it is more important to keep the incentives in favour of subsequent artists intact, than those which have the effect of granting monopoly to an original work in a concept, once and for all. The irony is that though the Delhi High Court has stated that it has placed reliance on the idea-expression dichotomy but, its ruling, instead of furthering the principle, in effect defeats the very basis of the idea-expression dichotomy. This can be a very dangerous precedent and other High Courts must tread cautiously on relying upon the Delhi High Court’s ruling in future. In light of the fact that there currently seems to be no Supreme Court ruling which squarely addresses this conflict between the above named two judgments, coupled with the fact that both have been delivered by a single judge bench, one can only hope that this conundrum is solved sooner than later.