Case Commentary on Star India Pvt. Ltd vs. Leo Burnett (India) Pvt Ltd.

The Author of this blog is MsKritika Shrivastava, 4th Year student at Symbiosis Law School, Pune.

Case Name:        Star India Private Limited Vs. Leo Burnett (India) Private Limited
Citation:               2003(2) BomCR655, 2003(105(2)) BOMLR28, 2003(27) PTC81(Bom)
Plaintiffs:         Star India Private Limited
Defendants:       Leo Burnett (India) Private Limited
Judge/Coram:    F.I. Rebello, J.
Decided on:        24.09.2002


On April 9,2000 the plaintiffs entered into an agreement with Balaji Telefilms Pvt. Ltd. with an objective to create, compose and produce 262 episodes of a television serial titled “KYUN KI SAAS BHI KABHI BAHU THI”. As per the provisions laid under Section 17 of the Copyright Act, plaintiffs are the first copyright owners based on the fact that Balaji has produced episodes of the serial and their services were engaged by way of a contract of service.“Balaji has contrived the original artistic work portraying inter alia the logo and the title in a peculiar stylized font and containing as its essential features the words “KYUN KI SAAS BHI KABHI BAHU THI” and as per the agreement plaintiffs have become the owner of the said artistic work.

The serial soon gained support and recognition from the viewers which resulted in immense goodwill and reputation that the public associate voiced that the serial lies with the plaintiffs only. Later, the plaintiffs endorsed the characters and the serial in form of products and services in exchange for a fee.

However, in February 2002 the defendants emerged with the commercial for a consumer product ‘TIDE DETERGENT’ promoting and telecasting it with a title “KYUN KI BAHU BHI KABHI SAAS BANEGI” with similar characters of grandmother, mother-in-law and daughter-in-law, entailing the characters as J.D., Savita, Tulsi in the serial of the plaintiff. After gaining knowledge of this, the plaintiffs contended that there has been an infringement of copyright as an average viewer will be under the impression that the plaintiffs were endorsing the defendant’s product and shows the connection between plaintiffs in the said serial and the defendants and their product.

o   Whether the defendants have infringed the plaintiff’s copyright in the T.V. serial and artistic work by copying their work for making a commercial?
o   Whether there is substantial copying of the plaintiff’s film by the defendant?
o   Whether the defendants are guilty of passing off their reputation and goodwill by misrepresenting to the public that they are authorized to make use of original artistic and musical work in the serial?
o   Whether the defendants have defeated the plaintiff’s character merchandising?
The judgment of the case was made in favor of the defendants while referring to various judgments.
Infringement of Copyright
The Court held that there has been no infringement of copyright in this case as the defendants made a new film and not copied the original film. The Court interpreted Sections 14(a), (b), (c), (d) (1) together which states that the author has exclusive right to make an actual physical copy of a cinematograph film by a process of duplication. The theory that they inseminate is also known as ‘Physical Copy Doctrine’. But in the current case making of T.V. commercial was an independent act. The dialogues, the sequence, everything was shot and recorded by the defendants separately and not copied or edited from a film already made. Therefore, the defendants are not liable for infringement of plaintiff’s copyright in its film. The reasoning behind the decision was that the independent production by another person or even the same cinematograph film does not constitute an infringement of a copyright in a cinematograph film. The reference was also made to the case in which it was held[1] that there will not be an infringement if there is some element of material alteration or embellishment which makes the totality of the work an original work. Similarly, in another case referred by the Court, it was held[2] that there was no infringement of the artistic work as defendant’s film was not copied from the recorded medium of the plaintiff’s film but had been shot by the defendant's own agents.
Substantial Copying of Film
The Court held that the work of the defendant is purely a commercial add for promotion of Tide product only as different from the plaintiffs and the question of substantial copying does not arise here. The court has also applied a test of comparing[3] both the works in qualitative and quantitative terms which are generally used by the U.S. District Courts. In the current case, the plaintiff’s work comprises of 262 episodes with a duration of 87 hours and defendants work is only of 30 seconds. Applying such a test and comparing both the works as a whole, it stands that there is no substantial copying of facts.
Passing Off
The Court in the case of Aktiebolaget Volvo of Sweden v. Volvo Sheets Limited of Gujarat observed that the crux of passing off action lies in possible deception.[4] The possibility of deception is high in the case of common fields. The point of deception does not arise as both works are different from each other and the defendant’s commercial cannot in any way affect the viewership of the plaintiff’s film or potential TRP’s or sponsorship value/possibilities. Therefore, the Court held that there is no possibility of causing damages to the plaintiff’s reputation.
Character Merchandising
The Court held that the merchandising involves the exploitation of fictional characters or the frames of celebrities by licensing such famous fictional characters to others mean when the character has developed commodity value of itself, and there is no alike situation present here. Therefore, the characters of the serial are common and remain unexploited and no character merchandising has been done.
The view of Bombay High Court is highly right in delivering the judgment. The judgment held was in consonance with Article 14bis(1) of the Berne Convention. It can be noted from the above references that the principle of stare decisis has been followed and the test of ‘substantiality’ has complied with the guidelines set out by the Courts.
It has broadened the scope of the ‘substantiality’ test[5] and has provided a definite foundation to the purposive construction to be applied to the Copyright Act, 1957. This can cause a serious  legal impact on society as the guidelines in the conventions have been strictly followed and the Courts have not adopted a liberal approach.
Unlike the UK and Australian Copyright Act, the term ‘copyright’ has been construed in the Copyright Act. The word ‘copy’ has been elucidated in Cosigner and Skone James Copyrights where it states that there must be more than an exact reproduction to secure copyright, there must be an element of a material alteration to suffice the work as original.
In the present case, the copyright protection has been awarded narrowly. This can be due to the fact that in the case of films and sound recordings a copy of the theme does not amount to infringement and if dissimilarities can be proved then the producer can escape liabilities.  Therefore, since both the films were of different nature, in the form of a commercial and serial there lie no similarities between them. Hence, there arises no case for infringement.
Furthermore, the rights envisaged under Section 14 (a) (b) and (c) and that under Section (d) (e) are of different degree. In the former, the exclusive right is to reproduce the work in any material form, and in the latter, the exclusive right is to ‘make a copy’ of the respective subjective matter. The difference in words has resulted in the differential interpretation of the provisions. Consequently, production by another person or even the same cinematograph film will not constitute an infringement of the copyright of the first film. The Court relied on Norowzian v Arks Limited and other[6] where it was held that for a second film to infringe copyright in the first film, it has to be an actual copy of the first film. Reliance was also placed on CBS Australian Limited and others v Telemak Teleproducts (Aust.) Pty Ltd[7], where it was held that the reshoot of the film cannot be said to be a copy of the film for the purpose of infringement. This, therefore, leaves sufficient scope for the protection of moral rights.
Thereby, it is concluded that the judgment has been delivered in a true sense following the principles of law. The judgment is not vague in nature and has been supported with legal reasoning as applied by the Court. The Court has rightly held that there has been no infringement of copyright in the present case and there lies no dissenting opinion for the same.

[1] Jay music Limited v. Sunday Pictorial Newspapers Limited, 1960 (1) All E.R. 703.
[2] Telmark Teleproducts (Aust.) Pty. Limited v. Bond International 1985 (5) IPR 203
[3] Gates Rubber v bando Chemical Co, 9 F. 3d 823 (10th Circ 1993)
[4] 1998 IPLR 63
[5] R.G. Anand v. Deluxe Films, (1978) 4 SCC 118.
[6] 1996 FSR 394.
[7] 1987 (9) IPR 440.