Delhi High Court
Syndicate Of The Press Of The ... vs B.D. Bhandari & Anr. on 3 August, 2011
Author: A.K.Sikri
REPORTABLE
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ RFA (OS) No.21 of 2009
FAO (OS) No.458 of 2008
Reserved On: May 23, 2011.
% Pronounced On: August 03, 2011.
(1) RFA (OS) No.21 of 2009
SYNDICATE OF THE PRESS
OF THE UNIVERSTIY OF
CAMBRIDGE ON BEHALF OF
THE CHANCELLOR,
MASTERS AND SCHOOL . . . APPELLANT
through : Mr. A.S. Chandhiok, Sr.
Advocate with Ms. Jyoti
Taneja, Advocate and Mr.
Saurabh Kirpal, Advocate.
VERSUS
B.D. BHANDARI & ANR. . . .RESPONDENTS
through: Mr. S.K. Dubey with Ms.
Sangeeta Goel, Mr. Mohit Goel
and Mr. Sidhant Goel
Advocates.
(2) FAO (OS) No.458 of 2008
THE CHANCELLOR MASTERS
AND SCHOLARS OF THE
UNIVERSITY OF OXFORD ...APPELLANT
through : Mr. V.P. Singh, Sr. Advocate
with Mr. Rajiv Bansal, Mr
Saurabh Sinha and Mr. Harshit
Agarwal, Advocates.
VERSUS
NARENDRA PUBLISHING HOUSE AND ORS.. . .RESPONDENT
through: Ms. Prathiba M. Singh with Mr.
Sudeep Chatterjee,
Advocates.
RFA (OS) No.21 of 2009 and FAO (OS) No.458 of 2008 Page 1 of 89
CORAM :-
HON'BLE MR. JUSTICE A.K. SIKRI
HON'BLE MR. JUSTICE SURESH KAIT
1. Whether Reporters of Local newspapers may be allowed
to see the Judgment?
2. To be referred to the Reporter or not?
3. Whether the Judgment should be reported in the Digest?
A.K. SIKRI, J.
1. The present appeal is filed against the judgment by the learned
Single Judge in CS (OS) No. 1274 of 2004, whereby the Hon`ble
Single Judge dismissed the suit filed by the appellant herein to
restrain the defendants therein (respondents in this appeal)
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).
2. The appellant, Cambridge University Press, the printing and
publishing house integratedly attached to the University of
Cambridge is one of the oldest printing and publishing houses
of the world. ―Advance English Grammar by Martin Hewings‖,
one of the leading publications of the appellant and the subject
matter herein, has been prescribed and used by many
universities all over the Globe including India. This work is also
prescribed in Guru Nanak Dev University, Amritsar, Punjab for
the students of B.A. Part I, II, III. The grievance of the appellants
is that the respondents are publishing and selling books, as
titled aforementioned, which do contain illegal and
unauthorized ad verbatim reproduction of literary content of
the grammar exercises and keys thereto given in units 1 to 120
of the appellants' publication titled ―Advance English Grammar
by Martin Hewings‖.
3. Raising this grievance, the appellant filed the aforesaid Suit on
the Original Side of this Court to restrain the respondents
herein from selling books published by them entitled 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) on the premise that
these books contained illegal and unauthorized reproduction of
literary content of the appellants' publication titled ―Advance
English Grammar by Martin Hewings‖. Along with the Suit, the
appellants also filed application under Order 39 Rule I and II
seeking ad interim injunction.
4. The appellants succeeded in obtaining an ex parte interim
injunction to restrain the respondents from utilizing and
incorporating the ad verbatim text from the appellants' work,
which was later on also confirmed during the pendency of the
Suit. On the basis of pleadings, the following issues were
framed in the Suit:
―1. Whether plaintiff No.1 is the owner of the copyright
of the literary work titled ―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.‖
5. Though the respondents participated in the proceedings upto
this stage and by filing the written statement and contesting
the interim relief prayed for by the appellants, with effect from
01.03.2007, they stopped appearing and specific order dated
29.04.2008 was passed whereby defendants were proceeded
ex parte. The appellants filed evidence by means of affidavit of
three witnesses. The averments in these affidavits remained
uncontroverted as the respondents did not come forward to
cross-examine the said witnesses. In these circumstances, the
counsel for the appellant was heard by the learned Single
Judge. However, the Suit has been dismissed as the learned
Single Judge had taken a view that there was no originality or
invention displayed in composing grammar sentences or
exercises and hence the appellant's work does not constitute
original literary, dramatic, or artistic works. It is also held that
the appellant's work not only touches the boundaries of ―public
domain‖ but also when a book is prescribed by some
University, the questions and the answers along with keys
thereto become ―questions to be answered in an examination‖
and therefore, the work in question falls within the scope of
section 52(1)(h) of the Indian Copyright Act (hereinafter
referred to as ‗the Act'), which provides for doctrine of fair
dealing.
6. It would be of some significance to point out at this stage itself
that in the written statement filed by the respondents, they had
really not contested the copyright of the appellant. Their
defences, however, were altogether different. It has been
claimed by them that they are in the business inter alia of
publication guides (which is described by the learned Single
Judge as Kunji or Dukki, an epitaph given to such guides in this
part of this country). According to them, by means of these
guides, the respondents were merely facilitating the students
better understanding of the subject matter as the book of the
appellant was prescribed by Guru Nanak Dev University. It was
also their contention that the two publications were different;
the illustrations in the textbook of the appellants were not
existing in the publication of the respondents; while the
answerers in the appellants publication were at the end of the
book, the questions and answers were together in the
publication of the respondents; while the appellant's
publication contains two choices of answers for most of the
questions, the respondents publication gave only one answer.
In nutshell, the defence put by the respondents was that the
appellant's publication being a course book of the University,
the respondents had merely published a guide book, which was
different from the appellant's course book and if in these
guides, the respondents had published the answers as in the
appellant's book that was but natural, as there could not have
been different answers. That by itself did not amount to
copying the work of the appellant and the format of two books
was different. Moreover, the publication of the respondents
was protected by the provisions of Section 52(1) (h) of the Act,
as it amounted to ―fair use‖, moreso when the appellants' book
had been brought in public domain because of its prescription
by a University. The learned Single Judge accepted this
defence of the respondents, which led to the dismissal of Suit.
7. Though various issues were framed as highlighted above, on
the basis of arguments advanced by the learned counsel for the
parties, we feel it apposite to crystallize the area of
controversy. Succinctly stated, the issues, as emerging from
the detailed submissions of the appellants are:
(i) Whether the appellants' work in composing grammar
sentences and exercises constitute original literary work
or not and consequently there subsists any copyright in
the appellant's work or not?
(ii) If there subsists any copyright, then whether the
prescription by the University, in the light of facts and
circumstances of the present case, has an eroding effect
on this copyright vested in the appellant?
(iii) If not, or upto a certain extent yes, then whether the
work of the respondent in publishing the guides amounts
to infringement of the appellant's copyright over the
aforementioned English Grammar book.
ISSUE No: 1
8. It has been submitted on behalf of the appellants that the
observations of the learned Single Judge that ―the exercises
and answers thereto, which have been copied are to teach
grammatical use of words, tense, etc. sentences, sometimes
with blanks which have been framed for the said purposes. The
same, in my opinion also do not constitute original literary,
dramatic or artistic works.‖ is contrary to Section 13 of the Act.
9. The appellant has contended before us that the appellant's
subject work as well as its author are internationally well
renowned and the subject work is the result of years of
research, knowledge, experience, creativity, labour, skill and
ingenuity employed and invested by the author Dr. Martin
Hewings, who is a Senior Lecturer at the University of
Birmingham, and has been teaching English Grammar to the
international students. It is argued that the learned Single
Judge is incorrect to hold that there is no originality or invention
in composing Grammar sentences or exercises, because the
author has put great efforts, creativity, research, skill etc. in
shaping and designing the subject work and its contents
thereof so as to make it most effective, efficient and user
friendly. The author has employed unique methods to simplify
and explain the concepts of English Grammar like blank
passages and letters, incorrect sentences with hints thereto
and it is well established principle of copyright that if sufficient
labour, skill and judgment have been exercised in devising the
arrangement of the whole work, that can be an decisive
elements in deciding whether the work is protected by
copyright. Moreover, the copyright law is not concerned with
the originality of idea but that of the expression and the
expressions employed by the author in drafting and arranging
exercises and keys thereto are unique to the author. The
uniqueness of the same can also be inferred from the fact that
there are innumerable ways to explain the concepts in
questions and different expressions concerning the same
concepts have been employed by the other well reputed
authors. The appellants have further contended that the
impugned judgment, in wider implications, has exposed all the
books of English Grammar to copyright infringement on the
ground that there subsists no copyright in the same. To
substantiate the above submission, on the point of originality
and available copyright protection thereto, the appellants have
placed reliance mainly upon following judgments:
1. Educational testing Service Vs. John Katzman
Federal Circuit 793 F. 2D 533 (3rd Cir. 1986);
2. V. Govindam Vs. E.M. Gopalkrishna Kone and
Another (AIR 1955 Madras 391)
3. University of London Press Ltd. Vs. University
tutorial Press Ltd. (1B IPR 186)
4. R.G. Anand Vs. Delux Films (AIR 1978 SC
1613)
10. It was argued by the learned counsel for the respondents that
the subject work of the appellant lacks originality and
therefore, was not entitled to copyright protection. He stressed
that traditional ―sweat of the brow doctrine‖ had given the way
of ―modicum of creativity‖ standard. There is no quarrel about
this which has already been highlighted above. However,
argument of the learned counsel was that there is no creativity
involved in the present case. He relied upon the judgment of a
learned Single Judge of this Court in the case of The
Chancellor of Masters and Scholars of the University of
Oxford Vs. Narendra Publishing House & Ors. 2008 (38)
PTC 385 (Del) was seized with similar facts as to the present
case and the learned Single Judge refused to grant relief to the
appellants' citing the abovementioned law laid down by the
Supreme Court and Courts worldwide and observed that the
work of the appellants laced the originality required by law
under the new legal regime and thus was not a copyrightable
subject matter. The Court in the abovementioned case
observed as under:
―Our Supreme Court has also signified a shift; in Eastern
Book Company v. D.B. Modak 2008 (1) SCC 1..... it
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 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....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 n 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 such schematic
arrangement; the court merely infers that prima facie there
is no material in support of it; the plaintiffs 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 requiring or
arrangement, is insubstantial.‖
The same observation has been rendered by this Court in
the case of Mattel Inc. & Ors. Vs. Mr. Jayant Agarwalla &
Ors. 2008 (38) PTC 416 (Del). It was also submitted by the
learned counsel for the respondents that in the present case
the learned Single Judge was seized of appellants claims of
copyright protection over grammatical questions and answers
and the same was answered in the negative against the
appellants in view of the law of the land stated in all the
abovementioned cases. The learned Single Judge observed
that the grammatical use of tenses, words, etc., do not
constitute original literary work. Admittedly, the subject work
of the appellant, i.e., ―Advanced English Grammar by Martin
Hewings‖ was composed of exercises based on day-to-day use
of simple English Language and therefore the learned Single
Judge correctly observed that no originality was displayed in
the same. It is submitted that in view of settled law on the
subject, the contention of the appellants of mere schematic
arrangement and selection of exercises leading to copyright
protection does not measure up to the test of originality, post
the Eastern Book Company (supra) case and the other
cases cited above. Even otherwise, the creative expression, if
any, is minimal and does not warrant copyright protection. The
case of University of London Press Vs. University Tutorial
Press Ltd. (1916) 2 SC 601 repeatedly cited by the appellant
in the appeal holds no good law. The law on principle of
originality has undergone a sea change which is reflected by
the decisions cited above.
11. We have considered the submissions of both sides on this
aspect. In the present era of globalization, the issue as to the
protection of copyright, a species of Intellectual Property
Rights, has gained much momentum. The Copyright and
related rights protect the rights of authors, performers,
producers and broadcasters, and contribute to the cultural and
economic development of nations. This protection fulfills a
decisive role in articulating the contributions and rights of
different stakeholders and the relation between them and the
public. In India this copyright protection has been provided
under Section 13 of the Act. It reads as under:
"13. Works in which copyright subsists.- (1) Subject to
the provisions of this section and the other provisions of
this Act, copyright shall subsist throughout India in the
following classes of works, that is to say,-
(a) Original literary, dramatic, musical and artistic works;
(b) Cinematograph films; and
(c) Records.‖
12. The legislative text, which has the bearing upon the issue
involved therein, is "ORIGINAL LITRERARY". In order to
reach at any conclusion in this regard, it is necessary to
examine the requirement of originality under abovementioned
Section and concerned tests developed under the IPR
jurisprudence by Indian as well as foreign authorities and the
courts.
13. Black's Law Dictionary (7th ed.) defines originality as ―the
quality or state of being the product of independent creation
and having a minimum degree of creativity.‖ It further says
that although ―originality is a requirement for copyright
protection but this is a lesser standard than that of novelty in
patent law.‖ Justice Frank in Alfred Bell & Co. Vs. Catalda
Fine Arts, Inc., [191 F .2d 99, 102 (2nd Cir . 1951)] observed
that ―original‖ in reference to a copyrighted work means that
the particular work ‗owes it origin to the author.' No large
measure of novelty is necessary.‖ J A L Sterling in his
celebrated work titled ―World Copyright Law‖ clearly
summaries the English position on the issue of originality as
below:
―Although a number of interpretations have been given to
the term, there are certain points on which agreement
seems to have been firmly established. Primary among
these points are two basic concepts, First that the work
must not be merely a copy of a previous work, and
secondly that the work is the result of the investment of
individual skill, judgment or labour‖ [ Page 303, 2nd ed.]‖
14. In the United States, originality is the constitutional
requirement under the copyright clause of the constitution and
is a sine qua non of the copyrightability. Earlier, in the United
States, the judicial trend, to trace out the elements of
originality in a given work was to focus on the "Sweat of the
brow" test or the industriousness. However, there has been a
consistent shift from this approach towards a test based on
"creativity". Feist Publications, Inc., v. Rural Telephone
Service Co., 499 U.S. 340 (1991), is a glaring example of this
shift wherein the Supreme Court of the United States was
categorical to observe that ―as a constitutional matter,
copyright protects only those constituent elements of a work
that possess more than a de minimis quantum of creativity.‖
15. The Supreme Court of Canada in the matter of CCH Canadian
Ltd. Vs. Law Society of Upper Canada 2004 (1) SCR
339 (Canada) has noticed the competing views on the meaning
of ―original‖ in copyright law wherein some courts have held
that a work which has originated from an author and is more
than a mere copy of a work, is sufficient to give copyright.
16. The Supreme Court of India has found many occasions to
reiterate that the test of originality in India is same as in the UK
which is based on the "skill, judgment and labour". In
Eastern Book Company and Ors. Vs. D.B. Modak and
Anr.( AIR 2008 SC 809), the Indian Apex court was
categorical to observe that:
―Copyrighted material is that what is created by the author
by his own skill, labour and investment of capital, maybe it
is a derivative work which gives a flavour of creativity.‖
17. This requirement of originality, under the Copyright Act, 1957,
is that of expression and not of idea. In University of London
Press Limited v. University Tutorial Press Limited [1916]
2 Ch 601, J. Peterson observed that:
―The word ―original‖ does not in this connection mean that
the work must be the expression of original or innovative
thought. Copyright Acts are not concerned with the
originality of ideas, but with the expression of thought. The
originality which is required relates to the expression of
thoughts. But the Act doesn't require that the expression
must be in the original or novel form, but that the work
must not be copied from another's work- that it must
originate from the author.‖
18. The abovementioned UK approach has become a standard all
over the globe in the process of judicial determination
regarding whether a work is copyrightable or not. The Indian
Supreme Court, in Eastern Book Company and Ors. (supra)
cited the aforementioned judgment with approval and
categorically observed that ―The Copyright Act is not concerned
with the original idea but with the expression of thought.‖
19. In the instant case, to adjudicate upon the issue as to whether
the finding of the ld. single judge that there subsists no
copyright in the work of the appellant because of there being
no originality or invention in composing grammar sentences or
exercises, is sustainable or not, we need to view it from two
perspectives. Firstly, whether the appellant`s work satisfies the
―originate from the author‖ test coupled with the requirement
of ―skill, judgment and labour‖ and secondly, whether the
grammar sentences and exercises in question are
copyrightable expressions evolved upon the un-copyrightable
ideas pertaining to the knowledge of grammatical constructs of
the English language.
20. At the very outset, it would be of interest to note that in the
United States, a major impetus for copyright protection
enactment, as indicated by Thomas B Nachbar in his
―Constructing Copyright's Mythology‖ (6 Green Bag 2d 37, 43-
44 (2002))., was Noah Webster's desire for protection of his
nearly completed, or, as was the case in some states, both
completed and published spelling and grammar book.
21. Adverting to the first facet, it would be of interest to note that
as observed by the learned Single Judge himself in the
impugned order ―the defendants did not really contest the
copyright of the plaintiff‖. Obviously, because of this reason,
no issue is carved out thereupon, viz., whether the appellant
had copyright in its publication. However, still this issue arises
for consideration before us and detailed arguments were
advanced in view of the following observations contained in
Para 13 of the impugned judgment:
―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 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.‖
22. Normally, when the respondent virtually accepted the copyright
of the appellant in its publication ―Advance English Grammar
by Martin Hewings‖ and in the absence of any issue on this
aspect, the learned Single Judge was supposed to proceed on
the basis that the appellant had a copyright in the said work.
However, it appears that the aforesaid observations came to be
made and findings arrived at, at a particular juncture when the
learned Single Judge was examining the pattern and use of two
books, viz., that of the appellant and the guide books of the
respondents. There is no dispute that insofar as the text of the
appellant's work is concerned, the appellant can legitimately
claim copyright therein. It is the questions which are given by
the author at the end of each chapter, which was the limited
facet dealt with by the learned Single Judge holding that no
originality or invention was displayed in composing
exercises/questions based on day to day use of simple English
language and meant for learning thereof. It is, therefore, this
part which needs to be examined when we are discussing the
question of copyright of the appellant in its book as to see
whether there is any ―creativity, skill and judgment‖ in devising
those exercises/questions at the end of each chapter of the
book.
23. To answer this facet and to judge as to whether the approach
of the learned Single Judge is in conflict and we feel it
appropriate to first state the flavour of the book authored by
Martin Hewings. Complete title of this book is as under:
―Advanced
English
Grammar
A self-study
Reference and
Practice book for
Advanced sought
asian students
WITH ANSWERS
Martin Hewings‖
24. It is, thus, an English Grammar book for students
undertaking higher studies. The author had specifically in
mind South Asian students for whom he undertook the
project, i.e., to produce ‗a study reference and practice
book. Specific stress is laid in the title itself that this book is
―WITH ANSWERS‖. There are introductory messages ―TO
THE STUDENT‖ as well as‖ ―TO THE TEACHER‖ explaining
them as to what the book about and how it is to be used. It
is specifically mentioned that the book is written mainly as a
self-study, but it can also be used in a class with a teacher.
There are 120 units in the book, each dealing with a
particular area of Grammar. It would be relevant to extract
the portion of ―How the book is organized‖ and ―How to use
the book‖, which reads as under:
―How the book is organized
There are 120 units in the book. Each one looks at a
particular area of grammar. Some sections within each unit
focus on the use of a grammatical contrasts, such as
whether to use would or used to to report past events, r
when we use because or because of. The 120 units are
grouped under a number of headings such as Tenses and
Modals. You can find details of this in the Contents on pp.
iii-vi.
Each unit consists of two pages. On the left-hand page
are explanations and examples; on the right are
practice exercises. The letters next to each exercise
show you which sections of the left-hand page you need to
understand to do that exercise. You can check you
answers in the Key on page 289. The Key also
comments on some of the answers. Four Appendices
tell you about passive verb form, quotation, irregular verbs
and Typical Errors (see below). To help you find the
information you need there is an Index at the back of the
book. Although terms to describe grammar have been kept
to a minimum some have been included, and you can find
explanations of these terms in the Glossary on page 265.
On each left-hand page you will find a number of symbols.
These are included to show the kinds of mistakes that
students often make concerning the grammar point being
explained. These Typical Errors are given in Appendix 4
on page 246, together with a correction of the error, and an
explanation where it is helpful.
The symbol is used to show you when it might be useful to
consult a dictionary. On the explanation pages it is placed
next to lists of words that follow a particular grammatical
pattern, and on the exercise pages it is used, for
example, to show where it necessary to understand
what particular words mean in order to do the
exercise. Good English - English dictionaries include the
Cambridge International Dictionary of English, the Longman
Dictionary of Contemporary English, the Oxford Advanced
Learner‟s Dictionary, and the Collins Cobuild English
Language Dictionary.
How to use the book
It is not necessary to work through the units in order. If you
know what grammar points you have difficulty with, go
straight to the units that deal with them. You can use the
Index to help you find the relevant unit or units. If you are
unsure which units to study, use the Study Guide on page
280.
You can use the units in a number of ways. You
might study the explanation and examples first, do
the exercises on the opposite page, check you answers
in the key, and then look again at the explanations if you
made any misstates. If you just want to revise a grammar
point you think you already know, you could do the
exercises first and then study the explanations for any you
got wrong. You might of course simply use the book as a
reference book without doing the exercises.
A number of Additional Exercises are included for
further practice of particular areas of grammar.‖
(emphasis supplied)
25. It is clear from the above that while structuring the book, the
author had given equal importance to the practice exercises,
which form integral part of the book. Even additional exercises
are included for further practice of particular areas of grammar.
Some messages given to the teachers as well who could
usefully made use of the book for supplementing and
supporting their class room teachers.
26. As is clear from the above introductory narration, each unit
dealing with particular area of grammar is in two pages. On
the left page, that area of grammar is explained as study book.
On the opposite page exercises are provided which he is
supposed to undertake to find out whether he has understood
that particular area of grammar or not. To ascertain as to
whether he has correctly solved the exercise ―Key‖ is provided
at the end. Thus, in the scheme of things devised by the
author to teach grammar to more advanced students of English
as a self-study, he has made these exercises inseparable part
of the book. In such a scenario, it is difficult to accept the
rationale of the learned Single Judge that no creativity, skill or
judgment has gone into while devising the exercises. It would
clearly be a matter of skill and judgment to decide as to what
type of questions be put in the exercise portion to ensure that
by solving such questions, the student has understood that
particular area of grammar. Creativity is writ large in devising
these exercises coupled with great deal of skill and judgment
that is required to produce such a work. This would become
manifest when we take note of one of the units explaining a
particular area of grammar. We have chosen Unit 36 dealing
with ―Verbs with and without objects‖ at random. This consists
of two pages like any other Unit. Left page explains such
subject and on the right page, exercises are there. These two
pages read as under:
―UNIT 36 Exercises
Verbs with and without
objects
36.1 Correct this text by adding
A Study the sentence in this an appropriate object or
table: completion (a phrase beginning
with a preposition or adverb) only
subject + verb Object Other where necessary. (A, B & C)
parts Sandra is being question by a
Did you see your sister at the barrister in court.
weekend?
He described the new building. BARRISTER: Could you begin by
They arrived three telling what happened on the
hours late. evening of the 26th July.
He coughed.
SANDRA: Yes, I was walking
Some verbs (e.g. see, describe) home from work when I saw
are followed by an object. These someone who I thought was my
are called transitive verbs. friend, Jo. I went up to her and
touched on the arm. But when
Other verbs that are transitive in the woman turned round it wasn't
their most common meanings Jo at all. I just said, ―I'm sorry, I
include arrest, avoid, do, mistook you.‖
enjoy, find, force, get, give,
grab, hit, like, pull, report, BARRISTER: And could you
shock, take, tell, touch, want, describe in detail.
warn.
SANDRA: Well, to be honest, her
Some verbs (e.g. arrive, cough) face shocked. She reminded of a
are not followed by an object. witch from a children's story - a
These are called intransitive long nose and staring eyes. When
verbs. Other verbs that are I tried to walk, she stood. I
intransitive in their most common couldn't avoid. She grabbed and
meanings include appear, come, prevented from escaping. I
fall, go, happen, matter, struggled, but she pulled into a
sleep, swim, wait. car parked nearby. She forced to
give my purse and she wanted to
If a verb can't be followed by an give my ring, too. But I wasn't
object, it can't be made passive going to let her take. So I hit with
(see Unit 29) my bag and leapt. Then I just ran.
At first I could hear her following,
Verbs with and without but then she disappeared. After
objects. than I ran into the town centre
and reported to the police. They
B Some verbs can be both took a statement, and then they
transitive and intransitive. drove me and warned to lock my
Compare: doors and windows. Later that
I closed the door. and night they phoned to say that
The door closed they had arrested.
Verbs like this are often used to 36.2 Complete these sentences
talk about some kind of change. with one of these phrases + an
Other examples are break, burn, appropriate preposition. (C)
empty, increase, open, shut,
spoil. my children his calculation
my ladder the idea
Some transitive verbs can have my students
their objects left out when the
meaning is clear from the context: 1. At the beginning of term I
supply ............... a list of books
He has smoked I want them to read.
(cigarettes) since he was 2. A company wants to build a
10. huge new wildlife part outside
She plays (the Huddersgate, but local people
saxophone) beautifully. regard ............ ridiculous.
3. I tried to interest .........
Other verbs like this include washing my car, without
answer, ask, cook, dance, success.
drink, eat, fail, phone, read, 4. He based ............. Government
sing, wash, win, write. statistics.
5. I lent ........... my next door
C After some verbs we typically neighbour.
or always add a completion - a
phrase which completes the Now complete these sentences
meaning of the verb - which can with an appropriate preposition +
be an adverb or prepositional one of these phrases.
phrase. Compare:
a vaccine to prevent the
He paused for a few disease
moments. or being called English
He paused. (no London and Sydney
completion needed) my mother
The disease originated in public recognition
Britain. (not The disease
originated.) (completion 6. The location of the film
needed) alternates .......................
7. Their years of research have
Some verbs which are typically or culminated ..................
always followed by a completion 8. Although he aspired ........ he
are intransitive in their most remained relatively unknown.
common meanings: 9. She objects ............. as she
I'm sure that blue car was actually born in Scotland.
belongs to Matthew. 10. I had to care ............ when
We had to contend with she became seriously ill.
hundreds of complaints.
(not We had to contend.) 36.3 These idiomatic phrases
contain transitive verbs.
Here are some more examples However, the objects can be left
together with prepositions that out because the expressions are
commonly begin the completion: normally used in contexts in
alternate between, aspire to, which it is clear what is meant. In
care for, culminate in, object what context are they used?
to. What objects are missing? (B)
Other verbs which are typically or 1. You wash and I'll dry.
always followed by a completion 2. Are you ready to order?
are transitive in their most 3. Do you drink?
common meanings: 4. Who scored?
5. It's your turn to deal.
I always associate red 6. I'll weed and you can
wine with France. (not I wanter.‖
always associate red
wine).
She put the report on the
floor. (not She put the
report.)
Here are some more examples
together with prepositions that
commonly begin the completion:
base..on, compare...with,
interest...in, lend...to,
misstate...for, prevent...from,
regard...as, remind...of,
supply...with.
27. The exercises depict originality, as it has originated from the
author. It is nobody's case that the author has copied these
exercises from other source. It also satisfies the test of ―skill,
judgment and labour‖ as laid down in Eastern Book Company
and Ors. (supra).
28. We may also draw sustenance from the judgment of the House
of Lords in the case of Ladbroke (Football), Ltd. Vs. William
Hill (Football), Ltd. [1964] 1 All ER 465. That was a case
where the respondents were well-known bookmakers who had
done business for many years in fixed odds football betting
sending out to their clients each week during the football
season a fixed odds football coupon. The coupon was a sheet
of paper on which were printed sixteen lists of matches to be
played each week; each list was headed with an appropriate
name and offered a variety of wagers at stated odds and
contained explanatory notes. One of the lists contained the full
list of matches to be played at the end of the week this list
being determined by the Football League who owned the
copyright in it. The other lists were shorter lists of matches
selected by the respondents from the full list. Altogether the
coupon offered 148 varieties of wager at widely differing odds.
A great deal of skill, judgment, experience and work had gone
into devising the coupon for the respondents had to select from
the very great variety of possible wagers those that would
appeal to the punter while being profitable to the respondents,
and had then to arrange and describe the selected wagers in
an attractive way on the coupon. The respondents had not
altered their coupon since 1951, though the selection of
matches in the lists was necessarily changed each week. Some
of the wagers offered by the respondents were commonly
offered by other bookmakers. The appellants, who were also
well-known bookmakers, decided to enter the field of fixed
odds football betting in 1959, and in devising their coupon for
the 1960/1961 season they copied from the respondents'
coupon fifteen out of the sixteen lists arranging them in the
same order as they appeared in the respondents' coupon, in
many cases with the same headings and almost identical
varieties of wager, and with similar explanatory notes. They
did not copy the odds offered by the respondents but worked
these out for themselves and since the respondents' and the
appellants' coupons were published simultaneously each week
there was no copying of matches selected by the respondents.
The respondents claimed copyright in their coupon and alleged
infringement by the appellants. By the Copyright Act, 1956,
Section 2(1) copyright subsisted in every ―original‖ literary
work, a literary work including, by virtue of Section 48(1),
compilation. Under Section 2(5)(a) and Section 49(1),
copyright gave the exclusive right to reproduce a substantial
part of the work in any form. Though the appellants admitted
copyright in the respondents' selection of matches and
statement of odds (neither of which they had copied) they
denied copyright in the rest of coupons. It was not disputed
that, as regards a compilation (such as the coupons), the
originality requisite to render a work original of the purpose of
Section 2(1) was a matter of degree depending on the amount
of skill, judgment or labour that had been involved in making
the compilations. It was held that for the purpose of
determining whether the respondents' coupon had the
originality requisite to render it original work within Section 2(1)
of the Copyright Act, 1956, it was right to take into account the
considerable skill, judgment and labour expended by the
respondents in the selection of types of wagers, for the
production of the coupons was an object of the work so done
and that work was preparatory work which could not properly
be excluded. Moreover (per Lord Evershed) after the work of
deciding the wages had been done, there still remained the
further task, requiring considerable skill, labour and judgment,
of expressing and presenting the chosen wagers for the eye of
the customer. Accordingly, there was copyright in the
respondents' coupon.
29. Giving the quotation of Peterson, J. in University of London
Press Ltd. (supra), which is already extracted above, the
Court held that it was an original work worthy of copyright
protection. Lord Reid, in his opinion, remarked as under:
―In the present case, if it is permissible to take into account
all the skill, judgment and labour expended in producing
the respondents' coupon, there can be no doubt that it is
―original‖. But the appellants say that the coupon must be
regarded as having been produced in two stages: first, the
respondents had to decide what kind of business they
would do - what kinds of bets they would offer to their
clients - and then they had to write these out on paper.
The appellants say that it is only the skill, judgment and
labour involved in the latter stage that can be considered
and that that part of their operation involved so little skill,
judgment or labour that it cannot qualify as ―original‖. In
fact the respondents did not proceed in that way. Their
business was to devise a coupon which would appeal to the
betting public, and its form and arrangement were not
something dictated by previous decisions about the nature
of the bets to be offered. The appellants likened the
coupon to a trader's catalogue of his wares, and argued
that in considering whether a catalogue is entitled to
copyright one must disregard the trader's skill and work in
deciding what wares he will stock for sale and only
consider the skill and labour involved in the actual
preparation of the catalogue. I do not think that that is a
true analogy. Even in the case of a catalogue there may be
a question whether the work in deciding what to sell and
the work in deciding how to sell it are not so inter-
connected as to be inseparable. Copyright in a catalogue in
no way prevents honest competition - any other trader can
decide to stock and sell any or all of the catalogued articles,
and he can thereafter made a new catalogue of his own
wares. What he must not do is simply to copy the other
traders' catalogue.‖
30. On the application of legal principles on the facts of this case,
inescapable conclusion would be that there is a copyright of the
appellant in the exercises contained in the book.
31. Before we proceed towards this question, it would be pertinent
to discuss an ancillary issue thereto. The issue involves
interplay between the concepts of ―public domain‖ and ―fair
use‖.
32. The learned Single judge in his judgment has taken the view
that one of the reasons why the ad-verbatim reproduction of
the plaintiff's work in the guides published by the respondents
was falling within the ambit of fair use was that the appellant's
work was in public domain as it is a prescribed text book by the
University. The appellant has contended before us that the
term ―public domain‖ and ―fair use‖ are distinct from each
other and once a work comes within the ambit of ―public
domain‖ then there is no question of involvement of the fair
use doctrine because the term ―public domain‖ means there is
no copyright protection is available at all to the concerned
work.
33. From jurisprudential point of view, intellectual property rights
work as a two way sword. On the one hand, there is a growing
awareness that such protection is a sine-qua-non of the
motivational factor underlying the creation of an intellectual
work; however, on the other hand, granting an absolute
protection to the intellectual work can be detrimental to the
further progress of humanity. In order to balance the rights of
the author on the one hand and the society on the other hand
certain limitations have been made a part and parcel of the IPR
statutes around the globe. In the realm of copyright laws, one
of the more important limitations is the doctrine of ―fair use.‖
This doctrine of Fair dealing/Fair use is a limitation and
exception to the exclusive right granted by copyright law to the
author of a creative work and it allows limited use of
copyrighted material without acquiring permission from the
rights holders.
34. Black' Law Dictionary 7th ed. defines ―Fair Use" as ―A
reasonable and limited use of a copyrighted work without the
author's permission, such as quoting from a book in a book
review or using parts of it in a parody.‖ Thus use of a work,
without any prior permission of the author of that work, does
not amount to infringement of copyright if the said use can be
encapsulated within the ambit of the doctrine of Fair Use. There
are four non-exclusive factors that determine whether any
particular use counts as fair use or an infringement. These four
factors are:
(i) The purpose and character of the copyright use, including
whether such use is of a commercial nature or is largely
for nonprofit educational purposes;
(ii) The nature of the copyrighted work itself;
(iii) The substantiality of the portion used in relation to the
copyrighted work as a whole; and
(iv) The effect of the use upon the potential market value of
the copyrighted work. A court examines these factors in
judging the assertion of infringement by the copyright
owner on the one hand and the assertion of fair use by
the alleged infringer on the other.
35. The doctrine of fair use has developed through a substantial
number of court decisions over the years and has been codified
in section 52 of the Copyright Act, 1957 as under:
―Section 52:
(1) 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 -
.
.
.
.
.
(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
.
.
.
36. The appellant has contended before us, and rightly so, that
these two concepts, as discussed above, are distinct from each
other. There can be no dispute that the doctrine of fair use is
an exception to the copyright protection as the opening line of
section 52 uses the expression ―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‖. This
expression implies the without the fair use protection the use
shall constitute an infringement of copyright. However, on the
other hand, when we say that the work is in public domain it
means that no copyright protection is available to the
concerned work and everyone is free to use that work in
whatsoever manner he wishes to.
37. It is, thus, clear that when a work is in public domain, the
natural consequence is that it does not enjoy copy right and
question of violation thereof would not arise at all inasmuch as
anybody and everybody has right to use and/or copy the same.
On the other hand, when we talk of ―fair use‖, it would in the
context that there is someone enjoys copyright in that work,
but the user thereof comes within the domain of eventualities
provide under Section 52 of the Copyright Act. Thus, all the
cases of fair dealing are infringements, but the law examines
the same based on the principles of ―modicum of creativity‖,
access and affordability based on social, economic,
educational, industrial, etc. considerations of society.
38. What follows form the above is that the two concepts, viz.,
‗public domain' and ‗fair use' work in altogether different fields.
When the defence is taken that a particular work is in public
domain, the question for consideration would arise as to
whether the appellants enjoys copyright therein or not. On the
other hands, when plea of fair use under Section 52 of the
Copyright Act is adopted by the respondents what is expected
from the Court on the application of the provisions of Section
52 of the Act is not to examine whether the activity is
infringement is not, but to examine whether the conditions
stated in a particular clause of Section 52 of the Act invoked by
the respondents is satisfied or not.
39. However, since the respondent herein has taken umbrage
under both, viz., public domain and fair use, we would proceed
to discuss both of them independently each other albeit on the
premise that these are the pleas taken in the affirmative.
PUBLIC DOMAIN:
40. If the work of the appellant falls within the public domain, then
it would not have any copyright therein and no further
discussion is needed thereafter. For this reason, we deal with
this aspect before addressing ―fair use‖ plea taken by the
respondents.
41. We have already held, while deciding the issue No.1, that there
is an element of creativity in the work of the appellant involving
skill, judgment, endeavour and it is an original work warranting
copyright protection. Notwithstanding, the argument of the
public domain is founded on the premise that all the materials
prescribed by the university in their syllabus are by their very
nature the property of public at large i.e., it lies in the public
domain, and nobody has the right to appropriate such matter
for one's own exclusivity. Therefore, in the strict sense, the
copyright work of the appellant has come into public domain.
Since no copyright, if at all, remained with the appellant, the
question of infringements does not arise. The learned counsel
for the respondent has submitted that suit and the present
appeal both instituted by the appellant, have been instituted
based on an ordinary/general understanding of cases, which
have been successfully instituted in the past for infringement of
copyright. However, the appellants while instituting both the
proceedings have forgotten or intentionally ignored the fact
that the present case is a special case and therefore, involves a
scrutiny of special facts and circumstances and hence, the
general rules applicable to infringement of copyright cases
cannot be applied to the instant case.
42. It would be pertinent here to have a close look into this concept
as used in the copyright jurisprudence, before we proceed to
appreciate and discuss the contention of the respondents'
counsel.
43. Firstly, let's deal with the term ―public domain‖. Legally
speaking, the term "public domain" refers to ―creative
materials‖ that are not protected by intellectual property laws
such as copyright, trademark or patent laws. Black's Law
Dictionary 7th ed. defines "public domain" as ―realm of
publications, inventions, and processes that are not protected
by copyright or patent. Things in the public realm can be
appropriated by anyone without liability for infringement‖. On
the jurisprudential side, although, the issue as to what is the
nature of ―Public Domain‖ is somehow gray. There have been
intellectual debates as to whether the public domain is simply
whatever is left over after various tests of legal protection have
been applied. Is it the mere "background," the "negative" of
whatever may be protected? Or is there something about the
public domain, some compelling public policy or legal principle,
that gives it a life of its own, that would tend to attribute
positive aspects to it that would make it something of the form
instead of just the background? Whatever it may, here, for our
purpose, it would be legally safe to rely on the negative
definition. There are three common ways under which a work
can be attributed as a work in ‗public domain':
(i) No copyright protection available: copyright law does not
protect this type of work. Section 13 of the Indian
Copyright Act provides for the works in which copy right
subsists. Section 14 further provides that No person shall
be entitled to copyright or any similar right in any work,
whether published or unpublished, otherwise than under
and in accordance with the provisions of this Act or any
other law for the time being in force. When a work falls
within the ambit of section 13 no further action is
mandatorily needed to make it copyright protected.
(ii) Dedication: the owner of a work may deliberately place it
in the public domain. Section 21 of the Indian Copyright
Act provides that an author may relinquish his copyright
by giving a notice to this effect to the registrar of
copyright if he wishes so.
(iii) Expiration of copyright: the copyright has expired.
Section 22 of the Indian Copyright Act provides that the
copyright in a work shall subsist within the lifetime of the
author until sixty years from the beginning of the
calendar year next following the year in which the author
dies.
44. Wikipedia, the free encyclopedia, describes the term ―public
domain‖ in the following manner:
―The public domain is a range of abstract materials -
commonly referred to as intellectual property - which are
not owned or controlled by anyone. The term indicates that
these materials are therefore, ―public property‖, and
available for anyone to sue for any purpose. The public
domain can be defined in contrast to several forms of
intellectual property; the public domain in contrast to
copyrighted works is different from the public domain in
contrast to trademarks or patented works. Furthermore,
the laws of various countries define the scope of the public
domain differently, making it necessary to specify which
jurisdiction's public domain is being discussed.
The public domain is most often discussed in contrast to
works whose use is restricted by copyright. Under modern
law, most original works of art, literature, music, etc. are
covered by copyright from the time of their creation for a
limited period of time (which varies by country). When the
copyright expires, the work enters the public domain. It is
estimated that currently, of all the books found in the
world's libraries, only about 15% are in the public domain,
even though only 10% of all books are still in print; the
remaining 75% are books which remain unavailable
because they are still under copyright protection.
The public domain can also be defined in contrast to
trademarks. Names, logos, and other identifying marks
used in commerce can be restricted as proprietary
trademarks for a single business to sue. Trademarks can
be maintained indefinitely, but they can also lapse through
disuse, negligence, or widespread misuse, and enter the
public domain. It is possible, however, for a lapsed
trademark to become proprietary again, leaving the public
domain.
The public domain also contrasts with patents. New
inventions can be registered and granted patents
restricting others from using the inventions without
permission from the inventor. Like copyrights, patents last
for a limited period of time, after which the invention
covered by them enter the public domain and can be sued
by anyone.‖
It is clear from the above that in the context of copyright, the
term indicates that the materials which are in public domain
are ―public property‖ and available for anyone to use for any
purpose.
45. The question would be as to when the creation of a work by an
individual becomes ―public property‖? Normally, whenever a
work is created by an author, he gets copyright therein
automatically by virtue of Section 13 of the Act and certain
rights are granted to such a copyright owner as stipulated in
Section 14 of the Act. It is for this reason that in the aforesaid
narration provided by Wikipedia, it is explained that public
domain is discussed in contrast to works whose use is accepted
by the copyright. That would imply that once the works is
protected by copyright law, it cannot be treated in public
domain. Again, it is for this reason that in Wikipedia, example
of public domain is given in a case where copyright expires by
virtue of limited period, protection given under copyright law.
Then it enters ―public domain‖. Because of this reason, we
have opined above that in order to ascertain whether a work is
in public domain or not, we have to rely on the negative
definition. Three examples are given by us above when a
particular work would not enjoy copyright protection and would,
therefore, be attributed as a work in ―public domain‖. It is this
yardstick, which has to be applied in the present case.
46. Section 13 of the Indian Copyright Act provides for the works in
which copyright subsists. We again repeat that while deciding
the Issue No.1, we have arrived at a finding that in the given
work, the protection under Section 13 of the Act subsists.
Section 14 of the Act, thus, confers a right upon the appellant
by putting a restrain on word at large not to copy this work,
otherwise then under and in accordance with the provisions of
Copyright Act or any law for the time being in force. The term
of this copyright has also not expired under Section 22 of the
Act.
47. The only question, therefore, would be as to whether the
prescription of this book by Guru Nanak Dev University would
mean that the owner, i.e., the appellant has relinquished its
copyright by dedicating the same in public domain. Section 21
of the Act provides for procedure which needs to be adopted
for such a dedication. It reads as under:
―21.Right of author to relinquish copyright:- (1) The
author of a work may relinquish all or any of the rights
comprised in the copyright in the work by giving notice in
the prescribed from to the Registrar of Copyrights and
thereupon such rights shall, subject to the provisions of
sub-section (3), cease to exist from the date of the notice.
(2) On receipt of a notice under sub-section (1), the
Registrar of Copyrights shall cause it to be published in the
Official Gazette and in such other manner as he may deem
fit.
(3) The relinquishment of all or any of the rights comprised
in the copyright in a work shall not affect any rights
subsisting in favour of any person on the date of the notice
referred to in sub-section (1).‖
48. The owner of the copyright can, thus, relinquish his rights by
giving notice in the prescribed form to the Registrar of
Copyrights. Now, such notice given by the appellant manifests
its intention to relinquish its copyright. It would naturally follow
that merely because the book in question prescribed by the
University for its students would not mean that the author is
snatched of its copyright.
49. It would be useful to refer to the judgment of the United States
Court of Appeals in the case of Lawrence Golan & Ors. Vs.
Alberto R. Gonzales & Ors. 501 F.3d 1179 (2007) wherein
copyright sequences from the stage when the work is created
by an author giving him copyright to the stage when it reaches
public domain:
―Copyright Sequence
Although the specific requirements for perfecting a
copyright have changed over the years, the process has
always begun when an author generates an original
expression. The 1909 Copyright Act required an author
seeking protection to attach notice to any distributed
copies of his or her work. Moreover, the author could not
initiate an infringement action or apply for a renewal unless
be or she had formally registered the work with the
copyright office. The 1986 Act removed many of the
consequences for failure to register or attach notice, and, in
1989, the United States effectively abandoned all
formalities as a condition of compliance with the Berne
Convention. Thus, today, [HN 10] a limited copyright
attaches at the moment a work is created. When the
copyright expires at the end of the statutory period, the
work becomes part of the public domain. Until Section 514,
every statutory scheme preserved the same sequence. A
work progressed from 1) creation; 2) to copyright; 3) to the
public domain. Under Section 514, the copyright sequence
no longer necessarily ends with the public domain; indeed,
it may begin there. Thus, by copyrighting works in the
public domain, the URAA has altered the ordinary copyright
sequence.
3. An author must still include notice in
order to defend against ―innocent infringer[s].‖
GORMAN, supra,
ii. Public Domain
[HN 11] The significance of the copyright sequence,
combined with the principle that no individual may
copyright a work in the public domain, is that ordinarily
works in the public domain stay there. See Country Kids „N
City Slicks, Inc. v. Sheen, 77 F.3d 1280, 1287 (10 th Cir.
1996) (holding that a doss design could not be copyrighted
because it was characterized by ―typical paper doll features
found in the public domain‖); Lipton v. Nature Co., 71 F. 3d
464, 470 (2d Cir. 1995) (―Facts are considered to be in the
public domain and therefore not protectable under
copyright law...‖); Norma Ribbon & Trimming, Inc. v. Little,
51 F.3d 45, 48 (5th Cir. 1995) (holding that certain flowers
could not be copyrighted ―because these same flowers
already existed in the public domain‖); United States v.
Hamilton, 583, F.2d 448, 450 (9th Cir. 1987) (noting that ―a
map which represents a new combination of information
already in the public domain lacks any element worthy of
copyright protection‖); M.M. Bus Forms Corp. v. Uarco, Inc.,
472 F.2d 1137, 1140 (6th Cir. 1973) (Elementary legal
words and phrases are in the public domain and no citizen
may gain monopoly thereover to the exclusion of their use
by other citizens.‖); Amsterdam v. Triangle Publ‟ns, Inc.,
189 F.2d 104, 106, (3d Cir. 1951) (―The location of county
lines, township lines and municipal lines is information
within the public domain, and is not copyrightable.‖);
Christianson v. West Pub. Co., 149 F.2d 202, 203 (9 th Cir.
1945) (―The outline map of the United States with state
boundaries is in the public domain and is not
copyrightable.‖) (internal quotation marks omitted); Meade
v. United States, 27 Fed. Cl. 367, 372 (1992) (holding that
―defendant's) LOVE stamp‖ could not be copyrighted
because it :exist[ed] in the public domain‖); see also Toro
Co. v. R&R Prods. Co., 787 F.2d 1208, 1213 (8 th Cir. 1908)
(―If the disputed work is similar to a pre-existing protected
work or one in the public domain, the second work must
contain some variation recognizable as that of the second
author.‖)
In Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 52
(2d Cir. 1936), aff‟d, 309 U.S. 390, 392,60 S. Ct. 681, 84 L.
Ed. 825 (1940), Judge Learned Hand, luminary in the field of
copyright law, illustrated this principle when he stated that
―if by some magic a man who had never known it were to
compose a new Keats's Ode on a Grecian Urn, he would be
an ‗author', and, if he copyrighted it, others might not copy
that poem, though they might of course copy Keats.‖
Sheldon, 81 F.2d at 54. As Judge Hand observed, Keats's
poems remained in the public domain - free for anyone to
copy - even if someone copyrighted the identical language.
Section 514 contravenes this principle.‖
50. In Rupendra Kashyap Vs. Jiwan Publishing House 1996
(38) DRJ 81, a learned Single Judge of this Court, after relying
upon various judgments held that a question paper set for the
purpose of conducting examination of CBSE can form subject
matter of copyright. It was also held that as per Section 17 of
the Act, first owner of the copyright would be the author of the
said work, viz., papers setters and merely because the paper
was set for the CBSE, the CBSE does not become the owner
thereof. Similar view was expressed by Allahabad High Court in
the case of Agarwala Publishing House Vs. Board of
Higher Secondary & Intermediate Education & Ors. AIR
1967 All 91 holding that copyright of question papers vests in
paper setters unless same has been assigned to Board or
Government. To similar effect is the judgment of Patna High
Court in the case of Jagdish Prasad Gupta Vs. Parmeshwar
Prasad Singh and Ors. AIR 1966 Pat 33. In that case, the
Patna High Court stated the same principles noted in the
aforesaid judgments and explaining the manner in which such a
copyright in favour of the author can be relinquished under
Section 21 of the Act. This is what the Court observed in the
said context:
―9. Section 21(1) of the Copyright Act, 1957, provides that
the author of a work may relinquish all or any of the rights
comprised in the copyright in the work by giving notice in
the prescribed form to the Registrar of Copyrights and
thereupon such rights shall, subject to the provisions of
Sub-section (3), cease to exist from the date of the notice.
Subsection (2) fays down that on receipt of a notice under
Sub-section (1), the Registrar of Copyrights shall cause it to
be published in the official Gazette and in such other
manner as he may deem fit. It was thus open to the author
of a work, and in these cases the paper-setters of the
question papers, to relinquish their copyrights in favour of
the Board and the attention of the learned Magistrate has
not been drawn to this provision. Section 18 of the
Copyright Act, 1957, no doubt deals with an assignment of
the copyright and the assignment has to be in the manner
provided in Section 19, but apart from assignment there
could be relinquishment as provided in Section 21. The
question as to whether there was relinquishment by the
author has to be gone into and it can be preferably
enquired into at the time of trial.‖
51. Two things follow from the aforesaid discussions, viz.,
(i) The appellant has a copyright in a work in question
also for the reason that the copyright exists even in
the question paper set for the examiner, i.e., the
Board or the Government.
(ii) Once a work as prescribed from the creation to
conferring of copyright in the said author, the
period for which such copyright is protected is
provided in the statutes and it goes in the public
domain only after said period expires. In the
context of Indian Copyright Act as per the
provisions of Section 22, copyright remains for a
period of 60 years after the death of the author.]
52. Admittedly, second eventuality has not arisen so far and
therefore, copyright has not entered the ‗public domain'.
53. When this is the position in law merely because permission is
given by the appellant to the University, tacit or otherwise,
would not take his work in public domain. First of all, no act on
the part of the appellant is placed or proved or record which
would show that the appellant has relinquished its rights.
Secondly, the appellant, if at all has allowed University to use
the work as a course book for students of B.A. (English). That
may not amount to relinquishing his copyright in the said work.
It may be relevant for the purposes of ―fair use‖ and whether
this fair use defence is available to the respondents herein or
not would be seen at the appropriate stage. Certainly, it
cannot be said that because of that reason, the work has
entered in public domain.
54. In fact, the learned counsel for the respondents bolstered his
submissions of public domain based on the judgment of
Allahabad High Court in the case of Mohamed Abdul Jalil Vs.
Ram Dayal [AIR 1916 All 216]. The following discussion by
the High Court was made use of by the learned counsel for the
respondent:
―We think that when the plaintiff as a member of the Board
of Studies, laid the results of his skill and experience before
the Board, and then joined with the other members of the
Board in preparing the syllabus for the examinations to be
conducted in the Persian language in the year 1914, he
placed the results of his labours unreservedly at the
disposal of the university authorities. He may have desired
that those Authorities should either remunerate him for his
labours or take suitable measures to protect the copyright
in the selections themselves. But when the University
authorities published their syllabus they surrendered any
copy right which may or may not have existed owing to the
skill, learning, experience and labour expended on the
preparation of these lists of passages from standard
authors, unreservedly into the hands of the general public.
The avowed intention of the university Authorities was that
any enterprising firm of publishers which considered it a
remunerative speculation should bring out the passages in
question in book form. They were of opinion, that the
interest of the public, and of the general body of the
student, would best be served by allowing free competition
in this matter. We think these facts need only be set forth
in order to make it clear that the plaintiff retains no
copyright in the selections as such.‖
55. The aforesaid dicta were followed by Jammu & Kashmir High
Court in the case of Romesh Chowdhry & Ors. Vs. Ali
Mahomed Nowsheri & Ors. AIR 1965 Jammu and Kashmir
101, which reads as under:
―7. Apart from this, it seems to us that once the original
authors of the books allowed these books to be published
by the university in their syllabus and the university in its
turn published these books as part of the syllabus
prescribed for the students, the matter went into the hans
of the public and no copyright in the strict sense of the
term remained with the complainant. It was open to any
member of the public to publishe a review, or a criticism or
a guide to these books which having been published by the
university, became more or less public property. I am
fortified in my view by a decision of the Allahabad High
Court reported in AIR 1916 All 216, Mahomed Abdul Jalis v.
Ram Dayal......‖
56. No doubt, when a book becomes the part of the syllabus
prescribed for the students, it becomes the subject matter of
review or criticism. That may be a case even if a particular
book is not prescribed by the University for its students as
there can be critique, analysis, review or criticism or any
published work. Whether a guide to the said book can be
published or not and if such guide is to be published, what are
the parameters to be followed shall be discussed by us
separately. However, what we want to point out that by itself
does not bring the work in public domain when we understand
the concept of public domain appropriately in the manner
discussed by us above. Therefore, these would be of no
relevance insofar as defence of public domain is concerned and
we are of the view that the appellant's copyright work in
question was neither relinquished nor, in law, it entered the
public domain.
FIAR USE DEFENCE:
57. The learned Single Judge accepted this defence of ‗fair use' in
the following words:
―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. ‖
58. Thus, the learned Single Judge is of the view that since the
book of the appellant prescribed by the University, the matter
would fall in Section 52(1)(h) of the Act as questions and
answers given in the exercise and key in the book became
questions and answers in the examination.
59. Mr. A.S. Chandhiok, learned Senior counsel and Mr. Kirpal,
Advocate for the appellant questioned the aforesaid conclusion
by laying stress on the fact that the so-called use was not by
any teacher or pupil in the course of instruction or by students
as part of questions to be answered in a examination or by
students in answers to the questions put to them in the
examination and therefore, Section 52 (i) (h) has no
application. They were emphatic in their submission that in the
instant case, the work was copied by the respondent purely as
a commercial exploitation in mind for the purpose of its
business, which act was neither protected under Section
52(1)(h). It was simplicitor business venture, which could not
be denied by the respondent as the guides were published with
view to sell them and to earn profits. This commercial
exploitation took the matter out of the ambit of ‗fair use'
contemplated in Section 52 (1) (h) of the Act.
60. Referring to the judgment of Federal Court of Australia -
General Division in the case of De Garis and Another v.
Neville Jeffress Pidler Pty Ltd. 18 ITR 292, he submitted
that fair dealing principle would not apply as the material from
the appellant's book was used by the respondent not for the
purpose of research or study and rather it was a beaten copy
for commercial purpose.
61. We find force in the aforesaid submissions of the appellant and
hold that Section 52 (i) (h) of the Act would not apply.
62. Section 52(1)(h), which make following reading:
―Section 52. Certain acts not to be infringement of
copyright. - (1)
(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;‖
63. It is clear from the reading of the aforesaid provision that this
would not come to the aid of the respondents who have
published the guide for commercial exploitation. In view of the
law laid down in various cases, commercial exploitation will
take the matter outside the ambit of ‗fair use'. The defence of
‗fair use' as provided under Section 52(1)(h) of the Act is only
available to the teacher and pupil to reproduce the literary
work in the course of instructions or examination paper setter
to reproduce the literary work as part of the questions or to the
pupil to reproduce the literary work as answers to such
questions. The respondents are neither teachers nor students
nor a person giving or receiving instruction. The defence of
‗fair use' under Section 52(1)(h) of the Act only provided to a
teacher and pupil and not otherwise. If this defence is allowed
to a publisher, then it would result in a situation where every
publisher, without permission from the owner of copyright,
would reproduce the ad verbatim literary text from the
educational textbooks prescribed by the University into their
books and exploit the same for commercial gains and benefits
and that too without giving any royalty or payment to the right
owners towards such reproduction. This practice would
obviously discourage creativity of authors who put their skill,
labour, years of knowledge, expertise, etc. into these
educational books and encourage infringers like the
respondents to reproduce ad verbatim literary text from
original publications into their infringing books on the pretext of
‗fair use'. Obviously, therefore, Section 52(1)(h) of the Act has
no application to the facts of this case.
64. So far so good. It brings us to the other facet which arises in
the context of ‗Guides' published by the respondents.
65. Coming to that, we would like to point out that in the
penultimate para, i.e., para 17 of the learned Single Judge has
also remarked that the respondents have also compiled their
books with sufficient labour and it cannot be said that they
have merely copied the books of the appellant and are thus,
granting the same to the detriment of the appellant. This is
what is precisely stated in Para 17, which reads as under:
―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. ―
66. The aforesaid observations have emboldened the respondents
to argue that their work qualified as the original copyright and
does not infringe the work of the appellant. Dilating on this
submission, it was argued by the learned counsel for the
respondents that the use of questions and answers by the
respondents is for a different purpose. The appellant admits
that the work of the respondents consists of 1875 pages within
which they are concerned with 185 pages. The appellant's
contention that the ―price, purpose, standards of quality, etc.‖
are not the criterions to determine infringement of copyright is
false and incorrect and such statements have been made in
total ignorance of settled law on the subject. 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
students ―weak‖ in their understanding of the subject. To
appreciate this argument, we would like to elaborate and focus
attention on the nature of Guide Books, in the first instance.
ISSUE No. 3 - GUIDE BOOKS:
67. ‗Guide' as defined in Oxford English Dictionary is ―a manual or
book of instruction on a specified subject‖. Webster Dictionary
defines a guidebook as ―something that offers basic
information or instruction‖. A true nature of guide book is to
help, assist, support the students to understand any problem
given in a prescribed publication. A guide book provides
explanation, step by step process for reaching the answer, fine
points, detailed analysis of any problem, etc. The guide book is
a kind of commentary based on the original work to enable
students to give effective answers to questions set in
examinations. Such a guide book would be the original
creation even if it were regarded as part abridgment and part
commentary upon the original work. In E.M. Forster & Ors.
Vs. Parasuram [AIR 1964 331], it has been laid down that
the guide book was a kind of commentary based upon the
original work to enable students to give effective answers to
questions set in examinations. In Kelly Vs. Morris [1866 LR
1 Eg. 697], which is also referred to with approval by the
Supreme Court in Eastern Book Company (supra), it was
laid down that the compiler of a directory or guidebook,
containing information derived from sources common to all,
which must of necessity be identical in all cases if correctly
given, is not entitled to spare himself the labour and expense of
original inquiry by adopting and republishing the information
contained in previous work on the same subject. In V.
Ramaiah Vs. K. Lakshmanaiah [1989 PTC 137], the
defendant published ―Sri Vidya Excellent Guide: for the BA,
B.Com. and B.Sc. students with respect to Telugu textbooks
―Girija Kalyanam‖. The learned Single Judge of the Andhra
Pradesh High Court held as follows:
―4. The question, therefore, is whether the act of the
respondent in writing the guide is an infringement of the
copyright of Girija Kalyanam.......................
6. In this case the Court below considered in extenso
the question at issue. I have gone through the guide
consisting of three portions. The first portion gives
meaning to difficult words in the book written by the
author Ramakrishnaiah; the second portion consists of
annotations, illustrations of the meanings and the
circumstances under which the theme has been used.
The third part consists of four probable questions and
answers that may be likely to be prescribed by the
examiner from the topic Girija Kalyanam. Merely because
the author of the guide, viz., the respondent used the
language couched in the text-book his conduct does not
necessarily mean that he pirated the words. It is only a
guide and was written to help the students to understand
the meaning, significance and answers that have to be
written for the questions therein or the answers to be
given to the words used by the author.............
7. ..... I do not find any justification to hold that the
respondent-defendant pirated the language used or the
subject used ad nauseam so as to come within the
meaning ―infringement‖.............‖‖
68. In Nag Book House Vs. State of West Bengal & Ors. [AIR
1982 Cal. 245, the West Bengal Board of Secondary Education
issued guidelines for authors of textbooks on Mathematics
containing instructions regarding syllabus for Class 6 and 7
students. Textbooks were prepared as per the syllabus. The
question was as to whether the Board could stop other private
publishers' textbooks from being printed for other syllabus and
it was held that the Board cannot claim any such monopoly on
the syllabus or guidelines.
69. In West Publishing Co. Vs. Mead Data Central [1986 US
App. Lexis 29211], the United States Court of Appeals for the
8th Circle has held that an author's rights in a copyrighted work
protect, the author not only against infringing works less
expensive than the original, but against more expensive
infringement as well.
70. Textbooks/guidebooks, by their very nature, are ―derivative
works‖ and the standard to protect derivative works has been
laid down authoritatively by the Supreme Court in Eastern
Book Company (supra). The Apex Court in Paras 37, 38 & 39
has laid down the test of originality in a derivative work is
higher than the ―sweat of the brow‖ principle in the following
words:
―37. In Kelly v. Morris, (1866) LR 1 Eq. 697, School of
thought propounded is that, at least in respect of
compilations, only time and expenses are necessary
which is industrious collection.
The plaintiff was the owner and publisher of the first
directory. The defendant came out with another directory.
The plaintiff sought an injunction against the defendant to
restrain the publication of the defendant s directory on
the allegations that the defendant was guilty of
appropriating the information contained in the plaintiff s
directory and obtained the benefit of many years of
incessant labour and expense. The defendant, on the
other hand, contended that there had been no unfair or
improper use of the plaintiff s work. Information which
was given in the plaintiff s directory was entitled to be
used and adopted as long as he did not servilely copy it.
The defendant had bestowed his independent time,
labour and expense on the matter and thus had in no way
infringed the copyright of the plaintiff. Granting injunction,
the Court held that in the case of a directory when there
are certain common objects of information which must, if
described correctly, be described in the same words, a
subsequent compiler is bound to set about doing for
himself that which the first compiler has done. In case of a
road- book, he must count the milestones for himself. In
the case of a map of a newly discovered island he must
go through the whole process of triangulation just as if he
had never seen any former map, and, generally he is not
entitled to take one word of the information previously
published without independently working out the matter
for himself, so as to arrive at the same result from the
same common sources of information, and the only use
that he can legitimately make of a previous publication is
to verify his own calculations and results when obtained.
The compiler of a directory or guidebook, containing
information derived from sources common to all, which
must of necessity be identical in all cases if correctly
given, is not entitled to spare himself the labour and
expense of original inquiry by adopting and re-publishing
the information contained in previous works on the same
subject.
38. In the case of Parry v. Moring and Gollancz, Cop Cas
(1901-1904) 49, the plaintiff, after obtaining permission
from the representatives of the owner of certain letters,
updated, chronologically arranged and translated them
into modern English for their inclusion in his book. Later,
the defendant published, as one of the series, an edition
of the letters prepared by the plaintiff. The plaintiff,
therefore, brought an action against the defendant
alleging infringement of his copyright. The plaintiff
maintained his copyright in his version of the text apart
from the copyright in the text. It was held that there is
copyright in the work of editing the text of a non-
copyright work. The editor of a non-copyright work is not
entitled to take the text from the edition of a rival editor
and use it as a copy for the purpose of his own work.
39. In Gopal Das v. Jagannath Prasad and Another, AIR
1938 All. 266, the plaintiffs were the printers and
publishers of the books. The book titled Sachitra Bara
Kok Shastra was printed for the first time in 1928 and
had run into four editions since. The defendants printed
and published another book titled Asli Sachitra Kok
Shastra in 1930. The plaintiffs case was that the book
published by the defendants was a colorable imitation of
their book and an infringement of plaintiffs copyright. It
was held by the Court that the plaintiffs compiled their
book with considerable labour from various sources and
digested and arranged the matter taken by them from
other authors. The defendant instead of taking the pains
of searching into all the common sources and obtaining
his subject matter from them, obtained the subject matter
from the plaintiffs book and availed himself of the labour
of the plaintiffs and adopted their arrangement and
subject matter and, thus, such a use of plaintiffs book
could not be regarded as legitimate. It was held that a
person whose work is protected by copyright, if he has
collected the material with considerable labour, compiled
from various sources of work in itself not original, but
which he has digested and arranged, the defendant could
not be permitted to compile his work of like description,
instead of taking the pains of searching into all the
common sources and obtaining the subject-matter from
them and to adopt his arrangement with a slight degree
of colourable variation thereby saving pains and labour
which the plaintiff has employed. The act of the defendant
would be illegitimate use. The Court held that no one is
entitled to avail himself of the previous labour of another
for the purpose of conveying to the public the same
information, although he may append additional
information to that already published.‖
71. Here in this context, we have to examine whether publication
of such a guidebook amounts to ‗fair use'. Internationally, the
concept of fair use in derivative works has been considered in a
large number of cases including the Google case, Perfect 10,
Inc. Vs. Amazon.com Inc. [508 F.3d 1146]. The use by
Google of various keywords and thumbnails were held to be
non-infringing and the US Court of Appeal of the 9th Circuit held
as follows:-
‖....... A work is ―transformative‖ when the new work does
not ―merely supersede the objectives of the original
creation‖ but rather ―adds something new, with a further
purpose or different character, altering the first with new
expression, meaning, or message..................
As noted in Campbell, a ―transformative work‖ is one that
alters the original work ―with new expression, meaning, or
message............‖
We conclude that the significantly transformative natue of
Google's search engine, particularly in light of its public
benefit, outweighs Google's superseding and commercial
usages of the thumbnails in this case. In reaching this
conclusion, we note the importance of analyzing fair use
flexibly in light of new circumstances. Sony, 464 U.S. at
431-32, 104 S.Ct. 774; id. At 448 n. 31, 104 S. Ct. 774
(Section 107) endorses the purpose and general scope of
the judicial doctrine of fair use, but there is no disposition
to freeze the doctrine in the statute, especially during a
period of rapid technological change.‖ (quoting H.R. Rep.
No.94-1476, p. 65-66 (1976), U.S. Code Cong. & Admin.
News 1976, p.5680). We are also mindful of the Supreme
Court's direction that ―the more transformative the new
work, the less will be the significance of other factors, like
commercialism, that may weigh against a finding of fair
use.............‖
72. In Hubbard & Others (supra), the Court laid down certain
yardsticks to measure ―fair dealing‖ in the following manner:
―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 fair
dealing. If they are used to convey the same information
as the author, for a rival purpose, they may be unfair.
Next, you must consider the proportions. To take long
extracts and attach short comments may be unfair. But,
short extract 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........‖
73. We may also usefully refer to the following passage from the
judgment of the Supreme Court of United States in the case of
Luther R. Campbell aka Skyywalker, et al. Vs. Acuff-Rose
Music, Inc. 510 US 569 (1994):
―The first factor in a fair use enquiry is ―the purpose and
character of the use, including whether such use is of a
commercial nature or is for nonprofit educational purposes.
This factor draws on Justice Story's formulation, ―the nature
and objects of the selections made‖. Folsom v. Marsh,
supra. The enquiry here may be guided by the examples
given in the preamble to section 107, looking to whether
the use is for criticism, or comment, or news reporting, and
the like, see section 107. The central purpose of this
investigation is to see, in Justice Story's words, whether the
new work merely ―supersede[s] the objects‖ of the original
creation, Folsom v. Marsh; accord, Harper & Row, supra
(―supplanting‖ the original), or instead adds something
new, with a further purpose or diffent character, altering
the first with new expression, meaning, or message; it asks,
in other words, whether and to what extent the new work is
―transformative.‖ Leval 1111. Although such
transformative use is not absolutely necessary for a finding
of fair use, Sony, supra, the goal of copyright, to promote
science and the arts, is generally furthered by the creation
of transformative works. Such works thus lie at the heat of
the fair use doctrine's guarantee of breathing space within
the confines of copyright, see, e.g., Sony, supra, at 478-480
(BLACKMUN, J., dissenting), and the more transformative
the new work, the less will be the significance of other
factors, like commercialism, that may weigh against a
finding of fair use.‖
74. The breadth of the fair use doctrine use was put to test in
Harper & Row Vs. Nation Enterprises 471 US 539 (1985)
where the Court noted that there are four factors relevant in
determining whether the use was fair: (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.
75. The contours of the fair use standard shifted somewhat with
the decision in Campbell Vs. Accuff-Rose Music (supra).
The Supreme Court unanimously upheld the claim of the
defendants in the abovementioned case 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 to 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, no in
isolating and no undue preference can be given to anyone 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 was to see if the work merely supersedes 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'.
Transformative works, the Court held, have a greater change of
falling within the fair use defence 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 significant
measure. The second factor which evaluates the nature of
the copyrighted work, is intended to find out if the work
actually merits copyright, i.e., 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 Corp. of America (supra) that it 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 observe
fair use, at the same item there could be cases where the
copying through insubstantial could be held as infringement.
Lastly, the Court observed that in the fourth 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‖.
76. It follows from the above discussion that when a published work
is prescribed as text book, a ‗guide' can be published provided
it fulfils the test f a ‗derivative work'. At the same time, this
guide book has to be materially different from the textbook.
Guide book should not be verbatim reproduction of the text
book. If a guide book reproduces the original work to a great
measure without its contribution, it may amount to plagiarism
and may infringe the copyright law of the person in original
work. On the other hand, if guide book written in a different
format, albeit, dealing with the subject matter which is
contained in the original book, with a purpose to help, assist
and support the students, the problems given in the text book,
then it would be a work different from the original work. The
guiding principle is to see as to whether such guide book
provides explanation and/or step by step process for reaching
the answer, detailed analysis of any problem with the objective
of making the task simpler in understanding the subject
provided in the textbook. In writing this guide book, if the
contribution of aforesaid nature is made, it may be treated as a
work which is somewhat different in nature. This is the crucial
test which is to be applied and has been characterized as the
transformative character of the use by the American Courts.
Therefore, the task would be to ascertain as to whether the
purpose served by the guide book is substantially different
from the purpose served by the textbook. If the guide book is
different in character and not a mere substitute of the original
work/textbook, it would be treated as transformative. However,
the character must be substantially different and it is not
sufficient that superficial changes are made with basic
character of the textbook creeping in the guide book. In that
eventuality, it would not qualify as a work of transformative
character. If this directive work in the guidebook has assumed
different character, it would not amount to infringement of the
original work, though it would have been drawn, to certain
extent, from the original work. And, in that sense, it would
amount to ‗fair use' as described in Amazon. Com. Inc.
(supra).
77. Interestingly, counsel for both the parties were ad idem on the
aforesaid narration about the doctrine of fair use and the
judgments cited above were referred to by both the parties. Its
application on this principle on the facts of the present case
where the perception of the two sides differ and we have to
ascertain as to who is correct.
78. Keeping in view the aforesaid parameters, we may discuss the
work of the respondents in the form of guidebook produced by
them. We repeat that while looking into this aspect, we keep in
mind that the guide book, by its very nature, ―derivative work‖
and it would qualify for protection if this work meets the test
laid down by the Supreme Court in Eastern Book Company
(supra) as well as in other cases taken note of above. On that
basis, it is to be found as to whether the work of the
respondents is ―transformative‖ in nature and add something
new, with a further purpose or different character, altering the
first work of the appellants.
79. The guidebook of the respondents is not confined to Grammar
(which is the sole subject matter of the appellant's book), but
also includes English literature, novel, poem, comprehension
and letter writing as well. The respondent's guidebook is in
three volumes, which is priced at `600 as against the textbook
of the appellant with a price tag of `95/-. Though this price is
alone is not a determinative factor, what we emphasize is that
the aim of producing guidebook is altogether different. It has
dealt with various aspects. Further even in respect of the
Grammar portion, the respondents have given their own
introduction to some of the Units.
80. The respondents have specifically omitted questions which
though have been included by the appellant which evidences
an effort to select only those portions which were essential as a
study material for the students and that may be most likely to
be prescribed by the examiner from the prescribed course book
―Advanced Grammar in Use by Martin Hewings‖.
81. Moreover, taking the two works together and considering them
as a whole, there is no infringement of the copyright. The
purchasers, whether of the original work or of the guide, are
most unlikely to be illiterate, or unacquainted with English. It
would be perfectly clear to a student or any customer that they
were acquiring for themselves not the ―original work‖ i.e.
―Advanced Grammar in Use by Martin Hewings‖, but a ―guide‖
for students, which is the publication of the respondents. The
above can also be conclusively established by the fact that the
titles of the two works are completely different. The guide of
the respondents is in the form of a review of the original work,
designed to enable the University students to give effective
answers to questions that may be set in the University
Examination.
82. The pattern of use of the two books is different and while the
appellants' 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 respondents have given only the
exercises along with answers. One the exercises are given in a
text book prescribed by the University, the same could not be
changed by the respondent. Had the intent of the respondents
been to merely copy the book of the appellant, the respondents
would have also copied the theoretical portion on the left hand
page and the appendices and additional exercises also in the
appellant's book. The respondents only wanted to provide to
the students one singe book of cracking the English paper
instead of separate books for text, poetry, essay writing,
grammar, etc.
83. Each volume of the respondents' book deals, besides with
grammar, also with the texts prescribed for each year, English
prose, comprehensions, poem, paragraph writing, plays, essay
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. Before
reproducing some of the exercises, the respondents have given
their own introduction to the units. The respondents have
given the same answers, as in the key at the end of appellant's
books, at the end of each exercise itself.
84. We are of the opinion that the learned Single Judge has
correctly concluded that the pattern of use of the two books is
different and while the appellant's book is meant for a student
to educate himself and understand the nuances of the English
grammar first by reading the text on the left hand page and
then practice with exercise on the right hand page, the
respondents have given only the exercise along with answers.
Once the exercises are given in a text book prescribed by the
university, the same could not be changed by the respondent.
Had the intent of the respondents been to merely copy the
book of the appellant, the respondents would have also copied
the theoretical portion on the left hand page and the
appendices and additional exercises also in the appellants'
book. The respondents only wanted to provide to the student
one single book for cracking the English paper instead of
separate books for text, poetry, essay writing, grammar, etc.
The respondents in the grammar section of such book have to
naturally give the same exercise as prescribed by the
university and cannot be expected to give a different exercise.
85. Thus, Mr. Dubey is right in his submission that the intention of
the respondents in authoring and publishing these notes was to
merely provide a guide to the students to understand the books
prescribed by the University. Furthermore, there is no attempt
on the part of the respondents to represent to the public that
any portion of the appellant's book is a work of the respondent.
The above submission is further established by the fact that the
respondents have only incorporated that portion of the
appellants' work, which has been prescribed by the University
in their syllabus, and have left out those portions, which
constitute what can be termed as ―purple patches‖ of the
original work.
86. Such a use of an original work by a person thereby creating
another work of distinctive character would be protected as
held in the following cases:
(i) In the case of V. Ramaiah Vs. K. Lakshmaiah,
1989 PTC 137 (AP), it was observed that the
mere use of language couched in the text book
does not necessarily lead to piracy/infringement of
the work particularly when the guide was written to
help the students to understand the meaning,
significance and the answers that have to be
written for the questions and there was further an
acknowledgement to the authorship of the text
book.
(ii) Similarly, in the case of E.M. Forster & Anr. Vs.
A.N. Parasuram AIR 1954 Mad. 331, the Court
observed that the purchasers, whether of the
original work or of the guide, were most unlikely to
the illiterate or unacquainted with English and it
would be perfectly clear to them from the words
enclosed in brackets as a sub-title that they were
acquiring, not the original work but ―guide for
University students‖.
(iii) In Civil Chandran Vs. Ammini Amma 1996 (16)
PTC 670 in which the Court relying upon the cases
of Hubbard & Others Vs. Vosper and RG
Anand (1972) 2QB 84 held that when the alleged
infringing work is not a market competitor to the
subject work, and the former itself constituted a
literary work with some amount of originality, it
would constitute fair dealing.
87. Coupled with these aspects, when we keep in mind that the
book of the appellant is a prescribed textbook for the University
and on the one hand, and respondents wanted to bring out an
all-comprehensive guidebook for the help of the students in all
the courses of English and not limiting it to Grammar alone, the
purpose of this guidebook produced by the respondents would
be materially different and it would satisfy the guiding test laid
down by the Supreme Court in Eastern Book Company
(supra).
88. In the ultimate analysis, since Issue No.3 as framed in the Suit
is to be decided in favour of the defendants/respondents and
against the plaintiff/appellant, the Suit fails. Thus, we are of
the view that it was rightly dismissed by the learned Single
Judge by affirming the said decree/judgment.
89. This appeal is accordingly dismissed.
FAO (OS) No.458 of 2008
90. This appeal is preferred by the appellant/plaintiff against the
interim order dated 17.09.2008 passed by the learned Single
Judge whereby ex parte injunction granted in favour of the
appellant vide orders dated 05.12.2005 has been vacated. As
is clear from the Cause Title itself, the appellant is trading as
Oxford University Press (hereinafter referred to as ‗the Press'),
which was established in 15th Century by the University of
Oxford and has innumerable publications with worldwide
circulation. It is inter alia claimed that the Press has become
household name through a diverse publishing programme that
includes scholarly works in all academic disciplines, Bibles,
music, school and college textbooks, children's books,
materials for teaching English as a foreign language, business
books, dictionaries, reference books, journals and electronic
publishing. It is also claimed that it has developed substantial
reputation and goodwill not only in England, but also in all parts
of the world including India where it first set up its
establishment in the year 1912 in Bombay (now Mumbai). Led
by a team of highly qualified and committed editorial, market
research, design and production professions, the Educational
Division of Oxford University Press, India offers a wide range of
books/resources from Kindergarten through to grade twelve in
various disciples such as English language, Science,
Mathematics, Environmental Studies, Social Sciences, General
Knowledge, Computer Education, Value Education, Humanities,
Economics, Art and Craft. The complete range of books
prescribed by various School Education Boards such as CBSE,
ICSE and other State Boards is an added feather to the
appellant's growing list of titled. The present case concerns
one such Mathematics book prescribed by the Jammu and
Kashmir State Board of Education for Class XI. It is governed by
stringent quality parameters for which the appellant is well-
known all over the world. The Press textbooks are published
and revised after a thorough survey of the market for current
syllabus, trends and curriculum changes in various disciplines
as per the guidelines prescribed by the various examination
bodies, such as the CBSE, ICSE and various State Boards. This
is done to ensure conformation both to the requirements of the
various examining bodies and to the changing times. This is
achieved, inter alia, by tapping the modifications required in
the existing courses and gathering first-hand feedback on the
existing courses from teachers, educators and decision makers.
The books of the appellant/Press not only incorporate and
reflect the latest teaching methodologies on the basis of the
inputs of teachers, but also ensure effective classroom
application, inasmuch as it takes into account the views of both
teachers and need of the students. It may be worth mentioning
the Press brings authors and teachers together to share
theories and ideas and to give sound advice based on a real
understanding of teaching needs and helps create better
textbooks by a combined and concerted effort of all.
91. In the present case, we are concerned with two books of the
appellant titled ―Oxford Mathematics Part A‖ and ―Oxford
Mathematics Part B‖ (hereinafter referred to as ‗the subject
works'). These textbooks meant for the students of Class XI
following the course structure prescribed by the Jammu &
Kashmir State Board of School Education.
92. According to the appellant, the subject works have been
published by the appellant in and after consultations and
discussions with experts and in cooperation with the Jammu &
Kashmir State Board of Schools Education and their approval.
The appellant and the Jammu & Kashmir State Board of School
Education entered into an agreement dated 26.08.2003 for the
purpose of publication of the subject works for the students of
Jammu & Kashmir State Board of School Education. The
copyright of the subject works vests in the appellant. The
subject works are specially adapted editions of the CBSE
Mathematics XI Part A and Part B authored by Dr. A.K. Roy, of
which the copyright vests in the appellant vide agreement
dated 10.09.2003. The author of the subject works, Dr. A.K.
Roy was the Head of the Department of Mathematics at Birla
Higher Secondary School, Kolkata. He is a very well-known and
respected figure among mathematicians and mathematics
teachers in India. He has employed great efforts, research,
ingenuity, time, expression and investment in shaping and
designing the subject works so that they become effective tools
for self study; efficient and useful, for the students pursuing
advance study and understanding of Mathematics. The
scheme and order of chapters, scheme and order of exercise
and the scheme and order of problems within those exercises
along with their answers in the subject works are unique to the
appellant and are a result of years of research, classroom
teaching, concerted intellectual effort put together by authors,
publishers and teachers, hard work, practice and the standard
followed by esteemed institutions all over the world. The units
in any given chapter have been so arranged so that each unit
becomes integral and complimentary to each other. The
subject works are dynamic books which have made the
learning of mathematics by the students much more
systematic and at the same time much more fun and
pleasurable. The subject works are authoritative with
integrated syllabus and motivating topics, focused tasks
combines with real understanding of what works in the
classroom. They make for effective teaching and effective
learning. The contents of the subject works have been
compiled in order to suit the specific needs and requirements,
selection of the particular class of users, involving the
application of substantial skill, judgment, labour and
investment f time and money. The units are streamlined for
faster progress. The text of the books is upto date with global
appeals. The subject works have maximum clarity with fresh
modern designs. The subject works instill logical and
methodical thinking and develop problem-solving skills through
a set of graded solved problems. The key features of the books
are that they have been designed to enable the learner to
develop a thorough understanding of basic mathematical
principles and processes. The concepts in the book move, in
the opinion of the author from simper ones to more difficult and
complex ones, thus making a learning curve which is perfect in
the opinion of the author. It is noteworthy that in the
arrangement of the chapters, exercises and problems in the
subject works, the author has exercised his judgment and skill.
Introduction to each chapter reviews the concepts learnt
earlier. Graded solved examples develop problem-solving
techniques. Short exercise drills interspersed within a chapter
after each major topic. Miscellaneous exercises have been
provided at the end f each chapter. Even Model Test papers
have been provided at the end of the books to provide the
students a feel of the examination. Excellent layout and design
make the books visually attractive and increase readability.
The books qualify for copyright protection as original literary
works within the meaning of the Copyright Act, 1957.
93. The grievance of the appellant is that knowing the importance
and imperative need of the subject works to the students in
Jammu & Kashmir and knowing that a copy of the prescribed
book would sell well in the market, the respondents have in
complete violation of the appellant's copyright in the subject
works and in with a view to make substantial illegal and
unearned profits, conspired and published ―Teach Yourself
Mathematics (Fully Solved) Part A‖ and ―Teach Yourself
Mathematics (Fully Solved) Part B‖ (hereinafter referred to as
‗the infringing books'), the contents of which the defendants
have brazenly copied, reproduced and incorporated from the
subject works. The infringing books copies in toto the exercises
given in the subject works. The infringing works contain only
those exercises and problems which are contained in the
subject works and have been copiously copied therefrom.
Neither do they bring any new problems/exercises in the
infringing works, nor do they take the minimal effort of making
ostensible changes in the order/arrangement of those problems
and exercises. It may be relevant to mention at this stage that
the arrangement of pre-available text is a subject matter of
copyright even on the very high touchstone of the modicum of
creativity.
94. As per the appellants, they have tended to give extreme
importance to the exercises at the end of each chapter
mentioning that Mathematics is s discipline where exercises
assume much greater significance than the theory they are
based on. Once a theorem is explained, the many facets and
methods by which the same can be applied is fundamental to a
book of mathematical exercises. It may not be wrong to state
that exercises are the operative parts of a mathematics book.
On this basis, it is the case of the appellant that by copying
various exercises of the works in the appellants' book by the
respondent No.1 in its aforesaid two books (hereinafter referred
to as ‗the guide books'), they have infringed the copyright of
the appellant in the subject books.
95. Laying this foundation, the appellants served legal notice dated
05.11.2005 upon the respondents calling upon them to
immediately cease and desist from publish, reproducing,
storing in retrieval system or transmitting in any manner the
subject works or any part thereof and/or offering for sale,
advertising, and distributing the books under the title ―Teach
Yourself Mathematics (Fully Solved) Part A‖. The respondents
were also called upon to render true and correct account of
profits made by them by selling the guide book. According to
the appellant at that time, the appellant was not aware of Part
B of the book published by the respondents as well and on
coming to know of the same, another notice dated 10.12.2005
was sent to the respondents in respect of that book as well.
96. The respondents refused to accede to the demand of the
appellants and refuted the claim of the appellant vide reply
dated 28.11.2005. In these circumstances, the appellant filed
CS (OS) No.1658 of 2005 seeking decree or permanent
injunction, decree for delivery of all the infringing books lying in
stock with the respondents and decree for rendition of accounts
of profit along with costs. This Suit was accompanied by
application under Order XXXIX Rules 1 & 2 and another
application under Oder XXVI Rule 9 read with Order XXXIX Rule
9 and Section 151 of the Code of Civil Procedure, 1908 seeking
ex parte injunction as well as appointment of Local
Commissioner.
97. The learned Single Judge of this Court vide order dated
05.12.2005 ordered that the plaint be registered and summons
be issued to the defendants therein. The learned Single Judge
on a perusal of the two books (being the subject works therein
and the infringing work therein) came to the conclusion that
the questions and their answers are the exact replica of the
appellants' book and hence granted an interim injunction. The
learned Single Judge was further pleased to inter alia appoint a
Local Commissioner to visit the premises of respondents take
inventories of the infringing works and taken into custody all
such infringing works. The respondents filed their written
statements on 02.01.2006 contending, inter alia, that there was
nothing unique in the subject works and that the use of the
subject works by the respondents amounted to fair use. The
respondents also filed an application under Order XXXIX Rule 4
for vacation of the injunctions granted by the learned Single
Judge vide order dated 05.12.2005. The appellant filed its reply
to the applicant under Order XXXIX Rule 4 on 17.01.2006.
98. The plaint was, thereafter, amended to incorporate relief in
respect of Part B which according to the appellant, it came to
know on the visit of the Local Commissioner. The amendment
was allowed.
99. After completion of pleadings, arguments were heard on the
application for interim injunction on which ex parte injunction
was granted which led to passing the orders dated 17.09.2008,
vacating the interim injunction granted earlier vide orders
dated 05.12.2005. The learned Single Judge came to a prima
facie conclusion that the subject works do not conform to the
minimum degree of creativity mandated by Indian law. The
learned Single Judge was further pleased to hold that the
‗learning curve' and ‗learning content' in the scheme of
arrangements in the subject works is negated by the fact that
the syllabus has been prescribed by the Board. It has been
further observed that the step-by-step manner of solving the
problems given in the appellants' works, which is not available
in the said subject works, has been given in the respondents'
works. It was further held that the revisiting of the questions
and assisting the students to solve them amounted to review,
which is fair use of subject works.
The Tenor of the Impugned Order:
100. Perusal of the impugned order of the learned Single Judge
reveals that the main case set up by the plaintiff was that it
enjoyed copyright in the subject works, which was a result of
years of research, hard work, practice and standard followed by
the reputed institutions the world over. The contents of the
textbooks involves of substantial skill, judgment, labour and
investment of time and money. The author, Dr. Roy had
specifically assigned the copyright in favour of the appellants
and therefore, all rights in the subject works rested in the
appellant. It was further pleaded that the guide books of the
respondent had brazenly violated plaintiff‗s copyright, and
reproduced contents of the plaintiff‗s books, which had
immensely hampered not only the sale of the plaintiff‗s subject
work but has also gravely prejudiced the interest of the
students at large. Specific allegation that the
defendant/respondent 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 was pointed out that there was word
to work copying of the questions in the text books. The
questions, their arrangement and the sequencing, in the
defendants‗ guides are identical to the plaintiff‗s textbooks.
According to the appellants, these 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.
101. The defence of the respondents was that their guide books
amounted to ‗fair use'. Preparation of a guide book, which
independently contains the working of every mathematical
problem and steps for solving them, cannot be termed as
infringement of the textbook. The respondents pleaded that
the appellants' book does not have any step-by-step working
for the various sums at the end of each chapter and the
respondents have not copied the contents of each lesson or
chapter whereas the respondents' publication was guide books,
the appellants' publications are textbooks and these guide
books were independent creation by Prof. Harish Sharma who is
a well-known Mathematics teacher. It was also pleaded by the
respondent that even the appellants' books contained at least
101 questions, which were questions which were copied or
reproduced from the work of another well-known author, Mr.
R.D. Sharma and therefore, the appellant should not claim
copyright in those questions/exercises.
102. The learned Single Judge proceeded with the matter on the
premise that the outcome of the case depended upon the two
issues, which were to be gone into, viz:
(i) Whether that part of the work of the plaintiff
(questions/exercises), which the defendants had
reproduced, prima facie, merits copyright
protection?
(ii) If it does, have the defendants sufficiently made
out a ‗fair dealing' or a ‗fair use' defence at this
stage?
103. While answering the first question, the learned Single Judge
expanded the ―the Idea-Expression Dichotomy and the Doctrine
of Merger‖ and noted that there is no copyright protection on
ideas and facts and it is only the creative expression of such
ideas and facts that is rewarded by law. In the process,
expression ―originality‖ in artistic, literary, dramatic and
musical works were also explained holding that with the
passage of time, doctrine of ―sweat of the brow‖ had given way
to the ―modicum of creativity‖ and therefore, in order to have a
copyright in a work, it was necessary to show that it involves a
certain degree of creativity.
The learned Single Judge also deemed it proper to refer to the
―doctrine of merger‖, peculiar to copyright law in the following
manner:
―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.‖
104. On the application of the aforesaid doctrines, the learned Single
Judge opined that the test of creativity in the work of appellant
had not been satisfied and no copyright could be claimed
therein, as is clear from the following discussion in the
impugned order:
―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 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 requiring or arrangement,
is insubstantial.‖
105. Adverting to the issue of the ‗fair use' defence, the learned
Single Judge referred to Clauses (a) and (h) of Section 52 of the
Copyright Act and on the interpretation thereof, relying upon
few judgments of the Courts in United States with more
emphasis on the decision in the case of Luther R. Campbell
aka Skyywalker, et al. Vs. Acuff-Rose Music, Inc. (supra)
and some judgments of English Courts as well as Indian Court,
the law on ‗fair use' doctrine has been summed up by the
learned Single Judge in the following manner:
―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 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 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.‖
106. After spelling out the aforesaid tests, as laid down in various
judgments, the learned Single Judge applied the same to the
present case and held that the respondent's work could be said
to be ―transformative‖ amounting to ―review‖ under Section
52(1) (a)(ii) of the Copyright Act. We may reproduce this
discussion as well verbatim:
―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; (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.
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.‖
107. On the basis of the aforesaid discussion, the learned Single
Judge concluded that the appellants had not any prima facie
case and in any event, the publication of the respondents were
safe by ‗fair use' doctrine. As the consequence, the interim
injunction application filed by the appellants has been
dismissed and application of the respondent under Order XXXIX
Rule 9 of Code of Civil Procedure praying for vacation for the
interim order has been allowed.
108. It is, in these circumstances, the appellant had approached the
Division Bench of this Court by present intra-Court appeal.
109. As already taken note of above, the learned Single Judge has,
in the impugned order, formulated two issues and answered
the same. Arguments were addressed by the learned counsel
for the parties on those issues. For the sake of convenience,
we reproduce the same here again:
(i) Whether that part of the work of the plaintiff
(questions/exercises), which the defendants had
reproduced, prima facie, merits copyright
protection?
(ii) If it does, have the defendants sufficiently made
out a ‗fair dealing' or a ‗fair use' defence at this
stage?
ISSUE No.(i)
110. On this issue, the learned Court has prima facie held that the
test of creativity in the work of appellant had not been satisfied
and no copyright could be claimed therein. This proceeds on
the reason that 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 has a
limited medium, which enables description of such laws of
nature - in only a few ways. With respect, we are unable to
subscribe to the aforesaid view of the learned Single Judge. It
is the Mathematics which is the expression of laws and nature.
However, there can be different ways of explaining and
touching this subject. If a person writes a book on Mathematics
adopting his own innovative methods in making the subject
easily understandable, such a work would be the result of
his/her creative thinking and would become a subject matter of
copyright protection. It is nobody's case that a textbook
written on Mathematics would not qualify for copyright
protection. It would be equally a matter of creativity to devise
and think of such questions in the field of Mathematics that
may give better understanding of the subject to the
readers/students. Therefore, according to us, doctrine of
‗modicum of creativity' is present when even Mathematical
questions are framed by the author of the book to test the
knowledge and understanding of the students. In the area of
Mathematics itself, a particular topic can be in the course at
different level. For example, topic can be in CBSE course and
at the same time, it may be taught at Graduation or Post
Graduation level to the students of Mathematics. However,
whereas for CBSE students, easier aspects of the topic would
be dealt with but for graduates/post graduate, the final and
more difficult nuances of the same subject would be taught.
How this very topic is to be taught to the students at lower
level and higher level would itself be a matter of challenge and
creativity for author. Much skill, labour and dexterity would be
required to even devise questions that may be required to be
framed for students of two different levels. In such a case, it
cannot be said that since Mathematics is the law of nature, a
person who has developed different question banks for each
exercise, the same is not the result of his creativity. It is
claimed by the appellant that the author of the appellant's
work, now deceased, was a renowned Mathematics teacher and
he made the present book out of his extensive experience,
exercising his judgment and skill in addition to his labour. That
he had the requisite skill, that of a Mathematics scholar and
teacher, for the creation of the subject work and the existence
and exercise of his judgment in creating the book cannot also
be doubted. It is submitted by the appellant that the late
author exercised his judgment in the placement of chapters in
the book, the placement of topics within those chapters and
also placement of questions in each unit - all three being
inextricably linked to the author's idea of a learning curve by
which, in the estimation of the author, the student will
appreciate the contents of the syllabus better. It is also
claimed that the appellant's book does not blindly follow the
syllabus provided by the State Board. A bare perusal of the
index and its juxtaposition with the syllabus would amply
demonstrate that the author altered the scheme of chapters in
the book and made a deviation from the sequence prescribed
by the syllabus. This deviation was made in accordance with
the author's idea of a better structure for teaching. The mere
existence of a syllabus does not denude a book, which is
otherwise subject to copyright protection, of such status. The
Supreme Court in State of Madhya Pradesh Vs. Ram
Raghubir Prasad Agarwal [(1979) 4 SCC 686] had held
that syllabus is to convey sufficient information for those
concerned to know generally what courses of instruction are
broadly covered under the heading mentioned, so that they
may offer textbooks for such courses. If syllabus is only a
broad indication of the topics to be covered in a text book, then
the mere existence of a syllabus ought not to leave a book
devoid of copyright protection. It is trite law that ‗expression'
as opposed to ‗idea' is the subject matter of copyright. There
are many other authors who have compiled and created other
books, some even very successfully, on the same syllabus and
have still managed to bring about a book materially different in
terms of structure, form and substance from the appellant's
book. All such other books will have valid and subsisting
copyrights in the manner of expression adopted by them.
111. We agree with the submissions of Mr. V.P. Singh, learned Senior
Counsel for the appellant that the notion of originality
discussed in Eastern Book Company (supra) is that a
derivative work qualifies to become original when such work is
a result of skill, labour, capital and a minimum degree of
creativity. That is sufficient to acquire original creativity. Once
we examine the appellant's work applying this test, we are
convinced that the work of the appellant qualifies the test of
―minimum degree of creativity‖. ―Originality‖ with regard to a
new work that is a primary work does not emanate from
creativity. Creativity is inherent in a new work. We have
already elaborated this aspect in detail hereinabove while
dealing with RFA (OS) 21 of 2009 and there is no reason to
repeat the same.
112. Thus, we hold that, in principle, even in creating such
arithmetical exercises, the author will have copyright.
113. Coming to the facts of this case, one very crucial and
significant aspect needs to be dealt with before arriving at a
conclusion as to whether the appellant will have copyright in
the work in question. We are posing this question having
regard to a very strong and formidable plea put forth by the
learned counsel for the respondents, viz. the appellant cannot
claim copyright in the questions in the textbook as most of
these questions are ad verbatim reproduction of other
textbooks like R.D. Sharma, S. Chand Publication & Laxmi
Publication. Here, we find some merit in this submission. The
respondents have been able to show that a large number of
questions which were part of the appellant's textbook, of which
infringement was being claimed, were in fact, verbatim
reproduction from other textbooks. A list of sample questions
which are identical/verbatim to questions available in earlier
textbooks is available at Volume III, Page. 251 to 272 of the
appeal paper book. It is possible that there may be more
questions contained in the appellant's textbooks which are
verbatim reproduction from an earlier textbook. This is to be
established at the stage of trial. The factum of lifting and
commonality of questions in the appellant's textbook and in
R.D. Shama, S. Chand, Laxmi Publications, etc. is not even
disputed by the appellant.
114. The only explanation put forth by the appellants is that such
copyright questions are not many. However, at this stage,
when only an interim application under Order 39, Rule I and II
filed by the appellant is under consideration and the
respondents are able to demonstrate that many questions are
copied from other works and possibility of many more such
questions copied by the appellant from other textbooks cannot
be ruled out, it is difficult to accept the claim of the appellant
that the questions incorporated in the appellant's work is
original work of the author. What is highlighted is that the
respondents have been able to expose that the work of the
appellant is not entirely original and it has drawn on the
existing work of so many other persons raising sufficient doubt
as to the ownership of such copyrights.
ISSUE NO.2
115. We have already formulated the test for ascertaining as to
whether in a given situation publication of a guide book would
be violative of a copyright in a textbook in detail while dealing
with RFA (OS) No.21 of 2009. It is not necessary to repeat the
same. Suffice is to state that it will be permissible to publish a
guide book if it qualifies the proper description of a guide book
and becomes a derivative work of the author who has produced
such guide book.
116. That apart, in the present case, it is to be borne in mind that
the appellant's book is prescribed as textbook in Class XI in
Jammu & Kashmir. Therefore, it would be permissible for a
person to write, review, critic or guide book on the said work.
Insofar as guide book is concerned, with which we are
concerned, it is to be shown that it provides explanation, step
by step process for reaching the answer to the mathematical
problems. Thus, it would be permissible for the person writing
the guide book to take the questions from the exercises
prescribed at the end of each chapter in the appellant's book.
At the same time, it is to be shown that the person writing the
guide book has given step by step answer to the said questions
which part is not present in the appellant's work and the same
is done for facilitation of the students, particularly, weaker
sections so that they are able to get the assistance from such
guide book for easy and better understanding. When we apply
this test to the present case, we come to the conclusion that
the respondent's guide book has met this
requirements/qualifications. It is rightly pointed out by the
learned Single Judge that the appellant's text does not contain
or describe the step by step process or arriving at solutions or
answers whereas the respondent's guide book provides the
same. The appellant's text book contains the theoretical or
explanatory contents in respect of each chapter, that is not
taken/adopted by the respondent in its book. There is no copy
of these contents by the respondents. The respondent has
simply used the questions and contribution of the respondents
lies in providing step by step reasoning. This is for different
purpose. Learned Single Judge has rightly remarked that many
academics may not like these guide books and to a purist or
one who delights in intellectual pursuits, such works may be
distasteful or even offensive, nevertheless, such works/guide
books are produced and designed to cater to weak category of
students in their understanding of the subjects. The purpose
and manner of the use of the questions, which are found in
appellant's text books by the respondent is, therefore,
different. Once we qualify the work of the appellant entitled to
copyright on the ground that it involves creativity, the same
standard would apply to the respondent's work as well. There
is a creativity attached in giving step by step solution to the
questions. It is a matter of common knowledge that many
Mathematical problems can be solved in the different manner.
It is also equally a matter of common knowledge that even if
there is only one manner of solving a particular Mathematical
problem, it may be solved with fewer steps and for better and
easy understanding, other person may evolve more steps.
117. On this ground, we agree with the ultimate conclusion of the
learned Single Judge in dismissing the application under Order
XXXIX Rule 1 & 2. We, thus, dismiss this appeal.
(A.K. SIKRI)
JUDGE
(SURESH KAIT)
JUDGE
AUGUST 03, 2011
pmc
