Syndicate Of The Press Of The ... vs B.D. Bhandari & Anr
2009 Latest Caselaw 92 Del

*IN THE HIGH COURT OF DELHI AT NEW DELHI

+
                  CS(OS) 1274/2004

%15.01.2009                        Date of decision : 15.01.2009


 SYNDICATE OF THE PRESS         ...Plaintiff
 OF THE UNIVERSITY OF CAMBRIDGE
 ON BEHALF OF THE CHANCELLOR,
 MASTERS AND SCHOLARS OF
 THE UNIVERSITY OF CAMBRIDGE & ANR

                        Through: Ms Jyoti Taneja and Mr Dhruva Bhagat,
                                 Advocates

                                       Versus


B.D. BHANDARI & ANR                                           ...Defendants.

                              Through : Ex parte.


CORAM :-
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
     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

RAJIV SAHAI ENDLAW, J (ORAL)

1. This suit was instituted to restrain the defendants from

selling books published by them and titled MBD English Guide

B.A./B.Sc./B.COM Part I (Guru Nanak Dev University), MBD English

Guide B.A./B.Sc./B.COM Part II (Guru Nanak Dev University) and

MBD English Guide B.A./B.Sc./B.COM Part III (Guru Nanak Dev

University) for the reason that they contained illegal and

cs(os)1274/2004 page no.1 of 12 unauthorized reproduction of literary content of the plaintiffs'

publication titled "Advance English Grammar by Martin Hewings".

Vide ex parte order dated 10th November, 2004 the defendants were

restrained from utilizing, incorporating the verbatim text taken from

the plaintiff's publications. The defendants contested the suit. The

application for interim relief was disposed of vide order dated 8th

June, 2005 whereby the ex parte order dated 10th November, 2004

was confirmed during the pendency of the suit.

2. Issues as under were framed on the pleadings of the parties:

"1. Whether plaintiff No.1 is the owner of the copyright of the literary work titlted "Advance English Grammar"? OPP

2. Whether the defendants have reproduced verbatim plaintiffs' work titled "Advance English Grammar in their three publications titled "MBD English Guide" one each for B.A., Part I, II and III? If yes, whether complete set of exercises and answer keys, scheme of exercises, answers and placement of topics have been all reproduced?

3. Whether reproduction of plaintiffs' work by the defendants amount to infringement of the plaintiff's copyright in the said work?

4. Whether plaintiffs are entitled to the relief of permanent injunction?

5. Whether plaintiffs are entitled to claim of damages against the defendants? If yes, to what amount of damages, the plaintiffs are entitled to?

6. Whether plaintiffs are entitled to rendition of accounts of profits?

7. Whether plaintiffs are entitled to delivery up of all infringing material including "plates"?

8. Whether the activities of the defendant fall under the concept of fair dealing under the Copyright Act, 1957? OPD

9. Relief."

cs(os)1274/2004 page no.2 of 12

3. However, the defendants stopped appearing w.e.f. 1st March,

2007 and were on 29th April, 2008 proceeded against ex parte. The

plaintiff had prior thereto filed affidavit by way of examination in

chief of one witness and thereafter filed affidavits by way of

examination in chief of two other witnesses. The witnesses of the

plaintiff remain unchallenged by cross examination. The counsel for

the plaintiff has been heard. He has relied upon Time

Incorporated v Lokesh Srivastava 2005 (30) PTC (3) Delhi, Hero

Honda Motors Ltd. v Shree Assuramji Scotters 2006(32) PTC

117 Delhi, Microsoft Corporation v M/s K Mayuri 2007 (35) PTC

415 Delhi and Microsoft Corporation v Rajender Panwar 2008

(36) PTC 697 (Delhi), all on the aspect of award of damages in cases

of infringement of trademarks, copyright and patents even where

the defendants remain ex parte, when the defendants are found to

have indulged in infringement.

4. Though the defendants are ex parte, but a perusal of the

written statement of the defendants and the issues framed would

show that the defendants did not really contest the copyright of the

plaintiff. The defendants claimed to be in the business, inter alia, of

publishing guides or what is in this part of the country called Kunji

or Dukki. It was the case of the defendants that the textbook of the

plaintiff subject matter of the suit was prescribed by the Guru

Nanak Dev University, Amritsar for the students of BA Part I, II and

III; that they were merely for the facility of the students and for

better understanding of the subject matter by the students

publishing the guides; that the introduction before each exercise in

cs(os)1274/2004 page no.3 of 12 the two publications were different; that the illustrations in the

textbook of the plaintiff were not existing in the publication of the

defendants; that while the answers in the plaintiff's publication were

at the end of the book, the questions and answers were together in

the publication of the defendants; that while the plaintiff's

publication contains two choice of answers for most of the

questions, the defendants publication gave only one answer. It was

thus the case of the defendants that the plaintiff's publication being

a course book of the university and the defendants being engaged in

publishing guides as aforesaid, had to naturally publish the answers

as in the plaintiff's book and could not have published different

answers. The defendants have gone to the extent of stating that they

have also given credit to the plaintiff in their publication. It was,

however, contended that the format of the two books was different.

It was the case of the plaintiff's themselves that while the plaintiff's

publication was for Rs 95 only, the defendants publications were for

over Rs 600/-.

5. This is a striking point in the present case. Normally, the

purpose of infringers of trademark, copyright and patent is to sell

and/or use counterfeit or pirated goods at a price much lower than

that of the owner of the trademark or copyright. The infringers are

able to sell at a much lower price, having not incurred the expense

which the owner has incurred in creation of work etc. However, in

the present case the plaintiff themselves claims that the book /

publication of the defendants is of a value several time more than

that of the plaintiff.

cs(os)1274/2004 page no.4 of 12

6. As aforesaid, the ex parte order was confirmed during the

pendency of the suit. The defendants had then relying upon Section

52 of the Copyright Act and Romesh Chaudhary v Ali Mohamad

Nowsheri AIR 1965 J&K 101, Mohammad Jalil v Ram Dayal AIR

1916 All 216, V Ramaiah v K Lakshmaiah 1989 PTC 137, E.M.

Forster v A.N. Parsuram AIR 1964 Madras 331(DB)and Mc

Millan & Co. Ltd. v K&J Cooper AIR 1924 PC 75 contended that

its business of publication of guides amounted to a fair dealing with

the works which were prescribed by the universities and thus fall in

public domain. However, this court at that interim stage did not

find merit in the aforesaid submissions of the counsel for the

defendants and the judgments aforesaid were distinguished and this

court held that while the universal nature of knowledge and its

dissemination freely is a laudatory concept but it must not

transgress rights of an author guaranteed by Copyright Act. This

court further felt that the defendants had not been restrained from

publishing their guides but had only been restrained from

incorporating therein verbatim text from the plaintiff's publication.

7. The witnesses of the plaintiff have merely reiterated the

position as existing earlier and nothing has changed from the

position as found by this court to be existing at the time of interim

order aforesaid. However, at that time only the extracts of the two

publications were before the court. The plaintiff has thereafter

under cover of list of documents dated 28th February, 2007 filed the

cs(os)1274/2004 page no.5 of 12 original books. I have thus had the benefit of glancing through

them. While the plaintiff's publication is in one volume, the

defendants' is in three volumes. The plaintiff's publication

comprises of 340 pages while the defendants' publication comprises

of much more pages in each volume. The format of the two books is

also entirely different.

8. Though in the absence of the defendants and anything

further coming to light in cases such as the present one, I would

have been inclined to decree the suit in terms of the interim order

as well as award damages against the defendants for infringing

action but owing to the large scale use of such guide books and

dependence thereon by students in this country, I was a little

reluctant. Injunction such as in the present case would have had

the effect of severely affecting the very existence of such guide

books, kunjies and dukkies.

9. The said guide books, kunjies and dukkies are basically tools

not for study or understanding but for undertaking an examination

at a short notice. The market/patronage for the two are also entirely

different. The purchasers of such guide books may also possess the

textbook but would not have normally even opened the same. What

such guides do for such students is to, purely from the point of view

of an examination extract some contents only of the textbooks which

can be used by the students for answering the questions. The

publisher of such guidebooks, while doing so, certainly cannot be

cs(os)1274/2004 page no.6 of 12 expected to alter/vary the contents of such extracts. It has to be

remembered that the students using the said guidebooks are not the

top students in each class/course or the students with high intellect.

Such students can be totally unnerved and shaken by the difference

in contents. In any case the purpose of prescribing a textbook in the

school/university is that the students would master the said text and

the examiners are also to judge / mark the students on the basis of

the said text. Thus tinkering with the said text is not possible. The

defendants in the present case have in their book aforesaid given

the Punjabi translation/meaning of different words as well as a

summary in Hindi. A bare perusal of the books of plaintiffs and

defendants shows that the publication of the defendants is entirely

different than that of the plaintiff.

10. In this light, it is also found that this court recently in The

Chancellor Masters and Scholars of the University of Oxford v

Narendera Publishing House Manu/DE/1377/2008 while

considering an application for interim relief against another

publisher of such guidebooks has refused to grant any interim

injunction at the instance of a another well known publisher of

academic books. The judgments cited by the defendants in the

arguments during the adjudication of the application for interim

relief as noticed above as well as the interim order in the present

suit were before that court also. It was held by this court that the

content of what is meant by originality has under gone a paradigm

shift from the days of sweat of the brow doctrine to the modicum of

creativity standard and which has been recognized by the Apex

cs(os)1274/2004 page no.7 of 12 Court in Eastern Book Company v DB Modak 2008(1) SCC 1.

This Court held that the plaintiff in that case which had published

mathematical questions/answers could not, prima facie, claim

copyright. This court thereafter proceeded to deal with the plea of

fair use taken by the publisher of the guides in that case also. It was

held that the doctrine of fair use legitimizes the reproduction of a

copyrightable work. Similarly, the test of transformative character

of the use and basic character were applied. This court in that case

found that the defendants in that case had not copied the theory

portion of the book of the plaintiff; that the plaintiff's book did not

contain the steps or process aiding the solutions to the questions as

in the defendants' book; the defendants copies did not contain

analysis of the problems and, in fact, provided a step by step method

to proceeding at the answer. In these circumstances, the

application for interim relief was declined.

11. Similarly, in the present case also I find that though the

defendants have reproduced questions and answers from the

plaintiffs' book but the purpose thereof is different. The plaintiffs'

book is divided into 120 units, each one looking at a particular area

of grammar and focusing on the use of grammatical pattern,

exploring grammatical contrasts. Each unit consists of two pages.

On the left hand page are explanations and examples, on the right

are practice exercises. The answers are given at the end of the book

under the title "key to exercises". Per contra, each volume of

defendants books deals besides with grammar, also with the texts

prescribed for each year, English prose, comprehensions, poem,

cs(os)1274/2004 page no.8 of 12 paragraph writing, plays, essays writing etc. The said books are

structured on the pattern of question paper of English for each year.

The books at the beginning contain syllabus for each year and also

contain translation from English to Hindi and Punjabi. The said

books in the grammar portion do not reproduce the left hand page

of each unit of plaintiffs' book. Though the right hand page of

plaintiffs' book is copied in toto, save for changing the numbering of

exercises from 1.1, 1.2, 1.3 and so on in plaintiffs' books to 1,2,3 and

so on in defendants'. However, before reproducing the exercises,

the defendants have given their own introduction to some of the

units. The defendants have given the same answers as in the key at

the end of plaintiffs books, at the end of each exercise itself

(perhaps realizing that patrons of their books will have difficulty in

finding answers, if printed elsewhere).

12. From the said pattern it appears that the pattern and use of

the two books are different. While the plaintiffs' book is meant for a

student to educate himself and understand the nuances of English

grammar first by reading the text on the left hand page and then

practice with exercise on the right hand page, the defendants have

given only the exercises along with answers. Once the exercises are

given in a text book prescribed by the university, the same could not

be changed by defendant. Had the intent of the defendants been to

merely copy the book of the plaintiff, the defendants would have

also copied the theoretical portion on the left hand page and the

appendices and additional exercises also in the plaintiffs' book. The

defendants only wanted to provide to the student one single book for

cs(os)1274/2004 page no.9 of 12 cracking the English paper instead of separate books for text,

poetry, essay writing, grammar etc. The defendants in the grammar

section of such book have to naturally give the same exercises as

prescribed by the university and cannot be expected to give a

different exercise.

13. The exercises and answers thereto, which have been copied

are to teach grammatical use of words, tense etc. Sentences,

sometimes with blanks have been framed for the said purposes. The

same, in my opinion also do not constitute original literary, dramatic

or artistic works. No originality or invention is displayed in

composing the said exercises based on day to day use of simple

English language and meant for learning thereof. The plaintiffs'

cannot claim any monopoly in the same. The Apex court in Eastern

Book Company (supra) (though confining to the decision to

judgment of courts only) has held that collection of material and

addition of inputs in the raw text does not give work a flavor of

minimal requirement of creativity, as skill and judgment required to

produce the work are trivial. To establish copyright, the creativity

standard applied is not that something must be novel or non

obvious, but some amount of creativity in the work to claim

copyright is required. In that case selection and arrangement was

viewed as typical and at best result of labour, skill and investment of

capital, lacking even minimal creativity, which did not as a whole

display sufficient originality so as to amount to an original work of

the author. It was further held, to claim copyright there must be

some substantive variation and not just a trivial variation, not the

cs(os)1274/2004 page no.10 of 12 variation of the type where limited ways of expression available and

author selects one of them. The court held the inputs by publishers

of Supreme Court cases in copy edited judgments to be minimal.

The Apex court in that case also applied the principle/test of public

domain and reiterated that once the work is in public domain, its

reproduction or publication would not constitute infringement of

copyright.

14. The High Court of Calcutta in Nag Book House Vs. State of

West Bengal AIR 1982 Calcutta 245 held that the guidelines for the

authors & publishers of text books issued by Board of Education,

prescribing the syllabus cannot be taken as original work being the

product of labour, skill & capital.

15. Section 52 (1) (h) also provides that reproduction of even

literary work as part of questions to be answered in an examination

or in answers to such question shall not constitute infringement of

copyright.

16. In my view, once the book of the plaintiffs was prescribed by

the university, the questions and answers given in the exercises and

key therein, became questions to be answered in an examination

and fall in Section 52(1)(h) foresaid. They thus, fell in public domain.

cs(os)1274/2004 page no.11 of 12

17. I also find that the books of the defendants won't be a

substitute for the book of the plaintiff, for a serious student as is the

intent of infringers. The defendants have also compiled their books

with sufficient labour. It cannot be said that the defendants, without

any effort or input of skill merely copied the books of the plaintiff

and marketing the same to the detriment of the plaintiff.

18. I, therefore, find the plaintiffs' not entitled to any of the reliefs

claimed. The suit is dismissed; the defendants being ex parte, with

no order as to costs.

RAJIV SAHAI ENDLAW, J.

January 15, 2009.

M




cs(os)1274/2004                                            page no.12 of 12