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Remembering S. P.

Sathe
THE 11TH NATIONAL MOOT COURT COMPETITION 2016-17

BEFORE
THE BOMBAY HIGH COURT

S. 62 OF INDIAN COPYRIGHT ACT, 1957; S. 134


OF

OF

THE TRADEMARKS ACT, 1999; S. 20

CIVIL PROCEDURE CODE, 1908.

JACK SAMUELSON AND BRIGHTWALKER STUDIOS LTD.


V.

EARL GREY AND EDIFIED COMICS LTD.

COUNSEL APPEARING ON BEHALF OF THE PLAINTIFF

MEMORIAL FILED ON BEHALF OF THE PLAINTIFF


TEAM CODE: SP-31

TABLE OF CONTENTS
INDEX OF AUTHORITIES..........................................................................................................iii

STATEMENT OF JURISDICTION................................................................................................x
STATEMENT OF FACTS..............................................................................................................xi
ISSUES..........................................................................................................................................xii
SUMMARY OF ARGUMENTS..................................................................................................xiii
ARGUMENTS ADVANCED..........................................................................................................1
1. THAT

THE CHARACTER

BOROMIR

OF THE PLAINTIFF WAS MISAPPROPRIATED BY THE

DEFENDANTS IN TERMS OF COPYRIGHT .........................................................................................1

2. THAT

THE MORAL RIGHTS , RIGHT TO INTEGRITY AND RIGHT TO PATERNITY OF THE

PLAINTIFF ARE INFRINGED ..............................................................................................................5

3. THAT THE WORK OF THE DEFENDANTS WAS NOT


4. THAT THERE IS MISAPPROPRIATION
5. THAT THERE IS UNFAIR

AN INDEPENDENT CREATION ......................7

OF PLAINTIFF S CHARACTER ..........................................11

COMPETITION CAUSED BY DEFENDANT S ACTION ...........................17

PRAYER........................................................................................................................................20

INDEX OF AUTHORITIES
Cases
Abbott Healthcare Private Limited v Raj Kumar Prasad and Ors....................................................12
Amar Nath Singh v Union of India......................................................................................................6
Amar Soap Factory v Public Gram Udyog Samiti.............................................................................11
Amercian Express Co v Vibra Approved Laboratories Corp.............................................................13
Anderson v Stallone.............................................................................................................................2
Apple Computer v Apple Leasing & Industries.................................................................................11
Arun Chadha v Oca Productions Ltd..................................................................................................5
Ashdown v Telegraph Group Ltd.........................................................................................................4
Atlas Cycle Industries Ltd v Hind Cycle Limited...............................................................................13
Autoskill Inc v National Educ Support Sys Inc....................................................................................8
Bale & Church v Sutton Parsons.......................................................................................................15
Bawa Masala Co v Gulzari Lal Lalpat Rai.......................................................................................13
Bridgeman Art Library v Corel Corpn................................................................................................9
Burrow-Giles Lithographic Co v Sarony.............................................................................................3
Cadbury Schweppes Ply Ltd v Pub Squash Co Ply...........................................................................13
Century Traders v Roshan Lal Duggar & Co....................................................................................11
Cherian P Joseph v K Prabhakaran Nair............................................................................................9
Columbia Broadcasting Sys Inc v De Costa........................................................................................9
Conan Props Inc v Conans Pizza Inc................................................................................................13
Consolidated Food Corp v Brandon & Co........................................................................................11
Constantin Film Produktion GmbH v Karl May...............................................................................19
Constantin Film Produktion GmbH v Karl May Verwaltungs...........................................................19
Coolways India v Princo Air Conditioning and Refrigeration..........................................................11
Corn Products Refining Co v Shangrila Food Products Ltd.............................................................13
Crash Dummies v Mattel Inc.............................................................................................................18
Daddys Junky Music Stores v Big Daddys Family Music................................................................13
Daily Calendar Supplying Bureau v United Concern.........................................................................3
3

De Cordova v Vick.............................................................................................................................15
Designers Guild Ltd v Russell Williams..............................................................................................2
Detective Comics Inc v Bruns Publications...................................................................................2, 10
DM Entertainment Pvt Ltd v Baby Gift House & Ors.......................................................................17
Draper v Trist....................................................................................................................................14
Dunlop v Dunlop Lubricant...............................................................................................................15
Durham Industries Inc v Tomy Corpn.................................................................................................9
Edgar Rice Borroughs Inc v Manns Theatres....................................................................................19
Edge & Sons Ltd v Gallon & Son......................................................................................................14
Eli Lilly v Chelsea Drug....................................................................................................................15
Entertainment Network India Ltd v Super Cassettes Industries Ltd....................................................5
F Hoffmann-La Roche & Co Ltd v Geoffrey Manners & Co.............................................................14
Fateh Singh Mehta v OP Singhal........................................................................................................1
Fiest Publications Inc v Rural Telephone Service Co Ltd...................................................................9
Fisher v Star Co.............................................................................................................................2, 18
Folsom v Marsh...................................................................................................................................4
Football Assn Premier League Ltd v British Sky Broadcasting Ltd....................................................6
Gaiman et al v McFarlane et al...........................................................................................................6
Godrej Soaps Pvt Ltd v Dora Cosmetics Co........................................................................................1
Gopal Das v Jaganath Prasad.............................................................................................................9
Harper & Row v Nation Enterprises...............................................................................................5, 9
Harrods v Harrodian.........................................................................................................................15
Henderson v Radio Corp...................................................................................................................14
Hindustan Pencils Pvt Ltd v India Stationery Products.....................................................................17
Hodgkinson and Corby Ltd v Wards Mobility Services.....................................................................16
Hollinrake v Truswell..........................................................................................................................2
Honda Motors Co Ltd v Charanjit Singh..........................................................................................15
Indian Shaving Products Ltd v Gift Pack..........................................................................................12
Interlego AG v Tyco Industries Inc......................................................................................................8

International News Service v Associated Press...................................................................................1


J Irizarry Y Puente v President and Fellows of Harvard College.......................................................2
Jagan Nath Prem Nath v Bhartiya Dhoop Karylaya.........................................................................12
James Chadwick & Bros v The National Sewing Thread Co............................................................13
JB Oxford & Co v First Tennessee Bank Nat Assn..............................................................................2
Joanne Kathleen Rowling v Ultgeverji Byblos....................................................................................7
John Richardson Computers Ltd. v Flanders......................................................................................3
King Features Syndicate Inc v OM Kleeman Ltd..............................................................................19
King Features Syndicate v Fleischer...................................................................................................8
Kisan Industries v Punjab Food Corporation and Anr.....................................................................12
LA Printex Industries Inc v Aeropostale Inc........................................................................................8
Lego v Lego M Lemelstich.................................................................................................................14
Lone Ranger Inc v Cox......................................................................................................................14
Lone Ranger Inc v Currie....................................................................................................................2
Los Angeles Times v Free Republic United States District Court.......................................................4
LRC International Ltd v Lilla Edets Sales.........................................................................................18
Mahendra &Mahendra Paper Mills Ltd v Mahindra & Mahindra Ltd............................................12
McDonalds Hamburgers Ltd v Burger King.....................................................................................14
Michael Mitchell v British Broadcasting Corporation........................................................................3
Mirage Studios & Ors v Counter-Feat Clothing Company...............................................................16
Munday v Carey.................................................................................................................................13
Murray v Bogue.................................................................................................................................18
Music Broadcast Ltd v Indian Performing Right Society Ltd..............................................................6
National Chemicals and Colour Co v Reckitt and Colman of India Ltd...........................................13
National Hockey League v Pepsi Cola Canada Ltd..........................................................................17
National picture Theatres v Foundation Film Corporation..............................................................17
Neutrogena Corpn Golden Ltd..........................................................................................................14
Nichols v Universal Pictures Corpn....................................................................................................9
Pam Pharmaceuticals v Richardson Vicks-Inc..................................................................................12

Parle Products (P) Ltd v JP & Co Mysore........................................................................................11


Patten v Superior Talking Pictures....................................................................................................19
Patten v Superior Talking Pictures Inc................................................................................................2
Phonographic Performance Ltd v Hotel Gold Regency and Ors........................................................6
PM Diesels v SM Diesels...................................................................................................................13
Poloroid Southern Pine Lumber Co v Ward......................................................................................18
Procea v Evans..................................................................................................................................14
R Radha Krishna v AR Murugados......................................................................................................3
Raja Pocket Books v Radha Pocket Books..........................................................................................3
Ramesh Sippy v Shaam Ranjeet Uttam Singh......................................................................................6
Re Elvis Presly Trade Mark...............................................................................................................18
Re Pomril Ltds Application...............................................................................................................14
Reckitt & Colman Products Ltd v Borden Inc...................................................................................10
Reckitt and Colman Products Ltd v Borden Inc................................................................................10
RG Anand v Delux Films.....................................................................................................................1
Rich Products Corpn v Indo Nippon Food Ltd..................................................................................13
Ruston & Hornsby Ltd v Zamindara Engineering.............................................................................13
S Syed Mohideen v P Sulochana Bai.................................................................................................11
Samatha v State of Andhra Pradesh..................................................................................................11
Shaw Bros (Hong King) Ltd v Golden harvest (HK) Ltd...................................................................19
Shaw Brothers (Hong Kong) Ltd v Golden Harvest..........................................................................16
Sid & Martykroft Television Productions Inc v Mcdonalds Corpn......................................................3
Smith v Jackson....................................................................................................................................9
Smt Mannu Bhandari v Kala Vikash Pictures Pvt Ltd and Anr...........................................................6
Sony Corp of America v Universal City Studios Inc..........................................................................18
Spalding v Gamage............................................................................................................................10
Stringfellow v McCain Foods (GB) Ltd.............................................................................................14
Surge Licensing v Pearson.................................................................................................................16
Sutherland v V....................................................................................................................................12

Time Warner Entertainment Co v AK Das.........................................................................................12


Tokajon Ltd v Davidson & Co...........................................................................................................13
Uniply Industries Ltd v Unicorn Plywood Pvt Ltd.............................................................................11
United Artists v Ford Motor Co...........................................................................................................9
United States v Steffens........................................................................................................................3
Universal Picture Co v Harold LLyod Corporation............................................................................6
University of London Press Ltd v University Tutorial Press Ltd.........................................................9
Ushodaya Enterprises Ltd v TV Venugopal.......................................................................................11
V Govindan v EM Gopalkrishna Kone................................................................................................9
Van Zeller v Mason Cattley................................................................................................................15
Victory Transport Co Pvt Ltd Ghaziabad v District Judge Ghaziabad.............................................11
Walt Disney Prods v Air Pirates..........................................................................................................2
Wander Ltd v Antox India..................................................................................................................17
Warner Bros Inc v American Broadcasting Cos..................................................................................2
Warner Bros Inc v Gay Toys Inc........................................................................................................13
Warner Bros Pictures Inc v Columbia Broadcasting Sys Inc..............................................................9
Warner Brothers v Columbia Broadcasting Systems.........................................................................10
Weatherby & Sons v International Horse Agency and Exchange Ltd.................................................7
Whirlpool Corporation v NR Dongre................................................................................................11
Williams v Crichton.............................................................................................................................8
World Wrestling Entertainment Inc v Savio Fernandes & Ors..........................................................14
Yves Fostier v Disney Enterprises Inc...............................................................................................19
Zee Telefilms Ltd v Sundial Communications Ltd...............................................................................9
Article
Copyright Law and Television..........................................................................................................7
Fan Fiction........................................................................................................................................8
Limitations on Exclusive Rights: Fair Use.......................................................................................4
Sherlock Holmes.............................................................................................................................19
WIPO Broadcast Treaty and Webcasting......................................................................................6, 7

Andrea D Fessler, The Next Frontier: Film Distribution Over the Internet......................................7
Divyakant Lahoti, Copyright and Trade Mark Protection in the Title of a Movie and Characters.17
Dr Vandana Mahalwar, A Quest for Home of Fictional Characters: A Validation for Change in
Copyright Protection......................................................................................................................1
Ivan Hoffman, The Protection of Fictional Characters.....................................................................8
Karina ORourke, Integrity on the Web............................................................................................5
Leon Kellman, The Legal Protection of Fictional Characters..........................................................3
Leslie A Kurtz, Independent Legal Lives of Fictional Characters....................................................8
Leval Pierre N, Toward a Fair Use Standard....................................................................................5
Percy Stuart......................................................................................................................................19
Sanjay Pandey, Neighbouring Rights Protection in India.................................................................7
Yankwich, Originality in the Law of Intellectual Property................................................................3
Statutes
Copyright Act 1957..............................................................................................................................6
Trade Marks Act 1999.......................................................................................................................15
Books
V Nelson, The Law of Entertainment and Broadcasting...................................................................12

STATEMENT OF JURISDICTION

The Plaintiffs humbly submit this memorandum before the Honourable Bombay High Court,
invoking section 62 of Copyrights Act 1957, section 134 of Trademarks Act, 1999 and section 20
of Code of Civil Procedure, 1908. The expression District Court has by virtue of s. 2(e) of Act
43 of 1958 the meaning assigned to that expression in the Code of Civil Procedure 1908 s.2(4) of
the Code defines a district as meaning the local limits if jurisdiction if a principal Civil Courtcalled the District Court- and includes the local limits of the ordinary original civil jurisdiction of
a high court.

This memorandum sets forth the facts, contentions and arguments for the plaintiffs in the
given case.

STATEMENT OF FACTS
Samuelsons literary masterpiece comprised an entire fantasy land of kings, dragons and
addictive political drama and quest for ultimate power. Samuelson decided to publish the Ballad
of Malice and Power in a series of seven books. The first book was released in 1994.
Brightwalker Studios Ltd. (BSL), a US based network and production company, successfully
closed a deal with Jack Samuelson in 2005 and acquired an exclusive license to adapt the Ballad
of Malice and Power into television show called Valar Dohaeris: The Beginning. BSL
released the first of the seven seasons of the show in 2009. In India it was viewed through a paid
online portal named ZoomIn.
Ms. Earl Grey intrigued by Boromir Bohemia one of the characters. He has never been alive in
the books or the series. But other characters make references to him and his feats of the past time
and again. She defined him as the protagonist in her version of the conquests Boromir had in the
land of Vengursa. She then employed her own imagination to create a plotline, new characters
and a new world altogether all in intricate detail. She calls her version of Boromirs conquests as
The Bohemian Rhapsody. She runs a blog called The Pickwick Papers. Her blog had highly
frequent viewership owing to which she raked in decent amount of revenue from advertisers.
Edified Comics Ltd. (ECL) approached Ms. Grey and secured an all-encompassing IP
assignment in The Bohemian Rhapsody in exchange for a hefty sum of royalty. Before launching
the comic book in 2016, ECL monetize the prevailing popularity of Boromir Bohemia from
Greys comics which were released in Feb 2015. BSL released the last episode of the Show in
2015. Series ended in February 2015, BSL produced and developed a spin-off series (a prelude to
the show) called Boromir the Conqueror based on the life and conquests of Boromir Bohemia.
BSL also commenced marketing and released a teaser-trailer in June 2015. The show was
globally released on 9th February 2016.
ECL released The Bohemian Rhapsody (the Comic) in the ongoing and hugely popular
ComiCraze event in Mumbai on 16th August 2016.
Highly aggrieved, Samuelson and BSL initiated appropriate legal proceedings against Earl Grey
and ECL before the Bombay High Court for misappropriating their character Boromir Bohemia.

10

ISSUES

1. THAT THE

CHARACTER

BOROMIR

OF THE PLAINTIFF WAS MISAPPROPRIATED BY

THE DEFENDANTS IN TERMS OF COPYRIGHT.

2. THAT

THE MORAL RIGHTS , RIGHT TO INTEGRITY AND RIGHT TO PATERNITY OF

THE PLAINTIFF ARE INFRINGED .

3. THAT THE WORK OF THE DEFENDANTS WAS NOT AN INDEPENDENT


4. THAT

CREATION .

THERE IS MISAPPROPRIATION OF PLAINTIFF S CHARACTER IN TERMS OF

REGISTERING IT AS TRADEMARK .

5. THAT THERE

IS UNFAIR COMPETITION CAUSED BY DEFENDANT S ACTION .

11

SUMMARY OF ARGUMENTS
1. THAT THE

CHARACTER

BOROMIR

OF THE PLAINTIFF WAS MISAPPROPRIATED BY

THE DEFENDANTS IN TERMS OF COPYRIGHT.

Misappropriation is a developed notion that an entrepreneurs investment of effort and money in


the production of a marketable value ought to be protected against exploitation by a competitor.
The aim of copyright protection is to provide incentives to authors to create works of art they
might not create if they feared misappropriation of those works for profits by others. The
misappropriation doctrine applies to situations in which the defendant is trying to benefit from
plaintiff's creation as his own and trading on the reputation or goodwill of the originator of the
creation instead is attempting to profit from the originality or goodwill of itself. If there is
copyright in a literary work, and some other person produces or reproduces the work or any
substantial part thereof in any material, he is committing an infringement of copyright.
2. THAT

THE MORAL RIGHTS , RIGHT TO INTEGRITY AND RIGHT TO PATERNITY OF

THE PLAINTIFF ARE INFRINGED .

The publisher or assignee of copyright can no doubt bring an action but this section provides that
the author can approach the court for protecting the plaintiff from serious injury even in cases
where there is assignment of copyright. There are four moral rights based on the Berne
Convention: Paternity right, Integrity right, Right to object to false attribution, right to privacy.
Even if the author gives up his economic rights in his work the ownership of moral rights still
remain with him and is protectable under any distortion or mutilation and if distorted then
infringement of right takes place. Moral rights of an author are the soul of his works.

3. THAT THE WORK OF THE DEFENDANTS WAS NOT AN INDEPENDENT

CREATION .

There should be proof of independent creation of the allegedly infringing work. The legality of
fanfiction falls under copyright law and in the U.S. is classified as a derivative work which is
defined in copyright law as an expressive creation that includes major copyright-protected
elements of an original, previously created first work and is a second, separate work independent
in form from the first, on the condition that they do not breach fair use. An author is entitled to
the indirect as well as the direct fruits of his labor. Since the prelude is a derivative work, only
the author (or whoever is the proprietor of the rights in and to the text including the character)
retains the right to make further use of a particular character part of the text in such derivative
12

works. Copyright Law allows the authors to shape the future of their creations, prevent
exploitations and reap financial profits. Authors possess the exclusive right to copy or display
their works, and to create what the law terms derivative works.

4. THAT

THERE IS MISAPPROPRIATION OF PLAINTIFF S CHARACTER IN TERMS OF

REGISTERING IT AS TRADEMARK .

The priority in adoption and use of trademark is superior to the priority of registration. In a
passing off action registration of the trade mark is immaterial. If the areas of activities and the
nature of goods dealt with are identical and so are the trademarks prior user is preferred. For
inherently distinctive marks ownership is governed by the priority of use of such marks. The
prior user is considered to be relevant because during such a period consumers or purchasers
must have found that quality of a particular product associated with a particular brand name and
using a similar trademark by two different persons would definitely cause confusion and thus
sale by the later user of trademark would tantamount to passing off.

5. THAT THERE

IS UNFAIR COMPETITION CAUSED BY DEFENDANT S ACTION .

Unfair competition is a trespass, and no trespasser can justify by setting up the right of one to
whom he is legal stranger. A character in a film may be so unique and distinctive becomes so
associated with the author that the use of that characters name by another author causes
deception. In the same way, where the title of a play is associated by the public with a certain
authors work, indicating his work and nothing else, the courts will not permit another to reap the
benefits of the first users goodwill by using the title made famous by the first user.

13

ARGUMENTS ADVANCED
1. THAT THE

CHARACTER

BOROMIR

OF THE PLAINTIFF WAS MISAPPROPRIATED BY THE

DEFENDANTS IN TERMS OF COPYRIGHT .

Misappropriation is a developed notion that an entrepreneurs investment of effort and money in


the production of a marketable value ought to be protected against exploitation by a competitor.1
The aim of copyright protection is to provide incentives to authors to create works of art they
might not create if they feared misappropriation of those works for profits by others.2
The misappropriation doctrine applies to situations in which the defendant is trying to benefit
from plaintiff's creation as his own and trading on the reputation or goodwill of the originator of
the creation instead is attempting to profit from the originality or goodwill of itself. If there is
copyright in a literary work, and some other person produces or reproduces the work or any
substantial part thereof in any material, he is committing an infringement of copyright. 3 Some
resemblances with the original is sufficient to indicate that it is a copy and is confined to the
form, manner and arrangement and expression of the idea by the author of the copyrighted
work.4
When there is substantial similarity and the other party has no evidence to rebut the same in his
favour then there is infringement of copyright. 5The legality of a given work of fan fiction will
depend principally on three legal doctrines: (1) copyright ability of the underlying source work;
(2) the derivative work right; and (3) fair use.
The words which create the character also create an image in the mind of the reader, an image
which may be more vivid than life.6 If Author II were to borrow from Author I not simply the
name, but many other details from the text including verbatim descriptions of thecharacter, or
1 International News Service v Associated Press248 US 215 (1918).
2 Dr Vandana Mahalwar, A Quest for Home of Fictional Characters: A Validation for Change in
Copyright Protection [2014] II JCLC 147.
3Fateh Singh Mehta v OP Singhal AIR 1990 Raj 8.
4 RG Anand v Delux Films AIR 1978 SC 1613.
5Godrej Soaps Pvt Ltd v Dora Cosmetics Co2001 PTC 407 (Del).
1

many textual details by itself, infringing on an authors that embed the character, Author II would
be infringing on the copyright of Author I. 7In Lone Ranger, Inc. v. Currie, 8 defendant enjoined
from using the name of the Lone Ranger and from portraying his garb or characteristics; Patten
v. Superior Talking Pictures, Inc.,9 defendant enjoined from releasing motion pictures as they
used the plaintiffs main character; Fisher v. Star Co10author of cartoon characters enjoined the
defendant from using the title of the cartoon and from selling cartoons done in imitation of his
cartoons.
In Warner Bros., Inc. v. American Broadcasting Co.11, the US court noted that in determining
whether a character in a second work infringes the owners character, courts have generally
considered the totality of the characters attributes and traits. The court found that the infringing
work appropriated the pictorial and literary details embodied in the copyrights protecting
plaintiffs work.12 The similarity in the graphic depiction of a character alone, without the plot
elements, may be sufficient for copyright infringement. The defense of fair use by the defendants
was dismissed and ruling was passed in favor of the plaintiff.13

6 Dr Vandana Mahalwar, A Quest for Home of Fictional Characters: A Validation for Change in
Copyright Protection [2014] II JCLC 147.
7 Anderson v Stallone11 USPQ 2d 1161 WL 206, 431.
8 Lone Ranger Inc v Currie 79 FSupp 190 (MD Pa 1948).
9 Patten v Superior Talking Pictures Inc8 FSupp 196 (SDNY 1934).
10 Fisher v Star Co 231 NY 414 (1921).
11Warner Bros Inc v American Broadcasting Cos 720 F2d 231 (2nd Cir 1983).
12 Detective Comics Inc v Bruns Publications 28 FSupp 399 (SDNY 1939).
13 Walt Disney Prods v Air Pirates581 F2d 751 (9thCir 1978).
2

1.1. That the character of Boromir was protected under copyright: Law does not recognize
property rights in ideas but only in expression of the same in a particular manner adopted by the
author14 to the extent to which they form a substantial part of the work15 and if theirexpression is
not copied the copyright is not infringed.16 Emphasis should be placed on the attributes and traits
create a sufficiently developed character17 which are distinctively possessed by Samuelsons
character. Kellman States a fictional character to be considered of one or more of three
elements: 1) It can be an idea- a general concept (like in this case); 2) It can be the expression
or detailed Development of an idea; 3) It can be a name.18
To qualify for copyright protection, a work must be original 19 to the author.20 Thus it is essential
to determine where characters stand on the throritcal continuum by which expression is
ultimately connected to idea.21 The practical significance of such determinations becomes clear
when a fictional character is removed from its original setting and carried forward in new
vehicles. To justify the charge that a new character is not original but an infringement the
incidents and situations through which that character expresses itself must also be taken into
consideration.22

14 J Irizarry Y Puente v President and Fellows of Harvard College 248 F2d 799 (1stCir 1957).
15 Designers Guild Ltd v Russell Williams Ltd 2001 FSR 11.
16 Hollinrake v Truswell (1894) 3 Ch 420 (CA).
17JB Oxford & Co v First Tennessee Bank Nat Assn427 FSupp 2d 800 (2006).
18 Leon Kellman, The Legal Protection of Fictional Characters [1958] 25 BLR 3.
19United States v Steffens 100 US 82 (1879).
20Burrow-Giles Lithographic Co v SaronyIII US 53 (1884).
21Michael Mitchell v British Broadcasting Corporation(2011) EWPCC 42.
22 Yankwich, Originality in the Law of Intellectual Property [1952] 11 FRD 457, 446.
3

To assess whether a character infringes another partys concept, one will invariably have dissect
and compare the images of characters that fall under the same concept. This does not mean that
in particular cases a title may not be so extensive a scale and of so important a character as to be
a proper subject of protection against being copied.23
What is essential is to see whether there is a reproduction of substantial part of the picture. 24 The
similarities should be considered individually and then it should be analyzed whether a
substantial part was copied which is decided qualitatively and not quantitatively.
Originality and idea vs expression has to be taken into account. 25 This includes two tests intrinsic
and extrinsic tests which depend on audience and articulable similarities between plot, themes,
dialogue, mood, setting, characters and events.
There should be an access in case of infringement and the test depends on factual dissection and
expert testimony and depends on subject matter and settings involved. 26 Anyone imitating the
character and borrowing the theme of the plaintiffs series would infringe the plaintiffs
copyright and damage to its goodwill, business and reputation.27

1.2. That the production of ECL and work of fanfiction did not fall under the category of fair
use: Fair use is a US legal doctrine28that permits limited use of copyrighted material without
acquiring permission from the rights holders and is similar to the fair dealing doctrines. It
provides for the legal incorporation of copyrighted material in another author's work under a
23R Radha Krishna v AR Murugados 013-5 LW 429.
24Daily Calendar Supplying Bureau v United Concern AIR 1967 Mad 381.
25John Richardson Computers Ltd v Flanders 1993 FSR 497.
26Sid & Marty Kroft Television Productions Inc v McdonaldCorpn 562 F2d 1157.
27Raja Pocket Books v Radha Pocket Books1997 40 DRJ 791.
28Folsom v Marsh9 FCas 342 No 4901 (CCD Mass 1841).
4

four-factor balancing test which include the purpose and character of the use, including whether
such use is of a commercial nature or is for nonprofit purposes; the nature of the copyrighted
work; the amount and substantiality of the portion used in relation to the copyrighted work as a
whole; and the effect of the use upon the potential market for or value of the copyrighted work. 29
These factors are derived from the opinion of Joseph Story in Folsom v. Marsh 30in which the
court rejected the defendant's fair use defense because the work was done to supersede the use of
the original work, and substitute the review for it, such a use will be deemed in law a piracy.
In L.A. Times v. Free Republic31, the court found that even noncommercial use of LA
Times content by the Free Republic The defense of fair dealing depends on three factors: I)
whether the alleged fair dealing is in commercial competition with the owners exploitation of
work/instance of the owner of the copyright II) whether the work/performance has already been
published or otherwise exposed to the public; and III) the amount and importance of the work,
copyright of which has been taken.32 The courts are entitled to consider other factors33 in addition
to the four statutory factors.34
The statutory fair use provision was amended in response to these concerns by adding a final
sentence: "The fact that a work is unpublished shall not itself bar a finding of fair use if such
finding is made upon consideration of all the above factors." It is not beyond the realms of
possibility that some work done by the fan might be regarded as the authors own; like J.K.
Rowling herself has produced related works to the Harry Potter series, such as Quiddich

29 Limitations on Exclusive Rights: Fair Use [2008]CULS


<https://www.law.cornell.edu/uscode/text/17/107> accessed 27 July 2016.
30Folsom v Marsh 9 FCas 342 No 4901 (CCD Mass 1841).
31Los Angeles Times v Free Republic United States District Court US Dist Lexis 5669 (2000).
32Ashdown v Telegraph Group Ltd (2001) 3 WLR 1368.
33Leval Pierre N, Toward a Fair Use Standard [1990] HLR 103, 110-136.
34Leval Pierre N, Toward a Fair Use Standard [1990] HLR 103, 136.
5

Through the Ages and The Tales of Beedle the Bard, so it is feasible that other works may be
associated with her and therefore potentially harmful to her reputation.35

1.2.1. That the work of the defendants was of commercial nature: In determining whether a
particular use constitutes fair use, "the purpose and character of the use, including whether such
use is of a commercial natureis one of the most important factors. 36 A fan fiction is said to be
transformative and indirectly fair use is it is non-commercial in nature, appropriate a small
amount of the original work and do not snatch the market from the original work.Fan writers
who argue that their work is legal through the fair use doctrine have to prove that they do not
deprive the owner of the source material of income; work as free advertisement and promotion of
the original source material; are usually non-profit; do not copy, or attempt to substitute for, the
original work. The fourth factor measures the effect that the allegedly infringing use has had on
the copyright owner's ability to exploit his or her original work. It is to be found out whether the
work of the defendants harms the market of the owner.

2. THAT

THE MORAL RIGHTS , RIGHT TO INTEGRITY AND RIGHT TO PATERNITY OF THE

PLAINTIFF ARE INFRINGED .

The publisher or assignee of copyright can no doubt bring an action but this section provides that
the author can approach the court for protecting the plaintiff from serious injury even in cases
where there is assignment of copyright. 37 There are four moral rights based on the Berne
Convention: Paternity right, Integrity right, Right to object to false attribution, right to privacy.
Even if the author gives up his economic rights in his work the ownership of moral rights still
remain with him and is protectable under any distortion or mutilation and if distorted then
35 Karina O Rourke, Integrity on the Web [2012] EIPR 815.
36Harper & Row v Nation Enterprises471 US 539 (1985).
37Arun Chadha v Oca Productions Ltd(2012) 193 DLT 135.
6

infringement of right takes place.38 Moral rights of an author are the soul of his works. The words
separate copyright in Section 13(4) of the Act refers to the copyright in the works other than as
part of the film and that they subsist39 and canbe exercised by the owners thereof.40 The primary
moral rights are the right of attribution and the right of integrity (i.e. to object to derogatory
treatment of a work). These rights are independent of copyrights and thus can be executed even
after the assignment of copyright.41

2.1. That the broadcaster and webcaster rights of the plaintiff were infringed under Section 37
of the Copyright Act: Owner and exclusive licensee are entitled to civil remedies for
infringement of copyright.42 The Rome Convention for the Protection of Performers, Producers
of Phonograms and Broadcasting Organizations, which dates from 1961 and extends protection
to performers, record producers and broadcasters.43 The entire picture need not be copied but a
mere copy if the major part is sufficient and a slight difference or variation is no defense. 44 The
court has observed that making of works available through the transmission of a terrestrial
television broadcast over the internet must be considered a communication. 45 No broadcast

38Entertainment Network India Ltd v Super Cassettes Industries Ltd (2008) 13 SCC 30.
39SmtMannu Bhandari v Kala Vikash Pictures Pvt Ltd and Anr AIR 1987 Delhi 13.
40Music Broadcast Ltd v Indian Performing Right Society Ltd (2011) 47 PTC 587 (Bom).
41Amar Nath Singh v Union of India 2005 (30) PTC 253 (Del).
42Phonographic Performance Ltd v Hotel Gold Regency and OrsILR 2008 II Del 1267.
43 WIPO Broadcast Treaty and Webcasting [2010]<http://cis-india.org/a2k/blogs/wipobroadcast-treaty-and-webcasting> accessed 27 August 2016.
44Universal Picture Co v Harold LLyod Corporation 162 F2d 354 (9th Cir 1947).
45Football Assn Premier League Ltd v British Sky Broadcasting Ltd (2013) EWHC 2058 (Ch).
7

reproduction right46 is violated if it the defendants had produced fan fiction for fair use or for
non-commercial purposes.47 The court held that an owner48 is a person who has spent towards the
production of the film and has taken the risk of commercial failure. 49BCL in addition to
broadcasters rights in US can claim the webcasters rights in India as here they viewed their show
through a paid online portal ZoomIn. Due to discussion in many countries there is the need to
establish the requirement for a new right to be for webcasters akin to broadcasters.50
The Digital Millennium Copyright Act (DMCA)talks about webcasters rights in various
countries and conventions and its usefulness. Webcasters can be defined as sites that specialize
in acquiring and developing original content for the internet. Webcasters like shockwave.com
use the internet as an inexpensive medium for sketching out ideas and testing them on a huge
potential audience.51 The proposed WIPO Treaty on the Protection of Broadcasting Organizations
realized the webcasters rights and so in November 2008, the WIPO chair released an informal
paper, which advocated technological neutrality, and hence,presumably, that webcasting to be
covered by the treaty.52 Only requirement of webcasting is that it should have simultaneous
transmissions.53
46 Copyright Act 1957, s 37(1).
47 Copyright Act 1957, s 39.
48Gaiman et al v McFarlane et al360 F3d 644 (7th Cir 2004).
49 Ramesh Sippy v ShaamRanjeetUttam Singh (2013) 4 Bom CR 4.
50 WIPO Broadcast Treaty and Webcasting [2010] <http://cis-india.org/a2k/blogs/wipobroadcast-treaty-and-webcasting> accessed 27 August 2016.
51 Andrea D Fessler, The Next Frontier: Film Distribution Over the Internet [2000] ELR 183.
52 Copyright Law and Television [2012]<http://www.museum.tv/eotv/copyrightlaw.html>
accessed 27 August 2016.
53 Sanjay Pandey, Neighbouring Rights Protection in India [2004] 9 JIPR 356.
8

3. THAT THE WORK OF THE DEFENDANTS

WAS NOT AN INDEPENDENT CREATION .

In J.K. Rowling case54 the court found in favor of J.K. Rowling, the author of Harry Potter series
and prohibited the distribution of a book by Russian author since a strong resemblance between
two main characters and the structure were at issue in this case. There should be proof of
independent creation of the allegedly infringing work. The legality of fanfiction falls under
copyright law and in the U.S. is classified as a derivative work55 which is defined in copyright
law as an expressive creation that includes major copyright-protected elements of an original,
previously created first work and is a second, separate work independent in form from the first,
on the condition that they do not breach fair use.56
An author is entitled to the indirect as well as the direct fruits of his labor. 57Since the prelude is a
derivative work, only the author (or whoever is the proprietor of the rights in and to the text
including the character) retains the right to make further use of a particular character part of the
text in such derivative works.58
Copyright Law allows the authors to shape the future of their creations, prevent exploitations and
reap financial profits.59 Authors possess the exclusive right to copy or display their works, and to
create what the law terms derivative works. Derivative works are the subsequent works of
54Joanne Kathleen Rowling v Ultgeverji Byblos [2004] EIPR 185.
55 Ivan Hoffman, The Protection of Fictional Characters
[2008]<http://www.ivanhoffman.com/characters.html> accessed 29 August 2016.
56 Salinger v Random House Inc811 F2d 90 (2nd Cir 1987).
57Weatherby& Sons v International Horse Agency and Exchange Ltd (1910) 2 Ch 297.
58 Ivan Hoffman, The Protection of Fictional Characters
[2008]<http://www.ivanhoffman.com/characters.html> accessed 29 August 2016.
9

authorship that are based on pre-existing works or that incorporate characters or component parts
from pre-existing works.60To prove infringement, an owner must present evidence establishing
that the accused has copied protected elements of the original work and it does not constitute fair
use.61
In the case of Anderson v. Stallone an action was successfully pursued against the infringers by
proving that the copyright-protected characters were central to the script. 62Skill, labor or
judgment merely in the process of copying cannot confer originality.63 It was the quality rather
than the quantity of the addition which merited protection. 64In order to assess to what extent the
product of the defendant is substantially similar to the protectable elements of the plaintiffs
product the useful test can be the abstraction-filtration-comparison test.65The third factor for
fair use assessment is the amount and substantiality of the copyrighted work that has been used.
The similarities should be on a substantial or material part of the mode of expression adopted in
the copyrighted work. Likewise, when evaluating claims of infringement involving literary
works, we have noted that while liability would result only if the protectable elements were
substantially similar, our examination would encompass "the similarities in such aspects as the
total concept and feel, theme, characters, plot, sequence, pace, and setting of the [plaintiff's]
books and the [defendants'] works.66
59 Leslie A Kurtz, Independent Legal Lives of Fictional Characters [1986] WLR 429.
60King Features Syndicate v Fleischer299 F 533 (2nd Cir 1924).
61 Fan Fiction [2012]LDB <https://www.lumendatabase.org/topics/3#QID310> accessed 30
August 2016.
62 Anderson v Stallone 11 USPQ 2D (BNA) 1161.
63Interlego AG v Tyco Industries Inc(1988) RPC 343 (PC).
64Interlego AG v Tyco Industries Inc 1989 AC 217.
65AutoskillInc v National Educ Support Sys Inc 994 F2d 1476 (10th Cir 1993).
66Williams v Crichton84 F3d 588.
10

One of the necessary elements to prove copyright infringement is by showing that constituent
elements of the original work have been copied. 67 The court must closely review any claim of
infringement to determine whether the alleged infringing work has appropriated only an
abstraction or something more concrete68 that reflects the creators particularized expression of
the underlying idea.69 Plaintiff can show copying of work by showing that the defendant had
access to his work and the two works are substantially similar and where the character which was
the main element of the story was copied and used to develop the story by defendant and thus
clear infringement.70
In order to find out similarity in two concepts what is to be seen is the substances, the
foundations, the kernel and whether the rest can stand without it. If it cannot even if there may be
dissimilarities it would be a substantial reproduction liable to be restrained.71
No one is entitled to avail himself of the previous labor of another 72 for the purpose of conveying
to the public the same information, although he may append additional information to that
already published.73The sweat of the brow74 doctrine was formulated to scrutinize whether a
work was original or not, later recognized by the modicum of creativity doctrine 75that anything
67LA Printex Industries Inc v AeropostaleInc 676 F3d 841 (9th Cir 2012).
68 Cherian P Joseph v K Prabhakaran NairAIR 1987 Ker 234.
69Nichols v Universal Pictures Corpn45 F2d 121.
70Smith v Jackson 84 F3d 1218.
71Zee Telefilms Ltd v Sundial Communications Ltd (2003) 27 PTC 457 (Bom).
72 V Govindan v EM GopalkrishnaKoneAIR 1955 Mad 391.
73 Gopal Das v Jaganath Prasad AIR 1938 All 266.
74 University of London Press Ltd v University Tutorial Press Ltd(1916) 2 Ch 601.
75Fiest Publications Inc v Rural Telephone Service Co Ltd113 L Ed 2d 358.
11

not original is not protected by copyright and should contain a de minimus level of creativity.
Though there may be skill and labor involved, but if no spark of originality then not protected. 76
Production of a work of art in a different medium cannot by itself constitute the originality
required for copyright protection.77 If the portion taken is the heart of the work then it is
infringement.78
In Nichols v Universal Pictures Corpn79 in which Hand, J. indicated that a fictional character is
capable of copyright protection separate from the work in which it appears. If the character is
qualitatively substantial, even though it appeared in small parts, it is protected. 80 A character in
an arrangement of incidents and literary expressions original with the author, is a proper subject
of copyright and susceptible to infringement.81
Air Pirates may have weakened the Sam Spade test for literary characters as well, because a
character that is sufficiently developed and finely drawn to cross the line from idea to expression
might be protectable even if it does not meet the story being told 82 standard. Defendants are
only taking unfair advantage of the success of the original.

76 Bridgeman Art Library v Corel Corpn 36 FSupp 2d 191 (SDNY 1999).


77 Durham Industries Inc v TomyCorpn 630 F2d 905 (2nd Cir 1980).
78 Harper & Row v Nation Enterprises471 US 539 (1985).
79Nichols v Universal Pictures Corpn45 F 2d 119 (2nd Cir 1930); Columbia Broadcasting Sys
Inc v De Costa377 F2d 320 (1st Cir 1967); Warner Bros Pictures Inc v Columbia Broadcasting
Sys Inc216 F2d 945 (9th Cir 1954).
80 United Artists v Ford Motor Co 483 FSupp 89 (SDNY) 1980.
81 Detective Comics Inc v Bruns Publications 111 F2d 432 (2nd Cir 1940).
82 Warner Brothers v Columbia Broadcasting Systems 216 F2d 945 (9th Cir 1954).
12

4. THAT THERE IS MISAPPROPRIATION OF PLAINTIFF S CHARACTER .


The plaintiff submits that there is misappropriation in terms of trademark of the plaintiffs
character. Since the inception of the show, the plaintiff was in no terms oblivious to Boromirs
potential to be depicted as an independent character armed with his own storyline. Therefore,
when the defendant went ahead and registered the word BOROMIR as their own trademark, it
resulted to be an impediment to the plaintiff to use and exploit the potential of its own character.
The plaintiff was the original creator of this character and the use of this character by the plaintiff
began in 1994, i.e. 22 years ago. Hence, when the defendant registered it in 2015, i.e. 21 years
after the inception of this character by the plaintiff, it resulted in passing off by the defendant.
4.1. That there was a clear case of passing off : Lord Olivergave three requirements: (i).
Establish goodwill or reputation. (ii). Misrepresentation by the defendant. (iii). Suffers or, in a
quiatimet action is likely to suffer, damage.83 In Spalding v. Gamage84, 2 more characteristics
were added: (i). Misrepresentation made by the trader in the course of trade. (iii). To prospective
customers. The Plaintiff can also bankupon its trans-border reputation to maintain a passing off
action in India.85Taking benefit of the reputation already achieved by the plaintiff shall amount to
passing off.86

4.1.1. That the plaintiff was a Prior User and hence the claim for passing off is maintainable:
The fact that the trademark was registered by the defendant is not in favour of the defendant as
the plaintiff already owned a copyright of the work and no registration of the trademark is

83Reckitt & Colman Products Ltd v Borden Inc(1990) 1 All ER 873.


84 Spalding v Gamage(1915) 32 RPC 273.
85Whirlpool Corporation v NR Dongre(1996) 16 PTC 415; Apple Computer v Apple Leasing &
Industries(1992) 1 Arb LR 93 (Del); Wiiliam Grants & Sons v Mc Dowell & Co (1996) 17 PTC
134.
86Victory Transport Co Pvt Ltd Ghaziabad v District Judge GhaziabadAIR 1981 All 421.
13

required by the plaintiff.87 The priority in adoption and use of trademark is superior to the
priority of registration.88In a passing off action registration of the trade mark is immaterial.89If the
areas of activities and the nature of goods dealt with are identical and so are the trademarks prior
user is preferred. For inherently distinctive marks ownership is governed by the priority of use of
such marks.90 The prior user is considered to be relevant because during such a period consumers
or purchasers must have found that quality of a particular product associated with a particular
brand name and using a similar trademark by two different persons would definitely cause
confusion and thus sale by the later user of trademark would tantamount to passing off.. 91Held,
registered proprietor of trademark has right to use the said trademark to the exclusion of others
but the same is subject to right of prior user of the trademark under common law.92Any
unauthorized use by a second producer of that character may in such circumstances amount to
passing off if first the public associates the character, secondly, the association is a result of a
misrepresentation by the infringer with the owner and, thirdly, that damage has occurred or is
likely to occur as a result.93

87 Ushodaya Enterprises Ltd v TV Venugopal (2011) 4 SCC 85.


88 Amar Soap Factory v Public Gram UdyogSamiti(1985) PTC 85; Consolidated Food Corp v
Brandon & Co AIR 1965 Bom 35; Parle Products (P) Ltd v JP & Co Mysore AIR 1972 SC
1359.
89 Century Traders v Roshan Lal Duggar & Co AIR 1978 Del 250; Coolways India v Princo Air
Conditioning and Refrigeration PTC (Suppl) (1) 470 (Del)(DB); Manoj Plastics India v Bhola
Plastic Industries AIR 1984 Del 441.
90Uniply Industries Ltd v Unicorn Plywood Pvt Ltd (2001) PTC 417 (SC).
91Samatha v State of Andhra PradeshAIR 1997 SC 3297.
92 S Syed Mohideen v P Sulochana Bai 2013 SCC OnLine Mad 3885.
93 V Nelson, The Law of Entertainment and Broadcasting(1st edn, Sweet and Maxwell 1995)
48.
14

4.1.2. The reputation and goodwill was affected since there was misrepresentation:Held, u/s.38
of The Trade Marks Act, 1999 that unregistered trade mark could be assigned with goodwill of
business.94The overriding consideration, in judging extent of reputation, is whether the claimant
has built up goodwill to the point where substantial damage will be caused to it by the acts he
complains of.95 The underlying distinguishing factor of the trademarks must be similar for
deception.96While dealing with a passing-off action, the whole question is that whether the thing
taken in its entirety, is such that in the ordinary course of things a person with reasonable
comprehension and with proper insight would be deceived.97 When two trademarks are
deceptively similar, the interest of the plaintiff must be protected by issuing an injunction.98If it is
clear that plaintiff is a much prior user and his usage is extensive and wide and the defendant
dishonestly takes advantage of his reputation and that such misrepresentation would cause
irreparable damage to plaintiff, then balance of convenience is in his favour, and defendant
would be restrained to use that trademark.99

4.1.3. That the Name of the Character had acquired a secondary meaning:Once the plaintiff has
been able to establish the secondary meaning of a word, it is recognized as a trademark and its
primary descriptive meaning is no longer relevant. 100 The Delhi HC held that where the word has
a dictionary meaning, i.e., non-distinctive or descriptive word, and is being used as a trade mark,
it must be shown that it has acquired a secondary meaning or a distinctive character.101

94Kisan Industries v Punjab Food Corporation and Anr AIR 1983 Del 387.
95 Sutherland v V2 Music Limited (2002) EMLR 28.
96JaganNathPremNath v BhartiyaDhoopKarylayaPTC (Suppl) (1) 153 (Del) (DB).
97Mahendra&Mahendra Paper Mills Ltd v Mahindra & Mahindra Ltd (2002) 2 SCC 147.
98 Pam Pharmaceuticals v Richardson Vicks Inc (2000) PTC 412 (Guj).
99 Abbott Healthcare Private Limited v Raj Kumar Prasad and Ors 2014 Indlaw Del 2496.
100 Time Warner Entertainment Co v AK Das (1997) PTC (17) 453.
15

4.1.4. That the intention to commit false representation, fraud, deception and confusion is not
necessary: A scheme to defraud and deceive may include both unfair competition and copyright
infringement notwithstanding the doubt relating to the copyright protection accorded to a
fictional character protection maybe available by an action of passing-off. Successful claims of
passing-off or misrepresentation could also be brought for enforcement of common law
proprietary rights by the owners of fictional characters in case essential features of their
characters personality are used without their authorization. The use of the character in
commercial products causes customers to assume an endorsement or approval by the source of
trademark, causing likelihood of confusion.102Passing off as is a tort of false representation,
whether intentional or unintentional and is calculated to damage the goodwill of that other
person.103It is now recognized that the tort can encompass other descriptive material, such as
slogans or visual images that imply an association with the plaintiffs product, provided such
descriptive material is part of the goodwill. 104Deception has to be decided by considering the
overall impression in the minds of the public.105
The main idea which the purchaser would retain is to be considered. 106The essential features of
the mark are to be considered.107It is the tendency to mislead or cause confusion that forms the
gist of passing-off action and the plaintiff need not establish actual deception. 108The mark of the
101 Indian Shaving Products Ltd v Gift Pack [1998] PTC (18).
102Conan Props Inc v Conans Pizza Inc752 F2d 150 (5th Cir 1985); Warner Bros Inc v Gay
Toys Inc658 F2d 79 (2nd Cir 1981).
103 Rich Products Corpn v Indo Nippon Food Ltd 2010 SCC OnLine Del 734.
104 Cadbury Schweppes Ply Ltd v Pub Squash Co Ply Ltd 1981 RPC 429.
105National Chemicals and Colour Co v Reckitt and Colman of India LtdAIR 1991 Bom 76.
106Atlas Cycle Industries Ltd v Hind Cycle LimitedILR 1973 Del 393.
107James Chadwick & Bros v The National Sewing Thread Co Ltd AIR 1951 Bom 147.
108Munday v Carey 22 RPC 273 (Chd).
16

defendant as a whole must be deceptively similar.109In equity it is immaterial whether the


defendant had been fraudulent or not in using the plaintiffs trademark. 110 A general and not
microscopic inspection of creation of confusion is to be done.111The common elements in two
marks may cause confusion if they are extensively used in the market. 112 It is to be checked
whether the use of the mark results in the strong mark becoming a weak mark. 113First impression
and not the individual features must be judged. 114A concurrent right of use does not, however,
justify the use, whether intentionally or not, of a name or mark with attributes, which increases
the risk of confusion.115
It is averred that the blatant and unrestricted use of identical trademark by defendants in relation
to their goods will inevitably lead to the gradual whittling away and eventual erosion of the
uniqueness and exclusivity associated with the plaintiff's well known trades mark by reducing
the capacity to identify and distinguish the services of the plaintiff as originating from a
particular source. In the event that the defendants' activities are not curbed, they will also prompt
others to imitate the plaintiff's well-known trademark thereby leading to their further dilution.116
Customers may presume that the modification in the mark is made by the plaintiff. 117 The
Supreme Court said that it is not right to take a portion of the word and say that since it differs
109Bawa Masala Co v Gulzari Lal Lalpat RaiPTC (Suppl) (1) 361 (Del) (DB).
110 Ruston & Hornsby Ltd v Zamindara Engineering Co AIR 1970 SC 1649.
111Tokajon Ltd v Davidson & Co 32 RPC 133/136; PM Diesel v SM DieselsAIR 1994 Del 264.
112Corn Products Refining Co v Shangrila Food Products LtdAIR 1960 SC 142.
113Amercian Express Co v Vibra Approved Laboratories Corp(1989) 10 USPQ 2d 2006.
114Daddys Junky Music Stores v Big Daddys Family Music42 USPQ 2d 1173 (6th Cir 1997).
115 Edge & Sons Ltd v Gallon & Son (1990) 17 PRC 557 (HL).
116 World Wrestling Entertainment Inc v SavioFernandes&Ors 2015 SCC OnLine Del 6716.
117Re PomrilLtds Application(1901) 18 RPC 181; Reynolds v Laffeatys Ltd (1957) RPC 311.
17

from the corresponding portion of the word in the other case, there is no sufficient similarity to
cause confusion.118 If most of the people are not confused, then plaintiff must establish deception
above a de minimis level.119Held that Lone Ranger was a well-known character and using it in
circus and rodeo shows was enjoined to prevent likelihood of confusion.120

4.1.5. That there is no need to prove actual damage to the Plaintiff:Proof of actual damage is not
necessary.121 There is indeed some authority for the proposition, that any unauthorized
appropriation of or profit from anothers business goodwill 122 or professional reputation,123
inasmuch as it deprives the claimant of the opportunity to exploit his goodwill himself if nothing
else. Where the defendants goods or services compete with the plaintiffs, it is likely that the
plaintiff will suffer loss of profits. Damage may occur despite the fact that the defendants goods
or services are not inferior, although, if they are then plaintiff may suffer additional damage.124

118 F Hoffmann-La Roche & Co Ltd v Geoffrey Manners & Co (P) Ltd (1969) 2 SCC 716.
119 Neutrogena Corpn Golden Ltd (1996) RPC 473 (CA).
120Lone Ranger Inc v Cox124 F2d 650 (4th Cir 1942).
121Procea v Evans (1951) 68 RPC 210; Stringfellow v McCain Foods (GB) Ltd (1984) RPC 501
(CA).
122 Lego v Lego M Lemelstich (1983) FSR 155; Blazer v Yardley (1992) FSR 501.
123 Henderson v Radio Corp(1969) RPC 218.
124 Draper v Trist(1939) 3 All ER 513; McDonalds Hamburgers Ltd v Burger King (UK) Ltd
(1987) FSR 112(CA).
18

4.1.6. That there was a high degree of resemblance between the products and a parasitic use of
the plaintiffs character: A mark is infringed if the essential features, or essential particulars of it,
are taken.125The comparison of trademarks is necessary in actions for passing off.126

4.1.7. That it is not necessary to operate in the common field of activity:In a case127, it was held
that the plaintiff does not have to be in direct competition with the defendant to suffer injury
from the use of its trade name. There is no rule that the defendant must operate in the same field
of activity as the claimant.128There is some authority for saying that goodwill may extend to
natural future extensions of a business, so that claimant may be entitled to prevent use of
his name or marks as he expects to sell in the future. 129When a trademark is well-known its
use by someone else in some other field might indicate connection between the two.130

4.1.8. That registration confers no new rights if the Plaintiff is a Prior User: It is no defence to
passing off that defendants mark is registered.131The court ought not to consider post-registration
use to assess distinctiveness of a mark.

4.2. That there was character merchandising on part of the defendant: In the application to
register Tarzan in respect of games, clothes and playthings were refused on the grounds that it
125 De Cordova v Vick (1951) 68 RPC 103; Bale & Church v Sutton Parsons (1934) 51 RPC
129.
126 Trade Marks Act 1999, s 27.
127Honda Motors Co Ltd v Charanjit Singh(2002) 101 DLT 359.
128 Harrods v Harrodian (1996) RPC 697.
129 Walter v Emmot(1885) 54 LJ Ch 1059; Dunlop v Dunlop Lubricant (1899) 16 RPC 12.
130Alfred Dunhill Ltd London v KB Engineering Works Ludhiana (1983) PTC 45.
131 Van Zeller v Mason Cattley (1907) 25 RPC 37; Eli Lilly v Chelsea Drug (1966) RPC 14.
19

had direct reference to the character and quality of goods which portrayed or related to the wellknown fictional character.132It is thus submitted that the appropriation by the defendants of the
plaintiffs' characters and representing a connection between the characters therein, is bound to
cause loss and of damage to the plaintiffs directly by way of loss in merchandising inasmuch as
the owner of such characters and the serial would have been able to merchandise characters. The
defendants by making use of the characters for commercial purposes and without authorization
are utilizing his goodwill without his permission.
The defendants therefore have deprived the plaintiffs of such merchandising profits. As the
plaintiffs have no control of the quality over the defendants product any inadequacy or shortfall
in the same would rub off directly on the plaintiffs. The defects in the defendant's commercial
could in the long run adversely affect the plaintiffs and the plaintiffs' serial. As the Court in the
passing off action is concerned with 'likelihood damages', it is submitted that there is sufficient
cause for loss and damage made out by the plaintiffs. Reliance in support thereof has been placed
in the case of Shaw Brothers (Hong Kong) Ltd. v. Golden Harvest (UK) Ltd.133, and Mirage
Studios & Ors. v. Counter-Feat Clothing Company.134
With the teaser out, the public would relate the merchandising done by the defendants to be
theirs. In Mirage Studios & Ors v. Counter-Feat Clothing Company, it was held that since the
public connected the turtles drawings by the defendants with plaintiffs and this created a
sufficient link between the goods being sold and to found a case of passing-off. The plaintiff
must establish the likelihood of damage to his business or goodwill as a result of the defendants
misrepresentation.135

4.2.1. Passing off in character merchandising: When the name or character which is the subject
matter of merchandising has not been registered, the owner of the name of the character may

132Re Tarzan Trade Mark (1970) RPC 450 CA.


133 Shaw Brothers (Hong Kong) Ltd v Golden Harvest (UK) Ltd (1972) RPC 559 (Hong Kong).
134 Mirage Studios &Ors v Counter-Feat Clothing Company(1991) FSR 145 (ChD).
135 Hodgkinson and Corby Ltd v Wards Mobility Services Ltd (1974) 1 WLR 1564.
20

seek to prevent the unauthorized use through a passing off action. 136Claimant must show that a
substantial number of the buying public now expects and knows that where a famous character is
reproduced on goods it is the result of license granted by the owner of the rights in the
character.137

4.3. That no cause against plaintiff for delay shall lie:Regarding delay and acquiescence, the
Court had held in that if the defendant was acting with the knowledge that it is violating the
Plaintiffs rights, then, the injunction cannot be refused, even if there is some delay in filing the
suit.138

5. THAT THERE IS UNFAIR COMPETITION CAUSED

BY DEFENDANT S ACTION .

Unfair competition is a trespass, and no trespasser can justify by setting up the right of one to
whom he is legal stranger.139A character in a film may be so unique and distinctive becomes so
associated with the author that the use of that characters name by another author causes
deception. In the same way, where the title of a play is associated by the public with a certain
authors work, indicating his work and nothing else, the courts will not permit another to reap the
benefits of the first users goodwill by using the title made famous by the first user.140The
Supreme Court has pointed out that passing off is a species of unfair trade competition or of

136A Graig, Licensing of Merchandising Rights [1980] EIPR 47.


137 Surge Licensing v Pearson 21 IPR 228.
138 Hindustan Pencils Pvt Ltd v India Stationery Products Co AIR 1990 Delhi 19.
139National picture Theatres v Foundation Film Corporation 266 Fed 208.
140DivyakantLahoti, Copyright and Trade Mark Protection in the Title of a Movie and
Characters [2010] PL <http://beta.scconline.com> accessed 6 August 2016.
21

actionable unfair trading by which one person, through deception, attempts to obtain an
economic benefit of the reputation of another person in a particular trade or business.141
Where a person uses trademark similar to another person's to dilute the trademark, such use does
not cause confusion among consumers but takes advantage of the goodwill of another and
constitutes an act of unfair competition.142The protection of the community from damage due to
unfair competition is the core of action. 143If however the question comes up, not when the
newcomer is actually competing in the owner's market, but is selling goods which the owner has
never sold, though they are like enough to make people think him their source, the determining
considerations are different.
The owner's only interest in preventing such a use of his mark is because he may wish to
preempt the market for later exploitation, or not to expose his reputation to the hazard of the
newcomer's business practices, or both. Here, as often, equity does not seek for general
principles, but weighs the opposed interests in the scales of conscience and fair dealing. The
owner's rights in such appendant markets are easily lost; they must be asserted early, lest they be
made the means of reaping a harvest which others have sown.'144
The court may take into account the present as well as the proposed goods of the plaintiff
and decide whether the plaintiff can be reasonably expected to expand its sphere of
activities to include the goods being manufactured by the defendant. 145If enough evidence is
provided to show that there is intention to use the mark in future, then despite the non-use of the
mark, it shall be protected.146In the Dynamite Entertainment case, defendant was accused of
141 Wander Ltd v Antox India (P) Ltd (1990) Supple SCC 727.
142 DM Entertainment Pvt Ltd v Baby Gift House &Ors CS (OS) No 893 of 2002.
143National Hockey League v Pepsi Cola Canada Ltd(1992) 42 CPR (3d) 390.
144Poloroid Southern Pine Lumber Co v Ward (1908) 208 US 126.
145 LRC International Ltd v Lilla Edets Sales Co Ltd (1973) RPC 560 (ChD).
146Crash Dummies v Mattel Inc601 F3d 1387 (Fed Cir 2010).
22

infringement of trademark and unfair competition over the Warlord of Mars and Lord of the
Jungle comic series as it was found that the use by the defendant caused irreparable damage to
the plaintiff.In a case it was held that plaintiffs characters had acquired distinct meaning and
imitating strips by another cartoonist exploiting the characters would be unfair to the public and
plaintiff.147
In an earlier case, Sony Corp. of America v. Universal City Studios, Inc. 148 the Supreme Court
had stated that "every commercial use of copyrighted material is presumptivelyunfair." If
defendants work causes unfair competition to the plaintiff and results in unfair use then it is clear
infringement of the work.149

5.1. That the registration shouldnt have been allowed in the first place:The England High
Court denied registrations for word ELVIS on the ground of lack of distinctiveness; customers
were buying Elvis merchandise because it carried the name or likeness of Elvis and not because
it came from a particular source.150 The German courts have more often held applied trademarks
of fictional characters like Sherlock Holmes clearly descriptive of the content of a book or
film.151Many courts have rejected the application for trade mark for fictional characters on the
ground of them being famous but lesser known characters such as the fictional detective Percy
Stuart have acquired trademark protection.152
147Fisher v Star Co231 NY 414 (1921).
148Sony Corp of America v Universal City Studios Inc464 US 417 (1984).
149Murray v Bogue (1852) 1 Drew 353.
150Re Elvis Presly Trade Mark(1997) RPC 543.
151 Sherlock Holmes[2010] BGH <https://www.jurion.de/Urteile/BGH/1957-11-15/I-ZR-83>
accessed 29 August 2016.
152 Percy Stuart [2006] BPG 32 (PAT) 33<http://www.markenmagazin.de/bpatg-percy-stuart/>
accessed at 28 August 2016.
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Therefore the contribution by the defendant to make Boromir famous is also a reason why their
application for trademark should have been rejected. If the relevant public understands the name
of a novel character as a synonym for a certain character, in view of its well-known nature, it is
devoid of any distinctive character.153 The finding of non-distinctiveness is more likely if there
have been a large number of published versions of the story and numerous television, theatre and
film adaptions reaching a wide audience.154
The right holders have also successfully argued that fictional characters or at least their names
can be capable of acting as brands that identify the original author as the source. 155The name
Frank Merriwell has become associated in the public mind solely and exclusively with the
authorship of Burt L. Standish, and is entitled to protection from use by others in the motion
pictures.156It is, therefore, submitted that a producer or author may acquire a reputation and
goodwill in the name and characteristics of a character depicted in a film 157 if the public
recognizes such a product or character as the property of the producer158 or the author.

The plaintiff in the end, submits that when it began writing the story, the potential of Boromir
was not overlooked. The prelude to the show called Boromir the Conqueror was a result of the
ideas that the plaintiff must have had in mind while it began to write the story. The plaintiff was
also well aware of the capacity of Boromir and his dragons and their ability to recreate an
element of magic and captivate the audience. Thus the prelude infact was not to dent the efforts
and creativity of Ms. Earl Grey or to harm the reputation that her investment in the character had
153Constantin Film Produktion GmbH v Karl MayVerwaltungsOHIM BOAR 125/2012-1.
154Yves Fostier v Disney Enterprises Inc OHIM BOAR 1856/2013-2.
155Edgar Rice BorroughsInc v Manns Theatres 1976 WL 20994 (CD Cal 1976).
156Patten v Superior Talking Pictures 8 FSupp 196 (SDNY 1934).
157Shaw Bros (Hong King) Ltd v Golden harvest (HK) Ltd (1972) RPC 559 (HK Full 1971).
158King Features Syndicate Inc v OM Kleeman Ltd1941 AC 417.
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created by way of her fan fiction but it was just meant to carry on the series that the plaintiff
started.
It was therefore wrong on the part of the defendant to presume that the plaintiff was unaware of
Boromirs potential or that the plaintiff could not exploit its own character to its optimum
capacity. The prelude is an example to prove this presumption wrong.
Also, when the defendant argues that the plaintiff unlawfully used it trademark, it must bear in
mind the fact that this trademark was infact a creation of the plaintiff and had the plaintiff not
written the book or had it not come up with the character of Boromir, then the defendant would
not have been in a position to contest this case, in the first place itself.
The name of the show, i.e. Valar Dohaeris: The Beginning is also a clear indicator of the fact
what happened in the story of the show was because of Boromir and his conquests and the words
The Beginning give a scope of reasonable foreseeability of a prelude and thus, the defendants
cannot claim that the plaintiff was trying to take advantage of the image of Boromir that the
defendant created.
The defendants got the Trademark for BOROMIR registered in January 2015 and the trailer was
released by the plaintiff in June 2015. The defendant cannot possibly argue that in a matter of
five months, the plaintiff fulfilled all the obligations required to make the trailer of the show and
completed the shooting and released the trailer for the same.
If the defendant accuses the plaintiff of copying the costume of the character of Boromir, then
they should also remember the fact that Ms. Earl Grey could develop the character only by
standing on the shoulders of the plaintiff and such similarities are inevitable when two depictions
of one character are based in the same era.
Hence the plaintiff submits that the defendant has misappropriated its character.
PRAYER

In the light of arguments advanced and authorities cited, the plaintiffs humbly submit that the
Honble Court may be pleased to adjudge and declare that:
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1. That the character Boromir Bohemia of the plaintiff is misappropriated by the


defendant w.r.t. copyright, trademark and unfair competition.
2. That an injunction be granted against the defendants in the matter of copyright
infringement under section 55 of Copyrights Act, 1957, section 135 of Trademark
Act, 1999.

3. That pecuniary relief be provided which includes damages sustained by the


plaintiffs; accounts of profits by plaintiffs, costs of action.

4. That there should be an appointment of authority for withholding of the


infringing material.

Or any other order as it deems fit in the interest of equity, justice and good conscience.

Sd/(Counsels for the Plaintiffs)

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