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Tuesday, October 20, 2015

whether copyright exists in the title “Desi Boys”. A title of a work has been considered to be not fit to be the subject of copyright law as will be apparent from the cases considered later. A title by itself is in the nature of a name of a work and is not complete by itself, without the work. No instance of a title having been held to be the subject of copyright has been pointed out to us.=whether the copying of the title amounts to the taking of a substantial part of the whole work. General statements can nevertheless be found in non-copyright cases to the effect that there is no property in a name or title standing alone unless it is the subject of goodwill or a registered trade mark.”= “It is very difficult to protect titles of films by an action for infringement of copyright due to the requirements of originality and that a substantial part of a work be copied. If a well-known title of a film is used without authority, the owner’s remedy is likely to lie in passing off. Protection by registration as a trade mark may be available provided the title in sufficiently distinctive.”=We are thus, of the view, that no copyright subsists in the title of a literary work and a plaintiff or a complainant is not entitled to relief on such basis except in an action for passing off or in respect of a registered trademark comprising such titles. This does not mean that in no case can a title be a proper subject of protection against being copied as held in Dicks v Yates where Jessel M.R said “there might be copyright in a title as for instance a whole page of title or something of that kind requiring invention” or as observed by Copinger (supra).In the present case we find that there is no copyright in the title “Desi Boys” and thus no question of its infringement arises. The prosecution based on allegations of infringement of copyright in such a title is untenable.Section 482 were rightly dismissed since these facts alleged by the appellants depend on evidence at the trial. It is not possible to agree since it has throughout been the case of the respondent No. 1-Devkatta that he is claiming copyright only in the title of the synopsis of his story “Desi Boys” and he has not even seen the film of the appellants nor does he know the story. The learned counsel for the respondent was however right in his submissions that it is not necessary to furnish all the ingredients of the complaint and failing which the complaint is liable to be dismissed on that ground. It is not necessary to consider the decisions cited by the respondents on this point. 22. In the result, both the Criminal Appeals are allowed. The Criminal Case No. SW/332 of 2011 pending before the Learned Metropolitan Magistrate, Mumbai is hereby quashed.

                                                                  REPORTABLE
                        IN THE SUPREME COURT OF INDIA
                       CRIMINAL APPELLATE JURISDICTION

                      CRIMINAL  APPEAL No. 258 OF 2013


KRISHIKA LULLA & ORS.                              …. APPELLANTS


                                   VERSUS

SHYAM VITHALRAO DEVKATTA & ANR.              …. RESPONDENTS

                                    WITH

                      CRIMINAL  APPEAL No. 259 OF 2013


                                  JUDGMENT

S. A. BOBDE, J.

            These two Criminal Appeals are preferred by the accused  against
the judgment and order dated 22.3.2012 in  Criminal  Misc.  Application  No.
1295 of 2011 and 1296 of 2011 passed by the  learned  Single  Judge  of  the
Bombay High Court refusing to quash the complaint  and  the  process  issued
under Section 63 of the Copyright Act, 1957 (hereinafter  referred  as  “the
Copyright Act”) read with Sections 406 and 420 of  the  Indian  Penal  Code,
1860 (hereinafter referred as “IPC”).
2.           The  respondent  No.  1-Shyam  Vithalrao  Devkatta,   filed   a
complaint being Criminal Case No. SW/332 of 2011 under  Section  63  of  the
Copyright Act, later amended to add additional charges  under  Sections  406
and 420 read with Section 34 of the IPC, against  five  persons.   Upon  due
verification process was  issued  by  the  learned  Metropolitan  Magistrate
against all except the fifth accused. Of these accused, four approached  the
Bombay High Court by way of filing two criminal  misc.  applications,  under
Section 482 of the Code of Criminal Procedure,  1973  (hereinafter  referred
to as “Cr.P.C”) for quashing the complaint. The High  Court  having  refused
to quash the complaint, the appellants have approached this Court.
3.          The complainant/Respondent No.1 claims copyright in  a  synopsis
of a story written by him with the title “Desi Boys”.    According  to  him,
he had written a story with the title “Desi Boys” and had got  the  synopsis
of the story registered with the Film  Writers  Association  on  25.11.2008,
when a friend, one Ramesh Bhatnagar, told him that a comedy  film  story  is
required by the son of a film Director, David Dhawan, he mailed the  concept
of the story in the form  of  a  synopsis  as  an  attachment  to  an  email
addressed to Ramesh Bhatnagar on 14.10.2009 with  the  words  “Dear  Friend,
just see the attachment.”  Ramesh Bhatnagar forwarded the story, calling  it
“just an idea”  by  email  to  one  Ahsan  Sagar  on  15.10.2009.  What  was
forwarded was apparently the same short synopsis of  the  concept  with  the
title “Desi Boys”.   A copy on the record makes it clear that it was  by  no
means the entire story with all the dialogues and the screen  play.   Having
done so, his  friend  Ramesh  Bhatnagar  did  not  receive  any  reply  but,
suddenly the complainant saw the promos of a film bearing  the  title  “Desi
Boys”, actually spelt as “Desi Boyz”.  According to  him,  the  adoption  of
the title “Desi Boyz” is a clear infringement of the copyright in  the  film
title “Desi Boys”.  Admittedly, he has not seen the film and  he  states  in
his complaint, he cannot say whether  a  part  of  the  story  of  the  film
written by him has also been infringed.
4.          In the meanwhile, the appellants released their  film  with  the
title “Desi Boyz”  throughout  the  world  including  India  on  25.11.2011.
According to them, the film is  based  on  a  story  written  by  one  Milap
Zaveri, who wrote the story under an agreement dated 02.09.2009,  for  which
they have paid the author by cheque.  The shooting of the film commenced  on
07.11.2010 and the respondent No. 1 came to know about the film sometime  on
12.10.2011.  The details of the defence are not dealt with  here  since  the
matter must be decided on the basis of the tenability of the complaint.
5.          The  Court  of  Learned  Metropolitan  Magistrate  having  taken
cognizance, as stated above the appellants approached the Bombay High  Court
under Section 482 of the Cr.P.C  for  quashing  the  complaint  and  process
issued under Section 63 of the Copyright Act read with Sections 406 and  420
of IPC.   The learned Single Judge who heard the  matter  as  a  part  of  a
batch of matters in which parties had challenged the order  issuing  process
against them in several different cases,  dismissed  the  applications.   In
paragraph 97 of the judgment, the High Court considered the appellants  case
and merely pointed out that according to the  appellants,  the  story  which
they had converted into a film was written by an author  to  whom  they  had
paid a certain amount under an agreement even before the  complaint  of  the
respondent No. 1- Devkatta.  Thereupon, the High Court merely observed  that
the facts alleged by the respondent No. 1 can  only  be  determined  at  the
trial and on the face of the record there was neither  any  abuse  of  court
nor failure of justice and the applications were simply dismissed. There  is
no decision on the various issues raised  by  the  appellants,  hence  these
appeals.
6.          Mr. Raju Ramchandran, the learned  counsel  for  the  appellants
submitted that the respondent  No.1-Devkatta  has  claimed  infringement  of
copyright  in  the  title  of  the  synopsis  of  a   story   “Desi   Boys”.
Mr. Ramchandran, maintains that there is no copyright  in  the  title  of  a
story or for that matter a film  and  therefore,  no  complaint  is  tenable
under Section 63 of the Copyright Act which makes a deliberate  infringement
or the abatement of the copyright  in  a  work  punishable  as  an  offence.
According to the learned counsel, the appellants got the  story  written  by
an author who was paid for it and by now the story had been  converted  into
a film bearing the title “Desi Boyz” starring Akshay  Kumar,  John  Abraham,
Deepika Padukone, Anupam Kher, etc.   The film had been  released  all  over
the world including India on  25.11.2011,  after  theatrical  trailers  were
released on two occasions.  It was submitted that  the  story  of  the  film
released by the appellants bears no similarity whatsoever with the story  of
which Devkatta has written a synopsis, the characters  and  the  scenes  and
the settings being entirely different.
7.          The main issue that arises  for  determination  is  whether  the
respondent No.1-Devkatta has copyright in the title  “Desi  Boys”  which  he
has given to the synopsis of a story.  Further, if at all a complaint  under
section 63 of the Copyright Act is tenable against all  the  appellants  for
giving the title “Desi Boyz” to the film released by them.
8.          Section 13 of the  Copyright  Act,  lays  down  works  in  which
copyright subsists.  Section 13(1) reads as follows:-
            “13(1) Subject to the provisions of this section and  the  other
provisions of this Act, copyright shall  subsist  throughout  India  in  the
following classes of works, this is to say,-
original literary, dramatic, musical and artistic works;

cinematograph films; and

[sound recording]

9.          It is obvious that what is claimed by  Respondent  No.1-Devkatta
is only  copyright  in  the  title  “Desi  Boys”.   It  is,  therefore,  not
necessary to examine if a mere synopsis or a note of a story  amounts  to  a
literary work.  Admittedly, Devkatta has not  made  any  film  by  the  name
“Desi Boys” and his only grievance is about the  infringement  of  copyright
in the title which according to him is the soul of his story and copying  it
takes away everything from his story.
10.   The question that arises is whether  copyright  exists  in  the  title
“Desi Boys”.  A title of a work has been considered to be not fit to be  the
subject of copyright law as will  be  apparent  from  the  cases  considered
later.  A title by itself is in the nature of a name of a work  and  is  not
complete by itself, without the work.  No instance of a  title  having  been
held to be the subject of copyright has been pointed out to us.
11.   It must be  noted  that  in  India  copyright  is  a  statutory  right
recognized and protected by The Copyright Act, 1957.  It must  therefore  be
first seen if the title “Desi Boys” can be the subject of  copyright.  On  a
plain reading of Section 13, copyright subsists in  inter-alia  an  original
literary work.  In the first place  a  title  does  not  qualify  for  being
described as “work”.  It is incomplete in itself  and  refers  to  the  work
that follows.  Secondly, the combination of the two words “Desi” and  “Boys”
cannot be said to have anything original in it. They  are  extremely  common
place words in India.  It  is  obvious,  therefore,  that  the  title  “Desi
Boys”, assuming it to be a work, has nothing original in  it  in  the  sense
that its origin cannot be attributed to the respondent No.1. In  fact  these
words do not even qualify for  being  described  as  ‘literary  work’.   The
Oxford English Dictionary gives  the  meaning  of  the  word  ‘literary’  as
“concerning the writing, study, or content of literature, especially of  the
kind valued for quality of form”.  The mere use of  common  words,  such  as
those used here, cannot qualify for being described as  ‘literary’.  In  the
present case, the title of a mere synopsis of a story is said to  have  been
used for the title of a film. The title  in  question  cannot  therefore  be
considered to be a ‘literary work’ and, hence, no copyright can be  said  to
subsist  in  it,  vide  Section  13;  nor  can  a  criminal  complaint   for
infringement be said to be tenable on such basis.
12.   The decisions cited on behalf of the appellants show that it  is  well
settled that copyright does not subsist in a title of  work.    In  Hogg  v.
Maxwell reported in (1866-67) L.R.2 Ch. App. 307, the question  was  whether
the defendant had infringed the copyright of the plaintiff in the  title  of
a monthly magazine called “Belgravia”.   Referring to the title  “Belgravia”
the Court observed:
“It is quite absurd to suppose that the Legislature, in  providing  for  the
registration of that which was to be the indicium of something  outside  the
registry, in the shape of a volume or part of a volume, meant that,  by  the
registration of one word, copyright in that  one  word  could  be  obtained,
even although that one word should be registered  as  what  was  to  be  the
title of a book or of a magazine……….. I apprehend, indeed, that if  it  were
necessary to decide the point, it must be held that there cannot be what  is
termed copyright in a single word, although the word should  be  used  as  a
fitting title for a book. The copyright contemplated by the Act must be  not
in a single word, but in some words in the shape of a volume, or part  of  a
volume, which is communicated  to  the  public,  by  which  the  public  are
benefited, and in return for which a certain  protection  is  given  to  the
author  of  the  work.  All  arguments,  therefore,  for  the   purpose   of
maintaining this bill on the ground of copyright appear to  me  to  fall  to
the ground.”

13.   In Francis Day & Hunter Ltd.  v.  Twentieth  Century  Fox  Corporation
Ltd. and Ors. reported in AIR 1940 Privy  Council  55,   the  Privy  Council
considered the infringement of copyright in the  title  of  a  song  by  its
adoption for the title of a film.  The Privy Council observed:-
“In the  present  case  the  title  was  originally  applied  to  a  musical
composition, whereas it has been applied by  the  respondents  to  a  motion
picture or a film. The argument of the appellant company would be the  same,
it seems, if the application of the  title  complained  of  had  been  to  a
picture or a statue. On this reasoning it  would  be  said  that  the  title
"Adam" applied to a work of statuary would be infringed if that  title  were
used as that of a novel. These and other anomalous consequences justify  the
broad principle that in general a title is not by itself a  proper  subject-
matter  of  copyright.  As  a  rule  a  title  does  not  involve   literary
composition, and is not sufficiently  substantial  to  justify  a  claim  to
protection. That statement does not mean that in particular  cases  a  title
may not be on so extensive a scale, and of so important a character,  as  to
be a proper subject of protection against being copied. As Jessel M.R.  said
in Dicks v. Yates (which, as Lindley  L.J.  said  in  Licensed  Victuallers'
Newspaper Co. v. Bingham,  virtually  overruled  on  this  point  Weldon  v.
Dicks ) there might be copyright in a title "as, for instance,  in  a  whole
page of title or something of  that  kind  requiring  invention."  But  this
could not be said of the facts in the present case. There may  have  been  a
certain amount, though not a high degree, of originality in thinking of  the
theme of the song, and even in choosing the title, though it is of the  most
obvious. To "break the bank" is a hackneyed expression, and Monte Carlo  is,
or was, the most obvious place at which that achievement or  accident  might
take place. The theme of the film is different from that of  the  song,  and
their Lordships see no ground in copyright law to  justify  the  appellants'
claim to prevent the use by the respondents  of  these  few  obvious  words,
which are too unsubstantial to constitute an infringement,  especially  when
used in so different a connection.”
14.   That case is apposite in the sense  that  the  title  of  a  song  was
adopted as the title of a film like in the present case  the  title  of  the
synopsis of a story has been adopted as a title of a film  and  not  another
story.  Moreover the title comprised of common words as in the present  case
and they were held  that  they  were  too  unsubstantial  to  constitute  an
infringement.
15.   In E.M. Forster and Anr.  v.  A.N.  Parasuram  reported  in  AIR  1964
Madras 331 the author of “A passage to India”  E.M.  Forster  filed  a  suit
against the defendants for alleged infringement of copyright  in  the  title
of the book for adopting as  a  title  the  name  of  the  defendants  guide
written for students, as “E  M  Forster,  A  Passage  to  India,  Everyman’s
guide”.  The Court reviewed the law on the  subject[1],  and  observed  that
there was no copyright in respect of title vide  page  231  of  the  report.
Eventually the Court held :-
 “As we have earlier affirmed, there  is  no  copyright  in  the  title  and
purchasers, whether of the original work or of the guide, are most  unlikely
to be illiterate, or unacquainted with English.  It will be perfectly  clear
to them, from the words enclosed in brakets as a sub-title, that  they  were
acquiring, not the original work, but a “guide for University students…………”

16.   The same question arose in Kanungo Media (P) Ltd. v RGV  Film  Factory
& Ors. reported in  (2007)  ILR  1  Delhi  1122  where  the  Court  declined
injunction against  the  defendant  for  using  the  brand  name  and  title
“Nishabd” alleging similar to  the  film  of  the  plaintiff  therein.   The
learned Judge A.K.  Sikri,  J.  (as  His  Lordship  then  was)  referred  to
decisions of the American Courts and observed that the position is the  same
as under the copyright law in India:-
“12……… What, therefore, follows is that if a junior  user  uses  the  senior
user’s literary title as the title  of  a  work  that  by  itself  does  not
infringe the copyright of a senior user’s work since there is  no  copyright
infringement merely from the identity or similarity of the titles alone.”

The Court  then  considered  the  question  of  protection  of  title  as  a
trademark with which we are not concerned in this case.
17.   Subsequently, in R. Radha Krishnan  v.  Mr.  A.R.  Murugadoss  &  Ors.
reported in 2013-5-L.W. 429, the Madras High Court followed the decision  of
the Delhi High Court in the Kanungo Media Case and  rejected  an  injunction
for restraining the defendant from using the title of the  plaintiff’s  film
‘Raja Rani’. The Madras High Court considered various  other  decisions  and
held that the words ‘Raja Rani’ are words of common  parlance  which  denote
the king or the queen and cannot be protected under the  law  of  copyright.
The two judgments of the Madras High Court cited above and the  judgment  of
the Delhi High Court in our view, lay down the correct law.
18.   The learned  counsel  for  the  appellants  relied  on  passages  from
Copinger and Skone James on Copyright Sixteenth Edition  by  Kevin  Garnett,
M.A, Gillian Davies, D.L., Ph.D. and Gwilym Harbottle, B.A. (Oxon)  at  page
70:-
“Names and titles as literary works.  In the same vein is the reluctance  of
English courts to confer  copyright  protection  on  titles  of  newspapers,
magazines, books and the like.  In relation  to  books  in  particular,  the
title normally forms part of a copyright work consisting of the  book  as  a
whole and the issue here may be whether the copying of the title amounts  to
the taking of a substantial part of the whole work.  General statements  can
nevertheless be found in non-copyright cases to the effect that there is  no
property in a name or title standing alone  unless  it  is  the  subject  of
goodwill or a registered trade mark.”

The learned authors observed:-
            “The courts, have, however, been careful not  to  rule  out  the
possibility of such protection in  appropriate  circumstances,  although  in
practice no case has ever gone this far. The  only  concrete  example  which
has been given judicially is the now archaic practice of the  title-page  of
a book consisting of an extended passage of text.”

In relation to copyright  in  characters  and  titles  the  learned  authors
observed:-
      “It is very difficult to protect titles of  films  by  an  action  for
infringement of copyright due to the requirements of originality and that  a
substantial part of a work be copied.  If a well-known title of  a  film  is
used without authority, the owner’s remedy is likely to lie in passing  off.
 Protection by registration as a trade mark may be  available  provided  the
title in sufficiently distinctive.”

19.   We are thus, of the view, that no copyright subsists in the  title  of
a literary work and a plaintiff or a complainant is not entitled  to  relief
on such basis except in an action  for  passing  off  or  in  respect  of  a
registered trademark comprising such titles.  This does not mean that in  no
case can a title be a proper subject of protection against being  copied  as
held in Dicks v Yates where Jessel M.R said “there might be copyright  in  a
title as for instance a whole page  of  title  or  something  of  that  kind
requiring invention” or as observed by Copinger (supra).
20.   In the present case we find that there is no copyright  in  the  title
“Desi  Boys”  and  thus  no  question  of  its  infringement  arises.    The
prosecution based on allegations of infringement  of  copyright  in  such  a
title is untenable.
21.   The learned counsel for the  respondents  indeed  contended  that  the
applications under Section 482 were  rightly  dismissed  since  these  facts
alleged by the appellants depend on  evidence  at  the  trial.   It  is  not
possible to agree since it has throughout been the case  of  the  respondent
No. 1-Devkatta that he is claiming  copyright  only  in  the  title  of  the
synopsis of his story “Desi Boys” and he has not even seen the film  of  the
appellants nor does  he  know  the  story.   The  learned  counsel  for  the
respondent was however right in his submissions that it is not necessary  to
furnish  all  the  ingredients  of  the  complaint  and  failing  which  the
complaint is liable to be dismissed on that ground.   It  is  not  necessary
to consider the decisions cited by the respondents on this point.
22.   In the result, both the Criminal Appeals  are  allowed.  The  Criminal
Case No. SW/332 of 2011 pending before the Learned Metropolitan  Magistrate,
Mumbai is hereby quashed.


                                                …………………………….…..........…..J.
                                                     [MADAN B. LOKUR]


                                   …...................................………J.
                                                        [S.A. BOBDE]

NEW DELHI,
October 15, 2015

-----------------------
[1]    (i)Macmillan v. Suresh Chander Deb, ILR 17 Cat 951,   (ii ) Longman
v. Winchester, (1809)16 Ves 269,
       (iii) Dicks v. Yates, (1881) 18 Ch D 79




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