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
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
