Delhi High Court
The Chancellor Masters & Scholars ... vs Narendera Publishing House And ... on 17 September, 2008
Author: S.Ravindra Bhat
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ I.A. 9823/2005, 51/2006 & 647/2006 in CS(OS) 1656/2005
Reserved on: 10.07.2008
Pronounced on : 17.09.2008
THE CHANCELLOR MASTERS & SCHOLARS
OF THE UNIVERSITY OF OXFORD ..... Plaintiff
Through Mr. Rajiv Bansal, Advocate
Versus
NARENDERA PUBLISHING HOUSE AND ORS. ..... Defendant
Through Ms. Pratibha Singh, Mr. Sudeep Chatterjee,
Advocates
CORAM:
Mr. Justice S. Ravindra Bhat
1.
Whether reporters of local papers may be
allowed to see the judgment? yes
2. To be referred to the Reporter or not? yes
3. Whether the judgment should be reported
in the Digest? yes
Mr. Justice S. Ravindra Bhat
1. This order will dispose of IA No. 9823/2005, IA No. 647/2006, IA
No.51/2006 preferred under Order 39 Rule 1 & 2 and Order 39 Rule 4 of the
Code of Civil Procedure, 1908, respectively. The plaintiff allegs violation of
copyright in its literary work and seeks an order restraining the defendants
from infringing its copyright.
CS (OS) 1656/2005 Page 1
2. The plaintiff is a well-known publisher of academic books, and started
publishing in India in 1912. It has established show rooms in different places
of India. The plaintiff avers to publishing substantial number of school books
for use from Kindergarten to the twelfth standard, with the help of a team of
highly trained and committed editorial, research, production and marketing
professionals. These books cover most disciplines including science,
mathematics, languages, humanities and economics, for most Educational
Boards including CBSE and ICSE.
3. The plaintiff has published, in two parts, a text book for the students of
Class XI, following the course structure prescribed by the Jammu & Kashmir
State Board of School Education, i.e. ―Oxford Mathematics Part A‖ and
―Oxford Mathematics Part B‖ (herein after referred to as ‗the textbooks').
The plaintiff published them in collaboration with the Jammu and Kashmir
State Board of School Education (hereafter ‗the Board'). The plaintiff and the
Board entered into an agreement on 26.08.03 for such purpose, and the
copyright in the said textbooks vested with the former. The textbooks are
specially adapted editions of books authored by one Dr. A.K. Roy of which
the copyright vests in the plaintiff through an agreement. It is averred that
the said Dr. Roy has employed great efforts and research in the books so
that they are effective in the study and understanding of mathematics.
CS (OS) 1656/2005 Page 2
4. It is further averred that the exercises, their scheme, the answers,
placement of topics in the textbooks are unique to the plaintiff and are a
result of years of research, hard work, practice and the standard followed by
reputed institutions the world over. Every unit in a chapter is so arranged
that it is integral and complimentary to others. The contents of the
textbooks, it is averred, involve application of substantial skill, judgment,
labour and investment of time and money. The units are streamlined for
faster progress. The textbooks have maximum clarity with fresh modern
designs. The key features of the textbooks are that they have been designed
to enable the learner to develop a thorough understanding of basic
mathematical principal and processes. Introductions to each chapter reviews
the concepts learnt earlier. Graded solved examples develop problem-
solving techniques. Short exercise drills are interspersed within a chapter
after each major topic. Miscellaneous exercises have been provided at the
end of each chapter. Even model test papers have been provided at the end
of the book to provide the students a feel of the examination. All this, the
plaintiffs claim, make each textbook an original literary work within the
meaning of the Copyright Act, 1957 (hereafter ‗the Act'). It is also averred
that the author by a memorandum of Agreement has assigned to the plaintiff
the entire copyright in the subject work during the legal term of copyright
and the renewals thereof. All rights in the subject work are reserved in favour
of the plaintiff. Further, it is claimed that no part of the textbooks can stored
CS (OS) 1656/2005 Page 3
in a retrieval system or transmitted in any form or by any means without the
prior permission in writing given by the plaintiff, or as expressly permitted by
law.
5. The plaintiffs allege that in 2005 they came to know about the
existence of guide books entitled ―Teach yourself mathematics (Fully Solved)
Part A‖ and ―Teach yourself mathematics (Fully Solved) Part B‖ published by
the defendants (hereafter ‗the guides'), in which the latter have, brazenly
violated plaintiff's copyright, and reproduced contents of the plaintiff's
books. The infringing books, it is stated, has been published, ―to help those
students who prefer to mug up the solutions/answers rather than seriously
taking the course through text books‖. It is further claimed that the
defendants books have immensely hampered not only the sale of the
plaintiff's subject work but has also ―gravely prejudiced the interest of the
students at large‖. The Plaintiffs aver that the defendants have slavishly
reproduced the exercises and their solutions/answers from the subject work
and thus made their infringing publication a poor and degrading substitute to
the plaintiff's subject work. It is also alleged that such reproduction by the
defendants shows a deliberate and malicious intent and design on their part
to misappropriate, trade upon and derive benefit from its reputation and
goodwill and the copyright in the subject work, enjoyed exclusively by them,
worldwide The plaintiffs, therefore, seek an order of interim injunction
restraining the defendants from infringing the copyright of the plaintiffs in
CS (OS) 1656/2005 Page 4
relation to the textbooks. This Court had, granted an ex-parte injunction; the
defendants move for its vacation.
6. Mr. Rajiv Bansal, learned counsel appearing on behalf of the plaintiff,
contends that the defendants have indulged in a brazen word-to-word
copying of the questions, in the textbooks. The plaintiff, it was urged, had
given answers to the questions in the exercises, but did not provide the
detailed step-by-step process to arrive such answers. The questions, their
arrangement and the sequencing, in the defendants' guides are identical to
the plaintiff's textbooks. He argued that the questions form a valuable and
central part of the work, and their substantial copying by the defendants
amounts to violation of the plaintiff's copyright. He submitted that authors of
the guides have saved time and money by relying on the plaintiff's work and
their use of the ‗original' questions is not incidental. He further argued that
guides compete with the original textbooks for market share, and are
prepared and sold for commercial purposes. Therefore, he contended that in
the absence of a restraint order, the guides would gravely injure the
plaintiff's commercial interest.
7. Learned counsel next contended that questions, their arrangement and
their selection should be considered original literary works under the Act,
and therefore, are entitled to copyright protection. He placed reliance on the
oft quoted University London Press v. University Tutorial Press [1916] 2 Ch.
601, to assert that question papers are literary works and that copyright
CS (OS) 1656/2005 Page 5
could vest in questions. He argued that though there can be a pool of
common knowledge and questions from which the questions are drawn, the
fact that the questions were not copied and emanated from the author is
sufficient enough for the grant of copyright protection. He placed reliance on
the judgment reported as Syndicate Press of the University of Cambridge v.
BD Bhandari, 2005 (31) PTC 58 (Del), to assert that the defense of fair use
under section 52 cannot be extended to cases where there is verbatim copy
of the questions and the answer key. Further, it was held that guide books
like the ones in that case, could not be categorized as reviews and criticism
of the original work. Also, the exception under Section 52 (1)(h) applied only
if the reproduction is made as a part of the questions and answers in an
examination. Reliance was placed on Mishra Bandhu Karyalaya v. S Koshal,
AIR 1970 MP 261; Agarwala Publishing House v. Board of High School and
Intermediate Education, AIR 1967 All 91 and Jadish Prasad v. Parmeshwar
Prasad, AIR 1966 Pat 33 to contend that questions are original literary works
and copyright can subsist even if such questions are part of a prescribed
syllabus, so long the author employed labour and skill in their publication.
Lastly, reliance was also placed on Blackwood & Sons v. Parasuraman, AIR
1959 Mad 410, to contend that the plaintiff need not prove any oblique
motive or intention to copy on the part of the defendants, so long the
copying involved substantial and vital portions, that is the copying was both
quantitative and qualitative.
CS (OS) 1656/2005 Page 6
8. The defendants contend that the present case is a one of fair use. It is
averred that preparation of a guide book, which independently contains the
working of every mathematical problem and steps for solving them, cannot
be termed an infringement of the textbook. The plaintiff's books do not have
any step-by-step working for the various sums at the end of each chapter. It
is also averred that the defendants have not copied the contents of each
lesson or chapter. Further, it is averred that all students are well aware that
the defendant's publications are guide books whereas the plaintiff's
publications are textbooks.
9. It is averred that the defendants' books are an independent creation
by Prof. Harish Sharma who is a known Mathematics teacher. He has solved
the sums that are contained at the end of each lessons of the plaintiff's
prescribed textbook. The guide does not infringe the copyright of the plaintiff
in any manner whatsoever. The defendants' books are not a substantial
reproduction of the plaintiff's textbooks. A mere comparison of the two in
terms of appearance, contents etc., clearly establishes this. The defendant,
relying on section 52 of the Act, aver that since their books are in the form of
answers to questions contained in the plaintiff's prescribed text book for the
purposes of education, no copyright can be claimed nor infringed. They aver
that various State Boards prescribe textbooks of publishers for students and
there is possibility of existence of several Guide Books for the same
textbook. They only facilitate students' preparation for examinations. If such
CS (OS) 1656/2005 Page 7
guide books are not permitted to be published the result would be contrary
to public interest and interest of the student community.
10. Ms. Pratibha Singh learned counsel appearing for the defendants,
argued that at least 101 questions appearing in the plaintiff's books are
copied or reproduced from the work another well-known author-Mr. RD
Sharma. She drew the attention of this Court in this regard to the amended
written statement and a comparative table of questions common to the
plaintiffs books and the book authored by the said Mr. RD Sharma. She
contended that the questions appearing in the plaintiff books from part of
the common pool of questions used by authors, schools, guides and students
in India, and contended that the nature of the subject is such that it would
be impossible for one author to claim copyright over a set of questions. She
categorized the questions in the plaintiff's books, their selection and the
manner of arrangement as derivative works, for which a higher standard of
creativity must be proved in order for them to copyrightable. In this regard
she relied on Eastern Book Company v. Modak, (2008) 1 SCC 1. It was
argued that since the plaintiff's work cannot demand any copyright
protection, no question of infringement arises.
11. It was contended that the plaintiff's books have not been pirated or
reproduced verbatim/completely, and therefore, the defendants' actions do
not amount infringement within Section 14 (a) (i)-(v) and (vii). The
defendants' contend that their books would not constitute adaptation under
CS (OS) 1656/2005 Page 8
section 2 (a), and therefore, cannot be violative of section 14 (a) (vi).
12. Ms. Pratibha Singh next argued that the such use by the defendants of
the Plaintiff's questions of the plaintiff amounts to fair use under section
52(1) (a) and 52(1)(h) of the Act, assuming, arguendo, that there is copyright
infringement. She contended that in relation mathematical works,
publication of a guide to solve questions in the plaintiff's work amount to
―review‖, of the plaintiff's literary work and therefore covered by section
52(1)(a). Furthermore, the present case also falls under Section 52(1)(h) as
the reproduction of the literary work was as a part of answers to those
questions. She argued that while deciding whether the defendants' books
amounted fair use, one cannot lose sight of the fact that the books are
based on the Board's Syllabi which prescribed the plaintiff's books as
exclusive textbooks. She argued that once the book is declared a part of a
syllabus, then, students are free to use the questions in it any manner and
therefore, guide books that help students solve these questions will also be
covered under the fair use exception to copyright.
13. Counsel argued, placing reliance on RG Anand v. M/s Delux Films,
(1978) 4 SCC 118 that there can be no copyright in ideas and therefore, the
questions per se are not subject matter of copyright. She contended that if
the same ideas were being presented in different manner, even though both
the works are based on the same source, then too it would not amount to
infringement. She submitted that the surest way to find out infringement is
CS (OS) 1656/2005 Page 9
to see if the reader having read both the works is clearly of the opinion that
the subsequent work appears to be a copy of the original.
14. Learned counsel placed reliance on the various judgments to assert
that the publication of guide books to help students study and answer
questions amounts to fair use under the Act;(Ref. V Ramaiah v. K
Lakshmaiah (1989) PTC 137; EM Forster v. AN Parasuraman AIR 1964 Mad
331; Kartar Singh Giani v. Ladha Singh, AIR 1934 Lah 777 and Romesh
Chowdhry v. Ali Mohamad Nowsheri, AIR 1965 J&K 101). Therefore, she
argued that such use by the defendants of the questions that appear in the
plaintiffs books, constitute fair dealing under section 52 and the injunction
must be vacated.
15. Two primary issues need to be gone into at this stage. First is whether
that part of the work of the plaintiff, which the defendants have reproduced,
prima facie merits copyright protection. Secondly, if it does, have the
defendants sufficiently made out a ‗fair dealing' or a ‗fair use' defence at this
stage.
I. The Idea-Expression Dichotomy and the Doctrine of „Merger‟
16. A foundational element of copyright law is that it does not grant the
author of a literary work protection on ideas and facts. (Baker v. Seldon, 101
US 99 [1879], Nichols v. Universal Pictures Corp., 45 F.2d (2d Cir. 1930), RG
Anand v. M/s Delux Films, (1978) 4 SCC 118) It is only the creative
CS (OS) 1656/2005 Page 10
expression of such ideas and facts that is rewarded by law, by conferring a
privilege to exclusively exploit such expression for a limited time. Law does
not protect every such expression. The law affords protection to expressions
that are fixed in a medium and are ―original‖. In India Section 13 of the
Copyright Act states that only ―original‖ literary, artistic, dramatic and
musical works are subject matter of copyright. A literary work, in order to
qualify as work in which copyright can subsist, must therefore be original.
17. The content of what is meant by ‗originality' has undergone a
paradigm shift from the days of ―sweat of the brow' doctrine enunciated in
University of London Press (supra) to the ‗modicum of creativity' standard
put forth in Fiest Publication Inc. Vs. Rural Telephone Service, 199 US 340
(1991). The Supreme Court too recognized this shift and in Eastern Book
Company v. DB Modak (supra), following the approach laid down by the
Canadian Supreme Court in CCH Canadian Ltd., Vs. Law Society of Upper
Canada (2004) SCC 13, rejected the sweat of the brow doctrine, (which
conferred copyright on works merely because time, energy, skill and labour
was expended, that is, originality of skill and labour), and held that the work
must 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". It is noteworthy that our
Supreme Court noticed that the two positions i.e. the sweat of the brow on
the one hand, and ―modicum of creativity‖ were extreme positions; it
CS (OS) 1656/2005 Page 11
preferred a higher threshold than the doctrine of ―sweat of the brow‖ but not
as high as ―modicum of creativity‖. Thus, our law too has recognized the
shift, and mandates that not every effort or industry, or expending of skill,
results in copyrightable work, but only those which create works that are
somewhat different in character, involve some intellectual effort, and involve
a certain degree of creativity. It is in the light of this standard of originality,
that the plaintiffs claim to copyright in the questions as well the copyright in
the arrangement of the exercises in each chapter and the internal
arrangement of questions therein, needs closer scrutiny.
18. An aspect peculiar to copyright law, is the ‗doctrine of merger,' is
involved in this case. This doctrine posits that where the idea and
expression are intrinsically connected, and that the expression is
indistinguishable from the idea, copyright protection cannot be granted.
Applying this doctrine courts have refused to protect the expression of an
idea that can be expressed only one manner, or in a very restricted manner,
because doing so would confer monopoly on the idea itself. The decision in
Herbert Rosenthal Jewelry Corporation v. Kalpakian, 446 F.2d 738(1971) is
illustrative in this regard. In that case the plaintiffs sued the defendants
asking them to refrain from manufacturing bee shaped jewel pins. The Court
held that the jewel shaped bee pin was a an idea that anyone was free to
copy, the expression of which could be possible only in a few ways,
therefore, no copyright could subsist in it.
CS (OS) 1656/2005 Page 12
19. The decisions relied on by the plaintiff [Mishra Bandhu (supra) &
Agarwala Publishing House (supra)] to assert that copyright can vest in
questions and question papers too, are all prior to the decision in Eastern
Book Company (supra). Besides the fact the standard for conferring
copyright protection since University of London (supra) has undergone
dramatic transformation, the facts of that case in relation to the doctrine of
fair dealing can be distinguished on the ground that the allegedly infringing
work in that case contained merely the answers and not the solutions to the
questions. This fact was noted and emphasized by that Court also.
20. In the present case, the plaintiff's claim concerns mathematical
questions and answers. Besides asserting the work put in by Dr. Roy, and the
effort in arranging such questions at appropriate stages, chapters or units in
the textbooks, the plaintiff do not show how such effort is original to conform
to the minimum degree of creativity mandated by Indian law, post Eastern
Book Company (supra). Mathematical questions are expression of laws of
nature. The ―discovery‖ of such laws cannot confer monopoly to those who
describe it. The reason is that language is a limited medium, which enables
description of such laws of nature - in only a few ways. Recognition of
copyright as inhering in the questions themselves (as the plaintiff suggest
the court to do), without existence of the ―creative‖ element of originality
would deny access to ideas, thus robbing one of the primary objectives of
copyright law (promotion of creativity) of vitality, thereby stifling intellectual
CS (OS) 1656/2005 Page 13
growth. Interestingly, section 3 (k) of the Patents Act, 1970 explicitly denies
any form of patent protection to a mathematical method or algorithms.
Prima facie, Parliament could not have intended that innovations such as
new mathematical questions, denied benefit of patent protection--which if
granted is of restricted duration--could be refused, but a wider protection in
time, by way of copyright, could have been granted.
21. As far as the sequencing and schematic arrangement of the questions
- in the various chapters is concerned - the plaintiff say that the textbook
conforms to the specifications and requirements of the J& K Board. Here, the
plaintiffs had to show original effort, unique to their schematic arrangement
or sequencing. In education, the dictates of the ―learning content‖ are such
that each level demands a ―curve‖. These ―learning content‖ and ―learning
curve‖ elements are inherent in the syllabi evolved by examination bodies
such as J & K Board or the CBSE. The plaintiff therefore, had to show how it
evolved an arrangement so unique that the scheme is entitled to copyright
protection, independent of the dictates of the Board. The involvement of the
Board, in the creation of the syllabus, negates such originality. This is not to
suggest that there can be no creativity the such schematic arrangement; the
court merely infers that prima facie there is no material in support of it; the
plaintiff have made no attempt to show this creativity, apart from placing the
textbooks on the record. For those reasons, this court prima facie is of the
opinion that the plaintiffs' claim of copyright in questions, answers, and their
CS (OS) 1656/2005 Page 14
requiring or arrangement, is insubstantial.
II. The Fair Use defense
22. The next question is whether such copying will be covered under the
fair use exemption provided under Section 52 of the Act, assuming that the
plaintiffs prima facie have established a copyright claim. Relevant parts of
Section 52 of the Act are extracted below:
Section 52 - Certain acts not to be infringement of copyright
The following acts shall not constitute an infringement of copyright,
namely:--
(a) a fair dealing with a literary, dramatic, musical or artistic work
not being a computer programme] for the purposes of-
(i) Private use including research;
(ii) criticism or review, whether of that work or of any other
work;
XXXXXXXXXX
(h) the reproduction of a literary, dramatic, musical or artistic work-
(i) by a teacher or a pupil in the course of instruction; or
(ii) as part of the questions to be answered in an
examination; or
(iii) in answers, to such questions;
23. The doctrine of fair use or fair dealing is an integral part of copyright
law. It permits reproduction of the copyrighted work or use in a manner,
which, but for the exception carved out would have amounted to
infringement of the copyright. In a seminal article published in 1990 Judge
Pierre N Leval, wrote:
"The doctrine of fair use need not be so mysterious or dependent
on intuitive judgments. Fair use should be perceived not as a
CS (OS) 1656/2005 Page 15
disorderly basket of exceptions to the rules of copyright, nor as a
departure from the principles governing that body of law, but
rather as a rational, integral part of copyright, whose observance is
necessary to achieve the objectives of that law....Fair use should
not be considered a bizarre, occasionally tolerated departure from
the grand conception of the copyright monopoly. To the contrary, it
is a necessary part of the overall design. Briefly stated, the use
must be of a character that serves the copyright objective of
stimulating productive thought and public instruction without
excessively diminishing the incentives for creativity".
(TOWARD A FAIR USE STANDARD, 103 HARV. L. REV. 1105 (1990))
One of the earliest decisions to deal with the doctrine of fair use was Folsom
et al. v. Marsh et al, 9 F. Cas. 342, 1841 US App, where the Supreme Court
laid down the following:
―In short, we must often, in deciding questions of this sort, look to
the nature and objects of the selections made, the quantity and
value of the materials used, and the degree in which the use may
prejudice the sale, or diminish the profits, or supersede the objects,
of the original work. Many mixed ingredients enter into the
discussion of such questions. In some cases, a considerable portion
of the materials of the original work may be fused, if I may use
such an expression, into another work, so as to be
undistinguishable in the mass of the latter, which has other
professed and obvious objects, and cannot fairly be treated as a
piracy; or they may be inserted as a sort of distinct and mosaic
work, into the general texture of the second work, and constitute
the peculiar excellence thereof, and then it may be a clear piracy."
24. The breadth of the fair use doctrine use was put to test in Harper &
Row v. Nation Enterprises 471 US 539 (1985). Harper had contracted to
publish Presidents Ford's memoirs. In exchange for $ 25,000, Harper allowed
Time Magazine to extract 7500 word passage from the book, which dealt
with the pardon to President Nixon. The Editor of ―Nation‖ Magazine wrote an
article relying on an unauthorized version of the memoir, which reproduced
CS (OS) 1656/2005 Page 16
300 to 400 words of the passage contracted to the ―Time‖ Magazine. The
article in ―Nation‖ appeared before the article in Times and the latter refused
to pay up the balance money to Harper. Harper brought an action for
infringement of copyright, and ―Nation‖ put up a fair use defense. The Court
noted that the four factors identified by Congress (17 U. S. C. §107) as
especially relevant in determining whether the use was fair were: (1) the
purpose and character of the use; (2) the nature of the copyrighted work; (3)
the substantiality of the portion used in relation to the copyrighted work as a
whole; (4) the effect on the potential market for or value of the copyrighted
work and proceeded to test the facts on each of these grounds. In its
analysis, the Court applied much emphasis on the commercial character of
the defendant's use and its implication on the potential market of the
copyrighted work. While doing so it recalled the observations made in Sony
Corp. of America v. Universal City Studios, Inc., 464 US 417 (1984), that
"every commercial use of copyrighted material is presumptively an unfair
exploitation of the monopoly privilege that belongs to the owner of the
copyright". The Court, while fortifying the commercial-non-commercial
divide, held that the fourth factor was the single most important factor while
determining fair use. It is however, important to note the dissenting opinion
of Justice Brennan in this regard. He regarded the majority opinion as
conferring monopoly on historical facts and not merely on the exception. He
cautioned that this approach would prove counter- productive to the very
CS (OS) 1656/2005 Page 17
end of granting copyright protection and observed that:
"In my judgment, the Court's fair use analysis has fallen to the
temptation to find copyright violation based on a minimal use of
literary form in order to provide compensation for the appropriation
of information from a work of history. The failure to distinguish
between information and literary form permeates every aspect of
the Court's fair use analysis, and leads the Court to the wrong
result in this case. Application of the statutorily prescribed analysis
with attention to the distinction between information and literary
form leads to a straightforward finding of fair use.."
25. The contours of the fair use standard shifted somewhat with the
decision in Campbell v. Accuff- Rose Music, 510 US 569 (1994). The Supreme
Court unanimously upheld the claim of the defendants that their parody to
the plaintiff's song ―Oh, Pretty Woman‖ was covered by the fair use
exception. It was uncontested that the defendant's song amounted
infringement but for the ―fair use‖ exception. The Court held that all the
traditional four factors employed to reach a conclusion of fair use are to be
treated together, not in isolation and no undue preference can be given to
any one of them. In relation to the first factor, it was held that Court must
look into the nature of the use, i.e. whether it was for educational purposes
or for review or criticism. The central enquiry (according to the Court) is to
see if the work merely supercedes and supplants the original work or instead
adds something new, with a further purpose or different character, altering
the first with new expression, meaning, or message; in other words, whether
and to what extent the new work is ‗transformative'. The Court borrowed
the latter expression from Judge Pierre Leval (supra). Transformative works,
CS (OS) 1656/2005 Page 18
the Court held, have a greater chance of falling within the fair use defense
and such ‗works thus lie at the heart of the fair use doctrine„s guarantee of
breathing space within the confines of copyright‟. If one may put it
differently, the question to be addressed would be is there a value addition,
which alters the original work in a not insignificant measure. The second
factor, which evaluates the nature of the copyrighted work, is intended to
find out if the work actually merits copyright, that is, whether copyright law
was intended, at its core, to cover such works. However, the Court cautioned
that this factor is not likely ‗to help much in separating the fair use sheep
from the infringing goats', in cases where the subsequent work is
transformative. The third factor, which deals with the extent of copying, the
Court explained citing Sony (supra), does not entail that the reproduction of
the entire work would militate against the finding of fair use. There could be
cases where the copying could be substantial and the courts finds fair use, at
the same time there could be cases where the copying though insubstantial
could be held as infringement. Lastly, the court observed that the fourth
factor, where the market harm to the copyrighted work had to be assessed,
could not be the sole determinative factor. The Courts have to "consider not
only the extent of market harm caused by the particular actions of the
alleged infringer, but also whether unrestricted and widespread conduct of
the sort engaged in by the defendant would result in a substantially adverse
impact on the potential market". The Court went on to hold that the
CS (OS) 1656/2005 Page 19
defendants use, was covered by the doctrine of fair use and did not amount
to infringement.
26. The Court's holding in Campbell, has been followed in Sun Trust Bank
v. Houghton Mifflin, 268 F.3d 1257 (11th Cir.2001) (vacating the injunction on
‗The Wind Done Gone' a fictional work based on Margaret Mitchell's Gone
With the Wind); Bill Graham Archives v. Dorling Kindersley, 2006 US App
LEXIS 11593 (holding that reproduction of images appearing in posters and
tickets, in a coffee table biography fall within the fair use exception) and very
recently in Peter Letterese & Associates v. World Institute of Scientology
Enterprises, D.C. Docket No. 04-61178-CV-PCH (July 8, 2008).
27. In the United Kingdom, in Hubbard v. Vosper, (1972) 2 WLR 389, the
Court while dealing with the question of what amounts to fair use observed
as follows:
"It is impossible to define what is 'fair dealing'. It must be a
question of degree. You must consider first the number and extent
of the quotations and extracts. Are they altogether too many and
too long to be fair? Then you must consider the use made of them.
If they are used as a basis for comment, criticism or review, that
may be a fair dealing. If they are used to convey the same
information as the author, for a rival purpose, that may be unfair.
Next, you must consider the proportions.
To take long extracts and attach short comments may be unfair.
But, short extracts and long comments may be fair. Other
considerations may come to mind also. But, after all is said and
done, it must be a matter of impression. As with fair comment in
the law of libel, so with fair dealing in the law of copyright. The
tribunal of fact must decide."
CS (OS) 1656/2005 Page 20
28. Indian law too, in relation to copyright infringement is interesting. The
Supreme Court in RG Anand (supra) had to adjudicate whether the film
produced by the defendant had in any manner infringed the copyright held
by the plaintiff in his play. The Court after referring to a number of
authorities on the subject observed that the same idea might be developed
in different ways and is the defendants work is nothing but a colourable
imitation of the plaintiffs work, then it would amount to infringement. It set
out the following as the test for determining infringement:
―One of the surest and the safest test to determine whether or
not there has been a violation of copyright is to see if the reader,
spectator or the viewer after having read or seen both the works
is clearly of the opinion and gets an unmistakable impression
that the subsequent work appears to be a copy of the original."
Remarkably, the court, presciently in its judgment propounded a principle
resembling the ‗transformative work' doctrine developed in the United States
much later. It held that:
"Where the theme is the same but is presented and treated
differently so that the subsequent work becomes a completely
new work, no question of violation of copyright arises."
29. In Ramaiah (supra), the Andhra Pradesh High Court had to consider
whether a guide book prepared to help students understand and study a text
called ‗Girija Kalyanam' amounted to infringement. The Court took note of
the fact that the guide consisted of three portions, the first of which gave
meanings to the text. The second portion contained annotations and
CS (OS) 1656/2005 Page 21
illustrations of the meanings and the third portion consisted of probable
questions and answers. The Court distinguished the facts from that in
Blackwood and Sons v. AN Parasuraman (supra), where the infringing work
merely eliminated certain passages from the original work and retained the
essential part of the narration in substantial form. Since, the guide was found
to be much more than a mere replication of the earlier work, incorporating
questions and answers, analysis etc, the injunction was refused.
30. In EM Forster (supra), the Court had to determine whether a guide
published for the novel ‗A Passage to India' violated the copyright in the
original novel. Here again, the Court noted that there was no verbatim
reproduction of the entire novel. The guide was divided into different
portions, which consisted of an introduction to the characters, the life and
philosophy of EM Forster, a brief introduction to the works of EM Forster and
of course an abridged version of the novel; though not chronological. The
Court observed, referring to Kartar Singh Giani v. Ladha Singh, AIR 1934 Lah
777 that in the guise of copyright law the plaintiff cannot ask the courts to
close all the avenues of research, scholarship and all frontiers of human
knowledge. The court found that the guide did not constitute an infringement
and therefore, did not go into the question of fair dealing. In Romesh
Chowdhry (supra) too, the facts involved publication of guide books to books
published by the University in accordance with its syllabi. The Court found
that the guides were not colourable imitations of the University publications
CS (OS) 1656/2005 Page 22
and amounted to criticism and review of those books. It also observed that
since the University in their syllabus published these books for the students,
―the matter had gone into the hands of the students and no copyrights on
the strict sense of the term remained with the complainant‖.
31. The question of fair dealing came up for consideration in Civic
Chandran v. Ammini Amma 1996(16) PTC 670. The defendants had
published a play ‗Ningal Are Communistakki', that was intended to be a
critique of a famous play ‗Ningal Enna Communistakki'. The court referred to
Hubbard v. Vosper (supra) and RG Anand and concluded that the play was
meant to be a critique and therefore, constituted fair dealing under section
52. It observed that the latter work was not market competitor to the prior
work, and by itself constituted a literary work with some amount of
originality. Moreover, the Court held that the nature of the work, that is to
criticize the social structures in Kerala, by itself meant that certain
sequences, events and incidents would be common to both the prior and the
subsequent work, and that the latter was not meant to imitate the former.
Injunction was therefore, denied.
32. Copyright law is premised on the promotion of creativity through
sufficient protection. On the other hand, various exemptions and doctrines in
copyright law, whether statutorily embedded or judicially innovated,
recognize the equally compelling need to promote creative activity and
ensure that the privileges granted by copyright do not stifle dissemination of
CS (OS) 1656/2005 Page 23
information. Two doctrines that could be immediately be summoned are the
idea-expression dichotomy and the doctrine of ―fair use‖ or fair dealing.
Public interest in the free flow of information is ensured through the idea-
expression dichotomy, which ensures that no copyright is granted in ideas,
facts or information. This creates a public pool of information and idea from
which everyone can draw. At the same time, as Judge Leval observes, all
creativity is in part derivative, in that, no creativity is completely original;
―each advance stands on building blocks fashioned by prior thinkers‖
(Bernard Shaw expressed it by saying that Shakespeare was a ―tall man‖,
but he (Shaw) was taller as he stood Shakespeare's shoulders). Judge Leval
further observed that most important areas of intellectual creativity like
philosophy, literature and sciences are referential, and require continuous
reexamination of existing theses.
33. The doctrine of fair use then, legitimizes the reproduction of a
copyrightable work. Coupled with a limited copyright term, it guarantees not
only a public pool of ideas and information, but also a vibrant public domain
in expression, from which an individual can draw as well as replenish. Fair
use provisions, then must be interpreted so as to strike a balance between
the exclusive rights granted to the copyright holder, and the often competing
interest of enriching the public domain. Section 52 therefore cannot be
interpreted to stifle creativity, and the same time must discourage blatant
plagiarism. It, therefore, must receive a liberal construction in harmony with
CS (OS) 1656/2005 Page 24
the objectives of copyright law. Section 52 of the Act only details the broad
heads, use under which would not amount to infringement. Resort, must,
therefore be made to the principles enunciated by the courts to identify fair
use.
34. One crucial test, of the four-factor test, as developed by the American
courts, is the transformative character of the use. The Courts should in cases
like the present ask whether the purpose served by the subsequent (or
infringing) work is substantially different (or is the same) from the purpose
served by the prior work. The subsequent work must be different in
character; it must not be a mere substitute, in that, it not sufficient that only
superficial changes are made, the basic character remaining the same, to be
called transformative. This determination, according to the Court is closely
knit with the other three factors, and therefore, central to the determination
of fair use. If the work is transformative, then it might not matter that the
copying is whole or substantial. Again, if it is transformative, it may not act
as a market substitute and consequently, will not affect the market share of
the prior work.
35. In the present case, this court has considered the plaintiff's textbooks,
as well as the defendant works. The following aspects stand out;
(a) The plaintiff's textbooks, so far as they contain the ―theory‖
portions, have not been copied;
CS (OS) 1656/2005 Page 25
(b) The plaintiff's books do not contain the steps, or process aiding
the solutions (or answers) to the questions/ problems, in each
chapter. The learner is expected, on the basis of the text and the
theory, to apply his mind, and solve such problems
(c) The defendants' copies do not contain the text and the theory
portions, analyzing the problems;
(d) The defendants' copies contain the questions as well as answers,
which are found in the plaintiffs' textbooks;
(e) The defendants provide the problem solving ―step-by-step‖
method to arrive at answers to the questions.
36. A careful analysis of the above would show that whereas the plaintiffs'
texts do not contain or describe the step-by-step process of arriving at
solutions (answers), the defendants' books provide them. The defendants'
books do not contain the theoretical or explanatory content- they are present
in the plaintiffs' textbooks. The use of questions and answers by the
defendants, who provide the step-by-step process of reasoning, is for a
different purpose. Though to a purist or one who delights in intellectual
pursuits, such works may be distasteful, - even offensive - there is no
gainsaying that they neither pretend to be textbooks, nor reproduce all that
are contained in them. They are designed to cater to a category of student
―weak‖ in their understanding of the subject.
CS (OS) 1656/2005 Page 26
37. The purpose and manner of use of the questions found in the plaintiff's
textbooks, by the defendants is thus different; additionally, in their books,
missing in the plaintiff's works are the steps or process of problem solving.
Thus, the defendants' works can be said to be ‗transformative', amounting to
―review‖ under Section 52 (1) (a) (ii) of the Act. Here, the term ―review‖ has
to be interpreted in the context. The plaintiffs claim to copyright is premised
the work being a ―literary‖ one. The review - or commentary, of a part of
such mathematical work - too would have to be seen in the background of
this claim.
38. ―Review‖ according to the Shorter Oxford Dictionary (Fifth edition)
means ―view, inspect or examine a second time or again..‖ In the context of
a mathematical work a review could involve re-examination or a treatise on
the subject. In that sense, the defendants' revisiting the questions, and
assisting the students to solve then, by providing the ―step by step‖
reasoning prima facie amounts to a review, thus falling within the ―fair
dealing‖ provision of Section 52 (1) (a) (ii) of the Act.
39. For the above reasons, the interim injunction granted is hereby
vacated. IA No. 9823/2005 and IA No.51/2006 are accordingly disposed off.
CS(OS) 1656/2005
List before the Joint Registrar on 22nd October, 2008.
Dated: 17th September 2008 S RAVINDRA BHAT, J
CS (OS) 1656/2005 Page 27
