M/S. J.K. Rowling & Ors. vs City Publication & Anr.
2010 Latest Caselaw 147 Del

*             HIGH COURT OF DELHI : NEW DELHI

+             CS(OS) No.1785/2007

Ms. J.K. Rowling & Ors.                                ...Plaintiffs
                    Through : Ms. Jyoti Taneja with Mr. Shine
                              Joy, Advocates

                         Versus

City Publication & Anr.                                         ...Defendants
                     Through : Ex-parte

Reserved on: December 22, 2009
Decided on : January 13, 2010

Coram:

HON'BLE MR. JUSTICE MANMOHAN SINGH

1. Whether the Reporters of local papers may
   be allowed to see the judgment?                          Yes

2. To be referred to Reporter or not?                       Yes

3. Whether the judgment should be reported
   in the Digest?                                           Yes

MANMOHAN SINGH, J.

1. The plaintiffs have filed the present suit for permanent

injunction restraining infringement of copyright and trademark,

rendition of accounts of profits, damages, delivery-up etc.

2. The brief facts of the case are that the plaintiff No.1, Ms. J.K.

Rowling is the creator and author of several original literary works

including the world famous ‗Harry Potter' series of children's literature

titled as:-

a) Harry Potter and the Philosopher's Stone first published in 1997

b) Harry Potter and the Chamber of Secrets first published in 1998

c) Harry Potter and the Prisoners of Azkaban first published in 1999

d) Harry Potter and the Goblet of Fire first published in

e) Harry Potter and the Order of the Phoenix first published in 2003

f) Harry Potter and the Half Blood Prince first published in

g) Harry Potter and the Deathly Hallows first published in 2007.

3. Ms. Rowling, the plaintiff No.1, is the owner of all copyright

in the literary works under the Harry Potter series as mentioned

hereinabove. The said works are original literary works as contemplated

under Section 2(o) of the Copyright Act, 1957.

4. Plaintiff No.1's Harry Potter series of children's books are a

modern day publishing phenomenon and one of the most glaring success

stories in the history of global publishing business. In the last eight

years, over 300 million (30 crore) copies of the works under the Harry

Potter series have been sold worldwide in more than 200 countries and

have been translated into 62 languages - an unprecedented publishing

achievement in the shortest span of time. The Harry Potter books have

been widely publicized and loved by millions of children and adults

around the world. The central character ―Harry Potter‖, a young master

of wizardry lives in the vivid imagination of millions of children across

continents.

5. In 1996, Ms. Rowling (plaintiff No.1) received an offer to

publish her first book in the series from Bloomsbury Children's Book, a

division of Bloomsbury Publishing Plc. (plaintiff No.2). Subsequently,

plaintiff No.1 entered into a Publishing Agreement dated 29 th July, 1996

with plaintiff No.2.

6. Plaintiff No.2 is one of Europe's leading and reputed

independent publishing house especially in literary fiction, non-fiction

and children books with a highly valuable portfolio of intellectual

properties. Additionally, Plaintiff No.2 has a worldwide reputation for

Media and Electronic Reference Publishing and Children's Publishing.

7. Bloomsbury Children's Books and Fiction Divisions are the

other two strength areas of the plaintiff no.2. Publishing works for

children accounts for a highly reputed and successful list of titles from

the Plaintiff no.2 which includes successful authors such as J.K.

Rowling, Debi Gliori, Sharon Crech, Benjamin Zephaniah, Jeanette

Winterson and Alexander McCall Smith.

8. In June, 1997, plaintiff No.2 published plaintiff No.1's first

work in the series titled "Harry Potter and the Philosopher's Stone"

and the world was introduced to Harry Potter. Within few months of the

publication, the world was reeling under the spell and charisma of

―Harry Potter‖. In September, 1998 the US edition of Harry Potter and

the Philosopher's Stone titled Harry Potter and the Sorcerer's Stone

was published by Scholastic Inc. In 1998 the world was introduced to

the second title in the series, Harry Potter and the Chamber of Secrets,

published by plaintiff No.1. The third book was published in July, 1999

to worldwide acclaim and massive media attention.

9. In June, 2000, the plaintiff No.2 appointed Penguin Books

India having its registered office at 11, Community Centre, Panchsheel

Park, New Delhi-110017 as its exclusive distributor in India for all

books published by them in the United Kingdom and the United States

of America including the Harry Potter books.

10. Harry Potter and the Goblet of Fire, the fourth book in the

series was published by Bloomsbury in July, 2000 with a record first

print run in the United Kingdom.

11. As per plaintiff, all the above mentioned books under the

Harry Potter series were published by Plaintiff No.2 under exclusive

license from Plaintiff No.1.

12. In July, 2005 Ms. Rowling's sixth book in the Harry Potter

series titled Harry Potter and the Half Blood Prince was published by

Plaintiff No.2 under exclusive license dated 19 th November, 2004 with

Plaintiff No.1.

13. By virtue of agreement dated 12th November, 2006 Plaintiff

No.2 acquired and owns all intellectual property rights including

copyrights in the artistic work comprising the cover of the UK edition of

Plaintiff No.1's work entitled Harry Potter and the Deathly Hallows

published by Plaintiff No.2. It is alleged that the said work is an

original artistic work as contemplated in Section 2(c) of the Copyright

Act and the said work was first published in United Kingdom.

14. Plaintiff No.3 diversified and successful motion picture and

television studio in the world began as Warner Bros. Studios when,

decades ago, the brothers Warner (Albert, Sam, Harry and Jack)

incorporated their fledgling movie business into a company. In 1927,

Plaintiff No.3 released the world's 1st synchronized-sound feature film

titled ―The Jazz Singer".

15. Plaintiff No.1 has granted to Plaintiff No.3 Warner Bros. the

rights to create motion pictures based on the Harry Potter series of

books as well as the trademark rights and merchandising rights as

regards the characters, titles and other properties relating to the books.

Plaintiff No.3 has produced and released to date five cinematographic

works titled "Harry Potter and the Sorcerer's Stone", "Harry Potter

and the Chamber of Secrets", "Harry Potter and the Prisoners of

Azkaban", "Harry Potter and the Goblet of Fire" and "Harry Potter

and the Order of the Phoenix" based on the works by Plaintiff No.1.

16. By virtue of an agreement dated 29th October, 1999, Warner

Bros., Plaintiff No.3, owns the copyrights and all other intellectual

property rights in and to the visual reproduction of the theme Harry

Potter including the logo of the Hogwarts School of Magic and

including all copyrights in the artwork and illustrations of the cover of

the US edition of the works comprising the Harry Potter series including

the cover of the recently released title Harry Potter and the Deathly

Hallows.

17. In India Plaintiff No.3 has applied for and obtained

registration for the trademark Harry Potter, characters and titles of the

books and the film under the provisions of the Trademark Act, 1999 in

various classes including in classes 9, 16, 25 and 28.

18. On 28th July, 2007 Plaintiff No.2 was informed that the

police in Bangalore had seized 1500 copies of a book titled Harry

Potter and the Deathly Hallows (hereinafter referred to as the

―infringing books‖) the front cover of which was identical to Plaintiff

No.2's publication titled Harry Potter and the Deathly Hallows and the

back cover was identical to Plaintiff No.3's artwork for Harry Potter

and the Deathly Hallows. The alleged infringing books were in paper

back edition and had been printed on very poor quality paper with cheap

ink and seemed to be a pirated version of the original book published by

Plaintiff No.2. Further comparison of the infringing books with the

original publication confirmed that the seized books were fakes. The

infringing books were seized from City Publication - the defendant

No.1 in these proceedings located at No.400, 5 th Cross, Pete Channappa

Estate, Kamakshipalya Bangalore-79. Accordingly, an FIR was lodged

with Kamakshipalya Police Station in Bangalore.

19. The plaintiffs submit that the infringing book revealed the

following:-

a. The title of infringing book was identical to the title of the

Plaintiff's publication Harry Potter and the Deathly Hallows.

b. The infringing book was falsely attributed to have been

published by Plaintiff No.2 and the Plaintiff No.2's imprint name

and mark Bloomsbury appeared prominently on the front cover,

spine and title pages of the book.

c. The infringing book was falsely attributed to have been

authored by Plaintiff No.1 and Plaintiff No.1's name J.K.

Rowling was appearing prominently on the front and back cover,

spine and title pages of the book.

d. The copyright page in the infringing book had been ad-

verbatim reproduced without the permission from Plaintiff

No.2's preceding publication in the Harry Potter series namely

Harry Potter and the Half Blood Prince.

e. The front cover of the infringing book was an unauthorized

identical reproduction of the cover of the U.K. edition of

Plaintiff No.1's work titled Harry Potter and the Deathly

Hallows published by Plaintiff No.2, wherein the copyright in art

work comprising the cover vests with Plaintiff No.2.

f. The back cover of the infringing book is an unauthorized

identical reproduction of the cover of the US edition of Plaintiff

No.1's work titled Harry Potter and the Deathly Hallows

wherein the copyright in art work comprising the cover vests

with Plaintiff No.3.

g. The title page of the book contains an unauthorized

reproduction of the Plaintiff No.3 art work comprising the logo

of the Hogwarts School of Magic. The aid logo of Hogwarts

School appears on the title page on all the publications in the

Harry Potter series published by the Plaintiff No.2.

h. A perusal of the contents of the book revealed that the same

was an unauthorized adaptation of the Plaintiff No.1 works

under the Harry Potter series as the defendants had without

permission copied the characters, their names, the

expression/description of the characters, their locations, actions,

accompaniments from the Plaintiffs' works in the Harry Potter

series. The defendants had copied the main character Harry

Potter, the co-cast including Renotify on Weasley, Hermione

Granger, Prof. Albus Dumbledore, The Dursley including uncle

Vernon Dursley, Aunt Petunia Dursley and cousin Dudley

Dursley, Lord Voldemort, amongst many others. The defendants

have copied the settings, locations for example the Dudley

residence at Privet Drive, the Hogwarts Express-the train which

took Harry Potter to the Hogwarts School of Magic, the

Hogwarts School etc. apart from many other similarities.

20. The plaintiffs argued that the defendants have substantially

reproduced the Plaintiffs' works under the Harry Potter series by

reproducing the Plaintiffs' characters, names, various expressions,

settings, locations from the Plaintiffs' works under the Harry Potter

series into the infringing book. The defendants used the cover of the

UK and US edition of the Harry Potter and the Deathly Hallows as a

front and back cover respectively of the infringing book. The defendants

have deliberately printed a fake book on the Harry Potter theme with the

same characters, settings, location and the descriptions as in the Harry

Potter series with a cover identical to the cover of the genuine Harry

Potter and the Deathly Hallows bearing the title of the Plaintiffs' work

as also bearing the name of Plaintiff No.1 as the author and Plaintiff

No.2 as the publisher, all calculated to give the impression that it is the

genuine publication of the Plaintiffs' original work titled Harry Potter

and the Deathly Hallows. Further the defendants with mala fide

intention, to ride over the immense popularity of Plaintiffs' works Harry

Potter and the Deathly Hallows have deliberately printed and

distributed their infringing book within a week of the release of

Plaintiffs No.1 and 2's work titled Harry Potter and the Deathly

Hallows when the Plaintiff's genuine publication was much in demand

all over India, only to mislead the public and the fans of Harry Potter

into buying the fake book thinking that it is a genuine publication of

Plaintiffs. In doing so the defendants have distorted and altered the

Plaintiff No.1's work under the Harry Potter series in a manner

prejudicial to the honour and reputation of its author--the Plaintiff

No.1. Further the defendants by falsely attributing the authorship of the

infringing book to the Plaintiff No.1 have caused immense prejudice to

the Plaintiff No.1's reputation.

21. It is alleged that the act of defendants in without permission

reproducing the artistic work/illustration comprising the cover of the

UK edition of the work titled Harry Potter and the Deathly Hallows

published by Plaintiff No.2, who owns all copyright in the artwork

comprising the said cover amounts to infringement of Plaintiff No.2's

copyright in the same under Section 51 of the Copyright Act, 1957.

22. The plaintiffs submit that the defendants have further

infringed the copyright of Plaintiff No.3 in the artwork comprising the

cover of the US edition of work titled Harry Potter and the Deathly

Hallows. Defendants have further infringed Plaintiff No.3's copyright

in the art work comprising the logo of the Hogwarts School Magic by

without permission reproducing the said logo on the title page of the

infringing book.

23. The defendants are well aware of the immense popularity and

goodwill attached to the Plaintiffs' works under the Harry Potter series

and have sought to take direct advantage of the popularity of the

Plaintiffs' work under the title ―Harry Potter‖ by using without

authorization the title of the Plaintiffs work as also the other essential

features of the Plaintiffs original literary works including attributing

Plaintiff No.1 to be the author and Plaintiff No.2 to be the publisher of

its fake book with the mala fide intention to ride on the Plaintiffs'

popularity and dishonestly reap illegal profits by trading upon the hard

earned reputation and goodwill of the Plaintiffs, all of which is clearly

detrimental to the interest of the Plaintiffs.

24. Along with the suit, I.A. No.11248/2007 under Order

XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 was listed

before court on 1st October, 2007 when an ex-parte ad interim order was

passed in terms of paragraph 41 of the interim application. On that day,

the court also passed the following order in favour of the plaintiffs:-

―This order has been passed because the plaintiffs have been able to demonstrate, prima facie, that they are the owners of the copyrights in the literary artistic works comprised in the book ―Harry Potter and the Deathly Hallows‖. The Plaintiff No.1 is the author of the said work and the Plaintiff No.2 is the publisher. These books are well known worldwide and the Plaintiffs also have trademark registrations as well as copyright registrations in respect of the characters, covers and literary contents. The Plaintiff has placed before this court the infringing work that has been examined by me. It is apparent that the front cover has been copied though the printing is of a very poor quality. The back cover is an unauthorised identical reproduction of the cover of the US edition of the said work. The matter contained in the book is an

adaptation of the matter contained in the original work. The defendants have copied the main characters.

It is obvious by looking at the two works

- the original and the infringing one, that the latter is an unauthorised adaptation of the former.‖

25. Despite service, no one appeared on behalf of the defendants,

and the same also failed to file the written statement. By order dated 9th

November, 2009 Defendants were accordingly proceeded ex parte and

the plaintiffs were granted time to produce the ex parte evidence by way

of affidavit.

26. The plaintiffs produced the evidence by way of affidavit of

Shri Anil Kumar, who reiterated almost the same facts as stated in the

plaint. He also proved the following documents in support of the case of

the Plaintiffs:-

(i) Powers of Attorneys duly executed by the Plaintiffs No.1 to 3 in his favour as Exhibit PW1/1 (Colly)

(ii) Notarised copies of US Copyright Registration Certificate in favour of Plaintiff No.1 as Exhibit PW1/2 (Colly)

(iii) The News report about the Plaintiffs publications as Exhibit PW1/3 (Colly)

(iv) Notarized copies of the exclusive licenses issued by Plaintiff No.1 to Plaintiff No.2 as Exhibit PW1/4 (Colly)

(v) Plaintiff No.2's original publication titled Harry Potter and the Deathly Hallows as Exhibit PW1/5

(vi) Printouts of the list of best selling books from Forbes.com as Exhibit PW1/6

(vii) Book reviews of the Plaintiffs' work under the Harry Potter series as Exhibit PW1/7 (Colly)

(viii) Notarized copy of the Agreement dated 12 th November, 2006 as Exhibit PW1/8

(ix) Copy of US copyright registration certificate for the artwork and illustrations comprising the cover of the US edition of the work titled Harry Potter and the Deathly Hallows in favour of the Plaintiff No.3 as Exhibit PW1/9

(x) Colour printout of the cover and title page of the US edition of the Plaintiff No.1's work titled Harry Potter and the Deathly Hallows wherein the copyright in the art work comprising the cover vests with the Plaintiff No.3 as Exhibit PW/10 (Colly)

(xi) Copy of Assignment Agreement dated 29 th October, 1999 as Exhibit PW1/11

(xii) Copy of US Copyright Registration Certificate for style guide of the work titled Harry Potter and the Sorcerer's Stone containing logo of the Hogwarts School of magic along with the logo as Exhibit PW1/12;

(xiii) Notarized copies of Certificate of Registration of the trademarks in India as Exhibit PW1/13 (Colly)

(xiv) FIR bearing Crime No.317 of 2007 of Kamakshipalya Police Station in Bangalore and translation of FIR contents in English as Exhibit PW1/14

(xv) Original letter dated 16th August, 2007 from the Investigating Officer to Plaintiff No.2 seeking copyright documents, copy of power of attorney amongst other information and reply to the said letter by letter dated 20 th August, 2007 from Plaintiff No.2 as Exhibit PW1/15

(xvi) Photographs of the front and spine cover of the Defendants infringing book as Exhibit PW1/16 (Colly)

(xvii) Photograph of the front and spine cover of the Plaintiff No.2's original publication titled Harry Potter and the Deathly Hallows as Exhibit PW1/17

(xviii) Comparative pictures of the front and spine cover of the Defendants infringing book and the Plaintiff No.2's publication titled Harry Potter and the Deathly Hallows as Exhibit PW1/18 (Colly)

(xix) Photograph of the back cover of the infringing book which is an identical reproduction of the cover of the US edition of the Plaintiff No.1's publication titled Harry Potter and the Deathly Hallows as Exhibit PW1/19

(xx) Copyright page of the infringing book which is an unauthorized ad verbatim reproduction from the Plaintiff No.2's publication Harry Potter and the Half Blood Prince as Exhibit PW1/20

(xxi) Notarized copy of the Copyright page of the Plaintiff No.2's original publication Harry Potter and the Half Blood Prince as Exhibit PW1/21

(xxii) Title page of the infringing book bearing the unauthorized reproduction of the Plaintiff No.3's art work comprising the logo of the Hogwarts School of Magic as Exhibit Pw1/22

(xxiii) Defendants' infringing book as Exhibit PW1/23

(xxiv) Covers, copyright and title pages of the Plaintiffs' publication under the Harry Potter series as Exhibit PW1/24 (Colly)

(xxv) FIR Nos.303/2005 P.S. Magadi Road, Bangalore City dated 22nd July, 2005 and FIR No.242/2004 P.S. Magadi Road, Bangalore City dated 23rd July, 2004 registered against the accused, Defendant No.2 as Exhibit PW1/25 (Colly)

(xxvi) Copies of certified copies of the various orders detailed in paragraph 40 of the affidavit of Shri Anil Kumar as Exhibit PW1/26 (Colly).

27. The evidence produced by the Plaintiffs has gone unrebutted

by the Defendants. Learned counsel for the Plaintiffs has already made

a statement that the Plaintiffs are not pressing the relief for damages and

this fact has been recorded in order dated 22nd December, 2009.

28. In view of the averments made in the plaint and documents

placed on record, it appears that the plaintiffs have been able to make a

strong case against the defendants for grant of permanent injunction

restraining infringement of copyright and trademark. Plaintiffs have

successfully proved their case as per the averments made in the plaint,

therefore, the Plaintiffs are entitled for grant of permanent injunction in

terms of paragraphs 43-A, B and D which read as under:-

―43. (A) An order for permanent injunction restraining the defendants, their directors, partners, promoters, employees as the case may be and their officers, servants and agents including distributors, wholesalers and retailers and all others acting for and on their behalf from printing, distributing, selling, offering for sale the infringing book titled Harry Potter and the Deathly Hallows

(i) which is an unauthorized reproduction and adaptation of the Plaintiff No.1's literary works under the Harry Potter Series in a manner prejudicial to the reputation and honour of the Plaintiff No.1 amounting to infringement of Plaintiff No.1's copyright in the same under Section 51 of the Act and violation of Plaintiff No.1's moral rights under Section 57 of the Act.

(ii) whose front cover is an unauthorized reproduction of the Plaintiff No.2 original artistic works comprising the cover of the UK edition of the work titled Harry Potter and the Deathly Hallows amounting to infringement of Plaintiff No.2's copyright in the same, under Section 51 of the Copyright Act.

(iii) whose copyright page is an unauthorized reproduction of the copyright page of the Plaintiff No.2 publication titled Harry Potter and the Half Blood Prince amounting to infringement of Plaintiff No.2's copyright in the same, under Section 51 of the Copyright Act.

(iv) whose back cover is an unauthorized reproduction of the Plaintiff No.3 original artistic works comprising the cover of the US edition of the work titled Harry Potter and the Deathly Hallows amounting to infringement of Plaintiff No.3's copyright in the same under Section 51 of the Copyright Act.

(v) whose title page bears an unauthorized reproduction of the Plaintiff No.3 original artwork comprising the logo of the Hogwarts School of Magic amounting to infringement of the Plaintiff No.3's copyright in the same under Section 51 of the Copyright Act.

B. An order for permanent injunction restraining the defendants, their directors, partners, promoters, employees as the case may be and their officers, servants and agents including distributors, wholesalers and retailers and all others acting for and on their behalf from

using the Plaintiff No.3 registered trademark Harry Potter and other associated trademarks detailed in paragraph 23 above on the cover, spine, title page of the infringing book and/or in the infringing book, or in any other manner amounting to infringement of the Plaintiff No.3 registered trademarks.

D. An order for delivery-up to the Plaintiffs, of all the duplicating equipment and other ―plates‖ as defined in Section 2(t) of the Act, and all other infringing material under Section 58 of the Act which are in the possession of the defendants and/or their agents, servants, representatives, etc.‖

29. The other reliefs sought in paragraph 43 of the plaint are not

pressed in view of the statement made by learned counsel for the

Plaintiffs on 22nd December, 2009. Plaintiffs are, however, entitled for

costs of the proceedings.

30. In the above terms the suit of the Plaintiffs is decreed. The

decree be drawn accordingly.

31. The suit as well as all pending applications, if any, stand

disposed of.

MANMOHAN SINGH, J.

JANUARY 13, 2010 sa