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Author –  Advocate Shubham Borkar Senior Legal Consultant at Vohra and Vohra and Yash Raj

The copyright of cinematograph film i.e. the right to make a copy of a film has been a subject of contrasting decisions of the different High Courts. Whereas on one hand , Single Bench of the Bombay High has in  Star India Private Limited v. Leo Burnett (India) Pvt. Ltd. (2003) 27 PTC 81 (Bom) held that the expression ‘to make a copy of the film’ would mean to make a physical copy of the film itself and not another film which merely resembles the film contrary to which , the Division Bench of the Calcutta High Court in Shree Venkatesh Films Pvt. Ltd. v. Vipul Amrutlal Shah, 2009 SCC OnLine Cal 2113 has held that a film must not be a copy of any other work, including any other film.

Recently on 1^st July 2019, Justice Manmohan in a  Single Bench judgment held that the expression ‘to make a copy of the film’ does not mean just to make a physical copy of the film by a process of duplication, but it also refers to another film which substantially, fundamentally, essentially and materially resembles/reproduces the original film.

Facts pertaining to the Case

The plaintiff, MRF Limited are engaged in the business of manufacture, marketing and sale of tyres. In order to widely publicise and advertise one of its range of tyres, MRF Limited produced an audio-visual advertisement titled as ‘MRF NV Series present REVZ’. The issue was whether the said advertisement constituted a ‘cinematograph work’ under Section 2(f) of the Copyright Act, 1957 and was MRF Limited entitled to protect it under Section 14 of the Copyright Act, 1957. The defendant, Metro Tyres Limited, who is also involved in the business of manufacturing and marketing of tyres, has produced similar advertisement titled ‘Bazooka Radial Tyres’.

Contentions of the Parties

1. MRF Limited, stated that a comparison of advertisement’s of both the parties showed a similar sequencing, form, treatment and expression. MRF submitted that in a suit for copyright infringement of a cinematograph film the test is of an overall impression of an average viewer and not a microscopic analysis which underscores differences/divergences.

2. Metro Tyres Limited emphasised that in Section 13(1) of the Copyright Act, 1957 the word ‘original’ is not used with respect to cinematograph film. Metro Tyres Limited contended that a cinematograph film is treated differently under Section 13(3) of the Copyright Act, 1957 as all the underlying works which contribute to the making of a film are protected independently. It was emphasised that it had to be shown that an actual copy of the copyrighted film had been made by a process of duplication. Metro Tyres Limited submitted that the expression ‘to make a copy of the film’ meant to make a physical copy of the film itself and not another film which merely resembled the original film.

Findings of the Court

1. The Hon’ble Court held that under the Copyright Act, 1957 a ‘cinematograph film’ is protected as a ‘work’ and not merely as a tangible recording. Section 2(y) of the Copyright Act, 1957 defines “work” as including a cinematograph film. A ‘cinematograph film’ under Section 2(f) means “any work of visual recording and includes a sound recording accompanying such visual recording…” Copyright subsists in a ‘cinematograph film’ as a work independent of underlying works that come together to constitute it. In terms of Section 13(3)(a), a film must not be a copy of any other work, including any other film.
2. The Hon’ble Court enunciated that although the expression ‘original’ is missing in Section 13(1)(b) of the Act, 1957, yet the requirement of originality is brought in through Section 13(3)(a) which has to be read with the definitions of ‘cinematograph film’ and ‘author’ under Sections 2(f) and 2(d) of the Copyright Act, 1957. 
1. Section 13(3)(a) of the Copyright Act, 1957 implies that a copyright in a film cannot subsist if a substantial or material part of the said film is an infringement of copyright in any other work. In the opinion of the Court, this can only happen if a cinematograph film possesses originality greater than the originality of its underlying works.
2. Further, Section 2(d) states “an author means, in relation to a cinematograph film, the producer.” Authorship entails originality. Without originality, there can be no authorship.
3. The Hon’ble Court pointed out that it was not the question of monopolizing an idea or a subject or the underlying work but of protecting the ‘intellectual creation’ i.e. the form given to the idea or the development of the subject or underlying work. Consequently, a cinematograph film is normally an original work as it is an ‘intellectual creation’.
4. As the scope of protection of a film is at par with other original works, the Court was of the opinion that the test laid down in R.G. Anand v. Deluxe Films, (1978) 4 SCC 118 would apply even though the judgment was concerned with a script (literary work). The Court held that the test laid down in R.G. Anand's (supra) was not confined to a literary work and was of general application and had been applied as such since then. Significantly, the ‘substantiality’ test is found in the opening words of Section 14 and therefore applies equally to Section 14(d) of the Copyright Act, 1957.
5. Consequently, it held that ‘to make a copy of the film’ does not mean just to make a physical copy of the film by a process of duplication, but it also refers to another film which substantially, fundamentally, essentially and materially resembles/reproduces the original film. Accordingly, it held that the blatant copying of fundamental/essential/distinctive features of the plaintiff's advertisement on purpose would amount to copyright infringement. Consequently, the Court will have 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.
6. The Copyright Act, 1957 is required to be interpreted in consonance with the Berne Convention which states that a cinematographic work is to be protected as an original work and that the owner of copyright in a cinematographic work shall enjoy the same rights as the author of an original work.

Conclusion

The Bombay and Calcutta High Courts, by way of reasoned orders, have taken contrasting views regarding the copyright of cinematograph films. The learned Single Judge of the Delhi High Court in this judgement has laid down that the substantiality test stipulated in the Apex Court’s landmark judgement in R.G. Anand’s case with respect to literary works would also apply to cinematograph films. The expression ‘to make a copy of the film’ does not mean just to make a physical copy of the film by a process of duplication, but it also refers to another film which substantially, fundamentally, essentially and materially resembles/reproduces the original film.

However, after applying the test laid down in R.G. Anand v. Deluxe Films, Hon’ble Justice Manmohan held that the two advertisements are neither substantially nor materially or essentially similar. Hence, the MRF’s plea for injunction was dismissed.