Copyright In IndiaIntellectual Property RightsExtraction-To conduct a successful Idea-Expression Dichotomy

HIGH COURT OF BOMBAY

Shamoil Ahmad Khan v. Falguni Shah & Ors.

2020 SCC OnLine Bom 665 | 26^th May, 2020

FACTS

In the present case, Shamoil Ahmad Khan (hereinafter referred to as “the Plaintiff”) is a popular writer for his novels and collection of short stories, in Urdu and Hindi. He is the author of a popular short story titled as “Singardaan”.  This was first published in 1993 in Urdu and later in 1996 a Hindi translation of it was published. Since then, it has been published in many literary magazines in English, Marathi and Punjabi translations. It has also been published on websites. The story was also staged in the form of a play and received great reviews.

The Defendants have produced a web-series titled as “Singardaan” available on “Ullu” App and on Youtube. Therefore, the Plaintiff filed the present copyright infringement suit alleging that the Defendants have not only copied the title but also the “entire plot, narrative and characters of his story by the same name”.

The Plaintiff seeks a temporary injunction, through notice of motion, against the Defendants from “telecasting or exhibiting their web series by the name of “Singardaan” or publishing or making an adaption” with the same title as the Plaintiff’s story.

ISSUES BEFORE THE HIGH COURT OF BOMBAY

The following issues were considered by the High Court of Bombay:

1. Whether copyright subsists in the name of a work?

2. Whether a prime facie case of copyright infringement is made out, based on the facts of the case, plaintiff’s storyline or the central theme?

3. Whether the Defendants have copied the work of the plaintiff?

CONTENTIONS OF THE PARTIES 

The Plaintiff contended that the defendant has substantially reproduced his story including its plot, key elements and characters in the web series that have been created and depicted by the Plaintiff. The Defendants have attempted to pass off the Plaintiff’s web series as an adaptation of work, which is very popular by itself, by using “Singardaan” as the title of the plaintiff’s story.

On the other hand, the Defendants contended that “save and except the central idea, namely I am taking away a vanity case, during the course of riots, from a brothel to his home and its use leading to a changes in behaviour of the womenfolk at home”, being merely an idea is not entitled to be protected by copyright. Additionally, besides this idea there exists no similarity in the two stories.

The Defendants further submitted that “the depiction of the central idea in their web series, scene to scene, situation to situation, in-climax to anti-climax, including the pathos, texture, treatment, purport and presentation, are materially different from the Plaintiff’s story”.

Further, the Defendants also set out a comparative chart between the two works in order to show the dissimilarities between them.

DISCUSSION AND FINDINGS

With regards to the first issue,

In line with Krishika Lulla vs. Shyam Vithalrao Devkatta (2016) 2 SCC 521, the Court observed that no copyright protection subsists in the title of a literary work although there may be a case of passing off.

The Court further stated that the Plaintiff’s case is “indeed of passing off”. However, to show the same the Plaintiff has to show and establish that his work has acquired such reputation that the public identifies the work “with the Plaintiff alone and none else”.

To decide such an issue in most cases, evidence is presented at the trial state, though for extremely well-known works it might be possible to “grant such injunctive relief simply on affidavit at the interim stage”. But in the present matter, it seems that such issue can be decided at the trial stage only.

Therefore, the Court held that:

“Only upon adequate proof being tendered of the high reputation for sustaining an injunction against use of the very name or title as an instance of passing off, the Plaintiff may secure such relief.”

With regards to the second issue,

The court, after referring to the English authorities, observed that:

“In such cases the Plaintiff must first establish a strong prima facie case for the existence of the right on which he sues. And there, he must at least show that he is likely to succeed. If he does that, however, or if his right is not disputed, then although he must go on to show a prima case of its infringement, yet for that purpose he does not have to show that he is likely to be successful or more likely to be so than the defendant, but only that he has a case which is reasonably capable of succeeding. Though, even after he shows that, the remedy is still discretionary and in exercising that discretion, the court has regard to the twin principles of balance of convenience and irreparable prejudice.”

The Court focused on determining whether the Plaintiff has made a strong prima facie case. The Court was of the opinion that the Plaintiff “undoubtedly has a copyright in the story”.

The real question before the Court was whether the plaintiff has a copyright in the plot or the storyline or the characters of his story. This question is a difficult one to answer because of the idea-expression dichotomy which is so fundamental to copyright law.

By referring to Hollinrake vs. Truswell (1894) 3 Ch. 420, R.G. Anand vs. Delux Films AIR 1978 SC 1613 and Mazer vs. Stein (1954) US SC 36, the Court explained that copyright protection only extends to the expression of an idea and not the idea itself.

The Court, however, highlighted that just because law is clear on this point that does not mean that making this distinction is an easy task in practice, and observed as follows:-

“Every idea, when communicated, is expressed in words or form; it is impossible to conceive of an idea (i.e. idea which is communicable) without such expression. It is meaningless to talk of an expressionless idea. And yet courts have to distinguish between a mere idea and its expression for practical purposes, that is to say, for determining what is protected by copyright and what is not. The courts have to perform the delicate task of finding out at what point plagiarism ceases to copy an author’s ideas and steals the expression of his ideas”.

The Court further observed that the best way of approaching this problem is by applying the notion of “extraction” while referring to Nichols vs. Universal Pictures Corp. 45 F.2d 119 (1930) and described it as follows:

“In a written work of art, such as the story with which we are concerned here, a germ of an idea is developed into a theme and then into a plot and then final story with the help of characters and settings. It is a combination of all these elements which give a body to the work or a substance to it. If one goes on stripping the final work of these various elements, one may finally come to the bare idea or abstraction which no longer enjoys copyright protection. The task before the court is essentially to find out at what point such stripping lays bare the unprotectable idea…. Where to stop or draw a line in this “series of abstractions” is, of course, for the individual court to decide and in doing so, it must perforce impose its own value judgment, by applying its knowledge of a subject matter to a specific expression of that subject. Everything above this line is a matter of expression capable of copyright protection and everything below unprotectable”.

The Court further tried to split the story of its embellishments, its description of the mood, the motivations and the tribulations of its characters and their actual actions and reach the plot and story line. The Court identified them as follows:

“The main characters of the Plaintiff’s story, as we have noted above, are Brijmohan, a Hindu, and Naseem Jaan, a Muslim courtesan or prostitute. The other key characters are Brijmohan’s wife and three daughters. The setting is of a town where riots take place. The protagonist, Brijmohan, and his companions barge into the quarters of Naseem Jaan and grab whatever they can. Brijmohan manages to forcibly take away an ancestral Singardaan (vanity box) of Naseem Jaan. He takes it to his wife and daughters, who take an instant liking to it. Their use of it brings about a visible change or transformation in their appearance, body language and behaviour; they begin to look and behave like prostitutes. The above narration is the life and blood of the Plaintiff’s story. It is, of course, an abstraction. We have already stripped off the story a lot. We have omitted the details of how Brijmohan actually goes about ransacking the prostitute’s quarters, how she pleads and remonstrates and implores him not to take away the vanity box, how she describes the vanity box as her family heirloom inherited from her mother, who in turn did so from her mother, how Brijmohan’s wife and daughters actually dress up, how they tease their prospective suitors and how their appearance and behaviour affects Brijmohan. Those are embellishments – the details which have no essential bearing on the theme, plot and story line of the Plaintiff work”.

After the elaborate explanation on extraction, the Court observed that it has not reached the level of extraction on which the work cannot be stripped any further and becomes a non-protectable idea.

The Court further stripped the work and came to the idea, as follows:

“A thing or artefact belonging to someone brings out in its user, by its use, a change in appearance or behaviour in line with the one to whom the thing or artefact originally belonged”.

Therefore, the Court held that the Plaintiff’s theme, plot or story line cannot be called a mere idea, it is rather the expression of an idea in itself. Thus, it is sufficiently developed to enjoy copyright protection.

With regards to the third issue,

The Court observed that the Plaintiff merely has to show that he has a case that is likely to succeed or capable of succeeding. Further, the court observed that the defendant’s work “had all the essential elements of the Plaintiff’s theme, plot and story line”. From the part where the riots began, the story is “very likely a copy of the Plaintiff’s theme, plot and storyline”. For someone who has read the Plaintiff’s story and then watches the series, it would appear to him as if the series is an adaption of the story.

The differences drawn out by the defendant’s, such as the affair between the protagonist and the courtesan, the god fearing nature of the protagonist, the intimate affair of the daughter, etc., form mere embellishments to the plot. The court observed as follows:-

“The series is about the protagonist coming into possession of a prostitute’s vanity box and bringing it home and noticing perceptible changes as a result of its use in the appearance, mannerism and behaviour of his wife and daughter, which have become more like a prostitute’s. That is why the web series is called “Singardaan”, i.e. vanity box. That is the life and blood of the web series. At any rate, a very substantial part of the web series, i.e. after the point when the protagonist picks up the vanity box post riots from the courtesan’s quarters, is exclusively devoted to, and is a copy of, what may be described as the Plaintiff’s theme, plot and story line. It is but an actionable copy of the Plaintiff’s work”.

The Court observed that the substantial aspects of plaintiff’s work are copied by the Defendants and found that the present case has “reasonable prospect of succeeding”. Further the Court observed that the Plaintiff’s work extracted cannot be called the bare or central theme or the concept as referred to in the case of R.G. Anand (supra) and XYZ Films v. UTV Motion Picture 2016 SCC OnLine Bom 3970. The Plaintiff’s work extracted has “sufficiently developed elements of expression” and is the life and blood of his entire work, without which the entire work would lose its meaning.

Therefore, the Court observed that it is a matter of discretion of the Court keeping in mind the concept of irreparable prejudice and balance of convenience. Since, the work of the Defendant is not only complete but also published in 2019 itself thus, the Plaintiff’s work has already been used without his consent and the damage is done. The Defendant cannot be allowed to make any further adaptations of the Plaintiff’s work. The plaintiff is entitled to monetary compensation which can be better determined at the trial stage. The balance of convenience lies in the favour of Defendants as work has already been published if it is removed now they will suffer a greater loss.

Thus, the Court observed as follows:-

“Considering the totality of circumstances, this court is of the view that instead of granting a temporary injunction against exhibition of the web series, interests of justice would be served better if the suit itself is set down for trial and the Defendants are asked to maintain accounts of the profits made from the web series in the meantime, i.e. from the date of publication of the web series and till date and during the pendency of the suit and render them to the court as and when demanded in the course of the trial. In the meantime, however, further adaptation or use of the web series in a different format may be restrained”.

Henceforth, the Court passed an order of a limited injunction.

AMLEGALS REMARKS 

The Court in this case has not settled a much disputed question of law rather it has given more clarity and guidance on how to approach a particular question of fact, namely, how to differentiate between idea and expression in practical scenario. The notion of extraction is perhaps much more efficient in figuring out which work is protectable and to what extent.

The judgment is very much in line with the settled position of law as it clearly points out that the Plaintiff’s work extracted in this case does not mean bare theme or concept as pointed out in the previous landmark judgments. In those judgments, the ‘bare theme’ was in the sense of bare idea and not any theme or storyline or plot per se.

However, the practice has been that the law is applied strictly till date, i.e. not much thought is put into whether the theme is an expression itself or merely an idea.

This judgment, however, takes a refreshing approach towards the idea-expression dichotomy and has simplified the process significantly.

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