The Author, Shreejita Ghosh is a a 4th law Student at Jindal Global Law School, OP Jindal Global University.
Introduction:
The case of “Exxon Corporation v Exxon Insurance Consultants International Ltd”[i]discusses the copyrightability of names and the various principles used to reach a decision on the contended topic.
To fully understand this case, an initial understanding of the meaning of subject matter of copyright under the Copyright Act is required. Under section 2(1) of the “Copyright Act of 1956”[ii] in the UK, Copyright is said to subsist in “every original literary, dramatic or musical work.” [iii] Registration is not mandatory and all that the author need establish is that his work fulfils the standard of ‘originality’ required for copyright protection. The meaning and extent of this however are quite complex and the difficulty arises when attempting to define ‘originality’. This case does an excellent job of highlighting this issue, by bringing to light all the arguments that are put forth when contending the originality of the name of a company. Does the umbrella of originality cover all works that are the result of time and effort, or does it recognize only those that rise above the ordinary through a display of some creativity or any other aspect on the part of the author?
Facts:
In this case, the name “Exxon” was the point of contention. Exxon Corporation was a highly regarded fuel company which claimed that they had created the name with an immense amount of labour and hard work which required a considerable amount of time and strategy. The word “Exxon” was inexistant in the English language prior to its creation by the company. This ingenuity along with the efforts expended by Exxon Corporation provided them with enough cause to claim that “Exxon” does qualify as a literary work under the Copyright Act of 1956. So, when ‘Exxon Insurance’ used the same word as their name, Exxon Corporation filed a claim of copyright infringement.
Th argument forwarded by Exxon Corporation stems from Locke’s Labour Theory which essentially states that if one puts effort into making something, then the ownership and the decisions with regards to its use should lie with them. This theory is further expanded as the ‘Sweat of the brow’ standard of originality, as laid down in “University of London Press Limited v. University Tutorial Press Limited”[iv],which elucidates that if a man expended time and effort in first putting on paper, something that was already out in the public domain, the copyright would vest in him.
While there are certain advantages to this theory such as providing the courts with a simple solution to reach a conclusion on whether there exists originality in the contended case, the needs of marketing and the unending availability of media and technology that has sprung up in the past 50 years or so has led to the ever-increasing “production of commercial messages, coined phrases, invented words, and brief opinions expressed instantly.”[v] To measure the originality of these new and much more complex mediums, a much broader and more complex scale is required and thus this theory has been since rejected. The Supreme Court of India recognized this and rejected the ‘sweat of the brow doctrine’ in the case of “Eastern Book Company v. D.B. Modak” [vi], and held that the work should be original “in the sense that by virtue of selection, co-ordination or arrangement of pre-existing data contained in the work, a work somewhat different in character is produced by the author”.[vii]
Judgement:
Expanding on that, in the current case, while the courts did accept that the word was an original work created by Exxon Corporation, it was not copyrightable. The courts referred to the decision made in the case of “Hollinrake v Truswell.” [viii]where it was held that originality is not all that is required. The literary work must further offer “information, instruction or pleasure in the form of the literary enjoyment.” [ix] The courts observed that “copyright could not exist in words merely because they can be described as “original”, “literary” and “work”.”[x]They must also adhere to the precedent set in “Hollinrake v Truswell”[xi] and on applying this requirement to the name “Exxon” it was observed that a word in isolation cannot communicate any information beyond its dictionary connotation and thus these requirements were not fulfilled and “Exxon” therefore does not qualify for protection under the “Copyright Act of 1956.” [xii]
Furthermore, “Although Locke’s applied labour proposition principally relates to the justification of individual property rights, his proviso that enough of the same should be left for others, subjects such rights to distributive justice imperatives, and may be seen as anticipating the public policy considerations that loom large when the potential for monopolizing words and phrases is raised.”[xiii]What this means is that even in the argument of “originality” through Locke’s Labour Theory, the need to keep enough of that for the use of the rest of the public has been mentioned as a pre-requisite. Building on this the court also stated that the fear in granting copyright to such invented original words is that they will no longer be put in the dictionary which might lead to a situation where words already in existence will be “rendered unusable through inclusion in newly protected literary phrases.”
Summing up, the court decided that Commercial neologisms, such as ‘Exxon’, which are essentially new words that are created for a commercial purpose to keep up with and differentiate oneself from the ever-evolving world of the economy and business, may meet the criterion of having been made with effort and might attract the “sweat of the brow” doctrine. However, when looked at in isolation, the word holds no real meaning because of which, they fail to express anything. This failure leads to a situation where they do not attract copyright protection.
Indian Law:
In India, Section 13 of the Copyright Act, 1957 speaks of the subject matter of copyright and it is very similar to that of the UK’s in so far as it mentions copyrightable work to be, “original literary, dramatic, musical and artistic works.”[xiv]
Following suit, a similar case can be found in India by the name of “Krishika Lulla & Ors vs Shyam Vithalrao Devkatta & Anr.”[xv]In this case, the plaintiff claimed that he had written a story with the title "Desi Boys" and got the synopsis of the story registered with the Film Writers Association in
Delivering a judgment similar to Exxon, the courts held that, a title, in the nature of a name of a work is not complete by itself, without the work. The combination of the two words "Desi" and "Boys” are very commonplace in India and therefore cannot be said to have anything original in it. Furthermore, the courts stated that a literary work should, as the name suggests, be literary in nature i.e. “concerning the writing, study, or content of literature, especially of the kind valued for quality of form, and not just the combination of two commonplace words.”[xvi]
In both cases, the courts further went on to state that, names often are not afforded copyright but they can be were they to be part of something bigger say like a book. The copyright would then apply to the whole book in itself.
Conclusion:
“Arguably the proper route to protect names would be under trademark or the tort of passing off, through which Exxon was afforded relief in the aforementioned case.”[xvii]The essential use and requisite qualities of a trade mark are generally unsuitable with that of an original literary work. A word such as ‘Exxon’ made with labour by a corporate while very well suited for trade mark registration, does not meet the requirements for copyright protection. “Unlike an original literary work, a trade mark is not protected for its own intrinsic worth, but for the intangible values surrounding the product and attaching to the mark”.[xviii] The job of a trademark is not to get an idea across or communicate any of the prerequisites laid down, its simple purpose is to allow consumers to identify and act as an advertising tool. The only situations where neologisms could perhaps qualify for copyright protection is if they were not a trade
While this is a 1982 case, its relevance in todays times cannot be understated. With the economy and technology advancing at a rapid rate, newly coined terms are emerging at every step of the way and the conversation on whether to consider these terms to be “original literary work” becomes more complex. While it does depend on a case to case basis, this case provides a base for other courts to refer to when deciding this question. For example, in the case of “Brodel v Telstra Corporation”[xix], using the Exxon case as a precedent, the courts held that the “there is no tenable claim that the word ‘‘SmartFax’’ constitutes an original literary work in which copyright is capable of subsisting.”[xx]Another more recent case is “The Newspaper Licensing Agency Ltd and Others v Meltwater Holding Bv and Others”[xxi] where the courts held that “Single letter commands used within a computer program, and those with longer names, even if clearly recorded in the source code, are unlikely to be entitled to a copyright.[xxii]” .
References:
[i] Exxon Corp. v. Exxon Insurance Consultants Ltd [1982] Ch. 119 (U.K.: High Court and Court of Appeal)
[ii] Copyright Act 1956
[iii] Id
[iv] University of London Press v University Tutorial [1916] 2 Ch 601
[v] Jonathan Barrett, ‘Copyright and the Sound Bite Society, 2010’ (2010) 10(1) QUT Law Review https://doi.org/10.5204/qutlr.v10i1.6 Accessed 10 October 2020
[vi] Eastern Book Company and Ors. v. D.B. Modak and Anr. (2008) 1 SCC 1
[vii] Id
[viii] Hollinrake v Truswell: CA 1894 (1894) 3 Ch D 420
[ix] Id
[x] Supra note 1
[xi] Supra note 8
[xii] Supra note 2
[xiii] Supra note 5
[xv] Krishika Lulla and Ors. v. Shyam Vithalrao Devkatta and Ors. [Criminal Appeal No. 258 and 259 of 2013]
[xvi] Id
[xvii] Jani Ihalainen, ‘Retrospective- Copyright in Names, IP Iustitia’ (IP Iustitia, 08 November 2013) https://www.ipiustitia.com/2013/11/retrospective-copyright-in-names.html Accessed 12 October. 2020
[xviii] J McGrath, ‘The New Breed of Trade Marks: Sounds, Smells and Tastes’ (2001) 32 VUWLawRw 11 http://www5.austlii.edu.au/nz/journals/VUWLawRw/2001/11.html Accessed 13 October. 2020
[xix] Brodel v Telstra Corporation [2004] FCA 505, [17] (Kenny J).
[xx] Id
[xxi]The Newspaper Licensing Agency Ltd and Others v Meltwater Holding Bv and Others [2011] EWCA Civ 890
[xxii] Id
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