Zakir T. Thomas, Registrar:
1. Application filed by M/s Challenger Knitting Mills, Calcutta for registration of copyright in the artistic work "Kashmir Beauty".
M/s. Challenger Knitting Mills, an Indian proprietorship firm of 28, B.T. Road, Calcutta filed an application in Form IV of the Copyright Rules for registration of its artistic work titled "Kashmir Beauty". While the application was in the process, this office received an objection to the registration of this artistic work from M/s Trade Mark Registration Bureau, Patent & Trade Mark Attorneys, Calcutta.
2. In their objection, they stated that their clients M/s Kothari Hosiery Factory, Mohta House, 29, Strand Road, Calcutta is one of the oldest and leading manufacturer of hosiery products in India and have trademark registration in their various labels. Among various labels so registered is one titled "Kothari" under copyright registration No. A-53224/96, registered in the year 1996. They claimed that their clients filed a Civil Suit in the City Civil Court at Calcutta for falsification of their trademarks "Kashmir/Kashmir Beauty" and the City Civil Court, Calcutta had passed an interim injunction against M/s Challenger Knitting Mills restraining them from using the trade name "Kashmir" or "Kashmir Beauty".
3. In view of contesting claims and in order to take a fair decision in the matter, a hearing was granted to both the parties to put forward their case. The matter was fixed for hearing before the Registrar of Copyrights on 27.12.2001 at 12.30 p.m. M/s. Trade Mark Registration Bureau representing M/s. Kothari Hosiery Factory, Calcutta sought an adjournment seeking at least a month. This was objected to by M/s. Challenger Knitting Mills, Calcutta. However, the case was adjourned to 28.01.2002. On 28.01.2002, M/s. Challenger Knitting Mills was represented by its proprietor alongwith Shri Mohan Vidhani, Advocate. M/s. Kothari Hosiery Factory was represented by Shri Chander M. Lall of M/s. Lall & Sethi.
4. On 28.01.2002 & 13.02.2002 the following substantive arguments were made Shri Mohan Vidhani, Advocate, on behalf of the applicant M/s. Challenger Knitting Mills relied upon the following arguments: -
(i) The application submitted by M/s. Challenger Knitting Mills, Calcutta is accompanied by a Certificate from the Registrar of Trademark as required under section 45 of the Copyright Act stating that there is no trademark that is identical or deceptively similar to the artistic work in question. Shri Vidhani asserted the objections that are misplaced in as much as the art work involved of the rival party are different. Based on this fact, the objection should be dismissed.
(ii) The proceedings before the City Civil Court and the Registrar of Copyrights are different. To substantiate this, they relied on judicial pronouncement in AIR 1953 SC 357 relevant para 22 at page 363. He also placed reliance on the Order of Hon'ble Delhi High Court stated in 1985 PTC page 53 and 1999 PTC (19) page 591.
(iii) The work of the applicant is not a copy of the objectors work. There is no copyright in ideas and objectors cannot claim protection of the ideas behind their work.
5. Shri C.M. Lall, Advocate of M/s. Lall & Sethi on behalf of the objector M/s. Kothari Hosiery Factory made the following submissions: -
(i) That the applicant is claiming to be the owner of the work. However, under clause 11 of the Statement of Particulars, no assignment/licences have been furnished. The applicant has only furnished a No Objection Certificate from the author and their applicant was not the owner, hence the application need to be rejected.
(ii) The Hon'ble City Civil Court, Calcutta vide their Order dated 13th September, 2001 in Suit No. 6638E/2001 filed by their clients against the applicant, gave a finding that the applicant has copied the art work of the objector. The Hon'ble Court held that the "Colour combination of the boxes, side strip colours at a first glance reveal to a person of ordinary prudence that they would be confused because the two boxes, one used by the Plaintiff (Objector) in comparison of the Defendants (Applicant) are deceptively similar". The Hon'ble Court further held that "the documents as on record sufficiently reveal that the Plaintiffs (Objector's) have distinctive arrangement of common elements since 1951 which the Defendant (Applicant) have adopted in 1990. The Order of the City Civil Court is in operation and in order to maintain the purity of the Register of Copyrights the work should not be entered.
(iii) The applicant stated that in their application for registration of copyright that the impugned label was first published by them in the year 1990. Later, in their letter dated 6th January, 2002, they have stated that they have been using the label from 1985. The objectors alleged that the applicants are repeatedly trying to better their case and are making dishonest and fraudulent statements.
(iv) The applicant has placed reliance upon a judgement in Suit No. 2784/94 in the case of DCM v. Surinder Gupta. This case is related to it an action of trademark and not copyright. They have also relied upon another judgement in the case of Feroze & Company v. Bharat Lock House, 1999 PTC (19) 591. This case was not applicable in the instant case as it related to trademark and is not to a copyright case. In the present case, the Hon'ble City Civil Court has given a finding of fact. In view of Hon'ble Culcutta City Court's Order, there is no issue of concurrent use in the instant case. The applicant's reliance on the judgement in AIR 1953 SC 357 was also challenged as concerning trademark.
(v) The objectors have placed reliance on AIR 1961 Madras 111 wherein it was stated that a copy is, that which comes so near to the original to the mind of every person seeing it. The objectors placed reliance on the Order of City Civil Court, Calcutta stated that there is distinctive similarity.
6. I have carefully considered the forceful arguments extended by both sides on the substantive issue. I have also perused the artistic work accompanying the application titled "Kashmir Beauty" and also the work of the objectors M/s. Kothari Hosiery Factory titled "Kothari" which has also been registered by this Registry.
7. On behalf of the objectors, it was pointed out that the author of the work and the owner of the work are different as per the application and there is no proper assignment of the work. Shri Mohan Vidhani sought an adjournment to 13.02.2002 to file the necessary details. On 13.02.2002 Shri Vidhani filed an affidavit stated that Shri Shyam Sunder Sharma, proprietor of M/s. Challenger Knitting Mills, deposing that he himself is author of the artistic work for which the application has been filed. It was also claimed in the affidavit that it was a typographical mistake of column No.9 of the Statement of Particulars where first publication was claimed as June 1990 whereas it was 1985. The affirmation of the applicants in the affidavit is accepted. As the author claims to be the proprietor, no assignment is necessary and the application is in order.
8. As per the Copyright Act, the author of an original artistic work gets protection. The condition of originality that has been demanded in copyright works whether literary, artistic, dramatic or musical is very minimal. The originality may stretch from very highly original literary works to a street directory. Indian Courts have adopted the view that the amount of originality that is required under the Copyright Act is minimal. What is required is that a work should not be a copy of another work and sufficient skill, labour and judgement of the author should be used while producing a work. As per the scheme of the Copyright Act, the author of an artistic work gets the exclusive right of reproduction of a work wide section 14(c)(i). When this exclusive right is contravened, it is regarded infringement of copyright under section 51 with attendant penal consequences. The right to reproduce is restricted only if the reproduction is a copy of the authors work. The premise that if a work is a copy then it does not get copyright is agreed to by both the applicant and the objectors. In fact, the applicant's advocate Shri Mohan Vidhani categorically stated that if his work is a copy of objectors' work, then his case may not be considered at all. Sri Chander M. Lall agreed with the basic proposition but contended that the work in question is a copy of the objectors work. Hence a limited question which is to be considered here is whether the work "Kashmir Beauty" submitted for registration of copyright is a copy of the work titled "Kothari" which has already been registered under the Copyright Act. There are two separate findings of facts in the matter as follows: -
(i) The certificate issued by the Registrar of Trademarks under section 45 of the Copyright Act which states that no trademark identical with or deceptively similar to the artistic work under question has been registered under Trade & Merchandise Act, 1958 or that no application has been made for such registration by any person other than the present applicant.
(ii) The interim Order of the Hon'ble City Civil Court, Calcutta in Suit No.1047/2001. Wherein the Court relied on a judgement reported in (2000) 35 SCC 573 and it is stated in this order that "when the question arises whether a mark applied for bears such resemblance to another as to be likely to be deceive, it should be determined by considering what is the leading character of it......... The Hon'ble Court further observed that it is clear that a mark is infringed if the essential features or essential particulars of it are copied. The City Civil Court adopted the principle that copying/adoption of common elements is the basic question to be looked into" and concluded that "besides the registration of the trade mark by the plaintiff ....................... the colour combination of the boxes, side strip colours at a first glance reveal to a person of ordinary prudence that they would be confused because that the two boxes one used by the plaintiff in comparison with the defendants are deceptively similar and the defendants knowing fully well have used the same which has not been registered under the Trade & Merchandise Marks Act, 1958. The objectors pointed out that in view of the finding of fact by the City Civil Court that the copy of the work of the applicant is deceptively similar to the work of the objector, the application may not be entertained.
9. The objector pleaded that on the basis of the findings of Hon'ble City Civil Court, Calcutta, the application should be rejected. The applicants opposed this as cited above. The decision of the City Civil Court is in consequence to an application under order 39 rule 1 read with rule 4 CPC in a Suit for declaration and permanent injunction and damages filed. The Suit is still pending. The applicants pleaded that since an application under section 45 has been filed before the Registrar, he need to dispose it of as proceedings under the Copyright Act are separate and independent.
10. I agree with the applicants that the proceeding of the registration of copyright is an independent proceeding under the Copyright Act. Once an application is made before the Registrar under section 45 of the Act, the Registrar will have to consider it applying the provision of the copyright law.
11. Here, it needs to be pointed out that there are certain differences between trademark matter and copyright matter. In trademark, it is deceptive similarity of a mark with another, which is the issue, while in copyright it is slavish copying of a work that attracts infringement of right of another. What is required for copyright protection in an artistic work is "originality". It is not originality of idea or the theme behind the work but the expression of the work, which requires to be original. The originality required as per the Act is a minimum amount of originality. What is prevented under the Copyright Act is making of copies without permission of the author. A copy is one which is either a reproduction of the original or a work which closely resembles the original. The following judicial pronouncements are relied upon to make this proposition: -
(i) Associated Publishers v. K. Bhashyam, AIR 1961 Mad. 114: The issue here was a portrait of Mahatma Gandhi painted by an artist. It was conceded that the portrait was a combination of two other pictures of Mahatma Gandhi. Even so, it was held that the artist was entitled to protection of his work because the result is something different and that something was the product of the labours and efforts of the plaintiff. The following excerpts explain the reasoning of the Court: -
"It is impossible to lay down any rule which could serve as a test of what constitutes a copy or colourable imitation. In order to constitute infringement there should be direct or indirect use of those features of the plaintiff's works in which copyright subsists. It is unusual for an infringement to consist of an exact reproduction of the whole of the plaintiff's work. Consequently, it is difficult to be precise as to the amount of copying or degree of resemblance necessary to constitute infringement. The conclusion must depend really on the effect produced upon the mind by a study of the picture, and of that which is alleged to be a copy of it or at least of its design."
(ii) C. Cunniah & Co. v. Balraj & Co., AIR 1961 Mad. 111. : In this case, the Court referred to the definition of a copy given in Hansfsataeng v. N.H.Smith and Sons, 1905-1 Ch.519 and observed:-
"A copy is that which comes so near to the original as to suggest that original to the mind of every person seeing it. "Applying this test ..... one picture can be said to be a copy of another picture only if a substantial part of the former picture finds place in the reproduction."
(iii) Sham Lal Pagaria v. Gaya Prasad, AIR 1971 Allahabad 182: "The question whether an impugned work is a colourable imitation of another persons work is always a question of fact. The determining factor is to see whether the impugned work is a slavish imitation and a copy of another persons work or it bears the impress of the authors own labour and exertions."
(iv) Venugopala Sarma v. Sangu Ganesan, 1972 Cr LJ 1098 (Mad): "Applying this test, the degree of resemblance between the two pictures, which is to be judged by the eye must be such that the person looking at the respondents' pictures must get the suggestion that it is the appellants' picture......... One picture can be said to be a copy of another picture only if a substantial part of the former picture finds place in the reproduction."
The Question may be solved by taking each of the works to be compared as a whole and determining whether there is not merely a similarity or resemblance in some leading feature or in certain of the details, but whether keeping in view the idea and general effect created by the original, there is such a degree of similarity as would lead one to say that the alleged infringement is a copy of reproduction of the original (Quoted in `Copyright and Industrial Designs' by P.Narayanan page199 second edition).
12. What is to be seen in the instant case is whether the work filed by the applicant alongwith the application for registration of copyright is a slavish copy of that of the objector. I have carefully considered the Certificate of Registration of trademark and the decision of the Hon'ble City Civil Court, Calcutta.
13. The work that is attached with the application has written `Always Depend on Kashmir Beauty' while what is written in the objectors work is `Insist on Kothari Hosiery's Production'. In the case of the former, the words `Always Depend on' in italics in a particular style and the word `KASHMIR' in capital letters in an artistic manner and the word `Beauty' in italics. In the case of objectors, the word `Insist on Kothari Hosiery's in italics in a style different from the applicants and `PRODUCTION' in capital letters. There is an arrow pointing down in the middle of the work, which is a distinctive feature in `Kothari' work. In the case of `Kashmir' there is no such feature.. In the case of `Kashmir Beauty' the outer border falls within a rectangular pattern of yellowish colour and between the border and the rectangular outer pattern the colour is deep green. In the case of `Kothari Hosiery' the outer rectangular pattern is there but there is a distinctive white border inside the rectangular pattern in between which is green which is different from the green of the applicants' work. Within the white border is another green area, (the same colour/shade of green as between the two rectangular borders) which features two cups from which some waves are shown to be emanating. Within this green background there is a white space in which with the inner design is the arrow which points down. It is written in the green area `The Quality That Never Varies'. There is no such writing in the case of `Kashmir Beauty'. At the center of both the works is a white area with outer border, here again the shades of white are different, as in the works presented before me, `Kashmir Beauty's is plain white and `Kothari's is off-white. The design of the white area in the case of `Kashmir Beauty' and of white area in case of `Kothari Hosiery' is different. The prominent feature in `Kothari Hosiery' off-white area is an arrow which points down after the letters `Insist on Kothari Hosiery
Please Login To View The Full Judgment!
Production' while in the case of `Kashmir Beauty' prominent features are 2 cups emanating from some waves below with the words `Always Depend on Kashmir Beauty'. These words are not there in `Kothari's work. The work of `Kashmir Beauty' does not carry the words `The Quality That Never Varies' which features in the work of `Kothari'. The designs of the cup from which waves are shown to emanate are different. While in the case of "Kothari Hosiery' the cups are shown to be of same size both with their handles turned inwards, in the case of `Kashmir Beauty', one cup is relatively much smaller, almost one-third of the size of the former and both the handles pointing in the same direction. These basic features in the artistic work that has been presented for registration of copyright and the work of the objector are different. It cannot be said from a close examination to these two works that one work is a slavish copy of another. As per the case law cited by the objectors (AIR 1961 MAD 111), a copy if that which comes so near to the original to the mind of every person seeing it. Applying this test, it cannot be considered that one work is the copy of another. The artistic work `Kashmir Beauty' has its own characteristics, which makes it rightful to claim originality on its own. This work is not a slavish copy of the work titled `Kothari' to attract infringement of copyright. Both the works are independently entitled for copyright. The issue before City Civil Court was relating to trademarks. The instant application is one for registration of copyright, which is an automatic right. Entries in the Register provide only a prima facie evidence. On the basis of reasons given above, the applicant's work cannot be considered as a slavish copy of the objectors work. On the basis of this finding, the application of M/s. Challenger Knitting Mills, Calcutta is allowed. The Registry may enter the particulars in the Register of Copyrights.