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MEMORIAL FOR IUMCC-2016

BEFORE
THE HONBLE HIGH COURT OF
JUDICATURE AT BOMBAY
DISPUTE RELATING TO

INFRINGMENT OF COPYRIGHT AND TRADEMARKS

CIVIL CASE NO._______/2016

(UNDER 62(2) OF COPYRIGHT ACT)

IN THE MATTER OF :

Jack Samuelson ..PETITIONER NO.1

Brightwalker Studios Ltd. (BSL).PETITIONER NO.2

V/S

Ms. Earl Grey.....RESPONDENT NO.1

Edified Comics Ltd. (ECL), ...RESPONDENT NO.2


MEMORIAL FOR PETITIONER

STATEMENT OF FACTS

1. Mr. Jack Samuelson(from now on referred to as Samuelson) is the author of the literary
masterpiece Ballad of Malice and Power. It comprised of seven books, where the first
book, was released in 1994 and the last book being released in 2014.The books were
extremely successful in the market due to which printed and digitized versions of each
were available for sale in the US, members of the European Union, Canada, China and
the Indian Sub-Continent.
2. In time, Bright walker Studios Ltd(from now on referred to as BSL), a US based
television network and production company, acquired the exclusive license from Jack
Samuelson in 2005 to adapt the 'Ballad of Malice and Power' into a full-fledged
television show called "ValarDohaeris: The Beginning. The show first started
broadcasting in the year 2009 and was extremely successful to the point where it became
the most watched television show. In the India the show was broadcasted through
ZoomIn , a paid web portal.
3. Ms. Earl Grey(from now on refetyrred to as Grey) ,was a avid follower of the Ballad of
Malice and Power,and was highly intrigued by the character, Boromir. Boromir has
found little mention both in the books and in the T.V show,yet other characters made
reference to Boromir and his feats as he played a pivotal role in framing the political
landscape Ballad of Malice and Power therefore he was a character of great
significance in the book.However according to Grey neither the books nor the T.V show
developed Boromir to her expectation.
4. Ms. Earl Grey started her work of the bohemian rhapsody by espousing the main
essence of the Samuelson's character Boromir Bohemia, taking up part of samuelson's
story into her own. This work of Ms. Grey was publised in her blog the pickwick papers.
5. BSL was successful in broadcasting the show Valar Dohaeris, which turned out to be a
gigantic hit, cashing in on this opportunity Ms. Grey seizing this opportunity published
her version of Boromir bohemia- 'The Bohemian Rhapsody'.
Therefore she started developing the character Boromir by her imagination. She collected the
bits and pieces of the character and coined together and created The Bohemiean Rhapsody.

6) Afterwards she first expressed her developed version of Boromir in a comic strip format on
her own blog called The Pickwick Papers. Gradually, Grey's version of Boromir's conquests i.e.,
'Bohemian Rhapsody' became widely popular and garnered massive response from readers
across the world.Edified Comics Ltd. (from now on referred to as ECL), a behemoth in
commercial comic book publication and a company registered in Mumbai (India), approached
Ms. Grey and secures an all-encompassing IP-assignment in The Bohemian Rhapsody in
exchange for a hefty sum of royalty.

7) In order to generate hype among the public for the Comic Book release of The Bohemian
Rhapsody, ECL started to manufacture and sell various merchandise of Bohemian Rhapsody
like costumes, accessories, artwork, wallpapers, stationery and other consumer products in
India.Accordingly on 4th January 2015, ECL also obtained in India trademark registration in the
word 'BOROMIR' and in a pictorial representation of Boromir Bohemia from the comic book.

8)In the meanwhile, a year after the publication of Samuelson's last book in the Ballad of
Malice and Power, BSL released the last episode of the Show in 2015, concluding its
monumental run on the small screen.

After theSeries ended in February 2015, BSL produced and developed a spin-off series (a
prelude to theshow) called "Boromir the Conqueror" based on the life and conquests of Boromir
Bohemia. BSLalso commenced marketing and released a teaser-trailer in June 2015. The show
was globally released on 9th February 2016.On 16th August 2016 in a popularComiCraze
eventMumbai ECL released "The Bohemian Rhapsody" (the Comic). It received an
overwhelming global response. Analysts predicted that "Bohemian Rhapsody was highly likely
to beat all previous records for best-selling comic series."Highly aggrieved, Samuelson and BSL
initiated appropriate legal proceedings against Earl Grey and ECL before the Bombay High
Court for misappropriating their character BoromirBohemia. ECL denies this claim and inter
alia retorts with counterclaims against BSL for unlawful use of its trademark on the Boromir
the Conqueror.
ISSUES RAISED

1.Whether the case filed by the plaintiff is maintainable?

BSL has the right to approach the court:

a) Protection under Berne and UCC


b) Foreign companies have right to approach the court
c) Exclusive licensee right to sue
d) The cause of action arose in Bombay
e) Zippo sliding Test
f) Objective Territoriality Test

2.Whether Ms. Greys, the Bohemian Rhapsody constitutes to be an infringement?

a)character copyright for Boromir Bohemia

b)Unique character

c)The defendant copied directly from the plaintiffs work and the elements copied, when
taken together, amounts to improper appropriation

d)copyright as a negative right

e)authors economic and moral rights are violated

3. whether the plaintiff has infringed the trademark of respondents?

a) whether trademark registration is valid

b)whether trademark belongs to the 2nd respondent?

c)whether a character from the plaintiffs book can be used as a TM by the 2nd defendant

d)whether the goodwill of the appellant was being used by the respondent to earn the profit

e)Arguendo

f)well known Trade Mark


STATEMENT OF JURISDICTION

The petitioner has approached the Honble High Court of Bombay under section 62(2) of the
Indian Copyright Act, 1957.
SUMMARY OF ARGUMENTS

1) Whether the case filed by plaintiff is maintainable?

The petitioner humbly submits that this court has the jurisdiction, to entertain the suit filed by
the petitioner, on the grounds of the various international conventions, the Indian Copyright act
and the place of occurrence.

2) Whether Ms. Greys, The Bohemian Rhapsody, constitutes to be an infringement.


Boromir Bohemia, carries a character copyright. By creating her own version of Boromirs
conquest as, The Bohemian Rhapsody, Ms. Grey has infringed the right of Jack Samuelson,
according to Section 51 of The Copyright Act, 1957.

3) Whether the plaintiff has infringed the trademark of the defendant?

The petitioner humbly submits that, the plaintiff hasnt infringed any right of the trademark
holder, according to s. 34 of Trademarks Act as the plaintiff has vested interest.

ARGUMENTS ADVANCED

1)WHETHER THE CASE FILED BY PETITIONER IS MAINTAINABLE?

It is submitted that the present petition is filed by the author1, first copyright holder Samuelsson
and the exclusive licensee holder BSL, a United States based company filed against Grey and
ECL, a Bombay based company for infringement of copyright under Section 62(2) of The
Copyright BSL has a right to approach the court. (a) Since the cause of action arose in Bombay
(b) ,the Bombay high court has the jurisdiction to hear, the case(c).

(a) BSL HAS THE RIGHT TO APPROACH THE COURT


(A)FOREIGN WORKS ARE PROTECTED UNDER INDIAN COPYRIGHT ACT,1958
1 section 17
As per the Copyright Law in India, copyright subsists in all original published or unpublished
literary, artistic works etc. copyright comes into existence as soon as a work is created and no
formality is required to be completed for acquiring copyright protection. The Copyright Law in
India is governed by the Copyright Act, 1957 (as amended in 2012) along with the Copyright
Rules, 2013. Copyright law protects expressions of ideas rather than the idea themselves. Under
section 13 of the copyright act, copyright protection is conferred on literary works, dramatic
works, musical works, artistic works, cinematograph films and sound recording. As per section
17 of the act, the author or the creator of the work is the first owner of copyright.

Next comes the jurisdictional aspect of the territorial jurisdiction of the court to deal with the
copyright infringement, in Caterpillar Inc v Kailash Nichani2, the plaintiff a foreign company
was carrying on a business in several places in India including Delhi, through its Indian
distributors and collaborators. In a jurisdiction issue the court held that it is sufficient if the
business was being carried on by the plaintiff in Delhi should necessarily be in respect of
footwear, it is sufficient if the business was being carried on by the plaintiff in Delhi and further
there was infringement of plaintiffs copyright in respect of certain goods. Here the facts can be
compared with the current case, wherein we learn from the facts that the show Valar Dohaeris:
The Beginning was available for viewership in India exclusively through a paid online portal
named ZoomIn. Each episode of the show released at the same time it released in USA.

Further in Lachman Das Behari Lal v Padam Trading Co3. the delhi HC observed that the
plaintiff being a firm functioning at Benaras, the suit filed by it in delhi HC is maintainable and
is not liable to be rejected under order 7 rule 11 of the CPC as prayed. The court further
observed that the plea regarding want of territorial jurisdiction isnt covered by the said order of
CPC. The court observed that even if it held that this court has no territorial jurisdiction, the
plaint cannot be rejected. At the most it can be returned for presentation to the proper court.

2 2002 IIAD Delhi 894, 97 (2002) DLT 304, 2002 (24) PTC 405 Del

3 2002 (25) PTC 508(Del)


WIPO Copyright treaty,

India is a ratifying member of this treaty. According to Art 1 of this treaty this is a special
agreement within the meaning of Article 20 of the Berne Convention for the protection literary
and artistic works.

PROTECTION UNDER BERNE AND UCC

India is a member of the Berne convention of 1886 (as modified in Paris in 1971) as well as the
Universal Copyright Convention of 1951. Therefore, work created in other member states is
accorded protection in India as well. The 2012 amendments have made the Indian Copyright
Law compliant with WIPO Copyrights treaty.

Berne Convention

Berne Conventions primary function is protection of original works and legal rights of their
authors/ creators. The foundation of Berne is based on 3 basic principles:

i) Works originating in one of the contracting country must be given the same
protection in each of the other contracting countries as the latter grants to the works
of its own nationals (principle of national treatment).
ii) Protection isnt conditional upon compliance with any formality, rather it is
automatic.
iii) Protection is independent of the existence of protection in the country of origin of
the work, if however a contracting country provides for a longer term of protection
than the minimum prescribed by the convention and the work ceases to be protected
in the country of origin, protection maybe denied once protection in the country of
origin ceases.

It is important to note here that both India and USA are signatories to the Berne convention.
India being a member state since April 1, 1928 and USA since March 1, 1989. Thus,
Copyright of works first made or published in a country or the author of which was, at the
date of such publication, a national of a country who is a member of the Berne convention
for the protection of literary and artistic works, or universal Copyright Convention or World
Trade Organization, are protected in India as if they are Indian works, based on section 40 of
the Indian Copyright Act, 1957 r/w International Copyright Order, 1999.

(b) the principle of national treatment" as enshrined in article 3 of the trips agreement,
binds its signatories such that the it cannot treat its foreign intellectual property right
holders any worse than it treats its own .India is also a party to the TRIPS agreement and
thus has the adopted the "national treatment" principle through section 40 of the
copyright Act,1957. Further, after the amendment in 1999 is in accordance with the
Berne convention and universal copyright convention , to which India is party to .Thus,
according to section 40 of the copyright Act,1957, read in accordance with International
copyright order,1999 works which are published in the member Berne convention and
UCC are given the same protection as Indian citizens.
(c) In a similar case Microsoft Corporation4 the plaintiff's works were created by authors of
member countries of Berne convention, and originated from and were first published in
the said member countries. The hon'ble Delhi H.C observed here that the rights of the
authors of member countries of the Berne convention and the universal copyrights
convention are protected under Indian Copyright law as both India and USA are
signatories to both the UCC and the Berne Convention . Thus, as the works by
Samuelsson have been have been published only in the countries which are members of
the Berne convention and UCC, hence the works of Samuelsson shall be protected in
India.

FOREIGN COMPANIES HAVE RIGHT TO APPROACH THE COURT

As stated earlier foreign works are protected under the copyright law under section 40 of the
copyright act, 1957, and as the Latin maxim Ubi Jus Ibi Remedium states where there is a
right there is remedy, similarly in the present case , as the foreign work have been granted
protection under the copyright Act ,1957 such right infringed must be given a remedy. In
the. Moreover, the fundamental right of equality under Article 14 of the constitution protects
all persons irrespective of citizens and non-citizens in case of infringement of right legally

4 Microsoft corporation v. K.Mayuri (2007)35 PTC 415 (del).


recognized and thus can approach the legal forum for the redressal of such right, this right to
approach the legal forum for infringement of copyright has been given under section 62 of
the copyright Act ,As in the case of Ephar S.a v/s bharat shah where it was held that
section 62(2) over rode the c.p.c to allow the plaintiff to file a case in the court within local
limits of whose jurisdiction, the person instituting the suit resides in or carries out business

The term "carries on business" was elucidated in the case of Wipro5 where the court held
that the term carries on "business" is not confined only to "principle place of business" if so
it would not have been stated carries on business and thus gives rights to foreign companies
to file case in India. This was derived from the case of world wrestling center Inc. V/s
Reshma collection & ors.6where it was held that online sale of merchandise by Delhi
corporation Inc shall constitute to be carrying of business under section 62(2) of the
copyright act,1957 as the appellant's website was accessible in Delhi, therefore conferring
right to Delhi high court to try a suit for copyright. Similarly in the present case BSL
through, zoom IN , a paid online portal which is accessible throughout the country for the
Indian viewer to pay and watch the TV series at the same time as the American viewers,
amounted to "carrying on business".

EXCLUSIVE LISENCEE RIGHT TO SUE

License in the case Exxon corp.7 has been defined as a transfer of limited rights less than the
whole interest transferred. In the present case there has been an exclusive license granted to
BSL for the purpose of adaptation of the "ballad of malice and power , thus BSL is granted is
permission to do things and contract not to give leave to anyone else to do the same thing.8

5 wipro v/s oushada chandrika

6 world wrestling center Inc. V/s Reshma collection & ors.

7 exxon corp. vs oxxford clothes Inc.

8 Black laws dictionary, see also : Overman Cushion Tire Co. v. Goodyear Tire & Rubber Co.,
C.C.A,N.Y., 59 F.2d 998, 999.
BSL, An exclusive licensee granted exclusive rights to adapt the books9 under s.54 of the Indian
copyright act shall also be included under the definition of owner of copyright act in respect of
copyright infringement cases and is allowed to file the case.
similarly in this case as BSL the exclusive lisence has adapted and broadcasted the show by
investing capital and risked it in putting their works before the public10, it is submitted that BSL
has to be given remedy in the present case of infringement

THE CAUSE OF ACTION AROSE IN BOMBAY

The internet is a paradox, which is a worldwide entity whose nature cant be easily or simply
defined11, and with the advancement of technology,copying , modifying and distributing of
copyright materials has become very simple and difficult to trace, and the absence of
geographical territory makes it very hard to determine the jurisdiction of such cases, similarly in
the present case Grey had modified Samuelsson's work and published it in her blog "the
Pickwick papers". Thus, in the present case the prescriptive jurisdiction is based on subjective
territoriality.

ZIPPO SLIDING TEST

In the case of Zippo manufacturing co. vs. Zippo dot com, three pronged test arose were the
plaintiff was required to prove that:
(a)the defendant must have sufficient "minimum contact with the forum state
(b)the claim asserted against the defendant must arise out of these contacts
(c)the exercise of jurisdiction must be reasonable

defendant must have sufficient "minimum contact" with the forum state

9 Occidental Life Ins. Co. of Cal. v. Nichols, 97 So.2d879, 885, 266 Ala. 521

10 holy faith international & ors v/s doctor Shiv k. kumar,2006(33) PTC456(AP)

11 religious technology centre v netcom online communication service


inc.907FSupp.1361
In the case of walden vs fiore the court defines minimum contact as relationship which arises
between the defendant and the forum state , due to the conduct of the defendant In the given
case, Earl grey had entered into a contract with ESL, a bombay based company, further the
comics by Earl grey were released in the comic con in Bombay and hence shall be considered as
an copyright infringing work released in the forum state, which provided unjust enrichment to
both ESL and Grey.

the claim asserted against the defendant must arise out of these contacts

As the case was filed against Earl grey and ESL for the infringement of copyright, as the
company publishing the copyright infringing book was based from the forum state, Bombay as
well as the book being first released in the forum state

the exercise of jurisdiction must be reasonable

As the cause of action arose in Bombay and the one of the defendants being a out of bombaay
based company, te exercise of such jurisdiction is submitted to be reasonable.

OBJECTIVE TERRITORIALITY TEST

The court after facing difficulty in subjective territoriality moved towards objective territoriality
test first evolved in the case of calder vs jones12 , where the plaintiff was a resident of California
and had commenced a libel action against National Enquirer who had published an article in
California apart from the Enquirer and the local distributor company, its editor and author of the
article were all in florida, the court held that as the brunt of the harm was suffered in California
hence the forum state would be California,similarly in the present case as the effects of the earl
grey's website was felt in the Bombay as the book was first released in comic con at bombay
further the company which was assigned the rights of Grey's copy right infring works are in
Bombay hence its submitted that the cause of action arose in Bombay and the Plaintiff has a
rigt to file the case in Bombay.
12 calder vs jones 456 U.S 783
THE BOMBAY HIGH COURT HAS THE JURISDICTION TO HEAR, THE CASE

According to section 62

(1)every suit or civil proceeding for the civil remedies in respect of infringement of copyright
in any work for the infringement of any other is to be instituted in the district court having
jurisdiction.

(2)for the purpose of subsection(1) a district court having jurisdiction shall not withstanding
anyting contained in the CPC.1908 or any other law for the time being in force, including a
district court in the local limits of whose jurisdiction, at the time of the institution of the suit or
other proceeding of the person instituting the suit or other proceedings or, where there are more
than one such persons, any of them actually voluntarily residing or carries on business or
personally works for gain."

The district court as referred in section 62 means district court as defined in the CPC of 1908.
The district court defined under that Act is the principal court of the district court as also high
court which has original jurisdiction over a district or more districts. Further the hon'ble high
court had held that a suit is cognizable by the high court and the high court will not lack
jurisdiction in trying and deciding the suit.13Thus, under section 62(2) of the copyright Act,1908
the plaintiff shall not lack jurisdiction in the hon'ble Bombay high court as the Bombay high
court does not lack jurisdiction in trying the case

Moreover, In the Dabur India ltd.14 case the supreme court held that there cannot be any doubt
whatsoever as the parliament having inserted section(2) in section 62 copyright act 1957 , the
jurisdiction of the court there under would be wider under section 20 of the CPC, the object and
the reason for enactment of sub section 2 of section 62 would also appear from the report of the
committee as has been focused by this court being a provision ,which has been specially

13 mohan meakin ltd. vs kashmir drealand distilleries ,AIR 1990 J&K 42

14 dabur India ltd. vs kr industries


designed to confer an extra benefit upon the authors who are not in a position to institute
copyright infringement proceedings before the court. Thus, Samuelson the author of "ballad of
Malice and power" has a right under section 62(2) of the copyright act,1908 to file a case in the
hon'ble high court.

2) Whether Ms. Greys, The Bohemian Rhapsody, constitutes to be an infringement.

1. MS. GREYS, THE BOHEMIAN RHAPSODY, INFRINGES THE COPYRIGHTS OF


JACK SAMUELSON

It is submitted that Ms. Greys work titled, The Bohemian Rhapsody is an infringement of the
copyrighted work of Jack Samulson, as there exists a character copyright for Boromir Bohemia
(a) and Ms. Grey does not have a license to adapt the character (b) therefore, the moral rights
and economic rights of the author are violated (c).

CHARACTER COPYRIGHT FOR BOROMIR BOHEMIA

The objective of a copyright law is developed by nations to encourage and reward authors as
well as publishers, who risks their capital in putting their works before the public.15 In the
present case the hard labor of Samuelson has taken the form of Ballad of Malice and Power and
BSL has risked their capital to put this work in front of the public, Ms. Grey has merely copied
the essence of the character of Boromir and has reaped unfair enrichment.

According to Blacks Law Dictionary copyright is , The right of literary property as recognized
and sanctioned by positive law. A right granted by statute to the author or originator of certain
literary or artistic productions, whereby he is invested, for a limited period, with the sole and
exclusive privilege of multiplying copies of the same and publishing and selling them.16

15 In Holy Faith International and Others v Dr Shiv K Kumar 2006 (33) PTC 456 (AP), p 463, the court
observed that the primary function of a copyright law is to protect the fruits of a mans work, labour,
skill or test from being taken away by other people.
In the present case Boromir Bohemia was a character developed by Samuelson investing his
valuable time. It has to be noted that Boromir wasnt just any character but played a pivotal role
in steering the storys direction. He has found mention in almost all the series regarding his past
feats, legend goes that Boromir was the greatest conqueror isn the land of Vergursa, thus
shaping the entire storyline in the Ballad of Malice and Power. Thus

UNIQUE CHARACTER

In Universal City Studios v Kamar Industries17, the character ET was held copyrightable
because of its being a unique and distinctive character about whom the movie revolved.
Similarly Boromir, plays a major role in giving the book series a shape and not only that, in
recognition of his importance, BSL produced and developed a spin off series called Boromir the
Conqueror.

Does the defendants action of using Boromir in her own literary work amount to
copyright infringement?

The author of a literary, dramatic or musical work is the first owner of the copyright in
that work.18 Under the Copyright Act, 1957 author means:
a) In relation to a literary or dramatic work, the author of the work; and
b) In relation to a musical work, the composer.19

In Bobbs-Merrill Company v Isidor Straus and Nathan Straus,20 the US Supreme Court held:
Infringement of a copyright is a trespass on a private domain owned and occupied by the owner
of the copyright, and, therefore, protected by law, and infringement of copyright, or privacy

16 Henry Campbell Black, Blacks Law Dictionary (Bryan A Garner ed, 9th edn, West Publishing Co
2009).

172008(37) PTC 252 (SC)

18 Sec 17, copyright act

19 Sec 2(d)(i) and (ii)

20 210 US 339, (1907) 52 L Ed 1086.


which is a synonymous term in this connection, consists in the doing by any person, without the
consent of the owner of the copyright, of anything the sole right to do which is conferred by the
statute on the owner of the copyright.

It is most humbly submitted before this Honorable court that the character Boromir was part of
Jack Samuelsons fantasy fiction the Ballad of Malice and Power and Brightwalker Studios
Ltd. (BSL), a US based network and production company, successfully closed a deal with Jack
Samuelson in 2005 and acquired an exclusive license to adapt the Ballad of Malice and
Power into a full-fledged television show called ValarDohaeris: The Beginning. Therefore
according to Section 13 of the Copyright Act, 1957 which talks about Works in which Copyright
subsist, inter alia, in original literary, dramatic, artistic, musical works as well as
cinematographic films and sound recordings. In the case of University of London Press v.
University Tutorial Press21, which laid down that copyright over a work arises and subsists in
that work due to the skill and labour spent on that work, rather than due to inventive thought.
Originality derives merely from the fact that sufficient labour, skill, capital and effort (whether
physical or otherwise) has been applied. This, principle was accepted by the Privy Council in
the case of Macmillan v Cooper22 that the product of the labour, skill and capital of one man
which must not be appropriated by another.

Therefore, in this case a certain amount of skill and labour was spent on the work. Moreover,
the character Boromir is the product of the skill exercised by Jack Samuelson therefore as held
in the case of Macmillan there exist no right for any other party to appropriate the character.

By appropriating this character Boromir, the respondents have violated section 51 of the
Copyright Act, 1957 which talks about the infringement of Copyright doing something, which
the exclusive right of right to do is conferred upon the owner of the copyright

21 (1916) 2 Ch 601

22 AIR 1924 PC 75
In the case of R.G. Anand v Delux Films23 the court held thatin some instances, the courts should
determine whether or not the similarities are on fundamental or substantial aspects of the mode
of expression adopted in the copyrighted work. In order to be actionable, the copy must be
substantial and material one which at once leads to the conclusion that the defendant is guilty of
an act of piracy. The surest and 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 original24. In this case, the vast majority of readers and watchers of
this show would have already been of the opinion that Boromir is the character created by Jack
Samuelson and that the respondent have just depicted this character in her comics.

In the case of Associated Publishers v Bashyam25 in order to constitute infringement there


should be direct or indirect use of those features of the plaintiffs works in which copyright
subsits26. In the case of C. Cunniah& Co v Balraj& Co27 the court observed that one picture
could be said to be a copy of another picture only if substantial part of the former picture finds
place in the reproduction. In this case Ms.Grey depicted Boromir from bits and pieces of the
story in which he played a role and also she defined him as the protagonist in the land of
Vengursa same of as that in the story. Therefore a substantial part of the character was copied.
As mentioned in the case of Mohendra Chandra Nath Ghosh v Emperor28 the copy was one
which was so near the original as to suggest the original to the mind of the spectator and
observed that the figures may been reduced in the offending pictures and slight modifications

23R.G.Anand v Delux Films , AIR 1978 SC 1613

24ChatrapathyShanmugham v S. Rangarajan AIR 1988 Ker 39

25 AIR 1964 Mad 114

26DivyaSoodPropreitor M/S The Body Care v Renu Bajaj Propreitor M/S. Perfect Body Care , 2011
(45) PTC 307 (Del.) at p.311

27 AIR 1961 Mad 111

28 AIR 1928 Cal 359


may have been introduced, or the clothes and colours would have been different. In this case,
although she drew a sketch of him and assigned him a role. The substantial part which includes
the name and the portions of the book which defined the role remained copied. As for an
infringement to take place, there need not be an exact reproduction of the plaintiffs work.
Copyright in a work is infringed by taking a substantial part of it29. In the case of Arnstein v.
Porter30where the defendant was alleged infringing work involved relates to something, which
is similar to, but not identical with the plaintiffs work. In such cases, in order to prove
infringement, the plaintiff must show that

The defendant copied directly from the plaintiffs work and the elements copied , when
taken together , amounts to improper appropriation

When the Plaintiff proves that there exists certain resemblance between his work and the
defendant it plays a pivotal role in proving an infringement of copyright31. In this case it is
clearly mentioned that Ms. Grey developed the character Boromir Bohemia form the
information that she got from the seven books of the series Ballad of Malice and Power.

In order to establish Improper Appropriation, the plaintiff must meet two tests:

1. The plaintiff must show that the defendants work has appropriated that expression of a
copyright work which is protected under copyright law32.

2. The plaintiff must show that audiences will perceive substantial similarities between the
defendants work and the plaintiffs protected expression.33

29 In Dorsey v Old Surety Life Ins. Co ., Philips J. Observed that the right secured by a copyright is the
right to that arrangement of words which the author has selected to express his ideas to constitute
infringement , a showing of appropriation in the exact form or substantially so of the copyrighted
material was required.

30 154 F.2d 464

31 See Paul Goldsteins Goldstein on Copyright, Vol. II 3rd edn., Aspen Publishers, p.no. 9.3

32 See Kohus v. Mariol, 382 F.3d 848


In this case, the character Boromir is already being expressed in some parts of the book , and in
the TV Show even there didnt portray Boromir as a character he was talked about by the other
substantial characters in the show.

Copyright as a negative right:

The right enjoyed copyright owner is a negative one i.e. it is the right to prevent others from
using his work in certain ways, and to claim compensation for the usurpation of that right. In
Time Warner Entertainment Company, LP v RPG Netcom34, the court held that the object of
copyright law is to prevent copying of physical material and form in the field of literature and
art. It is essentially a negative right given to the author, in the sense that the Act does not confer
the owner with a right to publish his work but the right to prevent third parties from doing that
which the owner is solely allowed to do under the Act.

Authors Economic and Moral rights are violated:


Also the economic right and the moral right of the author, Jack Samuelson, have been infringed.
Economic rights are those rights which help the author reap economic benefits. These rights
have been recognized in one form or the other since fifteenth century. As per Section 14 of the
Copyright Act, 1957, different rights are recognized for the works considering its nature. The
section provides that it is the exclusive right of the author to do or authorize the doing of the
acts provided there under. The important rights generally recognized by all types of works under
the Indian statute that attracted much judicial interpretation includes reproduction rights, right
of distribution and right to communicate work to the public. In Gopal Das v. Jagannath Prasad35,
it was held that infringing copies and price of copies sold can be recovered by owner of
copyright. Even though it was clearly proven that the defendant uses the plaintiffs work, he was
not given any remuneration, recognizing his work.
33

34 (34) PTC 668 (Del) (DB), (2007), p 672

35 AIR 1938 ALL 266


Right of Reproduction: According to Article 9, 14 and 14bis of the TRIPS, all types of
work, i.e., literary, dramatic, musical, artistic, cinematograph film and sound recording,
the exclusive right to reproduce the work is with the author. It was held by the House of
Lords in Ladbroke Ltd v William Hill Ltd that reproduction means copying and does not
include cases where an author or compiler produces a substantially similar result by
independent work without copying. It must also be noted that to constitute reproduction,
copying need not be in toto; even substantial reproduction will amount to reproduction.
Reproduction also means making a copy in a different form, even if such copy is not
easily perceptible.

Moral rights of the author are soul of his works. The author has a right to preserve, protect and
nurture his creations through his moral rights. Section 57 of The Copyright Act talks about
moral rights of the author. The moral rights are exceptions to the general rule that after an
author has assigned his rights in favour of a publisher or other person, the latter alone is entitled
to sue in respect of infringements.

Right to Paternity (Droit de paternite): Rights of paternity means that an author has a
right to claim authorship of his work and can prevent all others from claiming authorship
of his work. The defendants clearly ignored this right.

3)Whether the appellant has infringed the trademark of the respondent?

It is to humbly submit to this Honble High Court that, there is no such infringement of
trademark of the respondents by the petitioners.

Trademark is defined under Section 2(z)(b) of the Trade Marks Act, 1999, 36 which states
'Trademark means, a mark capable of being represented graphically and which is capable of
distinguishing the goods or services of one person from those of others'

Whether Trademark registration is Valid?


36 Trademarks Act 1999, S. 2(zb)
Section 9 of the Trade Marks Act, 1999 states regarding the essential particulars for a
trademark registration stating that if the trademark is not capable of distinguishing the goods
and services of one person from that of another, then the trademark will not be registered.
Section 9(2) also states that if the trademark causes confusion among the people then the
trademark shall not be registered.

In the present case, the second respondent ECL registering the trademark is invalid as it neither
distinctive nor it is unique as it can be clearly seen from the facts that the trademark has been
taken from the books of the appellant which has a copyright. When a literary work is
copyrighted, then the rights are not only for the book but also for the contents of the book which
includes the characters etc..

What can be said here is that the second respondent is not only confusing the general public but
also trying to use the goodwill earned by the appellant for obtaining profits.

Whether the Trademark belongs to the 2nd respondent?

When we look at the facts of the case, it is clear that Boromir Bohemia was a character from the
Fiction book named 'Ballad of Malice and Power'. The point is that 'Boromir' was not some
random character who had a limited role in the book but he was one of the characters that
played a pivotal part in the story even though he was not in existence in the story. Throughout
the story, there is mention of his name stating that he was the last person to ride a full- grown
dragon and was the greatest conqueror of the land of Vengursa. Now there is no doubt as to how
popular the name Boromir was not only in the story but also in reality. Therefore what could be
said is that the name Boromir was like a trademark as when the name would be mentioned,
people would immediately know that he is the character from 'Ballad of Malice and Power'.

Now according to the facts of the case 'BOROMIR' name was registered as a trademark in India
and Trademark holders have absolute rights on their trademark under Section 28 of Trade
Marks Act, 1999 but it has certain exceptions. Now the counsel would mention the concept of
Common law trademark rights. According to the common law trademark rights, rights to use the
trademark is given to the person who first uses the trademark. Common law trademarks are
unregistered trademarks. Even if some person later registers the trademark, the trademark of the
person who first used it will be recognised. Though Common law trademarks are restricted to
the local area, when we look at the case at present, it can be said that the common law
trademark rights will apply in India also because the printed and digitalized versions were each
available in India and the TV Series was telecasted in the online portal ZoomIn.

Therefore what can be said by looking at the facts is that it is actually the defendants who have
infringed the trademark of the appellant.

In N.R. Dongre v. Whirpool Corp,37 it was held by the Supreme Court that the Indian trust
could not use the trademark 'Whirpool' as Whirpool was the trademark that was being used by
Whirpool Corporation. The facts of the case were that Whirpool corporation had been using
Whirpool as its trademark for several years and had established its goodwill by providing good
quality products. In 1977 'Whirpool' trademark lapsed for want of renewal. In 1988 it filed for
renewal. Meanwhile, an Indian trust also tried to register 'Whirpool' as their trademark and they
were given the trademark. In this regard, Supreme court held that the action for passing off is
available to an unregistered user even against a registered proprietor.

Section 27(2) of Trade Marks Act, 1999, states regarding passing off and is a common law
remedy.

Playboy Enterprises v. Bharat Malik & Another 38

This is a landmark case infringement of a foreign trademark. The courts in India have always
held that a trademark even though not registered in India enjoys equal protection under the law
if it enjoys a considerable amount of goodwill and brand name elsewhere in other parts of the
world.

In this case, Section 27 and 28 of Trade Marks Act, 1999 were invoked. Court held that even
though the plaintiff's trademark was not registered as per the PRB ACT (Press & Registration

37 [1995] AIR 300 (Del)

38 Playboy Enterprises v. Bharat Malik & Another, [2001] PTC (21) 328
of Books Act), 1867 it secured registration of the trademark PLAYBOY owing to its long and
continuous use and also as result of the various advertisements made by the plaintiff all around
the world. Further he observed that the magazine PLAYBOY had acquired worldwide
circulation and publication in as many as 16 countries around the world leading to its
widespread fame and reputation all around. Hence, he held that the defendant's trademark
PLAYWAY amounts to infringement of the plaintiff's trademark. And also they tried to sell their
magazines by including similar contents as that of the plaintiff's magazine with the sole
intention of deriving profits and large scale circulation using the good will and reputation of the
plaintiff.

In the same way when we see our case, though the trademark was not registered, it still gets
favored over the registration made by the respondent as the book has been circulated and
published in the US, members of the European Union, Canada, China and the Indian Sub-

Whether a character from the appellant's book can be used as a trademark by the 2nd
respondent?

Under the concept of Character merchandising, it says that the exploitation of fictional
characters of the fame of celebrities can only be done by the original owner of the character.
Here the character Boromir is the character in appellants book and appellant is the creator of
the Boromir. In this case, defendant merchandised plaintiffs character. Under this character
merchandising it is said that merchandising character should be an original work.

Whether the goodwill of the appellant was being used by the respondents to earn the
profit?

Boromir was the famous character in Plaintiffs book series. Therefore all the popularity that the
respondent got for her story on Boromir was because of the book 'Ballad of Malice and Power'.
In short, the popularity or the positive response of the people that the 'The Boromir Rhapsody'
received was because of the goodwill of the book.
In the case Laxmikant V. Patel v. Chetanbhai Shah39, Supreme Court held that the goodwill
and reputation becomes the property of the owner which is protected by courts and when a
competitor initiating sale of goods or services under the same name will cause injury to the
person who is doing business already. The Supreme Court clarified that it makes no different
whether the subsequent person has adopted its trade mark fraudulently or otherwise, i.e. even if
a person has adopted its trademark, once there is a prior user, it is not necessary to prove that
the adoption by the subsequent user is a fraudulent adoption. And the plaintiff does not have to
prove actual damages in order to succeed in the action of passing off, likelihood damage is
sufficient.

Therefore when we look at or case, it is clear from the facts that the word Boromir originated
from the appellant's book and therefore he has absolute right in using the word.

Arguendo

And even if this argument is not accepted then the counsel would state Section 34 of Trade
Marks Act, 1999 which clearly states that the person who has a registered trademark is
prohibited from interfering in the work of a person who is using the similar trademark if that
person already has some vested rights in it, that is, if a person has already been using the
trademark before the registration done by another person. This again is the concept Common
law trademark rights. All that the person needs to do is show documentary evidence that the
person has been using that trademark.

The evidence can be gathered from the facts where it says that the 1st book of the series was
published in 1994 and therefore leaves no doubt that the Appellant has been using the word for
a long time now and it cannot be said that he is infringing the rights of the respondent.

In Titan Industries Ltd. v. Registrar of Trademarks40, where the second respondent filed an
application for registering trademark Classic in respect of clocks, watches, time pieces and

39 [2002](24) PTC 1 SC

40 [2007] (34) PTC 346 IPAB


other parts included in Class 14 claiming usage since 1987. But when the application was
advertised in the Trademark Journal, Appellants filed their notice of opposition on the grounds
that they are manufactures and dealers of wrist watches and they are the proprietors of the word
Titan. They further claim that they are registered proprietors of trademark Titan Classique and
that they are popularly known as classique or classic.

Titan Industries contented that they had registered trademark Titan Classique as early as
25/08/1986 and it is also pointed out that the second respondent company was incorporated in
the year 1988 only and hence their claim of usage since 10/04/1986 is false and the mala fide
intention is explicitly clear. .

The court ruled in favour of the appellant

Therefore, the appellant cannot be charged for using the trademark.

Well Known Trade mark

The term well known trade is defined under section 2(zg) as follows:

well known trade mark, in relation to any goods or services means a mark which has become
so as to the substantial segment of the public which uses such services that the use of such mark
in relation to other goods or services would be likely to be taken as indicating a connection in
the course of trade or rendering of services between those goods or services and a person using
the mark in relation to the first mentioned goods and services.